Multiple Priority Applications: Cost Implications

Published on 9 February 2017

In patent legislations across the world, the “right of priority” refers to the right of an applicant to file a first application disclosing a specific invention in one jurisdiction, and then to file one or more subsequent applications, wherein the one or more subsequent applications are deemed to have been filed on the same date as the first application. Thus, the first-filed application is not considered to be prior art for the subsequent applications. In such cases, the first-filed application is also known as a “priority application.”

Generally, a right of priority can be claimed in four different circumstances. First, a subsequent application may be filed in the same jurisdiction in which the first application was filed. For instance, the first application could be a provisional application, while the second application could be a non-provisional (i.e. complete) application. Second, one or more applications may be filed directly in foreign jurisdictions under the Paris Convention within twelve months from the date of filing of the first application. Third, the subsequent application may be an international application filed under the Patent Cooperation Treaty, again within twelve months from the date of first filing. Fourth, the subsequent application may be a European patent application that claims priority to an earlier application that was filed in a member state of the European Patent Office (“EPO”).

Further, the subsequent application may claim priority to just a single, earlier-filed application (single priority), or more than one such application (multiple priorities). In the case of the latter, the priority applications may be from the same jurisdiction or from different jurisdictions.

Let us consider a 35-page specification (including five pages of drawings) having 15 claims, that is to be electronically filed* in each of the top 20 patent jurisdictions** in the world. The estimated total filing costs (including official, associate, and translation costs) to file a patent application based on a single priority application vary from $632 in Malaysia to $4,896 in Japan, while the same costs based on dual priorities vary from $695 in Malaysia to $4,947 in Japan.

The costs in Canada, Israel, and Iran are not dependent on the number of priority applications. In all the other jurisdictions, except India, the total costs for dual priorities over a single priority increase between 1% in Japan to 10% in Malaysia, due to an increase in associate charges.

China ($11 per priority), South Korea ($15 per priority), India ($117 per priority), Mexico ($51 per priority), and South Africa ($4 per priority) have an official fee for each priority that is claimed.

In case more than two priorities are claimed, the costs will increase accordingly.

Interested in getting similar estimates? 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 software has the capability of generating costs depending on the number of priority applications.

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

Exchange Rates Used:

1 US Dollar = 1.38 Australian Dollars, 3.26 Brazilian Real, 1.34 Canadian Dollars, 6.96 Chinese Yuan, 0.96 Euros, 68.27 Indian Rupees, 3.86 Israeli New Shekels, 117.58 Japanese Yen, 1,208.38 Korean Won, 21.03 Mexican Pesos, 4.49 Malaysian Ringgits, 1.44 NZ Dollars, 60.96 Russian Rubles, 3.75 Riyals, 1.45 Singapore Dollars, 27.10 Ukraine Hryvnia, and 13.82 South African Rands.

*- It is assumed that all the applications are filed at the same time

**- Top twenty patent jurisdictions taken from WIPO’s World IP Indicators 2016

The estimates are inclusive of:

1. The fees for extra claims;
2. The fees for extra pages;
3. State designation fee;
4. The European search fee;
5. The first annuity;
6. Statement of inventorship filing costs; and
7. The search and examination fees