An overview of new and revised fees (2024) of IP Australia

IP Australia conducts a review of its fees every four years, with the last review taking place in October 2020. Their latest fee review commenced in 2023. Keeping in mind regarding this they have made changes which have come into effect from October 1, 2024.

The latest fee adjustments affect Patent, Trademark, Designs, and plant breeder’s rights. The modifications include hikes, but some costs have been reduced and are now comparatively low. The main changes to the price structure are outlined below, along with a closer look at how they may affect Patent, Trademark, and Design owners on a broader scale.

PATENT:

Changes have been made concerning to increase in patent application filing, examination, and renewal fees. But, the most notable change to the patent fees is in relation to the timing of when excess claim fees are calculated.

UPDATED EXCESS CLAIMS FEE:

A revised fee for extra claims now applies to patent applications with examination submitted on or after October 01, 2024.

Under the former claims fee process, Australian Patent Applications can include any number of claims, with excess claims fees incurred only based on the total number of claims present at the time the application is accepted or allowed. In contrast, the existing procedure states that patent applications will be subject to excess claims fees if the number of claims exceeds twenty (20) at the time of the first Examination Report issuance.

IP Australia will provide an invitation to pay after the first report is completed, but only if there are more than 20 claims under review. The applicant will need to pay this fee within one month from the date the first report is issued. If the fee is not paid within one month of the first report's issuance, the application will lapse. Excess claims fee will also need to be paid at acceptance or allowance of patent if the number of claims has increased beyond 20 claims during the examination phase.

The new excess claim fees can also be avoided by filing voluntary amendments to restrict the number of claims to a maximum of 20 claims before issuance of the first examination report.

TRADEMARK:

IP Australia has introduced a new fee structure for opposition proceedings under trademark. This updated framework has incorporated incremental costs for adding multiple grounds and prior trademark rights. These changes mark a significant shift from the existing system and will require trademark owners to adopt more careful and strategic approaches in opposition cases.

NEW FEES FOR GROUNDS OF OPPOSITION:

The one of crucial modifications is the rise in costs for grounds of opposition. It is noteworthy to pay attention that for filing or amending a statement of grounds and particulars (SGP) in trademark oppositions, the latest fee schedule has been put into effect. The fourth and any later grounds asserted or claimed in an SGP will be subject to an extra cost going forward. Previously, multiple grounds could be included in opposition proceedings without further cost consequences in Australia, but now this new cost has been imposed. Additionally, there will be an additional fee for each of the 11th and further trademarks claimed to be substantially identical or deceptively similar to an opposed mark.

IP Australia has also instituted a new fee structure for Hearings, late filing of evidences, and requesting removal of trademarks due to non-use from the Register.

DESIGN:

One encouraging development is that IP Australia has reduced the application filing fees for individuals submitting design applications. Nonetheless, the fee for requesting an examination of a registered design has gone up a bit.

A full schedule of fee changes from IP Australia can be accessed here.

CONCLUSION:

The recent changes made by IP Australia regarding intellectual property fees represent a significant shift towards encouraging more strategic practices among patent and trademark owners. The introduction of an excess claims fee for patent applications requires careful consideration of claims during the examination process, encouraging applicants to refine their proposals in order to avoid additional costs. Likewise, the updated fee structure for trademark opposition encourages trademark owners to evaluate their grounds for opposition more selectively, ensuring that only relevant claims are pursued. Although filing fees in the design sector have lower down, the rise in examination request fees is an important factor for applicants to consider.

The applicants must make proactive adjustments to the new changes now that they are in effect. By addressing these changes, applicants can navigate the new landscape of IP fees with greater ease and confidence. Adopting these updates will not only streamline the application process but also better protect intellectual property rights.

Author:

Santoshi Karashi - Attorney

Priya Shahee- Associate