The United Kingdom Intellectual Property Office (UKIPO) has announced a number of changes in its official fees for UK patent applications, which will be introduced on 6 April 2018.
The majority of fees will remain the same, however a number of increases should be expected. In particular, new charges will be introduced based on the number of claims and the number of pages in the patent application. Most of the increases and changes apply to fees paid on or after 6 April 2018, so could be avoided in some cases by paying the relevant fees before that date.
Search and Examination Fees
The basic search fee and examination fee will both increase. The UKIPO will also introduce new components to each of these fees in addition to the basic fixed amount.
As part of the search fee, applicants will now be required to pay an excess claims fee of £20 for each claim over 25. The fee amount will be based on the number of claims on file when Patents Form 9A (Request for Search) is filed. However, it should be noted that it is not normally possible to make an amendment to a UK application before the search report is issued. Applicants should therefore consider the number of claims in their application at the time of filing as this will affect the amount of the search fee payable.
The new claims fees will not apply to search fees that are paid for supplementary searches or searches of further inventions.
With regard to international applications which have already been searched in the international phase, Applicants will still be allowed to pay a reduced fixed search fee, but the new claims fee discussed above will be added to that fixed search fee.
As part of the examination fee, applicants will now be required to pay an excess pages fee of £10 for each page over 35 of the description (not including any sequence listing). The pages fee will be calculated based on the number of pages in the description at the time the Patents Form 10 (Request for Examination) is filed.
It should be noted that the new excess claims and excess pages fees will only apply to search and examination fees that are paid on or after 6 April 2018. In some cases it may therefore be possible to avoid these new fees by paying the search and/or examination fee before 6 April 2018.
A brand new fee to be introduced by the UKIPO on 6 April 2018 is the grant fee.
For applications where the search and/or examination fee was paid on or after 6 April 2018, and so the new excess claims and/or excess pages fees were applicable, the number of claims and/or pages in the application will be assessed again prior to patent grant.
If the number of claims or pages has increased between the initial assessment of these fees on or after 6 April 2018 and the allowance of the application, then additional claims and/or page fees may be payable. These fees will form the new “grant fee”. No grant fee will be payable if the number of claims/pages has not increased. As above, the first 25 claims will incur no claims fee and the first 35 pages will incur no pages fee.
Applicants will be notified by the UKIPO by way of a ‘Notification of Intention to Grant’ if a grant fee is due. The communication will highlight the missing fees and set a two-month payment period, which is extendable by two months. The consequences of non-payment will be that the application will not proceed to grant, care should therefore be taken.
Applicants should note that under this new fee structure, any amendments made during prosecution that increase the number of claims or the number of pages might lead to a request for payment of further fees at the grant stage.
The application fee will be increased from £30 to £90. However, the UKIPO is maintaining a one third reduction in the amount of the application fee if the application is filed electronically. A 25% surcharge is also being introduced for cases where the application fee is not paid at the time when the application is filed.
Upon the grant of a UK patent, annual renewal fees are charged by the UKIPO.
With effect from 6 April 2018, the renewal fees for year 12 to year 20 will be increased by £10 per fee, whilst the fees for year 5 to year 11 remain unchanged.
For renewal fees with due dates before 6 April 2018, the fee will be charged at the current (pre-6 April 2018) rate, even if the fee is actually paid on or after that date. Renewal fees with due dates falling on or after 6 April 2018 will be charged at the new rate, unless the fee is paid before 6 April 2018, in which case the pre-April 2018 amount can be paid.