From 10 October 2016, some official fees will be reduced
or eliminated while other fees have been increased for all
Australian patents and patent applications.
From 10 October 2016, new official fee changes will take effect
for all Australian patents and patent applications.
International-type search fees have been reduced by more than
Some opposition fees have been abolished.
Renewal fees from the 10th year anniversary onwards have been
Fees for the provision of documents have been simplified.
The Australian Patent Office has recently undertaken review of
its fee structure and has now implemented several changes that will
be of some benefit to applicants and other users of the patent
Fees going down
First, the good news for applicants. The official fee for
conducting an international type prior art search on an Australian
patent application has been reduced from AUD 2,200 to AUD 950. This
reduction of over 50% should provide some financial relief to SMEs
looking to obtain an initial assessment of the merit of their
Also, some official fees relating to making submissions during
opposition have been abolished. However, the abolished official
fees are limited to the following actions:
A request for dismissal of an opposition;
A request to be heard in relation to amendments made to the
Notice of Opposition;
A request to be heard in relation to a transfer of the rights
in an opposition to a new opponent;
A request to be heard in relation to amendments to the
Statement of Grounds and Particulars; and
A request for the Commissioner to exercise her discretionary
While any reduction or elimination of official fees is welcome,
it should be noted that the above actions are not that common in
oppositions and hence this represents only a relatively modest
saving to costs that are typically incurred in the opposition
Fees going up
On the other hand, the annual renewal fees for patents and
patent applications from the 10th year anniversary
onwards will increase. Renewal fees for the 10th to
14th year anniversaries will increase by AUD 50 per year
and renewal fees for the 15th to 19th year anniversaries
will increase by AUD 130 per year. For patents having the benefit
of an extension of term, the renewal fees for the 20th
to 24th year anniversaries will increase by AUD 250 per
The increase in renewal fees is at least modest in the
10th to 14th year anniversaries while the
more substantial increases in renewal fees are only in the last 5
years of patent term and the extended patent term. It is pleasing
that the renewal fees for the initial period of the first 10 years
of patent terms have not been increased but will remain the
A different fee structure with possible cost savings
Finally, the fee structure for obtaining documents from IP
Australia will be simplified. Previously, different official fees
were incurred depending on which documents were obtained. For
example, the official fee for obtaining a copy of a patent
specification (AUD 50) was different to the official fee for
obtaining six (6) or more documents from a file (AUD 200). In
addition, some official fees were the same but were under a
different category. For example, the official fee for obtaining a
copy of non-patent literature was the same as the official fee for
a certified copy of a document – AUD 50.
Under the fee structure changes, there will be now a single
official fee of AUD 50 per document for obtaining up to three
documents, irrespective of what type of document is obtained. For
four or more documents, there is a single official fee of AUD 200.
It would seem that this second official fee is capped, irrespective
of the number of documents sought. This simplified fee structure
should increase administrative efficiency for applicants and other
users of the patent system, and the capped official fee for more
than three documents should further reduce costs for users seeking
to access patent information.
The fee changes that will come into effect on 10 October 2016
should assist in reducing the costs involved with using the
Australian patent system. Where possible, it is recommended that
clients, applicants and other users of the patent system delay any
actions falling within the scope of the reduced or eliminated fees
until 10 October 2016. However, any renewal fees in the relevant
period should be paid prior to 10 October 2016 to avoid the
increases in official renewal fees.
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.
Shelston IP ranked one of Australia's
leading Intellectual Property firms in 2015.
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