The Intellectual Property Office (IPO) has had temporary fee changes (fee reductions) in place since the 30th July 2020 in order to help customers during the pandemic.

The temporary fee changes provision will end on the 31st March 2021. Any actions taken on or after the 1st April 2021 will require the usual fees.

Please follow the link to find out more directly from the IPO’s website – https://www.gov.uk/government/news/temporary-fee-changes

 

If you have been relying on paying your Patent renewal fees late, and incurring no additional costs through the temporary fee changes, you must now pay the required renewal fees by the end of March – otherwise normal extension fees will be incurred.

As a Firm, we are always here to help our Customers and, so, if you have any queries about the above, please do not hesitate to contact us directly.

When applying to register a Trade Mark, you must use the classification system to specify the goods and/or services for which you will use or intend to use your Trade Mark.

The Intellectual Property Office has launched a new searching service which will help you search for, and classify, the goods and/or services you need to apply for to register your Trade Mark.  This searching service is predominantly aimed at those individuals or businesses who will wish to apply themselves; however, it will also be of use to Firms of Attorneys too, like the tool TMClass offered by the EUIPO.

For more information please follow this link – IPO new search UK trade mark classes service now available – GOV.UK (www.gov.uk)

It is important to know that, as of the 1st January 2021, those wishing to protect their Trade Mark and Registered Design Rights in the United Kingdom and the EU will need to make separate provisions, and EU Trade Marks and Registered Designs now no longer protect the United Kingdom.

If you have existing EU rights which were Registrations as of the 31st December 2020, reciprocal rights have been created covering the UK, and the above affects just new rights or rights which were Applications as of the 31st December 2020.

Further, as of the 1st January 2021, proprietors outside the UK will require an Address for Service in the UK.

We are here to help you and your Clients, and welcome any queries the above may raise.

The Intellectual Property Office (IPO) has published a summary of the key changes to IP rights from the 1st January.  Please follow this link for further information – https://www.gov.uk/government/news/intellectual-property-after-1-january-2021.

 

The Intellectual Property Office (IPO) has launched a new service to help business and individuals interesting in registering a Trade Mark for the first time. The service is an online tool which helps improve their chances of registering a Trade Mark. The tool is specifically aimed at those who have little or no knowledge of the application process and who have not applied for a Trade Mark before.

The tool will enable one to check:

if anyone already has a Trade Mark too similar to their proposed Trade Mark;

their proposed Trade Mark against basic Trade Mark rules on acceptability; and

their estimated application costs.

An early version of the service is still under development and the IPO recommend that business and individuals try the service out and leave feedback for the IPO.

To find out more about this new service please follow the link below:

https://www.gov.uk/government/news/ipo-launches-trade-mark-pre-apply-service

The Intellectual Property Office has introduced the following temporary fee changes which are in place from the 30th July 2020 to the 31st March 2021.

The fee changes relate to the following – Patents, supplementary protection certificates (SPCs) Trade Marks and Registered Designs

  • No fees for extensions of time
  • No surcharge for Patent Application fees paid after the date of filing
  • No fees to apply for reinstatement and restoration of Rights
  • No surcharge for payment of a late renewal fees for Patents and Designs
  • £1 surcharge for payment of a late renewal fee on Trade Marks
  • No surcharge for late payment of SPC fees

However, the deadlines for completing actions, requesting extensions of time and paying fees are not affected by these fee changes and should be complied with

For further information, please refer to the IPO website  https://www.gov.uk/government/news/coronavirus-important-update-on-ipo-services

 

Update to Interrupted Days
The Intellectual Property Office has decided to bring the interrupted days period to an end on 29 July 2020. The first day of operation when all interrupted days deadlines will expire will be Thursday 30 July.
*An interrupted day is a day in which the normal course of business at the IPO is not possible.

The UK IPO is working to put in place measures that will ease burdens on business following the end of the period of interruption. This includes seeking Parliamentary approval to enable the temporary removal of fees for requests of extensions.

Interrupted Days

Following the outbreak of Covid-19 in the UK, the Intellectual Patent Office has declared 24 March, and subsequent days until further notice, interrupted days.

What does this mean for your IP rights?
The declaration of interrupted days means that many deadlines for Patents, supplementary protection certificates, Trade Marks, Designs, and Applications for these rights which fall on an interrupted day will be extended to the next non-interrupted day.
To help rights holders, the UK Patent Office will provide a minimum of 2 weeks’ notice before ending the interrupted days period.
What does it apply to?
This applies to all time periods set out in the various relevant UK Acts and Rules, and to all non-statutory periods that have been specified by staff.
What does it not apply to?
This does not apply to time periods set out under the various international IP treaties e.g. the Patent Cooperation Treaty, European Patent Convention, or the Madrid system, where the Office may be acting as a Receiving Office.
The most notable exceptions are any deadline for filing priority claiming Design, Patent or Trade Mark Applications – these deadlines must not be missed,
This period of interruption does not affect filing dates of IP applications which are filed at the Office and do not claim priority from a previous application. These will be assigned a filing date under the usual rules.
Why is this action being taken?
The UK IPO is taking this action owing to the disruption to applicants’ businesses and its ability to receive and send post by the current coronavirus pandemic. It is consistent with action taken by other intellectual property offices such as the European Patent Office and the European Union Intellectual Property Office.
The next update will be on 22nd June and at least 2 weeks’ advance notice will be given to plan prior to the end of interrupted days.

If you would like any clarification, please contact us by email or phone.

The Intellectual Property Office has published information regarding trade marks, designs, patents, copyright and exhaustion of IP rights during the transition period (1 February 2020 to 31 December 2020).
Please follow this link for more information – https://www.gov.uk/government/news/intellectual-property-and-the-transition-period

New Filing Fees for an International Patent Application filed through the UKIPO The UKIPO and WIPO have announced that, as of the 1st November 2019, there will be an increase in the fees for filing a new International Patent Application if it is filed through the UK Intellectual Property Office, as a Receiving Office for Patent Co-operation Treaty. The PCT Applicant’s Guide has been revised, and a copy can be found at: https://www.wipo.int/export/sites/www/pct/guide/en/gdvol1/annexes/annexc/ax_c_gb.pdf

The UKIPO have not yet issued their guidance, and that will follow shortly.

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.

The British Government (Department of Business, Energy and Industrial Strategy, Department for Exiting the European Union and the Intellectual Property Office) has issued new guidance in the event of a no-deal Brexit. The guidance covers changes to domestic Designs and Trade Mark laws if the UK leaves the EU without a deal. Further guidance is expected as the proposed date for Brexit looms – the following is what we have for now:

https://www.gov.uk/government/publications/changes-to-design-and-trade-mark-law-if-the-uk-leaves-the-eu-without-a-deal