In May, we reported that the Australian Patent Office had issued a proposal to change certain official fees with effect from 1 August 2010 [ http://www.shelstonip.com/news_story.asp?m=5&y=2010&nsid=145]. These fee changes have now been approved and the Patents Regulations 1991 updated accordingly. They include, in particular, a new official fee which will effectively close a loophole in relation to acceptance fees for patents with more than 20 claims.

The percentage increase in official fees varies significantly depending on the item. Given the present global economic climate, the magnitude of some increases is perhaps surprising eg. the fee for requesting an extension of patent term is to rise from AU$1300 to AU$2000 (54%!) and the fee for filing a provisional application is to rise from AU$80 to AU$110 (37.5%). On the other hand, the increase in the fee for other items is relatively modest eg. the fee for entering the Australian national phase is to rise from AU$320 to AU$340 (6.25%); the fee for requesting examination of a standard patent will increase from AU$420 to AU$450 (7%); the 10th to 14th annuities are raised from AU$400/year to AU$450/year (12.5%); and the 15th to 19th annuities from AU$900/year to AU$1020/year (13%).

The most notable change, however, is the new fee that will effectively close a loophole through which patentees could avoid paying official fees for certain claims in excess of 20.

Currently, an official fee of $100 per claim is payable at the time of acceptance of an Australian patent application for every claim in excess of 20. In cases where there were numerous dependent claims, it was possible to remove the dependent claims prior to acceptance (and thus reduce the official fee) and to subsequently file post-acceptance amendments to reintroduce the deleted (dependent) claims. Since post-acceptance amendments require payment of a single official fee of AU$200 irrespective of the number of claims, savings could be made if more than two dependent claims were deleted/reintroduced.

Although attorney time was payable for making the post-acceptance amendment, in cases where several claims were reintroduced the savings could be significant. For example, employing this practice for a set of 100 claims resulted in a saving in official fees of around $AU7500 (about US$6500).

The new official fee structure effectively closes this loophole. A fee of AU$100 per claim for each claim in excess of 20 is now payable when the applicant adds claims after acceptance. Consequently, there is no advantage to be gained by including dependent claims in post-acceptance amendments.

The Australian Patent Office is focussed on aligning itself with practice in other jurisdictions. These fee changes take us one step closer to European practice in which very onerous official fees are levied for claims in excess of 15. However, the differences between jurisdictions also have to be borne in mind in order to obtain the most cost-effective IP protection. In that regard, we emphasise that the Australian official fees are due at acceptance. Patentees and practitioners need to ensure they have achieved the best compromise between cost and protection before the patent application passes to acceptance.

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