Early this week IP Australia (Australia’s Patent, Trade Marks and Designs Office), announced fee changes with an implementation date of 1 October 2024.
Included in the increase in fees is a change in the procedure and calculation of the excess claims fee. The changes will have a significant impact on the timing of the calculation of the excess claims fees, incurring an excess claims fee where there are more than 20 claims, for any patent application where a request for examination is filed on or after 1 October 2024.
Importantly, the calculation of the excess claims fees will be determined on the total number of claims considered during examination. Currently, an excess claims fee is incurred only after the application has been accepted. Under the new scheme, an Invitation to Pay for the excess claims fees will be issued at the same time as the first examination report. Since the fee is calculated on the total number of claims at the commencement of examination, an application with over 20 claims will incur the excess claims fee at the time of examination. For example, an application with 30 claims will incur an official fee of AUD1,250, and an application with 100 claims will incur an official fee of AUD18,750.
The applicant will have 30 days from the date of the Invitation to Pay by which time the fee must be paid, otherwise, the application will be considered to be in a state of lapse. It will be possible to restore the patent within 12 months if the fee is paid. Further details on the exact process will be provided in the next few days.
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. Therefore, if you have any questions regarding the change in the calculation of the excess claims fees or other changes in the official fees, please contact your usual Wrays contact or send your query to wrays@wrays.com.au.