11/10/2017
Following up on our latest post on the UK IPO’s consultation on increasing official fees, the UK IPO has recently published the outcome of the consultation. Following consideration of the feedback received from respondents to the consultation, the Government intends to proceed with increasing the UK IPO’s patent fees.
Overall, the responses to the consultation were supportive of the proposed increases to the filing, search and substantive examination fees, and the introduction of a 25% surcharge on filing fees paid after filing. Respondents noted that current UK official fees are already quite low compared to most other jurisdictions around the world and that, in view of undergoing a major investment programme both in electronic services and examination capacity, the proposed changes seemed reasonable. Accordingly, the Government has officially decided to increase the filing fee for electronically-filed applications from £20 to £60 when paid at filing, meaning that it would be £15 more if an applicant wishes to pay the fee later on within one year from filing the application. The Government also plans to go ahead with the originally proposed £20 increase of search and examination fees for electronically-filed applications, bringing them up to £150 and £100 respectively.
In contrast, there was a lack of support towards the introduction of a £30 excess claims fee, for each of the 16th and subsequent claims contained in an application, and a £10 per page fee for each additional description page over an initial 35 pages. Many respondents commented that excess claims and pages fees would affect filing practices in certain technical fields, such as biotechnology and computer-implemented technologies, and that search results would be potentially delayed whilst sorting out correct payment of excess claims fees. Some respondents suggested that an excess claims fee should at the very least not be payable on an “average” application containing 22 claims. In light of the feedback, the Government plans to go ahead with a smaller £20 excess claims fee applied to each of the 26th and subsequent claims, payable at the same time search is requested.
The Government further considers that the £10 excess pages fee would be appropriate as current UK IPO data suggests that almost 90% of UK applications contain less than 35 pages of description, indicating that only a minority of applications would be affected by the fee introduction. The Government plans to make the excess pages fee payable as part of the examination fee rather than the original proposal of paying it as part of the application filing fee. This should be good news for those who file lengthy priority applications in the UK, which are later abandoned after the 12-month Paris convention period. Under the Government’s plans, if the number of excess claims and/or pages increases during examination, the application will then attract a fee to be paid upon grant made up of any applicable additional excess claims and/or pages fees. There appears to be clear underlying intention from the UK IPO to encourage the filing of more succinct and clear applications.
Lastly, to account for the reduction in the proposed excess claims fee, and halving of the number of applications paying the excess page fee by delaying payment until examination, the Government plans to increase renewals fees for years 12 and onwards by £10. This was considered a modest increase by most respondents, and still leaves UK patent renewal costs far below those of other countries such as Germany and France. The increase may encourage patent holders to regularly review their patent portfolio to seek out which patents are commercially successful and worthy of further maintenance.
Any fee changes will likely take effect in April 2018, subject to approval from Parliament. When the changes outlined above take effect, the minimum cost of obtaining a granted UK patent will have increased from £230 to £310 and the minimum cost (if paid on time) for maintaining a granted UK patent through the entire 20-year term of protection will have increased from £4,550 to £4,640.
The UK IPO expects improvements to the quality and rigour of search and examination by bringing in a new fee structure which remains very competitive but is more aligned with other European jurisdictions and the EPO. However, one would still have to wait and see whether the incoming fee structure will likely have an effect on the present filing behaviour.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
