Significant increase in IP Australia fees as of 1 October 2020

From 12am AEDT 1st October, IP Australia will commence changes to their fee arrangements. A list of these new fees can be viewed here

Over the last two years IP Australia has been reviewing and consulting on their fees with the result being a general increase in fees. The fee changes have been:

"designed based on this feedback and in accordance with the Australian Government Charging Framework and the relevant Productivity Commission recommendations… to ensure [IP Australia] continue[s] to recover [its] costs from administering intellectual property (IP) rights and their associated legislation".

Summary of the fee changes

Patents

The following patent fees will see some changes:

  • Increase to Patent Excess Claims Fees;
  • Increase of Patent Renewal Fees;
  • Decrease in the fee for a Preliminary Search and Opinion.

Trade Marks

The trade mark fees will see the following changes:

  • Increase of Trade Marks Application Fees;
  • Alignment of Hearing Fees.

Designs

The design fees will see the following changes:

  • Increase of Design Renewal Fees;
  • Introduces a new fee for subsequent designs in the same application.

Costs awarded in proceedings

IP Australia had proposed increases to the costs awarded to the successful party following an opposition or hearing. Most of the submissions lodged with IP Australia during the consultation period expressed concern about proposed changes to costs awards. In light of that feedback, IP Australia has decided that the proposed changes to cost awards required further consultation and consideration and will not proceed with changes at this time.

Fee changes in detail

Patents

IP Australia has changed the structure of excess claim fees and annual renewal fees. The renewal fees increase on an annual basis and have increased significantly for a pharmaceutical patent for which there has been an extension of term. Excess claim fees are still payable on the number of claims present at the time of acceptance, however claims 21-30 will now attract a different fee to claims 31 and above. There has also been a substantial reduction to the fee for preliminary search and opinion to AUD 950 (from AUD 2200).

Change to Patent Excess Claims Fees

Fee Description

Current Fee (AUD)

New Fee (AUD)

Amend Standard Complete Patent After Acceptance - Greater than 20 claims

110

250

Standard Patent - Greater than 20 claims & equal to or less than 30 claims

-

125

Standard Patent - Greater than 30 claims

New Fee

250

Standard Patent - Greater than 20 claims - per claim

110

Replaced with the above.

Change to Patent Renewal Fees

Fee Description

Current Fee (AUD)

New Fee (AUD)

Standard Patent - 5th year

300

315

Standard Patent - 6th year

300

335

Standard Patent - 7th year

300

360

Standard Patent - 8th year

300

390

Standard Patent - 9th year

300

425

Standard Patent - 10th year

550

490

Standard Patent - 11th year

550

585

Standard Patent - 12th year

550

710

Standard Patent - 13th year

550

865

Standard Patent - 14th year

550

1050

Standard Patent - 15th year

1250

1280

Standard Patent - 16th year

1250

1555

Standard Patent - 17th year

1250

1875

Standard Patent - 18th year

1250

2240

Standard Patent - 19th year

1250

2650

Pharmaceutical Patent - 20th Year Renewal

2550

4000

Pharmaceutical Patent - 21st Year Renewal

2550

5000

Pharmaceutical Patent - 22nd Year Renewal

2550

6000

Pharmaceutical Patent - 23rd Year Renewal

2550

7000

Pharmaceutical Patent - 24th Year Renewal

2550

8000

Trade Marks

Trade mark filing and renewal fees have been increased.

Fee Description

Current Fee (AUD)

New Fee (AUD)

Standard TM Application - First Class

330

400

Standard TM Application - Additional Classes

330

400

Series TM Application - First Class

480

550

Series TM Application - Additional Classes

480

550


Changes to Madrid Import Application fees - to AUD 400 - are scheduled to commence from 12am AEDT, 7 November 2020.

The fee payable when requesting a hearing has depended upon the nature of the hearing requested. The fee structure has been simplified with the same fee - AUD 400 - for requesting a hearing (compared with the previous AUD 400 or AUD 600).

Fee Description

Current Fee (AUD)

Proposed Fee (AUD)

Filing for a request for a hearing

New Item

400

Appearing and being heard at an oral hearing in person:

  • For the first day
  • If the hearing runs for more than a day

New Item

800 for each day, or part of a day, less the hearing fee already paid

Appearing and being heard at an oral hearing by virtual means:

  • For the first day
  • If the hearing runs for more than a day

New Item

600 for each day, or part of a day, less the hearing fee already paid

Being heard on the basis of written submissions only

New Item

400 less any hearing fee already paid

Decisions with reasons i.e. decision on the papers

New Item

400 less any hearing fee already paid


Designs

The fee changes increase the cost of renewing a design and introduces a new fee for additional designs within the same application.

Fee Description

Current Fee (AUD)

New Fee (AUD)

Renewal of Design Registration

320

400

each additional Design in the same Application

New Fee

200


Do not hesitate to contact us if you have any questions.

August 2020

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