Australian Patent Office introduces 4th year renewal fee

Effective 1 July 2012, the Australian Patent Office is introducing a new 4th year renewal fee. Currently, annuities on Australian patents and patent applications commence 5 years from the effective filing date.

Somewhat surprisingly, the new fee is retrospective and applies to current standard Australian patents and patent applications with an effective filing date on or after 1 July 2008. Therefore, the new fee will apply to standard patents and patent applications where the fourth anniversary from the filing date is on or after 1 July 2012.

The Patent Office has advised that, because this is a new fee, under the relevant legislation the fee cannot be paid before 1 July 2012. If a 4th year renewal fee is paid before that date, the office has indicated that it will be refunded. This has created the somewhat draconian situation that a 4th year renewal fee due on 1 July 2012 must be paid on 1 July 2012 or extension fees are payable.

The Patent Office has also advised that there are no transitional provisions providing a grace period to pay the newly introduced fee. However, if circumstances exist that might warrant an exemption to pay extension fees, such an exemption may be requested at the time of late renewal. These circumstances might include disadvantage created by the unexpected and retrospective nature of the new fee. It is important that the extension fees are paid at the time of late renewal, to ensure that the renewal is effected, and a refund of those fees sought.

Contact: If you have any enquiries about the introduction of the new 4th year renewal fee in Australia, please contact contact Debra Tulloch or Paul Jones.