IP Australia (the Australian Patent Office) is proposing to
introduce new high fees to process future Australian patent
applications, with the new fees aimed directly at Australian small
and medium sized enterprises (SMEs).
As part of IP Australia's 'Raising the Bar' Act (set
to come into effect on 15 April 2013), the
draft Regulations propose a new fee of $2,200 to conduct a
preliminary search and opinion (PSO) on a complete patent
application. A slightly lower fee of $1,710 will be payable for
conducting a search as part of the normal examination of an
application. Payment of either of these fees is expected to be in
addition to an existing examination fee of $490.
Failure to pay the fees when requested by the Patent Office will
result in the patent application lapsing, with the applicant's
rights being lost forever.
The draft Regulations do not explain which applications will be
the subject to PSO's or when the Patent Office will decide to
conduct a PSO or search. An
Explanatory Statement [PDF] accompanying the Regulations states
that a PSO will be conducted on each application when a search by
another Patent Office is unlikely to be conducted before
examination of the application commences. The Statement goes on to
state that PSO's will be conducted by the Commissioner, on her
own volition, soon after filing (of the application).
The Statement makes it clear that applicants will be faced with
the new fee around the time of filing the application and it will
impact applicants who file Australian only patent applications,
often Australian individuals and SMEs. These substantial new fees
will impact on the Australian applicant simply seeking patent
protection in their home country, whilst foreign applicants with
sufficient resources to file international patent applications,
will escape the new fees.
The Patent Office defends the new fee regime on the basis that
the PSO will provide competitors and the general public with an
early indication of the likely success of the application. Despite
this, the PSO will not be a final or binding determination of the
validity of the application and no competitor or member of the
public will be able to rely on it for deciding the scope of any
future patent monopoly. As a result, applicants will face
substantially higher costs for obtaining their patent with little,
if any, benefit to them.
A potential outcome of the introduction of the new fees is that
the higher costs will lead to a decline in the number of patent
applications filed in Australia, particularly by local SMEs. These
companies will simply be unable to afford the escalating costs of
patenting, with their inventions left unprotected. At a time when
Australian innovators already struggle for funding and support, the
introduction of higher costs will create a further barrier to
obtaining patent protection from which they might leverage their
The new Regulations are expected to come into effect on 15 April
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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