The Australian Patent Office (IP Australia) will soon implement changes to their fee structure. To assist with an understanding of these changes, we provide a brief summary of the changes and include some proactive recommendations to avoid some significant cost increases.
As of 1 October 2020, IP Australia will significantly increase some of their Patent, Trade Mark, Design and Plant Breeders Rights (PBR) fees. The fee changes have the greatest impact on patent fees (with renewals being the hardest hit); with the major impact in trade mark fees occurring during the application process. Designs and PBR will see only modest changes, but in general, an increase in fees. The following changes have been reproduced from information provided by IP Australia on their website.
Patent Service Fees
Filing fees for standard and innovation patent applications will remain unchanged except where patent applicants are unable to electronically file the application, in which case a filing fee increase of $100 will apply.
The current excess claim fee ($110 per claim in excess of 20 claims) has been abolished and replaced with a tiered structure.
Type of Excess Claim Fee |
Old Fee (AUD) Per Claim |
New Fee (AUD) Per Claim |
| Claims 21 to 30 | 110 | 125 |
| Claim 31 and over | 110 | 250 |
| Each claim in excess of 20 claims added post-acceptance | 110 | 250 |
To avoid incurring excess claim fees, we strongly recommend advancing prosecution of all pending patent applications (where more than 20 claims are necessary) with the aim being to gain acceptance of the application prior to 1 October 2020.
Finally, renewal fees are set to increase significantly, and particularly in the last five years of a standard patent. Renewal fees for pharmaceutical patents which benefit from a patent term extension will see an even greater fee increase. Therefore, we recommend reviewing the years remaining on your patent, the costs associated with future renewal fees and considering paying the fees in advance and prior to 1 October 2020.
On a positive note, patent applicants will benefit from the change in the fees associated with voluntarily requesting a Preliminary Search and Opinion which will decrease from $2,200 to $950.
Trade Mark Fees
The most significant change to trade mark fees results from applications that do not make use of the “Picklist”. Under the new fee structure, filing fees for non-Picklist applications will increase to $400 per class. Adding an additional class of goods/services to an application during the examination phase will rise to $400.
The good news is that the increased filing fees do not apply to applications lodged using the Headstart Request service or using the Picklist. Renewal fees for trade marks remain unchanged.
Trade mark hearing fees have also been changed. However, changes to trade mark opposition fees have been placed on hold for now. Further information on the changes in the trade mark fee structure may be found on our website.
Design Fees
The most significant change to the fees for designs is the introduction of a $200 fee for having more than one design in the same category.
Plant Breeder’s Rights Fees
New Plant Breeder’s Rights application has increased to $400. Additionally, the Qualified Person’s (QP) fee has increased with a designation of a QP being raised to $240 per 3 years. Renewal of a QP is likewise raised to $240 per 3 years.