The Patents and Patents (Fees) (Amendment) Rules 2017

Statutory Instruments

2017 No. 1100

Patents

The Patents and Patents (Fees) (Amendment) Rules 2017

Made

14th November 2017

Laid before Parliament

16th November 2017

Coming into force

6th April 2018

The Secretary of State makes the following Rules in exercise of the powers conferred by sections 18(4) and 123 of the Patents Act 1977(1).

In accordance with article 7 of the Department of Trade and Industry (Fees) Order 1988(2), the Secretary of State has taken into account the functions and matters specified in Part 4 of Schedule 1 and Parts 1 and 2 of Schedule 2 to that Order.

Citation, commencement and interpretation

1.—(1) These Rules may be cited as the Patents and Patents (Fees) (Amendment) Rules 2017 and come into force on 6th April 2018.

(2) In these Rules—

“the Act” means the Patents Act 1977;

“Commencement Date” means the date referred to in paragraph (1);

“the Fees Rules” means the Patents (Fees) Rules 2007(3);

“the Patents Rules” means the Patents Rules 2007(4).

Amendments to the Patents Rules

2.  The Patents Rules are amended as follows.

3.  After rule 30 insert—

“30A    Fee for the grant of a patent under section 18(4)

(1) Where at the date of notification by the comptroller to the applicant in accordance with section 18(4)—

(a) the number of claims contained in the application—

(i) exceeds twenty-five; and

(ii) is greater than the number of claims contained in the application as at the date when the applicant made a request for a search under section 17(1)(c); or

(b) the number of pages of the description contained in the application—

(i) exceeds thirty-five; and

(ii) is greater than the number of pages of the description contained in the application as at the date when the applicant made a request for a substantive examination under section 18(1);

the applicant must pay a fee for the grant of the patent under section 18(4).

(2) The fee for the grant must be accompanied by Patents Form 34 and the period prescribed for the purposes of section 18(4) is two months beginning immediately after the date of the notification referred to in paragraph (1).”

4.  In Schedule 4 (Extension of Time Limits), Parts 2 and 3, after the entry in the table relating to “rule 30 (period for putting application in order)” in each place insert—

“rule 30A (fee for the grant of a patent under section 18(4))”.

Amendments to the Fees Rules

5.  The Fees Rules are amended as follows.

6.  In rule 3, omit paragraph (1)(b) and insert—

“(b) in respect of any other application for a patent, including an application treated as an application under the Act following a direction under section 81 (conversion of European patent applications)—

(i) which is filed in electronic form or using electronic communications in accordance with directions given under section 124A, specified in Table 1; and

(ii) which is filed otherwise than in the form referred to in subparagraph (i), specified in Table 2

Table 1 (Electronic filing)

Where the filing of the application is accompanied by the application fee	£60
Where the filing of the application is not accompanied by the application fee	£75

Table 2 (Non-electronic filing)

Where the filing of the application is accompanied by the application fee	£90
Where the filing of the application is not accompanied by the application fee	£112.50”

7.  In Rule 3A, for “£20” substitute “£30”.

8.  After rule 3A insert—

“Excess claims fee

3B.   The fee specified in Schedule 1 in respect of a request for a search under section 17(1) in accordance with rule 27 of the 2007 Rules shall increase by £20 for the 26th and each subsequent claim contained in the application.

Excess pages fee

3C.   The fee specified in Schedule 1 in respect of a request for a substantive examination of an application under section 18(1) in accordance with rule 28 of the 2007 Rules shall increase by £10 for the 36th and each subsequent page of the description contained in the application.

Fee for the grant of a patent

3D.— (1) Where rule 30A(1) of the 2007 Rules applies, the fee for the grant of a patent is the sum of the following amounts—

(a) £20 for each qualifying claim, and

(b) £10 for each qualifying page.

(2) For the purposes of this rule—

(a) a “qualifying claim” means any of the 26th or subsequent claims contained in the application which exceed the number of claims contained in the application as at the date when the applicant made a request for a search under section 17(1)(c) as referred to in rule 30A(1)(a)(ii) of the 2007 Rules; and

(b) a “qualifying page” means any of the 36th or subsequent pages of the description contained in the application which exceed the number of pages of the description contained in the application as at the date when the applicant made a request for a substantive examination under section 18(1) as referred to in rule 30A(1)(b)(ii) of the 2007 Rules.”.

9.—(1) Schedule 1 (use of forms) is amended as follows.

(2) In the entry “Patents Form Number 9A”, for “120” substitute “150” and for “150” in each place substitute “180”.

(3) In the entry “Patents Form Number 10”, for “100” substitute “130”.

10.  In Part 1 of Schedule 2 (Renewal Fees) omit the entries in the table relating to the “11th” and subsequent anniversaries of the date of filing and substitute the following—

“11th	220
12th	260
13th	300
14th	360
15th	420
16th	470
17th	520
18th	570
19th	610”

Transitional Provisions

11.—(1) Except as provided in paragraphs (2) and (3), these Rules apply to all patents and applications for patents (including existing patents and applications for patents filed prior to the Commencement Date).

(2) New rule 30A(1)(a) of the Patents Rules (as inserted by rule 3) and new rule 3D(1)(a) of the Fees Rules (as inserted by rule 8) do not apply to an application for a patent in respect of which a request for a search under section 17(1) of the Act is filed prior to the Commencement Date.

(3) New rule 30A(1)(b) of the Patents Rules (as inserted by rule 3) and new rule 3D(1)(b) of the Fees Rules (as inserted by rule 8) do not apply to an application for a patent in respect of which a request for substantive examination under section 18(1) of the Act is filed prior to the Commencement Date.

Joseph Johnson

Minister of State for Universities, Science and Innovation

Department for Business, Energy and Industrial Strategy

14th November 2017

EXPLANATORY NOTE

(This note is not part of the Rules)

These Rules amend the Patents Rules 2007 (S.I. 2007/3291) (“the Patents Rules”) and the Patents (Fees) Rules 2007 (S.I. 2007/3292) (“the Fees Rules”).

Rule 3 amends the Patents Rules to introduce a fee for the grant of a patent in the following circumstances—

(a) where the number of claims at the time of grant exceeds 25 and is greater than the number of claims (“the original number of claims”) which were contained in the application as at the date when a request for a search was filed under section 17(1) of the Patents Act 1977 (“The Act”);

(b) where the number of pages in the description at the time of grant exceeds 35 and is greater than the number of pages (“the original number of pages”) in the description as at the date when a request for substantive examination was filed under section 18(1) of the Act.

The fee for the grant of a patent, as provided in new rule 3D of the Fees Rules (as inserted by rule 8), is payable–

(a) in respect of any of the 26th or subsequent claims which exceed the original number of claims, at a level of £20 per claim; and

(b) in respect of any of the 36th or subsequent pages of the description which exceed the original number of pages, at a level of £10 per page.

The fee for grant is payable within two months of the notification by the comptroller to the applicant in accordance with section 18(4), which period may be extended pursuant to rule 108 of the Patents Rules.

Under rule 6, the application fee for a patent which is filed electronically is increased from £20 to £60 (where the application is accompanied by the fee) and £75 (where it is not). In the case of applications which are filed in paper form, the fee is increased from £30 to £90 (where the application is accompanied by the fee) and £112.50 (where it is not).

Under rule 7, the reduction in the search fee and the examination fee where the relevant form (Patents Forms 9A and 10) is filed electronically is increased from £20 to £30.

Under rule 8—

(a) where the number of claims contained in an application exceeds 25, the search fee payable on filing Patents Form 9A is increased by £20 per additional claim over 25; and

(b) where the number of pages of the description exceeds 35, the substantive examination fee payable on filing Patents Form 10 is increased by £10 per additional page over 35.

Under Rule 9, the search fee where the relevant form (Patents Forms 9A) is filed in paper form is increased from £120 to £150 (in the case of an international application for a patent (UK)) and from £150 to £180 (in respect of any other application). The examination fee where the relevant form (Patents Form 10) is filed in paper form is increased from £100 to £130.

Under Rule 10, the renewal fees payable from the 11th anniversary of the grant of a patent are increased to the levels shown in the table.

Rules 11(2) and (3) contain transitional provisions which provide that the fee for the grant of a patent will only apply to an application for a patent in respect of which a request for a search under section 17(1) of the Act or a request for substantive examination under section 18(1) of the Act are filed on or after 6th April 2018.

A full impact assessment of the effect that this instrument will have on the costs of business and the voluntary sector is available from the Intellectual Property Office, Concept House, Cardiff Road, Newport, NP10 8QQ and is annexed to the Explanatory Memorandum which is available alongside this instrument on the Legislation UK website at www.legislation.gov.uk

(1)

1977 c.37; section 18(4) was amended by S.I. 2004/2357, articles 2, 7(1) and (4) and section 123 was amended by the Copyright, Designs and Patents Act 1988 (c.48), Schedule 5, paragraph 29, Schedule 7, paragraph 22 and Schedule 8 and the Patents Act 2004 (c.16), Schedule 2, paragraphs 1 and 26 and Schedule 3.

(2)

S.I. 1988/93, amended by S.I. 1990/1473 both of which were made under section 102 of the Finance (No. 2) Act 1987 (c.51).

(3)

S.I. 2007/3292 amended by S.I. 2009/2089 and S.I. 2010/33.

(4)

S.I. 2007/3291 to which there are amendments not relevant to these Rules.