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Extra [claims fees]! Extra [page fees]! New UK IPO fees – Read all about it!

by | Oct 16, 2017

 

Read all about it!

 

We may have come a long way since that line was first shouted (on a New York City street?), but this article really is all about the extras. In this case, it is extra claims fees and extra page fees that are particularly noteworthy, and soon to be introduced by the UK Intellectual Property Office (UK IPO).

 

To give you some background, the UK IPO ran a consultation (discussed here) earlier in 2017. Now, they have finalised their plan in view of the responses to that consultation (including one from our very own Freddie Noble).

 

Are costs going to go up?

 

The short answer is yes, official fees will be going up, and new fees are going to be introduced. However, the fee increases are not projected to be significant for most patent applications, and you probably won’t be affected by the changes. The changes have been specifically targeted to catch the longest UK patent applications; for example, chemical-related patent applications, which often run to hundreds of pages.

 

The key changes are the intended introduction of excess claims fees and excess page fees. The UK IPO has amended their proposal and now only intend to charge £20 per claim (due when requesting a search), but the first 25 claims are still free. Most UK patent applications have fewer claims than this, so it should not make a difference for the majority of applications. Unless you have multiple inventions, there probably isn’t going to be an extra cost here.

 

Similarly, excess page fees will now be charged at £10 per page (due when requesting examination), but the first 35 pages are still free. This essentially mirrors the European Patent Office approach, but again, most patent applications have fewer pages than this, so it should not make a difference for the majority of applications.

 

If the number of claims and/or pages goes up during prosecution, then extra fees may be due in order for the application to grant. It is unlikely that this will lead to a large grant fee, especially given that you cannot add matter to a patent application after filing, and it is more common for the claim or page count to decrease before grant*.

 

Other minor changes include modest increases to the official application fee, search fee, examination fee and renewal fees (when renewing at the 12th year or later).

 

When are the changes going to take effect?

 

The government will need to change the existing Rules and Fees Rules before the changes take effect. If things stay on schedule, the changes are planned to come into force from 6th April 2018, and will presumably apply to all existing and future patents and patent applications.

 

What that probably means is that any application filed before that date, but searched, examined and/or intended for grant after 6th April 2018, could be subject to excess claims fees and/or excess page fees. However, as mentioned above, most patent applications do not have more than 25 claims, or more than 35 pages, and so the additional fees will only affect a minority of applications.

 

In any case, the fees are still very modest compared to European patent fees, for example. So, whilst costs are increasing, the title should probably read “Minimal extra [claims fees]! Minimal extra [page fees]! Read all about it!”. Patenting in the UK is still going to be very cost-effective, and it is an excellent jurisdiction in which to file your initial patent application.

 

If you would like detailed advice on these changes or any other aspect of intellectual property, please contact us to speak with one of our experienced patent or trade mark attorneys.

 

*That doesn’t mean that you will be able to delete pages/claims to get a refund!

Author

  • Marc Maidment

    Marc is a Director at Albright IP, as well as a Chartered British Patent Attorney and European Patent Attorney, and an IP Litigator (Patents) in the UK and Europe. Marc studied Chemistry at Keble College, Oxford, and joined Albright in 2014. Since then he has written and prosecuted patents covering a diverse range of technologies, from electric vehicle charging to flywheel technology, to chemical compositions, to product authentication systems, amongst many others.

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