Costs of Securing Foreign Patents

The most salient fact about foreign patent filings is that they are expensive -- many times more expensive that U.S. filings. Foreign patents are also generally more expensive to enforce, and damages may be severely limited. In a recent case, for example, an infringement case involving blue LED diodes, a lower court approved an award of Ұ 60 billion, but that amount was reduced during appeal to Ұ 840 million, a mere 100th of the original award .

As a general rule of thumb, it costs about $5,000 - $6,000 per country or region to get a foreign patent application on file, and at least that much again for each country by the time the patent issues. It gets even worse down the road, because most of the foreign countries have maintenance fees of about $600 per year. Note that these are annual maintenance fees, rather than the 3.5, 7, and 12 year payments due in the US. The long and the short of it is that securing foreign patents will likely set an applicant back at least $10,000 - $15,000 per country, and about $30,000 per country over the life of the patent.

Costs are less in Canada, Australia, and New Zealand, in large measure because filing and prosecution can be done in English. Canada is also advantageous for many applicants because the Canadian patent office distinguishes between large and small entities, thereby reducing fees for many applicants by 50%. Mexico doesn't distinguish small entities, but does Mexico allow 50% reduction of fees if the applicant is an individual inventor One would expect that charges would be low in the EPO, where applications can also be filed and prosecuted in English. But EPO charges tends to be quite high ($6500 minimum to place an application on file) because of designation fees, and because European patent attorneys tend to charge exorbitant fixed charges and/or excessive minimum hourly billings of .25 or even .5 hours.

Foreign patent practitioners tend to be outrageous in their billing. I recently transferred about 250 cases away from a German firm that charged me almost $10,000 to provide an estimate on the cost of pursuing an appeal. The estimate should have been provided for free, and I wouldn't have minded a charge of $250 or even $500 if it could somehow be justified by the work performed. But $10,000 was just too much. In another instance a foreign patent firm charged us about $800 to file a change of name form! When I challenged them on it, they provided a ridiculous invoice purporting to have spent about 2.5 hours of paralegal time and 1.5 hours of attorney time to complete the task. I still don't have great patent counsel in all the major countries, but there are several that I can recommend as being both reliable and cost-conscious. Currently recommended patent firms will be listed on my web page.

Global IP Estimator™ is a very good computer program that estimates patent filing, prosecution, issue, and maintenance costs for substantially all foreign countries. The program is described in, and downloadable from their website. The company claims over 70% of the top 100 Intellectual Property law firms in the US as their clients, as well as many multi-national companies, such as DuPont and Chevron. One can download a free test copy at their website. The program runs a few hundred dollars for a single copy, and there is a substantial discount for additional copies. In addition to estimating costs, the program also provides a listing of foreign associates that are willing to perform the services at the estimated costs. The one caveat I have about the program is that it tends to overestimate the costs. Our foreign associates, who I believe to be some of the most proficient of any, charge considerably less than the costs estimated by the program.