UKIPO to temporarily reduce/remove certain fees applicable to patent, trade mark and design forms

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Hogan Lovells

The UKIPO will temporarily reduce the fees applicable to: (1) extensions of time periods for the filing of documents; (2) surcharges for the late payment of certain other fees; and (3) fees to reinstate/restore registrations that have been removed from the relevant register. This temporary reduction will begin on 30 July 2020 and end on 31 March 2021. During this period, the relevant fees will be reduced to either £0 or £1.

The Government has introduced a new statutory instrument making temporary amendments to the patent, trade mark and design fee rules. The reduction of fees is intended to address the potential effects of coronavirus on the ability of applicants for and proprietors of patents, trade marks and registered designs to comply with certain requirements within the UKIPO's prescribed time limits. Applicants and proprietors will benefit from reduced fees from 30 July 2020 to 31 March 2021.

Amendments to Patent (Fees) Rules 2007/3292

  • The 25% surcharge for the late payment of the application fee (Form AF1) will be removed
  • The fee for making a late declaration of priority (Form 3) is reduced to nil
  • The fee for the late payment of a renewal fee (Form 12) is reduced to nil.
  • The fee for the reinstatement or restoration of a patent following late renewal (Forms 14 and 16) is reduced to nil.
  • The fee for an application for an extension of time (Form 52) is reduced to nil.
  • The fee for the late payment of the prescribed fee for a supplementary protection certificate (Form SP2) is reduced to nil.

Amendments to the Trade Marks (Fees) Rules 2008/1958

  • The fees for an application for an extension of time (Form TM9) or a retrospective extension of time (TM9R) are reduced to nil.
  • The fee for a delayed renewal of a registration (Form TM11) is reduced to £1.
  • The fee for a request for the restoration and renewal of a registration (Form TM13) is reduced to nil.

Amendments to the Registered Designs (Fees) Rules 2016/889

  • The fee for the late renewal of a registered design (Form DF9A) is reduced to nil.
  • The fee for a request to restore a registered design (Form DF29) is reduced to nil.

The underlying renewal fees and annual fees remain unchanged, as the new rules are intended to remove late payment fees and additional surcharges, rather than removing the maintenance fees altogether.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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