Thank you for sharing!

Your article was successfully shared with the contacts you provided.
The U.S. Patent and Trademark Office (PTO) is proposing double-digit fee hikes for international patent applications filed at the agency that fall under Patent Cooperation Treaty guidelines. The treaty, which involves more than 125 countries and is administered by the World Intellectual Property Association (WIPO), allows applicants to file an initial international patent application in one member country. On June 18, the PTO announced a proposal to increase search fees for prior art by 24% to $2,225 from $1,800 and application transmittal fees by 38% to $415 from $300. The agency is accepting written comments through August 18. In its Federal Register announcement, the PTO said it is proposing fee hikes “to recover the estimated average cost to the office” of processing the Patent Cooperation Treaty applications and preparing international search reports and written opinions for the applications. “The USPTO is required to set the [Patent Cooperation Treaty] transmittal fee and search fees at amounts that recover the estimated average cost to the Office,” said spokeswoman Jennifer Rankin Byrne. Filing an international application allows inventors to delay the cost of filing applications in individual countries, usually for 30 months, said David Dykeman, a Boston patent attorney and shareholder at Greenberg Traurig. The grace period gives the inventor time to decide which countries to file for permanent patent protection in, Dykeman said. “The [Patent Cooperation Treaty] application allows the applicant to file a single patent application that is recognized in most industrialized countries,” Dykeman said. “It acts as a placeholder to delay the potentially large expenses of foreign patent applications.” Higher fees may prompt some patent applicants to file international patent applications in other countries, but the price hike is unlikely to deter large numbers of applicants from using the PTO as the searching authority, Dykeman said. “If you go for a cheaper searching authority the quality of the search in the initial examination might not be as high,” Dykeman said. “There’s a definite trade off.”

This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.

To view this content, please continue to their sites.

Not a Lexis Advance® Subscriber?
Subscribe Now

Not a Bloomberg Law Subscriber?
Subscribe Now

Why am I seeing this?

LexisNexis® and Bloomberg Law are third party online distributors of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® and Bloomberg Law customers are able to access and use ALM's content, including content from the National Law Journal, The American Lawyer, Legaltech News, The New York Law Journal, and Corporate Counsel, as well as other sources of legal information.

For questions call 1-877-256-2472 or contact us at [email protected]

Reprints & Licensing
Mentioned in a Law.com story?

License our industry-leading legal content to extend your thought leadership and build your brand.


ALM Legal Publication Newsletters

Sign Up Today and Never Miss Another Story.

As part of your digital membership, you can sign up for an unlimited number of a wide range of complimentary newsletters. Visit your My Account page to make your selections. Get the timely legal news and critical analysis you cannot afford to miss. Tailored just for you. In your inbox. Every day.

Copyright © 2021 ALM Media Properties, LLC. All Rights Reserved.