UK patent fees set to rise in 2018
Patent fees in the UK are set to rise from April 2018, with a new cost being charged for including excess claims.
The UK Intellectual Property Office (IPO) revealed the increases yesterday, November 20. The legislation making these changes was laid in parliament last week.
In April 2017, the government published a consultation outlining four proposals for fee changes.
These included an increase to the application fee, with the introduction of a 25% surcharge if it is not paid at the time of filing; an increase to the fees for search and substantive examination; and the introduction of an excess claims fee and excess pages fee.
“The government received 23 responses to the consultation, including responses from representative organisations, patent attorneys, businesses, and individuals,” the report stated.
Among the changes is an increase to the fee for paper applications, from £30 ($40) to £90, when the fee is paid at the time the application is filed.
There is also an increase in the fee for applications filed electronically, from £20 to £60, and a 25% surcharge on the application fee if it is not paid at the time of filing.
“Respondents generally supported this proposal, with some describing the proposed fee increases as ‘acceptable’, ‘reasonable’ or ‘modest’,” the report said.
It added: “One respondent noted that UK statutory patent fees are relatively low compared to most other jurisdictions around the world, and consequently felt that the proposed increases seem generally reasonable.”
Respondents to the consultation included Rolls-Royce, law firm Potter Clarkson and Jaguar Land Rover.
The least popular proposal was the introduction of a £30 fee for including each of the 16th and subsequent claims contained in a patent application.
In total, 15 respondents expressed a lack of support for this proposal. Seven explained that they would be more likely to accept an excess claims fee if it applied from a higher threshold than 15.
“In light of these points, the government plans to introduce an excess claims fee, but as a smaller fee of £20 per claim and only applying to each of the 26th and subsequent claims,” the government paper said.
By comparison, the European Patent Office charges €235 ($275) for each claim over 15 and up to 50, and €585 for each claim over 50, according to law firm Cleveland Scott York, in a post earlier this month on the issue. It added that the US Patent and Trademark Office charges $80 for each claim over 20.
The post also said that because the initial excess pages fee will be part of the examination fee, a failure to pay the full amount of excess pages fees due will mean that the entire patent application will be deemed to be withdrawn.
“As with the new excess claims fee, this seems to be a very harsh penalty,” the firm stated.
The government has introduced a £10 fee for including each additional page of description above 35.
“Even with the increase, application fees remain low, so that is not too much of a problem,” Alasdair Kennington, senior associate at Cleveland Scott York and a respondent to the consultation, told WIPR.
He went on to explain, as he did in the consultation, his concerns about page fees and claim fees.
“There should at least be a procedure to allow a period for an underpayment to be corrected. This concern is mentioned by the IPO in the current proposal document, but no reply has been made and it seems that no account has been taken of it,” he explained.
Jerry Bridge-Butler, partner at Baron Warren Redfern, said the increase in fees is bad news.
“Having said that, the fees as they stand are very low, so putting them up by the amounts proposed is perfectly reasonable and doesn’t deter any applicants from applying.”
Bridge-Butler added that in regards to excess pages and claims fees, there could now be more harmonisation with other jurisdictions as well as other benefits.
“The new proposals will keep applications at a reasonable size,” he explained.
“Not only are big applications difficult for examiners but also for the public. The point of an application is for everyone to understand it. I think it streamlines the process and makes them more manageable.
“Generally, the fees are going up, so it isn’t good, but I welcome the harmonisation of the UK IP system to that of WIPO and the EUIPO and to persuade applicants to be more streamlined with their approach.”
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