The Patents and Patents (Fees) (Amendment) Rules 2017

• Citation: S.I. 2017/1100
• Sections: 11

Section 1 Citation, commencement and interpretation

(1) These Rules may be cited as the Patents and Patents (Fees) (Amendment) Rules 2017 and come into force on 6th April 2018.

(2) In these Rules—

“the Act” means the Patents Act 1977;

“Commencement Date” means the date referred to in paragraph (1);

“the Fees Rules” means the Patents (Fees) Rules 2007 ;

“the Patents Rules” means the Patents Rules 2007 .

Section 2 Amendments to the Patents Rules

The Patents Rules are amended as follows.

Section 3 Amendments to the Patents Rules

After rule 30 insert—

Fee for the grant of a patent under section 18(4)

(30A)

(1) Where at the date of notification by the comptroller to the applicant in accordance with section 18(4)—

(a) the number of claims contained in the application—

(i) exceeds twenty-five; and

(ii) is greater than the number of claims contained in the application as at the date when the applicant made a request for a search under section 17(1)(c); or

(b) the number of pages of the description contained in the application—

(i) exceeds thirty-five; and

(ii) is greater than the number of pages of the description contained in the application as at the date when the applicant made a request for a substantive examination under section 18(1);

the applicant must pay a fee for the grant of the patent under section 18(4).

(2) The fee for the grant must be accompanied by Patents Form 34 and the period prescribed for the purposes of section 18(4) is two months beginning immediately after the date of the notification referred to in paragraph (1).

Section 4 Amendments to the Patents Rules

In Schedule 4 (Extension of Time Limits), Parts 2 and 3, after the entry in the table relating to “rule 30 (period for putting application in order)” in each place insert—

rule 30A (fee for the grant of a patent under section 18(4))

Section 5 Amendments to the Fees Rules

The Fees Rules are amended as follows.

Section 6 Amendments to the Fees Rules

In rule 3, omit paragraph (1)(b) and insert—

(b) in respect of any other application for a patent, including an application treated as an application under the Act following a direction under section 81 (conversion of European patent applications)—

(i) which is filed in electronic form or using electronic communications in accordance with directions given under section 124A, specified in Table 1; and

(ii) which is filed otherwise than in the form referred to in subparagraph (i), specified in Table 2

Section 7 Amendments to the Fees Rules

In Rule 3A, for “£20” substitute “£30”.

Section 8 Amendments to the Fees Rules

After rule 3A insert—

Excess claims fee

(3B) The fee specified in Schedule 1 in respect of a request for a search under section 17(1) in accordance with rule 27 of the 2007 Rules shall increase by £20 for the 26th and each subsequent claim contained in the application.

Excess pages fee

(3C) The fee specified in Schedule 1 in respect of a request for a substantive examination of an application under section 18(1) in accordance with rule 28 of the 2007 Rules shall increase by £10 for the 36th and each subsequent page of the description contained in the application.

Fee for the grant of a patent

(3D)

(1) Where rule 30A(1) of the 2007 Rules applies, the fee for the grant of a patent is the sum of the following amounts—

(a) £20 for each qualifying claim, and

(b) £10 for each qualifying page.

(2) For the purposes of this rule—

(a) a “qualifying claim” means any of the 26th or subsequent claims contained in the application which exceed the number of claims contained in the application as at the date when the applicant made a request for a search under section 17(1)(c) as referred to in rule 30A(1)(a)(ii) of the 2007 Rules; and

(b) a “qualifying page” means any of the 36th or subsequent pages of the description contained in the application which exceed the number of pages of the description contained in the application as at the date when the applicant made a request for a substantive examination under section 18(1) as referred to in rule 30A(1)(b)(ii) of the 2007 Rules.

Section 9 Amendments to the Fees Rules

(1) Schedule 1 (use of forms) is amended as follows.

(2) In the entry “Patents Form Number 9A”, for “120” substitute “150” and for “150” in each place substitute “180”.

(3) In the entry “Patents Form Number 10”, for “100” substitute “130”.

Section 10 Amendments to the Fees Rules

In Part 1 of Schedule 2 (Renewal Fees) omit the entries in the table relating to the “11th” and subsequent anniversaries of the date of filing and substitute the following—

Section 11 Transitional Provisions

(1) Except as provided in paragraphs (2) and (3), these Rules apply to all patents and applications for patents (including existing patents and applications for patents filed prior to the Commencement Date).

(2) New rule 30A(1)(a) of the Patents Rules (as inserted by rule 3) and new rule 3D(1)(a) of the Fees Rules (as inserted by rule 8) do not apply to an application for a patent in respect of which a request for a search under section 17(1) of the Act is filed prior to the Commencement Date.

(3) New rule 30A(1)(b) of the Patents Rules (as inserted by rule 3) and new rule 3D(1)(b) of the Fees Rules (as inserted by rule 8) do not apply to an application for a patent in respect of which a request for substantive examination under section 18(1) of the Act is filed prior to the Commencement Date.