September 29, 2016

United Kingdom: changes to the Patent Rules & new design fees

On October 1, 2016, the United Kingdom Intellectual Property Office (UK IPO) will introduce amendments to the Patent Rules together with changes in fees as to industrial design registration and renewals.

Starting from the said date, the UK IPO will start issuing new notices of intention to grant. These notifications will be sent to the applicant informing that the application complies with all the necessary requirements and stating the date on which a patent will be granted. Therefore, the applicant will know exactly the timeframe left and will be able to make voluntary amendments or file a divisional application, if he wishes so.

The change of October 1, 2016 clarifies the terms for amending PCT applications entering the UK national phase. In case by the time of entry into national phase an International Search Report (ISR) is issued, an applicant can introduce voluntary amendments from the date of the UK national phase entry. Alternatively, if there is no ISR by the said date, it is possible to voluntarily amend the application when either the UK search report or ISR is issued (whichever is earlier). The deadline for amendments in both cases is issuance of the first UK examination report.

The new Rules introduce clear time limit for requesting reinstatement of application, which is currently quite confusing. Reinstatement will be available within 12 months from lapse of the application. From October 1, 2016, this possibility will apply to all previously lapsed applications.

Concerning the industrial design fees, the amendments will relate to registration and renewal costs. It is noted that the above-mentioned fees will be considerably reduced. Please review the introduced changes in the comparative tables below.

UK Design Registration fees

  Before October 1, 2016 On and After October 1, 2016
Paper-based filing Paper-based filing Electronic filing
Single design application GBP 60 for 1 design GBP 60 for 1 design GBP 50 for 1 design
Multiple design application GBP 60 for the 1st design and GBP 40 per each subsequent design GBP 60 for the 1st design and GBP 40 per each subsequent design GBP 70 for up to 10 designs

GBP 20 for each subsequent block of up to 10 designs
Discount for filing fee with deferred publication  GBP 20 No discount No discount

 

UK Design Renewal fees

  Before October 1, 2016 On and After October 1, 2016
2nd five-year period GBP 130 GBP 70
3rd five-year period GBP 210 GBP 90
4th five-year period GBP 310 GBP 110
5th five-year period GBP 450 GBP 140

 

To get an actual and precise quote for IP-protection in the United Kingdom, please visit our quotation system. As soon as the amendments enter into force, the fees will be duly updated.

We also invite you to review our IP-Guide to get more information on:


Author: Lynda Miller

 

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