Citation, commencement and interpretation

1.–(1) These Rules may be cited as the Patents (Fees) Rules 2007 and they shall come into force on 17^th December 2007.

(2) In these Rules–

(a) "the Act" means the Patents Act 1977 and references to a section are references to a section of the Act; and

(b) "the 2007 Rules" means the Patents Rules 2007(3).

Use of a form

2.–(1) Except where any of rules 3 to 7 apply, the fees to be paid in respect of any matters arising under the Act are those specified in Schedule 1.

(2) Where a form–

(a) is required to be used by the 2007 Rules; and

(b) is specified in Schedule 1 as the corresponding form in relation to any matter,

that form must be accompanied by the fee specified in respect of that matter.

(3) But where any provision of the 2007 Rules permits payment to be made before or after the form has been filed, the fee may be paid accordingly.

Application fee and the fee to begin the national phase

3.–(1) The application fee is–

(a) in respect of an international application for a patent (UK), nil;

(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), £30.

(2) The prescribed fee to begin the national phase of an international application for a patent (UK) is £30.

Renewal fees

4.–(1) Subject to paragraphs (2) and (3), the fee to be paid to keep a patent in force after a renewal date which falls on the anniversary indicated in the first column of the table in Part 1 of Schedule 2 is the amount specified in relation to that anniversary in the second column.

(2) Where rule 37(3) of the 2007 Rules applies, the fee to be paid to keep a patent in force after the first renewal date is the sum of the following amounts–

(a) the amount specified in relation to the relevant anniversary; and

(b) the amounts specified in relation to all previous anniversaries.

(3) Where rule 37(4) of the 2007 Rules applies, the fee to be paid to keep a patent in force after the first renewal date is the amount specified in relation to the relevant anniversary.

(4) For the purposes of paragraphs (2) and (3), the relevant anniversary is the last anniversary to fall on or before the first renewal date.

Additional fees for late renewal

5.–(1) The additional fees prescribed for late payment under section 25(4) are specified in Part 2 of Schedule 2.

(2) Where payment is made before the end of the month indicated in the first column of that table, the fee to be paid is the amount specified in the second column.

Supplementary protection certificates

6.–(1) The prescribed fee payable for a supplementary protection certificate to take effect is set in accordance with paragraph (2).

(2) Where the certificate expires during the period of one year beginning with–

(a) the start date, the fee is £600;

(b) the first anniversary of the start date, the fee is £1,300;

(c) the second anniversary of the start date, the fee is £2,100;

(d) the third anniversary of the start date, the fee is £3,000; or

(e) the fourth anniversary of the start date, the fee is £4,000.

(3) The period in paragraph (2) shall be calculated without reference to any extension of the duration of a supplementary protection certificate under Article 13(3) of the Medicinal Products Regulation(4).

(4) The additional fee prescribed for the purposes of paragraph 5(b) of Schedule 4A to the Act (supplementary protection certificates) shall be half the prescribed fee.

(5) In this rule "start date" is the first day following the day on which the basic patent expires.

Other fees

7.–(1) The prescribed fee to publish a translation filed at the Patent Office under section 89A(3) or (5) (international and national phases of application) is £12.

(2) The prescribed fee for an application to the comptroller for an order under the Evidence (Proceedings in Other Jurisdictions) Act 1975(5) as applied by section 92(1) (obtaining evidence for proceedings under the European Patent Convention) is nil.

(3) The fee to transmit an international application for a patent filed at the Patent Office to the International Bureau and the International Searching Authority is £55.

(4) In paragraph (3) "International Searching Authority" has the same meaning as in the Patent Co-operation Treaty.

Rule 2

SCHEDULE 1 USE OF FORMS

Rules 4 and 5

SCHEDULE 2 RENEWAL FEES

PART 1 RENEWAL FEE

PART 2 ADDITIONAL FEE

EXPLANATORY NOTE

(This note is not part of the Rules)

These Rules prescribe fees in relation to matters arising under the Patents Act 1977 and the Patents Rules 2007 (SI 2007/3291). These Rules take into account the Patents Rules 2007 and the revocation by those Rules of the Patents (Fees) Rules 1998 (SI 1998/1778) as last amended by the Patents (Amendment) Rules 2005 (SI 2005/2496). There have been no fee increases.

Where a form is specified in Schedule 1 in relation to any matter, that form must be sent to the comptroller together with the relevant fee for that matter, unless the Patents Rules 2007 specify otherwise (rule 2).

The application fees for a national (UK) patent application and for an international application for a patent (UK) are set out in rule 3(1) and the fee for an international application for a patent (UK) to enter the UK national phase is set out in rule 3(2).

Fees for renewal of a patent, including late renewal, are set out in Schedule 2 (rules 4 and 5).

Provision is also made for fees in respect of supplementary protection certificates for medicinal and plant protection products. These relate to matters arising under the provisions of Council Regulation (EEC) No 1768/92 of 18 June 1992 concerning the creation of a supplementary protection certificate for medicinal products (OJ No L 182, 2.7.92, p1) as amended by Regulation (EC) 1902/2006 of the European Parliament and of the Council of 12 December 2006 on medicinal products for paediatric use (OJ No L 378, 27.12.2006, p1). As regards plant protection products, the fees relate to Regulation (EC) No 1610/96 of the European Parliament and of the Council of 23 July 1996 concerning the creation of a supplementary protection certificate for plant protection products (OJ No L 198, 8.8.96, p. 30).

The Patents (Supplementary Protection Certificates) Rules 1997 (SI 1997/64), which formerly made provision for fees in respect of supplementary protection certificates for medicinal and plant protection products, have been revoked by the Patents Rules 2007. Schedule 1 sets out certain fees relating to supplementary protection certificates, and rule 6 sets out the fees payable for a supplementary protection certificate to take effect.

Rule 7 sets out other fees relating to publication of translations of international applications and applications to the comptroller for orders to assist in obtaining evidence for proceedings under the European Patent Convention made in Munich on 5th October 1973 (published in Cmnd 8510 Treaty Series 16/1982 and also available on the website of the European Patent Organisation), and the transmission of an international application for a patent from the Patent Office to the International Bureau and the International Searching Authority under the Patent Co-operation Treaty signed at Washington on 19^th June 1970 (published in Cmnd 7340 Treaty series 78/1978 and also available on the website of the World Intellectual Property Organisation).

An impact assessment has been prepared and copies placed in the libraries of both Houses of Parliament. Copies are also available from Patents Legal Section, Concept House, Cardiff Road, Newport NP10 8QQ.