How to make cost savings at the European and United Kingdom Patent Offices
Both the European Patent Office and the United Kingdom Patent Office are funded through official fees payable in respect of patent applications.
At the United Kingdom Patent Office, official fees are relatively low during the prosecution phase, but the United Kingdom Patent Office gains significant revenue through the payment of annual maintenance fees on patents after grant.
At the European Patent Office, fees during the prosecution stage are significantly higher, and the European Patent Office charges maintenance fees for the third and successive years during the pending application phase.
There are official fee traps for the unwary, both at the European Patent Office and at the United Kingdom Patent Office where applications have a high number of claims, or have a lengthy specification.
European Patent Office
European patent applications may originate from either a direct European patent filing or from entry into the European Patent Regional Phase via an International Application (PCT-Euro).
For either route, the following fees are payable:
Excess page fees:
There is an excess page fee (publication fee) at the European Patent Office for any sheets of the specification over 35. This includes the description, claims, drawings and abstract. This is currently €16 per excess page. This fee has to be paid within the period for filing the European patent application, i.e. one month from the filing date of the application.
Excess claims fees:
There is an excess claim fee also payable at the European Patent Office.
• For the 16th and each subsequent claim up to claim 50 there is a charge of €245 per claim.
• For the 51st and any subsequent claim, there is a charge of €610 per claim.
If excess claim fees are not paid, the subject matter of the excess claims will be deemed abandoned and the application will continue in respect of claims 1 to 15 only.
It is possible to reduce claim numbers by filing claims with multiple dependencies (provided there is basis to do so). There is no additional fee applied for a multiple dependency at the European Patent Office, the excess claim fee is based upon counting the number of individual claims only.
European Patent Applications
For direct European patent application filings, if the European patent application is claiming priority from a US or other patent application, for lengthy patent specifications, there is the opportunity to reformat the specification for the European patent application prior to filing without loss of information content by condensing the text, removing unnecessary line spaces, and decreasing margin widths provided the font sizes and margin widths and line spaces remain within the rules for document presentation. Reformatting prior to filing presents the opportunity for a significant cost saving.
European Patent Regional Phase Application from International Application (PCT-Euro)
It is possible to file a new claim set upon entry into the European Regional Phase. For example, where there are amended claims under Article 19 PCT or Article 34 PCT these can replace the claims of the international patent application as filed. The claim fees payable will be calculated according to the submitted claim set and not the claims of the international specification as published.
Unfortunately, there is no way around the excess page fees for international patent applications entering the European phase. The additional fee is payable as part of the filing fee and is calculated on the basis of the description, drawings, claims and abstract of the international patent application as published, plus any amended claims filed during the international phase unless these are stated to replace the original claims as filed.
If replacement claims are filed, intended to replace the claims as at the end of the international phase, then these claims need to be identified as such in order to avoid excess page fees being applied for those claims pages.
Reformatting the document at the EP regional phase entry stage would not reduce the excess page fee because the European Patent Office calculates the fee based upon the published international application, which has the status of a European patent application. If the applicant explicitly states that application documents filed on entry into the European phase have merely been reformatted (so as to reduce the number of pages subject to payment of an additional fee) rather than substantively amended, the EPO disregards these reformatted application documents and does not accept them as the basis for calculation of the additional page fee. It will still base the excess page fee on the length of the international patent application as originally published, plus any further sets of claims filed, except where these are stated to be replacement claims.
United Kingdom Patent Office
United Kingdom patent applications may originate from either a direct United Kingdom patent filing or from entry into the United Kingdom National Phase via an International Application (PCT-GB).
For any route of entry the following fees are payable for a United Kingdom patent application:
Excess page fees:
An excess page fee is applicable to all United Kingdom patent applications where a request for substantive examination is made on or after 6 April 2018.
The excess page fee is calculated based on the number of pages of description in the application at the time the application is filed and does not include the claims or drawings. This fee has to be paid within the period for filing the United Kingdom patent application, i.e. one month from the filing date of the application. This is currently £10 per sheet in excess of 35 pages.
There is no excess page fee in respect of drawings or claims pages.
No excess page fees will be payable if the fee for substantive examination was paid before 6 April 2018.
If the description as filed had 35 or fewer pages, but the number of description pages has increased above 35 during prosecution of the application, a grant fee will apply. The grant fee will also be £10 per sheet in excess of 35 pages. It is possible to obtain an extension to the period for payment of the grant fees but this will incur a surcharge. If the grant fee is not paid, the application will be deemed withdrawn and will not proceed to grant.
No refunds will be awarded where the number of pages has decreased.
Excess claim fees:
From 6 April 2018, an excess claim fee is payable as part of the substantive examination fee at the United Kingdom Patent Office. The fee is £20 for each claim over 25.
No excess claims fee will be payable if a search fee was paid before 6 April 2018. The excess claims fee does not apply to any request for a supplementary search under Section 17(8) or a search of a further invention under Section 17(6).
It is possible to reduce claim numbers by filing claims with multiple dependencies (provided there is basis to do so). There is no additional official fee for a claim with multiple dependencies at the United Kingdom Patent Office. Excess claims official fees are based upon an overall count of the number of claims above 25.
If the number of claims accepted for grant exceeds the claim fees paid on the application, a grant fee will apply (see “grant fee” below). The grant fee will be the sum of £20 for any additional excess claims over 25. No refunds will be awarded where the number of claims has decreased.
United Kingdom National Patent Applications – direct filing
For direct United Kingdom patent application filings, for example if the application claims priority from a US or other patent application, for lengthy patent specifications there is the opportunity to reformat the specification for the United Kingdom patent application prior to filing without loss of information content by condensing the text, removing unnecessary line spaces, and decreasing margin widths, provided the font sizes and margin widths and line spaces remain within the rules for document presentation. Reformatting prior to filing presents the opportunity for a significant cost saving on excess page fees.
It is also possible to reduce the number of pages of the description by filing voluntary amendments after filing and issuance of the search report, provided that the amendments are filed prior to the request for substantive examination being made.
United Kingdom National Phase Application from International Application (PCT-GB)
If the international search report has issued prior to United Kingdom national phase entry, voluntary amendments may be filed at the United Kingdom Patent Office upon entry into the United Kingdom national phase up until the mailing date of the first substantive examination report. Given that substantive examination must be requested within two months of national phase entry, voluntary amendments must be on file no later than two months after United Kingdom national phase entry.
Voluntary amendments can include a reduced number of pages and/or an entirely new claim set. The page and claim fees payable will be calculated according to the submitted voluntary amendments.
United Kingdom Patent Arising as a Designated State of a Granted European Patent
Obtaining a United Kingdom national patent as a result of grant of a European patent does not incur any excess page fees or excess claims fees at the United Kingdom Patent Office, because it arrives as an already granted UK patent, not as a patent application.
European Patent Office
- For direct regional patent filings, excess page fees can be reduced/omitted by reformatting the specification prior to filing to a more condensed format.
- For all European patent filings cost savings can be achieved by reducing claim numbers, and/or by consolidating a larger number of single dependency claims into a smaller number of multiple dependency claims.
- Number your preferred claims as claims 1 to 15. If the excess claims fee on an application having 16 or more claims remains unpaid, examination will continue on the basis of claims 1 to 15.
United Kingdom Patent Office
- For direct national patent filings, excess page fees can be reduced/omitted by reformatting the specification prior to filing.
- For all United Kingdom patent filings costs savings can be incurred after filing by submitting voluntary amendments to reduce page or claim numbers after receiving the search report/international search report provided they are on file before issuance of the substantive examination report.
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