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
Our friends at Reinhold Cohn & Partners recently released a newsletter highlighting the latest IP developments in Israel. Here are some of the articles that caught our attention:
On January 1st, 2013 the Israeli Patent Office will implement new regulations dramatically affecting official fees for both local and PCT applications entering the national phase. The tables below detail each of the fees required by the Office with the designated changes. For the most part, applicants can expect sharp increases in both filing and renewal fees:
*New fee applicable 1 January 2013
**Approximate currency exchange rate as of 19 Dec 2012
Fortunately, the new amendment offers some relief to individual inventors and smaller companies. Corporate applicants having a turnover of less than ILS 10 million (US$2.7 million) in the last calendar year qualify for a 40% reduction on the filing and nationals fees. For everyone else, filing on or before December 31st, 2012 will guarantee the existing official fees.
For a complete summary of Israel’s requirements for entry into the national phase, check out WIPO’s PCT Applicant’s Guide. And if you’re interested in a free 1-click cost estimate for your PCT, simply register with us at inovia.com.
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.
Hi everyone! See below for a roundup of foreign patent filing news from the week of March 11th:
Thanks for reading and have a great weekend!
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.
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.
Happy autumn everyone! Here’s your look at the latest foreign filing news from the first week of October:
- Effective today: A new USPTO fee schedule reveals only minor increases.
- Cornell’s new graduate technology school in NYC is now home to the country’s first on-campus patent officer.
- To keep everyone up to speed on the newly implemented AIA reforms, the USPTO has updated its registration examination for new patent practitioners.
- The EPO and USPTO have published the advanced version of the Cooperative Patent Classification (CPC) scheme. Check it out >
Have a great Friday and for many of you, enjoy the long weekend!
Planning on filing a utility application? Does it have more than 20 claims? File today before USPTO fees GO UP TOMORROW!
Actually, it’s not that bad. A new USPTO fee schedule will come into effect tomorrow, increasing certain fees by up to 3% due to inflation. Examples of some of the changes are:
• Increase to $390 from $380 for a basic utility filing fee.
• Increase to $62 from $60 for each claim over 20.
• Increase to $390 from $380 for the PCT national stage fee.
So don’t put off until tomorrow, those patent matters that you can do today. It can save you and your client…well, not that much.