The UK is a key territory for patent protection, providing a high-quality, cost-effective IP jurisdiction. The UK also provides "Patent Box" tax incentives for corporate patent owners. Official fees at the United Kingdom Intellectual Property Office (UK IPO) have typically been low compared to the other costs involved in drafting and prosecuting patent applications through to grant.
From 6 April 2018, the official fees have increased, and some new fees have been introduced. These new fees, for excess claims and excess pages of description, can be due for both directly-filed patent applications and for UK national phase entries from PCT (international) applications. In most cases, we expect to be able to avoid having to pay the new fees provided that appropriate, timely action is taken.
Entry of a PCT application into the UK national phase requires payment of fees for filing, search and substantive examination. Prior to 6 April 2018, these fees were typically paid immediately upon national phase entry into the UK (at latest 31 months from the earliest claimed priority date). Furthermore, it was typical to file no further amendments to the claims upon UK entry, unless it was desirable to put the application in order following a negative international search report. The newly introduced excess claims fees and excess pages fees, due following UK national entry, merit a review of these typical practices. Notably, the excess claims fees and the excess pages fees are linked to different stages of prosecution and although the fee amounts are relatively modest, non-payment or incomplete payment may lead to loss of the application.
Excess claim fees
Cost and consequence
The excess claims fees amount to a surcharge of £20 per claim, payable for each claim numbered 26 or more. The number of claims allowed without a further fee is more than the 15 allowed at the European Patent Office (EPO), and the surcharge is considerably lower in cost. However, whereas at the EPO, non-payment or incomplete payment of excess claims fees can, at worst, result in deemed abandonment of the subject matter of excess claims, for the UK IPO the consequence is more severe: the application will be treated as withdrawn.
Number of claims
The number of claims is determined at the time the UK search is requested, by filing Patents Form 9A, and the excess claims fees are applied as a surcharge to the search fee. Multiply-dependent claims are counted singularly in this determination and there are no restrictions on multiply-dependent claims referring back to other multiply-dependent claims. For PCT applications, the UK search may be requested up to 2 months after UK national phase entry. Also, if extra claims have been introduced during UK prosecution, the excess claims fees must be paid before grant or the application will not proceed to grant. No refund is available if the claim number is reduced prior to grant.
Limiting the number of claims – when & how
Since 1 October 2016, voluntary amendments may be filed at the UKIPO from the start of the UK national phase until the mailing date of the first substantive examination report, provided that the international search report issued before UK national phase entry. For such applications, the number of claims may be limited to 25 by filing voluntary amendments no later than simultaneously with filing of the request for a UK search. Given that search may be requested up to 2 months after UK national phase entry, voluntary amendments to the claims may also be filed with, or before, the filing of the search request.
Since 6 April 2017, omnibus claims have not generally been allowable for UK patent applications and so such omnibus claims are candidates for cancellation. Other candidates for cancellation include multiple computer readable media (CRM) claims, corresponding respectively to multiple computer implemented method claims. A single CRM claim referring to such method claims should be adequate. Concatenating multiple dependent claims using ‘and/or’ combinations, or lists, so as to reduce the number of claims, is not recommended as this may give rise to objections under Article 14(5)(b) Patents Act 1977, which requires that the claim or claims shall be clear and concise.
Excess pages fees
Cost and consequence
The excess pages fees amount to a surcharge of £10 per page, payable only for pages of the description numbered in excess of 35. For determining the number of excess pages, neither the figures nor the claims are considered. The number of pages is more generous, and the surcharge less costly, than at the EPO. However, the consequence of non-payment or incomplete payment at the UK IPO is again severe: the application will be treated as withdrawn.
Number of pages
The number of pages is determined as the number of pages on file when substantive examination is requested, by filing Patents Form 10. The excess pages fees are a surcharge to the substantive examination fee. For a UK applications derived from a PCT application, substantive examination must be requested up to 2 months after national phase entry. If extra pages are introduced during prosecution, the excess pages fees must be paid before grant or the application will not proceed to grant. However, no refund is available if pages are reduced prior to grant.
Limiting the number of pages – when & how
For direct-filed UK applications, the substantive examination fee is due after the search report is issued, and so excess page fees may be avoided by responsive amendment. However, for UK applications derived from a PCT application, as described above, voluntary amendments may now be filed at the UK IPO from the start of the national phase until the mailing date of the first substantive examination report. That is, for these UK national phase applications, the number of pages may be reduced by filing voluntary amendments no later than simultaneously with the request for examination, up to 2 months after UK national phase entry.
The voluntary amendments to the description are effected by filing replacement pages. The formal formatting requirements for PCT applications and UK applications differ, particularly with respect to font size. While PCT applications require a minimum capital letter height of 2.8 mm (about 12 point Arial), UK applications only require capital letters to have a height greater than 2 mm (about 10 point Arial). Hence, there is an opportunity to reduce the number of pages of the description by changing font size and filing replacement pages for the complete description. In this way, an 18,500 word document may be reduced from 51 pages at 12 point Arial to just 34 pages at 10 point Arial. A marginal gain may also be achieved by reducing page margins. Both PCT and UK applications require a line spacing of 1.5, so no further gain is available here, though paragraph spacing may be reduced to zero. However, formatting changes should not be undertaken without considering both risk and cost. Risk may arise from corruption of text, such as introduction of errors in equations, which may go unnoticed, and subsequent correction would incur further costs. Costs are typically incurred for preparation, checking and filing of any amendments, even for formatting changes. As such, any reduction in official fees may be more than offset by greater costs required to achieve their safe reduction.
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If you have any questions or would like more detail in relation to these updates, please do not hesitate to contact us here.
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