A significant imminent change in ISA/KR search fees

There will be a significant change in International Search fees at the Korean Intellectual Property Office effective May 16, 2021.  If you are an English-language filer and if you sometimes make use of ISA/KR in your PCT filings, this change might make a really big difference for you. 

By way of background, when a PCT applicant files a PCT applicant claiming multiple inventions, the International Searching Authority (ISA) will send an Invitation to Pay Additional Fees to the applicant.  The Invitation invites the applicant to pay for searching of the second through nth inventions that are presented in the claims.  With most ISAs, the fee payable for searching each of the second through nth inventions is the same as the fee for the first invention.  But for as long as I have been in practice, the Searching Authority of the Korean Intellectual Property Office has charged very differently for the searches for the second through nth inventions — the search fee for each of the second through nth inventions at ISA/KR has been ₩225000 (KRW 225000).  At today’s exchange rate this is around $200 (USD 200).  (The alert reader will appreciate that $200 is small compared with the additional-invention fee in many other ISAs.)

Thus, for as long as I have been in practice, a PCT applicant that knows that it is likely to receive an Invitation to Pay Additional Fees might select ISA/KR specifically to benefit from this small search fee for additional inventions.

But this will change on May 16, 2021.  On that day, the additional-invention search fee in ISA/KR will be the same as the search fee for the first invention.  Thus for example for an international search carried out in English, the search fee for an additional invention will increase from ₩225000 to ₩1200000.  You can see this here (archived here).  At today’s exchange rate this is around $1062.  

Those who file their PCT applications in RO/US (the USPTO) have eight ISAs to choose from.  Here are those eight ISAs, ranked in descending order by the size of the fee for an additional invention as of May 16, 2021 (at approximate present-day exchange rates into USD).

ISA First
invention
(USD)
Additional
inventions
Approximate
USD
US (large entity) 2180 $2180 2180
EP 2091 €1775 2112
AU 1697 AUD2200 1706
SG 1646 SGD2240 1669
JP (search carried out
In English)
1476 ¥126000 1157
US (small entity) 1090 $1090 1090
IL 1107 ₪3553 1078
KR (search carried out
in English)
1036 ₩1200000 1062
US (micro entity) 545 $545 545
RU (search carried out
In English)
543 ₽40000 541

There are of course many factors other than the size of the search fee to consider when selecting an ISA.  (When I teach a PCT class that is one or two days in duration, I often devote as much as an hour to the factors that one might consider when selecting an ISA.)  But focusing solely based upon the size of the search fee for additional inventions, it may be seen that Rospatent (the Russian patent office) is the least expensive, followed by the USPTO’s fee for micro entity applicants.  The most expensive is the USPTO’s fee for non-small entities.  ISA/KR is still a relative bargain for additional inventions, but it is no longer the striking bargain that it was prior to May 16, 2021.

What about preliminary examination at the Korean Intellectual Property Office?  The alert reader will be asking whether IPEA/KR will do on May 16, 2021 as ISA/KR is doing on additional-invention fees, and the answer for the alert reader is “yes”.  Prior to May 16, 2021 the fee for preliminary examination of additional inventions was ₩225000 which was cheaper than the fee for preliminary examination of the first invention (₩450000).  But as of May 16, 2021, the fee at IPEA/KR for each additional invention is higher than it was before — it is the same as the fee for the first invention.

Posted in PCT |

Leave a comment

Your email address will not be published. Required fields are marked *

This site uses Akismet to reduce spam. Learn how your comment data is processed.