An overview of new and increased fees and how to minimise their impact 2 min read
IP Australia has announced sweeping changes to the amount and timing of official fees for patents, trade marks, designs and plant breeders' rights, as well as changes to fees and recoverable costs for oppositions. The changes will come into effect 1 October 2024.
A full schedule of the changes from IP Australia is available to download here.
In this Insight, we outline the changes and suggest steps you can take now to minimise fees.
Increased excess claim fees for patents
- For patent applications where examination is requested on or after 1 October 2024, excess claim fees for applications with more than 20 claims will initially be calculated and charged upon issuance of the first examination report. IP Australia has indicated it will begin issuing notifications approximately six months prior to the first examination report to give Applicants sufficient time to file amendments to reduce the total number of claims, if required.
- Excess claim fees will also be incurred at acceptance (allowance) if the number of claims has increased beyond 20 during examination.
- More details of the changes, as well as example scenarios of how the new excess claim fees will be applied, are provided by IP Australia. Download the document here.
Patent opposition fees
The official fees for commencing an opposition, requesting a hearing and appearing at a hearing are being doubled—download the Summary of 2024 fee changes from IP Australia.
Trade mark opposition fees
- A new $250 fee will be incurred for each additional ground above the threshold three grounds in a Statement of Grounds and Particulars (SGP).
- A new fee of $250 for each of the 11th and further protected or registered trade marks in the SGP that the opposed trade mark is claimed to be substantially identical with, or deceptively similar to (if any).
Award of costs in oppositions
Costs recoverable by a successful party during patent, design and trade mark opposition proceedings are increasing and, in some cases, are being tripled, although the amounts are still significantly less than actual costs. A full list of changes from IP Australia can be downloaded here.
Actions you can take to minimise fees
To minimise or avoid increased patent claim fees, we recommend that Applicants consider:
- requesting examination before 1 October 2024;
- filing a preliminary amendment to reduce the total number of claims when requesting examination; and
- reviewing the number of claims during examination.
Patent renewal fees are also increasing, so consider paying renewal fees before 1 October 2024.
For trade mark oppositions, we recommend carefully considering the number of grounds to be raised in the SGP and, if appropriate, filing the SGP before 1 October 2024.
If you have any questions or would like additional information regarding these changes, please contact us.