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:

The new renewal fee structure is summarised as follows:

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:

*Fee changes commence 7 November 2020

The new hearing fee structure is summarised as follows:

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:

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.