Australia – Changes to fees for IP matters

IP Australia has just announced some changes to the official fees for patents, trade marks, designs and plant breeder’s rights, which will come into effect on 1 October 2024.  Inter alia, the filing fees for patents and plant breeder’s rights will increase, trade mark filing fees will remain unchanged, and designs filing fees will decrease.   We summarise below some of the changes of particular significance.

Patent fees

Generally, patent fees will increase, including the fee for filing a standard or PCT national phase patent application, the fee for requesting examination and annual renewal fees.

Of particular importance to patent applicants is the change to excess claims fees due.   Whilst the amount charged for excess claim fees will not change, the timing of when these fees are due and the way that they are calculated will change.  Currently, excess claim fees are payable based on the number of claims in excess of 20 at the time of acceptance of a patent application.  From 1 October 2024, specifically for any application in which examination is requested on or after that date, fees will be payable for each claim in excess of 20 at the time that the first examination report is issued.   If further claims are added during prosecution, excess claim fees may also be due when the application is accepted.  If the number of claims is reduced before the first examination report issues, the excess claim fees (if any) will be based on the number of claims examined in the report.  Importantly, the excess claim fees payable upon issue of the first report can be avoided by requesting examination before 1 October 2024, and we would encourage patent applicants to consider doing so in relevant cases.

Design fees

The good news for design applicants is that IP Australia has reduced the application filing fees by AU$50.  However, the fee for requesting examination of a design will increase.

Plant breeder’s rights (PBR) fees

Various fees for PBRs are increasing, including the filing fee, the fee for examination, the grant fee and the annual renewal fee.

Trade mark fees

There will be changes to most fee categories for trade marks, except for the filing fees which will remain unchanged.  Significant changes have been made to the fees for trade mark opposition proceedings, with the introduction of a new fee structure which depends on the number of grounds of opposition nominated in the Statement of Grounds and Particulars (SGP).

Next steps for applicants

Savings can be made in relation to patents, designs and plant breeder’s rights by requesting examination prior to 1 October 2024.  In relation to trade marks, for parties presently engaged in opposition proceedings, consideration should be given to lodging a SGP prior to this date to avoid additional fees, if relying on more than three grounds of opposition.

We would be pleased to assist you with any queries or action needed with regard to your IP rights in Australia.