Patents – Avoiding Potential Pitfalls
New UK Patent Fees April 2018 – Avoiding Potential Pitfalls
New Patent Fees for UK Patents came into force on the 6th April 2018.
This second briefing concentrates on avoiding potential pitfalls and is particularly relevant to those who have filed a Patent Application from about the 6th April 2017 and who have not yet paid the Filing, Search and/or Examination Fee.
For Patent Applications filed on/after the 6th April 2018, the new fee regime automatically applies. However, if a Patent Application is/was filed before that date, one can pay a lower Filing, Search and Examination Fee if paid before the 6th April.
Many individuals and SMEs file a Patent Application without payment of the Filing, Search and/or Examination Fee. This tactic is, traditionally, one of keeping initial costs to a minimum but you may be caught-out by the new fee regime if you pay on/after the 6th April because:
- if the Filing Fee is paid on/after the 6th April, it is over double the pre-6th April fee;
- if the Application contains more than 25 claims, the Applicant will have to pay an Excess Claims Fee at the same time if the Search Fee is paid on/after the 6th April; and
- if the Application contains more than 35 pages of description, the Applicant will have to pay an Excess Pages Fee at the same time if the Examination Fee is paid on/after the 6th April.
Filing and Search Fees
Although many of the increases in fees are quite modest, the biggest areas for concern are the Filing and Search Fees.
If you filed a Patent Application without paying the Filing Fee then, on/after the 6th April, it will cost £45 more to make a deferred payment of that fee – from then £75. At the same time as making a deferred payment of the Filing Fee, one will normally need to pay the Search Fee.
The new Search Fee will cost £20 more on/after the 6th April – from then £150 – but it is the inclusion of an Excess Claims Fee of £20 per claim above twenty-five claims which has the potential for making your Patent Application significantly more expensive.
It is not uncommon in regimes where additional fees are payable for claims over a certain number for an Applicant to reduce the number of claims in an Application and, thereby, reduce the additional fees payable. However, the new UK fee regime has not been set-up like that. As such, the potential pitfall is that one has no automatic right to amend the Application before payment of the Search Fee and, thereby, reduce the number of claims and any Excess Claims Fee payable – this being specifically excluded by Rule 31(3), which we are informed is not being revised. One can only amend a UK Patent Application prior to receipt of the Search Report if permission is provided by the UKIPO, and there are presently no apparently applicable grounds which would allow amendment simply to reduce payment of any Excess Claims Fee.
Examination Fee
The rise in Examination Fee on the 6th April is modest, being just an additional £20 – from then £100. However, if your Application contains over thirty-five pages of description, an Excess Pages Fee of £10 per page is payable with the Examination Fee.
Practical Considerations
We strongly suggest that any Applicant who has filed a Patent Application without payment of the Filing Fee and/or Search Fee at the time of filing consider paying those fees before the 6th April, so as to benefit from the lower fees.
Any Applicant whose Application contains more than 35 pages of description should also consider paying the Examination Fee before the 6th April, so as to benefit from the lower fee.
Please note that the above fees are outside of UK VAT.
For basic details on how the UKIPO Patent Fees are changing, please refer to our first briefing entitled ‘Changes to UKIPO Patent Fees – 6th April 2018’ – click here. A link to the guidance provided by the UKIPO is as follows: https://www.gov.uk/government/publications/new-patents-fees-coming-into-force-on-6-april-2018/new-patent-fees-guidance-for-business.
