Official Fee changes at UKIPO from April 6th 2018
The Official Fees charged by UKIPO will change in 2018; the changes will come into force from April 6th 2018. The UKIPO fees will still be lower than at the EPO, where a granted patent application enforceable in the UK is obtainable through both the direct European (EP) or via International (PCT(EP)) routes. The UKIPO is not just increasing fees for filing a UK Patent application and for search fee, examination fee and renewal fees but is also introducing new fees. So, there will be newly introduced fees for excess claims and for description pages.
New fees for Excess Claims and Description Pages
For the first time, excess claims and excess page fees are to be charged by the UKIPO. The excess claims fees will be charged as part of the search fee, and fees for excess description pages as part of the examination fee. Additional official fees may be required at the grant stage if the number of claims or the number of pages has increased during the examination procedure. For any excess claims or pages fees due to be paid with the search or examination request, it will be vitally important to pay these fees by the appropriate due date because the entire application may otherwise become deemed “withdrawn” at the UKIPO.
Excess claims fees will be payable to the UKIPO for each claim after claim 25 i.e. for claim 26 upwards. This is still better value compared with the EPO and the USPTO where excess fee claims are payable for claims after the 15th claim and after the 20th claim respectively. Furthermore, the new UKIPO fee of £20 per claim will be significantly cheaper than the respective €235 per excess claim and $80 per excess claim currently charged at the EPO and USPTO.
According to the UKIPO, thus, no excess claims fees will be incurred by most UK applications, which typically include an average number of about 22 claims. Nevertheless, of course, the excess claims fees could add significantly to the cost of patent applications in some technology fields, for example, the pharmaceutical and biotechnology fields. For instance, a patent application having 50 claims would incur an excess fee of £500.
There will also be a new UKIPO official fee of £10 per page for description pages over 35 pages. For example, a UK patent specification containing 100 description pages would result in an excess description pages fee of £650. However, and in contrast to the EPO, it is currently our understanding that the excess pages fees will not be charged for pages of the claims, abstract and drawings pages.
Increased Official Fees for filing a patent Application and for Search and Examination
The proposed increases in the application, search and examination fees are relatively restrained. Assuming an application is filed online which is Hanna Moore + Curley’s standard practice for efficiency and to minimise costs for our clients – the application official fee will rise to £60, the search fee will increase to £150 (or £120 for a PCT(UK) national phase entry), and the examination fee will increase to £100. (Each of these fees would cost £30 more if the application would be filed at the UKIPO by any other way other than electronic filing.)
Increased Renewal Fees
Annual renewal fees to maintain a granted GB patent in force from year 12 onwards are expected to increase by £10 per fee.
From the applicant’s perspective, the new excess claims and pages fees will be of most concern. For example, applications in the pharmaceutical and biotechnology sectors often comprise extensive disclosures and claim sets. Our attorneys at Hanna Moore + Curley will be able to help with advice in relation to drafting and amendment practices for UK patent applications and PCT-UK patent applications, as such cost-effective practices are already part of the service provided by Hanna Moore + Curley for cost-efficient patent prosecution at the EPO where excess claim fees and excess pages fees are already charged.
A link to the UKIPO website is below showing full details of the fee changes: https://www.gov.uk/government/publications/new-patents-fees-coming-into-force-on-6-april-2018/new-patent-fees-guidance-for-business
If you would like to discuss any aspect of law and practice before the UKIPO including these fee changes with us, please get in touch with any of our Hanna Moore + Curley attorneys.
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