New patent and trade mark fees

Guidance for business

1. On 6 April 2010, the Intellectual Property Office is introducing a number of changes to the fees for applying for patent protection and renewing granted patents along with a range of changes to a number of patent and trade mark administration fees. These changes will be introduced through the Patents and Patents and Trade Marks (Fees) (Amendment) Rules 2010 (SI 2010/33) and the Trade Marks (International Registration) (Amendment) Order 2010 (SI 2010/32).

2. The purpose of this document is to provide guidance so that businesses can familiarise themselves with the fee changes before they are introduced.

3. A summary table (46Kb) of the relevant fee changes is available.

When will the new fees be introduced?

4. The new fees will take effect from 6 April 2010. Customers are reminded that the Intellectual Property Office is closed for business from 2 April 2010 through to and including 5 April 2010 due to public holidays in the UK. This may be relevant to customers wishing to make payments before the introduction of the new fees.

Why are we introducing new fees?

5. The fee changes are aimed at:

• Enabling us to continue to provide a quality IP rights granting service as part of a functioning and value-generating IP system for UK businesses
• Realigning our processing costs with fees to reflect more closely the work we undertake to deal with particular types of applications and requests
• Encouraging the use of more e-business with a view to improving our efficiency and making us a more environmentally friendly organisation
• Introducing more consistency in the fees we charge for similar services.

What specific fee changes are being introduced?

6. The Patents Rules 2007, the Patents (Fees) Rules 2007, the Trade Marks (Fees) Rules 2008 and the Trade Marks (International Registration) Order 2008 are being amended to include the following specific fee changes:

Patent Search and Examination Requests filed on paper

Search requests

7. The current fee to request a search on a patent application using a paper Patents Form 9A are as follows:

• Request for a search under section 17(1) for an international application which has been searched in the international phase – £80*
• Request for a search under section 17(1) for any other application – £100
• Request for a further search under section 17(6) or payment for a supplementary search under section 17(8) – £100

8. From 6 April 2010, these fees will be increased as follows:

• Request for a search under section 17(1) for an international application which has been searched in the international phase – £120*
• Request for a search under section 17(1) for any other application – £150
• Request for a further search under section 17(6) or payment for a supplementary search under section 17(8) – £150

Examination requests

9. The current fee to request an examination on a patent application using a paper Patents Form 10 is £70.

10. From 6 April 2010, this fee will be increased to £100

E-filing discount for Patent Search and Examination Requests

11. We currently offer a £10 fee reduction for all electronically filed UK patent search or examination requests.

12. From 6 April 2010, this discount will be increased to £20

13. The fees for electronically filed Forms 9A and 10 will, therefore, be as follows:

Form 9A:

• Request for a search under section 17(1) for an international application which has been searched in the international phase – £100*
• Request for a search under section 17(1) for any other application – £130
• Request for a further search under section 17(6) or payment for a supplementary search under section 17(8) – £130

Form 10:

• Request for a substantive examination – £80

* A "PCT case" in the Summary Table of Fee Changes

Patent Renewals

14. Once a patent is granted, a "renewal fee" must be paid annually to keep the patent in force. The following table gives the current fees for renewing a granted patent together with the new fees which will take effect from 6 April 2010:

• Where a renewal due date falls before 6 April 2010 and the renewal payment is made on or after 6 April 2010, ie before the end of the renewal period allowed under section 25(4) of the Patents Act 1977, the fees will be charged at the current (pre-April 2010) rate detailed above.
• Where a renewal due date falls on or after 6 April 2010 and the renewal payment is made before this date and within the period allowed under rules 37(2)(b) or 38(2) of the Patents Rules 2007, the fees will be charged at the current (pre-April 2010) rate detailed above.
• Customers are reminded that the Intellectual Property Office is closed for business from 2 April 2010 through to and including 5 April 2010 due to public holidays in the UK.

Patent Proceedings before the Comptroller

15. The Intellectual Property Office hears and resolves patent disputes in its role as an alternative forum to the courts. Proceedings are initiated using Patents Forms 2, 15 or SP3, all of which must be filed with a fee of £50.

16. Once proceedings are initiated, a copy of the statement filed by the claimant is sent to the defendant, who is given an opportunity to contest the proceedings by filing a counter-statement. Once the counter-statement is received, a copy is sent to the claimant and the case undergoes a preliminary review by the Office before the periods for filing evidence are specified.

17. From 6 April 2010, we are introducing a new procedure which will require the claimant, following receipt of the counter-statement, to file a Patents Form 4 together with a fee of £350 if they wish to continue contesting the proceedings.

18. The comptroller will specify the time limit for filing this new form with the fee when the copy of the counter-statement is sent to the claimant. If these are not filed within the specified time limit, the claimant will be considered to have filed a request to withdraw from the proceedings.

19. Once the form and fee are filed, the Office will undertake a preliminary review before the periods for filing evidence are specified.

20. There will be cases where the proceedings will be uncontested, for example, where we receive requests to alter inventorship details and all the relevant parties agree, or when all parties agree that a patent is invalid and should be revoked. For these types of uncontested action, the Form 4 and additional fee will not be required.

International Patent Applications filed at the Intellectual Property Office in its role as a Patent Co-operation Treaty (PCT) Receiving Office

21. The Intellectual Property Office will receive international patent applications filed under the PCT and transmit these to the International Bureau (IB) and International Searching Authority (ISA) for further processing. Currently, the fee for transmitting international patent applications to the IB and the ISA is £55.

22. From 6 April 2010, the transmittal fee for international patent applications will increase to £75.

23. Applicants applying for an international patent application through the PCT can request the restoration of a right to claim priority from an earlier patent application. This allows applicants who have unintentionally missed the 12 month deadline for claiming priority from an earlier application to rectify this oversight, within a further 2 months. We currently do not charge for considering such requests under the provisions of the PCT.

24. However, we currently charge for considering similar requests under the provisions of the Patents Act 1977 and therefore to ensure a more consistent approach, we will now be introducing a similar fee for requests filed under the PCT.

25. From 6 April 2010, we will be introducing a fee of £150 which must be paid at the time the request for restoration of a right to claim priority is submitted to the Office.

Administrative fees for recording assignments, licences and security interests on the Patents and Trade Mark Registers

26. IP rights can be sold, licensed or used as security for loans. There are legal benefits for recording these types of transactions on the Patents and Trade Marks registers. The following forms are currently used to provide us with the information needed to update the registers:

• Patents Form 21 - Application to register or give notice of rights acquired in a patent or in an application for a patent – no fee
• Trade Marks Form TM16 – Application to record a change of ownership - £50 fee per form
• Trade Marks Form TM24 - Application to record or cancel a registrable transaction other than an assignment or license and an Application to record or cancel a notifiable transaction for a designation under the Madrid Protocol – no fee
• Trade Marks Form TM50 and TM51 - Application to register a licensee or to remove or amend the recordal of a licence – no fee

27. From 6 April 2010, we will be introducing a fee of £50 to record a registrable transaction with the Office using the following forms:

• Patents Form 21 - £50
• Trade Marks Form TM24 - £50
• Trade Marks Form TM50 and TM51 - £50

We will also retain the fee of £50 currently charged for a Trade Marks Form TM16.

Where can I get further information?

28. The Patents and Patents and Trade Marks (Fees) (Amendment) Rules 2010 (SI 2010/33), the Trade Marks (International Registration) (Amendment) Order 2010 (SI 2010/32) and the accompanying Explanatory Notes for both Instruments are now available from the OPSI website .

29. Any questions arising from this notice should be directed to Debbie Cooke on telephone number 01633 814140 or via email at information@ipo.gov.uk.