Patent Cooperation Treaty (PCT) news and announcements

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.

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.

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

•           International filing fee-filed electronically without ePCT or PCT-EASY .zip file - $1,236

•           International filing fee-filed electronically with ePCT or PCT-EASY .zip file - $1,136

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

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

•           IP Australia (IPAU) - $1,483 ($1,341 effective July 1, 2020; $1507 effective September 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)

•           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.

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