Patent Cooperation Treaty (PCT) news and announcements

December 1, 2020 Change to IP Australia 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 IP Australia (IPAU) when acting as an International Searching Authority.  The new dollar amount of the search fee required by the IPAU will be $1,587 and will go into effect December 1, 2020.

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.

November 1, 2020 Changes 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 European Patent Office (EPO) when acting as an International Searching Authority.  The new dollar amount of the search fee required by the EPO will be $2107 and will go into effect November 1, 2020.

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 Russian Federal Service for Intellectual Property (Rospatent) when acting as an International Searching Authority.  The new dollar amount of the search fee required by the Rospatent will be $537 and will go into effect November 1, 2020.

October 2, 2020 Changes to Certain International and National Stage Fees

On August 3, 2020, the United States Patent and Trademark Office issued a final rule, “Setting and Adjusting Patent Fees during Fiscal Year 2020”, to set or increase certain patent fees, as authorized by the AIA.  Pursuant to the final rule, the following fees associated with International Stage and National Stage will be changed and will go into effect October 2, 2020.

Description

Regular

Small Entity

Micro Entity

Fee Code

INTERNATIONAL APPLICATION FEES (CHAPTER I)

(Fees associated with filing International Application under PCT)

 

TRANSMITTAL FEE

Basic Portion

$260

$130

$65

1601/2601/3601

 

SEARCH FEE

United States Patent and Trademark Office (USPTO) as International Searching Authority (ISA)

$2180

$1090

$545

1602/2602/3602

Supplemental search fee, per additional invention (payable only upon invitation)

$2180

$1090

$545

1604/2604/3604

 

MISCELLANEOUS FEES

Fee for transmitting IA to International Bureau as receiving Office under PCT Rule 19.4

$260

$130

$65

1621/2621/3621

Fee for requesting to restore the right of priority within two months from the expiration of the priority period

$2100

$1050

$525

1628/2628/3628

Late furnishing fee for providing a sequence listing in response to an invitation under PCT Rule 13ter

$320

$160

$80

1627/2627/3627

 

Description

Regular

Small Entity

Micro Entity

Fee Code

INTERNATIONAL APPLICATION FEES (CHAPTER II)

(Fees associated with filing Demand for International Preliminary Examination)

 

PRELIMINARY EXAMINATION FEE

USPTO as International Preliminary Examining Authority (IPEA)

USPTO was ISA in PCT Chapter I

$640

$320

$160

1605/2605/3605

USPTO was not ISA in PCT Chapter I

$800

$400

$200

1606/2606/3606

Additional examination fee, per additional invention (payable only upon invitation)

$640

$320

$160

1607/2607/3607

 

Description

Regular

Small Entity

Micro Entity

Fee Code

U.S. NATIONAL STAGE FEES

(Fees associated with filing U. S. National Stage under 35 U.S.C. 371)

NATIONAL STAGE FEES

Basic national fee

$320

$160

$80

1631/2631/3631

Examination fee

All other situations

$800

$400

$200

1633/2633/3633

Search fee

International Search Report prepared by other than the US and provided to the USPTO or previously communicated to the US by the International Bureau

$540

$270

$135

1642/2642/3642

All other situations

$700

$350

$175

1632/2632/3632

OTHER NATIONAL STAGE FEES

For each independent claim in excess of 3

$480

$240

$120

1614/2614/3614

For each application containing a multiple dependent claim

$860

$430

$215

1616/2616/3616

For every 50 sheets or fraction thereof of the specification and drawings that exceeds 100 sheets (excluding any sequence listing or computer program listing filed in an electronic medium)

$420

$210

$105

1681/2681/3681

Surcharge for filing search fee, examination fee or oath or declaration after commencement of the national stage

$160

$80

$40

1617/2617/3617

Fee for submission of Sequence Listing text file of 300 MB to 800 MB

$1060

$530

$265

1091/2091/3091

Fee for submission of Sequence Listing text file of more than 800 MB

$10,500

$5250

$2625

1092/2092/3092

FEES FOR REVIVING ABANDONED INTERNATIONAL APPLICATIONS

Fee for filing a petition to revive an international application abandoned unintentionally under 37 CFR 1.137(a)

$2100

$1050

$525

1453/2453/3453

October 1, 2020 Changes to Certain 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 October 1, 2020.

  • International filing fee (first 30 pages) - $1,446
  • International filing fee (first 30 pages - filed electronically without ePCT or PCT-EASY .zip file) - $1,337
  • International filing fee (first 30 pages - filed electronically with ePCT or PCT-EASY .zip file) - $1,229
  • Supplemental fee (for each page over 30) - $16

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 October 1, 2020.

  • Handling fee - $217

September 1, 2020 Changes 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 IP Australia (IPAU) when acting as an International Searching Authority.  The new dollar amount of the search fee required by the IPAU will be $1,507 and will go into effect September 1, 2020.

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 Russian Federal Service for Intellectual Property (Rospatent) when acting as an International Searching Authority.  The new dollar amount of the search fee required by the Rospatent will be $578 and will go into effect September 1, 2020.

August 1, 2020 Change to Rospatent 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 Russian Federal Service for Intellectual Property (Rospatent) when acting as an International Searching Authority.  The new dollar amount of the search fee required by the Rospatent will be $532 and will go into effect August 1, 2020.

July 1, 2020 Change to IP Australia 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 IP Australia (IPAU) when acting as an International Searching Authority.  The new dollar amount of the search fee required by the IPAU will be $1,341 and will go into effect July 1, 2020.

June 1, 2020 Change to Rospatent 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 Russian Federal Service for Intellectual Property (Rospatent) when acting as an International Searching Authority.  The new dollar amount of the search fee required by the Rospatent will be $501 and will go into effect June 1, 2020.

March 1, 2020 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 $1,036 and will go into effect March 1, 2020.

January 1, 2020 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, 2020.

•           International filing fee - $1,337 ($1,446 effective October 1, 2020)

•           International filing fee-filed electronically without ePCT or PCT-EASY .zip file - $1,236 ($1,337 effective October 1, 2020)

•           International filing fee-filed electronically with ePCT or PCT-EASY .zip file - $1,136 ($1,229 effective October 1, 2020)

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, 2020.

•           Handling fee - $201

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, 2020.

•           European Patent Office (EPO) - $1,950 ($2,107 effective November 1, 2020)

•           Korean Intellectual Property Office (KIPO) - $1,003

•           IP Australia (IPAU) - $1,483 ($1,341 effective July 1, 2020; $1,507 effective September 1, 2020; $1,587 effective December 1, 2020)

•           Russian Federal Service for Intellectual Property (Rospatent) - $616 ($501 effective June 1, 2020; $532 effective August 1, 2020; $578 effective September 1, 2020; $537 effective November 1, 2020)

•           Israel Patent Office (ILPO) - $1,016 ($1,036 effective March 1, 2020)

•           Japan Patent Office (JPO) - $1,457

•           Intellectual Property Office of Singapore (IPOS) - $1,622

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.

Some contents linked to on this page require a plug-in for PDF files.