How much do international utility patents cost?

If you are thinking of pursuing utility patents in foreign countries, one big factor is the cost. Simply put, foreign utility patents cost A LOT, and “A LOT” likely means much more than you want to spend.

You have to deal with not only the foreign patent office, but also the foreign IP attorneys who will represent you in each foreign country. The initial foreign filing costs are the tip of the iceberg. Since we deal with startup clients, we’re always on the look for ways to save our clients money.

So, the next question is “How do we control foreign patent costs?” Notice I did not say eliminate, but control – i.e., managing these costs to keep them from getting out of control.

Keep in mind you’re dealing with not only the foreign patent office, but also the foreign IP attorneys representing you in each foreign country or region. The initial foreign filing costs are the tip of the iceberg. 

In 2017, costs for filing and maintaining patents in four to five countries were estimated to exceed $200,000.

Since we deal with startup clients, we’re always on the look for ways to save our clients money. Here are cost-effective strategies for controlling international patent costs.

Your US patent firm is the key to saving money

If you have a US patent attorney looking to save you money, then consider yourself blessed because that attorney will implement strategies to reduce legal expenses, particularly the service fees of the foreign IP attorneys.

Your US patent firm is Command Central for worldwide patent protection. They should be familiar with the technical details of your patent application. If they have responded to any Office Actions, then they would also be familiar with not only with the cited prior art references, but also the claim amendments submitted to the USPTO to overcome the prior art rejections.

The key to saving money, therefore, is to leverage the brainwork of your US patent team to instruct the foreign associates on how to respond to official actions by their respective patent offices. This saves the foreign IP lawyers from duplicative analysis, which saves you legal fees.

Selecting key foreign countries

This one is fairly obvious, but worth emphasizing. You should pick only those countries where you see value in having either patent-pending status or a granted patent. Patents are territorial in that you only have the right to exclude in those countries where your patent is granted.

That being said, it does not necessarily mean that you must file in every country where your product might be manufactured or sold. If the greatest markets for selling the product are limited to only a few countries, perhaps it may be more cost-effective to focus on the countries with high sales.

Use PPH if available

The Patent Prosecution Highway (PPH) is a reciprocal program between various patent offices throughout the world to streamline the patent review process by reducing duplicative effort. The purpose of PPH is to allow a patent applicant to benefit from a prior favorable decision when filing a patent application with similar claims in another country.

Basically, the applicant is asking the patent office in Country B to allow the patent application in Country B based on a prior favorable ruling on those same claims by a different patent office in Country A. PPH can lead to significant cost savings in pursuing worldwide utility patents.

Amend PCT claims prior to entering national stage

A PCT applicant will have at least one opportunity to amend the claims in the PCT application prior to the national stage deadline. This enables the applicant to enter the national phase with claims with greater allowability over the prior art than the original claims.

What are foreign annuities?

Many foreign patent offices impose a yearly tax to keep a pending patent application alive, so you’ll need to budget these annual costs before the patent is granted. Each foreign patent office will have their own deadlines and government fees for renewing/maintaining an issued patent in.

How to control patent costs in Europe

A single patent application may be filed with the European Patent Office (EPO) to obtain patent-pending status in all member European Union countries. The EPO charges a hefty surcharge of roughly US$300 for each claim in excess of 15. For example, a typical US utility application with 20 claims will incur approximately $1,500 in EPO excess claims fees due to five claims in excess of 15. Therefore, it may be cost-effective to prepare and file a Preliminary Amendment with the initial filing of the EPO application that reduces total claims to around 15. 

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.