IP Australia is changing some of their fees to ensure the costs of administering intellectual property rights are adequately covered. The new fees will come into effect at 12am AEDT, 1 October 2024. A list of the fee changes can be viewed here.
One of the most significant updates is to how excess claim fees are charged for patent applications with more than 20 claims. While the fees themselves remain unchanged at AUD 125 per claim for 21 to 30 claims, and AUD 250 per claim for 31 claims and above, the timing of when these fees are calculated and due to be paid has undergone notable changes.
Current Process: Excess claim fees are determined by the number of claims in the accepted specification and charged along with the acceptance fee.
New Process: For patent applications where examination is requested on or after 1 October 2024, excess claim fees will be charged in two distinct stages:
Stage 1: First Examination Report
Excess claim fees will apply for applications with more than 20 claims at the first examination report stage. These fees are payable within one month from the date of the first examination report. Failure to pay by the due date will result in the application lapsing. However, the application can be restored by payment of the excess claim fees within 12 months from the date of the first report, without incurring additional extension of time or late fees.
Stage 2: Acceptance
If the number of claims increases beyond those at the first report and exceeds 20 claims, a further fee will be charged at the acceptance stage. The excess claim fee payable will be calculated based on the highest number of claims filed at any stage during prosecution, less the number of claims at the first examination report stage.
Implications for Applicants: In view of these changes, applicants should be vigilant about the relevant deadlines to avoid inadvertently incurring excess claim fees or having their applications lapse due to missed payments. Although IP Australia has indicated that they will provide six months’ notice before starting examination proceedings, a cautious approach would be to prepare claim amendments during or shortly after requesting examination.
Applicants may wish to consider requesting examination of pending applications before 1 October 2024 to take advantage of the current approach to excess claim fees. It may also be worth consolidating or amending claims early to minimize excess claim fees. Optimal times to make these amendments are either at the time of filing or when requesting examination, minimising the number of separate actions. Making early amendments to avoid excess claim fees also provides applicants with the opportunity to proactively amend claims for reasons of patentability, thus potentially simplifying the issues in examination.
By understanding these changes and planning accordingly, patent applicants can better navigate the revised process and avoid unnecessary complications.