8 November 2024
IP Australia has recently unveiled its Cost Recovery Implementation statement (CRIS), resulting in updated fee charges which came into effect from 1 October 2024. These fee changes will affect patents, trademarks, designs and plant breeders rights.
A summary of the key changes are detailed below:
Patent Fee Changes
Excess claim fees
The most significant fee restructuring has occurred in respect to excess claim fees. Fees for claims beyond 20 will now be levied at the time of the first examination report and again at acceptance if claims increase post-report. Initial excess claim fees must be paid within one month of the first report's issue, with applications lapsing if not paid on time.
These changes will affect patents where examination is requested on or after 1 October 2024, but can be avoided by requesting examination earlier or amending claims before the first report. Applicants will be notified six months before a first report, allowing time to adjust claims accordingly.
Fee Decrease
Transmittal of International application under the PCT – AU$0 (was AU$200)
Filing provisional patent application – AU$100 (was AU$110)
Fee Increase
Filing of standard patent application (including PCT national phase entry) – AU$400 (was AU$370)
Filing of innovation patent applications – AU$200 (was AU$180)
Requesting examination of standard patent – AU$550 (was AU$490)
Acceptance of standard patent application – AU$300 (was AU$250)
Continuation/renewal fees (6th – 19th anniversary) – AU$345-$2,815 (was AU$335-$2,650)
Requesting an international-type search – AU$1,100 (was AU$950)
Filing notice of opposition – AU$1,200 (was AU$600)
Requesting a hearing – AU$1,200 (was AU$600)
Appearing and being heard at a hearing (for each day or part thereof) – AU$2,000 (was AU$1,000)
Being heard by written submissions only – AU$1,200 (was AU$600)
Applying for extension of term of a pharmaceutical patent – AU$2,500 (was AU$2,000)
Trade Mark Fee Changes
In respect to trade marks, Trade mark opposition fees have seen major changes with a new structure based on the number of grounds in the Statement of Grounds and Particulars (SGP). An additional AU$250 fee applies for each ground beyond the initial three, at both filing and amendment stages. A section 58A ground will not count towards this threshold if a section 44 ground is also included. The AU$250 fee for extra grounds is partially recoverable, capped at AU$500 if costs are awarded to the opponent, balancing fairness and reducing leverage based on adverse cost risks.
There is a new AU$250 fee for each trade mark beyond the 10th relied on in the opposition, and new fees are introduced for late evidence submissions and hearing requests.
Fee Decreases
Requesting a hearing by the Registrar of Trade Marks – AU$0 (was AU$400)
Oral hearing in person – for each day or part day – AU$700 (was AU$800)
Fee Increases
Filing a SGP in an opposition to registration of a trade mark or in an opposition of extension of protection to an IRDA:
- For each of the fourth and further grounds – AU$250 (was AU$0)
- 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 – AU$250 (was $0)
Requesting amendment of an SGP filed in an opposition to registration of a trade mark, or in an opposition of 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 – AU$250 (was AU$0)
- For a registered or protected trade mark proposed to be added – if that trade mark could be the 11th or further trade mark that the opposed trade mark is be claimed to be substantially identical with or deceptively similar to – AU$250 (was $0)
Applying for removal of a trade mark from the Register of Trade Marks for non-use or cessati0n of protection of a protected international trade mark for non-use- AU$350 (was AU$250)
Late filing of evidence in opposition proceedings - $AU500 (was AU$0)
Being heard by written submissions only – AU$500 (was AU$400)
Oral hearing by remote appearance – for each day or part day – AU$700 (was AU$600)
Design Fee Changes
Consisting of mostly of fee reductions, the design fee changes is as follows:
Fee Decreases
Filing fee for one design – AU$200 (was AU$250)
Filing fee for several designs (each additional design) – AU$150 (was AU$200)
Amend design application identify further design – AU$200 (was AU$250)
Fee Increases
Requesting examination (registered owner) – AU$500 (was AU$420)
Plant Breeders rights
Unfortunately, plant breeders rights have only experienced fee increases:
Fee Increases
Lodging application for grant of plant breeder’s rights – AU$400 (was AU$345)
Examination of application and growing trial – AU$1,400-$2,000 (was AU$920-$1,610)
Application for a declaration of essential derivation – AU$850 (was AU$800)
Certificate fee – AU$500 (was AU$345)
Renewal fees – AU$600 (was AU$400)
Costs recoverable in opposition proceedings have risen significantly, by 50% to 385%. While these updated costs better reflect current fees, they still don't fully align with actual expenses. To save costs, request patent, design, or plant breeder’s rights examinations before 1 October 2024. For trade marks, file the Statement of Grounds and Particulars (SGP) before this date to avoid extra fees for additional grounds of opposition.
