There are five main changes, relating to increases in existing fees, and the creation of new excess fees that echo those found in EP and PCT prosecution:

1. An increase in the application fee, and a surcharge if paid after filing

The fee for paper applications will increase from £30 to £90, whilst the fee for e-filed patent applications will increase from £20 to £60. Currently the application fee can be paid up to 12 months after filing, but this option will now incur a 25% surcharge.

2. An increase in the search and examination fees

The search fee for a UK application will increase from £130 to £150 (or to £180 if the request is filed on paper).

The search fee for an international application (UK) will increase from £100 to £120 (or to £150 if the request is filed on paper).

Meanwhile the examination fee for a UK application will increase from £80 to £100 (or to £130 if the request is filed on paper).

3. The introduction of an excess claims fee scheme

There will be an excess claims fee of £20 per claim for the 26th and subsequent claims. There is no higher rate for more than 50 claims, unlike the EPO scheme.

The excess claim fee will be required as part of the search fee, making the search fee effectively variable as of 6th April 2018. Meanwhile, if the number of claims crosses the 25 claim threshold or increases above it during later prosecution, a corresponding fee would be payable at grant.

The government listened to feedback suggesting that the EPO limit of 15 claims was too low, particularly as UK applications are often used as priority documents for applications in many other jurisdictions, and so they have taken a more lenient approach than was originally suggested in the consultation. The UK government estimate that 25% of UK applications contain more than 25 claims, while only 5% contain more than 50 claims.

4. The introduction of an excess page fee

There will be a fee of £10 for each additional page of the description over the initial 35 pages. Notably ‘the description’ does not include the claims, abstract or figures, or any of the application forms.

The excess page fee will be required as part of the examination fee, making the examination fee effectively variable as of 6th April 2018. Meanwhile, if the number of pages in the description crosses the 35 page threshold or increases above it during later prosecution, a corresponding fee would be payable at grant.

The government chose to implement the fee in this way so that applications which do not proceed as far as examination will not be charged. However as it is common practice to request a combined search and examination, in reality this fee is likely to apply. The government meanwhile notes that only 11% of UK applications have a description that exceeds 35 pages, and so the overall impact is likely to be small.

5. An increase in life-end renewal fees

There will be a small increase of £10 to the patent renewal fee for years 12 onwards.

The government suggests that this increase offsets a reduction in the fees for excess claims and pages from those originally proposed in the consultation.

Impact

The impact of the changes is primarily a function of the number of claims and pages in an application. Hence, crudely, this may affect Chemical / Pharmaceutical clients more than Electronics / Mechanical clients, and affect US originating applications more than European or Japanese originating applications.

Three worked examples are given below:

1. For the governments ‘average’ UK patent application, which is e-filed, has 22 claims and fewer than 35 pages of description, the changes represent an overall fee increase of about £80 pre-grant. As such, the change is modest and unlikely to change filing strategies.
2. For a larger application with 75 pages of description and 40 claims, the changes amount to an additional £780 (+£400 page fees, +£300 claim fees, +£80 search and exam). This nearly quadruples the official fees payable for the UK case.
3. For a large application with 120 pages of description and 60 claims, the changes amount to an additional £1,630 (+£850 page fees, +£700 claim fees, +£80 search and exam). Clearly this is significantly higher than previous official fee levels and some action may be needed to mitigate such costs.

Response

In the short term, you may wish to consider early entry of a PCT application into the UK national phase to avoid these fees, and similarly those planning a convention filing into the UK may also wish to bring their dates forward, and request search and examination on filing.

For the avoidance of doubt, a PCT application entering the EP national phase and designating the UK is not subject to these fees (other than the eventual renewal fee after grant and validation in the UK).

In addition, it is worth noting that an application can be amended upon entry into the UK national phase, and applicants may wish to take the opportunity to reduce the number of claims to 25 or fewer at this stage. We would be happy to help with this process.

Meanwhile for those applicants only planning to use a UK application as a priority document, it may be worth reviewing whether a joint search and examination is worth incurring both claim and page fees; a search alone would avoid the page fees, whilst no search would avoid both fees. Of course this has to be balanced against the need for an informed decision on subsequent overseas filings and so a policy weighing these factors may need to be devised, for example based on page or claim number thresholds.

Despite these changes, for a typical application the UK still represents one of the cheapest jurisdictions for official fees in the world, and continues to provide excellent value as a function of GDP covered within a portfolio.