IP Australia has announced that as of 12.00am AEDT, 10 October 2016 official fees for the administration of patents, trade marks, designs, and plant breeder’s rights will be changing.

These changes come as a result of the recent IP Australia Fee Review in accordance with Australian Government Cost Recovery Guidelines 2014.

In brief, the trade mark fee changes will allow for an overall lower up-front cost for trade mark registration, which will be somewhat offset by an increase in renewal fees.

The patent fee changes will result in a 50% reduction in the international type search fee. An international type search can help you make an informed decision about whether to proceed with a PCT application.

A summary of the key changes are detailed below.

Trade marks

Registration

There will no longer be an official fee for registration of a trade mark. This brings IP Australia in line with most other international IP offices.

Tip: All applications which are filed on or before 7 October 2016, and subsequently registered after this date, will still be required to pay the AU$300 registration fee.

If you are considering filing a trade mark application in Australia close to this date, you may wish to delay filing the application until after 7 October 2016 in order to save when the application reaches registration. This benefit will however, depend on individual circumstances and the importance of obtaining a priority date should be considered.

Description

Current fee

New fee:

Registration fee – per class

AU$300

No fee

Application

The cost to file a trade mark application in Australia is set to increase by AU$130 per class. This change will partially offset the removal of the registration fee.

Tip: When filing an application in Australia, savings can still be made by using the pre-approved picklist items and using the IP Australia online services.

Description

Current fee:

New fee:

Application – with picklist per class

AU$120

AU$250

Application – without picklist per class

AU$200

AU$330

Series application – with picklist per class

AU$270

AU$400

Series application – without picklist per class

AU$350

AU$480

The cost to file a Madrid import application into Australia is set to decrease by AU$70 per class. This change ensures the cost for both national and international applicants seeking 10 year trade mark protection is the same.

Madrid import application fees are scheduled to apply from12 am AEDT, 28 October 2016.

Tip: If practicable, we recommend delaying filing a Madrid designation into Australia until after 28 October 2016.

Description

Current fee:

New fee:

Madrid designation – per class

AU$420

AU$350

Renewals

The cost to renew a trade mark application in Australia is set to increase by AU$100 per class. This change will offset the remainder of the registration fee but will allow for a lower up-front cost for trade mark registration.

Tip: In Australia, trade marks can be renewed up to a year in advance, if your trade mark registration is due for renewal before 7 October 2017, we recommend paying the renewal fee before the proposed changes come into force (7 October 2016). This will enable you to benefit from the lower renewal fee.

Description

Current fee:

New fee:

Renewal – per class

AU$300

AU$400

Madrid designation renewal – per class

AU$300

AU$400

Other fee changes

The fee for an extension of time to pay late renewal fees will be AU$100 per month or part of a month from when the renewal was due, rather than AU$100 per class, per month or part of a month.

There will no longer be an official fee for filing a notice of intention to oppose removal of a trade mark for non-use, or for filing written submissions when not attending a requested hearing.

The fee structure for obtaining documents will be simplified by removing the numerous different fees for sale of documents across patents, trade marks and designs and replacing them with two fees that are standard across these IP rights.

Patents and designs

International type search

The international type search will be reduced by more than 50%. The reduction in this fee is part of IP Australia’s innovation policy to support small business.

Tip: An international type search can help you make an informed decision about whether to proceed with a PCT application. An international type search can be requested within 12 months of filing an Australian provisional application. A partial refund of the PCT search fee may be available if you proceed with a PCT application.

Description

Current fee:

New fee:

International type search

AU$2,200

AU$950

Renewals

The renewal fees paid for years 10 to 24 will increase by approximately 11%. The renewal fees for years 4 to 9 will not change. These increases address increasing patent expenses.

Tip: If you have an upcoming renewal fee, you can pay the current fee if you pay before 10 October 2016.

Description:

Current fee:

New fee:

4th to 9th anniversaries

AU$300

AU$300

10th to 14th anniversaries

AU$500

AU$550

15th to 19th anniversaries

AU$1,120

AU$1,250

20th to 24th anniversaries

AU$2,300

AU$2,550

Design opposition fees

There will be some minor changes to the design opposition fees including, an increase of AU$50 for filing a notice of opposition, and no fee for requesting the Registrar to exercise discretionary powers. We do not expect these changes to have any significant effects.

Other fee changes

Some fees relating to patents oppositions will be removed including, the request for dismissal of a patent opposition, objections to proposed amendments, objections to granting a patent or any other action, and requesting the Commissioner to exercise discretionary powers. These changes simplify the fee structure and are consistent with Government red-tape reduction initiatives.