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Foreign Filings
All foreign associates charge a basic fee for assisting in prosecution of the application and will charge additional fees for each step that they take regarding the application. It is very difficult to forecast the fees that a foreign associate will charge in each case. Usually, an initial basic fee of about $500 to $2000 is charged by a foreign associate. These fees are, however, beyond our control and subject to change without notice. (In many countries, there is a national tariff of fees to which each patent attorney in the country subscribes, and these tariffs may change with little advance notice). We select only those foreign associates whose professional abilities we have grown to respect over the years and whose fees we believe to be reasonable. It may be advisable to obtain an up-to-date estimate from the foreign associate of the fees to be expected, before proceeding. We usually have ball-park figures readily available for most countries.
Depending upon the number of countries in which a patent is sought, it may be less costly at the outset to file an international application pursuant to the Patent Cooperation Treaty than to file several different applications in a number of countries. However, eventually it is necessary to convert the international application into a number of separate patent applications, one for each country. For example, a "European" patent application can be filed to cover many European countries; such an application is examined and prosecuted in the European Patent Office in Munich, and then is transformed into a conforming series of national patents that will have effect in a number of designated European countries. A British patent may be registered in some of the remaining British dependencies. But at present, a separate patent for each country must usually be obtained in order to protect the invention in that country. For instance, a separate patent is required in both Canada and in the United States to protect an invention in these two countries.
The Patent Co-operation Treaty ("PCT"), enables a patent applicant to file a single application in a designated international receiving office and to designate, in the application, any number of the member countries of the PCT. Most countries of interest belong to the PCT; a very few of commercial interest, e.g. Taiwan, do not. The Canadian Patent Office qualifies as a PCT Receiving Office. Some months after filing, the PCT application is separated into individual national applications for each designated country. For example, if a first-filed US or Canadian application was filed at a cost of, say, $20,000, then a PCT application covering more than 100 countries could be filed almost a year later for as little as $10,000. If patent applications are to be filed in a number of countries, a substantial saving may be achieved through the PCT. Note that a PCT case can be filed within one year of the first-filed case, just as national applications in foreign countries can, with the benefit of the priority date of the first-filed application.
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