In today’s highly competitive world, companies are faced with the triple challenge of constantly having to be innovative in order to have a competitive edge, shrinking budgets for research and development, and keeping up with the ever-changing costs of obtaining patent protection across the globe.
However, estimating said costs can be a challenging and time-consuming task. In several jurisdictions across the globe, the costs are a function of various variables such as the mode of filing, the type of applicant, the number of pages of the specification and claims, and the number of claims/independent claims/multiple dependent claims.
The costs generally have three components (official, associate/attorney, and translation) that are spread across the different stages of the patenting process (filing, examination and prosecution, grant, and maintenance or renewal or annuity).
For instance, let us consider a PCT application filed by a large entity comprising 50 pages (including 5 pages of drawings and 10 pages of claims) and 20 claims (including 3 independent claims) which is to be electronically filed in the top 10 jurisdictions, namely Canada (CA), China (CN), European Patent Office (EP), Israel (IL), India (IN), Iran (IR), Japan (JP), South Korea (KR), Russia (RU), and the United States (US) (World IP Indicators 2015, WIPO). Individual member states of the European Patent Office have not been included in the top 10 for the purpose of illustrating costs incurred while validating a granted European patent. It is assumed that the U.S. has been indicated as the International Searching Authority and that the applicant is not interested in entering into Chapter II of the PCT.
Let us further consider that the European patent is to be validated in Belgium (BE), Switzerland (CH), Germany (DE), Spain (ES), Finland (FI), France (FR), the United Kingdom (GB), Italy (IT), the Netherlands (NL), and Sweden (SE).
The total estimated costs to file and maintain a National Phase application/granted patent through to expiry in the above mentioned jurisdictions range from $11,404 in Israel to $25,668 in Japan (Figure 1). The cost of $17,550 for EP is based on 2020 being the year of grant. These and other estimates given below are based on the values found within the fee schedules supplied by at least five independent IP law associates in each jurisdiction.
The estimated costs (including the attorney costs) to file the National Phase application vary from $1,103 in India to $8,370 in Japan (Figure 2).
The estimates include the first annuities in Canada and Iran, the fees for excess pages and excess claims in China (30 pages and 10 claims), Europe (35 pages and 15 claims), and India (30 pages and 10 claims), the search and examination fees in the U.S., as well as the costs for translating 45 pages into the official language in China, Iran, Japan, South Korea, and Russia (it is assumed that the drawings have no text and thus do not require translation). The translation costs are extremely high and range from $1,565 in Iran to $6,444 in Japan. When estimated as a % of total filing costs, the translation costs vary from 60% (Iran) to 82% (South Korea).
Israel and Iran do not have separate fees for examination. As mentioned earlier, the search and examination fees for the U.S. have been included in the filing costs. The estimated costs (including the attorney costs) to request for examination in the other jurisdictions vary from $496 in India to $2,254 in Europe, and are inclusive of the costs for excess claims in Japan and South Korea and the costs for excess independent claims in Russia (Figure 3).
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. Assuming the PCT application is relatively straightforward, the prosecution costs (reporting office actions, preparing responses, and processing responses) vary from $533 in Iran to $5,068 in Japan (Figure 4).
Except South Korea and Iran, the patent offices in all other jurisdictions issue 1.5 to 2.5 office actions on an average before grant (the number within parentheses in the X-axis in Figure 4 indicates the average number of office actions).
As is the case with filing, translation is also required during prosecution in China, Iran, Japan, South Korea, and Russia. Assuming 10 pages of translation per prosecution action, the estimated translation costs vary from $175 in Iran to $2,148 in Japan. When estimated as a % of total prosecution costs, the translation costs vary from 33% (Iran) to 46% (China).
The estimated costs to be paid (including the attorney costs) at the time of patent grant/issuance/allowance vary from $143 in China to $3,596 in EP (Figure 5).
The estimates include the fees for excess pages and translation of the claims into German and French in Europe, annuity fees for the first six years in Israel, annuity fees for the first three years in Japan and South Korea, and the fees for excess claims in Japan and South Korea.
Estimates for the patent annuities (including the attorney costs) vary from $2,689 in Europe to $13,919 in China (Figure 6).
Patent annuities differ from not only in terms of the fee to be paid, but also the time as well as frequency of payment (Table 1). Except Israel and the U.S., annuities are to be paid on an annual basis in all other countries. In a majority of the countries, annuities are calculated from the filing date, with the exception of Japan, South Korea and the U.S.
Table 1: Patent Annuities in the Top 10 Patent Jurisdictions
The estimated costs for each stage are expressed as a % of the total costs in Table 2.
Table 2: Costs for Each Stage Expressed as a % of the Total Costs
The annuity costs in Europe constitute a low fraction of the total estimated costs as they need to be paid only till grant of the patent, after which the process of validation takes over. The validation costs range from $594 in France to $4,557 in Spain (Figure 7).
The validation costs in France, UK, Switzerland, and Germany are low as the countries are members of the London Agreement and thus have dispensed entirely with the translation requirements. The Netherlands, Sweden, and Finland require only the translation of the claims, while translation of the entire specification is required in Italy, Belgium, and Spain.
The annuities (including the attorney costs) to be paid in the validation countries vary from $7,117 in Belgium to $17,150 in Germany (Figure 8).
Thus, based on the above mentioned filing parameters, an applicant would require $296,233 to file National Phase applications in said jurisdictions and maintain the applications/granted patents through to expiry. Estimating costs at such a granular level can facilitate better strategic decision-making and budget forecasting.