IP glossary — Patent Cost Calculator

A

ARIPO: Regional office granting patents effective in its English-speaking African member states.

B

Bangui Agreement: Treaty governing OAPI: a single filing produces one title valid in all member States, which have no separate national patent route.
Budapest Treaty: Treaty under which a single deposit of biological material with an international depositary authority is recognised by all contracting States for patent purposes.

C

CGPDTM: Indian authority heading the patent, design and trade mark offices; it publishes the official Indian fee schedules.
Claims: Numbered statements at the end of the application defining the legal scope of protection.
CNIPA: Chinese patent office; grants Chinese patents and acts as PCT receiving office and ISA.

D

Description: Part of the application disclosing the invention sufficiently for a skilled person to carry it out.
Designation: Mechanism by which a patent application indicates the states or regional systems in which protection may be obtained. Under the current PCT and EPO procedures, the contracting states concerned are in principle designated automatically on filing. A designation only reserves the possibility of protection: it is neither a grant, nor entry into the national or regional phase, nor the completion of the later formalities required in each country. A designation may in some cases be withdrawn. A designation reserves a territory during the application procedure.
Disclosure: Any public communication of the invention (publication, talk, sale, demo) before filing; it destroys novelty unless a grace period applies.
Divisional application: New application carved out of a pending parent application, keeping its filing and priority dates.
DPMA: German national office; grants German patents and receives PCT applications.

E

EAPO: Regional office in Moscow granting the Eurasian patent, which takes effect in the contracting States of the Eurasian Patent Convention.
EPC: Treaty creating the European patent and the EPO; its contracting states are the 'EPC states'.
EPO: Regional office examining and granting European patents under the EPC.
EPO validation state: A state that is not party to the European Patent Convention but has concluded an agreement with the European Patent Organisation allowing a European application or patent to take effect there, subject in particular to that state being designated, to the applicable fees being paid and to the required formalities being completed. This mechanism is distinct from the national validation of a European patent in an EPC contracting state after grant.
Eurasian Patent Convention (EAPC): Treaty establishing the Eurasian patent and the EAPO: a single grant produces a patent effective in all contracting States, maintained by a single renewal payment.
Euro-PCT: European regional phase of a PCT application, entered at the EPO (usually at 31 months).
European patent: Patent granted by the EPO through a single procedure. Once granted it becomes, in each designated State, either a national patent after validation or a European patent with unitary effect.
European patent attorney: Representative entered on the EPO list of professional representatives, entitled to act before the EPO after passing the European qualifying examination.
Examination fee: Official fee paid so that an office examines the application on the merits (novelty, inventive step, clarity).
Extension State: State that is not party to the EPC in which a European patent may take effect on the basis of an extension agreement, at the applicant's request and against payment of an extension fee. Today only Bosnia and Herzegovina (BA) is concerned; the other former extension States have since acceded to the EPC and are now designated contracting States.

F

Filing fee: Official fee due to an office when an application is filed; it may be increased by page or claim surcharges.
First filing: The first application filed for an invention, in any office. It starts the 12-month Paris priority year and is the basis of every later filing in the family.
Freedom to operate (FTO): Analysis of whether a product or process can be exploited in a given territory without infringing third-party rights in force there. It is distinct from patentability.

G

Grace period: Limited period in some countries during which the inventor's own disclosure does not destroy novelty.
Grant fee: Fee payable once the office allows the application, before the patent is granted and published.

H

Hague System: WIPO system for registering industrial designs in several territories through a single application. It concerns designs, not patents.
Harare Protocol: ARIPO instrument for patents and utility models: a single application designates member States, where the granted patent takes national effect.
HKIPD: Hong Kong authority administering patent registration and publishing the related official forms and fees.
Hong Kong re-registration: Hong Kong is neither an EPC contracting State, nor an extension State, nor an EPO validation State. A Hong Kong standard patent (R) is obtained through a separate two-step local procedure: a request to record the designated (European, UK) application, then a request for registration and grant after the corresponding patent is granted.

I

Indian Patent Office: Indian office granting patents, with four branches (Delhi, Mumbai, Chennai, Kolkata). It is also a PCT receiving Office and an ISA.
Industrial property counsel (France, CPI): French regulated title for an industrial property counsel entered on the INPI list, entitled to represent applicants before the French office. It is the national counterpart of the wider notion of patent attorney.
Infringement: Unauthorised exploitation, in a territory where a patent is in force, of an act reserved to the patent proprietor. Remedies are national (or, for European patents, before the UPC).
INPI: French national office; grants French patents and receives PCT applications.
International Bureau (IB): WIPO body that administers the PCT: it receives the record copy, publishes the international application and communicates it to the designated Offices.
International phase: Stage of a PCT application before the International Bureau and the ISA: filing, international search, publication at 18 months and, optionally, preliminary examination.
International search fee: Fee due to the International Searching Authority chosen for the application; its amount depends on the ISA and is outside the scope of the 90% PCT reduction.
Inventive step: Requirement that the invention is not obvious to a person skilled in the art in view of the prior art.
IP: Intellectual property: rights over intangible creations — patents, utility certificates, trade marks, designs, geographical indications, plant variety rights, copyright and know-how. Industrial property is the subset covering patents, utility certificates, trade marks, designs and geographical indications.
IP firm: Practice grouping patent and trade mark attorneys, which handles filings, prosecution, renewals and portfolio management for its clients.
IPC: Hierarchical code system classifying patent documents by technical field.
IPI (Switzerland): Swiss national office for patents, trade marks and designs; it also acts as a PCT receiving Office for Swiss applicants.
IPRP / IPER: Non-binding PCT opinion on novelty, inventive step and industrial applicability.
ISA: Office (EPO, USPTO, CNIPA…) that carries out the PCT international search and issues the international search report (ISR).
ISR: List of prior art documents cited by the ISA against a PCT application.

J

JPO: Japanese national office; grants Japanese patents and acts as PCT receiving office and ISA.

K

KIPO: Korean national office; grants Korean patents and acts as PCT receiving office and ISA.

L

London Agreement: Agreement reducing translation requirements when validating a European patent in participating states.

M

M0, M12, M30, M31 (procedural months): Shorthand used in the calculator for the number of months elapsed since the first filing (priority) date:
Madrid System: WIPO system allowing a single international application to protect a trade mark in many countries. It concerns marks, not patents.

N

National extension: Filing with a national office via the PCT route.
National phase: Entry of a PCT application into each chosen office, usually at 30 or 31 months from priority.
Novelty: Requirement that the invention is not already part of the state of the art at the filing or priority date.

O

OAPI: Regional office granting a single title covering all its (mainly francophone) member states.
Office action: Official communication raising objections that the applicant must answer within a deadline.
Opposition: Post-grant procedure (9 months at the EPO) allowing third parties to seek revocation of a patent.
Opt-out (UPC): Declaration withdrawing a classical European patent from the exclusive jurisdiction of the UPC.

P

Paris Convention: 1883 treaty allowing a 12-month priority claim from a first filing to extend protection to other members.
Patent attorney: Professional qualified to represent applicants before one or more patent offices: drafting, filing, prosecution and fee management.
Patent family: In this calculator, a patent family is the set of patent applications and patents deriving from one and the same initial filing, in particular its national, regional or PCT extensions claiming its priority directly or indirectly.
Patent portfolio: A set of several patent families owned or managed by the same person or organisation. Calculating a portfolio consists in reconciling the estimated costs of each family, in particular by calendar year, fee category and currency.
Patentability: Whether an invention can be patented: it must be patentable subject matter, new, involve an inventive step and be susceptible of industrial application.
Patentable subject matter: The kind of subject matter a patent can cover (products, processes, uses); excluded matter includes discoveries, abstract methods, software as such, and inventions contrary to public order.
PCT: WIPO treaty allowing one international application to postpone national/regional filings up to 30–31 months.
PCT international application: Single application filed under the PCT which has the effect of a national filing in all contracting States, before choosing the countries at national phase entry.
PLT: WIPO treaty harmonising patent formalities: requirements for a filing date, standard forms, time limits and restoration of rights after a missed deadline.
Prior art search: Search of published documents (patents and other literature) carried out before or during a filing to assess novelty and inventive step.
Priority: Right to date later filings back to the first filing, within 12 months, under the Paris Convention.
Priority deadline: The date 12 months after the first filing by which later applications (national, regional or PCT) must be filed to claim its priority; it can be restored only in limited cases (Rule 26bis.3 PCT).
Publication (18 months): Automatic publication of the application 18 months after the priority date, making it public prior art.

R

Receiving Office of the International Bureau (RO/IB): The International Bureau acting as receiving Office. It is always available as an alternative to the national receiving Office, whatever the applicant's nationality or residence.
Renewal fee: Periodic fee paid to keep a pending application or a granted patent in force in each territory.
RO: Office where the PCT international application is filed and formally checked.
Rospatent: Russian federal authority responsible for patents and other registered industrial-property rights and for publishing the applicable official fees.

S

Search fee: Official fee paid for the search carried out by an office, which produces the search report on the prior art.
State of the art: Everything made available to the public before the filing or priority date; used to assess novelty.
Substantive examination: Office review of novelty, inventive step and industrial applicability before grant.

T

TRIPS Agreement: WTO agreement setting minimum IP standards for its members, including a 20-year patent term from filing and non-discrimination between fields of technology.
TÜRKPATENT: Turkish national office responsible for patents, utility models, trade marks and designs and for publishing their official fees.

U

UIBM: Italian national office responsible for patents, trade marks and designs and for publishing the applicable official fees.
UKIPO: British national office; grants UK patents and receives PCT applications.
UP: Single title covering all participating EU states with one renewal fee, requested after EPO grant.
UPC: Court with exclusive jurisdiction over unitary patents and, unless opted out, classical European patents.
UPC Agreement (UPCA): Agreement creating the Unified Patent Court, competent for European patents and unitary patents in the participating States, with a transitional opt-out.
USPTO: US national office; grants US patents and applies small/micro entity fee reductions.

V

Validation: The formalities that may be required, after a European patent has been granted, for it to take or keep effect in a given designated state. Depending on the applicable national law, validation may require filing a translation, paying a fee, appointing a local representative or completing other formalities within a set period; some states require no particular formality. Validation (after the European patent has been granted) must not be confused with the designation of the state (during the European procedure), nor with entry into the national phase of a PCT application. National validation after grant must also be distinguished from the “EPO validation states”, which are non-EPC states linked to the EPO by a validation agreement. Validation gives effect to the granted European patent in the territories ultimately kept.
Validation translation: Translation required by some states to validate a European patent on their territory.

W

WIPO: UN agency in Geneva administering the PCT and other international IP treaties.
WO-ISA: Preliminary, non-binding opinion on patentability issued with the international search report.
WTO: International organisation governing trade rules; it administers the TRIPS Agreement, which sets the IP obligations of its members.