In a world where it is rare to get something for nothing, most would view the headline for this story with a hint of cynicism and an expectation that somewhere there is a hidden catch. However, this IPCopy correspondent wishes to assure you that there is a way for the UKIPO and other national receiving offices in Europe to cut the costs of filing PCT applications without losing a single penny/cent/krona of national revenue. The answer is to follow the market-led approach of our enlightened American counterparts.

At present, when filing a Request for an International Patent Application for a UK applicant with the UKIPO as receiving office there is only one option of search authority: the EPO. In contrast in America a PCT applicant is provided with a choice of International Search Authorities (ISAs). The current search fees vary from the ‘Platinum’ service provided by the EPO at a cost of $2419 down to the ‘Economy’ service of the Russian Patent Office at a mere $217. In between, the shrewd US applicant can also pick from the varying prices (and qualities?) of the USPTO, Korean IPO and IP Australia. All searches must meet minimum PCT standards and are conducted in English. So an applicant based in the home of the free (market economy) benefits from a sliding scale of search costs that vary in size by a factor of more than ten.

It should not be overlooked that the quality of a prior art search is an important factor in determining which ISA to choose. However, it is often the case that applicants can have their own searches carried out by third party organisations as well as by national offices such as the UKIPO (during the priority year for instance) for substantially lower cost than the current EPO ISA search fee. IPCopy has calculated that it is possible to obtain an outsourced private-sector search (from an Indian based company), a UKIPO search and the Russian ISA search for a combined cost that is still significantly less than that of a single current EPO search. It is also important to note that on eventual entry into the European Regional phase (about 18 months later) there will be a need to pay for a supplementary search when the ISA was not the EPO. But for many applicants, such as academic institutions, the actual deferment of large costs early in the life of a patent application is also a major consideration.

To put it in terms of hard numbers, a UK applicant filing a PCT application today of less than 30 pages electronically at the UKIPO would expect to pay official fees of at least £2421. If IPCopy’s suggestion of offering a choice of ISA was adopted the cost of filing could drop to just over £1000. That represents a staggering reduction in official fees of around 60% but with not one penny/cent/Krone lost in the revenue component destined for the national receiving office. In this way applicants could tailor their budget accordingly and choose to allocate spend on the search depending on whether they wanted the Platinum EPO approach or the more utilitarian Russian offering.

From a policy perspective it is hard to see how any pro-innovation government could fail to benefit from implementing such a small change in procedure. It would represent a huge financial boost to many patent applicants currently labouring under cost constrained conditions but still keen to protect their investment in R&D.

15 August 2013