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Author
Marianna Boykova

Patent Attorney

19 October 2020

Ways to Manage Global Patent Costs

In the face of scathing budget cuts in economic turmoil, there is a growing demand for the development of effective strategies to manage and minimize the business-related costs, including the costs of global patents.

Those who dealt with patenting, and especially global patenting, know this process is expensive and time-consuming. However, there are some mechanisms that can reduce costs at different stages of the patenting process. Here are some ways to do so. Although, it is not always possible to reduce costs dramatically but a couple of saved rubles is still nice to have. When patenting, it is possible to save money both on the services of attorneys and on state duties. Let us consider everything in order.

One of the options to reduce the cost of global patenting is to conduct a preliminary search to determine the patentability of your solution and a first step in determining marketing strategy. If it is established that the solution is patentable, then in the future, you can expect that there will be no requests when considering the application in foreign agencies, or they will be formal. The search will be a solid foundation for the further application and the decision as a whole.

Before talking about global patenting, it is necessary to clearly understand if there is a need to do that abroad. For those who have come up with a solution, it will always be considered the best and most indispensable way to manage patent costs. But in any case, it is necessary to analyze where your solution will be in demand. For example, an ice maker will not be in great demand at the North Pole. In this regard, the main saving will be to identify the most promising countries for patenting. After that, it will be necessary to understand whether the selected countries belong to any regional patent offices.

If more than two countries are selected to be part of a single regional patent office, it is more advantageous to apply to a regional patent office rather than to each national office separately. Translation costs can be hefty, too. If the application for a patent is submitted to each national patent office separately, it will be necessary to submit a duly certified translation of the application into the national language, keep records and pay for the services of foreign attorneys in each individual country. This, in turn, will lead to increased costs. Some countries also provide for the possibility of keeping records in several languages, one of which is most often English.  Many countries have the option of keeping records in a single language, which will reduce the cost of patenting, as there will be no need to spend money on translation into both languages.

Now let us take a closer look at the possibility of saving on the services of foreign attorneys. Practically, foreign attorneys charge for each step, be it answering questions, sending correspondence, sending various documents to the agency or preparing a response to an inquiry. You can try to prepare answers to inquiries by yourself, but it may lead to another inquiry, which will lead to new expenses. The optimum option will be to hire a Patent Attorney in Russia, who will be able to prepare a response to an inquiry, answer many questions, develop a smart strategy of further actions to save money.  Also, when drafting documents for filing, all the documents should be submitted at the same time, so that there would be no need to send additional materials to the agency.

Next, let us consider the options for saving on duties. If you decided to initially file an international application in accordance with the Patent Cooperation Treaty, it is better to file it on behalf of an individual. This will reduce the international filing fee by 90%. Also, in many countries, the fees for individuals are significantly reduced in comparison with the fees for corporate applicants. When preparing an application, it should be understood that the volume of the application in many countries affects the fees. The fee depends on the number of pages in an application, the number of claims, both dependent and independent.

It should be emphasized that a well-written application which proved positive in some countries may serve as a basis for speeding up records management in other countries and reducing the possibility of receiving a request. To take advantage of this opportunity, there is a must to submit an additional application or request for the Patent Prosecution Highway (PPH). Currently, the PPH is the most common fast-track examination procedure for applications. This procedure allows the results of a previous search to be used in subsequent applications.

In addition, the subsidy programme from the Russian government is available, for the following purposes:

  • Preparation, filing and administration of international applications (PCT);
  • Payment of fees associated with the filing and examination of international applications (PCT);
  • Preparation, filing and processing of national and/or regional applications in foreign countries;
  • Payment of fees stipulated by the regulations of foreign national or regional patent offices related to the examination of applications, the issuance of patents and certificates and their keeping in force during the first three years;

Legal entities registered in the Russian Federation and producing goods and technologies, which include intellectual property, may participate in the Programme.

Thus, when thinking about global patenting it is necessary to understand that this process is expensive and may cost tens of thousands of dollars or euros.  And a competent approach to patenting, both in Russia and abroad, will reduce unnecessary costs at various stages of office procedure.

To minimize costs, it is most expedient to contact a patent attorney in your country. Applying to a patent attorney in the Russian Federation on the issues of global patenting will allow obtaining qualified legal assistance and answers, including the determination of the preliminary cost of obtaining a patent in the countries of interest and possible options to reduce costs.

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