Patenting Costs in ASEAN: Upcoming Global Economic Powerhouse

Founded in 1967 by Indonesia, Malaysia, the Philippines, Singapore, and Thailand, the Association of Southeast Asian Nations (ASEAN) is a regional organization that aims to “accelerate economic growth, social progress, and sociocultural evolution among its members.” The organization’s membership has subsequently expanded to ten, with the induction of Brunei, Cambodia, Laos, Myanmar, and Vietnam.

Collectively, the ten economies constitute an economic powerhouse; the ASEAN Economic Community (AEC) was the third largest Asian economy and the seventh largest global economy in 2014, as per the ASEAN website. Further, the AEC is expected to grow at a feverish pace of 7% per annum and is touted to be the fourth largest economy in the world by 2030 (Ken Moriyasu; 2016).

With an increase of more than 40% in the patenting activity from the ASEAN group in the last three years, the AEC is “becoming a hub of research and innovation activity” (Asian Scientist Newsroom; 2016). This research and innovation is centered on two clusters of member states: a primary cluster consisting of Singapore, Malaysia, and Thailand; and a secondary cluster consisting of Vietnam, Indonesia, and the Philippines. Chemical, agricultural, and medical sciences are the key technological areas in which research and innovation is taking place (Asian Scientist Newsroom; 2016). The Agency for Science, Technology and Research (A*Star), Nanyang Technological University, and Halliburton Energy Services were the top three applicants at the Intellectual Property Office of Singapore (IPOS) in 2015 (IPOS; 2016).

Thus, now may be the right time for agricultural and life sciences companies to start thinking about investing in research and development in Southeast Asia, in addition to including the major ASEAN economies in their patent filing strategy. However, to facilitate such strategic decision-making, a precise estimate of the patent costs that might be incurred will be required.

Let us consider a 40-page PCT application with 15 claims (including three independent claims), five pages of drawings, and filed by a large entity. We will use the USPTO as the International Searching Authority (Chapter II Demand not filed), for this example, and file electronic National Phase applications with the top five patent offices within ASEAN. These are: Indonesia (ID); Malaysia (MY); Singapore (SG); Thailand (TH); and Vietnam (VN) (World Intellectual Property Organisation; 2016).

The total estimated costs (including the attorney and the translation costs) to file and maintain a National Phase application/granted patent through to expiry in the above-mentioned jurisdictions range from $5,868 in Malaysia to $20,949 in Indonesia.

The total estimated costs in Singapore, Thailand, and Vietnam are more or less similar ($10,000 to $11,000). These and other estimates given below are based on the values found within the fee schedules supplied by at least five independent Intellectual Property law associates in each jurisdiction. The estimates are inclusive of Value Added Tax (where applicable).

The estimated costs to file the National Phase application vary from $568 in Malaysia to $3,150 in Thailand

The estimates include the fees for excess pages and excess claims in Indonesia (30 pages and 10 claims); the fees for excess claims in Malaysia (10 claims); the statement of right (Form-22) filing costs in Malaysia; the publication fees in Thailand and Vietnam; the fees for excess pages (five pages) and excess independent claims (one independent claim) in Vietnam; as well as the costs for translating 35 pages into the official language in Indonesia, Thailand, and Vietnam (it is assumed that the drawings have no text and, thus, do not require translation). The translation costs are extremely high and range from $1,232 in Indonesia to $2,434 in Thailand. When estimated as a % of total filing costs, the translation costs vary from 49% (Indonesia) to 77% (Thailand).

All five countries follow a deferred system of examination. The estimated costs to file a request for examination vary from $221 in Thailand to $1,302 in Singapore, and are inclusive of the costs requesting the examination of over one independent claim in Vietnam.

Estimation of prosecution costs is quite complex, as the costs vary depending on the number of office actions, which, in turn, is dependent on the complexity of the invention. The estimated prosecution costs (including reporting office actions, preparing responses, and processing responses) vary from $1,441 in Malaysia to $4,523 in Indonesia.

The costs are based on an estimate of 1.5 office actions in Singapore and Thailand; 2 office actions in Malaysia and Vietnam; and 2.5 office actions in Indonesia.

As is the case with filing, translation is also required during prosecution in Indonesia, Thailand, and Vietnam. Assuming 10 pages of translation per prosecution action, the estimated translation costs vary from $726 in Vietnam to $1,043 in Thailand. When estimated as a % of total prosecution costs, the translation costs vary from 20% (Indonesia) to 42% (Thailand).

The estimated costs to be paid at the time of patent grant/issuance/allowance vary from $169 in Thailand to $669 in Singapore.

For Vietnam, the costs are inclusive of the fees for the granting of over one independent claim; the fees for the registration of over one drawing; and the first annuity/maintenance/renewal fee. There are no official fees to grant in Indonesia and Malaysia.

Estimates for the patent annuities vary from $3,057 in Malaysia to $12,732 in Indonesia.

Patent annuities differ from one country to another in terms of both the fee to be paid and the timing of payment (Table 1).  While Malaysia, Singapore, and Thailand charge fixed annuity fees, Indonesia and Vietnam charge annuities based on the total number of claims and the number of independent claims respectively.

The estimated costs for each stage are expressed as a % of the total costs in Table 2. The costs for filing, prosecution, and annuities generally vary between 8%-17%, 18%-25%, and 52%-63% of the total estimates respectively.

Thus, based on the above-mentioned filing parameters, it would cost an applicant approximately $60,000 to file National Phase applications in said jurisdictions and maintain the applications/granted patents through to expiry.

The ASEAN region, with its immense potential, is fast becoming an attractive destination for investment in research and development. Companies who choose to ignore this region may do so at their own economic peril. However, developing a patent filing strategy that includes one or more of the ASEAN economies could be highly challenging due to the presence of a bundle of varying national legislations, each mandating its own set of procedures. Having a precise idea of the stage-wise costs that could be incurred will go a long way in facilitating strategic decision-making and budget forecasting.