As of 1 October 2020, IP Australia will introduce a raft of changes to official fees for patents, trade marks, designs, and plant breeder’s rights. A full list of the changes can be found here.

The overwhelming theme is that IP Australia is actively discouraging filings by any means other than electronic means by imposing large fee increases to filings by paper or fax. By way of example, filing of a standard patent application by paper will incur an official fee of $570 compared to $370 for electronic means.

IP Australia has also introduced a number of new fees as well as an increase to existing fees. We will highlight a handful of the changes relating to official actions using electronic means of filing.

Excess claim fees for a standard complete patent will change substantially and will move to a tiered system. The current fee is a blanket $110 per claim in excess of 20 claims at acceptance. This fee structure will be abolished and replaced with two new excess fees payable at acceptance:

• Greater than 20 claims & equal to or less than 30 claims is $125 per claim
• Greater than 30 claims: $250 per claim

For a standard complete patent amended after acceptance to include greater than 20 claims, a fee of $250 per claim will apply.

According to IP Australia, the fee consultation process raised that IP right holders should be more considered when it comes to renewing their rights. The mechanism by which IP Australia chose to implement this strategic assessment of the value of rights is to increase patent renewal costs.

Patent renewal fees will not only increase but will be different for each year renewal. Currently, a single renewal fee is payable for groupings of renewal years e.g., 5th to 9th year renewal is $300 per renewal. Under the new schedule of fees, there will be increase each year of renewal, with the largest increases seen in the latter year renewals (compare 19th year of $1,250 (old) to $2,650 (new)). Pharmaceutical patents with an extended patent term will face hefty increases in renewal fees in the extension term.

IP Australia has offered a voluntary Preliminary Search & Opinion before request for examination for a few years. The current official fee is $2,200, which will be reduced to $950 from 1 October 2020. Clearly, IP Australia wishes to incentivise an uptake of this service by implementing this substantial fee reduction.

The official fee for a standard trade mark application will increase from $330 per class to $400 per class (not using the official picklist). A number of new fees for costs awards that can be applied to Australian Trade Marks Office in oppositions and hearings have been introduced to address costs incurred during these proceedings.

IP Australia fees have been under review for the past 18 months, well in advance of the “new normal”. One cannot help but think that these impending fee increases are somewhat ill-timed in a global economy under severe stress from COVID-19. It is also interesting that IP Australia seemingly wishes to disincentivise IP rights owners maintaining their rights by implementing an increase in renewal fees.