Following a recent review of the schedule of fees, IP Australia has implemented changes to fees for various IP rights, including patents, trade marks, designs and PBRs, that are due to come into effect on 1 October 2024.
The fee changes are mostly increases, although some fees have decreased or been removed altogether. The biggest increases are in relation to fees that apply during patent and trade mark opposition proceedings. Also, the costs recoverable in patent, trade mark and design opposition proceedings have increased significantly. IP Australia advises that these changes are designed to simplify fee structures, balance costs with work effort, encourage the strategic assessment of the value of IP rights, and streamline workflows.
The key changes are summarised below. In cases where fees have increased, Applicants may wish to consider taking actions on their IP rights before 1 October 2024 so that the old fee structure applies.
Patents
The most notable change to the patent fees is in relation to the timing of when excess claim fees are calculated. This is discussed in our previous article, “Australian patent applications: Changes to procedure for determining excess claim fees”. Other changes include increases in filing, examination, opposition, and extension of term fees.
Patent Applications
Fees for filing standard and innovation patents will increase. Examination fees and Acceptance fees will also increase. The fee for filing a provisional application will decrease.
| Fee | Previous (AUD) | New Fee (AUD) |
| Transmittal of international application under PCT | $200 | $0 |
| Filing provisional patent application | $110 | $100 |
| Filing Standard patent application (including PCT national phase) | $370 | $400 |
| Requesting examination of standard patent | $490 | $550 |
| Acceptance of standard patent application | $250 | $300 |
Patent renewals
The patent 4th year and 5th year renewal fees will remain unchanged. The 6th to 10th year renewal fees will increase by relatively small amounts in the range $10 – $50. However, the 11th to 19th year fees will increase by larger amounts in the range $60- $165. This maintains a fee structure that aims to keep renewal fees lower in the formative years and increase over time where there is a financial benefit to the patent holder, or they need to decide on their future investment in that patent.
| Renewal Fee (paid by preferred means) | Previous (AUD) | New Fee (AUD) |
| 6th year | $335 | $345 |
| 7th year | $360 | $380 |
| 8th year | $390 | $420 |
| 9th year | $425 | $465 |
| 10th year | $490 | $540 |
| 11th year | $585 | $645 |
| 12th year | $710 | $780 |
| 13th year | $865 | $945 |
| 14th year | $1,050 | $1,140 |
| 15th year | $1,280 | $1,385 |
| 16th year | $1,555 | $1,675 |
| 17th year | $1,875 | $2,010 |
| 18th year | $2,240 | $2,390 |
| 19th year | $2,650 | $2,815 |
Oppositions
Patent opposition fees have doubled. These have not increased since 2012-13. The doubling of these fees reflects the increased cost of providing these services over the last 10-years.
| Fee | Previous (AUD) | New Fee (AUD) |
| Filing a notice of opposition | $600 | $1200 |
| Requesting a hearing by the Commissioner | $600 | $1200 |
| Appearing and being heard at an oral hearing – for each day or part | $1000 | $2000 |
| Being heard by written submissions only | $600 | $1200 |
Extension of Term
The fee for filing an extension of term of pharmaceutical patents will increase from $2,000 to $2,500.
Trade Marks
A new fee structure for trade mark oppositions will be introduced.
Trade mark opposition: Statement of grounds and particulars
Rather than simply raise the flat fee for filing a Notice of Intention to Oppose, IP Australia has introduced a sliding scale fee. The new fee will apply to filing or amending a Statement of Grounds and Particulars (SGP) in certain circumstances in these proceedings.
The first three grounds of opposition will not attract a fee. However, any additional ground will attract a fee per ground. Also, there is a fee for nominated marks over 10 in relation to a ground.
Subsequent amendments that increase the grounds or nominated trade marks beyond 10 will incur an additional fee per ground or nominated mark.
These fees will be recoverable as an out-of-pocket expense if costs are awarded to the opponent, capped at $500. This is intended to mitigate the potential for unfairness to both parties.
| New SGP fees | (AUD) |
| Filing SGP in an opposition to registration of a trade mark, or in an opposition to extension of protection to an IRDA: | |
| · For each of the fourth and further grounds (if any) | $250 |
| · For each of the 11th and further registered or protected trade marks that the opposed trade mark is claimed to be substantially identical with or deceptively similar to (if any) | $250 |
| Requesting amendment of a SGP filed in an opposition to registration of a trade mark, or in an opposition to extension of protection to an IRDA | |
| · For a ground proposed to be added -if that ground would be the fourth or further ground in the SGP | $250 |
| · For a registered or protected mark proposed to be added – if that trade mark would be the 11th and further registered or protected trade marks that the opposed trade mark is claimed to be substantially identical with or deceptively similar to | $250 |
Trade mark hearing fees
Trade mark hearing fees will also change. Currently, there are four different fees that can be charged, and at two different points of the process: (1) A hearing request fee, and then (2) three different hearing attendance fees, depending on how the hearing is to be conducted.
As a result of the changes, the hearing request fee will be abolished, so only a single fee applies. Since there are very few hearings conducted in person, IP Australia will simplify the fee structure for hearings: by written submissions only or by oral hearing (both remote and in person).
| Fee | Previous (AUD) | New Fee (AUD) |
| Requesting a hearing by the Commissioner | $400 | Repealed |
| Being heard by written submissions only | $400 | $500 |
| Appearing and being heard at an oral hearing – for each day or part (by remote) | $600 | $700 |
| Appearing and being heard at an oral hearing – for each day or part (in person) | $800 | $700 |
Trade mark late evidence
A new fee of $500 will be introduced for requesting what the office considers ‘a declaration that was filed out of time’ in relation to the regulated deadlines for filing evidence in support, evidence in answer or evidence in reply during a trade mark opposition. The intention here is to put a price signal on what is a time-consuming process.
Trade mark removal for non-use
The fee to file an application for the removal of a trade mark from the Register for non-use will be increased.
| Fee | Previous (AUD) | New Fee (AUD) |
| Removal of a trade mark from register of trade marks for non-use; or Cessation of protection of a protected international trade mark for non-use | $250 | $350 |
Designs
The main fee changes apply to applications and examination requests.
Design applications
Application fees will be reduced.
| Fee | Previous (AUD) | New Fee (AUD) |
| Application for one (or first) design | $250 | $200 |
| Application for each additional design after first on filing | $200 | $150 |
| Request to amend design application to identify further design | $250 | $200 |
Design examination
Substantive examination of a design is voluntary and only needs to be pursued by the applicant if it is intended that the right will be enforced.
| Fee | Previous (AUD) | New Fee (AUD) |
| Request for examination by the registered owner | $420 | $500 |
| Request for examination by third party – amount payable by third party and registered owner | $210 | $210 |
Plant Breeders’ Rights (PBRs)
Significant fee increases will be introduced for applications, examinations, and renewals of PBRs. However, they reflect the fact that there have been very few increases to fees associated with PBRs over the last 20 years.
| Fee | Previous (AUD) | New Fee (AUD) |
| PBR application fee | $345 | $400 |
| Examination of PBR application and growing trial – examination at Centralised Testing Centre (CTC) | $920 | $1400 |
| Examination of PBR application and growing trial – examination with another variety at the same time and site in Australia outside a CTC | $1380 | $1600 |
| Examination of PBR application and growing trial – examination of a test growing in Australia otherwise | $1610 | $2000 |
| Examination of PBR application and growing trial – examination based solely on overseas test data | $1610 | $2000 |
| Lodging an application for a declaration of essential derivation | $800 | $850 |
| Certificate fee (for grant) | $345 | $500 |
| Annual renewal of granted PBR | $400 | $600 |
Costs recoverable in opposition proceedings
The costs recoverable as a result of opposition proceedings have increased significantly. In the case of patent oppositions, these costs have doubled. For trade mark and design oppositions, some fees have doubled, but some have tripled. The costs recoverable remain out of step with the actual costs incurred in an opposition but are a welcome change that has been long awaited.
Note: all amounts provided are AUD and are for payment of the fee by “preferred means.” The fees are higher when paid through “approved means.” Jones Tulloch uses “preferred means.”
This article was written by Sarah Couper.
11 September 2024
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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.