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Statutory Instruments

1995 No. 2164

PATENTS

The Patents (Fees) Rules 1995

Made

17th August 1995

Laid before Parliament

21st August 1995

Coming into force

4th September 1995

The Secretary of State, in exercise of the powers conferred upon him by section 123(1), (2) and (3) of, and paragraph 14 of Schedule 4 to, the Patents Act 1977(1), of the power conferred upon him by the Department of Trade and Industry (Fees) Order 1988(2), and of all other powers enabling him in that behalf, after consultation with the Council on Tribunals pursuant to section 8(1) of the Tribunals and Inquiries Act 1992(3) and with the consent of the Treasury pursuant to subsection (4) of the said section 123, hereby makes the following Rules:-

1.-(1) These Rules may be cited as the Patents (Fees) Rules 1995 and shall come into force on 4th September 1995.

(2) The Patents (Fees) Rules 1992(4) are hereby revoked.

2. These Rules shall be construed as one with the Patents Rules 1995(5) and, to the extent that they continue to apply in relation to existing patents and existing applications, with the Patents Rules 1968(6).

3. The fees to be paid in respect of any matters arising under the Patents Act 1977 or arising under the Patents Act 1949(7) shall be those specified in Parts A and B of the Schedule to these Rules; and in any case where a form specified in Part A or Part B of the Schedule as the corresponding form in relation to any matter is required by the Patents Rules 1995 or, as the case may be, the Patents Rules 1968 to be used, that form shall be accompanied by the fee, if any, specified in respect of that matter or, where payment may be made within a prescribed period of time after the form has been filed, the fee so specified shall be paid within that period.

Richard Page

Minister for Small Business,

Department of Trade and Industry

3rd August 1995

We consent to the making of these Rules.

Simon Burns

D. L. Willetts

Two of the Lords Commissioners of Her Majesty's Treasury

17th August 1995

Rule 3

SCHEDULEFEES PAYABLE

PART A

(In this Part of this Schedule, any reference to a section is a reference to that section of the Patents Act 1977 and any reference to a rule is a reference to that rule of the Patents Rules 1995.)

Number of corresponding Patents Form	Item	Amount

^a One half of these fees if entry in the register "Licences of Right".
1/77	On request for the grant of a patent (the filing fee)	25
2/77	On reference under section 8(1), 12(1) or 37(1)	50
	On application under section 8(5) or 37(3) for authorisation by comptroller	50
	On request for directions under section 10 or 12(4)	50
	On reference under section 11(5) or 38(5) to determine the question of a licence	50
	On application to comptroller under section 13(1) and/or 13(3)	50
	On offer to surrender a patent	-
	On application for compensation by employee	50
	On application under section 41(8)	50
	On application for settlement of terms of licence of right	50
	On application under section 47(3) by person interested for cancellation of entry in the register	50
	On application under section 48(1) for a compulsory licence or entry in the register	50
	On application by Minister in case of monopoly or merger	50
	On reference to the comptroller of a dispute as to infringement	50
	On application for declaration for non-infringement	50
	On application for the revocation of a patent	50
7/77	Statement of inventorship and of right to grant of a patent	-
8/77	On request for a certificate authorising the release of a micro-organism sample	-
8A/77	On notice of intention to restrict the availability of micro-organism samples to experts	-
9/77	On request for preliminary examination and search, request for further search under section 17(6) or payment for a supplementary search under section 17(8)	130
10/77	On request for substantive examination	130
11/77	On request to amend application before grant	40
	On application to amend specification after grant of a patent	40
	On request for the correction of an error in the register or in any connected document	40
	On request for correction of error or mistake	40
12/77	On payment of renewal fee^a (and additional fee for late payment)-
	Before the expiration of the 4th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 5th year	110
	Before the expiration of the 5th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 6th year	120
	Before the expiration of the 6th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 7th year	130
	Before the expiration of the 7th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 8th year	140
	Before the expiration of the 8th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 9th year	150
	Before the expiration of the 9th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 10th year	170
	Before the expiration of the 10th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 11th year	190
	Before the expiration of the 11th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 12th year	210
	Before the expiration of the 12th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 13th year	230
	Before the expiration of the 13th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 14th year	260
	Before the expiration of the 14th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 15th year	280
	Before the expiration of the 15th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 16th year	310
	Before the expiration of the 16th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 17th year	340
	Before the expiration of the 17th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 18th year	370
	Before the expiration of the 18th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 19th year	410
	Before the expiration of the 19th year from the date of filing of the application for the patent or, in the case of an existing patent, the date of the patent and in respect of the 20th year	450
	Additional fee for late payment of a renewal fee under section 25(4)-
	Not exceeding one month	24
	Each succeeding month (but not exceeding six months)	24
15/77	On notice of opposition to amendment of specification after grant	50
	On notice of opposition to offer to surrender a patent	50
	On notice of opposition to an application under section 47(1) or 47(3) for cancellation of entry in the register	50
	On notice of opposition to application made under section 48 or 51	50
	On opposition to request for correction of error or mistake	50
16/77	On application to restore a patent	135
20/77	On request to alter a name, for each patent or application	-
21/77	On application to register or to give notice of rights acquired in a patent or in an application for a patent	50
23/77	On request for certificate of the comptroller or certified copy from a file or the register-
	(a)rubber stamp impression	16
	(b)signed and sealed certificate	22
	On request for uncertified copy from a file or the register	5
28/77	On application by proprietor for entry to be made in the register to the effect that licences under the patent are to be available as of right	-
30/77	On application by proprietor under section 47(1) for cancellation of entry in the register	-
49/77	On request to be informed of future events relating to a patent or application for a patent (caveat)	25
51/77	On appointment or change of agent	-
52/77	On request for extension of time or period under rule 110(3) (Each)	135
	On request for extension of time or period under rule 110(4)	135
53/77	Additional fee for extension of time or period under rule 110(6)	135
	Additional fee on restoration of a patent under rule 41(4)	135
54/77	On filing of translation of European Patent (UK) under section 77(6)(a)	35
	On filing of translation of an amended European Patent (UK) under section 77(6)(b)	35
	On request for publication of translation of claims of application for European Patent (UK) filed under section 78(7)	35
	On request for publication of corrected translation of European Patent (UK) or application for European Patent (UK) filed under section 80(3)	35
58/77	On declaration that licences of right shall not extend to excepted uses	-
	On request for information about date of payment of any renewal fee under rule 48 and/or to inspect the register under rule 49	5
	On request to inspect documents filed or kept at the Patent Office, under rule 93	-
	On entry of an international application for a patent (UK) into the national phase (section 89A(3))	25
	On application for entry of order or direction of court in the register under rule 53	-
	On application to register copy of entry made in European Register of Patents under rule 79(2)	-
	On request for conversion of European patent application under rule 81	-
	Filing fee upon conversion of European patent application to an application under the Act	25
	On request for publication of translation under rule 85(6)	12
	On application to the comptroller under rule 85(8) or 85(12) for an international application to be treated as an application under the Act	25
	On application for order for evidence to be obtained in the United Kingdom under rule 86	-
	Transmittal fee to Receiving Office under the Patent Co-operation Treaty- rule 118(1)	55

PART B

(In this Part of this Schedule-

(1) any reference to a section is a reference to that section of the Patents Act 1949; and

(2) any reference to a rule is a reference to that rule of the Patents Rules 1968, as it continues to apply by virtue of rule 124 of the Patents Rules 1978(8).)

Number of corresponding Patents Form	Item	Amount
1 Add	Application for grant of patent of addition in lieu of independent patent	-
7	For extension of time under rule 30, 33 or 50-
	Not exceeding one month	-
	Each succeeding month	-
8	On application for result of search made under sections 7 and 8	-
9	On application under section 9(2) for deletion of reference	-
13	On notice that hearing before the comptroller will be attended	-
14	On request under section 16(3)	-
15	On claim under section 16(4)	-
16	On application for extension of the period under section 16(5)	12
17	On application for a certificate under section 16(8)	-
18	On claim under section 17(1) for application to proceed in name of claimants	-
19	On application for directions under section 17(5)	-
20	On request for sealing of a patent	-
21	On application for extension of the period for requesting the sealing of a patent under section 19(3)-
	Not exceeding one month	17
	Each succeeding month	17
22	On application for extension of the period for requesting the sealing of a patent under section 19(4)-
	Not exceeding one month	17
	Each succeeding month	17
23	On application under section 20 for amendment of a patent	-
32	On application under section 28 for sealing of a patent	31
33	On opposition to application under section 28	-
34	Additional fee for sealing under section 28	80
35	On application to amend specification after acceptance	52
36	On notice of opposition to amendment	-
38	On application to amend an application for a patent	26
39	On application for revocation of a patent under section 33	-
43	On application for settlement of terms of licence under patent endorsed "Licences of Right"	-
44	On application by patentee for cancellation of endorsement of patent "Licences of Right"	-
46	On notice of opposition to cancellation of endorsement of patent "Licences of Right"	-
53	On application under section 55(1) for directions of comptroller	-
54	On application under section 55(2) for directions of comptroller	-
55	On application under section 56(1) to determine dispute	-
63	On application for entry in the register of claim to a licence under a patent extended under section 23, 24 or 25	-
64	On request to comptroller to correct a clerical error	40
65	On notice of opposition to the correction of a clerical error	-
68	For duplicate of patent	-
69	On application for entry of order of court in the register	-

Explanatory Note

(This note is not part of the Rules)

These Rules revoke and replace the Patents (Fees) Rules 1992 (S.I. 1992/616). The fees remain unchanged except as noted below. Part A of these Rules refers to fewer patents forms than previously because their number is reduced by the Patents Rules 1995 (rule 4 and Schedule 1). Any increases or changes take effect on 4th September 1995.

The changes in the fees are as follows-

(a)a fee of £50 is introduced for commencing proceedings before the comptroller upon filing Form 2/77, unless the proceedings relate to an offer to surrender a patent, in which case, no fee is payable, as was previously the case;

(b)a uniform fee of £40 is introduced for requesting amendment or correction on Form 11/77. This compares with fees respectively of £30, £66, nil and £40 payable under the 1992 Fees Rules;

(c)a fee of £50 is introduced for giving notice of opposition on Form 15/77;

(d)the fee for registering or giving notice of a transaction, instrument or event is reduced from £55 to £50;

(e)a uniform fee of £5 is introduced for requesting an uncertified copy of material from a file or the register, and for requesting renewal information or inspection of the register.

It is estimated that the total amount of fees collected per annum under these Rules will be about 0.1 percent greater than the amount collected per annum under the 1992 Fees Rules.

(1)

1977 c. 37.

(2)

S.I. 1988/93, as amended by S.I. 1990/1473, which was made under section 102 of the Finance (No. 2) Act 1987 (c. 51). The relevant provisions of that Order are article 7 and Part IV of Schedule 1.

(3)

1992 c. 53.

(4)

S.I. 1992/616.

(5)

S.I. 1995/2093.

(6)

S.I. 1968/1389, which was revoked by, except as provided for by rule 124 of, S.I. 1978/216, which was itself revoked, except for rule 124 and Schedule 4 (savings), by S.I. 1982/717. The latter instrument was revoked by rule 123 of S.I. 1990/2384, which was itself revoked by rule 121 of S.I. 1995/2093, which also amends rule 124 of S.I. 1978/216.

(7)

1949 c. 87.

(8)

S.I. 1978/216; rule 124 is amended by rule 121 of S.I. 1995/2093.