UK IPO – Patent fee changes on 6 April 2018

 

When the new fees will be introduced

The new fees will take effect on 6 April 2018. Fees paid before that date will be the current fees.

 

The specific fee changes being introduced

The following patents fee changes are being introduced on 6 April 2018.

• Increase to the application fee, and introduction of a 25% surcharge if it is not paid on filing.

• Increase to the fees for search and substantive examination.

• Increased discount for each of the above fees when they are filed electronically.

• Introduction of an excess claims fee.

• Introduction of an excess pages fee.

• A £10 increase to renewal fees for each of years 12 to 20.

 

Please note that it is the usual practice of Page White and Farrer to file applications, and pay fees, electronically to minimise costs for our clients.

 

Despite the fee increases, we believe that the new fees are still low compared to many other Patent Offices.

 

Application fee

The application fee will increase from £30 to £90.

 

Search requests

The search fee will increase from £150 to £180 (or from £120 to £150 for a UK national phase application from a PCT application when an International search has already been conducted).

 

Excess claims fee

From 6 April 2018, search requests (but not requests for a search of a further invention or for a supplementary search) will require an excess claims fee of £20 for each claim over 25.

 

These new fees will apply to any search fee paid on or after 6 April 2018. Therefore we advise that any search request on a current application or any new application is filed before 6 April 2018 to avoid the excess claims fee. Also, for any new application filed on or after 6 April 2018, the number of claims should be limited to avoid or reduce the excess claims fee.

 

Examination requests

The substantive examination fee will increase from £100 to £130.

 

Excess pages fee

From 6 April 2018, the fee for substantive examination will increase by £10 for each page of description over 35 (referred to as “excess pages”). This new excess pages fee will apply to any request for substantive examination made on or after 6 April 2018.

 

The fee for substantive examination will be calculated based on the number of pages of description present in the application at the time the request for substantive examination is filed. The applicant may make amendments to reduce the number of pages of description after issue of the search report and prior to filing the request for substantive examination.

 

Where a sequence listing is filed separately to the description it does not form part of the description and so does not add to the excess page count.

 

These new fees will apply to any fee for substantive examination paid on or after 6 April 2018. Therefore we advise that any request for substantive examination on a current application or any new application is filed before 6 April 2018 to avoid the excess pages fee. Also, for any new application filed on or after 6 April 2018, the number of description pages should be limited to avoid or reduce the excess pages fee.

 

Grant fee

The UK IPO will carry out a check for unpaid excess claims/pages fees at the time the application is found to be allowable, and in order for grant. A grant fee will be required where:

(a) there were 25 or fewer claims when the search was requested and there are now more than 25 claims; or

(b) there were 35 or fewer pages of description when the substantive examination was requested and there are now more than 35 pages of description; or

(c) the number of excess claims or excess pages present in the application is now increased above the number paid for earlier in the process.

 

The grant fee will be the sum of £20 for any additional excess claims (claims over 25) and £10 for any additional excess pages (pages of description over 35).

 

The Notification of Intention to Grant will advise if a grant fee is due and what fee is required. There will be a two-month period for payment of the grant fee, from the date of the Notification of Intention to Grant.

 

No excess claims fee will be payable if a search fee was paid before 6 April 2018, and no excess pages fee will be payable if the fee for substantive examination was paid before 6 April 2018. This principle will also apply in relation to the grant fee, such that:

• Where both the search fee and fee for substantive examination were paid before 6 April 2018, no grant fee will be required.

• Where the search fee was paid before 6 April 2018 but the fee for substantive examination was paid on or after 6 April 2018 then if a grant fee is required it will only be composed of any fees required for additional excess pages. No excess claims fee will be payable.

• Where both the search fee and fee for substantive examination were paid on or after 6 April 2018, then any increase in both excess claims and excess pages must be paid for before grant.

 

Patent Renewals

The renewal fees for years 12 to 20 are each increasing by £10.

 

Where a renewal due date falls before 6 April 2018 the fees will be charged at the current (pre-6th April 2018) rate, even if the renewal payment is made on or after 6 April 2018. Where a renewal due date falls on or after 6 April 2018 and the renewal payment is made before this date, the fees will be charged at the current (pre-6th April 2018) rate.

 

International applications entering the UK national phase

Applicants will need to pay the fees applicable at the time the application enters the national phase. Early entry into the national phase before 6 April 2018 would enable the current (pre-6th April 2018) fees for search and substantive examination to be paid.

 

Where a substantive examination is requested on an international application (UK) which has entered the UK national phase and was not originally in English, the substantive examination will be based on the English language translation. The number of pages of description in the English language version will be used to calculate the excess pages fee.

 

If you have any questions, please contact us in London on 020 7831 7929.

 

This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis. Please note that the law may have changed since the day this was first published in February 2018.