IP Australia New Fee Review: What You Need to Know

IP Australia will change the cost of protecting intellectual property (IP) in Australia with its fee review, which takes effect on 1 October 2024. These fee changes are part of a routine review that occurs every four years, with the last update in October 2020. The goal of these updates is to ensure IP Australia can cover the costs of administering patents, trademarks, and design rights while keeping fees manageable for businesses and individuals.

How Does IP Australia Decide on Fee Changes?

The fee review process takes around 15 months and involves public consultation. During the 2023 review, IP Australia invited the public to provide feedback on its fee structure. Business representatives reviewed this feedback before finalising the new fees.

As part of their commitment to transparency, IP Australia published a draft of the new fees in December 2023 for public review, before making the final changes.

Changes to Patent Fees

Additional Fees for Patents with Over 20 Claims

A key update in the new fee structure is the introduction of additional fees for patent applications with more than 20 claims. From 1 October 2024, applicants with patents exceeding 20 claims will incur an extra fee during the initial examination. If you make additional claims after the first examination, IP Australia will apply another fee at the acceptance stage. This change encourages applicants to streamline their patent applications.

6-Month Notice Period for Patent Applications

To help applicants adjust, IP Australia is providing a 6-month notice period before starting examination proceedings for national patent applications (excluding expedited requests). This allows businesses time to amend their applications and potentially avoid extra costs.

Changes to Trade Mark Fees

Key Adjustments to Trade Mark Opposition Fees

IP Australia has made significant changes to trade mark opposition fees. Some of the key changes include:

• Filing a statement of grounds and particulars (SGP) in opposition proceedings will now cost $250 for each fourth and further ground, and for each 11th and further trade mark claimed to be substantially identical or deceptively similar.
• The fee for applying to remove a trade mark for non-use has increased from $250 to $350.
• A hearing by written submissions will now cost $500 (up from $400), while an oral hearing by remote appearance will be $700 per day (up from $600). The fee for an in-person hearing has dropped to $700 per day (down from $800), bringing in-person and remote hearings to the same price.
• A new fee of $500 has been introduced for late filing of evidence in opposition proceedings.

The Trade Mark Registration Process in Australia

The process of registering a trade mark in Australia involves several key steps:

Conducting a Trade Mark Search

Before you apply, it’s crucial to conduct a trade mark search to ensure that a third party with a similar registered mark won’t block your application.

IP Australia’s Examination

After you submit the application, IP Australia will examine it to ensure it meets all legal requirements. If accepted, the trade mark will then be advertised for opposition, allowing third parties to challenge the registration.

Timing of Trade Mark Registration

The process typically takes at least 7 and a half months but may take longer if objections or oppositions arise. At Allied Legal, we recommend working closely with IP professionals to ensure a smooth trade mark application process and avoid unnecessary delays.

What Does This Mean for You?

At Allied Legal, we understand that changes to IP fees can significantly impact businesses, especially startups. The introduction of new fees, like those for late evidence in opposition proceedings, highlights the importance of timely and proactive IP management.

Plan for the New Fee Structure

If you’re a business owner or entrepreneur, it’s essential to understand these fee changes and plan accordingly. Being aware of the new fee structure can help you avoid unexpected costs and create a cost-effective IP protection strategy.

At Allied Legal, we’re here to guide you through these changes and navigate the complexities of IP protection. If you have any questions about how the new fees might affect your business, feel free to reach out to our expert team today!