Statutory Instruments
2010 No. 33
Intellectual Property
The Patents and Patents and Trade Marks (Fees) (Amendment) Rules 2010
Made
7th January 2010
Laid before Parliament
12th January 2010
Coming into force
6th April 2010
The Secretary of State makes the following Rules in exercise of the powers conferred by section 123 of the Patents Act 1977( 1 ) and sections 78 and 79 of the Trade Marks Act 1994( 2 ).
In accordance with articles 5 and 7 of the Department of Trade and Industry (Fees) Order 1988( 3 ), the Secretary of State has taken into account the functions and matters specified in Parts 2 and 4 of Schedule 1 and Parts 1 and 2 of Schedule 2 to that Order.
In accordance with paragraph 24 of Schedule 7 to the Tribunals, Courts and Enforcement Act 2007( 4 ), the Secretary of State has consulted the Administrative Justice and Tribunals Council before making these Rules.
Citation and commencement
1. These Rules may be cited as the Patents and Patents and Trade Marks (Fees) (Amendment) Rules 2010 and come into force on 6th April 2010.
Amendments to the Patents Rules 2007
2. The PatentsRules 2007( 5 ) are amended as follows.
3. In rule 80(1)(a) (Evidence rounds and the hearing) omit “and” and after paragraph (a) insert—
“ (aa) specify the period within which the claimant must file Patents Form 4; and ” .
4. After rule 80(1) insert—
“ (1A) If the claimant wishes to continue the proceedings following receipt of the counter-statement, the claimant must file Patents Form 4. ” .
5. After rule 81 (Alteration of time limits) insert—
“ Failure to file Patents Form 4
81A. If the claimant fails to file Patents Form 4 within the period specified by the comptroller the claimant shall be deemed to have filed a request to withdraw from the proceedings. ” .
Amendments to the Patents (Fees) Rules 2007
6. The Patents (Fees) Rules 2007( 6 ) are amended as follows.
7. In rule 3A (Electronic filing fee reduction) for “£10” substitute “£20”.
8. In rule 7(3) (Other fees) for “£55” substitute “£75”.
9. After rule 7(3) insert—
“ (3A) The fee 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 ( 7 ) is £150. ” .
10. —(1)Schedule 1 (Use of Forms) is amended as follows.
(2) In the entry “Patents Form Number 9A” for “80” substitute “120” and for “100” in both places where it appears substitute “150”.
(3) In the entry “Patents Form Number 10” for “70” substitute “100”.
(4) After the entry “Patents Form Number 3” insert the following—
| “ 4 | On continuing proceedings following receipt of a counter-statement in accordance with rule 80(1A) of the 2007 Rules | 350 ” . |
(5) In the third column of the entry “Patents Form Number 21” insert “50”.
11. In Schedule 2 (Renewal Fees) for Part 1 substitute the following—
“ PART 1 RENEWAL FEE
| Anniversary of date of filing | Amount (£) |
|---|---|
| 4th | 70 |
| 5th | 90 |
| 6th | 110 |
| 7th | 130 |
| 8th | 150 |
| 9th | 170 |
| 10th | 190 |
| 11th | 210 |
| 12th | 250 |
| 13th | 290 |
| 14th | 350 |
| 15th | 410 |
| 16th | 460 |
| 17th | 510 |
| 18th | 560 |
| 19th | 600 ” |
Amendments to the Trade Marks (Fees) Rules 2008
12. The Schedule to the Trade Marks (Fees) Rules 2008( 8 ) is amended as follows.
13. After the entry “TM16 – Request to enter details of an assignment (rule 49(1)(a)) – 50” insert the following—
| TM24 | Request to enter details relating to the grant, amendment or termination of any security interest or the making by personal representatives of an assent or to an order of a court or other competent authority (rule 49(1)(d) and (e)) | 50 |
14. After the entry “TM36 – Request to amend regulations governing the use of a certification or collective mark (rule 30(1)) – 100” insert the following—
| TM50 | Request to enter details relating to a grant of a licence (rule 49(1)(b)) | 50 | |
| TM51 | Request to enter details relating to an amendment to, or termination of a licence (rule 49(1)(c)) | 50 |
Transitional Provisions
15.Rules 3, 4 and 5 shall not apply to proceedings which started before 6th April 2010.
16. Rule 11 shall not apply to a renewal fee paid on or after 6th April 2010 in respect of a renewal date which falls prior to 6th April 2010 if it is paid by the end of the period specified in section 25(4) of the Patents Act 1977.
David Lammy
Minister of State for Higher Education and Intellectual Property
Department for Business, Innovation and Skills
7th January 2010
1977 c.37 . Section 123 was amended by the Copyright, Designs and Patents Act 1988 (c. 48) , Schedule 5, paragraph 29, and the Patents Act 2004 (c.16) , Schedule 2, paragraph 26.
S.I. 1988/93 , amended by S.I. 1990/1473 , both of which were made under section 102 of the Finance (No.2) Act 1987 (c.51) ; there are other amending instruments but none is relevant.
S.I. 2007/3291 , to which there are amendments not relevant to these Rules.
S.I. 2007/3292 , amended by S.I. 2009/2089 .
Cmnd 7340 Treaty series 78/1978.
S.I. 2008/1958 , amended by S.I. 2009/2089 .