Monitoring Patent Costs: Annuity Fees

No comments yet

The next topic I’ll cover in our “Monitoring Patent Costs” series will be patent annuity or maintenance fees. Often times, applicants are unaware of these fees for “maintaining” a patent, and depending on the issuing jurisdiction and the age of the patent, these fees can be fairly significant.

Not all countries charge maintenance fees, but for those that do, the frequency and amount of the fee is set by the patent office’s fee schedule. Some countries have maintenance fees due every year, while fees for other countries come up less frequently. For example, the maintenance fees for a US patent are due 3 ½, 7 ½, and 11 ½ years after grant of the patent.

Annuity fees also escalate as the patent ages, so longer patent protection will cost more for the patent holder. Chinese annuity fees range from 900 RMB for the first year to 8000 RMB for the 20th year. Of course, the patentee can abandon the patent at any time by not paying the fee.

One common and unpleasant surprise for many applicants is that certain countries or regions have maintenance fees that kick in while the application is still pending, rather than after the patent has been granted. For European applications, the first annuity is due 2 years after the filing of the PCT application. This means that this fee can come due soon after the regional phase filing into Europe, and often catches applicants off-guard.

So what happens if you miss an annuity fee? As I mentioned, payment of these fees is required to keep the patent valid. Luckily, most, if not all, jurisdictions have grace periods for payment, and often require an additional fee on top of the missed annuity. Best strategy is to make sure to monitor these deadlines closely, because having a patent lapse can be catastrophic.

See below for links to other articles I’ve written for this series:

Monitoring Patent Costs: Excess Claims Fees

Monitoring Patent Costs: Validating Your European Patent
 

Monitoring Patent Costs: Translations

1 comment

In this installment of our Monitoring Patent Costs series, Ill be discussing translation costs that occur at the PCT national stage. When you’re filing internationally, many patent offices require translation of your application (presumably in English) into their official language. Many applicants fail to factor this requirement into their IP strategy, creating problems both in terms of money and time. By being aware of translation requirements and costs before your deadlines, you’ll be able to save yourself a good deal of headache and cash.

translationicon
 

Rather than going through each country’s translation requirements, I recommend downloading a copy of our PCT filing e-kit. This kit is free, and contains a PCT National Phase Entry Guide which provides filing information for each jurisdiction we offer, including specific translation requirements.

Translations are typically billed at a per-word rate. Items in the application, such as diagrams, chemical formulas and sequence listings will also affect the translation costs. As a general rule, assume that translators can translate approximately 1000 words a day. Here at inovia, we recommend providing your filing instructions 4 weeks prior to the filing deadline to ensure sufficient time to prepare translations. As you get closer to the filing deadline, additional costs such as extension fees and rush charges can be added to your translation fees. Extension fees for submitting a translation late are usually around US$50-100. The availability of translation extensions are also detailed in our PCT National Phase Filing Guide.

A few country-specific tips to keep in mind:

  • Europe: When filing into Europe, you actually do not need to translate your application. English, along with French and German, is an official language of the European Patent Office.
  • Brazil: Brazil requires the translation of the claims into Portuguese at the time of filing. However, the remainder of the application can be submitted later upon payment of an extension fee. Keep in mind that if instructions are provided too close to the filing deadline, rush surcharges are usually added for the translation of the claims.
  • Japan: Japan requires the application to be translated into Japanese. The good news is that the translation can be filed up to 2 months after the national stage filing. Even better, the 2-month extension is free!
  • South Korea: The national stage filing for South Korea is 31 months after the priority date. The translation is due at the time of filing, and remember that there is no provision for submitting the translation later.

Have other specific questions about patent translations and costs? Our PCT e-kit should answer most of your questions but if not, feel free to contact us at mail@inovia.com.
 

Monitoring Patent Costs: Validating Your European Patent

Comments Off on Monitoring Patent Costs: Validating Your European Patent

For the next installment of our ongoing series entitled “Monitoring Patent Costs”, I’d like to detail the European validation process. For most countries, the process of getting a patent is simple. File the application, overcome any rejections during examination, pay the appropriate fees and the patent office will issue your patent enforceable within their borders. Getting a patent in the European countries, however, can be a little more complicated.

Read More

Monitoring Patent Costs: Excess Claims Fees

Comments Off on Monitoring Patent Costs: Excess Claims Fees

For every applicant, big or small, patent costs are an issue. Patent prosecution requires a heavy financial commitment and every dollar saved means more funds available for broader protection, R&D, or marketing. This article discusses excess claims fees and ways you can save money on your patent filing costs.

What are excess claims fees?

Excess claims fees are fees charged by a patent office when the number of filed claims exceed a certain amount. The threshold number and the amount of the fee differ with each jurisdiction. Download a copy of our PCT national phase entry guide for country-specific details regarding excess claims fees and more.

<!–more–>

For some countries, the excess claims fees are negligible, so reducing the claims would probably not justify the time and attorney’s fees for making that amendment. For example, the Indonesian Patent Office charges 40,000 IDR (about 4 dollars) for every claim over 10. In other countries, the filing fees are calculated based on the number of claims originally filed in the PCT application. In those instances, reducing the number of claims would not affect the excess claims fees (and would actually increase translations costs if translations are required).

For other jurisdictions, reducing the number of claims can be an effective way of reducing filing costs. The most common example is the European Patent Office, which charges a whopping 225 EUR for every claim over 15 and 555 EUR for every claim over 50. If an applicant is able to delete or consolidate even a few claims, they can easily save thousands in filing costs.

So how do you go about reducing claims? This usually requires assistance from your patent attorney since you need to make sure not to eliminate any valuable subject matter. Common strategies include:

  • Consolidating claims to create claims having multiple dependencies;
  • Deleting claims that have little to no chance of being allowed; and
  • Amending claims so that they mirror allowed claims in a counterpart application. For example, if you have an allowed US patent with 15 claims, and the PCT application has 30 claims, you may want to consider replacing the PCT claims with the 15 allowed US claims. This will not only reduce filing costs, but can expedite examination as well.

Amending or reducing the claims is just one tip for reducing your patent costs. For more information on this topic, please contact us or join us for one of our monthly webinars.