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IP Information & News

26 October 2017

An increase in fees for UK patent applications is likely in 2018


Following a public consultation in which the UK government received responses from patent attorneys and related organisations alike, it seems that an increase in fees for UK patent applications is likely to be implemented in April 2018.

 
The proposed changes and the summary of the responses received during the consultation are set out here.

The planned changes include an increase in the filing fee and a penalty for late payment of the filing fee, an increase in the search and examination fee, an excess claim fee, a likely excess page fee and increased renewal fees.

Increase in the filing fee


The planned increase to filing fees means that a paper application will cost £90 rather than £30 and that an online application will cost £60 rather than £20.

There is also an indication that a 25% surcharge will be introduced if the filing fee is not paid at the time of filing.

Increase in the search and examination fee

The planned increase to search fees means that a search requested on paper will cost £180 and a search requested online will cost £150.

The planned increase to examination fees means that examination requested on paper will cost £130 and examination requested online will cost £100.

For a search on an ex-PCT application, the cost of a search requested on paper will cost £150 and the cost of a search requested online will cost £120.

Excess Claim Fees

The government plan to introduce an excess claim fee of £20 per claim for each of the 26th and subsequent claims. This fee will be due with the search fee.

A grant fee will also be payable for applications where the number of excess claims has increased.

This is not anticipated to have any impact on the “average” patent application which has 22 claims.

Excess Page Fees

The government had planned to introduce a page fee of £10 per page for each page over 35 of the description.

It is not clear whether they include the claims, the figures or the abstract in the description but UK patent applications are typically filed with the description, the claims, the figures and the abstract as separate sections of the same filing so it would seem likely that this would be an excess page fee on the pages of the description rather than the entire specification.

The government have indicated that they intend to modify this proposal but have not stated that it would be dropped. That is to say, it is likely that an excess page fee will be levied in one way or another.

Increased Renewal Fees

The government also plan to increase renewal fees for year 12 onward by £10. This is likely only to have any impact on commercially successful patents which are considered worthy of renewal past year 12.

Comment

The fee changes are focused on practices which result in more work for the UKIPO, i.e. paper filings and the filing of large patent specifications with many claims.

The planned fee increases incentivise more concise drafting and online filing of both patent applications and corresponding requests for search and examination.
Statistically, many applications will not incur the excess claim fees or the excess page fees and many applicants pay the filing fee at the time of filing so it is likely that many applicants will not feel a considerable pinch from these changes.

That said, there are some technical fields, such as those related to chemistry and biotechnology, where large specifications and large numbers of claims are commonplace – so organisations filing in those fields may see this as a good time to look at how they are drafting patent applications.

The potentially large excess claim fees may incentivise splitting single patent applications into multiple applications as it may well be more cost effective than incurring claims fees and having to take the decision over which claims are more useful than others.

These changes may also act as a motivation to modify drafting guidelines used by in-house practitioners to specify that UK patent applications are filed with less than 26 claims and with fewer than 35 pages of description.

It is not all negative, however, there are savings to be made from filing patent applications and search requests online – which can be passed on from patent attorneys to their clients.

For more information about filing UK patent applications and on optimising the cost of filing UK patent applications, please contact your usual UDL advisor or contact us here.