Go Green: File Electronically and Pay Reduced Costs

Published on 8 December 2016

‘Go Green’ has become a catchphrase that is being used in a widespread manner, as the global community strives to reduce its carbon footprint and live sustainably. As per The Small Business Nation (U.S. Chamber of Commerce), going “Green” is defined as taking steps to “conserve energy, reduce pollution, and save money.”

A significant part of these Green initiatives involves moving from paperwork to paperless, as more paperwork implies more cutting of trees. Not to be left behind, several patent offices around the globe have launched their own ‘Go Green’ initiatives and offer discounted fees for paperless (i.e. electronic) filing. In fact, when asked about the USPTO’s decision to sharply increase the fees for non-electronic filing, Mary Boney, the USPTO Trademark Commissioner, remarked, “Lawyers have got to start filing electronically – if not, it’ll cost you” (World Trademark Review; 2016).

Let us consider a 40-page PCT application with 15 claims, five pages of drawings, and filed by a large entity. We will use the USPTO as the International Searching Authority and the International Preliminary Examining Authority, for this example, and file in the National Phase in the top 20 patent jurisdictions* in the world. For the purpose of this analysis, EPO member states have not been considered separately.

The estimated official non-electronic filing costs vary from $26 in Russia to $2,214 in Europe, while the estimated official electronic filing costs vary from $26 in Russia (no discount) to $2,114 (4.5% savings) in Europe (Table 1). Of the 20 jurisdictions, Japan offers the largest discount for filing electronically at 67.5%, for this particular example. Some countries, such as New Zealand, do not offer discounts for electronic filing at this time.

Seven out of the 20 patent offices (Australia, Brazil, Europe, India, Japan, South Korea, and Malaysia) offer discounted fees for electronic filing and, in some cases, these savings can be quite substantial. The fees for non-electronic filing in the seven jurisdictions are approximately 1.05 times to 1.5 times the fees for electronic filing, with the exception of Japan (3 times) and South Korea (1.9 times), which offer the largest incentives to Go Green (Figure 1).

It is interesting to note that, unlike the European Patent Office and the Malaysian Patent Office, which do not offer the electronic filing discount on the fees for extra pages and extra claims, respectively, the Indian Patent Office offers the discount on the filing fees, as well as the fees for extra pages and extra claims. It is also interesting to note that a 15% discount for electronic filing is offered by the Russian Patent Office only for direct filings (not applicable to PCT National Phase).

Thus, the total estimated non-electronic filing costs in the above 20 jurisdictions is $7,778, while the total estimated electronic filing costs is $7,213--a savings of approximately 7%.

Interested in getting similar estimates that can save you money? The Global IP Estimator is Quantify IP’s flagship software that accurately estimates the patenting costs for a single patent family. The costs are estimated based on our meticulous research of patent legislations in 150+ jurisdictions. Specific stages of the patenting process (filing, examination, prosecution, grant, and maintenance) can be included or excluded from the estimates. The estimates can be generated both for electronic filing, as well as for non-electronic filing.

Want to know more? Visit www.QuantifyIP.com , email us at qipcontact@quantifyip.com, or call us at +1-808-891-0099.

Venkatesh Viswanath (Senior Analyst, Quantify IP) contributed to this article.

Exchange Rates Used:

1 US Dollar = 1.30 Australian Dollars, 3.25 Brazilian Real, 1.34 Canadian Dollars, 6.76 Chinese Yuan, 0.90 Euros, 3.82 Israeli New Shekels, 66.72 Indian Rupees, 103.05 Japanese Yen, 1,144.3 Korean Won, 341.03 Kazakhstan Tenge, 19.34 Mexican Pesos, 4.19 Malaysian Ringgits, 1.37 NZ Dollars, 63.64 Russian Rubles, 3.75 Riyals, 1.38 Singapore Dollars, 25.83 Ukraine Hryvnia, and 13.48 South African Rands.

*- Top twenty patent jurisdictions taken from WIPO’s World IP Indicators 2015

The estimates are inclusive of:

1. The fees for extra pages and extra claims;
2. The fees for extra claims;
3. The fees for extra pages, designation fee, and search fee;
4. The first annuity costs;
5. The fees for extra pages in South Korea (non-electronic filing only);
6. Form-22 filing costs
7. Publication fee; and
8. The search and examination fees