IP Australia’s patent fee updates: What to expect this October

Having completed a lengthy review process, including considering public feedback on proposed fee amendments, IP Australia is set to implement changes to its schedule of fees in relation to patents, trade marks, designs, and plant breeders rights commencing 1 October 2024. A complete list of the fee changes can be accessed here.

Below, we summarise important changes to the patent fee schedule.

Overview

IP Australia reviews fees every four years through a cost recovery financial model based on financial and demand forecasts for the upcoming financial year, as well as the three forward years. The financial model seeks to recover costs over the lifecycle of an IP right, e.g. the total costs associated with a patent application over its lifetime, as opposed to balancing the costs of each individual service, e.g. processing, examining, granting, and renewing the patent application.

According to IP Australia, the upcoming fee changes are “designed to simplify fee structures, balance costs with work effort, encourage the strategic assessment of the value of IP Rights and streamline workflows.”[1]

Patent fee changes

The key patent fee official fee changes are:

• Patent excess claims: although the value of excess claim fees will remain unchanged, the fees will no longer be based on the number of claims in the application at acceptance. Instead, excess claim fees will be calculated as the highest number of claims on file at any point during examination from the time the First Examination Report is issued. As discussed in our earlier article, this change will apply to applications with an examination request filed on or after 1 October 2024.
• Patent oppositions/hearings: fees associated with patent oppositions and hearings are doubling across the board.
• Patent applications: the application fee for both direct route and national phase entry standard applications will increase from $370 to $400 (when filed by preferred means) and from $570 to $600 (when filed by “another means”), marking the first increase in the patent application fee in over a decade.
• Patent examination: patent exam request fees will also increase for the first time in over 10 years. The standard exam request fee will increase from $490 to $550; an exam request with international preliminary report (IPE) will increase from $300 to $350, and exam request under subsection 44(3) will increase from $100 to $150.
• Patent renewals: the patent 4^th and 5^th year renewal fees will remain unchanged; however, the 6^th year renewal fee will increase by $10, and every subsequent renewal fee will increase by a further $10 (7^th–14^th year renewal fees) or $15 (15^th–19^th year renewal fees) from the fees paid in the previous renewal cycle.

Not all patent fees will increase. Notably, the fee for transmittal of an international application under the PCT is being repealed, and the cost of filing a provisional patent application is being reduced from $110 to $100.

We recommend patent applicants/owners interested in taking advantage of current lower fees, particularly the newly implemented timing for calculating excess claim fees, act before these fee changes take effect.