From 1 October 2024, there will be a number of significant official fee changes that will come into effect in respect of Australian patents and designs. Of particular note is a change to the timing of payment of excess claim fees. So, should patent applicants take any action prior to 1 October 2024?
What are the changes in relation to excess claim fees for Australian patent applications?
Firstly we will summarise how excess claim fees are payable now (under the present system) and after 1 October 2024 (under the new system).
The present system – excess claim fees are payable at acceptance where the accepted claim set has a number of claims that is greater than 20. For claims 21 to 30 the excess claim fee is AU$125 per claim and for each claim over 30 the excess claim fee is AU$250 per claim.
The new system – excess claim fees are payable shortly after the issuance of a first examination report (office action) where the examined claim set has a number of claims that is greater than 20. The quantum of fees is the same as for the old system, that is, for claims 21 to 30 the excess claim fee is AU$125 per claim and for each claim over 30 the excess claim fee is AU$250 per claim. Further, if at any stage in the prosecution of the application the number of claims exceeds the number of claims of the examined claim set, then further excess claim fees will be payable for that increase in total claims during prosecution at acceptance.
The new system will apply to applications where examination is requested on or after 1 October 2024.
IP Australia has provided an explanatory note explaining the new system and providing example scenarios.
In summary, under the present system, applicants are free to have any number of claims examined without any drawbacks, whereas under the new system this is not the case for applications with more than 20 claims.
So, what should Australian patent applicants do to avoid the new system?
Australian patent applicants where a request for examination has already been filed – no action required to avoid new timing of excess claim fees.
As set out above, the new system will apply to applications where examination is requested on or after 1 October 2024. Therefore, if a request for examination of an application has already been filed, the application will proceed under the present system.
Australian patent applicants where a request for examination has not been filed and there are no more than 20 claims in your application – no action required as excess claim fees will not be incurred.
As set out above, no excess claim fees will be payable where the total number of claims is 20 or less. However, applicants who may have a desire to increase the number of claims over 20 should proceed with caution and perhaps consider voluntarily requesting examination before 1 October 2024 so that their application will proceed under the present system.
Australian patent applicants where a request for examination has not been filed and there are over 20 claims in your application – MAY WISH TO TAKE ACTION
As set out above, under the new system, excess claim fees are payable shortly after the issuance of a first examination report (office action) where the examined claim set has a number of claims that is greater than 20. Therefore, in such cases where there is a desire to have more than 20 claims examined, to avoid proceeding under the new system, the applicant may wish to voluntarily request examination before 1 October 2024 so that their application will proceed under the present system.
Proceeding under the new system
For applications with more than 20 claims that are proceeding under the new system, the excess claim fees can be avoided by amending the claims prior to examination commencing so that the claim set examined has no more than 20 claims.
As part of the rollout of the new system, IP Australia has stated that they will notify the applicant 6 months prior to examination commencing to provide an opportunity to amend the claims prior to examination commencing. However, we would recommend taking a cautious approach and making amendments at the time of requesting examination or shortly thereafter.
Other fee changes
Other changes to official fees for both patent and designs (and trade marks and plant breeder’s rights) can be found here.
Our high level comments on some of these other changes are as follows:
- Most patent filing, prosecution and renewal official fees have increased, in the majority of cases by around AU$50 or so.
- Official fees for patent oppositions have in most cases doubled. In a related change, the costs awarded in opposition proceedings have also doubled in most cases (although still fairly minor when looking at overall expenses for most opposition proceedings).
- Official fees for design application have in many cases decreased, particularly those outside of fees associated with substantive examination.
Key takeaways
In summary, Australian applicants who wish to have more than 20 claims examined may wish to consider voluntarily requesting examination prior to 1 October 2024 so that they can have these claims examined without any monetary drawback.
We encourage you to contact your Australian patent attorney if you would like to discuss your specific applications and/or strategies going forward in view of the fee changes.
For further guidance on these changes, please contact FPA.
