WIPO Amends Patent Cooperation Treaty Fee Schedule

World Intellectual Property Organization members have approved an amendment to the Patent Cooperation Treaty (PCT) aimed at lowering fees for a greater number of users.

Members of the International Patent Cooperation Union (PCT Union) Assembly on 25 September approved proposed amendments to the PCT regulations under document PCT/A/46/3.

The PCT Union Assembly documents are available here.

The criteria for who pays lower fees in the PCT fee schedule based solely on GDP had become outdated, as some GDP figures for countries had gone up. Currently, there is only one criterion: GDP of less than US$ 3,000. Now, it will be $25,000 and there is a second “innovation” criterion.

In the 1990s, 10 countries were added to the list of those paying less. These additional countries were: Antigua and Barbuda, Bahrain, Barbados, Libya, Oman, the Seychelles, Singapore, Trinidad and Tobago, and the United Arab Emirates (UAE).

Some considered that there would be a sunset clause for this addition, though it was not written into the schedule of fees, a source said.

Now, under the newly approved schedule, 10 new countries will be covered under the lower rates. But Singapore and UAE will no longer be eligible for the lower rate.

The changes will enter into force on 1 July 2015.

A progress report on implementation of the new criteria should be made two years after implementation, the amendment states. The schedule of fees will be reviewed every five years, as will the list of countries.

There are three groups of fees, according to sources:

– no discount (full amount of the fees set out in the PCT Schedule of Fees) except for “incentives” or fee reductions, for applications filed in electronic form

– 90 percent discount for “natural persons” (individuals) who are either nationals or residents of one of the countries meeting the eligibility criteria. The criteria are not based on “developing country/developed country” but a combination of income-based and innovation-based criteria. Countries benefitting from the fee reductions include both developing and a few developed countries

– 90 percent discount for all applicants (whether natural persons or not) who are either nationals of or residents in a country which is classified by the UN as an LDC.

The reduction or discount applies to all fees set out in the PCT Schedule of Fees (see the PCT Regulations). For example, instead of 1330 CHF – the full amount of the international filing fee – an applicant benefitting from the fee reduction only pays 133 CHF (1330 minus 90%).

The process took several years and saw a number of possible proposals until a compromise was found.

The measure will now look at 10-year average GDP, as well as the number of persons who are nationals or residents of the country who have filed international applications.

Under the new fees, China still qualifies for the lower rate and is the biggest beneficiary of the fee reduction, a source noted.

The PCT has more than 145 member countries. The treaty “makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single ‘international’ patent application instead of filing several separate national or regional patent applications,” according to WIPO.

There has been some debate over whether the reductions and discounts count toward WIPO development expenditures, those expenses considered to only go toward developing countries, a source said.

Separately, the PCT Union also approved Singapore as an international search and preliminary examination authority, bringing the global total to some 20 countries, sources said.