The provisions of the Intellectual Property Legislations Amendment (Fee Review) Regulation 2016 will come into effect on 10 October 2016, ushering in a raft of changes to the fees charged by IP Australia to administer Australia's IP rights system. The changes will affect fees charged in relation to patents, trade marks, industrial designs and plant breeder's rights.
The Fee Review Regulation is expected to support innovation, particularly amongst SMEs, by significantly reducing the costs of early stage evaluation of patentability, and by reducing the up-front costs of applying for trade marks. IP Australia has offset the reduction in some up-front fees by increasing maintenance fees in the latter stages of the term of the IP rights, when the IP rights are likely to be generating value for their owners.
The changes to the fee structure follow an internal review of IP Australia's cost recovery requirements and community consultation with stakeholders to canvass suggestions on how fees can be changed in order to foster innovation and benefit IP Australia's customer base. The fee changes are also intended to reduce red tape by streamlining the fee structure and reducing interactions between IP Australia and its customers.
Key highlights of the fee schedule changes are explored below:
Fee changes for patents and designs
International Type Search fee reduced
The fee for requesting an International Type Search based on a provisional application has been significantly reduced to $950 from $2,200. The reduction in this fee makes the International Type Search a cost effective tool for identifying relevant prior art and evaluating patentability early on in the patent protection life cycle. IP Australia expects this reduction in cost for early stage IP evaluation to particularly benefit small business and Australian research institutions.
Annuities Fee increased
The basic fees associated with a standard patent application remain unchanged. However, annuity fees from the 10th anniversary onwards will be increased. The annuities fees between the 10th to the 14th anniversary will increase by $50 and the annuities fees between the 15th to the 19th anniversary will see a $130 increase. For pharmaceutical patents that qualify for an extension to the ordinary patent term, the annuity fees between the 20th and 24th anniversary will increase by $250.
Several fees relating to patent and designs oppositions will also be removed. We have included an extract showing the full fees tables below.
Fee changes for trade marks
There is good news for trade mark owners, with changes to the fee schedule for trade marks filed after 10 October 2016 providing a reduction in the fees for obtaining trade mark registration.
Trade Mark registration fee eliminated
The current $300 fee for registering a trade mark has been eliminated, bringing IP Australia into alignment with the majority of the current member states of the Madrid Protocol. The elimination of the registration fee also avoids a touch point between the applicant and IP Australia, with all trade marks applications that pass the 3rd party opposition period now being automatically registered.
Trade Mark application fee increased but overall registration costs reduced
While the registration fee will no longer apply to applications filed after 10 October 2016, the trade mark application fees will increase from $200 to $330. The combined effect of these changes is to reduce the basic fees for registering a trademark from $500 per class to $330 per class.
Trade Mark renewal fees increased
Renewal fees will also increase from $300 per class to $400 per class for fees paid via online services, although late fees for trade marks renewals will now only be levied per trade mark, rather than per class.