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PCT EXPLANATION BREAKOUT
 LAYOUT. The PCT is a complex subject are that
requires more than one page of explanation. The PCT discussion is on
5 web pages:
- pct.html
--- explains what the PCT process is and some reasons for filing.
- pctcosts.html
--- explains the costs of various PCT filings. You are on this page now.
- pctnat.html
--- explains the U.S. National Stage of the PCT process.
INTERNATIONAL STAGE PCT COSTS
FOREIGN OR U.S. CLIENT - CHARGES FOR A PCT APPLICATION?
For a PCT application prepared from scratch (when no national application
exists), the preparation costs are the same as for a utility
patent application: $2,500 preparation fees plus initial government filing costs,
which are at least an additional $3,609. Government filing fees effective July 1, 2008 include a
transmittal fee of $300, plus a search fee of $1,800, plus an international fee of $1,338 for the
first 30 pages plus a handling fee of $171. Other fees may apply.
U.S. applicants may alternatively
select Europe or Korea as the search authority and this will change the
above noted search fee to $2,665 and $244, respectively.
PCT APPLICATION WHEN BASED ON AN EARLIER COMPLETE
NATIONAL APPLICATION. For a PCT application prepared from a
complete pre-existing national application, where no extensive editing is
required, the preparation costs are $900 for a large business, or $600 for
most small entities. Foreign national
applications often require extensive re-writing to correct translational
problems, conform to U.S. technical and grammatical English, and to revise
claim structure to meet requirements.
FILING U.S. UTILITY APPLICATION FIRST. For U.S.
or foreign clients, if Attorney Louis Ventre, Jr. first prepares and
submits a U.S. Patent application, he will then within a year thereafter
prepare the PCT application for a fixed fee of $900 for a large business,
or $600 for most small entities. Government filing
fees($3,365), noted above. The latest fees are posted at the U.S.
Patent and Trademark Office web site at http://www.uspto.gov/web/offices/pac/dapps/pct/fees.htm.
Other government fees may apply. For other considerations, see PCT strategies.
FILING PCT APPLICATION WITHIN A YEAR OF U.S. UTILITY
APPLICATION. When applicants want a non-provisional U.S.
patent application followed within a year by the PCT application, the PCT
application can be filed with less cost to the applicant by electronically
filing it with the International Bureau in Geneva. Government fees
vary but this option is usually cheaper.
FILING A PCT APPLICATION - FOREIGN FILERS.
For foreign residents, Attorney Louis Ventre, Jr. can prepare your PCT
application, but it must be filed in your country or region of residence,
or in the International Bureau in Geneva, directly, that is, by you or by
your local attorney. Attorney Louis Ventre will help you with this,
but the rules prevent him from filing for you.
It is possible, however, to include Attorney Louis Ventre's name and
address as an “address for correspondence” in your PCT
application. Although Attorney Louis Ventre would not be entitled to
act on your behalf, Attorney Louis Ventre would receive all correspondence
which would normally be addressed to the applicant or his agent, and
Attorney Louis Ventre would be able to make payments on your behalf.
In this situation, Attorney Louis Ventre would not have the right to sign
any papers, including letters, on your behalf, and these would have to be
signed by you.
AFTER FILING PATENT PROSECUTION COSTS. Patent
prosecution costs for PCT applications in the United States are billed
at the Law Firm's standard hourly rates of $250 per hour for a large
business and $150 per hour for most small entities. Attorney Louis Ventre, Jr.
also caps the billing for most small entities at a maximum of $2,000 when
the application has been first prepared by Attorney Louis Ventre, Jr.
NATIONAL STAGE PCT
National Stage. When the national stage for the
application is required (at about 30 months from the earlier filed regular
national application or 18 months from the PCT filing), you will be
required to retain an attorney licensed in the foreign jurisdiction and
pay the national filing fees in those foreign jurisdictions. That is
when the costs can rapidly mount. You typically start with the
national stage filing fees and then are hit with annual application
maintenance fees. PCT fees tend vary frequently because of currency
fluctuations. Attorney Louis Ventre, Jr. files U.S. National
Stage applications for foreign and domestic residents.
Attorney costs for PCT National Stage applications in the U.S. are
covered at pctnat.html,
which explains the U.S. National Stage of the PCT process.
OVERALL COST OF PCT PATENT PROCESS
What Does an International Patent Cost? A while
back, WIPO suggested that it would not be unusual to experience a total
cost of $25,000 for a patent through the PCT system. This is apparently
not published anymore. It would be unusual for PCT costs to be less
than about $15,000 per country.
The U.S. General Accounting Office (renamed the Government
Accountability Office) estimated in 2003 that for six European countries
(France, Germany, Italy, Ireland, Sweden, and the United Kingdom), Canada,
Japan, and South Korea costs of obtaining and maintaining foreign patents
for their 20 year life to be in the range of $160,000 to $330,000 (in 2002
dollars). GAO report: GAO–03–910, "Experts' Advice for
Small Businesses Seeking Foreign Patents," (2003) at pp. 40-41.
The European Patent Office published
two charts showing estimated costs (downloaded 06/04/2007) for a
directly filed European Patent and for one filed under the PCT. For
European patents filed by way the Patent Cooperation Treaty (PCT) for
eight countries (Germany, France, the United Kingdom, Italy, Spain,
Switzerland, Netherlands and Austria), the 10 year total cost is estimated
at about EUR 47,000 or about $55,000, excluding in-house preparation costs
for the patentee. For direct filing in the EPO (not thru the PCT),
the total cost is about EUR 32,000 or $44,000. In-house preparation
costs might add an additional $5,000 to $10,000 to both estimates.
The EPO site where the noted report was found is at http://www.european-patent-office.org/epo/fees1.htm#cost.
Cost elements. The costs of international
patents may be divided into four types of costs:
(1) Government fees. The costs relating to
the application fees and other prosecution fees paid to the national or
regional patent offices. Such costs may vary widely from country to
country (information on the fees may be obtained directly from the
national IP offices).
(2) Attorney fees. The costs relating to
patent attorneys/agents who assist in prosecuting
the patent application vary widely from country to country. The use of
a local patent attorney/agent is usually mandatory for applicants who do
not reside in the national stage country. So one will be required in
every national stage patenting jurisdiction.
(3) Translation. The costs of translation.
Such costs are only relevant when seeking IP protection in foreign
countries whose official language is different from the language in which
the application has been prepared and may prove to be high, especially for
highly technical patent applications. Translation costs vary
according to the length and nature of the patent application but could
cost $2,000-$10,000 per translation or more. Translation costs can
be particularly problematic because the quality of an application can
substantially diminish in the translation process.
(4) Maintenance. The cost of maintaining
applications and patents through payments to the patent office. Such fees
are usually paid at regular intervals (e.g. every year or once every five
years) in order to maintain the application or the patent. Protecting
patents for the entire term of protection (in general, 20 years) in
various countries may prove an expensive undertaking, also taking into
account that annual maintenance fees are usually increasing the longer the
protection is maintained.
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