IP Australia has made a number of fee changes due to take effect from 1 October 2024. This is the first of two articles, exploring the most significant of these changes.
Excess claim fees
In Australia, patent applications having more than 20 claims are subject to excess claim fees of AU$125 for each of claims 21 to 30 and AU$250 for each claim in excess of 31. Whilst the actual fee per excess claim remains the same, significant procedural changes have been made for determining when these fees are incurred. Currently, excess claim fees are incurred based on the number of claims at the time of acceptance (allowance). Under the new procedure, the maximum number of excess claims that are examined will incur a fee regardless of whether they are accepted or not. These changes apply to patent applications where examination is requested on or after 1 October 2024.
First examination report
Excess claim fees are first incurred at the time of the first examination report. An invitation to pay will issue at this stage. The deadline to pay the excess claim fees will be 1 month from the date of the first examination report. If the fees are not paid, the application will lapse. However, the application can be revived if the payment of the fees is made prior to the final date for acceptance (usually 12 months from the date of the first examination report). These fees must be paid before a response to the first examination report will be considered by an examiner.
Acceptance
Further excess claim fees may be incurred at the time of acceptance, based on the maximum number of claims that exceed the number at the time of the first report. If there are any additional excess claim fees to pay at acceptance, these will be added to the acceptance fee that will also be due to be paid.
What this means for patent applicants
These changes apply to Australian patent applications where examination is requested on or after 1 October 2024. Requesting examination prior to this date will mean that the application is subject to the current excess claim fee arrangements.
If examination is requested on or after 1 October 2024, patent applicants should consider whether to make claim reductions before the first examination report issues, to avoid or minimise unnecessary excess claim fees. IP Australia has indicated that it will issue a notification 6 months prior to the expected commencement of examination, so that patent applicants can consider whether to amend the claims and, if appropriate, reduce them. However, the timing of the first examination report once examination has been requested cannot be predicted (at this stage it varies from 1 to 2 years depending on the technology area). Accordingly, we recommend that any necessary claim reductions be made at the time of requesting examination.
In addition, careful consideration should be given to adding claims during prosecution as these may attract excess claim fees at the time of acceptance.
This article was written by Sarah Couper.
4 September 2024
If you have any specific enquiries about this article, please contact one of our team.
Jones Tulloch’s articles are provided as general information only, current at the date of publication. They do not constitute professional (patent and trade mark attorney) advice and should not be relied upon as such. If you need specific professional advice, for example in relation to a matter of interest arising from this communication, please contact us.