13 May 2012

IP Australia Fee Increases Coming, From 1 July 2012

calculatorIn handing down the 2012 Budget last week, the Australian Government has approved the changes to IP Australia’s fees, which were foreshadowed back in December 2011 (see IP Australia Proposes – Mostly – Modest Fee Increases).

The majority of the fees changes will apply from 1 July 2012. with the exception of increases to application filing fees, commencing on 1 October 2012.

While most of the changes are simply relatively modest adjustments to existing fees, three more significant developments are worth noting:
  1. a number of fees will be structured to provide an incentive, i.e. a reduced charge, for payment to be made via the ‘approved form’ of transaction (typically via an online channel, such as the new eServices portal);
  2. annual renewals on standard patents and pending applications will become payable a year earlier than is presently the case, i.e. on the fourth anniversary of filing; and
  3. the fee for an International Search under the Patent Cooperation Treaty (PCT) will rise from A$1900 to A$2200, while the fee for an International Type Search (ITS) conducted on a provisional application, which is currently A$1400, will rise to the same level, i.e. and increase of A$800.
The only completely new fee will be for the preliminary search and opinion service for patents, which is introduced by the Raising the Bar Act 2012. This service and its associated fee will come into effect on 15 April 2013.

APPROVED FORM OF TRANSACTION

From 1 July 2012, a number of services will have two fee levels, with lower fees applying if payment is made by an ‘approved form’ of transaction.  IP Australia will announce the approved form, which will generally be via an electronic or web-based channel.  Presumably it is envisaged that the approved form may change from time-to-time, for example as existing web-based payment channels are migrated to the new eServices and B2B portals (see IP Australia Launches eServices Portal).

By way of example, the fifth year renewal fee for a standard patent or application, which is currently A$250, will rise to A$300 when paid in the approved form, e.g. through the eServices portal, whereas payment by other means will attract a more significant increase, to A$350.

It should be noted that this ‘two-tiered’ fee structure already applies to a number of fees for patent filings, which have been available online for some time.  However, the incentive to pay via the approved form of transaction will be enhanced from July.  For example, the current fee for filing of a provisional application is A$80 online, and A$110 by other means.  Under the new scale, this rises to A$110 for online payment (a A$30 increase) and to A$210 if paid by other means (a A$100 increase).

NEW FOURTH YEAR RENEWAL FEE

Renewals will become payable on standard patents and applications from the fourth anniversary of filing, initially at the level of A$300 when paid via the eServices portal and A$350 when paid by other means.

The new renewal fee will thus apply to patents and applications having an effective filing date on or after 1 July 2008.  Since the new fee does not exist until after 1 July 2012, it cannot be paid before this date, and IP Australia has advised that it will simply return any fees which are paid early, and they will have to be re-paid after 1 July.

We would have to say that this does seem a little harsh on the owners of the 57 live patents and applications which were filed on 1 July 2008, who will need to pay on the day in order to avoid a A$100 late payment fee.  The situation is only marginally better from the 301 applications filed during the remainder of the first week of July 2008!

INCREASED INTERNATIONAL SEARCH FEES

An International Search on a PCT application, which comes with a Written Opinion and represents essentially the same work product as an examination report on a standard patent application, currently costs A$1900, increasing to A$2200 on 1 July 2012.

It is also possible to request an International-Type Search (ITS) on a provisional application, which is effectively a patent search conducted to the same standard as the International Search.  This currently costs A$1400, which will be increasing to A$2200 in line with the cost of the International Search and Opinion.

However, when the fee increases on 1 July 2012, the ITS will be issued with similar to the International Search and Opinion.  IP Australia intends that this will provide its customers with the benefit of additional information regarding their inventions.

FURTHER INFORMATION

IP Australia has published a news item regarding the upcoming fee increases.

It has also published a complete schedule of the upcoming patents fee changes.

Schedules of the new fees for trade marks, designs and plant breeder’s rights are also available.

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