Patent Cooperation Treaty (PCT) News and Announcements

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

•           IP Australia (IPAU) - $1,589

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

•           Israel Patent Office (ILPO) - $969

•           Japan Patent Office (JPO) - $1,369

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

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.

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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