Following this year’s stakeholder consultation IP Australia has released its proposed changes to the official fees charged in Australia for patents, trade marks, and registered designs. These fees are expected to take effect on 10 October 2016.

The changes are mostly small, however there is one significant change to the way that official fees are charged for trade mark applications. A summary of the changes for patents, trade marks and designs in Australia is provided below.

Trade Marks

At present a trade mark applicant pays an official fee of $200 in order to make their application, and a second fee of $300 (the registration fee) at the time of registration.

Following the changes IP Australia will no longer charge a registration fee and accepted trade marks which pass their opposition period will be automatically registered with no further action by the applicant. The removal of registration fees will bring the system in Australia into line with the vast majority of other countries who are part of the Madrid Protocol.

This change applies only to trade mark applications filed after 10 October 2016. Trade mark applications filed before that date will still incur a registration fee.

In order to pay for this change there will be modest increases in trade mark application and renewal fees. Most trade mark application fees will increase by $130 per class to $330, while renewal fees will increase by $100 per class. Though this may result in higher maintenance fees over the long term, the important up-front cost of applying for a trade mark will be reduced.

Fees for filing a notice of intention to oppose removal of a trade mark for non-use and for filing submissions when not attending a requested hearing will be removed as part of efforts to reduce red tape. Finally, the fees for requesting copies of trade mark documents from IP Australia will be simplified into two straightforward charges of $50 and $200.

Patents & Designs

There will be small increases to patent renewal fees from the 10th anniversary onwards ranging from an extra $50 in the 11th year to $250 in the 21st year.

In addition, as in the case of trade marks the small fees for requesting copies of patent and designs documents from IP Australia will be simplified into two straightforward charges. Further, official fees will be removed for four actions relating to patent oppositions, and two relating to designs oppositions specifically:

  • Request for dismissal patent opposition
  • Objection to a proposed amend patent
  • Objection to granting a patent
  • Requesting use of the Commissioner’s Discretionary Powers in the case of patents or designs
  • Filing a notice of opposition to a design

Finally, of note to local clients who see benefits in requesting an ‘International type search’ be carried out by the Patent Office on their provisional patent applications, is that a significant reduction in the search fee from $2,200 to $950 has been confirmed. This will make it more cost effective to request this search to place applicants in a more informed position prior to making a decision to proceed with a further complete patent application.

Conclusion

Overall these changes will not have a significant impact on the best strategy for protecting your intellectual property in Australia. However, they will act to reduce the up-front cost of registering a trade mark and the number of interactions necessary with IP Australia to do so.