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amount of excess claims fees due will have the consequence that the entire patent application will be deemed to be withdrawn (this was explicitly recognised in the UK-IPO’s original consultation document).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

“UP” stands for “Unitary Patent”, which is more properly the “European Patent having Unitary Effect”. “UPC” stands for the “Unified Patent Court”. Together, they are the latest attempt to provide a single common patent system for the EU.

A Brief History

Attempts to provide a single patent for the single market go back almost to the original founding of the European Coal & Steel Community in 1951, but these have failed repeatedly.

Separate negotiations in the 1960s led to the hugely successful European Patent Convention (EPC), which came into force on 1 June 1977 and created the European Patent Office (EPO). The EPC is an International treaty which any European country can join. It is entirely separate the EU (and there have been periods in the past when some EU members were not members of the EPC). At present the EPC covers all EU members plus other non-EU countries such as Switzerland, Norway and Turkey.

After the EPC, multiple further attempts to agree an EU-wide patent system, or at least a common patent court, also failed. In 2007 the European Commission started yet another set of negotiations, which aimed to create a community patent system and a community patent court system that was separate from the EU courts. This failed when the Court of Justice of the European Union ruled that it was contrary to EU law. The Commission then proposed to use “enhanced co-operation”, to allow a system to be created that only covered those EU states that wanted to participate and EU regulations were passed to create the Unitary Patent. In 2015 the CJEU ruled that this was legal. Separately an agreement for the Unified Patent Court was created as an International treaty.

Some of the issues and disputes that have arisen on this topic over the last few years have been discussed by Scott & York in earlier news posts, at

Spain, The Unitary Patent and costs (again)
Unitary Patent Update
The UK Government gets its numbers wrong over the benefits of the European Unitary patent and Unified Patent Court.
Application Costs for the Unitary Patent – More Expensive?
The European Unitary Patent Moves Forwards (Again…)
Delay to EU Patent
EU Patent Agreed – not for Italy or Spain

Legal Status

The Unitary Patent is created by a series of EU regulations made under “enhanced co-operation”. The Unified Patent Court is created by an International treaty and is legally separate from the EU. Neither system covers the whole of the EU. Spain and Croatia are not participating. Poland is part of the Unitary Patent but has not yet signed the agreement for the Unified Patent Court. Neither system has come into force yet.

The Unitary Patent – How it works

The Unitary Patent is a bolt-on to the existing European patent system under the EPC. Under the current European patent system, a single European patent application is filed at the EPO, and is examined and granted by the EPO. At the time of grant, the applicant can decide which of the available countries should be covered by the European patent. The European patent then becomes a bundle of separate and independent national patents in each country that is chosen (with the exception that Switzerland and Liechtenstein have agreed that they will be treated as a single territory, chosen as a unit and covered by a single patent).

The Unitary Patent will simply be another available choice at the time of grant, and takes the form of a single territory that can be chosen as a unit and covered by a single patent in the same way as Switzerland and Liechtenstein. However, if the applicant chooses the Unitary Patent, it cannot also ask for the European patent to become an independent national patent in any of the same countries.

The Unitary Patent – The Cost

Since the Unitary Patent is simply an option that can be chosen at the time of grant, it has no effect on the pre-grant costs of a European patent. Therefore at this stage it has exactly the same cost as getting patent coverage in Europe via the existing EPC procedures.

Various costs arise at the time of grant of a European patent. The original application must be in English, French or German. At grant, the claims must be translated into the other two official languages. These are requirements of the EPC. Additionally, the countries to be covered by the granted patent may impose their own requirements, which are typically requirements for additional translations. Some countries, including France, Germany and the UK, do not impose any translation requirements. Most countries require translation of the claims, or the claims and the description, into a local language. In the longer term, the Unitary Patent will not require any translations, but for an initial transitionary period (of up to 12 years) it will be necessary to translate the description so that it is available in English plus one other official EU language. Therefore the costs at the time of grant are similar to those for many existing countries in the EPC system, but higher than for France, Germany and the UK.

It is necessary to pay an annual fee to keep a patent in existence after grant. Renewal fees for a Unitary Patent have been set so as to be approximately the same as the total of paying renewal fees for a patent in each of France, Germany, the Netherlands and the UK (the four most frequently chosen countries in the EPC system). Therefore the cost of renewal fees will be greater than the fees currently paid by people who bring a European patent into force in France, Germany and the UK only (a very common choice), but less than the fees paid by those who bring a European patent into force in five or more countries. However, there is a loss of flexibility, in that it is possible at present to stop paying fees, and allow a patent to lapse, in selected countries while keeping it going in other countries. With a Unitary Patent this is not possible and the choice is only between paying the fees or allowing the Unitary Patent to lapse for the whole territory covered.

The Unified Patent Court – Structure

The Unified Patent Court will be the only court with the power to hear cases relating to Unitary Patents. Additionally, the UPC will in future also be the only court with the power to hear cases relating to national patents granted by the EPO, i.e. European patents as they currently exist. For an initial transitional period of 7 years (extendable to 14 years), it will be possible to opt out of the UPC for a European patent, by means of a register that will be kept by the EPO.

The Unified Patent Court will be an entirely new specialist patent court system. All patent infringement actions must be brought at the Court of First Instance, which will have a large number of divisions spread across the EU. Each division will have its own language requirements. All patent revocation actions must be brought at the Central division of the UPC, which is based in Paris with branches in Munich and London. Each case will be heard by three judges, who cannot all come from the same country, and a fourth, technically qualified, judge may also be present. There will also be an appeal court based in Luxembourg.

The Unified Patent Court – Laws

The UPC must base its decisions on EU law, the agreement setting up the UPC, the EPC, relevant International agreements and national law.

The basic definition of infringement is set out in the UPC agreement and is generally similar to the infringement law of most countries around the world, and includes various common exemptions. The fine details and precise meanings of these provisions are likely to be influenced most strongly by national laws as the other sources of law for the UPC do not include an existing history of patent infringement laws and decisions. The UPC will have the normal powers to impose damages and an injunction.

The UPC agreement states that a patent may only be revoked on the grounds set out in the relevant part of the EPC, so revocation at the UPC is likely to follow existing EPO practice very closely.

The Unified Patent Court – Procedure and Representation

Court procedure will be largely paper-based, with short oral hearings. It aims to be fast, with revocation actions taking no more than 14 months from initial filing of a petition at the court to a final written decision. There will be limited discovery, limited use of expert witnesses and very little scope for cross-examination compared with procedure in the UK High Court. However, the UPC will have strong powers to allow inspection of the premises of a presumed infringer in order to find and preserve evidence, including the power to permit a surprise inspection.

Qualified lawyers from the member states will have the right to conduct proceedings and appear before the UPC. These rights will also extend to many national patent attorneys and European Patent Attorneys.

The paper-based procedure and the representation rights for patent attorneys are likely to allow smaller cases to be heard at a reasonable cost, but it will not be possible to determine costs accurately until the court is running.

Article by Alasdair Kennington[:]

The UK is likely to ratify the UPC Agreement

The UK Minister of State for Intellectual Property, Baroness Neville Rolfe, announced on 28 November 2016 that the UK will proceed with its preparations to ratify the Unified Patent Court Agreement.

This agreement creates the Unified Patent Court (UPC). Additionally, arrangements for the creation of the Unitary Patent (UP) cannot come into force until the UPC Agreement comes into force. The UP and the UPC were intended to provide a single and unified patent system for the EU, although they do not cover all of the EU because Spain and Croatia are not taking part, and Poland has agreed to join the UP system but not (yet) the UPC.

The UP and the UPC are discussed in more detail here.

This decision is significant, and potentially controversial, because of the interaction between the terms of the UPC Agreement and the UK’s intention to leave the EU as outlined by us here back in June. The UPC Agreement cannot come into force until it is ratified by the three EU member states with the greatest number of European Patents in force. For as long as the UK remains a member of the EU, it is one of those three. Once it leaves, its place will be taken by The Netherlands. This means that if the UK does not ratify the UPC agreement, the system is delayed because it cannot come into force until after the UK has left the EU. On the other hand, if the UK does ratify the UP Agreement to avoid delays, the new system will come into force covering the UK and then shortly afterwards the UK will leave it. It is now clear that the UK has decided to press ahead with ratification to avoid delaying the UP and UPC system.

There has been no official announcement of how the government intends to deal with the potential difficulties of the UK becoming a member of the new system and then leaving it again after only a year or so. However, various interested parties have been discussing the idea that the UK could remain in the UP and UPC even after leaving the EU.

Although the UP and UPC are intended to provide a single patent system for (most of) the EU single market, the UPC Agreement is not in fact part of EU law but is an International treaty. At present, Article 84 of the Agreement states that it is open to member states of the EU, but if all parties agreed it would be possible to amend the Agreement so that the UK could become and remain a member even after leaving the EU.

The Unitary Patent is created by a series of EU Regulations made under “enhanced co-operation” and not binding on all EU member states. EU Regulations are not directly binding on countries that are not members of the EU. However, it would be possible for the UK to pass a national law stating that it is bound by these Regulations, or a treaty could be negotiated between the EU and the UK to extend the Unitary Patent to the UK (although it is hard to see how such a treaty could be signed before the UK leaves the EU, and therefore there could be an awkward interim period between the UK leaving the EU and any such treaty coming into force).

In this way, it would be possible for the UK to continue in the Unitary Patent system and the Unified Patent Court system after leaving the EU, but it would require immense goodwill and unanimous agreement from all parties.

Although such an outcome might be advantageous for the UK, it could be very controversial since it would mean that the UK would remain part of an EU legal system, and would have to agree to be bound by relevant EU law, after leaving the EU. Regardless of the practical implications, this is likely to be politically unacceptable to many of those who advocated leaving the EU.

There is no indication that the UK government might be considering such an option. However, it is interesting to note that the official press release on the UKIPO website include a “Note to editors” stating “The UPC itself is not an EU institution, it is an international patent court. The judiciary appointed include UK judges.”

Article by Alasdair Kennington[:]

New UK Patents Rules make important changes

The UK Intellectual Property Office has announced forthcoming changes to the Patents Rules, which will end the practice of “omnibus” claims, will introduce a new “intention to grant” letter, and will relax the rules on formal drawings, amongst other changes.  Details are given on the UK-IPO website here.

Omnibus Claims

These are a traditional form of patent claim, that typically claims the inventive apparatus or method “substantially as described with reference to the accompanying drawings”.  These claims generally have a narrow scope, since they are limited to the main features of the illustrated embodiment, and are often novel and inventive even when other claims are not.  They are seldom of much practical benefit, since they tend to be so narrow that they are not infringed, but they have occasionally been valuable useful to patentees (e.g. in Rotocrop International Ltd v Genbourne Ltd [1982] FSR 241).

Many jurisdictions, such as the European Patent Office, dislike such claims on the grounds that their scope is unclear, and do not allow them unless there is no other clearer way to claim the invention.

The UK will now take a similar line, and “omnibus” claims will be prohibited unless the technical features of the invention cannot otherwise be clearly and concisely defined using words, a mathematical or chemical formula or any other written means, with effect from 6 April 2017.

Intention to Grant notifications

At present, if a UK patent application is in order for grant, the UK Intellectual Property Office will issue a “Notice of Grant”.  At this point, the application ceases to be pending.  In the UK, a divisional patent application can only be filed while the parent application is pending.  As a result, it is not possible to file a divisional application after the “Notice of Grant” has been issued.  This has led to practical problems, since the “Notice of Grant” may be issued without warning, and a practice has developed in which applicant notifies the UK Intellectual Property Office that a divisional application is under consideration and requests that the existing application is not granted in the meantime.

With effect from 1 October 2016, the UK Intellectual Property Office will issue a notification of intention to grant, giving at least one month’s warning before a Notice of grant is issued.  This is intended to stop the existing practice where an applicant requests that grant of an application is delayed while a divisional application is prepared.

These new notifications of intention to grant will be included in the official file of the application, and will therefore be open to public inspection via the UK-IPO’s “Ipsum” web service.

Drawings

The rules for drawings will change from 1 October 2016 to allow shading (which we take to mean grey-scale) and black-and-white photographs.  These changes may be useful, and may make it less likely that the UK Intellectual Property Office will object that drawings are informal.  However, it will still be necessary in most cases to avoid grey-scale and photographs where an application is intended to be filed outside the UK, until other patent offices make similar rule changes.

Other changes

Various other changes have also been made, as set out in the UK Intellectual Property Office announcement.

Article by Alasdair Kennington[:]

Google Books wins copyright case at the US Supreme Court

The long-running US legal dispute over whether Google Books infringes copyright is over, with a final decision in Google’s favour from the US Supreme Court.

Google Books is a project by Google to scan books and extract the text from them by Optical Character Recognition. The contents of the books then become searchable in normal Google searches and in special Google Books searches. If you click of a “books” result in a Google search you will see extracts from the book concerned. This is not controversial when it relates to old books that are out of copyright, but there were complaints that the scanning and text extraction, and the display of extracts from the books in response to clicking on search results, infringed copyright when the book was in copyright.

The Association of American Publishers and the Authors Guild in the USA sued Google in 2005. Various attempts were made at a settlement, but none were agreed. A potential compromise was rejected by the US courts in 2010. In 2013 a US District Court ruled in favour of Google, on the basis that the Google Books project was a “fair use” and therefore not an infringement of copyright. This was upheld by the US Court of Appeals in 2015. A further appeal was made to the US Supreme Court, which ruled on 18 April 2016 that it would not hear the appeal. Consequently, the Appeal Court decision stands and cannot be challenged further. This means that this court case is over, and the Google Books project is considered to be a “fair use” and not an infringement of copyright in the USA.

It should be noted that this ruling only applies under US law, and theoretically there could be copyright disputes in other countries. Since different countries have significantly different laws on exceptions from copyright infringement, cases in other countries could have a different outcome.

Article by Alasdair Kennington [:]