The UK IPO has published its response to the patent fee consultation launched in April 2017. They anticipate that the new fee structure to be introduced in April 2018, will result in a 10% drop in demand for initial applications. This seems unlikely. It will still be possible to file a patent application at the UK IPO without paying any fee. You might want to do this, for example, before disclosing a very speculative idea to a potential partner who is wary of signing a non-disclosure agreement, in order to provide yourself with a priority date for the material you intend to disclose.
At present patent applicants pay a fee of £30 when filing claims if they have taken advantage of a fee- free filing and want to continue with the same application. Commonly you would not want to do so but be filing a new application claiming priority and if you do that online today you can get away with a nominal £20 application fee. The new proposals are:
- Increase the fee for paper applications from £30 to £90 when the application fee is paid at the time the application is filed
- Increase the fee for e-filed patent applications from £20 to £60 when the application fee is paid at the time the application is filed
- Introduce a 25% surcharge on the application fee if the fee is not paid at the time of filing
The search fee (currently £100 if paid online) and one of the best bargains in the patent world which has largely put the expensive pre-filing search off the agenda for many inventors, is set to rise to £150 or £180 if you must use paper. It is still a great deal.
There will also be a claims fee if there are more than 25 claims. Subsidiary claims are meant to define your back up position if your first independent claim proves not to be novel. More than 24 back up positions seem to be necessary in the chemical arts but, for most inventors, its unlikely that they can contrive more than two or three serious back up positions. The fee payable with the search fee is £20 per claim and since the chemical arts are well-funded, it will probably not result in the anticipated 5% drop in demand for searches. I can only think that the impact assessment was intended to result in a reduced level of expectation for increased income by the UK IPO. In percentage terms these fee increases look astonishing but that is merely because the current levels are almost ridiculously low.
Incidentally don’t think you can evade the claims fee if you increase the number of claims during examination. There will be a grant fee for that.
Excess page fees are also coming in for the first time. This was not popular with the profession and as a concession it will only be charged with the examination request – still not great for PCT applicants though. Hopefully for the sake of the UK IPO examiners these fee changes will discourage the filing of requests for entry into the UK national phase of completely un-amended weighty applications burdened with a multitude of claims. The administrative national phase entry merchants will probably carry on doing so and just amend the program to re-calculate the fees.
Many patent agents will be disappointed with the clear statement that the Government has no intention of changing legislation such that a patent application may only be filed and prosecuted by registered patent professionals. Ouch! Nevertheless good news for the unqualified who prey on inventors. Most professionals would not prevent applicants representing themselves but do have concerns about the lack of any regulation if there is to be paid assistance.
Another sting for us qualified and regulated patent professionals is to be found in the impact assessment: “There is a risk that the fee increases may act as a barrier to gaining patent protection but this is mitigated by the fact that any statutory fees are small in comparison to the fees businesses pay when using a patent professional to act on their behalf.” Later on they say ” Inventors and SMEs with a genuine invention and the desire to exploit it commercially will almost always take legal advice from a patent attorney, before or during the patent application process. The fees for such advice dwarf the statutory fees in question (for example, we understand that with professional help, a patent application can typically cost £4,000 as opposed to the current £230 statutory fees for electronically filed applications). Many applicants are not SMEs and are paying much more (not often to me though). The professional costs really depend on the amount of professional contribution necessary, the complexity of the technology and whether there really is an invention at all.
Lets hope the new fee structure generates a healthily increased income stream for the UK IPO and that this will be used to increase the body of examiners and keep them busy in the post Brexit world working for applicants who really do not want the Court of Justice of the European Union to have any impact on what they can patent.