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The Patents (Fees) (No. 2) Rules 1990

Type Statutory-Instrument
Publication 1990-12-10
State In force
Department Queen's Printer of Acts of Parliament
Source legislation.gov.uk
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Made: 10th December 1990

Laid before Parliament: 13th December 1990

Coming into force: 7th January 1991

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[^f00001], of the power conferred upon him by the Department of Trade and Industry (Fees) Order 1988[^f00002], and of all other powers enabling him in that behalf, after consultation with the Council on Tribunals pursuant to section 10(1) of the Tribunals and Inquiries Act 1971[^f00003] and with the consent of the Treasury pursuant to subsection (4) of the said section 123, hereby makes the following Rules: —

1

2

These Rules shall be construed as one with the Patent Rules 1990[^f00005] and, to the extent that they continue to apply in relation to existing patents and existing applications, to the Patents Rules 1968[^f00006].

3

The fees to be paid in respect of any matters arising under the Patents Act 1949[^f00007] or the Patents Act 1977 shall be those specified in the Schedule to these Rules; and in any case where a form specified in the Schedule as the corresponding form in relation to any matter is required by the Patents Rules 1968 or the Patents Rules 1990 to be used, that form shall be accompanied by the fee 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.

SCHEDULE — FEES 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 1990.)

Number of corresponding Patents Form Item Amount
* One half of these fees if entry in the register “Licences of Right”. * One half of these fees if entry in the register “Licences of Right”. * 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) 15
2/77 On reference under section 8(1), 12 or 37(1) 32
3/77 On application under section 8 or 37(3) for authorisation by comptroller 32
4/77 On request for directions under section 10 or 12 32
5/77 On reference under section 11 or 38(5) to determine the question of a licence 32
6/77 On application to comptroller under section 13 and/or 13(3) 24
7/77 Statement of inventorship and of right to the grant of a patent —
8/77 On request for certificate authorising release of sample of micro-organism 11
8A/77 On notice of intention to restrict availability of samples of micro-organism to expert 11
8B/77 On request for certificate authorising release of sample of micro-organism to export 11
9/77 On request for preliminary examination and search, request for further search under section 17 or payment for a supplementary search under section 17 105
10/77 On request for substantive examination 120
11/77 On request to amend application before grant 27
12/77 [^f01000]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 94
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 100
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 108
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 120
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 130
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 142
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 158
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 172
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 194
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 214
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 238
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 262
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 286
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 308
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 342
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 378
Additional fee for late payment of a renewal fee under section 25(4)—
Not exceeding one month 20
Each succeeding month 20
(but not exceeding six months)
14/77 On application to amend specification after grant of a patent 56
15/77 On notice of opposition to amendment of specification after grant 24
16/77 On application for the restoration of a patent 114
17/77 Additional fee on the application for restoration of a patent 114
18/77 On offer to surrender a patent —
19/77 On notice of opposition to offer to surrender a patent 24
20/77 On request for alteration of a name, for each patent or application 3
21/77 On application to register or to give notice of a transaction, instrument or event affecting the rights in a patent or application for a patent 24
On each application covering more than one patent or application for a patent, the devolution of title being the same as in the first patent or application for a patent. For each additional request 3
22/77 On request for the correction of an error in the register or in any connected document 17
23/77 On request for miscellaneous information Each 3
24/77 On request for certificate of the comptroller —
(a) rubber stamp impression 3
(b) Signed and sealed certificate 12
25/77 On application for entry of order or direction of court in the register —
26/77 On application for compensation by employee 32
27/77 On application under section 41(8) 32
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. 13
29/77 On application for settlement of terms of licence of right 56
30/77 On application by proprietor under section 47 for cancellation of entry in the register 24
31/77 On application under section 47 by person interested for cancellation of entry in the register 24
32/77 On notice of opposition to an application under section 47 or 47(3) for cancellation of entry in the register 24
33/77 On application under section 48 for a compulsory licence or entry in the register 56
34/77 On application by Crown in case of monopoly or merger 56
35/77 On notice of opposition to application made under section 48 or 51 24
36/77 On reference to the comptroller of a dispute as to infringement 56
37/77 On application for declaration of non-infringement 56
38/77 On application for the revocation of a patent 24
39/77 On application to register copy of entry made in European Register of Patents 10
40/77 On payment of filing fee upon conversion of European patent application to an application under the Act 15
41/77 On request for conversion of European patent application 15
43/77 On request for publication of translation 10
44/77 On application to the comptroller for an international application to be treated as an application under the Act 15
45/77 On application for order for evidence to be obtained in the United Kingdom 32
47/77 On request for correction of error or mistake 34
48/77 On opposition to request for correction of error or mistake 24
49/77 On request for information relating to a patent or application 8
50/77 On request for extension of time or period under rule 110 Each 114
51/77 On appointment or change of agent —
52/77 On request for extension of time or period under rule 110 114
53/77 Additional fee for extension of time or period under rule 110 114
54/77 On filing of translation of European Patent (UK) under section 77(6) 28
55/77 On filing of translation of an amended European Patent (UK) under section 77(6) 28
56/77 On request for publication of translation of claims of application for European Patent (UK) filed under section 78 28
57/77 On request for publication of corrected translation of European Patent (UK) or application for European Patent (UK) filed under section 80 28
58/77 On declaration that licences of right shall not extend to excepted uses —
— National fee (section 89A(3)) 15
As Receiving Office or International Preliminary Examining Authority under the Patent Co-operation Treaty —
— Transmittal fee (rule 118(1)) 15
— Preliminary examination fee (rule 120) 55
— Additional fee (rule 121) Maximum 55

PART B

(In this Part of this Schedule —

Number of corresponding Patents Form Item Amount
1 Add Application for grant of patent of addition in lieu of independent patent 29
7 For extension of time under rule 30, 33 or 50 —
Not exceeding one month 16
Each succeeding month 16
8 On application for result of search made under sections 7 and 8 3
9 On application under section 9 for deletion of reference —
13 On notice that hearing before the comptroller will be attended —
14 On request under section 16(3) 8
15 On claim under section 16(4) 8
16 On application for extension of the period under section 16(5) 11
17 On application for a certificate under section 16(8) 21
18 On claim under section 17(1) for application to proceed in name of claimants 24
19 On application for directions under section 17(5) 29
20 On request for sealing of a patent 20
21 On application for extension of the period for requesting the sealing of a patent under section 19(3) —
Not exceeding one month 16
Each succeeding month 16
22 On application for extension of the period for requesting the sealing of a patent under section 19(4)
Not exceeding one month 16
Each succeeding month 16
23 On application under section 20 for amendment of a patent 56
32 On application under section 28 for sealing of a patent 29
33 On opposition to application under section 28 24
34 Additional fee for sealing under section 28 74
35 On application to amend specification after acceptance 48
36 On notice of opposition to amendment 24
38 On application to amend an application for a patent 24
39 On application for revocation of a patent under section 33 24
43 On application for settlement of terms of licence under patent endorsed “Licences of Right” 56
44 On application by patentee for cancellation of endorsement of patent “Licences of Right” 56
46 On notice of opposition to cancellation of endorsement of patent “Licences of Right” 56
53 On application under section 55(1) for directions of comptroller 56
54 On application under section 55(2) for directions of comptroller 56
55 On application under section 56(1) to determine dispute 56
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 34
65 On notice of opposition to the correction of a clerical error 24
68 For duplicate of patent 24
69 On application for entry of order of court in the register —

Signed

Hesketh — Minister of State, — Department of Trade and Industry — 5th December 1990

We consent to the making of these rules.

John Major — Norman Lamont — Two of the Lords Commissioners of Her Majesty’s Treasury — 10th December 1990

Explanatory note

(This note is not part of the Rules)

Upon consolidation, with modifications, of the Patents Rules 1982, (S.I. 1982/717 as amended), by the Patents Rules 1990 (S.I. 1990/2384), (“the 1990 Rules”), these Rules revoke and replace the Patents (Fees) Rules 1990. They come into force on 7 January 1991, the date upon which the 1990 Rules come into force.

With regard to the fees prescribed under the Patents (Fees) Rules 1990 (effective from 10 September 1990), Form 13/77 (payment of additional fee under section 25(4) of the Patents Act 1977) is deleted and its function and associated fee incorporated into Form 12/77. A further fee of £105 is introduced on Form 9/77 for a supplementary search under section 17(8) of the Patents Act 1977, in addition to two new fees (£11 each), which are prescribed in relation to Forms 8A/77 and 8B/77 (samples of micro-organisms) as a result of revisions contained in the 1990 Rules.

Footnotes

[^f00001]: 1977 c. 37.

[^f00002]: 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.

[^f00003]: 1971 c. 62.

[^f00004]: S.I. 1990/1697.

[^f00005]: S.I. 1990/2384.

[^f00006]: 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 also amends rule 124 of S.I. 1978/216.

[^f00007]: 1949 c. 87.

[^f00008]: S.I. 1978/216; rule 124 is amended by rule 123 of S.I. 1990/2384.

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