Guidance

New patent fees: guidance for business

Published 8 January 2018

Patents fees changes on 6 April 2018

On 6 April 2018, the Government is introducing a number of changes to the fees for applying for patent protection and renewing granted patents.

The current and new fees are summarised in the tables below. More detailed guidance can be found below the summary tables.

Pre-grant and grant fees: e-filed

Patents fee	Fee before 6 April 2018	Fee from 6 April 2018
Application Fee	£20	£60
25% surcharge for paying the application fee after filing the application	N/A	£15
Search Fee	£130	£150*
Search Fee for an international application (UK)**	£100	£120*
Substantive examination fee	£80	£100***
Excess claims fee	N/A	£20 for each claim over 25
Excess pages fee	N/A	£10 for each page of description over 35
Grant fee	N/A	Fees for any further excess claims or excess pages - see “4.7 Grant fee” below

*plus excess claims fee

**where the international application has already been searched in the international phase

***plus excess pages fee

Pre-grant and grant fees: paper filings

Patents fee	Fee before 6 April 2018	Fee from 6 April 2018
Application Fee	£30	£90
25% surcharge for paying the application fee after filing the application	N/A	£22.50
Search Fee	£150	£180*
Search Fee for an international application (UK)**	£120	£150*
Substantive examination fee	£100	£130***
Excess claims fee	N/A	£20 for each claim over 25
Excess pages fee	N/A	£10 for each page of description over 35
Grant fee	N/A	Fees for any further excess claims or excess pages - see “4.7 Grant fee” below

*plus excess claims fee

**where the international application has already been searched in the international phase

***plus excess pages fee

Renewal fees

Patents renewal fees	Fee before 6 April 2018 (£)	Fee from 6 April 2018 (£)
	Column A	Column B
Year 5	70	70
Year 6	90	90
Year 7	110	110
Year 8	130	130
Year 9	150	150
Year 10	170	170
Year 11	190	190
Year 12	210	220
Year 13	250	260
Year 14	290	300
Year 15	350	360
Year 16	410	420
Year 17	460	470
Year 18	510	520
Year 19	560	570
Year 20	600	610

Transitional arrangements for renewal fees	Payment made before 6 April 2018	Payment made on or after 6 April 2018
Renewal due date before 6 April 2018	See column A above	See column A above
Renewal due date on or after 6 April 2018	See column A above	See column B above

Guidance for business

1. Introduction

On 6 April 2018, the Government is introducing a number of changes to the fees for applying for patent protection and renewing granted patents. These changes will be introduced by the Patents and Patents (Fees) (Amendment) Rules 2017 (SI 2017/1100).

The Intellectual Property Office (“IPO”) has prepared this guidance so that businesses can familiarise themselves with the fee changes before they are introduced. Please also refer to the above tables.

In this guidance, “the Act” means the Patents Act 1977, “the Rules” means the Patents Rules 2007, “section” refers to a section of the Patents Act 1977, and “rule” refers to a rule of the Patents Rules 2007.

2. When the new fees will be introduced

The new fees will take effect on 6 April 2018.

Customers wishing to make payments before the introduction of the new fees should note that the IPO is closed for business on Monday 2 April 2018 as this date is a public holiday in the UK.

3. Why we are introducing new fees

The fee changes are intended to meet the following objectives:

• Maintain an internationally-competitive fee structure, based on modern, high-quality and efficient services for the customer.

• Achieve a modest shift towards prompt cost recovery, whilst continuing to meet the bulk of the IPO costs of granting a patent from renewal fees rather than at the time the pre-grant work is carried out.

• Maintain a sustainable income on reasonable assumptions to finance the IPO’s future activities.

• Encourage good filing practices by applicants.

4. The specific fee changes being introduced

The following patents fee changes are being introduced on 6 April 2018:

• Increase to the application fee, and introduction of a 25% surcharge if it is not paid at the time of filing.

• Increase to the fees for search and substantive examination.

• Increased discount for each of the above fees when they are filed electronically.

• Introduction of an excess claims fee.

• Introduction of an excess pages fee.

• A £10 increase to renewal fees for each of years 12 to 20.

The fee changes are described in more detail below.

4.1 E-filing discount for the application, search and substantive examination fees

We currently offer a £20 fee reduction for all electronically-filed patent search or examination requests, and a £10 discount for the application fee if it is paid electronically at the time of filing. From 6 April 2018, the e-filing discount for each of these fees will be increased to £30.

4.2 Application fee

The application fee for a patent application will increase on 6 April 2018. In addition, a 25% surcharge will apply where the application fee is not paid at the time of filing the application. The current and new fees are set out in the tables above.

These new fees will apply to any application fees paid on or after 6 April 2018.

4.3 Search requests

The current and new fees to request a search under section 17(1) on a patent application are set out in the tables above. From 6 April 2018 search requests under section 17(1) will include an excess claims fee of £20 for each claim over 25 (see “excess claims” below).

Requests for a search of a further invention under section 17(6) or for a supplementary search under section 17(8) attract the “search fee” listed above. However, no excess claims fee will be payable in relation to such requests.

Where an international application (UK) has already been searched in the international phase, it will be eligible for the reduced search fee, set out in the above tables.

These new fees will apply to any search fee paid on or after 6 April 2018.

4.4 Examination requests.

The current fee and new fees to request a substantive examination on a patent application are set out in the tables above. From 6 April 2018 the substantive examination fee will include an excess pages fee of £10 for each page of description over 35 (see “excess pages” below).

These new fees will apply to any fee for substantive examination paid on or after 6 April 2018.

4.5 Excess claims fee

From 6 April 2018, the search fee will increase by £20 for each claim over 25 (referred to as “excess claims”). This new excess claims fee will apply to any request for a search under section 17(1) made on or after 6 April 2018. The excess claims fee does not apply to any request for a supplementary search under section 17(8) or a search of a further invention under section 17(6).

No excess claims fee will be payable if a search fee was paid before 6 April 2018.

The search fee will be calculated based on the number of claims present in the application at the time the Patents Form 9A is filed. If the applicant wishes to reduce the number of claims present in the application prior to filing the Form 9A they should bear in mind that making an amendment before the search report is issued requires the IPO’s consent, in accordance with rule 31.

Once a patent application has met all the requirements of the Act and Rules, we will count the number of excess claims present in the application. If the number of excess claims has increased above the number paid for as part of the search fee, a grant fee will apply (see “grant fee” below). No refunds will be available where the number of claims has decreased.

4.6 Excess pages fee

From 6 April 2018, the fee for substantive examination will increase by £10 for each page of description over 35 (referred to as “excess pages”). This new excess pages fee will apply to any request for a substantive examination made on or after 6 April 2018.

No excess pages fee will be payable if the fee for substantive examination was paid before 6 April 2018.

The fee for substantive examination will be calculated based on the number of pages of description present in the application at the time the Patents Form 10 is filed. If the applicant wishes to reduce the number of pages of description present in the application prior to filing the Form 10, they may make amendments after issue of the search report. (Making an amendment before the search report is issued requires the IPO’s consent, in accordance with rule 31).

Where a sequence listing is filed separately to the description it does not form part of the description and so does not add to the excess page count.

Once a patent application has met all the requirements of the Act and Rules, we will count the number of excess pages present in the description. If the number of excess pages has increased above the number paid for as part of the substantive examination fee, a grant fee will apply (see “grant fee” below). No refunds will be available where the number of pages has decreased.

4.7 Grant fee

As noted above, we will carry out a further check for unpaid excess claims or excess pages fees at the time the application is found to meet all of the requirements of the Act and Rules. A grant fee will be required where:

(a) there were 25 or fewer claims when the search was requested and there are now more than 25 claims; or

(b) there were 35 or fewer pages of description when the substantive examination was requested and there are now more than 35 pages of description; or

(c) the number of excess claims or excess pages present in the application is now increased above the number paid for earlier in the process.

The grant fee will be the sum of £20 for any additional excess claims (claims over 25) and £10 for any additional excess pages (pages of description over 35). It must be accompanied by Patents Form 34 (a new form).

We will advise the applicant in the Notification of Intention to Grant if a grant fee is due and what fee is required. There will be a two-month period for payment of the grant fee, from the date of the Notification of Intention to Grant. It will be possible to extend this period by two months by filing a Patents Form 52 and payment of £135.

No excess claims fee will be payable if a search fee was paid before 6 April 2018, and no excess pages fee will be payable if the fee for substantive examination was paid before 6 April 2018. This principle will also apply in relation to the grant fee, such that:

• Where both the search fee and fee for substantive examination were paid before 6 April 2018, no grant fee will be required.

• Where the search fee was paid before 6 April 2018 but the fee for substantive examination was paid on or after 6 April 2018 then if a grant fee is required it will only be composed of any fees required for additional excess pages. No excess claims fee will be payable.

• Where both the search fee and fee for substantive examination were paid on or after 6 April 2018, then any increase in both excess claims and excess pages must be paid for before grant.

We would advise the applicant to keep the excess claims and pages fees in mind when making amendments during the search and examination stages, such that they are content to pay any additional fees due at grant stage.

The consequence of non-payment or incomplete payment will be that the application does not proceed to grant.

In the vast majority of cases the IPO’s consent is required in order to make any amendments after an intention to grant letter has issued ^{[footnote 1]}. The applicant must, therefore, provide reasons for making any such requests. If the IPO does not consent, the application remains in its unamended state and the grant fee will remain payable in the timeframe set out in the intention to grant letter. Any extensions to the two-month period for paying the grant fee will require a Patents Form 52 and a fee of £135.

4.8 Patent Renewals

Once a patent is granted, a renewal fee must be paid annually to keep the patent in force. The above tables summarise the changes.

Where a renewal due date falls before 6 April 2018 the fees will be charged at the current (pre-6th April 2018) rate, even if the renewal payment is made on or after 6 April 2018 (but before the end of the renewal period allowed under section 25(4)).

Where a renewal due date falls on or after 6 April 2018 and the renewal payment is made before this date and within the period allowed ^{[footnote 2]}, the fees will be charged at the current (pre-6th April 2018) rate.

5. International applications entering the UK national phase

Applicants should bear in mind that they will need to pay the fees applicable at the time the application enters the national phase. The applicant may, therefore, need to request early entry into the national phase in order to benefit from the current (pre-6th April 2018) fees for search and substantive examination.

Where a substantive examination is requested on an international application (UK) which has entered the UK national phase and was not originally in English, the substantive examination will be based on the English language translation. The number of pages of description in the English language version should, therefore, be used to calculate the excess pages fee.

6. Partial payment of fees

Where a fee has been partially paid, we will write to the applicant to request the remainder of the fee. This communication will either form part of the preliminary examination report, or (if the matter has arisen after the preliminary examination report was issued), as a stand-alone letter. A patents form is not considered to be filed until the fee is paid in full. It follows that the remainder of any fee must be paid within the period for filing the form.

7. Further information

Any questions arising from this notice should be directed to our Information Centre on telephone number 0300 300 2000 or via email.

Footnotes

1. Only if the intention to grant letter is issued as the first examination report can such amendments be made as-of-right, in accordance with rule 31 of the Patents Rules 2007. ↩

2. Under rule 37(2) or 38(2). ↩