Proposed IP Australia fee structure for  1 October 2024

IP Australia is set to implement a new official fee structure starting 1 October 2024.

The fee review is part of IP Australia review process to ensure that occurs approximately every 4 years.

Of all the changes detailed in the draft Cost Recovery Statement, perhaps the most significant one is in relation to the way in which IP Australia will apply charges for excess patent claims. Other changes include significant increases to patent and trade mark opposition actions, and a minor reduction in design filing fees.

Patents

Regarding excess claims fees, as of 1 October 2024, IP Australia will be charging excess claims fees based on the number of claims when commencing examination and then reassessing excess claims at the time of acceptance to capture any increase in claim numbers.

Helpfully, IP Australia have provided examples of typical scenarios that might be encountered:

Scenario 1 (Adverse First Report)

Applicant files 100 claims. Prior to examination they opt to file an amendment in anticipation reducing the total number of claims to 20. There is no excess claim fee payable at First Examination Report stage. The application is examined on the basis of the 20 claims and proceeds to acceptance. The total number of claims has not changed. No excess claim fees payable.

Scenario 5 (Adverse First report)

Applicant files 100 claims. Prior to examination they opt to maintain the claim numbers at 100 claims. The excess fee payable at First Examination Report stage would be for 80 claims ((i.e. 10 claims at $125 each and the remaining 70 claims at $250 each). During examination and at acceptance stage, the total number of claims remain at 100 claims. No additional excess claim fee is payable at acceptance stage.

IP Australia have also advised that they will be notifying applicants approximately 6 months prior to the commencement of examination, however the time to examination is dependent on on the type of application, and can vary from between 10-23 months.

We recommend that patent claim numbers be assessed and claim amendments filed at or prior to requesting examination, if the reduction of excess claim fees is required.

The full detail of the explanation regarding excess claim fees from IP Australia can be found here.

Other changes includes increases to fees for patent filing, examination request, acceptance and renewals.

Trade Marks

Fee adjustments for trade mark matters are directed towards hearings, including filing applications for non-use removal, filing written submissions. There is also the introduction of a new fee for each ground of an opposition beyond three, which we presume is designed to discourage opposition grounds being filed that are not relevant.

Designs

Design application fees will be reduced, although the cost of requesting examination of a design will increase.

Should you have any queries at all on this please let us know.