Patents that are registered on the Australian Register of Therapeutic Goods (ARTG) with an extended term protecting pharmaceuticals or biologicals, are soon subject to renewal fee increases exceeding 300% in some cases.

Why the fee increase?

Effective 1 October 2020, many of IP Australia’s official fees will increase. These changes have been made after extensive consideration and a public consultation period. Inputs also included the Productivity Commissions 2016 enquiry into Australia’s IP arrangements. In announcing the changes, IP Australia states that the themes the fee review addressed included:

  • Supporting innovators by balancing fees with costs of doing business
  • Increasing flexibility and efficiency for IP Australia and its stakeholders
  • Exploring the impact fees have on the quality of IP applications and competition in the marketplace.

Submissions received during the consultation period reportedly encouraged IP Australia to consider encouraging IP owners to be more considered when it comes to renewing their rights. The Productivity Commission also encouraged reviewing renewal fees.

When the market competition and ‘considered’ renewal themes are taken together, it is not surprising that steeper fee increases are proposed for renewing a patent in its later years. This is particularly relevant to the years in which a patent subject of a pharmaceutical or biological-related extension of term is available.

How much are the increases?

Previously, fees increased stepwise at the 10th, 15th and 20th years, but will now occur every year. Major increases from approximately 150% to 320%, will apply to fees payable on the 14th and 17th anniversaries (and beyond). Fees for the last year of an unextended patent will be A$2,650 - up from A$1,250, and on the 24th anniversary of a patent with an extended term, are now A$8,000 - up from $2,550.

Beating the increases

Some good news for IP rights holders, is that renewal fees can be paid in advance at the Australian Patent Office. Patentees of products on the ARTG (for which a patent term extension has been granted) can save up to A$17,250 by paying fees due for the extended years of their patents by 1 October 2020. If you add in the last few years of the unextended term of the patent, fees more than A$20,000 can be saved.

Patentees wanting to make savings should contact their Attorney or renewals specialist to make advance payments.