Navigating Australia's patent claim fee changes & protecting your rights

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Spruson & Ferguson

Contributor

Established in 1887, Spruson & Ferguson is a leading intellectual property (IP) service provider in the Asia-Pacific region, with offices in Australia, China, Indonesia, Malaysia, Philippines, Singapore, and Thailand. They offer high-quality services to clients and are part of the IPH Limited group, which includes various professional service firms operating under different brands in multiple jurisdictions. Spruson & Ferguson is an incorporated entity owned by IPH Limited, with a strong presence in the industry.
IP Australia has arguably complicated the fee structure for applicants.
Australia Intellectual Property

The recent changes to IP Australia's fee structure includes a new process for calculating excess claim fees. Further to  our previous article on these changes, we outline below a number of considerations and measures to assist applicants in navigating these changes.

Fee changes for excess claim fees for Australian patent applications came into effect on 1 October 2024. The procedure has become more complex and costly, and there is an increased risk of losing rights if timely action is not taken.

Excess claim fees for more than 20 claims will now be calculated in two instances after examination is requested:

  1. At issuance of the first examiner's report:
    • excess claim fees are payable within one month from the date the first report is issued.
  2. At acceptance:
    • if the number of claims increases beyond those considered in the first report and exceeds 20 claims, additional fees will be payable when paying the acceptance fees (due three months after the Notice of Acceptance is issued).

For example, if a patent application has 100 claims examined at the issuance of the first report, excess claim fees will be incurred for 80 claims. If the number of claims remains at 100 or fewer at acceptance, no additional fees will be due. However, if the claims increase to 120 during examination, fees for the additional 20 claims will be payable at acceptance, even if the case is eventually accepted with only 100 claims.

There are several key points to note that we have expanded on in the sections below:

  • claim amendments can be made before the first examiner's report
  • applicants should consider amending the claims to reduce the total number before requesting examination
  • excess claim fees from the first report must be paid by a one-month deadline, or the application will lapse.

Claim amendments

IP Australia will issue a notification six months before examination starts, providing applicants with time to reduce the number of claims.

For applications with more than 20 claims at the time of requesting examination, applicants can file voluntary amendments, such as a reduction in claims, any time before the first examination report is issued.

However, IP Australia will not issue a notification for expedited examination of applications under the Global Patent Prosecution Highway (GPPH) program or standard routes, as the examination begins within eight weeks of the expedited request.

Considerations for reducing claims:

  • consider whether claiming alternatives within a single claim is a viable option. If considering a claim that defines alternatives, be aware that the claim may be invalid if one or more of the alternatives is deemed unpatentable.
  • if an application relates to more than one invention and a divisional application is likely to be required, applicants should consider an amendment to remove claims relating to the second invention when requesting examination to avoid paying excess claims fees for the second invention.

Claim fees to be paid within one month

Excess claim fees must be paid within the one-month deadline, or the application will lapse.

According to IP Australia, it is possible to revive the application by paying the fees before the final deadline to place the case in order for acceptance (i.e. 12 months from the date of the first examiner's report). Extensions of time may be granted under Section 223 of the Patents Act 1990 (Cth) if an error or omission has occurred, or if circumstances beyond a person's control can be demonstrated. However, extensions are discretionary.

What happens to patent rights during the lapse period?

Currently, there is no clear guidance from IP Australia or the Patents Act 1990 (Cth) on the impact to rights during the lapse period due to unpaid excess claim fees. However, similar situations, such as the failure to pay renewal fees, may offer some insight.

When a patent lapses due to unpaid renewal fees, an extension of time under Section 223 can restore the rights, but third parties may acquire limited rights to exploit the invention during the period when the patent was in a state of lapse. Under Regulation 22.21, alleged infringers can apply for a license to use the invention if infringement occurs after the patent lapses and before the extension of time is granted, as was confirmed in  HRC Project Design Pty Ltd v Orford Pty Ltd [1997] APO 12.

Although rights may be restored, they are therefore not absolute, and applicants may not be able to claim compensation from third parties that exploited the invention during the period when the patent was in a state of lapse.

It remains unclear whether similar limitations will apply to rights restored after paying delayed excess claim fees. It will be necessary to monitor any legal developments following the introduction of the new process.

How we can help

IP Australia has arguably complicated the fee structure for applicants, where a similar system to the Canadian patent office may have provided a more streamlined process. In Canada, claim fees are first calculated and payable when examination is requested.

Due to these various requirements, it is important to seek guidance from your patent attorney to ensure compliance and safeguard your rights.

Our team includes some of the most experienced and trusted attorneys in the region, so if you require assistance or any further information, please reach out to us.

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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