The Patents and Patents (Fees) (Amendment) Rules 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