PCT Newsletter 11/2020: Practical Advice

WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

The cost of filing an international application – finding out what fees are due when using ePCT‑Filing

Q:  I am going to file an international application for the first time, and I intend to use ePCT‑Filing.  Is there a way of finding out exactly how much the PCT fees will be before I submit my application?

A: The amounts of the fees payable upon filing a PCT application vary depending on your circumstances, as described below, but once you have entered all the necessary information in ePCT, the system will, before you submit the application, calculate the fees in real time, taking into account all the variables that can make fee calculation complex for applicants. 

The fees payable upon filing an international application are:  the transmittal fee (if applicable) (PCT Rule 14), the international filing fee (PCT Rule 15), and the search fee (PCT Rule 16).  Other fees may also be due where applicable, such as the fee for priority document and the fee for restoration of the right of priority.

Before the full and exact fee amounts can be calculated by ePCT, you will need to provide the information indicated below (shown in the order in which they appear when preparing your international application using ePCT‑Filing), as it all has a bearing on the total fee calculation.

1.  Select the receiving Office with which you wish to file the international application

Typically in any e-filing system or software, it is necessary to begin by selecting the receiving Office with which you intend to file.  This will directly affect the calculation of:

  • the transmittal fee, which is charged by most receiving Offices1 and varies, depending on which Office you have selected2, as well as any other fees that are charged by the receiving Office, and
  • the search fee, since the choice of receiving Office will also determine which International Searching Authority or Authorities (ISAs) are competent for your application (see below).

Although the main component of the international filing fee, which is payable for the benefit of the International Bureau (IB), is always the same amount, regardless of which receiving Office you select (currently CHF 1,330), it might have to be paid in the equivalent amount of a currency accepted by your chosen receiving Office.  However, where the selected receiving Office has a fee structure involving more than one currency, it may be possible to pay the transmittal fee in the local currency of the Office, and pay the international filing fee in a different currency – in such a case, it is possible to indicate multiple currencies.

2.  Indicate the priority claim (or claims), if any

If you request the receiving Office to prepare a certified copy of the priority document and transmit it to the IB, the amount of any fee that the Office charges for this service will be included in the fee calculation3.  Moreover, if you are requesting the restoration of the right of priority, the amount of any fee due will also be calculated.  The amounts of both of these fees, if applicable, vary depending on the choice of receiving Office.

3.  Indicate the State(s) of nationality and residence of the applicant (or applicants)

By indicating the State of nationality and residence of the applicant (or applicants) when entering the information under the “Names” section, the system will be able to validate the competency of the receiving Office that you have selected, given that, with the exception of the IB as receiving Office (RO/IB) (which acts as receiving Office for nationals and/or residents of all PCT Contracting States), all other receiving Offices will act as such only for nationals and/or residents of certain States. 

By indicating the nationality and residence of the applicant(s), ePCT can determine whether any fee reduction is applicable in respect of applicants from certain PCT Contracting States.  Note that it is important to indicate the nationality and residence of all the applicants in order for any such fee reduction to be correctly applied.

4.  Select the ISA if more than one ISA is competent to act as such for your international application4

As stated above, the receiving Office that is selected will determine the competent ISA(s).  Since many receiving Offices have specified more than one Office to act as ISA, you may have a choice of more than one5.  Your choice, if any, will determine the amount of the search fee that you will pay since each ISA sets the amount of its own search fee. 

Note that some ISAs offer fee reductions based on the State of nationality and residence of the applicant(s), and some ISAs offer fee reductions in cases where the applicant is a university or other academic institution, small or micro entity, or government agency.  Where applicable, applicants can indicate in ePCT that they fall into one of these categories, in order for the applicable fee reduction to be taken into account in the ePCT fee calculation.  

The language of filing of the application may also influence the amount of the search fee due, as some ISAs charge different amounts, depending on the language in which the international application is searched.

5.  Add the main body of the application

Once you have attached the main body of the application (the description, claims, abstract and drawings (if any)), ePCT will calculate the page count of your application.  In the case of certain receiving Offices (the Israel Patent Office and the United States Patent and Trademark Office) no content can be added in ePCT, but instead, the number of pages of each of the description, claims, abstract and drawings (if any) needs to be entered manually.  Do not forget that the number of pages of the request form (PCT/RO/101), including any declarations under PCT Rule 4.17, is included in the total page count and is calculated automatically by ePCT based on the bibliographic data entered.  If there are over 30 sheets in the application, ePCT will calculate the amount of the fee for those sheets in excess of 30, which is the second component of the international filing fee.

Since you are intending to file electronically, the system will, of course, automatically calculate the applicable e‑filing reduction under Item 4 of the Schedule of Fees annexed to the PCT 

Regulations that is accorded for ePCT‑Filings.  A more favorable fee reduction is applied if the description, claims and abstract is provided in a text-based format (DOCX or XML) rather than in an image‑based format (PDF).

Once you have entered all the necessary information, ePCT will be able to calculate the fees based on the data and documents present so far in the new international application.  The amount of the fees due is displayed using the “Show fees” button on the Fees screen, and the fee sheet can be previewed using the “Preview fee sheet” function. 

If you later make changes to your draft international application, the fees due may change as a result, and ePCT will automatically recalculate the fees for you.  For example:

  • adding more applicants may affect the entitlement to any fee reductions that may have been applied to the first calculation;
  • changing the language of filing or removing or changing applicants may mean that the chosen receiving Office is no longer competent, in which case you can change the receiving Office to RO/IB, which accepts filings in any language filed by applicants that are nationals/residents of any PCT Contracting State (note that, after creating your draft application in ePCT‑Filing, it is only possible to change the receiving Office to RO/IB); 
  • changing the language of filing or removing or changing applicants may also affect the choice of ISA, which in turn would affect the search fee; or
  • if additional documents are attached and those pages affect the page count, the fee per sheet over 30 may become applicable or, if already included in the initial calculation, may increase.

For applicants who are not in a position to file their international applications using ePCT, information on PCT fees can be found on the PCT website, in a single fee table (https://www.wipo.int/pct/en/fees.pdf) and in the individual Office‑specific Annexes in the PCT Applicant’s Guide (https://www.wipo.int/pct/en/guide/index.html).  Further information on sources of information on PCT fees will be published in the December issue of the PCT Newsletter.

  1. There is no transmittal fee charged by the receiving Offices of:  Algeria, China, India (in the case of e‑filings), Morocco, Mongolia, Slovenia and Turkey.
  2. Please note, however, that for a very small number of receiving Offices, it is not possible for ePCT to calculate the transmittal fee because the Offices concerned do not have a fee structure that allows the system to make the calculation – if your receiving Office is one of these, ePCT will show the following message under “Fees”:
    “IMPORTANT – ePCT is not able to calculate fees payable to this receiving Office.  Please refer to the receiving Office for the correct amounts due for payment.  Look up Annex C of the PCT Applicant’s Guide.”
    Unfortunately, in such a case the automated fee calculation sheet will be rendered with zeros at the time of filing and the receiving Office will issue Form PCT/RO102 (Notification concerning payment of prescribed fees) after filing in order to inform you of the fees due.
  3. Please note that for certain receiving Offices it might not be possible to fully calculate the fee for furnishing the priority document; for details please refer to the PCT Applicant’s Guide, Annex C.  If you are able to make use of the WIPO DAS system for furnishing the priority document, there is no fee payable if you request the IB to retrieve the priority document from DAS (although there may be a fee payable to some depositing Offices).
  4. You will have a wider choice if your selected receiving Office has specified more than one ISA, or, in the case of filings with the IB as receiving Office (RO/IB), where the States of which the applicant(s) is a resident and national are not the same.
  5. Where the RO/IB is selected as receiving Office, the competent ISAs are the same as would have been competent if the international application had been filed with the national Office of, or acting for, a Contracting State of which the applicant is a resident or national (PCT Rules 35.3 and 59.1(b)).