PCT Newsletter 12/2020: 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 by consulting WIPO’s online resources

Q:  I am considering filing an international application for the first time, but would like to find out how much the PCT fees will be before I do so.  How can I do this?

A:  First of all, if you are planning on filing your PCT application using ePCT‑Filing, 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.  For further information, please refer to the Practical Advice published in PCT Newsletter No. 11/2020 at:

https://www.wipo.int/edocs/pctndocs/en/2020/pct_news_2020_11.pdf

If you do not intend to file your application using ePCT‑Filing or are not able to because your chosen receiving Office does not accept such filings, information on the fees payable upon filing an international application, as well as those payable for entering the national phase in the countries where you seek patent protection, is also available in various information resources which are available on the PCT website.  

The main fees payable upon filing an international application can be found in one place, in the PCT Fee Tables at:

https://www.wipo.int/pct/en/fees.pdf

Also, for each Office, the Annexes to the PCT Applicant’s Guide list the fees payable upon filing, other fees payable in certain circumstances during the international phase as well as the fees payable during the national phase (the national fees).  The Annexes also contain more detailed information on the requirements and other specificities of the Offices concerned, and can be accessed via links in the index at:

https://www.wipo.int/pct/en/guide/index.html

Note that the PCT Fee Tables are updated once a month, whereas the PCT Applicant’s Guide is usually updated, where applicable, once a week.

Before you consult those resources, however, you will need to know which fees you must pay in all cases upon filing the international application, and which fees you only pay under certain circumstances.  The main fees that you will have to pay upon filing, with an indication of the part of the PCT Fee Tables where those fees can be found, as well as an indication of the relevant Annex of the PCT Applicant’s Guide, are described below. 

Table I(a) of the PCT Fee Tables and PCT Applicant’s Guide, Annex C

The fees indicated below (and electronic filing fee reductions, if you are filing electronically) are indicated next to each receiving Office (RO) listed in column 1 of Table I(a) of the PCT Fee Tables.  Note that, in accordance with PCT Rule 19, you are entitled to file the international application with the national Office of or acting for the Contracting State of which you are a resident and/or a national, or with the International Bureau (IB) as receiving Office.  You may have a wider choice if you are a national of a country which is different from your country of residence, or if you are entitled to file with a regional Office as receiving Office (Annex C of the PCT Applicant’s Guide (“Receiving Offices”) indicates for each receiving Office, the States, the nationals and residents of which it is entitled to act as receiving Office for).

The transmittal fee (PCT Rule 14) – this fee (column 2), where applicable1, payable to the receiving Office with which you file the international application, varies depending on the receiving Office, and is usually in its local currency. 

The international filing fee (PCT Rule 15), including the fee which is payable for each sheet of the application which is over 302 – this fee (columns 3 and 4) is collected by the receiving Office for the benefit of the IB and is payable in the currency, or one of the currencies, prescribed by the receiving Office.  The equivalent amounts in currencies accepted by the receiving Office other than Swiss francs are subject to changes due to exchange rate fluctuations. 

Electronic filing reductionscolumns 5 to 7 contain the amounts of the reductions in the international filing fee that you would be entitled to if you were to file the international application in one of the electronic formats prescribed in Item 4(a), (b) and (c) of the Schedule of Fees annexed to the Regulations under the PCT.  Your chosen mode of filing would depend on the mode(s) of electronic filing, if any, that the receiving Office with which you file the application is prepared to accept (details about the modes of electronic filing accepted by each receiving Office concerned is contained in the corresponding part of Annex C of the PCT Applicant’s Guide).  The amount of the reduction, in currencies other than Swiss francs, is also subject to fluctuations in the applicable exchange rate.

The fees and reductions mentioned above can also be found in the corresponding part of the PCT Applicant’s Guide, Annex C, together with any other fee which might be due to the receiving Office in certain circumstances, for example, the fee for priority document (payable if you need to request the receiving Office to transmit to the IB a certified copy of an earlier application, the priority of which is claimed in the international application), or the fee for requesting restoration of the right of priority under PCT Rule 26bis.3(d).

Table I(b) of the PCT Fee Tables and PCT Applicant’s Guide, Annex D

The search fee (PCT Rule 16) – first of all you will have to ascertain which International Searching Authority (ISA)/ISAs is/are competent to act as such for your international application.  The ISAs that you can choose are listed in Table I(a) at the end of the row corresponding to your chosen competent receiving Office.  The search fee is collected by the receiving Office for the benefit of the ISA and is fixed by the ISA in its own currency.  Equivalent amounts of the search fee are therefore established in certain currencies accepted by the receiving Offices that have specified the Office concerned as a competent ISA.  The amount of the corresponding search fee payable to each ISA, together with the equivalent amounts in other applicable currencies, can be found in Table I(b) of the Fee Tables, or in the corresponding part of the PCT Applicant’s Guide, Annex D.  Note that some ISAs charge different amounts, depending on the language in which the search is going to be carried out, and some ISAs offer fee reductions, which will be discussed later.  Other fees besides the search fee may also be payable to the ISA in certain circumstances, such as the additional search fee and the protest fee.  For further information, please refer to the PCT Applicant’s Guide, Annex D.

Payment of the transmittal fee, international filing fee and search fee is required in all cases (apart from the few exceptions concerning the transmittal fee), and is due within one month of receipt of the application by the receiving Office. 

Tables I(c) and II of the PCT Fee Tables and PCT Applicant’s Guide, Annexes SISA and E

Other fees may also be payable in particular circumstances.  For instance if you decide to request a supplementary international search of your application under PCT Rule 45bis, you will have to pay the supplementary search fee and the supplementary search handling fee (see Table I(c) or the corresponding part of the PCT Applicant’s Guide, Annex SISA), and if you file a demand for international preliminary examination under PCT Rule 53 you will have to pay the preliminary examination fee and the handling fee (see Table II or the corresponding part of the PCT Applicant’s Guide, Annex E).  Other fees may also be payable in certain circumstances.  For further information, please refer to Annex SISA and E, respectively.

PCT Applicant’s Guide, National Chapters

Once you have decided on the countries in which you would like to proceed with your PCT application, you will have to pay further fees to each of the national Offices upon entry into the national phase, and this fee may comprise several components, depending on the Office concerned.  For information on the fees charged by designated (or elected) Offices in the national phase, please refer to the corresponding National Chapters of the PCT Applicant’s Guide

Possible fee reductions/refunds

As mentioned above, the international filing fee may be reduced if the application is filed electronically, but also, a number of receiving Offices offer a reduction in the transmittal fee, one ISA/IPEA offers a reduction in the search and preliminary examination fees, and a number of designated (or elected) Offices offer reductions in their national fees in the case of online filings. 

Other fee reductions may also be applicable, depending on your circumstances, as outlined below:

Fee reductions based on nationality and residence of the applicant(s):  reductions in the international filing fee, the supplementary search handling fee and the handling fee are available if all applicants named in the international application are nationals and residents of certain States.  For further details, please refer to the table at:

https://www.wipo.int/pct/en/fees/fee_reduction_january.pdf

Furthermore, a number of Offices offer reductions in the amount of the transmittal fee, and/or the search and preliminary examination fees for applicants from certain countries.

Fee reductions based on category of applicant:  some Offices offer reductions in the transmittal fee, the search and preliminary examination fees, and/or the national fee for certain categories of applicants, for example small entities, academic institutions or government agencies.

Reductions/refunds if earlier results can be used:  some Offices offer reductions, refunds or partial refunds if the results of prior search and examination can be utilized by them.  For example, some IPEAs charge a lower amount for the preliminary examination fee where the international search report was prepared by the same Office in its capacity as ISA.

Lower fees if the extent of the supplementary international search (SIS) is limited:  if you decide to request a supplementary international search, and are able to choose a more limited SIS at your chosen Authority, the fees will be lower as different amounts may apply depending on the extent of the document collection to be searched.

Exemptions, reductions or refunds of the national fee:  a number of national (or regional) Offices offer reductions in the national fees in a number of different situations, for example, for applications filed by certain categories of applicants or when the international search or preliminary examination was carried out by certain International Authorities.

To find out whether you are entitled to a reduction in respect of fees payable upon filing the international application, please refer to the corresponding footnotes to the Fee Tables;  in the case of all reductions or refunds in the international and national phases, please refer to the corresponding part of the PCT Applicant’s Guide, Annex C, D and E and National Chapters.

Further information on PCT fees

For further general information on PCT fees, please refer to the PCT Applicant’s Guide, paragraphs 5.184 to 5.199.

Consolidated information on fees and payments under the PCT System, containing links to other fee-related information, can also be found at:

https://www.wipo.int/pct/en/fees/index.html

  1. There is no transmittal fee charged by the receiving Offices of:  Algeria, China, India (in the case of electronic filings), Morocco, Mongolia, Slovenia and Turkey.
  2. For many years the international filing fee and the fee per sheet over 30 have been set at 1,330 Swiss francs and 15 Swiss francs, respectively.