IPAustralia has just completed its four-yearly fee review, with changes to come into effect from 1 October 2024. While the majority of the changes (detailed here) are fairly straightforward and customary, a change to the way excess claim fees for patent applications are charged presents a new consideration for patent applicants and their advisors in Australia. 

Status quo 

Until now, IPAustralia has charged excess claims fees for each claim over 20 at the time of acceptance (AU$125 for each of claims 21-30 and AU$250 for each claim in excess of 30). Therefore it was possible to simply reduce the number of claims immediately prior to acceptance by amendment in order to reduce any excess claim fees payable. 

What is changing? 

From 1 October 2024, excess claim fees will be payable on the highest number of claims present whether at the first examination report issuing, or acceptance.  

This change will involve an invitation to pay (ITP) being issued with the first examination report. Excess claim fees for any claims in excess of 20 will be payable within one month of the report and ITP being issued. 

If the fee is not paid within 1 month of the date the first report was issued, the application will lapse. The application can only be revived if the payment of the fee is made prior to the final date of acceptance (which is 12 months from the date that the first report was issued). The bounds and basis for late payment are not yet clear. Given the potential protection to infringers who exploit an invention during a temporary lapse, we consider that intentionally deferring payment is not a sensible practice. 

It is also worth noting that excess claims fees must be paid before a response to the first examination report will be considered by an examiner. IP Australia notes that non-payment of any relevant excess claims fee will extend its timeframe of 20 working days to reply to a response to a first examination report. 

A further invitation to pay (ITP) will be issued for excess claims after acceptance, if the number of claims before the examiner has increased beyond the number considered at first report and beyond 20 claims. 

How to minimise excess claim fees 

If an applicant wants to minimise the excess claims fees payable, the claims must be amended before the first examination report issues. In practice, this is likely to be most conveniently achieved by amending at the time of requesting examination.  

It will be possible to request examination and then later request amendment of the claims. However, there will always be some degree of uncertainty as to when a report will issue, and if the report issues before the claims are amended, excess claim fees will be payable.  

IPAustralia have indicated that Applicants or their nominated agents will be notified approximately six months prior to the expected commencement of examination proceedings for their application. This notification will provide an opportunity for an applicant, or their agent, to amend their specification prior to examination. However, given the approximate nature of this indication, relying on this notification as a basis for avoiding excess claim fees would seem risky. 

IPAustralia’s explanation of the changes to excess claim fees, which includes a useful infographic showing the difference between the current and new processes is available here.

We will keep our clients updated on these changes by way of our normal correspondence. If you have any questions or require further information, please get in touch. 

Jesse Strafford - September 2024