Starting from 1 October 2024, IP Australia will introduce several changes to the fee system, across patents, designs, and trade marks.
Excess Claims Fee Procedure and Changes to Patent Fees
The new patent fee structure includes a focus on implementing excess claims fees and adjusting other fees related to patent applications and examinations. Here we explore the new excess claims fee process, as well as the key fee increases and decreases for patents.
1. Excess Claims Fee Procedure
The new excess claims fee will apply to patent applications with more than 20 claims. This fee is designed to encourage applicants to file more concise and focused claims at the initial stages of the examination process. The procedure for applying excess claims fees is outlined below:
- When will the fee apply? The excess claims fee will apply to applications with an examination request filed on or after 1 October 2024. If the examination request is made before this date, the old process remains in effect, and fees will be payable at the acceptance stage.
- How will the fee be calculated? The fee will be charged based on the number of claims:
- For each claim from the 21st to the 30th, a fee of AU$125 will apply.
- For claims beyond the 30th, a fee of AU$250 will be imposed per claim.
- When will the fee be payable? The fee will be payable within one month of the issuance of the first examination report. If the fee is not paid within this time frame, the application will lapse. However, the application can be revived if the payment is made before the final date of acceptance (12 months from the first report).
- Additional Fees: If claims are added after the first examination report and exceed 20 claims, further excess claims fees will apply at the acceptance stage based on the maximum number of claims reviewed during the examination.
2. Changes to Patent Fees
Several patent-related fees are set to increase or decrease under the new structure, reflecting changes in the application and examination processes.
Fee Increases:
- Standard Patent Application (Filing Fees):
- Filing fees will decrease from AU$110 to AU$100.
- Examination Fees:
- For standard patent applications, the fee for requesting an examination (if the Patent Office has conducted international preliminary examination) will increase from AU$300 to AU$350.
- For other standard patent applications, the fee will increase from AU$490 to AU$550.
- Renewal Fees: Renewal fees are also set to increase for multiple anniversaries.
Fee Decreases:
- Provisional Patent Application:
- Filing fees will decrease from AU$110 to AU$100.
This decrease in provisional application fees will benefit inventors and applicants who want to secure an early filing date before committing to a full patent application.
3. Strategic Considerations for Applicants
The new fee structure, particularly the introduction of excess claims fees, incentivises patent applicants to reduce the number of claims at the earliest stages of the examination process. Applicants may want to review and amend their claims before the examination request is made to avoid excess fees.
Additionally, with increases in examination and renewal fees, applicants are encouraged to plan their IP budgets accordingly, especially for long-term patent protection and cases involving large numbers of claims.
Design Registrations Process Fees
There will also be changes to the charges at different stages of the design registration process
1. Reductions in Design Application Fees
One of the most notable changes is the reduction in application fees, which is a positive update for individuals and companies filing for design protection. The reductions apply across various application types:
- Application for One Design:
- The application fee will decrease from AU$250 to AU$200.
- Application for Multiple Designs:
- The fee for the first design will decrease from AU$250 to AU$200.
- The fee for each additional design will decrease from AU$200 to AU$150.
These reductions make it more affordable to file multiple design applications, encouraging applicants to protect variations or iterations of their design concepts in one filing.
2. Increases in Design Examination Fees
While the cost of filing applications is decreasing, the fees for design examinations are set to increase. This affects both the owner of the design and third parties requesting examinations:
- Request for Examination of a Registered Design (by registered owner):
- The fee will increase from AU$420 to AU$500.
- Request for Examination by a Third Party:
- The fee for third parties requesting examination will increase from AU$210 to AU$250, with the same fee applying if the examination is initiated by the registered owner.
3. Other Design Fee Changes
Additional changes include fees related to amending design applications and filing specific types of applications under particular regulations:
- Request to Amend a Design Application:
- The fee to amend a design application will decrease from AU$250 to AU$200.
4. Strategic Considerations for Applicants
The reduction in design application fees provides a cost-effective way for individuals and businesses to secure their design rights.
For applicants considering filing multiple designs, the reduced fees for additional designs in a single application offer a compelling opportunity to maximize protection for a range of design variants.
Changes to Trade Mark Opposition and Removal Fees
The focus of the trade mark-related official fee increases is specific to opposition and removal matters.
1. Changes in Fees per Ground of Opposition
There will now be additional official fees of AU$250 per ground of opposition to registration above three and for each additional trade mark registration relied upon above 10, contained in the Statement of Grounds and Particulars (SGP).
It is quite common to claim more than three grounds of opposition to registration, particularly given that when filing the SGP, the Opponent has not yet had the opportunity to consider all of the available evidence from both parties. As outlined in our firm’s article, it is common at the hearing stage that an Opponent considers whether to proceed on all grounds of opposition. Additionally, in a successfully opposed application, commonly the Hearing Officer will provide their reasons on the most successful ground only.
2. Increase in Award of Costs After a Hearing
The biggest change to the fees will be in any award of costs after a hearing in an opposition matter. In most instances, this amount will increase on average by three-fold.
3. New Fee to Consider Opposition Evidence Filed Late
There is also a newly created official fee of AU$500 for a request to consider any evidence filed late in an opposition matter. This has been implemented to cover the significant time involved in dealing with issues around late filing of evidence, as they are also usually accompanied by a request for an extension of time. Relevantly, extension of opposition deadlines are only granted in rare and extraordinary circumstances. Therefore, the practical focus should remain on timely filing of evidence.
4. Other Opposition and Removal Fee Changes
An application for removal of a trade mark for non-use will be increased from AU$250 to AU$350, and the fees to apply for a hearing in an opposition have been streamlined from four lots of different fees to two options (written submissions only or by way of oral hearing).
5. Strategic Considerations
On the basis of the additional costs that may be applicable when filing the SGP and the significant increase in an award of costs against any party if wholly unsuccessful, it is a timely reminder to conduct as much due diligence and consider the best strategy before entering into any opposition.
Take Aways
These changes in fees for various patent, design, and trade mark matters should be taken into consideration by applicants when forming their IP strategy. For the full break down of IP Australia’s new charges, see the page on their website here. If you would like to discuss these changes and what they could mean for your IP strategy, please do not hesitate to reach out to MBIP via phone (07 3369 2226) or our book a meeting form – a member of our team will be happy to assist you.
