IP Australia have announced changes to their patent fee procedure which will be effective from 1st October 2024. These changes include incremental fee increases (+10-20%) for patent prosecution and large increases in opposition fees (up to 100%).
The most significant change is to bring forward the timing as to when excess claim fees are incurred. The new excess claim fee regime applies to applications where the request for examination is made on or after 1st October 2024. The new excess fee regime is discussed below.
Current excess claim fee regime
Under the current regime, applications incur excess claim fees if there are more than 20 claims in total at acceptance. Currently, this means that no excess claim fees are payable during prosecution. Therefore, there is no disadvantage in presenting a large number of claims for substantive examination. The applicant then has the option to reduce the claim set to 20 claims once allowable subject matter is found but before the Notice of Acceptance issues.
Note that the current regime will still apply to applications where examination is requested before 1st October 2024.
New excess claim fee regime
Timing of fee payment
For applications with a request for examination date on or after 1st October 2024, excess claim fees will be incurred based on the total claim number at the issuance of the first Examination Report. If the total number of claims exceed 20, an invitation to pay will be issued together with the first Examination Report. At this point, it will not be possible to reduce the fees payable by deleting claims.
Failure to pay this fee within one month (not extendible) will result in the application lapsing. Note that a further invitation to pay will be issued for excess claims after acceptance, if the number of claims before the Examiner increases beyond the number considered in the first Examination Report (providing there are beyond 20 claims).
Failure to pay the fee
If the application lapses for failing to pay the fee before the one month deadline for doing so, the applicant can re-instate the application by paying the excess claim fee prior to the date of acceptance (i.e., 12 months from the date that the first Examination Report issues).
It should be noted that the Examiner will not consider any response to the first Examination Report if the excess claim fee has not been paid. Therefore, delaying payment of these fees until just before the acceptance deadline may lead to the application lapsing due to the failure to secure acceptance before the deadline.
Excess claim fees remain the same
The current fees remain unchanged, with claims exceeding 20 up to 29 incurring a fee of AUD $125 (around $85 USD) per claim and claims over 30 incurring a fee of AUD $250 (around $170 USD) per claim.
Notification of examination proceedings
It is the intention of the Patent Office to notify applicants of the anticipated issuance of the first Examination Report approximately six months prior to the expected date. This notification will provide the Applicant an opportunity to amend their specification to reduce the total number of claims before an Examination Report issues and thereby reduces or avoids the excess claim fee.
Recommendation
We recommend that applicants with more than 20 claims in their applications request examination before 1st October 2024 to take advantage of the current excess claim fee structure. This strategy is especially beneficial for those seeking examination of applications with a large number of claims. As per the current regime, amendments to reduce the claim count will ultimately be necessary to avoid excess claim fees at acceptance, but these amendments can be made taking into account information as to the allowable claim scope acknowledged by the Australian Examiner.
After 1st October 2024, we advise applicants to reduce the claim count to 20 when requesting examination, or shortly thereafter, should they wish to avoid incurring excess claim fees.
If you have any questions or would like to discuss the new excess claim fee regime, please contact us.
