IP Australia (Australia’s Patent, Trade Marks and Designs Office), recently announced proposed fee changes with an expected implementation date of 1 October 2024.
The proposed fee changes are sweeping and will affect many stages in the registration and renewal of patents, trade marks, designs and plant breeder’s rights.
A summary of the proposed changes can be found at the link below.
Some of the key changes include:
- changes to fees for filing of, requesting examination of, and payment of acceptance fees of patent applications
- changes in the calculation of an excess patent claim fee to the date of the first examination report
- patent and trade mark hearing and opposition fees
- changes in patent, design and PBR renewal fees
- changes in trade mark fees for classes of goods and services
- increase in fees when requesting examination of a design application
- increase in fees for filing a new PBR
As mentioned in our Notice of last week one of the more significant changes is the procedure and calculation of the excess claims fee. Change to excess claim fees may have a significant impact on the amount of the official fee required to be paid on a patent application.
To avoid excess claims fees, we recommend taking one of the following actions where the as-filed application has more than 20 claims:
- Submit a request for examination on or before 30 September 2024;
- If requesting examination on or after 1 October 2024, at the same time as filing the request for examination, file an amendment of the specification to reduce the total number of claims to 20 or less; or
- If requesting examination on or after 1 October 2024, file an amendment of the specification to reduce the total number of claims to 20 or less, prior to the commencement of examination, that is, between the time of requesting examination and the issuance of a first examination report.
Wrays is committed to providing timely and appropriate advice to our International Associates and Clients so that you can make informed decisions regarding IP.
Should you have any questions about how the proposed fee changes will affect your IP cases in Australia, please do not hesitate to get in touch with your usual Wrays contact or the Wrays Principals listed to the right.