How can you save money on international patent costs?

How much does an international utility patent application cost?

International patent costs can escalate quickly. When pursuing utility patents in foreign countries, you cannot ignore the cost factor. Simply put, foreign utility patents cost a lot, i.e., 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.

How can your US patent firm save international patent costs?

A cost conscious US patent attorney can help save you money by implementing strategies to reduce legal expenses. This can be accomplished by comparing the service fees of foreign IP firms and reducing the amount of brainwork required by foreign IP agents.

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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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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