Patents, Trade Marks and Designs (Fees) Rules, 2001

• Jurisdiction: Ireland
• Year: 2001
• Citation: IR SI 482/2001

I, Tom Kitt, Minister of State at the Department of Enterprise, Trade and Employment, in exercise of the powers conferred on me by sections 99 and 114 of the Patents Act, 1992 (No. 1 of 1992), sections 81 and 82 of the Trade Marks Act, 1996 (No. 6 of 1996), (as adapted by the Enterprise and Employment (Alteration of Name of Department and Title of Minister) Order, 1997 ( S.I. No. 305 of 1997 ), and the Enterprise, Trade and Employment (Delegation of Ministerial Functions) (No. 2) Order, 1997 ( S.I. No. 330 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 and Designs (Fees) Rules, 2001.

(2) These Rules shall come into operation on 1 January 2002.

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

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

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

“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, or

(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 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 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;

“Schedule” means a Schedule to these Rules;

“trade mark” has the meaning assigned to it by section 6 of the Act of 1996;

“trade mark agent” has the meaning assigned to it by section 83(1) of the Act of 1996.

(2) In Schedules 1, 2, 3, 4 and 5, 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, and

(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. (1) There is prescribed in respect of the Act of 1992 and the Patents Rules, 1992 ( S.I. No. 179 of 1992 ) the fee specified in column (3) of Schedule 1 in respect of each matter mentioned in column (2) opposite the reference number concerned.

(2) There is prescribed in respect of the Act of 1992 and the Register of Patent Agents Rules, 1992 ( S.I. No. 180 of 1992 ) the fee specified in column (3) of Schedule 2 in respect of each matter mentioned in column (2) opposite the reference number concerned.

(3) There is prescribed in respect of the Act of 1996 and the Trade Mark Rules, 1996 ( S.I. No. 199 of 1996 ) the fee specified in column (3) of Schedule 3 in respect of each matter mentioned in column (2) opposite the reference number concerned.

(4) There is prescribed in respect of the Act of 1927 and the Industrial Property Rules, 1927 ( S.R. & O. No. 78 of 1927 ) the fee specified in column (3) of Schedule 4 in respect of each matter mentioned in column (2) opposite the reference number concerned.

(5) Where a person has paid the prescribed fee in respect of the matter at reference number 60 of Schedule 1 that person shall not be required to pay the prescribed fee in relation to the matter at reference number 37 of Schedule 3.

(6) Where a person has paid the prescribed fee in respect of the matter at reference number 37 of Schedule 3 that person shall not be required to pay the prescribed fee in relation to the matter at reference number 60 of Schedule 1.

4. The European Communities (Community Trade Mark) Regulations, 1996 ( S.I. No. 10 of 1996 ) are amended in Regulation 2 by the substitution for “ £20” of “€25”.

5. Fees prescribed by these Rules shall be paid in the currency of the State as provided for by section 24 of the Central Bank Act, 1989 (No. 16 of 1989), as amended by section 6 of the Economic and Monetary Union Act, 1998 (No. 38 of 1998).

6. The Rules mentioned in column (2) of Schedule 5 are revoked to the extent specified in column (3) of that Schedule.

SCHEDULE 1

Rule 3

Fees payable under the Patents Act, 1992 (No. 1 of 1992), and the Patents Rules, 1992

( S.I. No. 179 of 1992 )

Reference Number Item Amount € (1) (2) (3) 1. On filing an application Under Part II - section 18(3) 125.00 Under Part III - section 63(8) 60.00 2. On request for the Controller's certificate authorising the release of a sample of deposited culture - paragraphs (6) and (16) of Rule 14 12.00 3. Additional fee under Rule 21(2) For the first month. 125.00 For the second month. 190.00 4. On application for extension of time of one month for filing copy of previous application required for claiming priority - Rule 22(2). 12.00 5. Fee in connection with previous application filed at the Office - Rule 22(4). 12.00 6. On request for a search Under section 29(1). 361.00 Under section 29(2). 361.00 7. On submitting evidence under section 30 - Rule 27(2). 86.00 8. On request for an extension of time under Rule 27(4) For each month of extension. 12.00 9. Fee for the grant of a patent Where the patent application was filed under Part II. 64.00 Where the patent application was filed under Part III. 30.00 10. On application for extension of time for payment of the fee for grant of a patent - Rule 29 For each month of extension. 19.00 11. On application to amend the request for grant - Rule 30. 12.00 12. On application for leave to amend the description, claims or drawings - Rule 31(3). 30.00 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. 60.00 In respect of the 4th year. 90.00 In respect of the 5th year. 114.00 In respect of the 6th year. 134.00 In respect of the 7th year. 150.00 In respect of the 8th year. 176.00 In respect of the 9th year. 194.00 In respect of the 10th year. 220.00 In respect of the 11th year. 242.00 In respect of the 12th year. 265.00 In respect of the 13th year. 285.00 In respect of the 14th year. 311.00 In respect of the 15th year. 335.00 In respect of the 16th year. 356.00 In respect of the 17th year. 382.00 In respect of the 18th year. 408.00 In respect of the 19th year. 438.00 In respect of 20th year. 468.00 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 1st month. 11.00 For the 2nd month. 11.00 For the 3rd month. 11.00 For the 4th month. 19.00 For the 5th month. 19.00 For the 6th month. 19.00 15. On application for the restoration of a lapsed patent or patent application - Rule 35.

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