Patent Cooperation Treaty (PCT) news and announcements

November 1, 2019 Change to certain search fees

The International Bureau of the World Intellectual Property Organization has informed the United States Patent and Trademark Office that a new dollar amount has been established for the search fee required by the Japan Patent Office (JPO) when acting as an International Searching Authority.  The new dollar amount of the search fee required by the JPO will be $1,472 and will go into effect November 1, 2019.

The International Bureau of the World Intellectual Property Organization has informed the United States Patent and Trademark Office that a new dollar amount has been established for the search fee required by IP Australia (IPAU) when acting as an International Searching Authority.  The new dollar amount of the search fee required by the IPAU will be $1,492 and will go into effect November 1, 2019.

The revised PCT Fee Schedule will be available at: http://www.uspto.gov/patents-getting-started/international-protection/patent-cooperation-treaty/pct-fees-us-dollars.

October 10, 2019 Change to KIPO search fee

The International Bureau of the World Intellectual Property Organization has informed the United States Patent and Trademark Office that a new dollar amount has been established for the search fee required by the Korean Intellectual Property Office (KIPO) when acting as an International Searching Authority.  The new dollar amount of the search fee required by the KIPO will be $991 and will go into effect October 10, 2019.

September 1, 2019 Change to KIPO search fee

The International Bureau of the World Intellectual Property Organization has informed the United States Patent and Trademark Office that a new dollar amount has been established for the search fee required by the Korean Intellectual Property Office (KIPO) when acting as an International Searching Authority.  The new dollar amount of the search fee required by the KIPO will be $1,101 and will go into effect September 1, 2019.

March 1, 2019 Change to ILPO search fee

The International Bureau of the World Intellectual Property Organization has informed the United States Patent and Trademark Office that a new dollar amount has been established for the search fee required by the Israel Patent Office (ILPO) when acting as an International Searching Authority.  The new dollar amount of the search fee required by the ILPO will be $963 and will go into effect March 1, 2019.

IP5 PCT Collaborative Search and Examination Pilot update

Beginning July 1, the USPTO will accept new international applications to the IP5 Patent Cooperation Treaty (PCT) Collaboration Search and Examination Pilot (CS&E). This pilot was launched by the five largest intellectual property offices in the world (IP5) on July 1, 2018. Visit the CS&E pilot webpage on the World Intellectual Property Organization website for more information on the number of applications accepted into the pilot.

The pilot allows examiners from all five offices, with different working languages, to collaborate on the search and examination of a single international application. The result is an international search report and written opinion from the chosen international searching authority based on contributions from all participating offices. Benefits to applicants include a search done by multiple examiners in different languages, increased predictability of outcome, and no extra cost. The pilot aims at assessing user interest for a CS&E product and the expected efficiency gains for offices.

The requirements for participation in the pilot include limits on the number of applications to be accepted. The USPTO, in its capacity as an International Searching Authority (ISA), has reached its first year limit for accepting applications into the pilot. The EPO, in their capacity as an ISA, previously announced that they have reached certain limits for acceptance of applications in the first year of the pilot.

For more details on the pilot, see the previously published Federal Register Notice and the CS&E pilot webpage on the USPTO website. Inquiries concerning the CS&E pilot may be directed to Michael Neas, Deputy Director, International Patent Legal Administration, by phone (571) 272-3289 or by email to michael.neas@uspto.gov.

January 1, 2019 Changes to PCT fees

The International Bureau of the World Intellectual Property Organization (WIPO) has informed the United States Patent and Trademark Office (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 will be changed and will go into effect January 1, 2019.

•           International filing fee - $1,352

•           International filing fee-filed electronically without ePCT or PCT-EASY .zip file - $1,250

•           International filing fee-filed electronically with ePCT or PCT-EASY .zip file - $1,149

The International Bureau of the WIPO 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 amount for the handling fee required by USPTO when acting as an International Preliminary Examining Authority will be changed and will go into effect January 1, 2019.

•           Handling fee - $203

The International Bureau of the WIPO has informed the USPTO that a new dollar amount has been established for the search fees required by the following International Searching Authorities and will go into effect January 1, 2019.

•           European Patent Office (EPO) - $2,053

•           Korean Intellectual Property Office (KIPO) - $1,169 ($1,101 effective September 1, 2019 and $991 effective October 10, 2019)

•           IP Australia (IPAU) - $1,589 ($1,492 effective November 1, 2019)

•           Russian Federal Service for Intellectual Property (Rospatent) - $612

•           Israel Patent Office (ILPO) - $969 ($963 effective March 1, 2019)

•           Japan Patent Office (JPO) - $1,369 ($1,472 effective November 1, 2019)

•           Intellectual Property Office of Singapore (IPOS) - $1,633

Filing patent applications electronically during designated significant electronic filing system outages

Applicants who filed a patent application, including an international application under the PCT, from August 15 through and including August 23, 2018, may now request a refund of the non-electronic filing fee. Applicants who filed applications via EFS-Web or EFS-Web Contingency during this period do not need to do anything.  For detailed information, please visit: https://www.uspto.gov/patent/fees-payment-information/filing-patent-applications-electronically-during-designated.

July 1, 2018 PCT Collaborative Search and Examination Pilot

On July 1, 2018, the five largest intellectual property offices in the world (IP5) launched a Patent Cooperation Treaty (PCT) Collaborative Search and Examination Pilot.  The pilot allows examiners from all five offices, with different working languages, to collaborate on the search and examination of a single international application. The result is an international search report and written opinion from the chosen international searching authority based on contributions from all participating offices.  Benefits to applicants include a search done by multiple examiners in different languages, increased predictability of outcome, and no extra cost.

For more information, including how to request to have an application included, view the Federal Register Notice or visit the pilot's page on the USPTO website.

January 16, 2018 Changes to certain fees

On November 14, 2017, the United States Patent and Trademark Office issued a final rule, “Setting and Adjusting Patent Fees during Fiscal Year 2017”, to set or increase certain patent fees, as authorized by the AIA.  Pursuant to the final rule, certain International Stage and National Stage fees were changed/added effective January 16, 2018.

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