The Patents and Patents and Trade Marks (Fees) (Amendment) Rules 2010

EXPLANATORY NOTE

(This note is not part of the Rules)

These Rules amend the Patents Rules 2007 (SI 2007/3291) (“the 2007 Rules”), the Patents (Fees) Rules 2007 (SI 2007/3292) (“The Patents (Fees) Rules”) and the Trade Marks (Fees) Rules 2008 (SI 2008/1958) (“the Trade Marks (Fees) Rules”).

The amendments to the 2007 Rules and the Patents (Fees) Rules contained in rules 3 to 11 make the following changes of substance—

(1) A claimant must file Patents Form 4 together with a fee of £350 in order to continue the proceedings following receipt of a counter-statement. If the claimant fails to file the form within the period specified by the comptroller the claimant shall be deemed to have filed a request to withdraw from the proceedings.

(2) The reduction in the search fee and the examination fee where the relevant form (Patents Form 9A or Patents Form 10) is filed electronically is increased from £10 to £20.

(3) The fee to transmit an international application to the International Bureau and the International Searching Authority is increased from £55 to £75 and a new fee of £150 is introduced to request restoration of the right of priority of an international application for a patent filed at the Patent Office in accordance with the Patent Co-operation Treaty (Cmnd 7340 Treaty series 78/1978) .

(4) The search fee associated with Patents Form 9A filed under rule 27 of the 2007 Rules is increased from £80 to £120 in respect of an international application for a patent (UK) which has already been the subject of a search by the International Searching Authority and from £100 to £150 in respect of any other application (including a request for a further or supplementary search under section 17(6) and (8) of the Patents Act 1977).

(5) The examination fee associated with Patents Form 10 filed under rule 28 of the 2007 Rules is increased from £70 to £100.

(6) A fee of £50 is introduced to register transactions under rule 47 of the 2007 Rules.

(7) The fees to renew a patent associated with Patents Form 12 filed under rules 36 to 38 of the 2007 Rules are increased in accordance with the amendments to Part 1 of Schedule 2 to the Patents (Fees) Rules as set out in rule 11.

The Trade Marks (Fees) Rules are amended by rules 13 and 14 which introduce a fee of £50 where Trade Mark Forms TM24, TM50 or TM51 are filed requesting to enter details in the Register of Trade Marks in accordance with rule 49 of the Trade Marks Rules 2008 (SI 2008/1797).

Rules 15 and 16 contain transitional provisions.

A full impact assessment of the effect that this instrument will have on the costs of business and the voluntary sector is available from the Intellectual Property Office, Room 3Y60, Concept House, Cardiff Road, Newport, NP10 8QQ and is annexed to the Explanatory Memorandum which is available alongside the instrument on the OPSI website.