22 June 2010

IP Australia Official Fees Likely to Increase from 1 August 2010

IP Australia (the government authority encompassing the Patents, Trade Marks and Designs offices) has been conducting a review of its fee structure.

It was announced today that the review has been completed, and that IP Australia will now be requesting approval from the government to make regulations increasing a number of fees from 1 August 2010.

The proposed new fees were previously published for public comment in this Fee Review Summary document.

Most of the proposed fee increases are incremental.  One significant exception is the introduction of a new fee (item 222A), applicable to amendments made after acceptance of an application that have the effect of increasing the number of claims.  When the resulting total is in excess of 20, each new claim above this number will incur a fee of A$100.00, corresponding with the excess claims fees currently payable at acceptance of an application.

In fairness, the existing system based on the number of claims in an application at acceptance has been subject to a form of legal "fee avoidance".  It has been perfectly legitimate, for example, to cancel dependent claims prior to acceptance in order to avoid excess claim fees, and then reintroduce them after acceptance for a fixed amendment request fee of A$250.00.  The proposed new fee therefore simply ensures that adding claims after acceptance incurs the fees that would have been payable had all claims been present at acceptance.

The fee associated with a request for an extension of term of a pharmaceutical patent, to compensate for regulatory delays, will also be increased significantly under the proposal, from A$1300.00 to A$2000.00.  We are confident, however, that the pharmaceutical companies will be able to afford the increase!

A further hike in PCT-related search fees (including International-Type Search), from A$1600.00 to A$1900.00, is also proposed.

Whether the fee changes are approved to go ahead exactly as proposed remains to be seen, but seems likely.  We will keep you posted.


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