In May, we reported that the Australian Patent Office had issued
a proposal to change certain official fees with effect from 1
August 2010 [
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
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
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.
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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