Foreign patent costs

Foreign patent costs are high. If we’re talking about utility patents, expect about $2,000 to $6,000 for the initial filing in each country. That’s just the beginning of the international patent process. There will be ongoing costs in prosecuting each utility patent application in each country, although there are strategies to streamline the foreign process and thus reduce patent costs. Just as a US application will encounter rejections, you can expect that your application will also encounter rejections in each foreign country.

Costs will depend upon number of foreign countries

This might be obvious to some, but it bears emphasis – there is no such thing as an international patent. You must eventually file patent applications individually in each foreign country of jurisdiction. Therefore, costs will depend on the number of foreign countries desired. Most foreign patent offices will conduct their own examination of your patent application. In your eyes, it’s the same invention that has already been reviewed and possibly allowed in the US. Nevertheless, each foreign patent office will typically have their examiner review your application. There are strategies to streamline international patent prosecution, such as the Patent Prosecution Highway (PPH).

There are ways to defer those foreign patent costs. PCT is one mechanism to delay the filing in each foreign country.

Costs will depend upon number and scope of claims

Some foreign patent offices charge a hefty for claims in excess of a certain number. For example, the European Patent Office (EPO) charges an excess claim fee of nearly US$300 for each claim in excess of 15. In the US, 20 is the limit for utility nonprovisional applications.

Certain patent offices are less lenient in reviewing multiple claim sets. In the EPO, it is common to reduce the claims into a single claim set with only one independent claim. This raises the probability of filing continuing applications, which will increase cost.

This is a universal truth of utility patents – broader claims will encounter a higher probability of rejections. If you intend to fight for broader claims in foreign countries, expect an uphill battle even with a granted PPH request.

Costs will depend upon technology and prior art

Is the prior art crowded for your particular area of technology? If so, you can expect a higher probability of multiple rejections. Many foreign patent countries implement a two-stage process of examination:

  1. Initial filing (i.e., national stage application or conventional priority application under Paris Convention);
  2. Subsequent examination deadline.

In other words, many foreign countries require the patent applicant to file a request for examination that may be several years after the initial filing. This allows the applicant to conserve cash flow and defer foreign prosecution costs. This also buys time to enable the applicant to take advantage of any expedited patent procedures, such as PPH.

Costs will depend upon the language of the foreign country

Translation fees are a big part of foreign patent costs. It’s translating not only the patent application into a foreign language, but every Office Action and reply. Most foreign IP firms handle translation in-house, since they need to translate Office Actions into English and translate English instructions from the US client or patent attorney into their country’s language.

How to reduce international patent costs

You can easily how costs will multiply depending upon the number of countries, although the EU counts as one filing until the EPO application is allowed (at which point it will be “validated” in each individual European country). Here are ways to streamline international patent prosecution and control costs.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
If you are a startup or small business, we want to help. Our mission is to equip entrepreneurs with solid IP rights that facilitate funding, growth and sales. Let's get to work! Direct: 949.223.9623 | Email: vlin@icaplaw.com