From 6th 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?
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 6th 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 6th 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 6th 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.
If you own any intellectual property (IP) rights, are you concerned about your exposure to litigation, and how you will finance any legal action? One way to address this concern is by means of an insurance policy.
A recent study performed by the European Patent Office (EPO) and the European Union Intellectual Property Office (EUIPO) has shown that companies which own at least one patent, trade mark or registered design generate on average 20% higher revenues per employee and pay their staff on average 19% higher wages compared to companies that do not own any of these intellectual property (IP) rights.
Keeping an IP budget afloat despite sunk costs.
The cost of securing IP can be heavily front loaded. Examples of such costs include patent drafting, pre-filing searches, filing fees, etc. These costs become “sunk” costs in that they cannot be recovered. Because IP protection can be a relatively long process, at any time during the process there are likely to be significant “prospective” costs: future costs that may be wholly or partially avoided depending on actions taken.
Have you recently validated your European patent in Turkey? Did you know that in addition to paying annual renewal fees, Turkish law also requires you to submit a public declaration stating whether you have actively worked your invention in Turkey?
UK businesses are fighting for survival during the continuing COVID-19 outbreak and trying to trade under difficult conditions, the likes of which haven’t been seen in the living memory of most business people. If you’re afraid that your business is going to the wall, it probably isn’t the top of your mind to pay for a patent application for your new technology or a registration of the trade mark for your brand new clothing range, right? Where is the money coming from to invest in such luxuries as IP, we hear you say, when staff are being furloughed and orders have been postponed?
The European Patent Office has announced that videoconferencing will become the norm for oral proceedings before examination and opposition divisions until at least 15 September 2021. But is this a taste of what the future holds for oral proceedings at the EPO?
On 12 November 2019, the EPO and CNIPA agreed to enhance their bilateral co-operation to give patent applicants filing an international patent application in English at the CNIPA, the choice to opt for the EPO as their ISA. A two year pilot programme launched on 1 December 2020, offers applicants filing international applications with the CNIPA or the International Bureau (IB) of the World Intellectual Property Office (WIPO) the opportunity to select the EPO as their ISA and as their International Preliminary Examining Authority (IPEA), rather than CNIPA.
In October 2020, the UK Government declared that the territorial effect of five important IP treaties would be extended to cover Gibraltar from 1 January 2021. These treaties are the Paris Convention, the Patent Cooperation Treaty, the Madrid Protocol (on International trade marks), the Nice Agreement (on trade mark classification), and the Berne Convention (on copyright). Following on from this, a bill was passed in on 11 December 2020, making some amendments to trade mark and patent law in Gibraltar.
Due to the coronavirus outbreak and recent health advice, the WJ team are working from home. It’s business as usual however some services may be slightly slower than normal so please bear with us during this time. As our offices are currently closed we will not be able to access postal mail so please send correspondence and documents by email on docketing@wynne-jones.com. Our telephones have been diverted so the WJ team are still contactable by phone on 01242 267 600.
