Everything you need to know

From 1 October 2024, many of the official fees charged by IP Australia in relation to patent prosecution and patent opposition proceedings will be increased. Details of the fee review and the associated increases can be found here.

Excess claim fees

As expected, the review includes incremental increases for patent prosecution charges including filing and request examination fees. More importantly, however, there is a significant procedural change to the way that excess claims fees will be charged.

Currently, claim fees for Australian patent applications are incurred at acceptance and comprise a base fee of $250 plus an additional fee for each claim in excess of twenty claims as follows: claims 21 to 30, AU$125 per claim and AU$250 for each claim in excess of 30 claims.

Under the new fee regime, for applications where examination is requested on or after October 1, 2024, excess claim fees will be incurred when a first examination report issues. The deadline for paying the excess claim fees is within 1 month of the date the first examination report. If the fee is not paid, the application will lapse. However, the application can be revived if the payment of the fee is made prior to the final date of acceptance (which is 12 months from the date that the first report was issued, or a later date extended by s223).

Given this significant procedural change, patent Applicants need to be prepared to make claim amendments before, or at the time of, requesting examination to minimise excess claim fees. Adding claims between a first report and acceptance will also be subject to excess claim fees, which will be charged at acceptance.

Currently, the time for receiving an examination report after requesting examination varies from 12 to 23 months depending on the application technology. In this regard, the Patent Office has indicated that Applicants or their nominated agents will be notified approximately 6 months prior to the expected commencement of examination proceedings for their application. This notification is intended to provide an opportunity for an applicant, or their agent, to amend the claims prior to examination. Notwithstanding this proposed notification procedure, we strongly recommend that any necessary claim reductions, to minimise claim fees, be made before or at the time of requesting examination.

Specific details about the changes to patent excess claim fees can be found here.

For any questions about these changes, please reach out to Grant Shoebridge (grant.shoebridge@wrays.com.au) or contact your usual Wrays attorney or lawyer.