No less important than the volume of patenting costs, are their distribution over time. Successful patented inventions create significant return on investment, however, usually profit comes much later than the priority application is filed.
It should be clear, that in most cases, total patenting expence is way too high for independent inventors as well as for majority of small companies. Thus, many patent applicants consider attracting investment or selling licenses as soon as the technology is disclosed to the public.
We’ve heard western patent attorneys saying that they even don’t take independent inventors as customers, unless they have a proven track record of prior successful patenting…
However, patent timeline and patenting strategy can both be ‘tuned’, from the cost perspective, according to the financial situation of the patentee.
Patent owners, who are seeking to reduce risk, are usually choosing a patenting strategy, where they file cheap priority applications in countries without substantive examination. Such filing usually results in no more than 200 GBP in terms of official fees. In some countries, for example Lithuania, it results to around 100 GBP of official charges, yet compliance with the patenting strategy has to be maintained.
Key Components of A Patenting Strategy
After priority filing, one year of worldwide priority period is provided for filing of further applications. This period has to be properly used to attract investment or to begin selling patented products.
At the end of the priority period, there are just few :
- filing of PCT application
- filing of regional application (EP, AO, etc.)
- filing of national applications in selected countries
A wise combination of the listed items can be and are usually implemented.
For applicants, seeking relativelly wide protection (6 countries or more) , PCT is a reasonable route. This step incurs costs equivalent to approx. 2000 to 3000 GBP. PCT deffers further, even bigger costs by another 1.5 years (if filed after national priority application) or 2.5 years (if filed as a priority application).
Cost Defferment Tactics
As described above, the route of national priority and PCT application filing is convenient for cost defferment. Such strategy is often used by applicants, who need to raise funds or still need time to prove success of the patented product in order to decide and prepare itself for heavy investment in further patent prosecution.
The costs of patent specification drafting together with national priority application is the minimum ‘package’ in order to get started with patenting. In the figure (right) we show it in green column. It usually comes to around GBP 800 – 2000, depending of complexity of the invention and service providers chosen for patent specification drafting and application filing. The later step is quite easy to be done by the applicant her/himself. Therefore the cost can be reduced by another GBP 200.
Lower Total Costs
National priority filing is not effective from the cost perspective, especially if the country, where the priority is to be filled in, is not in line with the overall patenting strategy.
Usually national priority patent application is filed in the country, where the applicant is national. That is usually done for number of reasons: easier to prepare specification in a native language, easier to prosecute with patent examiners speaking your own language, etc. However, filing in the homeland country might not match with the patenting strategy, therefore the cost, might be excessive.
So, what the applicants tend to do to reduce total patenting cost, but still want to validate the patent broadly? They tend to file PCT patent application as the priority.
In the figure (right) we drew first column quite high as to represent patent specification drafting and PCT filing costs. It might be equivalent to GBP 3000 to GBP 5000. Then the second year features just very low PCT prosecution costs; whereas third and fourth year represents entry into the national phase or regional phase (EURO-PCT) of PCT application.
Lowest Costs Strategy for Small Number of Countries
If the number of countries, where the patent has to be validated is relatively small (2-5) and no deferment of costs is desired, PCT application is of little use and would rather increase total patenting costs. Still, in this scenario, national priority application can be filed and it is rather common practice to do so.
If you are planning to file your first patent application, and need an unbiased assessment on commercial viability of your product from the perspective of invention patenting, contact us at email@example.com for short advice or exhaustive consultation.