Benchmarking National - PRO INNO Europe

34
BENCHMARKING NATIONAL AND REGIONAL SUPPORT SERVICES FOR SMES IN THE FIELD OF INTELLECTUAL AND INDUSTRIAL PROPERTY
including, among others, the route taken for applications (PCT, national, Eurodirect),
the number of countries for which protection is sought, the number of
pages of an application and the technology field in question.
Roland Berger Market Research (Roland Berger Market Research, 2004) was given
the task by the European Patent Office to analyse and compare the costs of
patenting in different countries. The methodology included a survey of about 250
patenting companies (a mixture of SMEs and large firms) and the analysis of
available data from the EPO, both from which model patents (representing
“typical” patent applications) have been derived. Average costs for a Euro-direct
and a Euro PCT model patent are shown in Table 2.
Comparisons with the US and Japan indicate that a Euro-direct patent may be, on
average, more than twice as expensive as an equivalent US patent and more than
three times more expensive than a Japanese patent. High costs in Europe are said
to be mostly due to translation costs, which are irrelevant for the US and Japanese
patent systems. Official fees seem to play a rather minor role – they are estimated
to amount to on average € 3,470 at the EPO, € 2,050 at the USPTO and € 1,570
at the JPO. As these figures are estimates by the patentees, it may be assumed that
they are already adjusted for preferential rates given to SMEs in the US (by using
the so-called Small Entity Act) and by the JPO for initial filings.
It is once again important to underline that, while the figures and model patents
are based on empirical data, variations with respect to certain cost categories can
amount to up to 100 %. It can be easily seen that the costs are considerable for a
company.
Further, it is necessary to look at the timing of the payments, i.e., when
individual fee instalments are due. For the PCT route, for example, a patentee has
to decide within 30 months7 after having started the patenting process (the
reference point in time is called the priority date), in which countries he/she is
actually looking for patent protection. This gives the firm a bit of leeway for cost
and strategic planning, but it also sets a deadline. Similar periods of times and
deadlines apply for other cost categories in the patenting process. Overall, the cost
structure and the timing of the instalments have relatively far-reaching consequences
for the design of an IPR support service (especially for financial subsidies – where
aspects such as what type of costs are to be subsidised or for how much time
support should be given – have to be taken into account) and for the strategic IP
management of a firm.
Difficult enforceability of IP rights
IP rights can only work to the extent to which they are enforceable. In case a
competitor infringes the IPR of a firm, the firm should be able to litigate successfully,
at sufficiently low costs and in a timely manner. In practice, however, litigation
often turns out to be difficult.
Table 2 Total cost of a representative EPO patent, in €
Expenditure Euro-PCT (1) Euro-direct (2)
Pre-filing expenditure (excl. R&D) 9,130 6,240
- In-house cost 4,190 2,540
- External cost 4,940 3,700
Cost of processing 21,990 14,420
- In-House Cost 5,680 3,070
- External cost 16,310 11,350
Cost of validation 15,580 9,870
TOTAL 46,700 30,530
(1) average: 8 countries covered by patent
(2) average: 6 countries covered by patent
Source: Roland Berger Market Research, 2004
7 This amount of time may differ slightly from country to country.