NEWS & EVENTS

 

UK IPO to introduce claims fees and page fees

 
UK IPO to introduce claims fees and page fees

10 October 2017

The UK Intellectual Property Office ran a consultation from April to June 2017 regarding proposed changes to the fees charged in relation to UK patent applications and patents.

Following responses from several interested parties, some of the changes were adjusted in the final proposal. Read the full consultation outcome.

The proposed fee changes are expected to come into force by 6 April 2018. The proposed changes include increases to the application fee, search fee and examination fee as well as increases to renewal fees for patents for the 12th year onwards.  The increases are significant in relative terms (e.g. the application fee is tripled) but are small in absolute terms (UK IPO fees are some of the lowest patent office fees anyway) and need to be considered in the context of UK IPO fees having remained unchanged since 2010.

Of more significance is the proposal to introduce, for the first time in the UK, fees for both “excess claims” (£20 per claim above 25) and “excess pages” (£10 per page over 35) in an application.  Claims fees and page fees are common in many patent systems, but have never been charged in the UK before.

The claims fees are payable, if necessary, when requesting search of a UK application.  The UK IPO has long offered a relatively inexpensive prior art search of applications (previously £130, now £150) and many applicants take advantage of this to get a prior art search completed in the priority year.  The introduction of excess claims fees mean that it is very important that, if a prior art search is desired, whether as part of the examination process in the UK, or as a precursor to claiming priority from a UK application, then consideration is given to the number of claims in the application as filed (amendments to the application are generally not possible before search).

The page fees are payable, if necessary, when requesting substantive examination of a UK application.  This means that these will not apply where the UK application is only being used in order to establish a priority date for subsequent applications.

Despite these changes, the UK IPO remains an attractive location for filing patent applications.  As a location for first filings, the UK IPO has no mandatory fees for the first 12 months and the option of a low-cost prior art search.  For substantive applications seeking a granted patent it is possible for the total official fees up to and including grant to be kept under £300.

A full list of the proposed changes is below:

  • Increase the fee for paper applications from £30 to £90 when the application fee is paid at the time the application is filed.
  • Increase the fee for e-filed patent applications from £20 to £60 when the application fee is paid at the time the application is filed.
  • Introduce a 25% surcharge on the application fee if the fee is not paid at the time of filing.
  • Increase the fee for requesting a search to £150 for requests filed electronically and to £180 for requests filed on paper.
  • Increase the fee for search of an international application (UK) to £120 when requested electronically and to £150 for requests filed on paper.
  • Increase the fee for requesting a substantive examination to £100 for those requests filed electronically and to £130 for requests filed on paper.
  • Introduce a fee of £20 for each claim above 25 – this fee is payable at the time of filing a search request, and potentially at grant of an application if the number of claims in the granted application exceeds that in the searched application.
  • Introduce a fee of £10 for each additional page of description over 35 – this fee is payable at the time of filing a substantive examination request, and potentially at grant of an application if the number of pages in the granted application exceeds that in the examined application.
  • Increase patent renewal fees: there will be a £10 increase for the 12th year onwards.

For more information on how the fee changes will impact your plans to file or prosecute UK applications, please do get in touch with your usual Mewburn contact.