Posted on May 26, 2017 in Advice, News | 0 comments

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Foreign patent filing can be an expensive and complicated process. The Maxham Firm can guide you through this process with ease while remaining budget friendly and one way to do that is to use the Patent Cooperation Treaty (PCT). While there are many contingencies on which PCT and foreign filing hinge, here are some basics to starting the process, along with some broad investment estimates.

There are two primary routes available for filing patent applications in foreign countries.  One route is that you can file directly in each foreign country or through a regional office based on the US patent application priority date.  Alternatively, you can file through the Patent Cooperation Treaty (PCT), which is available in many, but not all, countries.  A primary advantage of the PCT route is that, for a fee of about $7,500 – $9,500, you can delay the ultimate filing decisions (and the substantial costs of translations and the filing fees in the chosen foreign countries) for up to thirty (30) months after the priority date (that is, the filing date of the U.S. patent application).  A bonus of this delay is that you get an international search and an indication of patentability. If you file a PCT application, it still must eventually proceed with actual filings and translations in the various national or regional offices during the final stages of the PCT process, but the decision as to which countries are of primary interest can be delayed for that 30 months (or 31 months in some countries/regions), when you are likely to have better information as to the potential of the invention in specific countries.

            Please be aware that Taiwan and some South American countries are not members of the PCT, so the date for filing in those countries is one year from the US filing date.

            When considering a foreign filing budget, you may reasonably expect typical costs to be about $2,650 for English-speaking countries (Canada, Australia); $8,500 – $10,500 for most of Europe as a region (European Patent Office- EPO); and $4,500 and up for translation countries, such as Japan. The translation costs depend upon the length of the patent application. The alternative PCT filing route costs are set out above.  There are annual maintenance fees (annuities) in most countries, examination fees, and prosecution charges in each country that are usually not included in the filing estimate. These costs may begin within a year after filing.  The conventions reserve the filing dates but do not bypass the prosecution procedures and costs for the member countries.

  Contact us today by phone call or e-mail and we will discuss with you an estimate of the filing, examination, and prosecution costs.

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