Significant increase in IP Australia fees as of 1 October 2020

From 12am AEDT 1^st October, IP Australia will commence changes to their fee arrangements. A list of these new fees can be viewed here

Over the last two years IP Australia has been reviewing and consulting on their fees with the result being a general increase in fees. The fee changes have been:

"designed based on this feedback and in accordance with the Australian Government Charging Framework and the relevant Productivity Commission recommendations… to ensure [IP Australia] continue[s] to recover [its] costs from administering intellectual property (IP) rights and their associated legislation".

Summary of the fee changes

Patents

The following patent fees will see some changes:

Increase to Patent Excess Claims Fees;
Increase of Patent Renewal Fees;
Decrease in the fee for a Preliminary Search and Opinion.

Trade Marks

The trade mark fees will see the following changes:

Increase of Trade Marks Application Fees;
Alignment of Hearing Fees.

Designs

The design fees will see the following changes:

Increase of Design Renewal Fees;
Introduces a new fee for subsequent designs in the same application.

Costs awarded in proceedings

IP Australia had proposed increases to the costs awarded to the successful party following an opposition or hearing. Most of the submissions lodged with IP Australia during the consultation period expressed concern about proposed changes to costs awards. In light of that feedback, IP Australia has decided that the proposed changes to cost awards required further consultation and consideration and will not proceed with changes at this time.

Fee changes in detail

Patents

IP Australia has changed the structure of excess claim fees and annual renewal fees. The renewal fees increase on an annual basis and have increased significantly for a pharmaceutical patent for which there has been an extension of term. Excess claim fees are still payable on the number of claims present at the time of acceptance, however claims 21-30 will now attract a different fee to claims 31 and above. There has also been a substantial reduction to the fee for preliminary search and opinion to AUD 950 (from AUD 2200).

Change to Patent Excess Claims Fees

Fee Description	Current Fee (AUD)	New Fee (AUD)
Amend Standard Complete Patent After Acceptance - Greater than 20 claims	110	250
Standard Patent - Greater than 20 claims & equal to or less than 30 claims	-	125
Standard Patent - Greater than 30 claims	New Fee	250
Standard Patent - Greater than 20 claims - per claim	110	Replaced with the above.

Change to Patent Renewal Fees

Fee Description	Current Fee (AUD)	New Fee (AUD)
Standard Patent - 5th year	300	315
Standard Patent - 6th year	300	335
Standard Patent - 7th year	300	360
Standard Patent - 8th year	300	390
Standard Patent - 9th year	300	425
Standard Patent - 10th year	550	490
Standard Patent - 11th year	550	585
Standard Patent - 12th year	550	710
Standard Patent - 13th year	550	865
Standard Patent - 14th year	550	1050
Standard Patent - 15th year	1250	1280
Standard Patent - 16th year	1250	1555
Standard Patent - 17th year	1250	1875
Standard Patent - 18th year	1250	2240
Standard Patent - 19th year	1250	2650
Pharmaceutical Patent - 20th Year Renewal	2550	4000
Pharmaceutical Patent - 21^st Year Renewal	2550	5000
Pharmaceutical Patent - 22nd Year Renewal	2550	6000
Pharmaceutical Patent - 23^rd Year Renewal	2550	7000
Pharmaceutical Patent - 24th Year Renewal	2550	8000

Trade Marks

Trade mark filing and renewal fees have been increased.

Fee Description	Current Fee (AUD)	New Fee (AUD)
Standard TM Application - First Class	330	400
Standard TM Application - Additional Classes	330	400
Series TM Application - First Class	480	550
Series TM Application - Additional Classes	480	550

Changes to Madrid Import Application fees - to AUD 400 - are scheduled to commence from 12am AEDT, 7 November 2020.

The fee payable when requesting a hearing has depended upon the nature of the hearing requested. The fee structure has been simplified with the same fee - AUD 400 - for requesting a hearing (compared with the previous AUD 400 or AUD 600).

Fee Description	Current Fee (AUD)	Proposed Fee (AUD)
Filing for a request for a hearing	New Item	400
Appearing and being heard at an oral hearing in person: For the first day If the hearing runs for more than a day	New Item	800 for each day, or part of a day, less the hearing fee already paid
Appearing and being heard at an oral hearing by virtual means: For the first day If the hearing runs for more than a day	New Item	600 for each day, or part of a day, less the hearing fee already paid
Being heard on the basis of written submissions only	New Item	400 less any hearing fee already paid
Decisions with reasons i.e. decision on the papers	New Item	400 less any hearing fee already paid