Patent application in EU and US: costs at the EPO and USPTO

Inventions are often protected as patent applications in Europe and the USA. The USPTO has also largely increased its fees as of October 2020, and the EPO updated its fees in April 2020. So what are the specific costs to be expected for a patent application at the EPO and USPTO?

The costs of a patent application depend only to a small extent on the fixed calculable application and renewal fees of the patent offices. In particular, the actual costs depend on the length of the grant procedure, the geographical scope (each validated country also costs more) and the complexity of the invention and patent application.

This is because the greater the effort with the patent offices and the number of examination notices, the more expensive the patent application will be.

Therefore we advise: The description of the application and the wording of the patent claims must be done with great care. If the application is more complex, we strongly recommend that you engage a patent attorney, this will definitely increase the quality of the patent application. Remember: only a patent attorney with experience and expertise will be able to support you as efficiently as necessary. In the end, you will benefit in terms of time and costs from fewer examination notices.

Therefore, an extensive patent search is also indispensable. Of course, you can also carry out the search yourself, for example with eSearch plus or TMView. However, it requires a lot of time and care, so you should consider whether you would rather leave this to an experienced patent attorney.

However, since the USPTO also increased its fees to a large extent as of October 2020, and the EPO also updated its fees in April 2020 (this is already included in this contribution), we are happy to summarise briefly:
What are the concrete costs of fees at the EPO and USPTO to be expected for a patent application?

Costs at the EPO

Specifically for a patent application at the EPO, the following applies with regard to the Office’s fees: renewal fees are payable to the EPO only as long as the patent application is in the examination and grant procedure. This is because the renewal fees for the granted European patent are payable to those countries in which the invention is protected as a patent.

The renewal fees for the patent application in the grant procedure must be paid to the EPO and are due for the first time from the 3rd year. It is only payable for as long as the European patent grant procedure is in progress. Thereafter, the renewal fees depend on the countries in which the patent is protected and must also be paid to them. The length of the patent granting procedure before the EPO is therefore also important. The EPO’s renewal fee for the 3rd year is currently EUR 490 and will increase annually from then on up to EUR 1 640 from the 10th year onwards.

However, additional fees are charged by the EPO for the application, search and grant, the latter for example the grant fee and the publication fee. These fees, which are unavoidable when filing a patent application at the EPO, add up to more than €4000, but are still only payable once.

Translation costs

In addition, a European patent may involve translation costs where these are not the main languages of the EU. Translations as well as the appointment of national representatives should be mentioned here in case of national validation.

Costs at the USPTO

With effect from 2 October 2020, the USPTO increased some of its fees, which are already included in this contribution. The new list of all USPTO fees effective from 2 October 2020 can be found here. For your convenience, we have compiled some of the USPTO’s fees.

As with a patent application at the EPO, the USPTO in the USA also charges patent application, search and examination fees, which amount to $1,820 (or $910 and $455 for small entities).

However, the cost of filing a patent at the USPTO does not mainly depend on the geographical scope of the patent as at the EPO, but on the number of claims and the type of company filing a patent: The fees for a patent application with up to 3 independent and 17 dependent claims are approximately $1,000. Please note: All payments must be made in U.S. dollars.

Fees greatly reduced for “Small” and “Micro” Entities

We would also like to point out that the USPTO has been reducing its fees for “Small and Micro Entity”, i.e. for small companies and individual inventors, for some time now. This will continue to be the case with the new fees of 2 October 2020. Accordingly, although a company has to pay $ 2,000 for maintaining the patent after 3.5 years, a small company only has to pay $ 1,000 and an individual inventor only $ 500. Therefore, you will always find all three costs listed in our cost listing, the lowest value only applies to individual inventors.

Accelerated patent examination

In addition, the USPTO also offers an accelerated patent examination, but this can of course also be paid for: with $ 4200 (or $ 2,100 or $ 1,050). In this context, please read our blog post: Speed up an U.S. Patent Examination Procedure.

New surcharge for “non-DOCX” patent applications

As of January 2022, additional fees will be payable when a patent application is filed with the USPTO in PDF format. This is because the USPTO is introducing a new surcharge for “non-DOCX” applications; the DOCX file format is an open XML-based file format. In practice, this is a significant change, since applications are now generally filed in PDF format. The criticism levelled against the DOCX file format is directed at its lack of uniformity, but above all at the possible liability for errors in the analysis of such documents and the possible impact on the scope of the patent in the event of an incorrect reproduction of a document by the USPTO.

Additional fees

Any additional requests to the USPTO are also subject to specific costs. For example, $ 4,400 (or $ 2,200 $ 1,100) must be paid for an application for an additional examination, $ 1,360 (or $ 680 $ 340) for an application for an oral hearing.

The fees for maintaining a patent in the USA are as follows:

due after 3.5 years: $ 2,000 (or $ 1,000 or $ 500 after 3.5 years)

due after 7.5 years: $ 3,760 (or $ 1880 or $ 940

and due after 11.5 years: $ 7,700 (or $ 3,850 $ 1,925)

Final

The precise formulation and review of patent claims is a key to successful and sustainable patent granting. After all, it is often not the basic patentability that is in question but rather the examination of whether the invention differs sufficiently from previous knowledge of the technology. Nuances can make the difference, and as can be seen, already in the question of costs at the EPO and USPTO in the grant procedure.

Our firm for patent and trademark law has experienced patent attorneys and attorneys-at-law with expertise in all aspects of intellectual property.
Please do not hesitate to contact us.