Thursday 20 August 2020

Changes to IP Australia’s fees to commence on 1 October 2020

In 2019-2020, IP Australia undertook a review of its fees. IP Australia invited public comment on its fees and fee structure, receiving over 80 submissions, primarily requesting that IP Australia:

  • simplify its fee structure
  • apply consistent fees and regulations across similar services
  • balance costs with work effort
  • encourage strategic assessment of the value of rights
  • streamline workflow and improving efficiency.

Following this consultation, regulations have been made to amend IP Australia’s official fees for patents, trade marks, designs and plant breeder’s rights. The fee changes will commence on 1 October 2020.

Patent fee changes

The key patent official fee changes are increases in:

  • the fees for renewals (annuities), which are more significant from the 12th anniversary onwards (with the exception of a decrease in the official fee payable at the 10th anniversary)
  • the fees for each of the five years of the period of any patent term extension for pharmaceutical patents
  • excess claims fees.

The patent renewal fee changes are summarised in the table below.

 
Current fee
(AU$)
Fee from 1 October 2020
(AU$)
Fee change
(AU$)
 
Standard patent – 4thanniversary
$300
$300
No change
Standard patent - 5th anniversary
$300
$315
+$15
Standard patent - 6th anniversary
$300
$335
+$35
Standard patent - 7th anniversary
$300
$360
+$60
Standard patent - 8th anniversary
$300
$390
+$90
Standard patent - 9th anniversary
$300
$425
+$125
Standard patent - 10th anniversary
$550
$490
-$60
Standard patent - 11th anniversary
$550
$585
+$35
Standard patent - 12th anniversary
$550
$710
+$160
Standard patent - 13th anniversary
$550
$865
+$315
Standard patent - 14th anniversary
$550
$1,050
+$500
Standard patent - 15th anniversary
$1,250
$1,280
+$30
Standard patent - 16th anniversary
$1,250
$1,555
+$305
Standard patent - 17th anniversary
$1,250
$1,875
+$625
Standard patent - 18th anniversary
$1,250
$2,240
+$990
Standard patent - 19th anniversary
$1,250
$2,650
+$1400
Pharmaceutical patent -20th anniversary
$2,550
$4,000
+$1450
Pharmaceutical patent -21st anniversary
$2,550
$5,000
+$2450
Pharmaceutical patent -22nd anniversary
$2,550
$6,000
+$3450
Pharmaceutical patent -23rd anniversary
$2,550
$7,000
+$4450
Pharmaceutical patent -24th anniversary
$2,550
$8,000
+$5450

*the current exchange rate is about AU$1.00 = US$0.70

* there is an AU$50 surcharge if requests are not filed using the preferred means (IP Australia online services)

Patent renewal fees can be paid in advance, provided a renewal fee has not been paid in the preceding 90 days. However, we understand IP Australia is lifting the 90-day payment restriction rule preventing additional payments ahead of the increase. As the table above shows, applicants can achieve significant savings in official fees by paying in advance, particularly for any patents having an extended term.

IP Australia is also introducing tiered excess claims fees. Currently, an official fee of AU$110 is payable for each claim in excess of 20 when an application is accepted (allowed).

From 1 October 2020, the excess claims fees will be calculated as follows:

  • Claims 1-20: no charge
  • Claims 21-30: $125 per claim
  • Claims 31+: $250 per claim.

Trade mark fee changes

The key trade mark official fee changes are:

  • an increase in application fees
  • a decrease in renewal fees where registration has been delayed for 10 or more years after the filing date.

The main trade mark fee changes are summarised in the table below.

 
Current Fee (AU$)
Fee from 1 October 2020 (AU$)
Fee change (AU$)
Madrid application – per class
$350
$400
+$50
Standard TM application – per class (no pick list)
$330
$400
+$70
Series TM application – per class (no pick list)
$480
$550
+$70
Renewal of registration (registration delayed for 10 or more years after filing date)
$450
$400
-$50
Late renewal of registration (registration delayed for 10 or more years after filing date)
$450
$400
-$50

* the current exchange rate is about AU$1.00 = US$0.70

* there is an AU$50 surcharge if requests are not filed using the preferred means (IP Australia online services)

Design fee changes

The key design official fee changes are:

  • an increase in the renewal fee from AU$320 to AU$400
  • a new fee of AU$200 for having more than one separate design within the same category in a design application.

Plant breeder’s rights fee changes

The key plant breeder’s rights official fee change is:

  • an increase in the application fee from AU$345 to AU$400.

Full information about IP Australia’s fee review can be found here and full details of the fee changes can be found here.

We recommend considering your Australian IP protection now to take advantage of the current fees before they increase on 1 October 2020. If you have any questions, please get in touch.