IP Australia fee changes: What you need to know

From 1 October 2024, IP Australia will update their fees to cover the costs of administering intellectual property (IP) rights and their associated legislation. The revised fees will impact a range of services and IP-related processes, marking a shift in how global and local businesses and individuals engage with Australia's IP framework.

Patent fee changes

Generally, patent fees have increased. Bucking the trend is the fee for filing a provisional patent application which will decrease to AU$100.

Of interest, the fee for filing a standard patent application, or for entering national phase, will increase from AU$370 to AU$400 and the fee for requesting examination of an application which will increase from AU$490 to AU$550. The fee for acceptance of an application will increase by AU$50 to AU$300

Although the amount charged for excess claim fees will not change, the timing of when these fees are due and the way they are calculated will change. A separate article detailing these changes is available here: https://www.ajpark.com/insights/timing-is-everything-patent-excess-claim-fees-at-ip-australia/

Annual renewal fees are also increasing for patents from the sixth anniversary fee onwards. For the sixth-year annual renewal the fee increase from AU$335 to AU$345. At the other end of the lifecycle, the nineteenth anniversary fee increases from AU$2,700 to AU$2,865.

The application fee for an extension of term of a pharmaceutical patent has increased to AU$2,500 from AU$2,000.

Design fee changes

There is some good news for design applicants. IP Australia has reduced the application filing fees by AU$50. An application for:

one design will now cost AU$200;
multiple designs will now cost AU$200 for the first design and AU$150 for each additional design in the application.

However, the fee for requesting examination of a registered design will increase to AU$500 (from AU$420). If the request is filed by a third party, the cost is split between the third party and the registered owner of the design.

Plant breeder’s rights (PBR) fee changes

The application fee for a PBR is increasing to AU$ 400. In addition, the fees for examination of a PBR and growing trials will increase:

examination at a Centralised Testing Centre (CTC) in Australia AU$1,400 (previously AU$920)
examination of a plant variety with another variety at the same time and site in Australia (not at a CTC) will be AU$1,600 (per variety; previously AU$1,380);
examination of a test growing in Australia otherwise will be AU$2,000 (previously AU$1,610); and
examination based solely on overseas test data will be AU$2,000 (previously AU$1,610).

The grant fee for a PBR and the annual renewal fee of a granted PBR also increase, to AU$500 and AU$600, respectively.

Proceeding fees and costs awards changes

IP Australia has made some important changes to various official fees for patent, trade marks, and designs proceedings. It has also made significant uplifts to the scale costs awarded to successful parties across all proceeding types.

As a result, parties will need to more carefully consider how they approach proceedings and their potential liabilities in the event they are unsuccessful.

The changes are summarised below.

Patents

Official hearing fees have doubled. For example:

Filing notice of opposition will now cost AU$1,200
Requesting a hearing will now cost AU$1,200
A hearing by written submissions will now cost $1,200
An oral hearing will now cost AU$2,000 per day

The scale costs awarded to successful parties have also effectively doubled. A successful party can now expect costs in the region of AU$15,000-18,000 for a typical patent opposition proceeding culminating in a one-day hearing represented by counsel.

Costs increase significantly for each additional hearing day and if witnesses are required to appear.

Trade marks

There is a new fee structure for Statements of Grounds and Particulars (SGP). At present, an Opposition (which includes Notice of Intention to Oppose + SGP) costs AU$250. From October 2024, there will be an additional fee of AU$250 for each of the fourth and further grounds of opposition. In other words, an opposition with three grounds of opposition will cost AU$250 but an opposition with five grounds of opposition will cost AU$750.

There will also be additional fee of AU$250 for eleventh and further trade marks that are claimed to be substantially identical or deceptively similar to the mark applied for. So, an opposition that identifies 15 prior registered marks would cost at least AU$1,500.

These changes should encourage opponents to more carefully identify the most pertinent grounds of opposition and prior registered trade marks, rather than making broad-sweeping pleadings.

Late filing of evidence will now incur a fee of AU$500.

Fees for applying to remove a trade mark for non-use will increase from AU$250 to AU$350.

The official hearing fee structure is changing slightly:

A hearing by written submissions will now cost AU$500
An oral hearing (remote) will now cost AU$700 per day or part-day
An oral hearing (in person) will now cost AU$700 per day or part-day

The scale costs awarded to successful parties have also increased significantly. They were long overdue for an increase. A successful party can now expect costs in the region of AU$10,000 for a typical trade mark opposition proceeding culminating in a one-day hearing represented by counsel. Costs increase significantly for each additional hearing day and if witnesses are required to appear.

Designs

As with patents and trade marks, the scale costs awarded to successful parties have increased significantly. A successful party can now expect costs in the region of AU$6,000 for a typical design proceeding culminating in a one-day hearing represented by counsel. Costs increase significantly for each additional hearing day and if witnesses are required to appear.