S.I. No. 403/1999 - Patents and Trade Marks (Fees) Rules, 1999.

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. 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 and Trade Marks (Fees) Rules, 1999.

(2) These Rules shall come into operation on the 20th day of December, 1999.

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

“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);

“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;

“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 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 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;

“1992 Rules” means the Patents Rules, 1992 ( S.I. No. 179 of 1992 );

“1996 Rules” means the Trade Mark Rules, 1996 ( S.I. No. 199 of 1996 );

“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 Schedule I, and II, 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. (1) There is hereby prescribed in respect of the Act of 1992 and the 1992 Rules the fee specified in column (3) or (4) of Schedule 1 in respect of each matter mentioned in column (2) opposite the reference number concerned.

(2) There is hereby prescribed in respect of the Act of 1996 and the 1996 Rules the fee specified in column (3) or (4) of Schedule 2 in respect of each matter mentioned in column (2) opposite the reference number concerned.

(3) 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 2.

(4) Where a person has paid the prescribed fee in respect of the matter at reference number 37 of Schedule 2 that person shall not be required to pay the prescribed fee in relation to the matter at reference number 60 of Schedule 1.

4. 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).

5. Schedules I and III to, and so much of Rule 3 as relates to those Schedules of, the Patents, Trade Marks, Copyright and Designs (Fees) Rules, 1997 ( S.I. No. 433 of 1997 ) are hereby revoked.

SCHEDULE 1

Rule 3

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

Reference Number	Item	Amount £	Amount €
(1)	(2)	(3)	(4)
1.	On filing an application
	Under Part II — section 18 (3).	100.00	126.97
	Under Part III — section 63 (8).	50.00	63.49
2.	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	12.70
3.	Additional fee under Rule 21 (2)
	For the first month.	100.00	126.97
	For the second month.	150.00	190.46
4.	On application for extension of time of one month for filing copy of previous application required for claiming priority — Rule 22 (2).	10.00	12.70
5.	Fee in connection with previous application filed at the Office — Rule 22 (4).	10.00	12.70
6.	On request for a search
	Under section 29 (1).	285.00	361.88
	Under section 29 (2).	285.00	361.88
7.	On submitting evidence under section 30 — Rule 27 (2).	68.00	86.34
8.	On request for an extension of time under Rule 27(4)
	For each month of extension.	10.00	12.70
9.	Fee for the grant of a patent
	Where the patent application was filed under Part II.	51.00	64.76
	Where the patent application was filed under Part III.	25.00	31.74
10.	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	19.05
11.	On application to amend the request for grant — Rule 30.	10.00	12.70
12.	On application for leave to amend the description, claims or drawings — Rule 31 (3).	25.00	31.74
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.	50.00	63.49
	In respect of the 4th year	72.00	91.42
	In respect of the 5th year	90.00	114.28
	In respect of the 6th year	106.00	134.59
	In respect of the 7th year	122.00	154.91
	In respect of the 8th year	140.00	177.76
	In respect of the 9th year	154.00	195.54
	In respect of the 10th year	174.00	220.93
	In respect of the 11th year	191.00	242.52
	In respect of the 12th year	209.00	265.38
	In respect of the 13th year	225.00	285.69
	In respect of the 14th year	245.00	311.09
	In respect of the 15th year	264.00	335.21
	In respect of the 16th year	281.00	356.80
	In respect of the 17th year	301.00	382.19
	In respect of the 18th year	322.00	408.86
	In respect of the 19th year	345.00	438.06
	In respect of the 20th year	369.00	468.53
	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.	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.	9.00	11.43
	For the second month.	9.00	11.43
	For the third month.	9.00	11.43
	For the fourth month.	15.00	19.05
	For the fifth month.	15.00	19.05
	For the sixth month.	15.00	19.05
15.	On application for the restoration of a lapsed patent or patent application — Rule 35.	60.00	76.18
16.	On opposition to the restoration of a patent or patent application — Rule 36.	10.00	12.70
17.	Additional fee on restoration of a patent or patent application — Rule 37.	20.00	25.39
18.	On application to amend the specification of a patent — Rule 39 (1).	50.00	63.49
19.	On notice of opposition to the amendment of the specification of a patent — Rule 39 (3).	20.00	25.39
20.	On notice of opposition to the surrender of a patent — Rule 40 (3).	40.00	50.79
21.	On application to the Controller for the revocation of a patent — Rule 41 (1).	100.00	126.97
22.	On application for entry in the Register of Patents that licences are to be available as of right — Rule 46.	20.00	25.39
23.	On application for settlement of terms of a licence of right — Rule 47 (1).	200.00	259.95
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	50.79
25.	On application under section 69 (2) for cancellation of entry in the Register of Patents — Rule 48 (2).	40.00	50.79
26.	On notice of opposition to cancellation of entry in the Register of Patents — Rule 49 (2).	20.00	25.39
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	317.43
28.	On notice of opposition under section 73 (3) — Rule 52 (2).	40.00	50.79
29.	For inspection of the Register of Patents — Rule 56	1.50	1.90
	For each quarter of an hour or part thereof.
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	10.16
31.	On application or claim under section 85 — Rule 58 (1).	40.00	50.79
	For each additional patent or application where the devolution of title is the same as in the first patent or application.	5.00	6.35
32.	On application for cancellation of entry of interest in the Register of Patents — Rule 59 (1).	5.00	6.35
33.	On application to the Controller under section 86 (7) for rectification of the Register of Patents — Rule 61 (1).	40.00	50.79
34.	On request for certificate of the Controller under Rule 62.	10.00	12.70
35.	For each document annexed to a certificate requested under Rule 62.	10.00	12.70
36.	On request for copy or extract — Rule 63.	3.00	3.81
	For each page.	0.50	0.63
37.	On request for information — Rule 64 (3) For each item.	5.00	6.35
38.	For inspection of documents — Rule 65 (1) For each quarter of an hour or part thereof.	1.50	1.90
39.	On request for a search — Rule 66 (1).	10.00	12.70
40.	Fee for conducting a search — Rule 66 (4) For each estimated hour of search time.	75.00	95.23
41.	On application for a hearing — Rule 68 (1).	20.00	25.39
42.	On notice that hearing will be attended — Rule 68 (2).	20.00	25.39
43.	On request to the Controller to state grounds of his decision — Rule 69 (2).	75.00	95.23
44.	On application for the correction of an error or mistake — Rule 82.	5.00	6.35
45.	On filing translation of specification of European patent designating the State or of such a specification as amended — section 119 (6).	30.00	38.09
46.	On filing translation of claims of an application for a European patent designating the State — section 120 (6).	30.00	38.09
47.	For publication by the Office of a corrected translation filed under section 121 (3) — Rule 85.	30.00	38.09
48.	On request for conversion of European patent application — Rule 86 (1).	25.00	31.74
49.	Transmittal fee on filing an international application for a patent at the Office — Rule 87 (1).	60.00	76.18
50.	For preparation of copies of international applications for a patent — Rule 87 (2) For each page comprising the application.	0.50	0.63
51.	On request for a certified copy of an international application for a patent — Rule 87 (6).	20.00	25.39
52.	On application for extension of time under Rule 98 For each month of extension.	25.00	31.74
53.	On application for reinstatement of an application — Rule 99 (2).	75.00	95.23
54.	On application for insertion of notice in the Journal for the purposes of section 13 (7) of the Copyright Act, 1963 .	5.00	6.35
55.	For reproductions of patent applications filed at the Office and open to inspection For each page required.	Nil	Nil
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.	Nil	Nil
57.	For reproductions of entries in the Register of Patents For each page.	Nil	Nil
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.	Nil	Nil
59.	For photocopying or reproduction of documents open to public inspection (per page	0.25	0.32
60.	Initial connection fee in respect of on-line dial-in access for inspection of any classified indices of published patents or any patent documents open to the public	2,000	2,539.48

SCHEDULE 2

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	Item	Amount £	Amount €
(1)	(2)	(3)	(4)
1.	On application to register a trade mark under section 37.	60.00	56.18
2.	Class fees—
	(i) for each class over one,	60.00	56.18
	(ii) for each additional class to which Rule 14 (3) refers.	60.00	56.18
3.	(i) On notification under Rule 25 (2) or Rule 61 (3) of intention to appear at a hearing.	5.00	6.35
	(ii) On application for a hearing (Rule 61 (2)).	50.00	63.49
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	53.49
5.	On lodging a counter-statement (Rule 19).	30.00	38.09
6.	On request for a written statement of the grounds of a decision made by the Controller (Rule 27 (2)).	150.00	190.46
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	38.09
8.	On request for division of an application (Rule 28).	100.00	126.97
9.	On request to merge separate applications or registrations (Rule 29).	100.00	126.97
10.	On filing of regulations governing the use of a collective or certification mark (Rule 31 (1) or Rule 33 (1)).	100.00	126.97
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	126.97
12.	On notification of surrender of a registered trade mark (Rule 36).	50.00	63.49
13.	(i) Renewal of registration (Rule 38).	200.00	253.95
	(ii) Class fee for each class over one.	100.00	126.97
	(iii) Additional fee for renewal of registration (Rule 39 (1)).	50.00	63.49
14.	Restoration fee payable upon a request under Rule 40 (1).	100.00	126.97
15.	On application to the Controller (Rule 41)—
	(i) for revocation, or a declaration of invalidity, of a registration of a mark,	100.00	126.97
	(ii) for rectification of an error or omission in the Register of Trade Marks kept under the Act of 1996.	20.00	25.39
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.	12.00	15.24
	(ii) for every other mark included in the request.	5.00	6.35
17.	On request under Rule 48	20.00	25.39
	For a certified copy or extract.
18.	On request for alteration of a trade mark (Rule 35).	50.00	63.49
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	25.39
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	126.97
21.	On application to register a transaction under section 29 (Rule 45) and on notice under section 31 (Rule 46)—
	(i) for one mark.	50.00	63.49
	(ii) for each other mark included in the application or notice.	5.00	6.35
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).	81.00	102.85
	(ii) in any other case.	140.00	177.76
23.	On request for a search under Rule 71.	30.00	38.09
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—	Nil	Nil
	(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 print-out to paper.
25.	For inspection of all or any part of the Register of Trade Marks kept under the Act of 1996 available on computer For each quarter of an hour of part thereof.	Nil	Nil
26.	For (i) inspection of the Register of Trade Marks kept under the Act of 1996 or any document open to public inspection, or (ii) making a search amongst such classified representations of trade marks as are made available on paper	Nil	Nil
	For each quarter of an hour or part thereof.
27.	For computer print-out or output to electronic media or paper of trade mark data open to public inspection other than as at reference number 24—	Nil	Nil
	(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.
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 print-out of the results of the search, the appropriate fee set out at those reference numbers and in addition.	Nil	Nil
29.	Licence (under Rule 77) authorising use of Patents Office computerised trade mark data base	100.00	126.97
	Each update of the computerised trade mark data base	500	634.87
30.	For photocopying or reproduction of documents open to public inspection. Per page	0.25	0.32
31.	For certifying office copies, manuscripts, typed, printed or photographic, each.	3.00	3.81
32.	On request for a certificate for use in connection with applications for registration abroad (Rule 5).	20.00	25.39
33.	On application for registration in the Register of Trade Mark Agents (Rule 51 (1)).	200.00	253.95
34.	For registration in the Register of Trade Mark Agents (Rule 53 (a)).	100.00	126.97
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	253.95
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.	20.00	25.39
	(ii) in respect of every other affected mark covered by the request.	5.00	6.35
37.	Initial once-off connection fee in respect of on-line dial-in access for searches and inspections of the trade mark register.	2,000	2,539.48

	GIVEN under my hand, this 17th day of December, 1999.
	TOM KITT,
	Minister of State at the Department of Enterprise, Trade and Employment.

The fees prescribed by the Rules are sanctioned by the Minister for Finance.

	GIVEN under the Official Seal of the Minister for Finance, this 17th day of December, 1999.
	CHARLIE McCREEVY,
	Minister for Finance.

EXPLANATORY NOTE.

(This note is not part of the Instrument and does not purport to be a legal interpretation.)

These Rules, made under sections 99 and 114 of the Patents Act, 1992 , and sections 81 and 82 of the Trade Marks Act, 1996 , abolish and restructure certain fee items. They also provide a new fee for the dial-in connection for access to patent and trade mark information and for photocopying documents relating to patents.