Act now to avoid IP Australia fee increases

Act now to avoid IP Australia fee increases

Act now to avoid IP Australia fee increases

From 1 October 2020, IP Australia is increasing various fees for patents, trade marks and designs, while a small number of fees will decrease. The key fee changes are summarised below. 

A number of the changes relate to increases in the differential between fees paid electronically via IP Australia’s service portal (the “preferred means”) and fees paid by “another means” (e.g., by mail). As we pay all fees via the preferred means, we have not summarised the changes to the fee differentials. However, for a complete overview of the fee changes, including changes to fees for plant breeders’ rights, Olympic insignia protection and fees relating to patent and/or trade mark attorney registration, click here.

Summary of recommendations

Where possible, we recommend taking the following actions before 1 October 2020:

  • Pay any upcoming standard patent renewal/maintenance fees, particularly for extended pharmaceutical patents;
  • File any trade mark applications not using the IP Australia pick list of goods and services; and
  • Pay any upcoming design renewals.

Patent fee changes

Key changes to patent fees include increases in excess claim fees and renewal/maintenance fees for standard patents.

In particular, excess claims fees will increase depending on the number of claims and status of the relevant application/patent. Similarly, the relatively straightforward renewal/maintenance fee structure will be replaced with escalating annual fees up to $2650 per year for standard patents and up to a staggering $8000 for pharmaceutical patents that have been extended beyond their 20 year term.

Where possible, we recommend paying any upcoming renewal fees before 1 October 2020. In particular, paying all renewal fees due up until expiry of patents having an extended patent term before 1 October 2020 could lead to significant savings.

The key changes to patent excess claims fees paid electronically are summarised as follows:

PATENT EXCESS CLAIM FEES

Action

Old fee (AUD)

New fee (AUD)

Excess claim fees – at acceptance

Greater than 20 claims and equal to or less than 30 claims

$110 per claim

$125 per claim

Greater than 30 claims

$110 per claim

$250 per claim

Excess claim fees after Acceptance

Greater than 20 claims

$110 per claim

$250 per claims

The new renewal fee structure is summarised as follows:

PATENT RENEWAL/MAINTENANCE FEES

Action

Old fee (AUD)

New fee (AUD)

Standard patent renewal/maintenance fees

4th Anniversary

$300

No change

5th Anniversary

$300

$315

6th Anniversary

$300

$335

7th Anniversary

$300

$360

8th Anniversary

$300

$390

9th Anniversary

$300

$425

10th Anniversary

$550

$490

11th Anniversary

$550

$585

12th Anniversary

$550

$710

13th Anniversary

$550

$865

14th Anniversary

$550

$1050

15th Anniversary

$1250

$1280

16th Anniversary

$1250

$1555

17th Anniversary

$1250

$1875

18th Anniversary

$1250

$2240

19th Anniversary

$1250

$2650

Pharmaceutical patent renewal fees

20th Anniversary

$2550

$4000

21st Anniversary

$2550

$5000

22nd Anniversary

$2550

$6000

23rd Anniversary

$2550

$7000

24th Anniversary

$2550

$8000

The only fee reduction in sight for patents relates to obtaining a preliminary search and opinion, which will decrease from $2200 to $950.

Trade mark fee changes

Key changes to trade mark fees include increased application fees (by $70 per class) for applications that do not utilise IP Australia’s pick list of goods and services, as well as a new hearing fee structure.

While most of the trade mark fee changes take effect on 1 October 2020, changes to Madrid Import Application fees will also be introduced on 7 November 2020 and will increase the cost of designating Australia as part of an International Registration by $50.

The key fee changes for filing a trade mark application electronically are summarised as follows:

TRADE MARK APPLICATION FEES

Action

Old fee (AUD)

New fee (AUD)

Madrid Import Application

$350 per class

$400 per class

Standard TM Application (no pick list)

$330 per class

$400 per class

Series TM Application (no pick list)

$480 per class

$550 per class

*Fee changes commence 7 November 2020

The new hearing fee structure is summarised as follows:

TRADE MARK HEARING FEES

Action

Old fee (AUD)

New fee (AUD)

Request for a hearing

$600 for a hearing under regulation 5.17, 6.9, 9.17, 9.20, 17A.34M, 17A.48S, 17A.48V or 21.20E

$400 for any other matter

$400 (all matters)

Attending an oral hearing

$600 per day or part thereof for a hearing under regulation 5.17, 6.9, 9.17, 9.20, 17A.34M, 17A.48S, 17A.48V or 21.20E

OR

$400 per day or part thereof for any other matter

(less any amount paid for requesting the hearing)

$800 per day or part thereof for attendance in person

OR

$600 per day or part thereof attendance other than in person

(less any amount paid for requesting the hearing)

Hearing based on written submissions only

New Item

$400

(less any amount paid for requesting the hearing or attending the hearing)

Decision issued where no party filed a request for a hearing or has been heard by the Registrar

New Item

$400

(less any amount paid for requesting the hearing or for being heard)

While the hearing fee for a typical opposition has been reduced from $600 to $400, there is an increase in cost to attend an oral hearing in person as opposed to via a telephone or video conference.

In addition, there is now a cost of $400 if either party elects to rely on written submissions and/or obtain a written decision with reasons. Previously there was no fee if a party elected to rely on written submissions and IP Australia would by default issue a written decision with reasons.

Design fee changes

Key changes to design fees include increased renewal fees and the addition of a new fee for introducing more than one separate design of the same category into a design application.

The key changes to design fees paid electronically are summarised as follows:

DESIGN FEES

Action

Old fee (AUD)

New fee (AUD)

Renewal of Design Registration

$320

$400

Introducing more than one separate design within the same category into a design application

New Item

$200 for each additional design

For more information about any of the upcoming fee changes at IP Australia and how you can save, please contact Claire Gregg (cgregg@davies.com.au), Tony Lolis (tlolis@davies.com.au), Michael Caine (mcaine@davies.com.au) or your regular DCC contact.

Previous article Accelerate IP registration in Singapore with Fast Track Programme Next article Southeast Asia Briefing – Patent Filing in the Southeast Asia Region