To File or Not to File a National Phase Application: That is the Question

Published on 27 July 2016

A common question that prospective applicants pose to patent agents/attorneys is “How much will it cost to protect my invention?” to which the answer is usually in the form of a quote outlining the various costs involved. Such details will generally only include the immediate costs and thus do not provide a holistic picture of the costs involved through the expiration of the patent.

Let us consider the scenario of a medical device company that has filed a 52-page priority application in the United States, said application having 20 pages of drawings, three pages of claims, 11 claims, and a subsequent PCT application. Based on market research, the company has classified its potential markets into three categories- Tier 1 (high value), Tier 2 (intermediate value), and Tier 3 (low value) [Table 1]. Further, in addition to the Tier 1 markets, the company has identified certain Tier 2 and Tier 3 markets where the invention needs to be protected (highlighted in green in Table 1). With the protection in other markets being dependent on the costs involved, the markets highlighted in green will be referred to as “preferred markets”.

Now, the company wishes to estimate the costs to file a National Phase application in each market shown above in order to finalize the countries for filing.

The total costs (official, associate, and translation) for the preferred markets (Table 2) vary between $11,000 and $17,000, with Brazil, Japan, and South Africa being the exceptions. For European countries, it is assumed that the company follows the validation route.

In 70% of the preferred EPO markets, the total costs for validation vary between $9,000 and $15,000 (Table 3).

Thus, it would cost the company approximately $356,000 to register and maintain its patent for the complete term of 20 years in the preferred markets (assuming there is no future increase in costs).

The costs for protecting the invention in the rest of the Tier 2 and Tier 3 markets are depicted in Tables 4 and 6 respectively, while the corresponding EPO validation costs are depicted in Tables 5 and 7 respectively.

With the above estimates, the company can make an informed decision with regards to National Phase applications in other Tier 2 and Tier 3 markets. For example, it can choose to apply in all the countries because the total costs fall within the budget; or it can apply in selected countries, perhaps eliminating SA because of high costs; or it can drop all Tier 2 and 3 countries.

The Global IP Estimator is Quantify IP’s flagship software that accurately estimates the costs for a single patent family in less than a minute, based on data input by a user relating to one or more complete specifications, thus saving time and labor by eliminating the hassle of obtaining and reviewing multiple quotes. The costs are estimated based on our meticulous research of patent legislations in 150+ jurisdictions. An array of user customizable features makes the Global IP Estimator straightforward and easy to use. These features include setting the Receiving Office, Search Authority, Supplementary Search Authority, and Examining Authority for a PCT application; estimating translation costs based on number of pages or number of words; defining associate charges; and excluding specific stages of the patenting process.

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

Notes:

1. Prosecution costs are determined based on our research of the average number of office actions per country.
2. European Patent grant year is 2020, based on our research of ‘typical time-to-grant.’
3. No separate fee for examination.
4. Annuities for validation countries are from 2020 onwards.

Exchange Rates Used:

1 US Dollar = 1.38 Australian Dollars, 3.60 Brazilian Real, 0.69 British Pounds, 1.31 Canadian Dollars, 6.58 Chinese Yuan, 3127.41 Colombian Pesos, 6.65 Danish Krone, 8.90 Egyptian Pounds, 0.89 Euros, 3.86 Israeli New Shekels, 67.43 Indian Rupees, 109.03 Japanese Yen, 1,190.48 Korean Won, 18.56 Mexican Pesos, 4.14 Malaysian Ringgits, 8.32 Norwegian Krone, 1.47 NZ Dollars, 3.93 Polish Zloty, 67.07 Russian Rubles, 3.75 Riyals, 1.38 Singapore Dollars, 16 South African Rands, 8.31 Swedish Krona, 0.99 Swiss Francs, 35.68 Thailand Baht, 2.95 Turkish New Lira, 22,670.4 Vietnamese Dong, and 9.77 Dirham .