Starting October 1, 2024, IP Australia will implement significant modifications to its fee structure, particularly impacting how excess claim fees are calculated for patent applications with more than 20 claims. These changes are expected to affect applicants by adjusting the timing and method of fee calculation, reducing the flexibility for those managing patent claims.
Key Changes Starting October 1, 2024
From October 1, 2024, the calculation of excess claim fees will undergo a substantial shift:
Excess claims fees will be calculated twice during the patent application process:
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- First Examination Report: Fees will be based on the number of claims listed in the first examination report.
- Acceptance (Allowance): If the number of claims exceeds those listed in the first examination report at any point during the examination process (and remains in excess of 20), excess claims fees will be recalculated. The final fees will be based on the highest number of claims on file between the issuance of the first examination report and acceptance.
This new rule means that excess claim fees at acceptance will no longer be calculated based solely on the number of accepted claims, but rather on the highest number of claims at any stage after the first examination report.
The official excess claim fees themselves will remain unchanged:
- AU$125 per claim for each claim numbered 21 to 30.
- AU$250 per claim for each claim numbered 31 onwards.
While the fee amounts remain the same, the new rules limit the flexibility previously enjoyed by applicants, making it more challenging to avoid excess fees when managing multiple claims during examination.
Implications for Applicants
This change may lead to increased costs for applicants with complex patent applications, especially those involving a high number of claims. Under the new system, applicants must be more strategic in managing their claims early in the examination process to avoid triggering excess claim fees at multiple stages.
The new fee structure emphasizes the importance of efficient claim management, as applicants will no longer be able to reduce their claims at later stages without having already incurred fees. For patents with high numbers of claims, this could increase the overall cost of patenting in Australia.
The upcoming changes to IP Australia’s excess claim fee structure will introduce a new level of complexity for patent applicants. With excess claim fees being calculated earlier and potentially more frequently, applicants are encouraged to carefully manage their claims from the outset to minimize costs.
