Australia: Zero sum game? Australian Patent Office fee changes

Last Updated: 2 September 2016
Article by Andrew Lowe and Russell Davies

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.

Executive Summary

  • 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 50%
  • Some opposition fees have been abolished.
  • Renewal fees from the 10th year anniversary onwards have been increased.
  • 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 system.

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 patent applications.

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 powers.

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 process.

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 year.

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 same.

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.

Conclusion

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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Authors
Andrew Lowe
Russell Davies
 
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