IP Australia has released its Cost Recovery Implementation Statement (CRIS), with new fee changes to take effect on 1 October 2024. The fee changes, summarised here, affect patents, trade marks, designs and plant breeder’s rights, and predominantly include increases (although a few fees have decreased). While filing fees for patents and plant breeder’s rights have increased, trade mark filing fees remain unchanged, and the designs filing fee has decreased.
Importantly, the CRIS also outlines increases to the costs recoverable in patents, trade marks and designs opposition proceedings, which are summarised here.
A summary of the key fee changes is provided below.
Patent fee changes
The most significant change to the patent fee regime relates to the timing for levying excess claim fees. Other key changes include abolition of PCT transmittal fees, and increases in filing, examination and renewal fees.
Excess claim fees
Currently, excess claim fees are payable based on the number of claims in excess of 20 at acceptance. While there will be no change to the amount payable per excess claim, procedural changes will require that excess claim fees will apply:
- for each claim in excess of 20 at the time the first examination report is issued; and
- for each claim in excess of 20 at acceptance where the number of claims increases after the first examination report is issued.
IP Australia will require initial payment of the excess claim fees within one month of the date of issue of the first report. The application will lapse if the initial fees are not paid by this date (and if any further excess claim fees are not paid within three months of the date of advertisement of acceptance).
Importantly, these fee changes will only apply where examination is requested on or after 1 October 2024. Therefore, the excess claim fees payable upon issue of the first report can be avoided by requesting examination before this date.
The new excess claim fees structure can also be avoided by reducing the number of claims by voluntary amendment prior to the issuance of a first report. IP Australia will endeavour to notify applicants six months before a first report is issued, providing an opportunity to reduce the number of claims prior to issuance of a first report. IP Australia also publishes expected examination timeframes here.
For the avoidance of doubt, we recommend filing any claim amendments before or at the time of requesting examination (or shortly thereafter).
Fee decreases
The fee decreases for patents include:
| Fee type | Previous fee (AUD) | New fee (AUD) |
| Transmittal of international application under the PCT | $200 | $0 |
| Filing provisional patent application | $110 | $100 |
Fee increases
The fee increases for patents include:
| Fee type | Previous fee (AUD) | New fee (AUD) |
| Filing of standard patent application (including PCT national phase entry) | $370 | $400 |
| Filing of innovation patent applications[i] | $180 | $200 |
| Requesting examination of standard patent | $490 | $550 |
| Acceptance of standard patent application | $250 | $300 |
| Continuation / renewal fees (6th – 19th anniversary) | $335-$2,650 | $345-$2,815 |
| Requesting an international-type search | $950 | $1,100 |
| Filing notice of opposition | $600 | $1,200 |
| Requesting a hearing | $600 | $1,200 |
| Appearing and being heard at a hearing (for each day or part thereof) | $1,000 | $2,000 |
| Being heard by written submissions only | $600 | $1,200 |
| Applying for extension of term of a pharmaceutical patent | $2,000 | $2,500 |
Trade mark fee changes
The fees for trade mark opposition proceedings have changed significantly with the introduction of a new fee structure contingent on the number of grounds of opposition nominated in the Statement of Grounds and Particulars (SGP), detailed further below. There are also changes to most fee categories, except for filling fees, which remain unchanged.
Increased trade mark opposition fees
A notable adjustment involves the introduction of an AU$250 fee for each additional ground asserted beyond the initial three grounds. Previously, opponents could assert multiple grounds without incurring extra costs. This new regime may necessitate a more strategic approach, as opponents must now weigh the necessity of each ground carefully before inclusion. The first three grounds remain exempt from this additional fee, allowing for some degree of flexibility while encouraging a more judicious use of grounds.
This fee will also apply when filing or amending a SGP once more than three grounds are nominated.
Importantly, a section 58A ground will not count towards the threshold if a section 44 ground has been nominated, as it is treated as an extension of a section 44 ground.[ii]
The AU$250 fee is also partially recoverable as an out-of-pocket expense, capped at AU$500 if costs are awarded to the opponent. This partial recoverability is intended to balance fairness between the parties and avoid the use of the risk of an adverse cost award as leverage in opposition proceedings. See below for comments on changes to the schedule of recoverable costs.
Other key changes include the introduction of an AU$250 fee for each pending or registered trade mark relied on in opposition proceedings after the 10th trade mark. A new fee for late evidence filings in opposition proceedings has also been introduced, and the fee for requesting a hearing (either by written or oral submissions) has changed.
Fee decreases
The fee decreases for trade marks include:
| Fee type | Previous fee (AUD) | New fee (AUD) |
| Requesting a hearing by the Registrar of Trade Marks | $400 | $0 |
| Oral hearing in person – for each day or part day | $800 | $700 |
Fee increases
The fee increases for trade marks include:
| Fee type | Previous fee (AUD) | New fee (AUD) |
| Filing a SGP in an opposition to registration of a trade mark, or in an opposition to extension of protection to an IRDA:
· for each of the fourth and further grounds (if any) · for each of the 11th and further registered or protected trade marks that the opposed trade mark is claimed to be substantially identical with, or deceptively similar to (if any) |
$0 | $250 |
| $0 | $250 | |
| Requesting amendment of an SGP filed in an opposition to registration of a trade mark, or in an opposition to extension of protection to an IRDA:
· for a ground proposed to be added – if that ground would be the fourth or further ground in the SGP · for a registered or protected trade mark proposed to be added – if that trade mark would be the 11th or further trade mark that the opposed trade mark is be claimed to be substantially identical with, or deceptively similar to |
$0 | $250 |
| $0 | $250 | |
| Applying for removal of a trade mark from the Register of Trade Marks for non-use or cessation of protection of a protected international trade mark for non-use | $250 | $350 |
| Late filing of evidence in opposition proceedings | $0 | $500 |
| Being heard by written submissions only | $400 | $500 |
| Oral hearing by remote appearance – for each day or part day (for example, by videoconference) | $600 | $700 |
Designs fee changes
The most significant changes to the designs fee regime include reductions in design application fees, and an increase in the fee for requesting examination.
Fee decreases
The fee decreases for designs include:
| Fee type | Previous fee (AUD) | New fee (AUD) |
| Fling fee for one design | $250 | $200 |
| Filing fee for several designs (each additional design) | $200 | $150 |
| Amend design application identify further design | $250 | $200 |
Fee increases
The fee increases for designs include:
| Fee type | Previous fee (AUD) | New fee (AUD) |
| Requesting examination (registered owner) | $420 | $500 |
Plant breeder’s rights
Unfortunately, there are no fee decreases associated with plant breeder’s rights. The fee increases include:
| Fee type | Previous fee (AUD) | New fee (AUD) |
| Lodging application for grant of plant breeder’s rights | $345 | $400 |
| Examination of application and growing trial | $920-1,610 | $1,400-2,000 |
| Application for a declaration of essential derivation | $800 | $850 |
| Certificate fee | $345 | $500 |
| Renewal fees | $400 | $600 |
Costs recoverable in opposition proceedings
The costs recoverable as a result of opposition proceedings have increased significantly (ranging from 50% through to 385%). Details of the cost awards available are here. The costs recoverable remain out of step with actual costs incurred in opposition proceedings, but the changes are a welcome improvement on the out of date schedule of fees, which had not been previously been amended for decades.
How you can save
Modest savings may be made in relation to patents, designs and plant breeder’s rights by requesting examination prior to 1 October 2024. For trade marks, the most significant changes relate to opposition proceedings and, for those 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.
Please contact Dr Claire Gregg (cgregg@dcc.com) or Linda Xu (lxu@dcc.com) if you have any questions in relation to the new fee structure.
[i] See here for the limited circumstances under which innovation patents can still be filed in Australia.
[ii] Since section 58A cannot be invoked without first addressing section 44.