UK-IPO proposes new fee for patent applications – Claims and Pages Fees to be introduced

The UK Intellectual Property Office has recently published its proposals for new fees for UK patent applications, following a consultation earlier this year.  The new fees are expected to come into force on 6 April 2018.

For the first time ever, the UK will charge excess claims fees and excess pages fees, similar to the fees already charged in other patent offices such as the EPO and the US Patent and Trademark Office.

The rules for the fees are more generous and the fee levels are set lower than at the EPO and the USPTO.  However, the consequences of failing to pay the fees appear to be exceptionally harsh in the UK.

Claims fees

The UK-IPO proposes to introduce a fee of £20 per claim for each claim over 25 in a patent application.  By comparison, the EPO charges €235 for each claim over 15 up to the 50th claim, and €585 for each claim over 50.  The USPTO charges $80 for each claim over 20.

It can be seen that the fee level set for the UK is modest, especially when compared with the fees charged by the EPO, and the number of claims allowed without a fee is more generous in the UK than at the EPO or in the USA.

The UK-IPO proposes that the excess claims fee will be required as part of the search fee.  If the number of claims increases during the examination process, fees for any additional excess claims, beyond the excess claims paid for in the search fee, will become due as a grant fee.

Because the initial excess claims fee will be part of the search fee, a failure to pay the full amount of excess claims fees due will have the consequence that the entire patent application will be deemed to be withdrawn (this was explicitly recognised in the UK-IPO’s original consultation document).  In our view, it is unreasonably harsh that the entire application should be lost through failure to pay the initial claims fees.

By contrast, if an initial excess claims fee is not paid when it is due at the EPO (within one month of filing the first set of claims) the relevant claim is deemed not to have been filed but the application is otherwise unaffected.  Only if excess claims fees are also due at the time of grant, and are not paid, does this lead to loss of the entire application.

Alasdair Kennington (Senior Associate at Cleveland Scott York) filed a response to the original UK-IPO consultation pointing out this discrepancy and suggesting alternative, less drastic, consequences for failure to pay the full excess claims fee in the search fee.  This concern is mentioned by the UK-IPO in the current proposal document, but no reply has been made and it seems that no account has been taken of it.

Pages fees

The UK-IPO proposes to introduce a fee of £10 per page of the description of a patent application over 35 pages.  By comparison, the EPO charges €15 for each page of the application as a whole (description plus drawings and claims) over 35 pages.  The USPTO charges $400 for each block of 50 sheets after the first 100 sheets.  For a PCT application filed via the UK-IPO, £12 is charged for each page over 30 in the entire application including the pages of the official form.

The amount of the fee set by the UK-IPO is generally similar the amount elsewhere.  However the UK only counts the number of pages in the description, whereas the EPO and the PCT also count the pages of the claims and drawings (and the PCT counts the number of pages in the official form).  This difference is welcome, especially the exclusion of the pages of the drawings from the calculation.  In many cases, a description of an application is improved by including a large number of drawings, for example showing a moving part in various positions so that its movement can be understood more easily, but this can lead to a large number of drawings sheets.  We are glad that, at least in the UK, applicants will not be encouraged to reduce the number of drawings, or to cram them close together on a few sheets, in order to avoid a pages fee.

The excess pages fee in the UK will be part of the examination fee, and so it will not be payable at all for an application that is withdrawn before the examination fee is paid.  If the number of pages increases during the examination process, fees for any additional excess pages, beyond the excess pages paid for in the examination fee, will become due as a grant fee.

Because the initial excess pages fee will be part of the examination fee, a failure to pay the full amount of excess pages fees due will have the consequence that the entire patent application will be deemed to be withdrawn.  As with the new excess claims fee, this seems to be a very harsh penalty.

Alasdair Kennington’s response to the original UK-IPO consultation commented on this and suggested that there should at least be a procedure to allow a period for an underpayment to be corrected.  This concern is mentioned by the UK-IPO in the current proposal document, but no reply has been made and it seems that no account has been taken of it.

Other changes

The basic application fee will be increased to £90 for applications filed on paper and £60 for applications filed electronically.  There will also be a 25% surcharge if the application fee is not paid at the time of filing the application.

The basic amount of the search fee will be increased to £180 (£150 for an ex-PCT application) for search requests filed on paper and £150 (£120 for an ex-PCT application) for search requests filed electronically.

The basic amount of the examination fee will be increased to £130 for examination requests filed on paper and £100 for examination requests filed electronically.

Renewal fees for granted patents will be increased by £10 per year in respect of the 12th and subsequent years.

These fees remain modest compared with many other jurisdictions.

References

The UK-IPO’s proposals are available in full at:

https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/639743/DPS-006363_Publication_Proposed_changes_to_statutory_patents_fees_-_Gove….pdf.

The original UK-IPO consultation document is available at:

https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/608560/proposed-changes-to-statutory-patent-fees.pdf

Click here to see Alasdair Kennington’s response to the consultation

Proposed Changes to Statutory Patents Fees

Comments in Reply to the Consultation

I wish to make the following comments on the proposed changes to the statutory patents fees.

I am a patent attorney in private practice.

These comments are purely my personal opinion and should not be taken to reflect the views of the organisation in which I work.

Proposal 1 and Proposal 2

Discussion

I agree with these.  In fact, the fees could be raised further if there is still a need to cover costs and a desire to recover a proportion of the costs of the UKIPO promptly.  The anticipated fee levels remain very modest compared with the cost of professional advice.  Even for applicants seeking to apply for a patent without professional help, a patent has very little value unless the invention is commercialised and the costs of commercialisation will far outweigh the level of the proposed official fees.

Nevertheless, I would still want to see annual renewal fees set at a substantial level, especially towards the end of the lifetime of a patent.  There is a public interest in providing an incentive to patent holders to abandon patents that are not being used.

Questions and answers

Q1: What effect do you think the proposed changes in the patent application fee would have on the way that businesses or individuals use the patent system to protect their inventions?

A1: A few people may be put off filing a patent application, but serious applicants would not be since the fees remain very modest.

Q2: Do you think the greater discount for e-filed patent applications would encourage businesses and individuals to file more patent applications electronically?

A2: No.  I think that most people would prefer to file electronically if they have the appropriate IT systems and capability.  This part of the proposal is not discussed at any point in the consultation document or the impact assessment, and so it is hard to know the background to it.  However, I think that the most effective way to encourage electronic filing is to inform people of possibility and direct them towards it in all information that you provide, so that new applicants naturally tend to use electronic filing.

You should note that some private individuals may be put off electronic filing by the need to use PDFs rather than the formats in which they have prepared documents (such as Microsoft Word).  You could avoid this by providing an on-line filing system that accepts common formats and auto-converts them to PDF, or by providing a simple PDF creation tool for users to install such as CutePDF (which is free, installs as a printer and therefore can create a PDF from any printable document, and which creates documents that are Annex F compatible and therefore acceptable for electronic filing).

Q3: What effect do you think the proposed changes in the basic fees for search and substantive examination would have on the way that businesses or individuals use the patent system to protect their inventions?

A3: Very little.  The fees remain modest in comparison to the costs of professional advice and representation.  A person who is put off by this level of fees will not be able to afford any effective commercialisation of their invention, and so probably should not be applying for a patent in any case.

Proposal 3

Discussion

I disagree with this proposal.

The justification for claims fees in paragraph 49 of the consultation document seems unconvincing.  Mostly, examiners only appear to examine independent claims in any detail, at least until the independent claims are considered to be patentable.  In practice, dependent claims usually require only to be examined to check that they are supported and that they are genuinely narrower than the claims from which they depend.  Apart from this, detailed examination is not needed since dependent claims must be novel and inventive if they depend from a novel and inventive claim.

In any case, it is not appropriate to try to tailor the patent system to make applications easier to examine.  The patent system does not exist for the convenience of the examiners; it exists to provide protection for inventions.  Therefore it is wrong to encourage behaviour that may be harmful to the interests of applicants even if it is helpful to examiners.

The repeated use of the word “succinct” is not helpful.  This word carries a strong implication that shorter is clearer and better.  Its use amounts to an attempt to prejudge the question of whether shorter claims sets are appropriate and thereby to skew the results of the consultation.

The main purpose of a dependent claim is to provide a fall-back position that may be valid and infringed in the case that the claim from which it depends turns out to be invalid.  Given that it is not easy to add new claims after grant, it is important for the protection of applicants that the application is granted with all possible dependent claims that could meet this purpose (i.e. claims that could have independent validity and be directed to a feature of commercial value).  Therefore limiting claims numbers can lead to applicants omitting claims that might be important for valid protection.

The appropriate number of claims for a patent application varies very greatly from case to case, and this is not simply a matter of technical field.  In one case, there may be essentially only one way to implement the inventive concept, and so a simple set of sub-claims can often cover all the important technical details and optional features.  In another case there may be several different alternative ways to implement the concept.  In this case, a main apparatus claim may be followed by a couple of dependent claims to basic additional features common to all embodiments and then there will be dependent claims for each of the embodiments, each of which might reasonably be followed by some claims to specific details of the embodiment.  If there are three alternative embodiments, each of which requires a claim to the basic features of the embodiment followed by three claims to specific details, the claim set has reached 15 claims even before any method claims have been added.

In addition, there is often a need to add a dependent claims to a different type of device in order to provide better legal protection (e.g. claims to “A steering wheel for a car …”, which are infringed only by the steering wheel, may be followed by a dependent claim to “A car having a steering wheel according to …”, which is infringed by the car itself).  Equally, a set of method claims often needs to be followed by a claim to a computer program for implementing the method, since it will often be the case that the computer program is the only thing that a competitor provides.  The method claims are only infringed by the user of the method, who may be the ultimate customer and a member of the public, whereas a claim to a program is infringed by the supplier of the program who is likely to be the actual competitor.  Thus dependent claims having no technical content but which change the nature of the infringing item are sometimes essential to providing effective protection to the applicant.

A further issue arises with plug-and-socket type inventions (i.e. inventions relating to separate devices that work with each other).  It will normally be necessary to have separate independent claims to the separate interworking devices, especially as these may be made, sold and operated by different people so that there would never be a person who was an infringer of an overall system claim (as an example, consider an invention concerning the interworking of a mobile phone and a cellular network base station).  When method claims are included, this results in four independent claims.  Usually, the implementations of optional features and technical details will involve complementary but different features at the different devices so that it is not possible to provide a single dependent claim that adds the feature to both of the devices.  Therefore each such feature will require four dependent claims in order to be properly protected.  In this case, just three dependent claims per independent claim would lead to an excess claims fee under the proposal.  This is clearly unreasonable.

Paragraph 51 refers to practice at the EPO and the USPTO.  However, this is not a justification for introducing claims fees into the UK system.  The consultation document provides no discussion or evidence to show that claims fees were introduced in these offices in order to improve the quality of the applications, nor to show that claims fees have actually improved application quality.  In practice, these fees can and do create problems for applicants (especially since the claims fees at the EPO are quite high).  Claims fees at the EPO and the USPTO can be regarded as an example of bad practice at those offices, and the existence of bad practice elsewhere is no justification for its adoption in the UK.

Paragraph 51 states that introducing claims fees in the UK would ensure a consistent approach for those customers who file both at the UKIPO and the EPO.  However, this is not a good justification.  It appears that the authors of the consultation document may not have a good appreciation of how the patent system works for applicants.  The EPO is typically an office of second filing whereas the UKIPO is typically an office of first filing.  Thus an EPO application is not normally required to provide priority rights in other jurisdictions, whereas a UK application often has to provide priority rights.  Practice still varies considerably from jurisdiction to jurisdiction.  The best way to ensure that a patent application filed abroad is entitled to priority for its entire contents and for all claims is for those contents and claims to be present in the priority application.  Therefore it is good practice (from the point of view of protecting the applicant’s rights) to include disclosure and claims in the priority application appropriate for all jurisdictions where it is envisaged that applications may be filed claiming priority.  This can lead to an increased number of claims, in order to provide priority for both a “definition of concept” type claim for use at the EPO and a “list of features” type claim for use in the USA.  The adoption of claims fees in the UK would tend to penalise this good practice whereas this is not the case for claims fees at the EPO because EPO applications are seldom used to support a priority claim.

Additionally, it is common for an application to enter EPO processing via the PCT.  The PCT does not have claims fees at present.  Therefore the PCT application may be filed with more than 15 claims, and the number of claims is reduced at the time of entry to EPO processing.  In law, all the claims in the PCT application are regarded as having been present in the EP application at filing, and so deleted claims can be reintroduced during examination if necessary without any question of adding new subject matter or lack of support in the application as filed.  This would not be the case for a UK application filed as a priority application.  Therefore claims fees can be less harmful to an applicant at the EPO than they would be at the UKIPO.

According to paragraph 52 of the consultation document, the average number of claims filed in a UK patent application is 22.  Therefore the proposal to introduce fees for each claim over 15 will not simply penalise a minority of maverick applications but will require 7 claims fees from the average application.  The consultation document provides no evidence that the average application did not need 22 claims.  The research both at the UKIPO and the discussion in the impact assessment of the effect of claims fees at the EPO appears to be purely a matter of counting claims without any analysis of the quality of the claims.  Therefore it seems that the average applicant will be penalised without any evidence to show that the excess claims were not necessary.  This is wrong in principle.  Applicants should not be penalised for behaviour that is not shown to be incorrect or unnecessary.  The fact that claim number have reduced since the EPO introduced claims fees is not an indication that the longer claims sets were not necessary.  Rather, it is a reflection of the high level of the fees (over £200 per claim).  It is common to spend time agonising over conflict between the 20 to 25 claims needed to give proper protection and the extra £1000 to £2000 that these claims will cost in claims fees.

Paragraph 52 refers to the potential financial impact on businesses seeking to protect their inventions.  I think that this does not reflect the actual likely consequences of the introduction of claims fees.  The fee levels are low, but they are a “discretionary” cost since it is possible to avoid them and so some applicants will be influenced by the fees to an extent that is greater than the actual fee levels would suggest.  Also, the fees send a signal that 15 claims are officially considered to be enough and this will influence some applicants.  The applicants who will limit their number of claims in response to these fees are likely to be those who would otherwise put forward fairly sensible sets of claims.  The wild enthusiasts, who believe vehemently in their inventions and who file inappropriately long sets of claims, will not be discouraged.

Paragraph 52 talks about encouraging applicants “to file a more succinct set of claims”.  In this context, “succinct” is a loaded (non-neutral) word, and I have criticised it above.  It would be more honest to talk about encouraging applicants to file a “shorter” set of claims.  As previously pointed out, the consultation documents do not include any evidence or reasoning that shorter sets of claims would benefit applicants, or even that it would fail to disadvantage applicants.  The only apparent justification is to make applications easier to examine, which does not seem to be a good reason bearing in mind that the UKIPO exists for the public benefit.

The discussion of procedure at paragraph 56 of the consultation document does not properly reflect the actual procedure at the EPO.  At the EPO, claims fees are due within one month of filing the first set of claims (Rule 45(2) EPC) and if a claims fee is not paid the consequence is that the corresponding claim is deemed to be abandoned (Rule 45(3) EPC).  The consequence of possible loss of the entire application arises only in the case that further additional claims have been added by amendment during prosecution and then any corresponding further claims fees are not paid.  By comparison, the proposed UK system seems unreasonably harsh.

It would be more proportionate for a failure to pay the fee for a claim to affect only that claim.  One possibility would be that if the fee is not paid, the corresponding claim is deemed not to have been filed (roughly following Rule 45(3) EPC).  However, it might be preferable to follow a procedure similar to that under section 76(1) PA77 and allow a period for either the missing fee to be paid or the application to be amended to reduce the number of claims.  This procedure could apply at the search fee stage (as part of the search fee), at the examination fee stage (as part of the examination fee) and if desired at grant (as a grant fee).  If neither an amendment is filed nor the missing part of the fee paid, the relevant claims should be deemed not to be present and therefore the required level of fee has been paid.  In this way, the excessive penalty of losing the entire application is avoided while the office is under no obligation to proceed with search or examination or to grant a patent with unpaid excess claims.

Questions and answers

Q4: What effect do you think the proposed “excess claims fee” would have on the drafting of claims?

A4: The effect will be different for different applicants.

There will be applicants (maybe many applicants) who will limit the number of claims in their applications by omitting claims that would have provided valuable protection or a basis for valuable amendments during prosecution, or which would have provided priority for claims that would have been useful in other jurisdictions.  These applicants will be harmed by the proposal, in my view unjustifiably.

There will be applicants who ignore the excess claims fees entirely.  Some of them may do this in a clear evaluation of the commercial value of the claims that they will pay excess claims for.  These are applicants who would not have filed unnecessary claims in any case, so any increased burden on the office of examining the claims was justified as part of the purpose of the patent system.  Other applicants will have an unreasonable view of their inventions and will file large numbers of claims regardless of the fees.  These applicants might place an unnecessary burden on the office, but the excess claims fees will not deter them.

In conclusion, the benefit to the office in terms of reduced examination effort may be less than anticipated (especially since the examination of dependent claims should not take significant effort) while some applicants will be induced by the fees to alter their applications in ways that could do them genuine harm.

Setting the bar at 16 claims will disadvantage some applications and not others, owing to the characteristics of the individual inventions (such as how many alternative ways there are of implementing a concept and how many optional technical details could have independent inventive step).  Plug-and-socket (or server-and-client, or coder-and-decoder, or base-and-remote) type inventions will be particularly penalised.  Such inventions can arise across all technical fields.

I oppose claims fees in general, but if the office is determined to introduce them I would suggest that the bar is set at 26 claims.  This would not catch the “average” application and would provide enough claims for the proper protection of almost all inventions.  This is more appropriate since it should not be the policy of the UKIPO to penalise applicants who are filing properly thought out sets of claims.

Q5: Do you have any comments about how the proposed “excess claims fee” should operate in practical terms?

A5: The proposed consequence of a total loss of the application is excessively harsh, and does not reflect what actually happens at the EPO since the comparison with the EPO ignores Rule 45(3)EPC.  A better alternative would be a procedure by which the claims for which fees are not paid are deemed not to have been filed.  In this way, the penalty for non-payment matches the purpose of the fee.

Some thought also needs to be given to the question of how to apply these provisions to the UK national phase of a PCT application, since it would be wholly inappropriate to apply a UK claims fee to the claims as filed at the PCT without providing the applicant with an opportunity to amend the claims to reduce their number so as to avoid or reduce the fee payable.  The interaction of these proposals with the PCT system appears to have been entirely ignored by the consultation document.

Proposal 4

Discussion

I disagree with this proposal.

The justification given for this proposal in paragraph 58 of the consultation document is self-serving, and the use of the word “succinct” is objectionable for the same reasons as discussed with respect to proposal 3.  Since the pages fee is charged purely on length, it would be clearer more neutral to replace the phrases “succinctly defined” by “short” and “clearly and succinctly explained” by “clearly explained and short”.  A clearly explained patent application can help the public to understand the technical details of the invention protections sought.  However, there is no particular reason to think that a short patent application will do so, and in this regard the final sentence of paragraph 58 seems unlikely to be true.

The description must be sufficient, in the sense of enabling others to work the invention.  There is no reason to suppose that a shorter description will provide more information or provide it more clearly.  Many poor quality applications are too short, and omit useful (or even vital) information.  There is no reason to expect that a shorter description will help the public to understand the technical details of the invention better.  On the contrary, it seems much more likely that a shorter description will leave information out and make it harder for the public to understand the invention.  The requirement for technical disclosure is a key part of the public benefit from the patent system; an inventor only gets a patent by disclosing it to the public in detail.  An incentive to file shorter descriptions, which may well result in inventions being disclosed in less detail, is contrary to the public interest.

A further requirement of the description is that it must support the claims by providing information to justify the scope of the claims.  Without adequate support in the description, an applicant is unable to obtain claims of the scope that is required.  Additionally, if the scope of the claims has to be narrowed during examination, for example because prior art is found that shows that part of the inventive concept is old or obvious, any restriction to the scope of the claims is only permitted if the corresponding information is already included in the application at the time of filing.  Therefore, in order to safeguard the applicant against unforeseen problems during examination, it is important that the description contains a wide-ranging and detailed discussion of optional and preferred features.  There is no reason to believe that a shorter description will better support the claims nor provide an increased scope for amendment.  Therefore an incentive to file shorter descriptions may lead to less detailed disclosures that may disadvantage the applicant in terms of the permitted claim scopes that will be available.

It needs to be borne in mind that a well-drafted patent application has to be prepared with a view to the requirements in other jurisdictions as well as the UK.  This is not just because it is more efficient to file the same text in all jurisdictions.  It is also necessary in order for the UK application to be effective to give priority to applications filed abroad.  Examination practice varies from jurisdiction to jurisdiction, and also varies over time.  At many patent offices, an application will be examined five years or more after it is written, and a degree of defensive drafting is prudent in view of the (partially unknown) examination practice that it may have to face.

For example, it has been the practice at the Chinese Patent Office to have a requirement for support for amendments that is so strict that it can amount to a need for the description to include the exact wording that is to be added to a claim.  Therefore an applicant who envisages filing in China is well advised to include in the description a recitation of every optimal feature in claims language as well as an ordinary discussion of the feature.  Additionally, if the feature is discussed in the “background” section of the description it must be repeated in a later part of the description as Chinese examiners will not permit features from the “background” part to be added to the claims.

Also, there was at one time (and may be again) a practice at the EPO to insist that certain features of the described embodiment were essential to the invention and had to be included as limitations in the independent claims, even when the application had never described these features as essential.  This could lead to a reduction of claim scope that caused serious commercial damage.  In order to protect against this practice it is prudent in some cases to include extra embodiments, that may have no practical value, in order to demonstrate that various features of the preferred embodiment are indeed optional and a working embodiment can be constructed without the features.  This inevitably increases the length of the description.

Multiple embodiments may also be important in US practice, in order to widen the scope that will be given to “means plus function” language in the claims, which is subject to special rules of interpretation under US law.  Additionally, US examiners often require that every feature mentioned in a claim is shown in the drawings, and this can lead to the inclusion and description of additional drawings that may not seem necessary in the UK.

In these cases, it is necessary to include the extra text in the UK application as well, assuming that the other applications will claim priority from the UK application.  Otherwise the feature that is added by amendment in the other country will not have been included in the priority application so that the amended claim may cease to be entitled to the claimed priority date and therefore be open to attack from additional prior art.

Finally, it needs to be borne in mind that the text of a patent application will often have to be translated into a foreign language for filing in other jurisdictions.  The use of highly concise language can often lead to a misunderstanding by the translator, who is unlikely to be an expert in the precise technical field of the invention and who therefore will not always know the technical terms and who may misunderstand phrases that have a special meaning in a particular field.  Therefore it is often better to use language that is longer, but which uses simpler words, in order to avoid translation problems.

For these reasons, an applicant may have a legitimate interest in filing a description that appears to be unnecessarily long by the standards of UK practice.

The main objective of the pages fee appears to be to encourage shorter applications that will be easier to examine.  The patent system exists to benefit owners of inventions who are entitled to obtain patents and to benefit the public by providing detailed disclosures of useful technical information.  In my view, a shorter description is more likely to damage these objectives than to serve them.  There is no justification for altering the system in a way that will damage the public interests and the interests of applicants, simply in order to make life easier for the UK IPO.

Of course, some patent applications are filed with rambling and incoherent descriptions which could usefully be made shorter.  However, it seems unlikely that a pages fee will actually be effective in these cases.  The proposal seems to be based on a misapprehension about the processes by which the text of a patent application is prepared.

Where such a long and rambling patent application originates in the UK, it is unlikely to have been prepared by a competent professional adviser.  Under these circumstances, a pages fee may simply be ignored by an applicant who is unaware of the fee at the time of preparing the description or who is so enthusiastic about the invention that they are prepared to continue at length regardless of any penalty.  If such a person does reduce the length of their description in view of a pages fee, it is unlikely to be any clearer as a result.  Instead, the description is likely to shorter, but just as rambling and incoherent.  Since it is shorter it may contain even less technical information.

On the other hand, where a patent application originates from abroad, the person drafting it is unlikely to know about any UK pages fee and the damage is already done before the application arrives in the UK for filing.  It needs to be understood that there is no realistic possibility that the description of a patent application arriving from abroad will be altered before filing in view of UK pages fees.  Such an operation would require an amount of attorney time that is (a) often not available before the filing deadline and (b) would cost far more than the saving in pages fees.  Furthermore, no sensible attorney would take the risk, in terms of potential damage to a client’s interests and possible professional negligence, of removing any text in case that text turned out to contain information that was vital to obtaining grant or winning a court case.

Therefore this proposal may well turn out to be a penalty that raises revenue but is ineffective at changing the behaviour of applicants.

While I have been critical of this proposal in general, I would like to welcome the fact that the pages fee will be calculated from the length of the description alone.  The PCT pages fee is based on the total number of pages in the whole application, including drawings, and therefore tends to penalise applications with a large number of drawings pages.  In many cases, the use of a large number of drawings can enhance the quality of a description.  Where there is a wish to show several variants of a particular feature, or to show exactly how a mechanical component moves, this may take several pages of drawings but only require a very short description.  I applaud the UK IPO for not penalising the use of drawings in its pages fee proposal.

I have not strong feelings about the correct time to require payment of the pages fee.  The penalty for non-payment, that the application is treated as withdrawn, seems harsh but it is hard to see what alternative there could be.  However, there needs to be a procedure whereby underpayment of the fee leads to a period being set for the missing amount to be paid, rather than immediate loss of the application, in order to give a chance to applicants to rectify any accidental omission.

Questions and answers

Q6: What effect do you think the proposed “excess pages fee” would have on the drafting of the description?

A6: I think that in many cases the proposed “excess pages fee” will have no effect at all.  Where it does have an effect, this is likely to act against the public interest and the interests of applicants.  Any benefit to the Office, in terms of making applications easier to examine, does not justify damage to the interests of applicants or the public at large.

Q7: Do you have any comments about how the proposed “excess pages fee” should operate in practical terms?

The proposed details of operation seem acceptable.  There should be a provision for underpayment to lead to an opportunity to make up the shortfall rather than resulting in immediate loss of the application.

Alternative Proposals

Q8: Would you prefer to see changes limited to pre-grant fees (proposals 1-4) or an increase to renewal fees coupled with a smaller increase to pre-grant fees (the alternative proposal)?  Please explain why.

A8: The overall level of fees remains modest, and I have no objection to the fee increases of proposals 1 and 2.  Indeed I think that they could go higher.  I do object to the fees of proposals 3 and 4, and would like them not to be implemented at all.  I can see no problem in an increase in renewal fees as set out in the alternative proposal if this would make up any shortfall in income.  In general, I think that there is a strong public interest in maintaining renewal fees at an adequate level (especially after year 10) to encourage patentees to abandon patents that are not being used.  For this reason, I do not think that the UK IPO should be shy about making small increases in renewal fees if this is needed to provide the required level of income.

Q9: What effect do you think this alternative proposal, to increase renewal fees and make smaller increases to pre-grant fees, would have on the way that businesses or individuals use the patent system to protect their inventions?

A9: I think that the effect would be small, since the level of pre-grant fees remains low in any case and so small differences in the fee levels are unlikely to have much effect.  The proposed increase in the filing fee may be useful in deterring some pointless applications, and the lower fee in the alternative proposal would reduce this beneficial effect.  On the other hand, slightly higher renewal fees may help to weed out granted patents that are not being used.  I do not think that the behaviour of serious applicants would be significantly different under the alternative proposal as compared with proposals 1 to 4.

Q10: Do you think this approach would have the same effect on filing and prosecution behaviour as the proposals to make larger increases to pre-grant fees alone (as set out in proposals 1-4)?

A10: I think that it would mostly have the same effect, except that the lower filing fee may have a reduced effect in deterring pointless applications.  The fee levels in general are so low that the level of fees should have no effect on serious applicants.  The problems that I see with proposals 3 and 4 arise more from the normative effect of the existence of the excess claims and pages fees than from the financial effect of the fee levels.

Summary

Q11: What effect overall do you think the proposed changes in fees would have on businesses and individuals who wish to protect their patent rights?  Do you think the proposed changes would have a disproportionate effect on any particular type of applicant?  As well as deterring those applications which have no likelihood of success, would the fee increases risk deterring valuable patent applications?

A11: I think that the proposed changes in fees would have very little effect in deterring the filing of patent applications.  This applies both to valuable and valueless applications.  However, the existence of excess claims fees and excess pages fees could have an effect on the length and content of patent applications.  I fear that this may well damage valuable patent applications while doing little to improve valueless ones.

Q12: The IPO is undergoing a major investment programme both in electronic services and increased examination capacity.  This is designed to lead to improved customer services, but contributes to the IPO’s need to raise fees.  To what extent do you support the payment of higher fees to facilitate investment and improvement?  Alternatively, to what extent would you prefer to retain lower fees and delay or limit improvement programmes, including investment in electronic and online services?

A12: I strongly support the UK IPO’s investment in electronic and online services, and would also support an increase in examination capacity (assuming that by this, the consultation document means an increase in the ability to provide a high quality and helpful examination, and not simpler a faster process at the expense of applicants).  I would prefer fees to be raised than investment to be curtailed.  If necessary, this could be funded by a greater increase in renewal fees than is currently proposed, since the deterrent effect of renewal fees serves a public purpose.

Eric Alasdair Kennington

6 june 2017

 

Authored by Alasdair Kennington