PCT News & Announcements
News & Announcements Concerning the PCT:
19 March 2013 Changes to certain fees
Effective 19 March 2013, the United States Patent and Trademark Office is implementing the micro entity provision of the Leahy-Smith America Invents Act (AIA). An applicant who qualifies as a micro entity under the procedures outlined in the final rules (http://www.uspto.gov/aia_implementation/77fr75019.pdf) will be eligible to pay reduced patent fees. The following fees will be adjusted as follows:
| Fee Codes | 37 CFR | Description | Regular |
Small Entity |
Micro Entity |
| 1631/2631/3631 | 1.492(a) | Basic National Stage Fee | 280 | 140 | 70 |
| N/A | 1.492(b)(1) |
National Stage Search Fee - U.S. was the ISA or IPEA and all claims satisfy PCT Article 33(1)-(4) |
0 | 0 | 0 |
| 1641/2641/3641 | 1.492(b)(2) | National Stage Search Fee - U.S. was the ISA | 120 | 60 | 30 |
| 1642/2642/3642 | 1.492(b)(3) |
National Stage Search Fee - search report prepared and provided to USPTO |
480 | 240 | 120 |
| 1632/2632/3632 | 1.492(b)(4) | National Stage Search Fee - all other situations | 600 | 300 | 150 |
| N/A | 1.492(c)(1) |
National Stage Examination Fee - U.S. was the ISA or IPEA and all claims satisfy PCT Article 33(1)-(4) |
0 | 0 | 0 |
| 1633/2633/3633 | 1.492(c)(2) |
National Stage Examination Fee - all other situations |
720 | 360 | 180 |
| 1614/2614/3614 | 1.492(d) | Claims - extra independent (over three) | 420 | 210 | 105 |
| 1615/2615/3615 | 1.492(e) | Claims - extra total (over 20) | 80 | 40 | 20 |
| 1616/2616/3616 | 1.492(f) | Claims - multiple dependent | 780 | 390 | 195 |
| 1681/2681/3681 | 1.492(j) |
National Stage Application Size Fee – for each additional 50 sheets that exceeds 100 sheets |
400 | 200 | 100 |
| 1617/2617/3617 | 1.492(h) |
Search fee, examination fee or oath or declaration after thirty months from priority date |
140 | 70 | 35 |
| 1618/2618/3618 | 1.492(i) |
English translation after thirty months from priority date |
140 | 70 | 35 |
|
1452/2452/3452
|
1.17(l) |
Fee for filing a petition to revive an international application abandoned unavoidably under 37 CFR 1.137(a) |
640 | 320 | 160 |
| 1453/2453/3453 | 1.17(m) |
Fee for filing a petition to revive an international application abandoned unintentionally under 37 CFR 1.137(b) |
1900 | 950 | 475 |
| 1454/2454/3454 | 1.17(t) |
Fee for requesting restoration of the right of priority by RO/US |
1420 | 710 | 355 |
The revised PCT Fee Schedule is available at: http://www.uspto.gov/patents/init_events/pct/sample/fees.jsp.
01 January 2013 Changes to Certain International and Search Fees
International Fees
The International Bureau of the World Intellectual Property Organization has informed the USPTO that due to changes in the exchange rate of the U.S. dollar with regard to the Swiss franc, the dollar amounts of the following fees for international applications filed in the United States Receiving Office (RO/US) and International Preliminary Examining Authority (IPEA/US) will be changed, effective 01 January 2013.
Chapter I
* International filing fee (for first 30 pages of the international application) - $1419
* International filing fee (first 30 pages - filed in paper with PCT-EASY file on diskette, CD-R or DVD-R or filed electronically without PCT-EASY zip file) - $1312
* International filing fee (first 30 pages - filed electronically with PCT-EASY zip file) - $1206
* Supplemental fee for each additional page over 30 - $16
Chapter II
* Handling fee - $213
International Search Fees
The International Bureau of the World Intellectual Property Organization has also informed the USPTO that the dollar amounts of the search fees required by the following International Searching Authorities will be changed, effective 01 January 2013.
* European Patent Office (EPO) - $2419
* Korean Intellectual Property Office (KIPO) - $1167
* IP Australia (IPAU) - $2282
* Russian Federal Service for Intellectual Property (Rospatent) - $217
New PCT Contracting State
On 07 June 2012, Panama (PA) deposited its instrument of accession to the PCT, thus becoming the 146th Contracting State of the PCT, and on 07 September 2012, will become bound by the PCT. Consequently, any international application filed on or after 07 September 2012 will automatically include the designation of Panama.
Also, because Panama will be bound by Chapter II of the PCT, it will automatically be elected in any demand filed in respect of an international application filed on or after 07 September 2012. Furthermore, nationals and residents of Panama will be entitled, as from 07 September 2012, to file international applications under the PCT.
Rospatent will act as an available ISA and IPEA for PCT applications filed with USPTO
The United States Patent and Trademark Office (USPTO) and the Russian Federal Service for Intellectual Property (Rospatent) have implemented an agreement under which Rospatent will act as an available International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for international applications filed with the USPTO as the Receiving Office (RO/US), under the Patent Cooperation Treaty (PCT). The starting date for the agreement is January 10, 2012.
The addition of Rospatent as an available ISA/IPEA choice will allow applicants additional flexibility in choosing a given international authority based on the technology disclosed in the international application, speed of services provided and cost of obtaining searches and examinations of international applications. Further details on the use of Rospatent as an ISA/IPEA for applications filed in the RO/US, please see the ROSPATENT Information Sheet.
New PCT Transmittal Fee Effective 15 November 2011
Section 10(h) of the Leahy-Smith America Invents Act requires applicants to pay an additional fee (called an “electronic filing incentive”) for applications that are not filed electronically via EFS‐web. Effective 15 November 2011, all new PCT international applications filed with the RO/US by mail or hand delivery will require payment of a transmittal fee consisting of:
(i) A basic portion ....................................................................................... $240.00
(ii) A non-electronic filing fee portion for any international application designating the United States of America that is filed on or after November 15, 2011, other than by the Office electronic filing system, except for a plant application:
By a small entity (§ 1.27(a)) ....................................................................... $200.00
By other than a small entity ........................................................................ $400.00
PCT-Patent Prosecution Highway (PPH) Between USPTO and and Various Intellectual Property Offices
The Patent Prosecution Highway (PPH) program has been expanded on a test basis to permit PPH eligibility for national- and regional-phase applications under the Patent Cooperation Treaty (PCT) on the basis of positive results in the PCT international phase. Under the PCT-PPH program, an applicant receiving a written opinion or an international preliminary examination report from one of the participating Offices that at least one claim in a PCT application has novelty, inventive step, and industrial applicability may request that the other office fast track the examination of corresponding claims in corresponding applications. The PCT-PPH will leverage fast-track patent examination procedures already available in both offices to allow applicants in both countries to obtain corresponding patents faster and more efficiently. As of May 25, 2010, the USPTO has eliminated the fee for the petition to make special under the PPH programs.
For a complete listing of the participating Offices, please visit: http://www.uspto.gov/patents/init_events/pph/index.jsp.
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