The Patents (Fees) Rules 1996

Link to law: http://www.legislation.gov.uk/uksi/1996/2972/made/data.htm?wrap=true
Published: 1996-11-26

Statutory Instruments
1996 No. 2972

PATENTS
The Patents (Fees) Rules 1996

Made
26th November 1996

Laid before Parliament
28th November 1996

Coming into force
1st January 1997

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 1996 and shall come into force on 1st January 1997.

(2) The Patents (Fees) Rules 1995(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.

Ian Taylor
Parliamentary Under Secretary of State for Science and Technology,
Department ofTrade and Industry
18th November 1996

We consent to the making of these Rules.

Michael Bates
Richard Ottaway
Two of the Lords Commissioners of Her Majesty’s Treasury
26th November 1996

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

£

*
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
70

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* (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 1995 (S.I. 1995/2164). The fees remain unchanged except that the fee payable for a substantive examination (Form 10/77) is reduced from £130 to £70.


(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. 1995/2164.

(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.
Read Entire Law on www.legislation.gov.uk