Twelve ways to manage global patent costs

• Author: Anthony de Andrade - Venkatesh Viswanath
• Position: President and CEO - Senior Analyst, Quantify IP

1. Do your homework before deciding where to file

   A first essential step is to develop a smart patent filing strategy. This involves assessing the market potential and growth of a technology over the life of a patent; the location of manufacturing centers; competitors and their filing strategy; the nature of the invention; and the enforceability of patents.

   The nature of your invention will inevitably determine your target markets but when identifying them, it is really important to consider how different jurisdictions define what may or may not be patented. For instance, in certain jurisdictions, including Canada, Europe (via the European Patent Office (EPO)) and India, inventions relating to methods of treatment or diagnosis cannot be patented. The patentability of software, business methods, genetic material, and stem cells also varies across jurisdictions and should be factored into filing strategy decisions.

2. Fees vary in relation to the number of claims

   Filing fees can also vary across jurisdictions. The number of claims in an application can affect the fees payable when filing a patent application, requesting its examination and maintaining its validity. For instance, in the United States, the filing fee goes up when an application contains more than 20 claims and more than three independent claims. An “independent claim” defines the unique features of the disclosed invention and can form the basis for one or more “dependent claims”, which pertain to a particular embodiment of the invention and further refine an independent claim. In the Russian Federation, the fee for requesting an examination is set according to the total number of independent claims in an application. And in Japan and the Republic of Korea, both the fees for requesting an examination and the renewal fees are determined by the total number of claims. This is also the case for renewal fees in Indonesia (total number of claims) and Viet Nam (number of independent claims).

   When filing applications in Japan and the Republic of Korea, it may therefore be worth consolidating multiple claims to create a single claim that is dependent from multiple claims, deleting those that have limited value and a high probability of refusal.

   Also, law firms often charge for handling any additional claims and these costs can exceed official filing fees.

3. Go green – opt for e-filing services

   In an attempt to improve their carbon footprint, cut costs and improve efficiency, many IP offices, including those of Australia, Brazil, India, Japan, Malaysia, the Republic...