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12 ways to manage and reduce global patent costs

By Jesse Schwartz
Published: February 7th, 2018

In a recent blog post, Anthony de Andrade and Venkatesh Viswanath of patent protection firm Quantify IP discuss ways to manage global patent costs. Here are 12 tips the authors offer:

Do your homework before deciding where to file. This involves assessing many factors such as market potential, the growth of a technology over 20 years, locations of manufacturing centers, competitors and their own strategies, and the enforceability of patents. It is extremely important to consider how different jurisdictions define what is patentable. For example, in Canada, Europe and India, inventions related to methods of treatment or diagnosis cannot be patented.

Fees vary in relation to the number of claims. In the U.S., for example, the filing fee goes up when an application contains more than 20 claims and more than three independent claims. In Japan and Korea, both the fees for requesting an examination and the fees for renewal are determined by the total number of claims. In this specific case, the authors write, “it may therefore be worth consolidating multiple claims, deleting those that have limited value and a high probability of refusal.”

Go green — opt for e-filing services. Many IP offices are now providing e-filing services to lower their carbon footprint and cut costs. In Korea, it costs 46,000 won to file a patent application electronically, with no limit on the page number, while it costs 66,000 won for a paper application of no more than 20 pages.

Contain your translation costs. There are three circumstances that incur translation costs: the filing or prosecuting of a patent application in non-English speaking jurisdictions; when a European patent is granted; and when validating a granted European patent in certain European Patent Office (EPO) member states. “Translation costs can be managed or reduced by focusing on English language jurisdictions, or blocs such as Latin America that share a common official language,” write Andrade and Viswanath. “Translation costs can be further reduced through effective patent drafting and by removing any redundant text from patent specifications.”

Use WIPO’s Patent Cooperation Treaty to defer national filing costs. The World Intellectual Property Organization (WIPO)’s Patent Cooperation Treaty (PCT) allows applicants to defer the costs for filing national applications in more than 150 countries by around 30 months from the date of first filing. This makes it easier for applicants to make informed decisions about their patenting strategy.

Choose search and examination authorities wisely. Filing under the PCT involves selecting one of 22 International Searching Authorities (ISAs) to search the prior art to determine the novelty and inventiveness of the relevant technology. “In general,” say the authors, “it is advisable to select an ISA located where you intend to file a national phase application. If, for example, the aim is to obtain a European patent, then the EPO is best placed to do the search.” It is also important to keep in mind that ISAs set their own fees, which can vary significantly, and some offer discounts. “The speed with which the different ISAs produce their reports, and their quality, are other important considerations when selecting an ISA,” the authors write.

Take advantage of expedited processing options. A number of national patent offices collaborate through a Patent Prosecution Highway (PPH), which helps to streamline and expedite the processing of patent applications. “PPH arrangements effectively allow each of the participating national IP offices to benefit from work already done by another patent office on a given patent application,” say the authors.

File a request for examination when you file your application. Unless an invention requires additional time to test its commercial potential, applicants should file a request for examination at the same time that they file a patent application. Some law firms don’t charge a fee for this, and it could save time and money in jurisdictions such as India, which have not signed on to any PPH agreements.

Don’t forget the modified substantive examination option. Under modified substantive examination, an IP office grants a patent if it corresponds to one granted in another jurisdiction, which could lead to significant savings in prosecution costs. For example, Malaysia recognizes corresponding patents in Australia, the EPO, Japan, Korea, the UK and the U.S.

Keep any supporting documentation in order. This includes assignment deeds and certified priority documents. Do this as soon as possible, as delays can be painful and costly.

Consider licensing rights to reduce maintenance fees. Maintenance fees account for up to 75% of the total estimated costs of a patent throughout its 20-year life span. “However,” say Andrade and Viswanath, “by declaring their intention to license a patent to a willing third party, applicants can benefit from discounted maintenance fees in around 20 countries, including Belarus, Brazil, the Czech Republic, Germany, Ireland, Italy, Lithuania, Latvia, Slovakia, Spain, the Russian Federation and the United Kingdom.”

Be open to strategic abandonment. Patent holders should continuously monitor the value of their patent and should be prepared to abandon it when it loses value. “Strategic abandonment can lead to substantial savings in maintenance fees payable throughout the patent’s life,” the authors write. “These generally increase substantially as the patent ages.”

Source: WIPO

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