IP Australia have announced changes to some of their fees, effective from 1st October 2020.
The changes are intended to defer some of the costs to the renewal phase of an IP right's lifecycle, so that the fees can be kept lower in the formative years when most of the costs are incurred. These early years also coincide with a time when the applicant may have yet to establish an income stream from their IP right.
The following provides a summary of the major changes to the official fees in relation to patents, trade marks and designs. We encourage applicants and owners to take action where possible, prior to these changes coming into effect on the 1st October 2020.
Patents
Excess Claims Fees
A new structure will be implemented in relation to excess claims fees.
Under the old structure, an excess claims fee is required for each claim in excess of 20, at acceptance or post acceptance.
Under the new structure, the threshold number of claims for excess claims fees to apply remains at 20. For the first ten claims over 20, the excess claim fee will be $125 per claim. From the 31st claim onwards, the excess claim fee will increase to $250 per claim. Notably, post-acceptance amendment resulting in the number of claims exceeding 20 will incur a fee of $250 per claim.
| Excess Claims Fee Per Claim | Old Fee | New Fee |
| At acceptance the number of claims is greater than 20 & equal to or less than 30 | $110 | $125 |
| At acceptance the number of claims is greater than 30 | $110 | $250 |
Renewal Fees
Changes to renewal fees are significant and worth taking into account when scheduling or structuring payment.
Compared to a flat rate that increased stepwise every five years under the old structure, the annual fee under the new structure will increase progressively each year.
In particular, for pharmaceutical patents with an extended term beyond the standard 20-year term, the annual fee will ramp up to $8,000 at the 24th anniversary. Owners of such patents can save costs by paying a lump sum covering the renewal fees remaining within the extended term.
| Patent Renewal Fees | Old Fee | New Fee |
| Standard Patent – 5th anniversary | $300 | $315 |
| Standard Patent – 6th anniversary | $300 | $335 |
| Standard Patent – 7th anniversary | $300 | $360 |
| Standard Patent – 8th anniversary | $300 | $390 |
| Standard Patent – 9th anniversary | $300 | $425 |
| Standard Patent – 10th anniversary | $550 | $490 |
| Standard Patent – 11th anniversary | $550 | $585 |
| Standard Patent – 12th anniversary | $550 | $710 |
| Standard Patent – 13th anniversary | $550 | $865 |
| Standard Patent – 14th anniversary | $550 | $1,050 |
| Standard Patent – 15th anniversary | $1,250 | $1,280 |
| Standard Patent – 16th anniversary | $1,250 | $1,555 |
| Standard Patent – 17th anniversary | $1,250 | $1,875 |
| Standard Patent – 18th anniversary | $1,250 | $2,240 |
| Standard Patent – 19th anniversary | $1,250 | $2,650 |
| Pharmaceutical Patent -20th anniversary | $2,550 | $4,000 |
| Pharmaceutical Patent -21st anniversary | $2,550 | $5,000 |
| Pharmaceutical Patent -22nd anniversary | $2,550 | $6,000 |
| Pharmaceutical Patent -23rd anniversary | $2,550 | $7,000 |
| Pharmaceutical Patent -24th anniversary | $2,550 | $8,000 |
Trade Marks
Application Fees
Trade mark application fees will increase slightly to $400 per class for non-picklist standard applications and $550 per class for non-picklist series applications.
Designs
Application Fees
For applications including multiple designs, there will be an additional fee of $200 for each additional design other than the first one. For more information regarding multiple designs applications, click here to read our previous post (The Australian Designs Checklist).
Renewal Fees
Renewal fees for designs will increase from $320 to $400.
Click here to view the full list of IP Australia's official fee changes.
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.
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