New fee schedules, amended legislation, and international collaborations within the IP field
Finland
As of January 1, 2024, the Finnish Patent and Registration Office (PRH) implemented amendments to the intellectual property fee schedule with regard to patents, supplementary protection certificates, utility models, trademarks, and industrial designs.
Patents
As per the new fee schedule, the cost applicable to the filing of a patent application via the electronic system has increased by 7.5% from 400 EUR to 430 EUR. The same increase has been applied to the publication fee in cases where the translation has been filed electronically for both national patents and European Patents (EPs) validated in Finland.
The fee for a paper filing of a patent application, as well as the cost for publication in cases where the translation has been filed by paper means for both national and EPs, has risen by 8% from 500 EUR to 540 EUR. The fee for submitting a correction of a translation constitutes the same pricing inflation, now also comprising 540 EUR.
The annual validity fees for patents have also been amended, with the cost for the third year decreasing from 200 EUR to 135 EUR, constituting a 32.5% fall. The annual fee for the sixth year of validity has risen by 20% from 200 EUR to 240 EUR, the tenth by 7.5% from 400 EUR to 430 EUR, the fifteenth by approx. 8% from 650 EUR to 700 EUR and the twentieth by approx. 7% from 900 EUR to 965 EUR.
Lastly, the opposition fee in relation to patent applications has increased by 12.5% from 800 EUR to 900 EUR.
PCT
The fee for the preliminary examination of a patent application filed under the Patent Cooperation Treaty (PCT), as well as the fee for an additional preliminary examination, have inflated by approx. 8% from 600 EUR to 650 EUR. The fee payable for a decision with regard to a request for the restoration of the right of priority by the Receiving Office has inflated by approx. 11% from 450 EUR to 500 EUR.
Supplementary Protection Certificate
The fee for the filing of an application for a supplementary protection certificate (SPC), as well as the fee for an application for an extension of the term of an SPC, have risen from 500 EUR to 550 EUR, comprising a 10% inflation.
The cost payable for an initial reinstatement of an SPC has increased by approx. 29% from 70 EUR to 90 EUR, with each subsequent reinstatement rising by approx. 14% from 140 EUR to 160 EUR. The fee for each year of annuity of an SPC has inflated by approx 13% from 900 EUR to 1,020 EUR.
Utility Model
Utility model fees have also experienced a similar inflation, with the cost for registration via the online system rising by 15% from 200 EUR to 230 EUR, and registration via the paper route comprising a 12% increase from 250 EUR to 280 EUR. The fee for each additional claim over five has risen by 25% from 20 EUR to 25 EUR.
Rising by 20%, the fee for the renewal of a registration for a utility model for a period of four years now comprises 300 EUR, whilst the renewal for two years has increased by 25% to 250 EUR.
Trademarks
The fee for an application to register a trademark online now comprises 240 EUR, rising by approx. 7% from 225 EUR, whilst the cost for the same via the paper route now constitutes 290 EUR. The fee for an application to register a collective or certification mark online rose by the same percentage from 300 EUR to 320 EUR and for a paper application from 350 EUR to 370 EUR.
The cost for the renewal of a trademark registration via the electronic route has also risen by approx. 7%, now comprising 240 EUR, and renewal via the paper route increasing to 290 EUR. The fee for the renewal of a collective or certification mark has increased by approx. 7% from 300 EUR to 320 EUR for online registrations and to 370 EUR for the paper route.
Designs
The fees in relation to industrial designs have remained largely unchanged, however the cost in relation to the preliminary examination of a basic design application has risen by approx. 54% from 65 EUR to 100 EUR.
The alterations to the intellectual property fee schedule of Finland signify the first revision of IP related charges since 2020.
Hague System
As of January 1, 2024, particular fees in relation to the Hague System under the Hague Agreement Concerning the International Registration of Industrial Designs were amended.
As such, the basic fee for each additional design included in an international design application has increased by approx. 163% from 19 CHF to 50 CHF. For international design applications filed by those from least developed countries (LDCs), the fee for each additional design included in the same international application has risen by 150% from 2 CHF to 5 CHF.
Furthermore, the surcharge fee for the communication of extracts, copies, information or search reports conducted by telefacsimile, which previously constituted 4 CHF per page, has been abolished in its entirety.
United Arab Emirates
The UAE has introduced alterations to its intellectual property fee schedule which entered into effect as of January 15, 2024.
The newly implemented legislation with regard to IP fees has reintroduced several official charges that were previously abolished on April 5, 2020 in a bid to assist with supporting the economy during the COVID-19 crisis. These re-implemented fees include those in relation to IP rights publication, annual maintenance fees, and changes of legal representation.
Further, a limit has been enforced as to the maximum number of patent claims permitted in a patent application. As per the new legislation, a set of 50 claims now applies to all new patent applications.
One of the most significant changes to have been implemented due to the new legislation is the introduction of new annuity fees. Prior to the enactment of the new law, rights holders were not obligated to pay official maintenance fees, whereas the new amended legislation implements obligatory annual maintenance fees payable to ensure patent validity.
The annual fees rise in cost for each five year increment of a patent's twenty year validity period, with each year between the second to fifth comprising an annual fee of 100 AED for natural persons and SME's, years six to ten 500 AED, eleven to fifteen 1,250 AED, and sixteen to twenty 2,000 AED. Each annual fee constitutes double these amounts for legal persons.
A tiered fee structure has also been implemented with regard to patent examination, whereby there are now a total of three different examination costs which are to be applied dependent on the number of claims contained in a patent application. The previous flat fee for the examination of a patent application constituted 7,000 AED regardless of the number of claims contained therein. As per the newly established tiered system, the examination of an application containing between one and ten claims remains 7,000 AED, whilst the fee for applications containing between eleven and thirty claims now comprises 8,000 AED. Applications containing between thirty-one and fifty claims now comprise a fee of 9,000 AED.
All IP fees are now also tiered to varying degrees, depending on the applicants legal status. As such, IP applicants are now categorized as being either natural persons, companies, academic institutions, or small and medium enterprises (SMEs). This division of applicant status allows for a tiered fee structure which is hoped to contribute to a more equitable IP protection process across the board, with natural persons able to file for patent protection with a 50% discount in filing fees.
New fees have been introduced including those in relation to post-grant examination which now allows for amendments to be made following the grant of a patent provided the claims are within the allowed scope. Other charges have also been implemented in line with the new accelerated examination procedure, allowing for a more streamlined process for IP registration.
The alterations to the intellectual property fee schedule and legislation of the UAE demonstrate a movement towards a more modernized and streamlined IP system in the jurisdiction with a focus on ensuring equity between all applicants and a reliable IP service.
EAPO
Patent fees
The Eurasian Patent Organization (EAPO) enacted a new fee schedule, alongside amended legislation, in relation to intellectual property as of January 1, 2024.
As per the newly implemented schedule of fees, the cost for the filing of a Eurasian patent application now comprises 50,000 RUB, constituting an approx. 39% increase from 36,000 RUB. The updated fee for the submission of an application containing over five claims has risen to 5,500 RUB per claim, whilst the cost for each claim over the twentieth has increased to 6,000 RUB and claims over the fiftieth to 7,000 RUB.
The cost for the request of substantive examination of a Eurasian patent application in relation to a singular invention, or the first independent claim in a series of claims, has increased by 25% from 40,000 RUB to 50,000 RUB, as has the fee for the examination of a second independent claim which rose from 25,000 RUB to 30,000 RUB. The fee in relation to the third and each subsequent claim thereafter has risen by an approx 15% from 13,000 RUB to 15,000 RUB.
The cost payable for the granting and publication of a Eurasian patent has increased by 20% to 30,000 RUB from 25,000 RUB.
Industrial design fees
Whilst the costs in relation to Eurasian industrial designs have largely remained unchanged, the fee for the filing of a basic industrial design application has inflated by 20% from 25,000 RUB to 30,000 RUB, whilst the cost for the granting and registration of a basic industrial design has risen by 50% from 20,000 RUB to 30,000 RUB.
For applications containing multiple designs, the filing fee for each design from the second to the tenth comprises a fee of 15,000 RUB and each subsequent design thereafter 7,500 RUB. The same fees are payable for the costs associated with the granting of industrial designs.
Legislative amendments
The newly implemented legislation has made several amendments to the patent and industrial design procedures before the EAPO.
According to the amended law, a new time limit has been implemented in relation to the submission of patent claims in cases where a basic or divisional Eurasian patent application was initially submitted to the EAPO in absence of the claims. As such, any missing claims for filed applications may be submitted no later than two months from the date of receipt of the application by the Receiving Eurasian Office. Should the claims not be submitted within the prescribed time limit, the Eurasian patent application will be deemed withdrawn.
Further amendments to time limits have been implemented with regard to the filing of oppositions. As per the new procedures, the time limit for the filing of an opposition to a Eurasian patent or industrial design application is now set at three years from the date of publication of the grant, a considerable expansion on the previous time limit of 9 months.
Other legislative areas that have seen advancements include the clarification of the substantive examination criteria for industrial designs. According to the new law, the EAPO will assess the criteria of novelty as per the information available to the EAPO directly or by information obtained by the EAPO in the course of other examinations within the scope of the Patent Regulations.
Georgia
As of January 15, 2024, it is now possible to validate European patents (EPs) in Georgia. This move comes after the enforcement of legislative advancements in the form of an Agreement between the Government of Georgia and the European Patent Organization on the Validation of European Patents.
Prior to the possibility of obtaining EPs validated in Georgia, applicants hoping to obtain patent protection in the jurisdiction were only able to either submit an application directly with the national IPO, or submit an international application by way of the PCT.
The introduction of EP validation in Georgia will undoubtedly assist applicants from across the globe by paving the way for a more efficient process of obtaining patent protection in Georgia, as well as reinforcing the importance of cooperation throughout the IP field of the region.
PPH
A new Patent Prosecution Highway (PPH) program is set to enter into force with respect to the French INPI and the Saudi Intellectual Property Authority (SAIP) on April 30, 2024 following the signing of an agreement between the two offices in November 2023.
The PPH program between the INPI and SAIP will soon allow patent applicants whose claims have been examined by one of the offices to request the expedited processing of their application with the other office. This acceleration of patent applications is accomplished through the sharing of existing examination results from the Office of First Filing with the Office of Second Filing, thus eliminating the need for both offices to undertake separate examinations of the same application, causing duplication.
The sharing of examination data with regard to patent applications not only provides for an accelerated turn-around time for processing and registration, but increases efficiency and allows IP offices to prioritize their resources as needed.