Effective from 1 October 2024, IP Australia is introducing changes to fees and recoverable costs awarded in patent, trade marks or design proceedings.

These changes are detailed on IP Australia's website. This article examines some of the key changes and implications for optimising claims and managing costs.

It is pleasing to see an increase in the costs recoverable by successful parties in an opposition proceeding. However, this amount is still substantially less than the actual costs typically incurred in such proceedings, particularly with respect to evidence and hearings.

Changes to patent excess claims fees

A significant change which will impact IP Australia's fee recovery is moving forward the date when excess claim fees are payable. Presently, excess claims fees are calculated by reference to the total number of claims pending at the time of acceptance. The number of claims are often reduced during examination which means that while patent examiners may be reviewing in excess of 20 claims, IP Australia is not recovering fees for the consideration of those claims.

The new fee structure modifies the stages in the application process when excess claim fees are payable so that there is cost recovery for excess claims considered during examination. However, the fees themselves remain the same: claims 21 to 30: $125 per claim; and claims 31 and above: $250 per claim.

First examination report stage

A fee will be charged for each claim exceeding 20 claims at the first examination report stage (any amendments before this stage are not considered to contribute to the excess claims fee).

Where more than 20 claims are examined, IP Australia will issue an invitation to pay after the first examination report is completed.

Failure to pay the fee within one month of the first examination report will cause the application to lapse.

Acceptance stage

If the number of claims increases beyond the amount at the first examination report stage and exceeds 20 claims, an additional fee will be charged at the acceptance stage for each added claim. Importantly, the excess claims fee captures the maximum number of claims considered during the examination proceedings.

IP Australia will issue another invitation to pay at this stage.

The new fee structure will apply to applications with an examination request filed on or after 1 October 2024. For applications with an examination request filed before this date, the old excess claims fee process will apply, with fees payable only at the acceptance stage.

Going forward: Patent applications

It is important to review your patent applications carefully, being sure to assess the number of claims in current and upcoming patent applications. We encourage you to reduce claim numbers where possible to minimise excess claim fees.

Summary of patent fee changes

Generally, the patent fee changes are not substantial. The significant changes are detailed in the table below:

Trade mark fee changes

We have extracted the most relevant fee changes in the table below. Generally, trade mark fees have increased, however there have been some reductions, including the removal of the $400 fee to request a hearing before the Registrar of Trade Marks.

A significant change is the introduction of a $250 fee payable for each additional ground relied upon in a trade mark opposition (beyond the first three grounds) and a $500 fee for filing late evidence.

Costs awarded in patents, trade marks and designs rights proceedings

The following significant changes to costs, expenses and allowances awarded in proceedings will be implemented from 1 October 2024:

Patents

Trade marks

We encourage you to seek the advice of our experienced patent and trade mark attorneys at MinterEllison, who can assist with strategic patent filings to help you optimise claims and manage costs effectively, and assist you regarding the changes to IP Australia's fee schedule.