Australia: Act Now To Avoid IP Australia Fee Increases

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.

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.

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:

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.