Prosecution Costs: The Toughest Part of Patent Cost Estimation

Published on 17 October 2016

Patent prosecution is an integral part of the patenting process. The term “prosecution” refers to the interactions between an applicant and a National Patent Office with regards to either a patent application (pre-grant prosecution) or a granted patent (post-grant prosecution). While both pre-grant and post-grant prosecution may involve oppositions and amendments, pre-grant prosecution also generally involves office actions (or examination reports) issued by a Patent Office, subsequent responses filed by an applicant, and examiner interviews or hearings.

Estimating pre-grant prosecution costs can be a Herculean task as said costs may vary depending on the number of office actions, which, in turn, generally depend on the complexity of the disclosed invention. In some jurisdictions, such as India, since there is a defined time period of six months to place an application in order for grant, usually only one or two examination reports are issued by the Indian Patent Office during this time period. Any objections that remain outstanding after the applicant’s response(s) are discussed in a subsequent hearing, after which the Controller issues a grant or refusal order. However, in some other jurisdictions, such as the United States, there is no defined time period to place an application in order for grant and, thus, any number of office actions may be issued, thereby complicating the estimation of prosecution costs.

Let us consider a straight-forward PCT application filed by a large entity, with the USPTO serving as the International Searching Authority and the International Preliminary Examining Authority, that is to be filed 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. Table 1 depicts the total estimated pre-grant prosecution costs for electronic filing (excluding the costs of filing a request for examination, where applicable) in each jurisdiction, along with the average number of office actions (based on our research). The costs include the costs of reporting office actions, preparing responses, and processing responses, and range from $120 in South Africa to $5,730 in New Zealand.

Translation costs will be incurred in nine of the 20 jurisdictions (Brazil, China, Iran, Japan, South Korea, Kazakhstan, Mexico, Russia, and Ukraine). An estimate of the total translation costs is depicted in Table 2 (10 pages of translation per prosecution action).

With the exception of Brazil and Mexico, the estimated translation costs are at least one-third of the estimated prosecution costs and can be as high as 50% of the estimated prosecution costs (Figure 1).

Thus, the total estimated costs to prosecute a patent application in the above jurisdictions would amount to $59,717.

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Exchange Rates Used:

1 US Dollar = 1.30 Australian Dollars, 3.20 Brazilian Real, 1.29 Canadian Dollars, 6.66 Chinese Yuan, 0.89 Euros, 3.76 Israeli New Shekels, 66.57 Indian Rupees, 101.84 Japanese Yen, 1,094.57 Korean Won, 340.59 Kazakhstan Tenge, 18.44 Mexican Pesos, 4.06 Malaysian Ringgits, 1.34 NZ Dollars, 64.08 Russian Rubles, 3.75 Riyals, 1.35 Singapore Dollars, 26.94 Ukraine Hryvnia, and 14.03 South African Rands.

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