Save £10 on your patenting costs

The IPKat has had his attention brought to the (rather tautologically-sounding) Trade Marks and Trade Marks and Patents (Fees) (Amendment) Rules 2009, SI 2009, No. 2089, which is going to be making a few changes to the Trade Marks Rules 2008, the Trade Marks (Fees) Rules 2008 and the Patents (Fees) Rules 2007 as from October 2009.

As far as the IPKat can gather, the changes are mainly to do with tinkering around the edges of the current set-up. Among other minor things, some new allowances will be made for electronic filing of applications. One change in particular is that a whopping £10 saving will in future be possible when paying application or search fees on a patent application, if filing electronically. Any savings may, however, be short-lived if other proposed changes (as reported by the IPKat here) go ahead as planned.

UK-IPO: more money please

The UK-IPO have just announced a consultation on proposals for introducing changes to the fees charged for getting and keeping UK patents. The proposed changes are many and various, and can be digested in detail by reading the consultation document itself. These include:

• substantial (roughly doubling) increases to search and examination fees;
• the introduction of excess claims fees (although not quite at the level of the EPO);
• increased renewal fees;
• a new fee for contested proceedings; and
• a new fee for recording registrable transactions under section 32.

The IPO's reasoning for many of the increases includes the fact that (amazingly) no substantial increases have been implemented since the early 1990s, and there apparently should be some 're-balancing' of the way the IPO's work is funded, since the cost of search and examination is at the moment mostly paid for by renewal fees.

The IPO want to know what you think about it, and will be welcoming answers to their 11 questions in the consultation until 12 October 2009.

New Oxford IP Professor; IPO fees reduction on the cards?

New Oxford IP professor

Oxford University has officially announced the appointment of Graeme Dinwoodie as Professor of Intellectual Property and Information Technology Law at Oxford University. He will take up his appointment in June.

The IPKat wishes Graeme the best of luck in his new position.

Full press release here.


Fees consultation

The Intellectual Property Office (which the IPKat wouldn't dare call the Patent Office, or even the UK-IPO) has launched a consultation on fees and services.

The aims are to ensure that the registration of national trade marks is a viable option, to ensure that businesses continue to protect their IP during the economic downturn and to encourage e-business.

Amongst the proposals are an early assistance scheme for trade mark applications, a 50% fee reduction for e- filing of trade marks and a lesser reduction for patents, the abolition of series registrations for trade marks, the scrapping of the fast track trade mark registration procedure (because the normal procedure is just as fast) and the reduction of trade mark tribunal fees.

Responses are due by 1 June.

The IPKat notes that most of the proposals are aimed at trade marks. This could be because of the need to compete with OHIM, but perhaps businesses are more willing to put less money into protecting their trade marks than their patents when the going gets tough.

April fees foolery from the EPO

The IPKat has just been reminded by patent attorney Donald McNab about a previous post from November 2008, which some readers may have forgotten about. Back then, the IPKat pointed out a decision by the Administrative Council (CA/D 4/08), which introduced a few esoteric changes to the EPC Rules, including a change to the way the EPO takes its fees for applications in the way of page charges. The EPO have recently issued a slightly more helpful notice outlining what the changes, due to come into force on 1 April 2009, actually mean in practice.

(right: the IPKat's French cousin gets confused about 1 April)

As from 1 April, all applications filed at the EPO (including requests for PCT applications to enter the European regional phase) will be subject to further massively increased claims fees and to page charges that were previously payable only on approving the text of an application for grant.  Fortunately the page charge of 12 Euros per page over 35 has not been increased (as the IPKat incorrectly predicted), though this probably has more to do with the general freeze on fee increases at the EPO due to the current economic climate than with any lack of desire to go for a hike.  Also, the massive claims fees of 500 Euros per claim only apply for the 51st and subsequent claims, so are unlikely to affect too many applicants.  For those applications where it does matter, there are some obvious and fairly easy tricks to avoid payment, which all patent attorneys should by now be aware of.

As the notice makes clear, if the new excess claims fees and page charges are to be avoided, all the legal requirements to make a valid European application have to be completed before 1 April, including paying all fees due and, where necessary, making an explicit request for a PCT application to enter the European phase early.  Just to make it a bit more interesting, the current system of paying up to seven designation fees is being scrapped as from 1 April, in favour of a single designation fee of 500 Euros for all applications.  Fortunately, the new single fee is less than seven times the old fee.  The IPKat suspects that the EPO will be having to make quite a few refunds over the next few months as a result.

This all appears to the IPKat like the EPO is playing the game so that very few patent attorneys will be wanting to try to get applications in under the wire to save on a few fees for their client, as the added hassle is probably not going to be worth it.  Perhaps some lessons have been learned from the claims fee fiasco last year. Who knows, the EPO may actually get some more money as a result this time.

Pending Patent Page Penalties

The Administrative Council of the European Patent Organisation has just announced a decision that entered into force on 21 October 2008, but was apparently only made public yesterday.  Fortunately, the actual effect of this will not be felt until 1 April 2009 when various other changes to the EPC are due to come into force.  

The decision makes a number of, mostly very minor, changes to the Implementing Regulations of the European Patent Convention.  These include some tidying-up of Rules resulting from the previous decision (see IPKat commentary here and here) to turn the current system of designation fees for each state (up to a maximum of 7) to one where a single designation fee will be payable as from 1 April 2009.  [As an aside, the IPKat wonders what the point of the single designation fee will be.  What is it designed to actually pay for, if there is no choice? Why not just abolish it and raise the fee for examination?]

The change that most patent attorneys and applicants will be most interested to know, however, is that there will be a new page charge for applications as from next April, which the amended Rule 38 will allow for:

"(1) The filing fee and search fee shall be paid within one month of filing the European patent application.

(2) The Rules relating to Fees may provide for an additional fee as part of the filing fee if the application comprises more than 35 pages.

(3) The additional fee referred to in paragraph 2 shall be paid within one month of filing the European patent application or one month of filing the first set of claims or one month of filing the certified copy referred to in Rule 40, paragraph 3, whichever period expires last."

Although there is already a page charge for having applications granted (under Rule 71(3) and A2 of the Rules relating to fees), this new fee will be payable for applications on filing. The actual fee has already been set by a previous decision at 12 Euros, although no prizes are offered for predicting that this will rise between now and next April (thanks to the commenter below for the reminder). The IPKat very much hopes that the EPO have learned some lessons in basic economics from the results of their decision to dramatically raise claims fees (by 400%) earlier this year, which appears to have backfired somewhat. Even the IPKat knows that if you raise taxes too much the likely effect will be to cause revenues to go down, as people make more efforts to avoid paying them.  Would any readers care to take a guess at to what the page charges are actually going to be (or even what they should be)? Will they be the same, more or less than the 12 Euros already set? 

For those wanting to see the changes in context, IPKat team member David has amended his copy of the EPC to include them (prospectively, at least).  The document (EPC2000 1 April 2008.pdf) is available on the IPKat's Google Groups website. 

Watch out: EPO fee increases ahead

As from tomorrow, as all European patent attorneys will already know, virtually all fees payable to the EPO will be going up. Some of them (claims fees and renewal fees in particular) will be rising very steeply indeed (see IPKat commentary here), while others are rising by only be a few percent. Another point to be noted is that as from tomorrow it will no longer be possible to pay fees to the EPO by cheque (the IPKat wonders: does anyone still does this?).

All the details are available from the EPO here. The IPKat wonders, given that the claims fee increases are supposed to be 'budget neutral' rather than a way of gouging patentees and paying for retiring EPO staff, how patentees and their attorneys expect to see the total amount they pay for claims changing over the next few months. Will they be rising, staying the same, or falling?

More on EPO fee changes

Following on from the announcements made at the end of last year (noted by the IPKat here), the EPO have now filled in the details of what is going to happen come next month (1 April 2008), when many of the fees payable for European patents and patent applications will be increasing, some (much) more than others. The announcements on fees and other related matters are as follows:

• Fee changes, including renewal fees, claims fees, dates and methods of payment and automatic debiting;
• Search and examination fees;
• Administrative fees and expenses; and
• Refunds of search fees by EPO acting as ISA (together with amounts of refunds).

As expected, Rules 45(1), 71(6) and 162(1) EPC are being changed (see Administrative Council decision here) to allow excess claims fees to apply to those over 15, instead of the current limit of 10.

The IPKat, who hasn't been through all the changes in detail, can see that this is an awful lot to take in, but can say with complete confidence that things are not getting any cheaper for anybody. Two hundred Euros sounds like a lot to pay for each excess claim, given the added benefit extra claims give (usually none) and the extra examination work required for each extra dependent claim (usually none), so applicants should be thinking a bit harder about whether it's better to go for a trim rather than waste money paying for EPO staff pensions on claims they don't really need. When it comes to claims from next month, think Agnyess Dean rather than Naomi Campbell.

EPO: advance warnings of more expensive things to come

Just before Christmas, when many people are winding down, the EPO has decided to come out with some significant changes to be made to the way European patents are dealt with. Two Administrative Council decisions have recently appeared on the EPO website, both of which will, in different ways, affect how much European applications will cost in future.

Decision CA/D 16/07, which will come into force on 1 April 2008, increases fees for applications across the board. Most increases are fairly small single digit percentage rises, but renewal fees in particular will rise substantially, becoming even more weighted towards the latter end of the life of a patent application pending at the EPO. [The IPKat wonders whether this gives the EPO more of an incentive to be even slower than they are at present, since the longer they hang on to applications the more money they get.]

The second decision, CA/D 15/07, does not come into force until 1 April 2009, but makes some pretty scary changes to the fees, particularly for those who like filing large patent applications with lots of claims, as well as applicants who might want coverage in only a few countries through the European system.

These changes include:

Additional fees on filing for applications having more than 35 pages, with each extra page being charged at 12 euros;

A single designation fee of 500 euros, to cover all member states (removing the option at present of having fewer than 7 states designated on filing);

A dramatic increase in excess claims fees (from 1 April 2008) for more than 15 claims, with 200 euros being charged for each claim, and (from 1 April 2009) 500 euros for the 51st and subsequent claims.

The message from this is fairly clear: the EPO wants applicants to be a lot more careful about what they file, and there will be heavy penalties for not playing the game. For example, an application with 50 claims will, after 1 April 2008, cost an extra 7000 euros, and 60 claims (after 1 April 2009) will cost an extra 12,000 euros, compared with only 2250 euros now. Combined with the new strict requirement to sort out unity of invention at the international phase (under rule 164), there will be a big incentive to keep applications slimmed down as much as possible.

Although these changes do not come into force for a while, they should be affecting decisions being made right now, given the long lead time between filing an application and entering the European phase up to 31 months later. Some applicants may be in for a nasty, and very expensive, surprise later on.