Recently, IP Australia completed a review of fees and charges for Patents, Designs, Trademarks and Plant Breeders’ Rights. As a result of the review, changes were introduced through amendments to the regulations on 13 December, 2006. The fee increases will take effect as of 1 March 2007. Full tables of the proposed changes can be found on-line in the news section of IP Australia's website (www.IPAustralia.gov.au).
Most increases are relatively modest and should not impact greatly on the expense of acquiring and maintaining IP protection. There are, however, two significant increases relating to patent prosecution, the details of which are outlined below.
Under the regulations, fees are payable at acceptance to secure grant of an application. Currently, a fee of AU$140 is payable for all applications and, if the application includes more than 20 accepted claims, an extra fee for each claim in excess of 20 is payable. Under the new fee regime, this excess claim fee will increase from AU$20 to AU$100. Accordingly, as a result of the increase, an application having, for instance, 70 claims will require payment of an additional AU$4,000 in acceptance fees.
In addition, since the fee changes will apply to any fee paid after the implementation date of 1 March, 2007, many applications currently pending will be subject to large acceptance fee increases.
In the short term, our recommendation to applicants prosecuting patent applications having numerous claims is to push those applications through to acceptance as soon as possible and promptly pay any acceptance fees prior to 1 March.
Looking further ahead we recommend that:
Applicants determine whether any claims in an application that includes over 20 claims can be deleted without significantly affecting the monopoly to be protected;
Full use be made of multiple claim dependencies to increase the number of combinations available;
In cases where both independent and dependent method of treatment and Swiss-style claims are included in a specification, consideration be given to removing the dependent method of treatment claims; and
The possibility of "consolidating" omnibus claims into one claim be considered.
Oddly, there is a loophole in the Regulations which may, for the time being, allow an applicant to circumvent payment of excess claim acceptance fees. The loophole arises because acceptance fees are currently calculated by the Patent Office at the time the application passes to acceptance. It is technically possible to avoid the excess claim fees by filing an amendment to add the excess claims after the acceptance fees are calculated. It is important to note that claims added this way must fall within the scope of the accepted claims. Broadening amendments will not be allowed. In addition, amending the specification after acceptance will incur extra expense which must be offset against any savings made on excess claim fees otherwise payable.
At Shelston IP, we review each application and provide specific information and regarding the reduction or elimination of excess claims fees
Extensions of Time in Opposition
Currently, the deadline for submitting Evidence in Support, Evidence in Reply and Evidence in Answer during an Opposition may be extended relatively easily upon lodgement of a Request for an Extension of Time and payment of a fee for each month of extension requested. The changes increase the extension fee from AU$150 to AU$500 per month. Accordingly, a standard 3-month extension of time request lodged after 1 March, 2007 will incur official fees of AU$1500.
While this particular increase will only affect those requesting an Extension of Time during the Opposition of a patent, such requests are commonly made given the amount of evidence which must be compiled and reviewed. It would appear that this change is an attempt by the Patent Office to speed up the Opposition timeline.
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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