New schedule of fees for Patent procedures

By Francisco Espinosa

On August 19, 2010 the new Texto Único de Procedimientos Administrativos (of INDECOPI) was officially published, establishing new government fees for both trademark and patent applications and I. P. procedures in general, and entered into effect on August 20, 2010.

Both conventional and PCT patent applications filed in Peru will pay the same government fees, of approximately US$ 260.-, which represents an increase from the previous fee of approximately US$230.-

Also the government fee related to the examination on the merits of the patent application has now a cost of US$ 198.-, instead of the previous cost of US$ 185.-

Although the TUPA includes both concepts (application and examination on the merits) as if it was a single initial payment of approximately US$ 458.-, it will still be possible to pay the government fee for examination on the merits in a term of six months after the patent publication is done.

Other concepts related to the patent proceeding (priority claim, additional claims to the ten first, modification of pages, additional examination on the merits, etc.) have also suffered relatively moderate increases on their fees.

Possibly the biggest change comes in relation to maintenance fees (annuities) paid in patent applications. This TUPA establishes that patent applications will start paying annuities from their first anniversary counted from their application date, and not from the third year as it previously was.

For such purpose annuities have now been put into 3 groups. First is the group consistent of only patent applications for which a lower government fee has been set, of approximately US$ 51.- if it is paid before or within the month of anniversary.

A second group consists of patents granted and until their 10th year anniversary (counted from filing) for which a further increase is set in the governmental fee of approximately US$ 100.- if it is paid before or within the month of anniversary.

Finally, the highest annuity government fee is set for patents in the third group which consists of those patents that are between 11 and 20 years old counted from their filing, here the fee is of approximately US$ 147.- if it is paid before or within the month of anniversary.

In all the cases an increase is also applied when the annuity is paid within the 6 month grace period provided in our legislation.

These fees will be charged to all patents that have celebrated at least its first anniversary since filing, as it may correspond, and in PCT patents that enter into National Phase in Peru retroactive annuity payments may be required by the Peruvian Direction of Inventions after the filling.