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full amount of excess claims fees due will have the consequence that the entire patent application will be deemed to be withdrawn (this was explicitly recognised in the UK-IPO’s original consultation document).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

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Authored by Alasdair Kennington

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Posted on: 9th November 2017