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Proposed changes to statutory patent fees

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UKIPO fees1Back in June this year IPcopy noted that the UKIPO was running a consultation on proposed changes to statutory patent fees. The Government has now published its response and it appears that the UKIPO will now be joining the EPO in charging both excess claim fees and additional page fees.

It is noted that the proposed changes will require amendments to both the Patents (Fees) Rules 2007 and the Patents Rules 2007 but the Government anticipates a commencement date of 6 April 2018.

By way of a brief recap the consultation presented four proposals relating to pre-grant fees and an alternative proposal of some more modest pre-grant fee increases combined with some increases in post-renewal fees.

In light of the feedback received to the consultation the UKIPO is planning to proceed with an increase to the application fee, search and exam fees as discussed in the consultation. Excess claims and pages fees will also be introduced but these will be of a more modest nature than envisaged in the consultation.

It is noted that only 23 responses were received to the consultation. IPcopy wonders whether the UKIPO can set up a mailshot service that interested parties could sign up to so that consultations such as this are more widely circulated.

The proposed changes detailed by the Government in the response are as follows:

  • Application fee to rise from £30 to £90 (paper applications) and £20 to £60 (e-filings) and a surcharge of 25% if the application fee is not paid on filing.
  • Search fees to rise to £150 (UK search filed electronically), £180 (UK search filed on paper), £120 (international application (UK), filed electronically) and £150 (international application (UK), filed on paper). Substantive exam fees to rise to £100 (e-filed) and £130 (paper filing).
  • Excess claim fee of £20 per claim applying to Claims 26 and above. A new grant fee will be payable if the number of excess claim fees increases. It is noted that the original excess claim fee proposal was £30 on Claims 16 and above but this section of the consultation received a number of negative comments. It is also noted that the “average” UK application contains 22 claims.
  • Additional page fee of £10 per page over 35 pages, to be paid with the substantive exam fee. It is noted that the consultation originally envisaged the additional page fee being payable on filing but the proposal was modified in light of feedback. IPcopy notes that this modification will not apparently help applicants who wish to take advantage of combined search and exam at the UKIPO.
  • Renewal fees – £10 increase to patent renewal fees for years 12 onwards.

An Impact Assessment was also published by the Government in addition to the response document. The Impact Assessment notes that the proposed fee increases are designed to help the UKIPO in a number of ways, namely: discouraging “hopeless” applications which are filed “not by business but by lone individuals who are convinced they have invented something new, when they have not” (burn); encouraging applicants to draft more concise and clearer applications (not always possible of course to get concise applications where the subject matter is complex, e.g. in the telecommunications or biotechnology fields); and reducing (slightly) the IPO’s reliance on renewal fees to recoup the costs of processing a patent application by shifting a greater percentage of costs of processing a patent application into the pre-grant phase.

Mark Richardson 10 October 2017

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