managing corporate and individual IP portfolios including trademark clearances, prior art searches, patent and trademark filings, prosecution and post-registration procedures, IP audits and due diligence projects,services

How we minimize costs of multicountry filings

How we minimize costs of filing patent applications in Ukraine, Russia and Belarus.

The ultimate cost of a direct ready-to file application in each of the countries would depend on

• the number of claims (important for calculating filing and examination fees), and
• the number of pages the application consists of (important for assessing translation costs), and
• the number of Office Action to come.

Let's say the typical utility application comprises of 2 independent claims, 13 dependent claims and is about 20 pages long where each page on average contains 250 words. We shall also stipulate that there will be one Office Action issued in the case (that's how it typically is in Ukraine).

This case in Ukraine ultimately (at the time of the grant and before the first annuity is paid) would cost around USD 2 200.

The following will explain how we came up with the number.

The overall official fees in this case amounts to USD 1 300 (providing that there would be no extension of term and/or amendment requested) where:

• Filing fee: USD 150 for 15 claims (regardless of the nature of the claim)
• Examination fee: USD 1050 for 2 independent claims (one is 600 and every next is 450)
• Granting fee: USD 100

The translation costs would be around USD 450 including editing, typing, proof reading, copying and adjusting the format of the drawings and tables (if any) to the local rules. We charge translation cost at a rate of USD 10/100 words which is currently the lowest on the market. The local representation/handling fees will amount to USD 450 including actual filing, claim of conventional priority based on the US application, request for substantive examination, response to one Office Action (where no major modifications to claims/specification are requested by the examiner), payment of the filing fees, examinations fees, granting fees, forwarding correspondence.

This case in Russia ultimately (at the time of the grant and before the first annuity is paid) would cost around USD 2 190.

The situation with local representation in Russia is a little bit more complicated and might not be as flexible as in Ukraine. Even though Ukraine, Russian and Belarus have agreement that allows direct filing for nationals of the mentioned countries, Russian local representative must sign the papers filed in the name of the foreign applicant domiciled in a country other than those three discussed. We have a close associate firm in Russia that we have been working with for many years and we are working on a special terms with them where the majority of the work is done in Ukraine. We actively minimize the costs on every step. For instance, using Ukrainian translation to prepare Russian translation which could be done in Ukraine for minimum price as languages are very similar and translation from Ukrainian into Russian and visa versa may be done by anyone skilled in patent art. Note that this situation is typical for Ukraine, in Russia, on the other hand few know Ukrainian so it would be impossible for them to work up the same strategy that allows the cost to be minimized dramatically. So, if done as suggested translation costs (from Ukrainian into Russian) would be around USD 250 including editing, typing, proof reading, copying and adjusting the format of the drawings and tables (if any) to the local rules.

Generally, for our typical case, the local representation/handling fees in Russia will amount to USD 800 including actual filing, claim of conventional priority based on the US application, request for substantive examination, response to one Office Action (where no major modifications to claims/specification are requested by the examiner), payment of the filing fees, examinations fees, granting fees, forwarding correspondence. The figures in Belarus would look similar and the same strategies for cost efficiency would apply.