A recent announcement of fee changes by IP Australia, has mostly thrown up little in the way of surprises. That is with the exception of the changes to the fee for an International Type Search on an Australian provisional patent application, which will drastically be reduced from $2,200 to $950 with effect from 10 October 2016.

IP Australia advises that ‘The reduction in the international type search fee is part of IP Australia’s innovation policy to support small business.’ This may well be the case. It is possible that the previous higher cost was major a deterrent for cost conscious applicants.

At the moment, we estimate having a search performed by a professional search provider, such as the in house information services team here at Watermark, is a more cost effective option. Patent searching databases are more advanced and faster to use than ever before and searching can be carried out very efficiently. Many free patent databases, such as Google patent and Esp@cenet, have extensive coverage and applicants themselves can use these as a free tool to make an early patentability assessment.

Presently, in some cases we have found that it can be more cost effective to file an innovation patent instead of, or along with, a provisional application and to request examination on the innovation patent rather than to have IP Australia perform the International Type Search. This strategy also means that if very relevant prior art is identified early and it is found that a standard patent would not be possible over the prior art, a backup innovation patent is already in place.

With the forthcoming lower fee for an International Type Search, patent applicants will have a further cost effective option for a patent search in the early stage of the patenting process.

We will wait and see if the new lower costs have the desired effect of encouraging a greater uptake in the International type search at IP Australia.

Other Fee Changes

Patent renewal fees from the 10th to 24th anniversaries will increase slightly.

Also, notably the official filing fees for trade mark applications will increase from $200 to 330 per class, but the present $300 registration fee for Australian trade marks will be abolished. This will bring IP Australia in line with 95 of the 97 Madrid Protocol members that do not charge a registration fee.

The fee for requesting a trade mark ‘Headstart’ pre-application search will also increase.

The cost of obtaining copies of documents from IP Australia will be streamlined across all IP. Obtaining 1 to 3 documents on the same file will cost $50 per document and obtaining copies of 4 or more documents will incur a flat $200 fee.

These fee changes are due to take effect on 10 October 2016. Further details can be found on IP Australia’s official website.