Changes To Official Fees For UK Patent Applications in 2018

Matthew Ng | February 2018

In a recent announcement, the UK Intellectual Property Office (IPO) has confirmed changes to the fees for patents and patent applications that will take effect on 6th April 2018.

Currently, the fee levels at the UKIPO are relatively low and, with no excess claims or pages fees, the fee structure is simple as compared to other jurisdictions such as the EPO or the US.  This combination of factors makes the UK an attractive jurisdiction for filing patent applications, especially first filings that are intended as priority applications.  With the changes that are being introduced, the fee levels will rise whilst still maintaining the competitiveness of the UKIPO.  An excess claims fee and excess pages fee are also being introduced, making the fee structure somewhat more complicated but with limited impact in practice.

Pre-Grant and Grant Procedures

The table below summarises the main changes to the online rates for pre-grant and grant fees:

Procedure Current fee Fee from 6 April 2018
Application fee £20 £60 (+ £15 if not paid on filing)
Search fee £130 £150 (+ £20 per each claim over 25)
Examination fee £80 £100 (+ £10 per each page over 35)
Grant fee None £20 per excess claim not paid for at time of requesting search and £10 per excess page not paid for at time of requesting examination

† paper filing rates will change similarly

As can be seen, the excess claims fee is being introduced as part of the search fee for claims over the initial 25 “free” claims.  The excess pages fee is being introduced as part of the examination fee for pages beyond the initial 35 “free” pages.  This is in contrast with fees at the EPO, where the corresponding fees stand alone and only the initial 15 claims are free.

A consequence of the excess claims fee being part of the search fee is that if the search fee is not paid in full at the time of requesting search, the whole application will be deemed withdrawn.  This is notably different than the situation for  European applications, in which if the excess claims fee is not duly paid or not paid in full, the application continues with the 15 free claims or the claims covered by the amount paid.  Therefore, with the changes to the UK fees, it will be important for applicants to consider the number of claims to include in a UK application.  In particular, for applicants of PCT applications with a large number of claims entering the UK national phase and wishing to reduce/avoid the excess claims fee, it will be important to consider claim amendments to reduce the number of claims well in advance of the expiry of the 31-month international phase.

Applicants may also wish to consider the number of pages to include in an application as a consequence of the excess pages fee being part of the examination fee.  For example, for a PCT application (with a large number of pages) containing two inventions, one of which is clearly indicated as unallowable in the international phase, the applicant may wish to excise the unallowable invention from the specification when entering the application into the UK national phase.  This will reduce the number of pages in the specification and thereby reduce or avoid the excess pages fee.

Post-Grant Renewal Fees

In addition to changes to pre-grant and grant fees, renewal fees for maintaining a granted patent in force for the 12th to 20th years will each see an increase of £10.  The table below summarizes the changes:

Year Current fee Fee from 6 April 2018
12 £210 £220
13 £250 £260
14 £290 £300
15 £350 £360
16 £410 £420
17 £460 £470
18 £510 £520
19 £560 £570
20 £600 £610

The increases are relatively modest and should only have a small impact on proprietors.  However, proprietors with large portfolios of UK patents may wish to consider paying any outstanding renewal fees before the changes come into effect.

Examples

The changes will apply to fees due and paid after the 6 April 2018.  Below are some examples of what this means in practice:

1) For an application containing 45 pages and the examination fee due on 7 April 2018, the amount of fee payable would be £80 if the fee is paid on 5 April 2018.  If the fee is paid on 7 April 2018, the fee payable would be £200.
2) For an application containing 25 claims on filing and 26 claims at the time of allowance, if the search fee was due on 7 April 2018 and paid on 5 April 2018, no grant fee would be payable.  If the search fee was paid on 7 April 2018, the amount payable would be £20.
3) For a granted patent for which the 15th year renewal fee is due on 30 May 2018, if the renewal fee is paid on 5 April 2018, the fee payable would be £350.  If the fee is paid on 30 May 2018, the amount payable would be £360.

Conclusion

In summary, the UK will remain an attractive and cost-effective jurisdiction for filing patent applications despite the fee changes.  Nevertheless, in order to minimise the impact of the changes, applicants and proprietors are advised to review patent/application portfolios to identify relevant outstanding fees due on or after 6 April 2018, and to attend to those that are payable before the changes come into effect.  Applicants with applications containing a large number of claims/pages are advised to consider filing the applications (or enter the UK national phase) before the changes come into effect.

Full details of the fee changes can be seen on the UKIPO website at:

https://www.gov.uk/government/publications/new-patents-fees-coming-into-...

For further advice or any queries regarding the upcoming changes, please do not hesitate to contact us.