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
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
* 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
For further information contact GarethDixon@ShelstoniP.com or
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.
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