News

UK IPO announces fee increases

24 January 2018

Following the UK IPO’s consultation[1] on patent fees, the UK IPO has decided to go ahead with a number of changes[2] to the fees for applying for patent protection and renewing granted patents. These changes include both increases to current fees, and the introduction of new fees. These changes will come into effect on 6 April 2018. We have summarised the major differences that you should be aware of below.

New fees

The UK IPO has decided to introduce an excess claims fee (£20 for each claim over 25) and an excess pages fee (£10 for each page over 35). Whilst these fees are comparatively small to those charged in other jurisdictions, these fees could add up to a substantial additional cost for large patent applications. In such cases, it is now worth considering whether any such large patent application should be split up into a series of smaller patent applications before filing, to minimise the impact of these fees.

The new excess claims fee and new excess pages fee will not apply retroactively. No excess claims fee will be payable if the official search was requested before 6 April 2018. Similarly, no excess pages fee will be payable if substantive examination was requested before 6 April 2018.

The UK IPO will also introduce a £15 surcharge to the application fee for paying the application fee late. This fee is unlikely to change many applicant’s filing practices. However, the cost savings of paying the application fee on filing may add up to a worthwhile saving for large UK patent filing programs.

Fee increases

In addition to these new fees, most of the current official fees will see a small increase. Whilst each of these fee increases is relatively small, we estimate that in totality the increases will add an additional £100-£200 of official fees to the cost of a typical patent application before grant. Even with these fee increases, the UK IPO still compares very favourably on cost with many comparable national patent offices. We are hopeful that these fee increases will allow the UK IPO to maintain their high standards into the future.

These increases for pre-grant and granted patents are summarised in the tables provided below.

Source: UK Intellectual Property Office (IPO) website[3]

Renewal fees

Each of the renewal fees from the 12th year of the patent term onwards are to see a modest £10 per year increase. Patents with a renewal due date before 6 April 2018, will be charged at the current (pre-6th April 2018) rate, even if the payment is made on or after 6 April 2018. Additionally, patents with a renewal due date after 6 April 2018 can benefit from the current (pre-6th April 2018) rate if the renewal fee is validly paid before 6 April 2018. Otherwise, the increased renewal fees will apply in due course. The increases to the renewal fees are summarised in the table below.

Source: UK Intellectual Property Office (IPO) website[3]

Strategic considerations for UK patent applications

The above described fee increases give rise to several strategic considerations for UK patent applications and UK patents. These considerations are set out below:

• If the official search has not been requested on any pending UK patent applications, and the patent application has more than 25 claims, request the search before 6 April 2018 to avoid the need to pay any excess claims fees.
• If substantive examination has not been requested on any pending UK patent applications, and the patent application has more than 35 pages, request examination before 6 April 2018 to avoid the need to pay any excess pages fees.
• If you are planning on filing one or more divisional applications from a pending UK application, file the divisional applications before 6 April 2018 (and pay the filing fee, search fee and examination fee upon filing) to avoid the impact of these fee increases.
• If any of your granted patents have the 12th (or subsequent) renewal fee due in the 6 months following 6 April 2018, pay the renewal fee early to avoid the renewal fee increase.
• If you are planning to file any UK patent applications in the near future, ensure they are filed before 6 April 2018 and pay all of these fees upon filing to avoid the impact of these fee increases.
• For all future UK patent applications, pay the application fee upon filing to avoid the 25% surcharge. Additionally, for future UK patent applications containing more than one invention, consider splitting the patent application into multiple smaller patent applications to minimise the impact of excess pages and claims fees.

As ever, if you have any questions about these increases or how they may affect your IP strategy, do not hesitate to get in touch with your regular W&R contact.

Dr Jonathon Hauser
Electronics, Computing & Physics group

If you require further information on anything covered in this briefing, please contact Jonathon Hauser (jhauser@withersrogers.com; +44 207 940 3600) or your usual contact at the firm.

[1] Proposed changes to statutory patents fees

[2] Changes to patents fees on 6 April 2018

[3] New Patent Fees Guidance for Business

This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.

© Withers & Rogers LLP, January 2018