Change ahead for UK patents in 2018

From 6^th April 2018, several changes will take place to fees and the fee structure for both granted UK patents and UK patent applications. The effect of the changes will be to bring the UK’s patent fee structure closer to the fee structure used by the European Patent Office (EPO).  However, the new UK fee regime is still considerably less expensive than the EPO’s fee regime, and UK patent fees remain very good value for money.

So what will change?

• An excess claims fee of £20 per claim for each claim over 25 will be introduced. This fee is due when requesting a search and is essentially a surcharge on the search fee. Excess claims fees will not be payable on further searches or supplementary searches. In contrast, the EPO charges at least €235 for each claim over 15.

• An excess pages fee of £10 per page of the description over 35 pages will be introduced. This fee is due when requesting substantive examination and is essentially a surcharge on the examination fee. This fee relates only to pages in the description. Therefore, pages of drawings, claims and sequence listings (filed separately to the description), for example, do not count towards the number of excess pages as they are not considered part of the description. In contrast, the EPO charges €15 per page of the specification (description plus claims plus drawings plus abstract) over 35 pages.

• A Grant fee will be introduced and is essentially a further fee to cover any unpaid excess claims fees or excess pages fees. This is only applicable in the case where additional excess claims or excess pages have been added to the application during prosecution. 

• The official fees for filing an UK patent application, requesting a search and requesting examination will increase. The new application fee will be £60 if the application is filed online.

• Renewals fees for UK Patents will increase by £10 per year for 11^th and subsequent year renewals.

What does this mean for IP owners and do you need to do anything?

On the face of it the introduction of ‘excess fees’ appears to be a significant change in current UK patent practice.  However, UK patent attorneys are already very familiar with preparing and prosecuting applications that maximise the applicant’s protection whilst keeping excess fees to a minimum. For example, many UK patent attorneys will also prosecute European patent applications, which already have similar ‘excess fee’ provisions in place. In fact, the current rule changes are simply bringing UK practice more in line with current European practice. These changes should not cause major disruption (or cost increases) for IP owners.

Patent applicants (particularly those who are very cost sensitive) should bear in mind that particularly lengthy specifications will have a higher cost in official fees. However, these considerations should already be made by the patent attorney as part of the initial drafting process to limit unnecessary official fees further down the line. As previously mentioned, UK patent attorneys are already familiar with similar provisions when prosecuting European patent applications, and should aim to keep these excess fees to a minimum whilst maintaining the best protection for the applicant. At Wynne-Jones, we use certain ‘tricks of the trade’, such as making best use of the rules on margins and font size, to minimise the fees payable.

It now becomes even more important for applicants (and attorneys) to decide on which features of the invention are the most important to be searched. It continues to be good practice to include additional, potentially useful, fall-back positions (which are not claimed/searched) in a generalised form elsewhere in the specification.

For international (PCT) applications entering the national phase, the excess claims/page fees will be due on national phase entry. Therefore, it may be worth considering early entry into the national phase (i.e. before 6 April 2018) to avoid paying these fees.

What if further excess claims are added during prosecution?

If there are further excess claims added during prosecution (i.e. if the number of claims increases after the request for search has been made and is in excess of 25 claims), further excess claims will be payable in response to the Intention to Grant notice. Applicants will not get a refund if the number of claims is reduced during prosecution. No excess claims fees (including Grant Fee) will be due if a request for search has been made before 6^th April 2018.

What if further excess pages added during prosecution?

If there are further excess pages added during prosecution (i.e. the number of pages of the description increases after the request for examination has been made, and the description is in excess of 35 pages), further excess pages fees will be payable in response to the Intention to Grant notice. Applicants will not get a refund if the number of pages of the description is reduced during prosecution. No excess pages fees (including Grant Fee) will be due if the request for examination has been made before 6^th April 2018.

What happens if excess claims fees are not paid (or only paid in part)?

Since the excess claim/page fees are added to the search fee and examination fee respectively, a part payment will correspond to a part payment of the search or examination fee. The UKIPO does not consider the search/examination request to have been filed until full payment of the fee has been paid. Therefore, a part payment of an excess claim/page fee will be considered as if the search/examination fee has not been filed. If a part payment is made, the remainder of the fee must be paid within the appropriate deadline/timescale.

In summary…

UK patent fees and its fee structure will change from 6^th April 2018. The new fee structure will be closer to the fee structure used by the EPO, with excess claims and excess pages fees. Some renewal fees increase slightly. However, the new UK fee regime is still considerably less expensive than the EPO’s fee regime. UK patent fees remain very good value for money, particularly since the UK is one of Europe’s largest economies and represents a market of over 65 million people. A full breakdown of the patent fee changes and new fee structure can be found on the UK IPO website here.

If you’d like to discuss these changes with us, please get in touch with your usual Wynne-Jones contact, who will be happy to answer any questions you may have.