How to save on patent fees
Russian legislation and international agreements of Russia provide for a number of exemptions on duties for certain categories of applicants for patenting inventions and utility models. Know your rights and do not pay too much!
1. Privileges for patenting duties in Russia
1.1. An individual who is the only author of an invention, utility model and who requests a patent in his own name or who is the only author of the invention, utility model and owner of the corresponding patent shall pay 50% of the following fees :
- fees for registration of an application for an invention and decision-making on the results of a formal examination (the total fee is 1,650 rubles + 250 rubles for each claim of the invention above 25);
- the fee for entering into the claims of a clause which is absent in the formula previously proposed by the applicant and accepted for consideration after 2 months from the filing date of the application (the full fee is 650 rubles for each new claim before the examination of the application is substantially 2350 rubles). for each new independent claim after the beginning of the examination of the application on the merits);
- Fees for conducting an examination of an application for an invention on the merits and making a decision on its results (the total fee is 2450 rubles plus 1950 rubles for each independent claim over 1 (but not more than 10) plus 3400 rubles for each independent claim over ten);
- fees for registration of an invention, utility model and issuance of a patent for an invention, utility model (the full amount of the duty is 3250 rubles);
- the annual fee for maintaining the patent for the invention valid for the years from the third to the fifth, counting from the filing date of the application (the full amount of the duty for the third year is 850 rubles, for the fourth year - 850 rubles, for the fifth year - 1250 rubles). ).
At the conclusion of the license agreement, this benefit in respect of the annual fee for maintaining the patent for an invention in force is terminated.
It should be noted that the exemption on the fee for registration of an application for a utility model is not provided by the legislation, and for registering a utility model (after successfully completing the substantive examination) and issuing a patent for a utility model - is provided. There is also no concession on the annual fee for the maintenance of a patent for a utility model. It is difficult to say whether this illogicality of “features” or “bug” of the legislation is, but it is.
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1.2. An individual specified in clause 1.1 who is a veteran of the Great Patriotic War, a war veteran on the territory of the USSR, on the territory of the Russian Federation and on the territories of other states (a veteran of hostilities), as well as a group of authors asking for a patent in their own name, or patent holders, each of which is a veteran of the Great Patriotic War, a veteran of military operations, is exempt from paying the fees specified in paragraph 1.1. At the conclusion of the license agreement, this benefit in respect of the annual fee for maintaining the patent for an invention in force is terminated.
1.3. An individual specified in clause 1.1 who is a disabled person and (or) a pensioner who receives an old-age retirement pension, or who studies at an organization conducting educational activities and is accredited by the relevant educational program, an individual referred to in clause 1.1 who is a scientist or a scientific and pedagogical worker under the age of 35 years of an educational organization of higher education or a scientific organization for which the specified place of work is the main And a group of authors, patent applicants in their own name, or patent holders, each of which corresponds to at least one of the criteria listed above in this paragraph, shall pay 20% of the total fees referred to in paragraph 1.1. At the conclusion of the license agreement, this benefit in respect of the annual fee for maintaining the patent for an invention in force is terminated.
1.4. A person who is a small business entity pays 50 percent of the total fees indicated in clause 1.1.
To exercise this right, it is necessary to submit documents confirming that the applicant (patent holder) meets the criteria established by the Federal Law “On the Development of Small and Medium-Sized Businesses in the Russian Federation” (the average number of enterprises is not more than 100 people, annual revenue is not more than 400 million rubles certain restrictions on the composition of the owners of the enterprise).
1.5. An individual who is the sole author of the invention, when submitting an application for an invention with a public offer to conclude an agreement on the alienation of a patent for an invention on terms consistent with established practice, shall be exempt from all patent fees . If within two years from the date of publication of information on the grant of a patent, Rospatent does not receive a written notice of the desire to conclude an agreement on the alienation of a patent, the patent owner may withdraw his public offer by paying all the prescribed fees, from which he had previously been released. Further fees are paid in full.
1.6. The patent holder who submitted an open license application to Rospatent (the possibility of granting any person the right to use the invention or utility model) pays 50% of the fee for maintaining the patent starting from the year following the year Rospatent publishes information on the open license. If within two years from the date of publication of information on an open license, the patent owner did not receive proposals in writing to enter into a license agreement under the conditions specified in the application, the patent holder may withdraw his application for an open license with a surcharge of fees for the period from the date of publication of information on open license. Further fees are paid in full.
1.7. In the case of filing an application in electronic form, the amount of fees for registering an application for an invention and making a decision on the results of a formal examination (full fee of 1,650 rubles plus 250 rubles for each claim of the invention is over 25), for registering an application for a utility model and making a decision according to the results of the formal examination (the total amount of the duty is 850 rubles plus 100 rubles for each item of the formula of the utility model over 25) decreases by 15% .
To apply electronically, (a) a valid enhanced EDS issued by an accredited certification authority is required (EDS is suitable for a public services portal with the signature holder's email address field filled in), (b) the presence of an installed CryptoPro CSP software and (c) an Internet browser Explorer (with other browsers, the operation of the electronic filing portal is not guaranteed). More information about the electronic interaction with Rospatent can be found here .
The exemption under clause 1.7 may be combined with another exemption, in which case 15% is first subtracted from the amount of the duty, then another exemption is applied.
1.8. If the application for the grant of a patent for an invention contains a patent search report or expert opinion prepared by one of the international bodies in accordance with the international treaties of the Russian Federation, the fee for examining the application for the invention and making a decision on its results is reduced by 20% in respect of those inventions for which a patent search was performed. If the specified application contains a report on information search conducted by Rospatent , the amount of the fee for examining the application for an invention and making a decision on its results is reduced by 50% in relation to those inventions for which an information search was performed (the full fee is 2450 rubles Plus 1950 rubles for each independent claim over 1 (but not more than 10) plus 3,400 rubles for each independent claim over 10). The specified procedure for the collection of fees applies to the selected applications.
2. Benefits for fees for international patenting
2.1. An applicant who is a natural person and a citizen of the country from the special list (Russia is included in it) is entitled to a 90% reduction in the international filing fee (the total fee is US $ 1,471 plus US $ 17 for each sheet of the application set of documents over 30 sheets with a good application usually $ 2,000 to 3,000). In addition, an applicant who is entitled to a 90% reduction in the international filing fee does not have to pay a transfer fee (the fee is 850 rubles when filing an application to Rospatent as a receiving office or 111 US dollars when filing an application to the International Bureau in as the receiving Office) with respect to the international application filed with the International Bureau as the receiving Office. The same rule (i.e., a 90% reduction in the international filing fee and exemption from payment of the transfer fee for an international application filed with the International Bureau as a receiving office) applies to the applicant, regardless of whether he is a natural person or not, citizen and residing in a state that is classified by the United Nations as the least developed country.
It should be noted that nothing prevents you from submitting an international application, specifying the Russian individual as the applicant - the sole inventor or natural or legal person from the least developed country and save on international duty, and then change the applicant to the required legal entity and, if required , adjust the composition of the authors. The change of the applicant and the composition of the authors of the international application is possible before the expiration of 30 months from the priority date. It is better to change the declarations of the international application within 16 months from the priority date, in which case the publication of the international application will be completed with changes. The fees for introducing changes to the application and declarations of the international application or the payment of the international duty in this case are not stipulated by the rules of the Patent Cooperation Treaty (PCT). Things you can use legally. True, there is a feature: you need to be 100% sure that with such an applicant it will be possible on acceptable terms to enter into an agreement on the alienation of the right to receive a patent. Such an agreement may request the receiving office in the international phase or the national patent office in the national phase.
2.2. If Rospatent, acting as an international search authority, uses the results of a previous international search, an international type search or other search conducted by it , for which reference is made in the application, the fee for establishing the level of technology to assess the patentability of an invention and compile a report on an international search (fees for search) and fees for establishing the level of technology for assessing the patentability of the invention and drawing up a report on the international In the case of a breach of unity of invention for each part of the international application that does not relate to the invention mentioned first in the claims (additional search fee) (the full amount of these fees: if the clerical work is in Russian - 6,750 rubles. in another language allowed under the Patent Cooperation Treaty - 28,000 rubles) shall be reduced in the following amounts:
in the amount of 75% - if no additional search is required;
in the amount of 50% - if the additional search is confirmed by documents relating to one or two additional subgroups of the International Patent Classification;
in the amount of 25% - if the additional search is confirmed by documents relating to new aspects of the claimed invention (for example, the international application is based on several earlier applications, and a search report on one of them is used).
These are the main opportunities for reducing duties, one way or another related to Russia. It is clear that in each country there are specific ways. In addition, these possibilities have a number of legal subtleties. Therefore, as they say, consult a specialist before use.
1. Privileges for patenting duties in Russia
1.1. An individual who is the only author of an invention, utility model and who requests a patent in his own name or who is the only author of the invention, utility model and owner of the corresponding patent shall pay 50% of the following fees :
- fees for registration of an application for an invention and decision-making on the results of a formal examination (the total fee is 1,650 rubles + 250 rubles for each claim of the invention above 25);
- the fee for entering into the claims of a clause which is absent in the formula previously proposed by the applicant and accepted for consideration after 2 months from the filing date of the application (the full fee is 650 rubles for each new claim before the examination of the application is substantially 2350 rubles). for each new independent claim after the beginning of the examination of the application on the merits);
- Fees for conducting an examination of an application for an invention on the merits and making a decision on its results (the total fee is 2450 rubles plus 1950 rubles for each independent claim over 1 (but not more than 10) plus 3400 rubles for each independent claim over ten);
- fees for registration of an invention, utility model and issuance of a patent for an invention, utility model (the full amount of the duty is 3250 rubles);
- the annual fee for maintaining the patent for the invention valid for the years from the third to the fifth, counting from the filing date of the application (the full amount of the duty for the third year is 850 rubles, for the fourth year - 850 rubles, for the fifth year - 1250 rubles). ).
At the conclusion of the license agreement, this benefit in respect of the annual fee for maintaining the patent for an invention in force is terminated.
It should be noted that the exemption on the fee for registration of an application for a utility model is not provided by the legislation, and for registering a utility model (after successfully completing the substantive examination) and issuing a patent for a utility model - is provided. There is also no concession on the annual fee for the maintenance of a patent for a utility model. It is difficult to say whether this illogicality of “features” or “bug” of the legislation is, but it is.
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1.2. An individual specified in clause 1.1 who is a veteran of the Great Patriotic War, a war veteran on the territory of the USSR, on the territory of the Russian Federation and on the territories of other states (a veteran of hostilities), as well as a group of authors asking for a patent in their own name, or patent holders, each of which is a veteran of the Great Patriotic War, a veteran of military operations, is exempt from paying the fees specified in paragraph 1.1. At the conclusion of the license agreement, this benefit in respect of the annual fee for maintaining the patent for an invention in force is terminated.
1.3. An individual specified in clause 1.1 who is a disabled person and (or) a pensioner who receives an old-age retirement pension, or who studies at an organization conducting educational activities and is accredited by the relevant educational program, an individual referred to in clause 1.1 who is a scientist or a scientific and pedagogical worker under the age of 35 years of an educational organization of higher education or a scientific organization for which the specified place of work is the main And a group of authors, patent applicants in their own name, or patent holders, each of which corresponds to at least one of the criteria listed above in this paragraph, shall pay 20% of the total fees referred to in paragraph 1.1. At the conclusion of the license agreement, this benefit in respect of the annual fee for maintaining the patent for an invention in force is terminated.
1.4. A person who is a small business entity pays 50 percent of the total fees indicated in clause 1.1.
To exercise this right, it is necessary to submit documents confirming that the applicant (patent holder) meets the criteria established by the Federal Law “On the Development of Small and Medium-Sized Businesses in the Russian Federation” (the average number of enterprises is not more than 100 people, annual revenue is not more than 400 million rubles certain restrictions on the composition of the owners of the enterprise).
1.5. An individual who is the sole author of the invention, when submitting an application for an invention with a public offer to conclude an agreement on the alienation of a patent for an invention on terms consistent with established practice, shall be exempt from all patent fees . If within two years from the date of publication of information on the grant of a patent, Rospatent does not receive a written notice of the desire to conclude an agreement on the alienation of a patent, the patent owner may withdraw his public offer by paying all the prescribed fees, from which he had previously been released. Further fees are paid in full.
1.6. The patent holder who submitted an open license application to Rospatent (the possibility of granting any person the right to use the invention or utility model) pays 50% of the fee for maintaining the patent starting from the year following the year Rospatent publishes information on the open license. If within two years from the date of publication of information on an open license, the patent owner did not receive proposals in writing to enter into a license agreement under the conditions specified in the application, the patent holder may withdraw his application for an open license with a surcharge of fees for the period from the date of publication of information on open license. Further fees are paid in full.
1.7. In the case of filing an application in electronic form, the amount of fees for registering an application for an invention and making a decision on the results of a formal examination (full fee of 1,650 rubles plus 250 rubles for each claim of the invention is over 25), for registering an application for a utility model and making a decision according to the results of the formal examination (the total amount of the duty is 850 rubles plus 100 rubles for each item of the formula of the utility model over 25) decreases by 15% .
To apply electronically, (a) a valid enhanced EDS issued by an accredited certification authority is required (EDS is suitable for a public services portal with the signature holder's email address field filled in), (b) the presence of an installed CryptoPro CSP software and (c) an Internet browser Explorer (with other browsers, the operation of the electronic filing portal is not guaranteed). More information about the electronic interaction with Rospatent can be found here .
The exemption under clause 1.7 may be combined with another exemption, in which case 15% is first subtracted from the amount of the duty, then another exemption is applied.
1.8. If the application for the grant of a patent for an invention contains a patent search report or expert opinion prepared by one of the international bodies in accordance with the international treaties of the Russian Federation, the fee for examining the application for the invention and making a decision on its results is reduced by 20% in respect of those inventions for which a patent search was performed. If the specified application contains a report on information search conducted by Rospatent , the amount of the fee for examining the application for an invention and making a decision on its results is reduced by 50% in relation to those inventions for which an information search was performed (the full fee is 2450 rubles Plus 1950 rubles for each independent claim over 1 (but not more than 10) plus 3,400 rubles for each independent claim over 10). The specified procedure for the collection of fees applies to the selected applications.
2. Benefits for fees for international patenting
2.1. An applicant who is a natural person and a citizen of the country from the special list (Russia is included in it) is entitled to a 90% reduction in the international filing fee (the total fee is US $ 1,471 plus US $ 17 for each sheet of the application set of documents over 30 sheets with a good application usually $ 2,000 to 3,000). In addition, an applicant who is entitled to a 90% reduction in the international filing fee does not have to pay a transfer fee (the fee is 850 rubles when filing an application to Rospatent as a receiving office or 111 US dollars when filing an application to the International Bureau in as the receiving Office) with respect to the international application filed with the International Bureau as the receiving Office. The same rule (i.e., a 90% reduction in the international filing fee and exemption from payment of the transfer fee for an international application filed with the International Bureau as a receiving office) applies to the applicant, regardless of whether he is a natural person or not, citizen and residing in a state that is classified by the United Nations as the least developed country.
It should be noted that nothing prevents you from submitting an international application, specifying the Russian individual as the applicant - the sole inventor or natural or legal person from the least developed country and save on international duty, and then change the applicant to the required legal entity and, if required , adjust the composition of the authors. The change of the applicant and the composition of the authors of the international application is possible before the expiration of 30 months from the priority date. It is better to change the declarations of the international application within 16 months from the priority date, in which case the publication of the international application will be completed with changes. The fees for introducing changes to the application and declarations of the international application or the payment of the international duty in this case are not stipulated by the rules of the Patent Cooperation Treaty (PCT). Things you can use legally. True, there is a feature: you need to be 100% sure that with such an applicant it will be possible on acceptable terms to enter into an agreement on the alienation of the right to receive a patent. Such an agreement may request the receiving office in the international phase or the national patent office in the national phase.
2.2. If Rospatent, acting as an international search authority, uses the results of a previous international search, an international type search or other search conducted by it , for which reference is made in the application, the fee for establishing the level of technology to assess the patentability of an invention and compile a report on an international search (fees for search) and fees for establishing the level of technology for assessing the patentability of the invention and drawing up a report on the international In the case of a breach of unity of invention for each part of the international application that does not relate to the invention mentioned first in the claims (additional search fee) (the full amount of these fees: if the clerical work is in Russian - 6,750 rubles. in another language allowed under the Patent Cooperation Treaty - 28,000 rubles) shall be reduced in the following amounts:
in the amount of 75% - if no additional search is required;
in the amount of 50% - if the additional search is confirmed by documents relating to one or two additional subgroups of the International Patent Classification;
in the amount of 25% - if the additional search is confirmed by documents relating to new aspects of the claimed invention (for example, the international application is based on several earlier applications, and a search report on one of them is used).
These are the main opportunities for reducing duties, one way or another related to Russia. It is clear that in each country there are specific ways. In addition, these possibilities have a number of legal subtleties. Therefore, as they say, consult a specialist before use.
Source: https://habr.com/ru/post/288428/
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