Global patent filing trends, especially in Southeast Asia, have been steadily on the rise, and anyone who has been involved with the preparation, filing, prosecution and maintenance of patents around the world will readily agree that global patenting is a highly complicated and expensive undertaking requiring careful planning and serious considerations. Patenting a single invention in multiple countries can cost in excess of US$1 million over the terms of the granted patents. Even the costs of simply filing the applications for patents in multiple countries can easily run into the hundreds of thousands of US dollars.
With the use of the Patent Cooperation Treaty (PCT), cost savings can be achieved by streamlining some of the application procedures. Under the PCT, the need to work with foreign agents can be delayed until 30 or 31 months from the earliest claimed priority in the application, 18 months longer than available under the Paris Convention. When the national phase entry deadline approaches, the applicant is faced with the decision of determining which countries to file, assembling the required documents (many of which will be available on the WIPO website), and instructing the local agents to proceed.
Often one of the most challenging tasks is to decide where to file for patent protection so as to achieve maximum protection with minimum costs spent. In the current global economic downturn, filing decisions have become even more difficult as companies have fewer financial resources for patent protection. To aid both applicants and patent practitioners, this story will discuss various ways savvy practitioners can minimize the costs of patenting using the countries in Southeast Asia as an example, though similar considerations are also applicable in other countries of interest as well.
We will first explore some cost-savings practices in general, applicable in all countries, and then look at measures that are specific to individual countries. Additionally, we will only focus on PCT filings based on applications claiming priority from first filings outside Southeast Asia.
One of the key ways of ensuring a more efficient and cost-effective patent filing and prosecution process is to start your planning early and allow yourself and your agent sufficient time to do their work. Patent applicants and professional representatives alike seem to wait until the last minute to send instructions for filing, national phase entry from PCT applications, and responses to official actions. Sometimes last minute instructions cannot be avoided, but most often, late instructions are due to long-standing habits within the profession. Patent agencies around the world have done their best to accommodate their clients’ last-minute tendencies. In order to be ready for any last minute instructions, agencies must keep additional staff to handle the rush filings or resort to overtime for their already busy staff. However, at times, the client omits or provides incomplete documents or information which causes further delays in the filings. This, of course increases costs to the agency and ultimately to the applicant. Therefore, to ensure timely filing of application with minimum costs incurred, it is a good practice to provide ample time for the patent agent to prepare and file the application.
Preparation of Translations
Countries such as Thailand, Indonesia and Vietnam require local translation of patent specifications to be submitted to the patent office. It is important to be aware that translation costs often contribute to a significant part of the patenting expenditure. Typically, the translation cost can be at least two, to as high as five, times or more the cost of filing itself, depending on the number of pages of the specification. Moreover, when applications or instructions requiring translations are sent in late, the applicant can be charged a premium of anywhere from 1.5 to four times the normal translation costs for the rush job. Furthermore, a rushed job will often result in poor quality of translation filled with inconsistencies and errors. For applications entering the national phase from a PCT filing, most countries will allow the correction of an inconsistent or erroneous translation based on the PCT publication. Be aware, however, for direct national filings, there may be no corrections available as any changes in the specification as filed may be viewed as introducing new matters. Therefore, for significant cost savings, it is essential to prepare the translation early and find a reputable translation service with reasonable costs. You should always check with your local agents for best recommendations.
In addition to attending to the mechanics of filing, the agent in the country of filing may review the description, claims and drawings to ensure they comply with local requirements, making any changes where necessary (or at least when sufficient time is given). If the agent filed what the applicant sends, the applicant may often be faced with additional costs to bring the application into formal compliance after filing. This adds to the overall cost and lowers the efficiency of the process. It is also useful to note that for applications entering the national phase, the specification must be the same as published under the PCT with any amendments made under Articles 19 and/or 34. Most often, changes can only be made by preliminary amendment following entry.
The above recommendations also apply to instructions for preparing responses to official actions. If the instructions and any amendments are sent to the foreign agent late, the lack of sufficient time can reduce the efficiency and increase the cost. This is because the foreign agent needs time to convert the applicant’s instructions into an acceptable response under local rules. If sufficient time is not available prior to the deadline for responding, the result is either buying an extension of time (if available) or filing a partial complete response, which will generate further official actions, which will end up costing the applicant more. In all of these cases, when translations into the local language are required, the time needed to efficiently prepare and file a response is increased. Therefore, giving your instruction early also allows the agent sufficient time to get back to you if further clarification or input is required to prepare the response.
Fulfilling Local Requirements
Whether one is making a direct filing in a national patent office or entering the national phase from a PCT application, there are generally local requirements to submit documents over and above the actual application. These documents can include proof of an applicant’s right to apply for and be granted a patent, or to claim priority to an earlier filed application, declarations by the inventors, certified copies of priority applications, powers of attorney, etc. These documents should preferably be submitted at the time of filing and, in most countries, can be filed within a specified period of time after filing. If the applicant knows what formal documents are required in each country of filing and can obtain and submit them prior to filing, efficiency will increase and costs effectively will be reduced. For example, early compliance with the formal requirements avoids the receipt of reminder letters and official deficiencies notices from the patent office and responding to both the reminders and office actions, and further submission of documents and response to office actions. Much time and expenses can be saved by simply knowing what documents are required and getting them to the foreign agent before the filing deadline.
In case of national phase entry from a PCT filing, the applicant may be able to fulfill some of these requirements through submitting one or more of the five available declarations under PCT Rules 4.17 and 51bis. Additionally, the applicant will be issued a PCT/IB/304 for any certified priority documents timely submitted during the international phase of the PCT. As such, the priority documents need not be supplied to the local patent office at the time of entering the national phase, thus achieving yet further cost savings.
Prior art search citations and official actions that an applicant received from other national filings or from the international searching and preliminary examining authorities during the international phase of the PCT provides a good assessment at the patentability of the claimed invention. If an applicant has determined that the claims must be amended to meet local requirements for patentability or when the International Preliminary Report on Patentability (IPRP) from the PCT process gives negative findings for novelty, inventive step or industrial applicability, filing a preliminary amendment and/or argument can improve prosecution efficiency and further save costs.
Even though the prior art cited and the examiner’s opinion from one country may not be readily available to examiners in other countries. The art is relevant in all countries and the opinions expressed give the applicant the benefit of the view of at least one competent examiner. If the application is entering the national phase from a PCT filing, the International Search Report (ISR) and the IPRP will be supplied to every national office where entry is made and will be available to the public on the WIPO website. The art cited and any negative opinions expressed in these documents will need to be addressed and resolved. The most efficient approach is to deal with the art and objections up-front by submitting a preliminary amendment and/or preliminary arguments overcoming the art and negative findings. If the applicant has addressed and overcome these issues in this manner, the foreign examiner will not have to reissue an official action on the same objections. This saves the applicant both time and costs, and eliminates the need for the agent to receive and report the office action and to file further responses. Thus, it may well lead to an earlier acceptance of the case if the examiner finds no other issues.
The above measures to help improve efficiency and hold down costs are applicable to all countries where filings are made. If an applicant uses the PCT to affect foreign filings, the task of foreign filing can be simplified as the applicant tries to ensure that the specification has all of the desired matter included. The applicant can prepare a single filing generally in the home country (or the International Bureau) and in the home language. When making direct national filings at this critical point, however, care must be taken to insure the foreign agent has sufficient time as the national filing process (plus translations, if needed) will necessarily require the case to be sent earlier than the deadline to ensure filing is made within the priority year. This being the case, it should be easier for applicants to maximize the efficiency as well as minimizing the costs of national phase entry and prosecution through following the suggestions above.
In addition to the above suggestions, the applicant should also be aware and familiar with the efficiency-improving procedures available in specific countries. In Southeast Asia, we will look at the processes in Singapore, Malaysia, Indonesia, the Philippines, Thailand and Vietnam, as well as those in India.
Singapore has a unique self-assessment patent system that does not mandate a local art search and substantive examination, although they are available, if required. Instead, one can rely on one of the several options to satisfy the search and examination requirements. Depending on the prosecution routes desired, an applicant can choose either to 1) rely on the final search and examination results of a corresponding foreign application or the PCT (i.e., IPRP), 2) rely on the results of a foreign search report or the international search report (ISR) and request for local examination from the Singapore patent office, or 3) request a local search and examination from the Singapore patent office. Options 1 and 2 are clearly the most cost effective, as they allow the reuse of a search and examination reports already paid for and established in the PCT or foreign office. Furthermore, if Option 1 is selected, the grant process can be further expedited, as no further examination will be conducted. However, the applicant is responsible for ensuring that the patent is patentable and valid prior to requesting for grant.
In addition to the above three routes to obtain search and examination results, Singapore’s system also offers both fast and slow track options to grant. In the default fast track, the grant fees are due by 42 months from priority, but if a request for a block extension is made by 39 months from priority, the deadline for paying the grant fees is extended to 60 months from priority. This allows an applicant to better control when the costs for grant must be paid.
The official language for patent filing and prosecution in Singapore is in English. Therefore, no further translation is required. If the application is not in English, a verified English translation of the specification is required to be submitted to the patent office.
There is an additional cost for each claim in excess of 25 claims payable at the time of payment of grant fees.
In Malaysia, the deadline for requesting substantive examination is four years from the filing date. This deadline can be deferred for a further one year, if required. Alternatively, the applicant can also request for modified examination within four years from the filing date by relying on a corresponding granted patent from the prescribed patent offices to expedite the examination process further.
The formal documents required for filing include a power of attorney, a statement justifying the applicant’s rights and the certified priority document(s) if the PCT/IB/304 is not available. The official language for filing and prosecution is English or Malaysian. Similarly, an English translation of the specification is required for submission if it is not in English,
There is additional cost for filing each claim in excess of 10 claims.
Indonesia, Thailand and the Philippines
Indonesia, Thailand and Philippines are similar in their procedures for examination, although their deadlines for requesting substantive examination varies. For Indonesia, the deadline for requesting examination is 36 months from the filing date, for Thailand, it is five years from publication date, and for Philippines, it is six months from the filing date. All three countries conduct their own search and examination of application, but give heavy considerations to the findings from more established patent offices such as those in Australia, the United Kingdom, Japan, Korea, the United States and the European Union. The applicant may rely on a corresponding granted patent by the above patent office to expedite the examination and grant of patent in these countries.
The documents required at the time of filing (or shortly thereafter) in all three countries include a power of attorney, a statement justifying the applicant’s right/ declaration of entitlement or deed of assignment, and certified priority document(s) if PCT/IB/304 is not available. Please note that for filings in Indonesia, the power of attorney has to be submitted at the time of filing the application, and that the Thai power of attorney requires notarization.
The official language for filing and prosecution in Indonesia is Indonesian, in Thailand is Thai and in the Philippines is English. As such, the translation of the Indonesian and Thai languages must be prepared prior to filing. In the event that more time is required to submit the translation, an extension of time of up to 30 days and 90 days can be requested for filing in Indonesia and Thailand, respectively.
For Indonesia, there is an additional cost for each claim in excess of 10 claims payable at the time of requesting for examination while for the Philippines, there is an additional cost for each claim in excess of five claims as well as each page in excess of 30 pages at the time of filing.
Patent applications are filed at and examined by the Vietnam National Office of Intellectual Properties (NOIP) to determine patentability of invention. The deadline for requesting substantive examination is 42 months from the earliest priority date.
The official language for filing and prosecution is Vietnamese. Note that translation of the international application has to be provided at the time of filing the application while a power of attorney is required for submission at the latest by 34 months from the priority date. A certified priority document is required if it is not submitted during the international phase.
For Vietnam, there is an additional cost for each independent claim in excess of one independent claim as well as for each page in excess of five pages at the time of filing.
Like Vietnam, the India patent office conducts its own search and examination of every patent application. Examination can be requested within 36 months from filing date.
At the time of filing of the application (or shortly after), an applicant must provide a power of attorney, an assignment or inventor’s executed Form 1, details of corresponding applications, a certified copy of the priority document if not filed during the international phase and a verified English translation of the priority document if the document is not in English.
The official languages for filing and prosecution in India are English or Hindi. As such, an English translation is required if the document is not in English.
For India, there is an additional cost for each claim in excess of 10 claims as well as each page in excess of 30 pages at the time of filing.
Every applicant should be more aware of and take advantage of the availability of efficient and cost-effective patent filing and prosecution. The overall cost of patenting is too high not to take every measure to minimize costs. We have taken a look at a number of ways to help keep the overall costs down as well as examined the provisions available is selected countries in Southeast Asia and India. Whether reducing costs by ensuring foreign agents and translators have sufficient time, sending all required documents up-front to avoid the further costs of sending and submitting them after filing, submitting preliminary amendments and arguments to speed prosecution and reduce the number of official actions, consideration of alternative forms of protection (when available) or any combination of these, the goal should be to get the job of protecting your inventions done in the most efficient manner and at the lowest possible cost.