1990 No. 1697
PATENTS

The Patents (Fees) Rules 1990

Made
Laid before Parliament
Coming into force
The Secretary of State, in exercise of the powers conferred upon him by section 123(1), (2) and (3) of, and paragraph 14 of Schedule 4 to, the Patents Act 19771, of the power conferred upon him by the Department of Trade and Industry (Fees) Order 19882, and of all other powers enabling him in that behalf, after consultation with the Council on Tribunals pursuant to section 10(1) of the Tribunals and Inquiries Act 19713 and with the consent of the Treasury pursuant to subsection (4) of the said section 123, hereby makes the following Rules:—

1.

(1)

These Rules may be cited as the Patents (Fees) Rules 1990 and shall come into force on 10th September 1990.

(2)

The Patents (Fees) Rules 19894 are hereby revoked.

2.

These Rules shall be construed as one with the Patent Rules 19825 and, to the extent that they continue to apply in relation to existing patents and existing applications, to the Patents Rules 19686.

3.

The fees to be paid in respect of any matters arising under the Patents Act 19497 or the Patents Act 1977 shall be those specified in the Schedule to these Rules; and in any case where a form specified in the Schedule as the corresponding form in relation to any matter is required by the Patents Rules 1968 or the Patents Rules 1982 to be used, that form shall be accompanied by the fee specified in respect of that matter or, where payment may be made within a prescribed period of time after the form has been filed, the fee so specified shall be paid within that period.
Douglas Hogg
Department of Trade and Industry

We consent to the making of these Rules.

Michael Fallon
Kenneth Carlisle
Two of the Lords Commissioners of Her Majesty’s Treasury

SCHEDULEFEES PAYABLE

Rule 3

PART A

(In this Part of this Schedule, any reference to a section is a reference to that section of the Patents Act 1977 and any reference to a rule is a reference to that rule of the Patents Rules 1982.)

Number of corresponding Patents Form

Item

Amount

£

1/77

On request for the grant of a patent (the filing fee)

15

2/77

On reference under section 8(1), 12(1) or 37(1) 32

3/77

On application under section 8(5) or 37(3) for authorisation by comptroller

32

4/77

On request for directions under section 10 or 12(4)

32

5/77

On reference under section 11(5) or 38(5) to determine the question of a licence

32

6/77

On application to comptroller under section 13(1) and/or 13(3)

24

7/77

Statement of inventorship and of right to the grant of a patent

8/77

On request for comptroller’s certificate authorising the release of a sample from a culture collection

11

9/77

On request for preliminary examination and search or request for further search

105

10/77

On request for substantive examination

120

11/77

On request to amend application before grant

27

12/77

*On payment of renewal fee—

Before the expiration of the 4th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 5th year

94

Before the expiration of the 5th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 6th year

100

Before the expiration of the 6th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 7th year

108

Before the expiration of the 7th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 8th year

120

Before the expiration of the 8th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 9th year

130

Before the expiration of the 9th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 10th year

142

Before the expiration of the 10th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 11th year

158

Before the expiration of the 11th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 12th year

172

Before the expiration of the 12th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 13th year

194

Before the expiration of the 13th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 14th year

214

Before the expiration of the 14th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 15th year

238

Before the expiration of the 15th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 16th year

262

Before the expiration of the 16th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 17th year

286

Before the expiration of the 17th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 18th year

308

Before the expiration of the 18th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 19th year

342

Before the expiration of the 19th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 20th year

378

13/77

On extension of the period for payment of a renewal fee under section 25(4)—

Not exceeding one month

20

Each succeeding month (but not exceeding six months)9

20

14/77

On application to amend specification after grant

56

15/77

On notice of opposition to amendment of specification after grant

24

16/77

On application for the restoration of a patent

114

17/77

Additional fee on the application for restoration of a patent

114

18/77

On offer to surrender a patent

19/77

On notice of opposition to offer to surrender a patent

24

20/77

On request for alteration of name, address or address for service in the register, for each patent or application

3

21/77

On application to register or to give notice of a transaction, instrument or event affecting the rights in a patent or application for a patent

24

On each application covering more than one patent or application for a patent, the devolution of title being the same as in the first patent or application for a patent. For each additional request

3

22/77

On request for the correction of an error in the register or in any connected document

17

23/77

On request for miscellaneous information Each

3

24/77

On request for certificate of the comptroller—

  1. (a)

    by impressed stamp

  2. (b)

    sealed and attached to documents

3 12

25/77

On application for entry of order of court in the register

26/77

On application for compensation by employee

32

27/77

On application under section 41(8) in connection with an order made under section 40(1) or 40(2)

32

28/77

On application by proprietor for entry to be made in the register to the effect that licences under the patent are to be available as of right.

13

29/77

On application for settlement of terms of licence of right

56

30/77

On application by proprietor under section 47(1) for cancellation of entry in the register

24

31/77

On application under section 47(3) by person interested for cancellation of entry in the register

24

32/77

On notice of opposition to an application under section 47(1) or 47(3) for cancellation of entry in the register

24

33/77

On application under section 48(1) for a compulsory licence or entry in the register

56

34/77

On application by Crown in case of monopoly or merger

56

35/77

On notice of opposition to application made under section 48 or 51

24

36/77

On reference to the comptroller of a dispute as to infringement

56

37/77

On application for declaration of non-infringement

56

38/77

On application for the revocation of a patent

24

39/77

On application to register copy of entry made in European Register of Patents

10

40/77

On payment of filing fee upon conversion of European patent application to an application under the Act

15

41/77

On request for conversion of European patent application

15

43/77

On payment of prescribed fee and request for publication of translation

10

44/77

On application to the comptroller for an international application to be treated as an application under the Act

15

45/77

On application for order for evidence to be obtained in the United Kingdom

32

46/77

On notice that hearing before the comptroller will be attended

47/77

On request for the correction of an error of translation or transcription, clerical error or mistake

34

48/77

On notice of opposition to the correction of an error, clerical error or mistake

24

49/77

On request for information relating to a patent or an application for a patent

8

50/77

On request for extension of time or period under rule 110(3) Each

114

51/77

On declaration of authorisation where agent appointed during progress of application or in substitution for another

52/77

On request for extension of time or period under rule 110(3A)

114

53/77

Additional fee for extension of time or period under rule 110(3C)

114

54/77

On filing of translation of European Patent (UK) under section 77(6)(a)

28

55/77

On filing of translation of amendment of European Patent (UK) under section 77(6)(b)

28

56/77

On request for publication of translation of claims of application for European Patent (UK) filed under section 78(7)

28

57/77

On request for publication of a corrected translation filed under section 80(3)

28

58/77

On declaration that licences of right shall not extend to excepted uses

National fee (rule 85(1))

15

As Receiving Office or International Preliminary Examining Authority under the Patent Co-operation Treaty—

Transmittal fee (rule 118(1))

15

Preliminary examination fee (rule 120)

55

Additional fee (rule 121) Maximum

55

*

One half of these fees if entry in the register “Licences of Right”.

PART B

(In this Part of this Schedule—

(1)

any reference to a section is a reference to that section of the Patents Act 1949: and

(2)

any reference to a rule is a reference to that rule of the Patents Rules 1968, as it continues to apply by virtue of rule 124 of the Patents Rules 19788.)

Number of corresponding Patents Form

Item

Amount

£

1 Add

Application for grant of patent of addition in lieu of independent patent

29

7

For extention of time under rule 30, 33 or 50—

Not exceeding one month

16

Each succeeding month

16

8

On application for result of search made under section 7 and 8

3

9

On application under section 9(2) for deletion of reference

13

On notice that hearing before the comptroller will be attended

14

On request under section 16(3)

8

15

On claim under section 16(4)

8

16

On application for extension of the period under section 16(5)

11

17

On application for a certificate under section 16(8)

21

18

On claim under section 17(1) for application to proceed in name of claimants

24

19

On application for directions under section 17(5)

29

20

On request for sealing of a patent

20

21

On application for extension of the period for requesting the sealing of a patent under section 19(3)—

Not exceeding one month

16

Each succeeding month

16

22

On application for extension of the period for requesting the sealing of a patent under section 19(4)—

Not exceeding one month

16

Each succeeding month

16

23

On application under section 20 for amendment of a patent

56

32

On application under section 28 for sealing of a patent

29

33

On opposition to application under section 28

24

34

Additional fee for sealing under section 28

74

35

On application to amend specification after acceptance

48

36

On notice of opposition to amendment

24

37

On application to amend specification not yet accepted

24

38

On application to amend an application for a patent

24

39

On application for revocation of a patent under section 33

24

43

On application for settlement of terms of licence under patent endorsed “Licences of Right”

56

44

On application by patentee for cancellation of endorsement of patent “Licences of Right”

56

45

On application for cancellation of endorsement “Licences of Right”

56

46

On notice of opposition to cancellation of endorsement of patent “Licences of Right”

56

53

On application under section 55(1) for directions of comptroller

56

54

On application under section 55(2) for directions of comptroller

56

55

On application under section 56(1) to determine dispute

56

63

On application for entry in the register of claim to a licence under a patent extended under section 23, 24 or 25

64

On request to comptroller to correct a clerical error

34

65

On notice of opposition to the correction of a clerical error

24

68

For duplicate of patent

24

69

On application for entry of order of court in the register

(This note is not part of the Rules)

These Rules revoke and replace the Patents (Fees) Rules 1989. All fees payable under the Patents Act 1977 with the exception of those on forms 1/77, 20/77, 40/77, 41/77, 44/77, 49/77 and, under the Patents Act 1949 on forms 8, 23, 33, 36, 39, 43, 44, 45, 46, 53, 54, 55, 64, 65 and 68 and in respect of certain forms dealing with international applications are increased with effect from 10th September 1990. It is estimated that the total amount of fees collected per annum at the new levels will be 8 per cent greater than the amount collected per annum at the existing levels.