Following the signing of the Intellectual Property Legislation Amendment (Fee review) Regulation 2016 by the Governor-General on 17 August 2016, official fees for patents, trade marks, designs and plant breeder’s rights are changing.
Most of these changes will take affect from 10 October 2016, although changes to fees paid through the International Bureau in relation to International Registrations Designating Australia (Madrid Protocol applications) will apply from 28 October 2016.
Full details of the changes can be found here on the IP Australia website. A summary of some significant changes is set out below:
- International search fees will be decreased from $2,200 to $950.
- Renewal fees will be increased by $50 per year for years 10 to 14; by $130 for years 15 to 19 and by $250 per year for years 20 to 24.
- Trade mark application fees will increase by $130 per class, and renewal fees will increase by $100 per class; however, these increases are offset by abolition of the $300 per class registration fee that was previously payable upon acceptance of the application.
- Madrid Protocol designation fees for Australia will decrease from $420 to $350 per class, but renewal fees will increase by $100 in line with the increase for renewal of national registrations.
- Fees for filing an opposition to removal of an application will be abolished, but fees for opposition to registration will remain the same. Fees associated with filing written submissions in lieu of attending a hearing will also be abolished.
- Fees for extension of time to pay renewal fees during the six month grace period will be reduced from $100 per class, per month, to $100 per month; that is, no fees will be payable in respect of each additional class in a multi-class registration.
- Opposition fees will increase by $50.
- Fees associated with requesting an exercise of the Registrar’s discretionary powers will be abolished.
Plant Breeder’s Rights
- Currently, the fee for discounted examination only applies when 2 or more varieties of the same plant species are tested simultaneously at the same site in Australia. The new discounted examination fee will apply when 2 or more varieties of any plant species are tested simultaneously at the same site in Australia. The actual fee for discounted examination will remain the same at $1,380.
Sale of Documents
- In addition to the above changes, a uniform approach is being applied to charges for sale of documents from IP Australia. Provision of one to three documents from the same file will cost $50 per document, with a flat fee of $200 for four or more documents from the same file.