S.I. No. 433/1997 -- Patents, Trade Marks, Copyright and Designs (Fees) Rules, 1997

S.I. No. 433/1997 -- Patents, Trade Marks, Copyright and Designs (Fees) Rules, 1997 1997 433

S.I. No. 433/1997:

PATENTS, TRADE MARKS, COPYRIGHT AND DESIGNS (FEES) RULES, 1997

I, MARY HARNEY, Minister for Enterprise, Trade and Employment, in exercise of the powers conferred on me by sections 99 and 114 of the Patents Act, 1992 (No. I of 1992), sections 81 and 82 of the Trade Marks Act, 1996 (No. 6 of 1996), and the Enterprise and Employment (Alteration of Name of Department and Title of Minister) Order, 1997 ( S.I. No. 305 of 1997 ), and with the sanction of the Minister for Finance, hereby make the following Rules:

1. (1) These Rules may be cited as the Patents, Trade Marks, Copyright and Designs (Fees) Rules, 1997.

(2) These Rules shall come into operation on the 1st day of November, 1997.

2. (1) In these Rules, unless the context otherwise requires -

"the Act of 1927" means the Industrial and Commercial Property (Protection) Act, 1927 (No. 16 of 1927);

"the Act of 1992" means the Patents Act, 1992 (No. 1 of 1992);

" the Act of 1996" means the Trade Marks Act, 1996 (No. 6 of 1996);

"article" means any article of manufacture and any substance artificial or natural or partly artificial and partly natural;

"certification mark" has the meaning assigned to it by section 55 of the act of 1996; "collective mark" has the meaning assigned to it by section 54 of the act of 1996;

"copyright", when used in relation to a design registered under Part III of the Act of 1927, means the exclusive right to apply the design to any article in any class in which the design is registered;

"Court" means the High Court;

"design" means only the features of shape, configuration, pattern or ornament applied to any article by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye, but does not include any mode or principle of construction, or anything which is in substance a mere mechanical device;

"designating" means -

(i) in relation to an application for a patent, designating (in pursuance of the European Patent Convention or the Treaty, as the case may be) the state or states in which protection is sought for an invention,

(ii) in relation to a patent, designating (in pursuance of the European Patent Convention) the state or states in which the patent has effect;

"European patent" means a patent granted under the European Patent Convention;

"European Patent Bulletin"' means the bulletin of that name published under the European Patent Convention;

"European Patent Convention" means the Convention on the Grant of European Patents signed at Munich on the 5th day of October, 1973;

"international application for a patent" means an application made under the Treaty; "patent" means an exclusive right conferred pursuant to Part II or Part III of the Act of 1992;

"patent agent" has the meaning assigned to it by section 105 of the Act of 1992;

"patent application" means an application under Part II or Part III of the Act of 1992 for a patent;

"proprietor", in relation to a patent, means the person to whom the patent was granted or the person whose title is subsequently registered under section 85 of the Act of 1992;

"published" -

( a ) in relation to any document which is required to be published under the Act of 1992, means made available to the public and includes the making available for inspection of the document as of right, at the Office and such other place (if any) as may be for the time being specified for the purpose by the Minister, by the public, whether on payment of a fee or not, and

( b ) in relation to any other document, matter, record or information which the Controller is authorised to publish, means made available to the public and includes the making available of the document, matter, record or information in any form at the Office and such other place (if any) as may be for the time being specified for the purpose by the Minister, whether on payment of a fee or not;

"right", in relation to any patent or application, includes an interest in the patent or application and, without prejudice to the foregoing, any reference in these Rules to a right in a patent includes a reference to a share in the patent;

"Schedule" means a Schedule to these Rules; "trade mark" has the meaning assigned to it by section 6 of the act of 1996;

"the Treaty" means the treaty known as the Patent Co-operation Treaty signed at Washington on the 19th day of June, 1970.

(2) In Schedules I, II, III, IV and V, unless otherwise indicated -

( a ) a reference to a section or Part is a reference to a section or Part of the Act specified in the heading of that Schedule,

( b ) a reference to a Rule is a reference to a Rule of the Rules specified in the heading of that Schedule.

(3) In these Rules, a reference to any statute or rules shall be construed as a reference to that statute or those rules as amended, adapted or extended by or under any subsequent statute or rules including these Rules.

3. There are hereby prescribed in respect of each item specified in column (2) of Schedules I, II and III at any reference number specified in column (1) of that Schedule the fee specified in column (3) thereof at that reference number.

4. There are hereby prescribed in respect of each item specified in column (2) of Schedule IV at any reference number specified in column (1) thereof the fee specified in column (3) thereof at that reference number and references to a fee in the Copyright Act, 1963 (No. 10 of 1963), and the Copyright (Proceedings before the Controller) Rules, 1964 ( S.I. No. 204 of 1964 ), shall be construed accordingly.

5. There are hereby prescribed in respect of each item specified in column (2) of Schedule V at any reference number specified in column (1) thereof the fee specified in column (3) thereof at that reference number and references to a fee in Parts III and V of the Act of 1927 and the industrial Property Rules, 1927 ( S. R. & O. No. 78 of 1927 ), shall be construed accordingly.

6. Fees shall be paid in the currency of the State.

7. (1) Rule 33 of the Patents Rules, 1992 ( S.I. No. 179 of 1992 ), is hereby amended by the substitution of the following paragraph for paragraph (1):

"(1) The prescribed application renewal fee shall be due in respect of each year during any part of which an application is pending commencing with the fee prescribed in respect of the third year from the date of the filing of the patent application and shall be payable on or before the last day of the month in which that year commences.".

(2) This Rule shall apply in respect of application renewal fees paid after the commencement of these Rules.

8. The Rules mentioned in column (2) of Schedule VI are hereby revoked to the extent specified in column (3) of that Schedule.

SCHEDULE I

Rule 3

Fees payable under the Patents Act, 1992 , and the Patents Rules, 1992.

Reference Number (1)

Item (2)

Amount £ (3)

On filing an application

Under Part II - section 18 (3).

Under Part III - section 63 (8).

100.00

50.00

On request for the Controller's certificate authorising the

release of a sample of deposited culture paragraphs (6) and

(16) of Rule 14.

10.00

Additional fee under Rule 21 (2)

For the first month.

For the second month,

100.00

150.00

On application for extension of time of one month for filing

copy of previous application required for claiming priority

Rule 22 (2).

10.00

Fee in connection with previous application filed at the Office

Rule 22 (4).

10.00

On request for a search

Under section 29 (1)

Under section 29 (2)

285.00

On submitting evidence under section 30 Rule 27 (2)

68.00

On request for an extension of time under Rule 27 (4)

For each month of extension

10.00

Fee for the grant of a patent

Where the patent application was filed under Part II.

Where the patent application was filed under Part III.

51.00

25.00

On application for extension of time for payment of the fee for grant of a patent Rule 29

For each month of extension.

15.00

11.

On application to amend the request for grant Rule 30.

10.00

12.

On application for leave to amend the description, claims or

drawings Rule 31 (3).

25.00

13.

For renewal of an application for a patent (Rule 33) or for

renewal of a patent (Rule 34)

Where the patent application was filed under Part II

In respect of the 3rd year.

In respect of the 4th year.

In respect of the 5th year.

In respect of the 6th year.

In respect of the 7th year.

In respect of the 8th year.

In respect of the 9th year.

In respect of the 10th year.

In respect of the 11th year.

In respect of the 12th year.

In respect of the 13th year.

In respect of the 14th year.

In respect of the 15th year.

In respect of the 16th year.

In respect of the 17th year.

In respect of the 18th year.

In respect of the 19th year.

In respect of the 20th year.

50.00

72.00

90.00

106.00

122.00

140.00

154.00

174.00

191.00

209.00

225.00

245.00

264.00

281.00

301.00

322.00

345.00

369.00

Where the patent application was filed under Part III

In respect of the

3rd to the 10th

years, one half

of the renewal

fees

specified above

14.

On request for extension of period for payment of renewal

fees sections 35 (2) and 36 (3)

For the first month.

For the second month

For the third month

For the fourth month

For the fifth month

For the sixth month

9.00

15.00

15.

On application for the restoration of a lapsed patent or patent

application Rule 35.

60.00

16.

On opposition to the restoration of a patent or patent

application Rule 36.

10.00

17.

Additional fee on restoration of a patent or patent application

Rule 37.

20.00

18.

On application to amend the specification of a patent

Rule 39(1).

50.00

19.

On notice of opposition to the amendment of the specification

of a patent Rule 39 (3).

20.00

20.

On notice of opposition to the surrender of a patent-

Rule 40 (3).

40.00

21.

On application to the Controller for the revocation of a patent

Rule 41 (1).

100.00

22.

On application for entry in the Register of Patents that

licences are to be available as of right Rule 46.

20.00

23.

On application for settlement of terms of a licence of right-

Rule 47 (1).

200.00

24.

On application by the proprietor of a patent under section

69 (1) for cancellation of entry in the Register of Patents-

Rule 48 (1).

40.00

25.

On application under section 69 (2) for cancellation of entry

in the Register of Patents Rule 48 (2).

40.00

26.

On notice of opposition to cancellation of entry in the

20.00

27.

On application for compulsory licence or entry in the Register

of Patents under section 70 (1) or section 72 (1) Rule 50.

250.00

28.

On notice of opposition under section 73 (3) Rule 52 (2).

40.00

29.

For inspection of the Register of Patents Rule 56

For each quarter of an hour or part thereof.

1.50

30.

On request for alteration of name, nationality, address or

address for service in the Register of Patents Rule 57

For each application or patent.

8.00

31.

On application or claim under section 85 Rule 58 (1).

For each additional patent or application where the

devolution of title is the same as in the first patent or

application.

40.00

5.00

On application for cancellation of entry of interest in the

5.00

33.

On application to the Controller under section 86 (7)

for rectification of the Register of Patents Rule 61 (1)

40.00

34.

On request for certificate of the Controller under Rule 62.

10.00

35.

For each document annexed to a certificate requested under

Rule 62.

10.00

36.

On request for copy or extract Rule 63.

For each page.

3.00

0.50

37.

On request for information Rule 64 (3)

For each item

5.00

38.

For inspection of documents Rule 65 (I)

For each quarter of an hour or part thereof.

1.50

39.

On request for a search Rule 66 (1).

10.00

40.

Fee for conducting a search Rule 66 (4)

For each estimated hour of search time.

75.00

41.

On application for a hearing - Rule 68(1).

20.00

42.

On notice that hearing will be attended Rule 68 (2).

20.00

43.

On request to the Controller to state grounds of his decision-

Rule 69 (2).

75.00

44.

On application for the correction of an error or mistake-

Rule 82

5.00

45.

On filing translation of specification of European patent

designating the State or of such a specification as amended-

section 119 (6).

30.00

46.

On filing translation of claims of an application for a

European patent designating the State section 120 (6).

30.00

47.

For publication by the Office of a corrected translation filed under section 121 (3) Rule 85.

30.00

48.

On request for conversion of European patent application-

Rule 86 (1).

25.00

49.

Transmittal fee on filing an international application for a

patent at the Office Rule 87 (1).

60.00

50.

For preparation of copies of international applications for

a patent Rule 87(2)

For each page comprising the application.

0.50

51.

On request for a certified copy of an international application

for a patent Rule 87 (6).

20.00

52.

On application for extension of time under Rule 98

For each month of extension.

25.00

53.

On application for reinstatement of an application-

Rule 99 (2).

75.00

54.

On application for insertion of notice in the Journal for the

purposes of section 13 (7) of the Copyright Act, 1963 .

5.00

55.

For reproductions of patent applications filed at the Office

and open to inspection

For each page required.

0.25

56.

For reproductions of any other published patent documents

made available at the Office and which the Controller

indicates, by notice in the Journal from time to time, are

available for reproduction

For each page.

0.25

57.

For reproductions of entries in the Register of Patents

For each page.

0.25

58.

For inspection of any classified indices of published patent

applications or patents or any patent documents made

available at the Office

For each quarter of an hour or part thereof.

1.50

SCHEDULE II

Rule 3

Fees payable under the Patents Act, 1992 , and the Register of Patent Agents Rules, 1992 ( S.I. No. 180 of 1992 ).

Reference Number (1)	Item (2)	Amount £ (3)
1.	On application for entry in the register of patent agents (Rule 5).	40.00
2.	For tests considered necessary by a Board constituted under Rule 6(3) For each subject tested.	50.00
3.	For entry in the register of patent agents (Rule 8).	50.00
4.	Annual fee for registration as patent agent payable before the 31^st day of December in each year in respect of the following year (Rule 10).	100.00

SCHEDULE III

Rule 3

Fees payable under the Trade Marks Act, 1996 (No. 6 of 1996), and the Trade Marks Rules, 1996 ( S.I. No. 199 of 1996 ).

Reference Number (1)	Item (2)	Amount £ (3)
1.	On application to register a trade mark under section 37	60.00
2.	Class fees - (i) for each class over one. (ii) for each additional class to which Rule 14(3) refers	60.00 60.00
3.	(i) On notification under Rule 25 (2) or Rule 61 (3) of intention to appear at a hearing. (ii) On application for a hearing (Rule 61(2)).	5.00 50.00
4.	On giving notice of opposition - (i) to the registration of a mark (Rule 18), (ii) to the regulations relating to a collective or certification mark (Rule 31(4) or Rule 33(4)(b)), or (iii) to the alteration of a registered trade mark (Rule 35).	50.00
5.	On lodging a counter statement (Rule 19).	30.00
6.	On request for a written statement of the grounds of a decision made by the Controller (Rule 27(2)).	150.00
7.	On notice under section 44(1) to restrict the goods or services covered by an application or on request under section 44(3) to amend an application.	30.00
8.	On request for division of an application (Rule 28).	100.00
9.	On request to merge separate applications or registrations (Rule 29).	100.00
10.	On filing of regulations governing the use of a collective or certification mark (Rule 31 (1) or Rule 33 (1)).	100.00
11.	On submission of amended regulations governing the use of a registered collective mark (Rule 32) or on request to amend regulations governing the use of a registered certification mark (Rule 34).	100.00
12.	On notification of surrender of a registered trade mark (Rule 36).	50.00
13.	(i) Renewal of registration (Rule 38). (ii) Class fee for each class over one. (iii) Additional fee for renewal of registration (Rule 39(1)).	200.00 100.00 50.00
14.	Restoration fee payable upon a request under Rule 40 (1).	100.00
15.	On application to the Controller (Rule 41) - (i) for revocation, or a declaration of invalidity, of a registration of a mark. (ii) for rectification of an error or omission in the Register of Trade Marks kept under the Act of 1996.	100.00 20.00
16.	On request for a change in the Register of Trade Marks kept under the act of 1996 of a name or address or both (Rule 49(1)) (i) for one mark. (ii) for every other mark included in the request.	12.00 5.00
17.	On request under Rule 48 For a certified copy or extract.	20.00
18.	On request for alteration of a trade mark (Rule 35).	50.00
19.	On request for information about an application or a registered trade mark (section 70 (1) and Rule 60) For each item of information requested.	20.00
20.	For extensions of time requested on the basis of Rule 63 (4) For each month of extension of the time or period referred to in Rule 63 (1) requested.	100.00
21.	On application to register a transaction under section 29 (Rule 45) and on notice under section 31 (Rule 46)-- (i) for one mark. (ii) for each other mark included in the application or notice.	50.00 5.00
22.	For registration of a trade mark- (i) where the application is dealt with in accordance with the Trade Marks Act, 1963 (No. 9 of 1963). (ii) in any other case.	81.00 140.00
23.	On request for a search under Rule 71 in respect of one class	30.00
24.	For making a search by means of the Office's computerised trade mark search system, of the classified representations of trade mark data, kept at the Office on computer and open to public inspection, and for a printout or output to electronic media or paper of the results of the search- (i) for each quarter of an hour or part thereof. (ii) for each record in excess of 30 relating to a trade mark in the computer printout to paper.	10.00 0.25
25.	For inspection of all or any part of the Register of Trade Marks kept under the act of 1996available on computer For each quarter of an hour of part thereof.	10.00
26.	For (i) inspection of the Register of Trade Marks kept under the act of 1996or any document open to public inspection, or (ii) making a search amongst such classified representations of trade marks as are made available on paper For each quarter of an hour or part thereof.	2.50
27.	For computer printout or output to electronic media or paper of trade mark data open to public inspection other than as at reference number 24-- (i) for each trade mark record in respect of which data is requested other than as at (ii). (ii) for each trade mark record sought on the basis of time period or sequence number, by persons complying with conditions imposed by the Controller, the fees set out as at reference number 29.	20.00
28.	For access, by means of telephone or other data transmission media from outside the Office, to the information specified at reference numbers 24 and 25 for the purpose of searching or inspecting such information and for a computer printout of the results of the search, the appropriate fee set out at those reference numbers, and in addition.	250.00
29.	On application for an authorisation under Rule 77, and (i) in the case of a search of the trade mark database made available under Rule 77 carried out by a person other than the licensee, an additional fee of 20 per cent. of any fee charged by the licensee for the use of that database. (ii) in the case of such a search by the licensee, an additional fee of £7 in respect of the search of the first class and £1 in respect of each subsequent class.	100.00
30.	For photocopying documents open to public inspection Per page.	0.25
31.	For certifying office copies, manuscripts typed, printed or photographic, each.	3.00
32.	On request for a certificate for use in connection with applications for registration abroad (Rule 5).	20.00
33.	On application for registration in the Register of Trade Mark Agents (Rule 51 (1)).	200.00
34.	For registration in the Register of Trade Mark Agents (Rule 53 (a)).	100.00
35.	Annual fee for renewal of registration as a trade mark agent payable before the 1st day of December each year in respect of the following year (Rule 55).	200.00
36.	On request to the Controller for the removal from the Register of Trade Marks kept under the act of 1996 of matter which has ceased to have effect- (i) where only one mark is affected. (ii) in respect of every other affected mark covered by the request.	20.00 5.00

SCHEDULE IV

Rule 4

Fees payable under the Copyright Act, 1963 , and the Copyright (Proceedings before the Controller) Rules, 1964.

Reference Number (1)	Item (2)	Amount £ (3)
1.	On a reference or application specified in Rule 4.	400.00
2.	On lodgement of a counter statement under Rule 7.	300.00
3.	On application to be made a party specified in Rule 10.	200.00
4.	On notification of intention to attend a hearing by any party under Rule 13.	30.00
5.	On application for special leave to make a further reference specified in Rule 9	200.00
6.	On an objection specified in Rule 11 to a reference or to the joining of a party on grounds that the applicant is not fully representative.	50.00

SCHEDULE V

Rule 5

Fees payable under the Industrial and Commercial Property (Protection) Act, 1927 , and the Industrial Property Rules, 1927.

Reference Number (1)	Item (2)	Amount £ (3)
1.	On application to register one design to be applied to a single article in a class.	50.00
2.	On application to register one design to be applied to a set of articles in a class.	100.00
3.	On request for correction of a clerical error.	10.00
4.	On request to amend an application for registration.	20.00
5.	For extension of period of copyright for a second period of five years.	120.00
6.	For extension of period of copyright for a third period of five years.	180.00
7.	On application for cancellation of a registration.	16.00
8.	On application for an extension of time for completion of the registration of a design, or for the payment of a fee for the extension of the period of copyright in a design, not exceeding the permitted extension, for each month.	12.00
9.	On notice of opposition to the entry in the register of designs kept at the Office pursuant to the Act of 1927 of a disclaimer or memorandum relating to a design.	20.00
10.	On application for entry in the register of designs kept at the Office pursuant to the Act of 1927 of the name of a subsequent proprietor of a registered design or of notice of licence or other document- (i) if made within six months of the acquisition of the interest: In respect of one entry For each additional similar entry. (ii) if made subsequently: In respect of one entry. For each additional similar entry.	16.00 5.00 24.00 5.00
11.	On application by the proprietor of a registered design for cancellation of an entry or for the rectification of the register of designs kept at the Office pursuant to the Act of 1927 not otherwise charged or by a licensee or other person having a registered interest for removal of his name.	16.00
12.	On application by the proprietor of a registered design to alter a name or address or address for service or to enter a second address for service in the register of designs kept at the Office pursuant to the Act of 1927 when there has been no change of proprietorship For one entry. For each additional similar entry.	4.00 2.00
13.	On application under section 129(6) by a person other than the registered proprietor of a design for the rectification of the register of designs kept at the Office pursuant to the Act of 1927.	12.00
14.	On lodgement of notice of Order of Court, Rule 174	4.00
15.	On notice of intention to publish an unregistered design at an exhibition under section 76.	4.00
16.	On notice of intention to attend at a hearing by the Controller in any proceedings referred to in Rule 155, by each party.	8.00
17.	On application for leave to intervene in any proceedings before the Controller.	8.00
18.	On application to the Controller to state grounds of decision under Rule 87.	72.00
19.	For certificate of the Controller under Rule 148.	12.00
20.	For certified extract from the register of designs kept at the Office pursuant to the Act of 1927.	12.00
21.	For typed office copies of a document, for each 100 words or less.	2.50
22.	For photocopying documents, for each page.	0.25
23.	For certifying office copies MSS, typed, printed or photographic, each.	2.50
24.	On application under section 74 when registered number of design is furnished.	6.00
25.	On application under section 74 when registered number of design is not furnished.	12.00
26.	For inspection of the register of designs kept at the Office pursuant to the Act of 1927 or other document open to inspection (except inspection under the second paragraph of section 73(1)) for every quarter of an hour	1.50
27.	On application under Rule 86 or 151 for a hearing.	33.00

SCHEDULE VI

Rule 8 Rules Revoked

Statutory Instrument Number and Year (1)	Title (2)	Extent of Revocation (3)
S. R. & O. No. 78 of 1927	Industrial Property Rules, 1927	Rules 4 and 5; Sixth Schedule (as amended by Rule 3 of the industrial Property Rules, 1927 (Amendment) Rules, 1987 ( S.I. No. 332 of 1987 ))
S .1. No. 204 of 1964	Copyright (Proceedings before the Controller) Rules, 1964	Rules 4 (1), 7, 9, 10(a), 11(3) and 13 (a) in so far as they contain the words "specified in the Schedule to these Rules"; Rules 16 and 17; Schedule (inserted by the Copyright (Proceedings before the Controller) Rules, 1964 (Amendment) Rules, 1993 ( S.I. No. 218 of 1993 ))
S.I. No. 45 of 1985	Patents (Amendment) Rules, 1985	The whole of the Rules
S.I. No. 179 of 1992	Patents Rules, 1992	Paragraphs (1), (2), (3) and (5) of Rule 89 in so far as they relate to the fees specified in Schedule 1 of the Patents Rules, 1992
S.I. No. 180 of 1992	Register of Patent Agents Rules, 1992	Rules 3 and 4
S.I. No. 199 of 1996	Trade Marks Rules, 1996	Paragraphs (1), (2), (3) and (4) of Rule 4

GIVEN under my Official Seal,

this 9th day of October, 1997.

MARY HARNEY

Minister for Enterprise, Trade and Employment.

The Minister for Finance hereby sanctions the foregoing Rules.

GIVEN under the Official Seal of the Minister for Finance,

this 9th day of October, 1997.

CHARLIE McCREEVY

Minister for Finance.

EXPLANATORY NOTE

These Rules, made under sections 99 and 114 of the Patents Act, 1992 , and sections 81 and 82 of the Trade Marks Act, 1996 , rationalise certain patent fees, i.e. the fees for renewal of patent applications and granted patents are combined into a single stream of fees which become payable from the commencement of the third year from the date of filing. The Rules also provide for certain revisions of existing fees payable in respect of patents and trade marks. Unlike previous fee Rules, the present Rules do not specify the manner of payment of fees, leaving this as a matter to be determined administratively by the Minister for Enterprise, Trade and Employment with the consent of the Minister for Finance; thus there will be more flexibility as to how fees may be paid in future.

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Irish Statutory Instruments

S.I. No. 433/1997 -- Patents, Trade Marks, Copyright and Designs (Fees) Rules, 1997