IP Australia’s 2019-2020 fee review has resulted in changes to various official fees within the Australian Government Charging Framework. The aim of the changes is to ensure the recovery of fees from the administration of intellectual property rights systems. The changes are effective 1 October 2020.
The key changes are summarised as follows.
Trade marks
Standard Trade mark applications are subject to fee increases depending on the type of application. Applicants filing a new non-pick list application using the preferred filing method will be charged $400 for a standard trade mark application and $550 for series trade mark application, both of which are increased by $70 from the old fees. Non-pick list applications are those with classifications that are not from a collection of pre-approved goods and services created by IP Australia.
A new single fee of $400 for all hearing requests will be introduced. The single fee applies notwithstanding the type of hearing. Each day of the hearing will also attract fees ranging from $400 to $800 per day, depending on how the hearing is conducted (e.g. by written submissions or in-person). This fee will be offset by the hearing request fee.
Patents
The changes to the patent fee structure will be three-tiered. Firstly, new excess claim fees have been introduced for the following categories:
- Standard Patents: 21 to 30 claims $125
- Standard Patents: 31+ claims $250
Secondly, renewal/maintenance fees for patents exceeding 5 years will increase significantly, particularly for extended pharmaceutical patents.
|
Standard Patent Renewal/Maintenance Fee |
Old fee |
New fee |
|
5th Anniversary |
$300 |
$315 |
|
6th Anniversary |
$300 |
$335 |
|
7th Anniversary |
$300 |
$360 |
|
8th Anniversary |
$300 |
$390 |
|
9th Anniversary |
$300 |
$425 |
|
10th Anniversary |
$550 |
$490 |
|
11th Anniversary |
$550 |
$585 |
|
12th Anniversary |
$550 |
$710 |
|
13th Anniversary |
$550 |
$865 |
|
14th Anniversary Renewal |
$550 |
$1050 |
|
15th Anniversary Renewal |
$1250 |
$1280 |
|
16th Anniversary Renewal |
$1250 |
$1555 |
|
17th Anniversary Renewal |
$1250 |
$1875 |
|
18th Anniversary Renewal |
$1250 |
$2240 |
|
19th Anniversary Renewal |
$1250 |
$2650 |
|
Pharmaceutical Patent Renewal/Maintenance Fee |
Old fee |
New fee |
|
20th Anniversary |
$2550 |
$4000 |
|
21st Anniversary |
$2550 |
$5000 |
|
22nd Anniversary |
$2550 |
$6000 |
|
23rd Anniversary |
$2550 |
$7000 |
|
24th Anniversary |
$2550 |
$8000 |
Finally, and on a brighter note, preliminary search & opinion fees will be reduced significantly from $2,200 to $950.
Designs
Both application and renewal fees will increase for registered design applications. A new design application which is not submitted via preferred means will cost applicants $450 (previous fee $350). Subsequent designs within the same application will also attract a new fee.
Preferred Methods
If applicants use filing methods other than IP Australia’s preferred method, higher fees will be attracted. The obvious aim is to incentivise online filing methods for efficiency purposes. It is also to encourage users to make use of trade mark pick lists.
Finally, applicants should expect further changes in relation to awards of cost in opposition and non-use removal proceedings. The changes will be released once relevant stakeholder submissions and additional consultations have been assessed.
A full list of the fee changes can be viewed on IP Australia’s website.
For any enquiries, please contact us at ip@hhlaw.com.au.
