Effective 1 October 2024, IP Australia will introduce significant changes to its fee structure, as outlined in its Cost Recovery Implementation Statement (CRIS). These changes impact the costs associated with patents, trade marks, designs, and plant breeder’s rights. While some filing fees remain unchanged or have decreased, such as for trade marks and designs, many other fees have seen increases.
For businesses and individuals managing intellectual property rights, staying informed of these changes is crucial for budgeting and strategic planning. This article outlines the key changes and offers practical advice on how to navigate the new landscape.
TRADE MARK FEE ADJUSTMENTS
Although trade mark filing fees remain unchanged, significant changes have been made to opposition proceedings, introducing a new fee structure for additional grounds of opposition.
Opposition Fees
A new fee of AU$250 applies for each additional ground beyond the first three (3) grounds in a Statement of Grounds and Particulars (SGP). Previously, opponents could claim multiple grounds without incurring extra fees. This change encourages a more focused and strategic use of opposition grounds. Other changes include the introduction of an AU$250 fee for each pending or registered mark relied on in opposition proceedings after the 10th mark.
- Previous system: No limit on the number of opposition grounds that could be asserted without incurring additional costs.
- New system: A fee of AU$250 will apply for each additional ground beyond three (3), prompting more thoughtful consideration of the grounds included in opposition filings.
This fee will also apply when amending an SGP to add new grounds after the initial filing.
Overall Trade Mark Fee Breakdown
- Fee to decrease:
- Requesting a hearing by the Registrar of Trade Marks: $400 → $0
- Oral hearing (in person): $800 → $700
- Fee increases:
- Filing a SGP in opposition:
- For each ground beyond the third: $0 → $250 per ground
- For each trade mark beyond the 10th relied on in opposition: $0 → $250 per mark
- Amending a SGP:
- For additional grounds (fourth or further): $0 → $250
- For additional trade marks (beyond the 10th): $0 → $250
- Late filing of evidence in opposition proceedings: $0 → $500
- Being heard by written submissions only: $400 → $500
- Oral hearing by remote appearance (e.g., videoconference): $600 → $700
- Filing a SGP in opposition:
REGISTERED DESIGNS FEE ADJUSTMENTS
For design rights, key changes include a decrease in filing fees and an increase in examination request fees.
Overall Design Fee Breakdown
- Fee decreases:
- Filing one design: $250 → $200
- Filing several designs (each additional design): $200 → $150
- Amending a design application: $250 → $200
- Fee increases:
- Requesting examination (registered owner): $420 → $500
PATENT FEE ADJUSTMENTS
The patent fee structure has undergone several changes, the most notable being the timing for levying excess claim fees. Additional changes include the abolition of PCT transmittal fees and increases to filing, examination, and renewal fees.
Excess Claim Fees
- Current process: Excess claim fees are payable for claims exceeding 20 at acceptance.
- New process:
- Fees will be charged for each claim in excess of 20 when the first examination report is issued; and
- Additional fees apply at acceptance if the number of claims increases after the first report.
Failure to pay excess claim fees within one month of the report’s issue will result in the application lapsing. Examination requests made before 1 October 2024 will not be subject to these new fees.
Overall Patent Fee Breakdown
- Fee decreases:
- Transmittal of international application under the PCT: $200 → $0
- Filing provisional patent application: $110 → $100
- Fee increases:
- Standard patent application: $370 → $400
- Innovation patent application: $180 → $200
- Requesting patent examination: $490 → $550
- Acceptance of standard patent application: $250 → $300
- Continuation/renewal fees (6th–19th anniversary): $335–$2,650 → $345–$2,815
- International-type search request: $950 → $1,100
- Filing notice of opposition: $600 → $1,200
- Requesting a hearing: $600 → $1,200
- Appearing at a hearing (per day): $1,000 → $2,000
- Being heard by written submissions only: $600 → $1,200
- Pharmaceutical patent term extension application: $2,000 → $2,500
PLANT BREEDER’S RIGHTS FEE ADJUSTMENTS
For those managing plant breeder’s rights, fee increases apply across various categories, with no fee decreases announced.
Overall Plant Breeder’s Rights Fee Breakdown
- Fee increases:
- Lodging application for plant breeder’s rights: $345 → $400
- Examination and growing trial: $920–$1,610 → $1,400–$2,000
- Application for a declaration of essential derivation: $800 → $850
- Certificate fee: $345 → $500
- Renewal fees: $400 → $600
RECOVERABLE COSTS IN OPPOSITION PROCEEDINGS
The costs recoverable in opposition proceedings have increased substantially. Full details of these changes can be seen on IP Australia’s website here.
HOW TO SAVE
By planning ahead, businesses can minimise the impact of these fee increases:
- Patents and Designs: To avoid new excess claim fees, request examination before 1 October 2024.
- Trade marks: File your Statement of Grounds and Particulars before this date to avoid the AU$250 fee for additional grounds of opposition.
TAKE AWAY
IP Australia’s upcoming fee changes represent a shift in the cost of managing intellectual property, particularly for businesses engaged in patents, trade marks, designs, and plant breeder’s rights. While some fees have decreased, the majority have increased, particularly in opposition proceedings.
If you require assistance understanding how these changes will impact your IP portfolio or opposition strategy, contact us. Our team can help you navigate these changes and ensure you are well-prepared for the new fee structure.