Official fees for UK patent applications are expected to rise in 2018. Nevertheless, by international standards, the UK will remain inexpensive. For example, UK fees will remain lower than at the EPO, where a granted patent application enforceable in the UK is obtainable through the direct European (EP) or International (PCT(EP)) route.
As detailed below, the UKIPO plans to introduce new fees for excess claims and description pages, and to increase the existing application, search, examination and renewal fees. The changes are expected to take effect from April 6, 2018.
New fees for Excess Claims and Description Pages
For the first time, excess claims and excess page fees are to be charged. The excess claims fees will be charged as part of the search fee, and fees for excess description pages as part of the examination fee. Such fees will further be required at grant if the number of claims or pages increases during examination. For any excess claims or pages fees due to be paid with the search or examination request, it will be critical to pay these on time as the application as a whole may otherwise become considered ‘withdrawn’ at the UKIPO.
However, excess claims fees will be payable to the UKIPO only for claim 26 onwards. This is generous compared to the respective 15 and 20 ‘free’ claims currently allowed at the EPO and USPTO. Furthermore, the new UKIPO fee of £20 per claim will be significantly cheaper than the respective €235 per claim and $80 per claim currently charged at the EPO and USPTO.
According to the UKIPO, no excess claims fees will be incurred by the “average” UK application, which has22 claims. Nevertheless, we are aware that the claims fees could add significantly to the cost of patent applications in, for example, the pharmaceutical industry, where multiple embodiments are commonly claimed in one application. A 50-claim application would incur an excess fee of £500. Thus, where a single application claims multiple inventions, an applicant may wish to consider amendments before the search request, to claim only the invention deemed most commercially valuable at that time. One or more divisional applications can then be filed for any inventions that are removed from the ‘parent’. More broadly however, the new claims fees may discourage the filing of multiple inventions in a single application at the outset.
The new UKIPO fee of £10 per page will be for description pages beyond 35, for example resulting in an excess fee of £650 for an application having 100 description pages. However, and in contrast to the EPO, we currently understand that the excess fees will not be levied on claims, abstract and drawings pages.
Increased Basic Fees for Application, Search and Examination
The proposed increases in the basic application, search and examination fees are relatively restrained. Assuming an application is filed online – Marks & Clerk’s standard practice for minimising costs for our clients – the basic application fee will rise to £60, the basic search fee to £150 (or £120 for a PCT(UK) national phase), and the examination fee to £100. Generally, each of these fees will be £30 higher if the application is filed on paper.
Importantly, the official cost of filing an application merely to establish a valid filing/priority date, without proceeding further towards search or examination at the UKIPO, will remain zero.
However, a new late payment 25% surcharge will apply to the application fee if the applicant has not paid the fee on the filing date and later wishes to proceed with the application. We believe the effect on start-up companies, who typically file an application in advance of fund-raising, will be minimal: the surcharge is low, and thus effectively continues to allow the application fee to remain unpaid until the time of filing claims and requesting a search.
Increased Renewal Fees
Annual renewal fees to keep a granted GB patent application in force from year 12 onwards are expected to increase by £10 per fee. This increase will generally affect only a minority of patents, which are known to have significant and prolonged commercial value.
The fee changes will provide cost efficiencies for the UKIPO, by encouraging online submission of applications and search/examination requests, and by encouraging applicants to reduce the lengths of claims and descriptions that an Examiner must consider.
From the applicant’s perspective, the new excess claims and pages fees may be of most concern. For example, applications in the pharmaceutical and biotechnology sectors often comprise extensive disclosures and claim sets. It is therefore likely that drafting and amendment practices, which are already employed by Marks & Clerk for cost-efficient patent prosecution at other patent offices where similar fee structures exist, will soon become similarly advisable for the UKIPO.
For detailed disclosures, which may need a large number of claims and/or description pages, please do ask your Marks & Clerk adviser to assist with early filings ahead of the fee increase on 6 April 2018.
After April 6, Marks & Clerk will be ready to recommend strategies for avoiding unnecessary official fees, generally prioritising - of course - the commercial scope of protection desired for our client’s inventions.
For more information, please see the Government's response to the proposed fee changes here.