Following its internal fee review, the Australian Patent Office has issued a proposal to increase certain official fees with effect from 1 August 2010.
On the most part, the proposed fee increases are nominal and insignificant – for instance, the official fee for entering the Australian national phase is proposed to increase from AU$320 to AU$340; and filing a provisional application is planned to rise from AU$80 to AU$110.
However, there is one new fee proposed that will effectively close an existing loophole through which many Australian patent applicants may avoid the excess claim fees that become payable upon acceptance. As many will know, such fees are levied at the time of acceptance of an Australian patent application; and are charged at the rate of AU$100 per claim in excess of 20.
In order to get round this additional expense, it has been possible – and indeed the standard practice of many in the profession – to reduce the number of claims to 20 or fewer immediately prior to acceptance, whereupon the "base" official fee of AU$140 becomes payable. The second part of this practice is generally then to file post-acceptance amendments* to return the number of claims to that intended originally by the applicant. Such post-acceptance amendments bear an official fee of AU$200, plus a nominal service or time-based fee charged by the attorney.
In real terms, employing this practice upon a 100-claim set could amount to an official fee saving of around $AU7500 (about US$6500). Accordingly, the benefits and advantages inherent in this practice may be substantial.
However, the most significant of the fee changes proposed by the Australian Patent Office would close this loophole. A new fee is proposed which will apply in such circumstances (i.e., where the applicant adds claims post-acceptance); the proposed new fee is, unsurprisingly, AU$100 per claim in excess of 20 – and would render the above practice obsolete.
Whilst it is not yet certain that these fee increases will eventuate – let alone on 1 August 2010, Australian patent applicants having pending applications with a large number of claims may wish to expedite prosecution and acceptance of their application in order to take advantage of this loophole while it still exists. Shelston IP would be pleased to advise further in this regard.
Were the proposed new fee to become a reality, it will likely become standard practice amongst the profession to review pending claim sets immediately prior to acceptance with a view to settling upon the number of claims offering the best compromise between cost and protection.
* Under Australian practice, post-acceptance amendments must be "within the scope of the claims as accepted". In practice, this generally means retaining all independent claims within the "reduced" claim set presented for acceptance – and then adding back the dependent claims post-acceptance.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
