Significant fee increases for various IP rights, including patents, trade marks, designs and PBRs, will come into effect on 1 October 2020.
The changes are intended to simplify fee structures, offer consistency across similar services, balance costs with the amount of work required by IP Australia, and seek to encourage patent owners to assess the commercial value of their granted IP rights over time.
The most significant change for patent owners is a substantial increase in renewal fees that apply during the later stages of the patent lifecycle, especially for pharmaceutical patents that have been extended beyond 20 years. Consequently, applicants with older patents or pharmaceutical patents in the extension period are encouraged, to the extent possible, to consider paying renewal fees before the fee changes come into effect on 1 October 2020. This would provide significant savings over the life of the patent. Please contact us immediately if you wish to arrange early renewal.
Another change for patent applicants is an increase in excess claim fees for patent applications containing over 20 claims at acceptance, and a more significant increase when there are over 30 claims at acceptance. Unlike many other patent offices, IP Australia charges excess claim fees at acceptance. Therefore, applicants should give consideration to the number of claims in their patent applications during the examination process.
IP Australia has also increased the differential between filing and payment of fees by “preferred means” (i.e. by electronic means) compared with “another means” (e.g., mail). This is in order to recover the additional costs of processing applications filed, or fees paid, by another means. Therefore, it should encourage online filing. Practically, most applicants already use the “preferred means”, so the impact of these fee changes will be minimal in most circumstances. However, these fee changes will impact Trade Mark applicants intending to file their applications using the non-pick list of goods and services.
Most of the fee changes will come into effect on 1 October 2020. The remaining changes, to trade mark fees for international registrations designating Australia, are scheduled to commence from 7 November 2020.
A complete list of the fee changes can be viewed at:
Key changes are summarised below:
The key changes for patents are the increases in renewal/maintenance fees and excess claim fees.
IP Australia intends to transfer some of the total transaction costs associated with applying for a patent, and instead apply these during the renewal phase of a granted patent to help keep costs low during the early stages of the life of a patent. However, this form of restructuring has resulted in increased renewal fees from an early stage, with these fees escalating over time. This means that fees applied later during the lifecycle of a patent will exceed current rates by a significantly greater amount.
Applicants with older IP rights or pharmaceutical patents in the extension period should consider, to the extent possible, paying renewal fees before the fee changes come into effect.
The fee changes for the renewal of standard patents are as follows, if renewed online. Please note that if renewal is sought via any other means, there will be an additional fee of AU$50 for manual processing.
|During extended term|
Patent excess claim fees
Presently, an excess claim fee of AU$110 applies per claim over 20 claims at acceptance. Under the changes, this fee will increase to AU$125 for claims over 20, under or including 30 claims, at acceptance. For applications where the number of claims exceeds 30 at acceptance, the excess claim fee will increase to AU$250 per claim.
Unlike many other patent offices, IP Australia charges excess claim fees at acceptance. Therefore, applicants should give consideration to the number of claims in their patent applications during the examination process.
A fee of AU$250 (increased from AU$110) for each additional claim will also be applied when seeking to amend a standard complete patent after acceptance, where the number of claims is greater than 20 and to the effect that the amendment increases the number of claims after acceptance.
Patent filing fees
While there is no change to the cost of online filing of a standard patent application, a standard national phase entry patent application or an innovation patent application, there will be fee increases when these are filed by another means (i.e. not online). The fee changes are as follows:
|Patent application type (filed by a means other than online)||Old fee|
|Standard National Phase Entry||470||570|
Trade mark application fees have been restructured. The most significant increase is for applications that do not utilise IP Australian’s pick list of goods and services. If the goods and services are specified in the application using the pick list, the fee will remain unchanged. While most fee changes take effect on 1 October 2020, changes to Madrid Import application fees will be introduced on 7 November 2020.
Standard trade mark application
Please note that if sought via any other means, there will be an additional fee of AU$50 for manual processing.
|Application for standard trade marks when filed online (no- pick list) and for each additional class||$330 per class||$400 per class|
|Madrid import application (effective from 7 November 2020).||$350 per class||$400 per class|
Series trade mark applications
Please note that if sought via any other means, there will be an additional fee of AU$50 for manual processing
|Application for series trade mark when filed online (no- pick list) and for each additional class||$480 per class||$550 per class|
Trade mark Renewals
The cost of renewing registration online will reduce from AU$450 to AU$400. The cost of renewing registration by another means (not online), is to remain the same at AU$450.
Trade mark oppositions and hearings
The fee for filing a request for a hearing will be reduced from AU$600 to AU$400 for all matters.
The fee for appearing and being heard at a hearing (in person) will increase from AU$600/day to AU$800/day (less the fee paid for requesting the hearing).
There is a new fee for appearing and being heard at a hearing (other than in person), which will be set at AU$600/day (less the fee paid for requesting the hearing).
If a hearing takes place only on the basis of written submissions, there will be no additional fee on top of the $400 fee paid for requesting the hearing.
Many fees have remained unchanged if filing by approved means. However, design renewal fees have been increased. Also, a new fee for introducing more than one separate design of the same category into a design application has been introduced.
Filing a design application
While the fee for filing a design application online remains the same at AU$250, the fee for filing via other means will increase from AU$350 to AU$450 to reflect the costs of manual processing.
In addition, when filing a request for a further design, by another means (not online) the fee will increase from AU$350 to AU$450.
Application for more than one design
There will be a reduced fee for filing a design application for more than one design in relation to (i) one product, or (ii) more than one product, if each product belongs to the same Locarno Agreement class.
The fee for applying for a first design will be maintained at AU$250. However, a reduced fee of AU$200 will apply for each subsequent design in the application. This fee will be doubled to AU$400, where the subsequent design is filed by other means (not online).
The fees for renewing designs online are set to increase from $320 to $400.
The annual renewal fee for maintenance of a PBR will increase from AU$345 to AU$400, when filed online.
For renewal applications filed by any other means (not online), the fee will increase from AU$395 to AU$450.
There will be an increase to the fee for designating an approved person, from AU$50 to AU$80. Renewal of this designation attracts an increase in fees from AU$50 annually to AU$240 for a period of 3 years.
Request for patent documents
Any urgent document requests (for patents, trade marks or designs), which utilise an expedited post service, will attract a fee of AU$20 per document requested.
This article was written by Dr Vanessa Yeung and Sarah Couper.
If you have any specific enquiries about the changes to IP Australia’s fees or how this may affect your commercial interests, please contact Paul Jones or Debra Tulloch.
Jones Tulloch’s articles are provided as general information only, current at the date of publication. They do not constitute professional (patent and trade mark attorney) advice and should not be relied upon as such. If you need specific professional advice, for example in relation to a matter of interest arising from this communication, please contact us.