FOR IP PROFESSIONALS

Register of Designs

Overview

Purpose of these guidelines

These guidelines are intended to provide a clear statement of the principles adhered to by us when dealing with overpayments, underpayments, refunds and waivers.

These guidelines are not prescriptive. The final decision on whether or not to refund monies or waive fees remains with delegated individuals in Patents, Trade Marks, Designs and Plant Breeder's Rights, and who possess other financial delegations under the CEIs. These guidelines provide delegates with corporately approved principles to guide them in making decisions, and will assist in the consistent application of those principles across the organisation.

Intended Audience

This is intended to be read by our staff who exercise financial delegations, or who carry out instructions issued by these staff. This copy of our policy is available here for your information.

Sections of this policy

This discusses:

  • the legal and policy background to our financial dealings with you
  • principles involved in dealing with overpayment and underpayment of fees
  • principles involved in dealing with refunds
  • principles involved in waiving fees

Related policies and documents

  1. Our overall position in regards to financial transactions is bound by the Public Governance, Performance and Accountability Act 2013.
  2. Our Accountable Authority Instructions (AAIs) are drawn from this Act. Particularly relevant are: 
    • AAI 7 - Managing Relevant Money
    • AAI 10 - Managing Relevant Property
    • AAI 9 - Managing Debt
    • AAI 7.7 - User Charging

The intellectual property acts administered by us also have provisions relating to refund and waiver of fees:

  • Designs Act 2003
  • Patents Act 1990
  • Trade Marks Act 1995
  • Plant Breeder's Rights Act 1994

3. Our business groups have procedural manuals providing a more detailed approach, particularly:

  • Part 26, Patent Office Manual of Practice and Procedure
  • Part 4, TM Manual of Practice & Procedure
  • The various Manual of Procedures for the IP Rights processing areas

Basic Principles of our operation

Fairness and Equity

We are obliged to apply its various rules and procedures consistently with you. While someone with no experience of IP may require and receive more explanation of background and details, they will receive the same decision as the most experienced IP attorney.

We will have a single set of fees or prices applying to all applicants and IP rights holders. We will apply the same rules for refunds and waivers to you, regardless of the level of your knowledge, or ability to bear the costs of the fees.

Ability to explain decision

When a decision is made by us, it must be capable of being clearly explained and repeated. Potentially any decision may be subject to review, or even be appealed. It is very important that decisions taken be clearly based in fair and equitable principles that are evenly applied.

Recovery of Costs

We are required to recover all of our costs by charging you for the provision of goods and services. (AAI 7.7 User Charging). This does not mean that every activity undertaken by us must recover its own costs, but that overall the organisation's expenditure must be supported by its income.

Earned Money

  • If you pay us for a service, and that service is undertaken, the money paid belongs to us. The money is not available for refund.
  • If there is a fee charged for lodging a document, that document has been lodged, the money is not available for refund.

Unearned Money

  • If you pay us for a service, and the service is not undertaken, the money belongs to you, not us.
  • If you overpay us on a set fee item, then the excess similarly belongs to you, not to us.

Administration charges

  • Where a fee has been set for the provisions of a good or service, we will not in the majority of cases charge an additional administration charge for processing overpayments or refunds. The majority of Patents, Designs and Trade Mark processing will fall in this case.
  • Where we perform an ad hoc task or other activity for you on a cost recovery basis, you will be charged for the work undertaken at their request, regardless of whether you decide to take delivery of the results of that task/activity or not.

EXCEPTION - Plant Breeder's Rights Refunds

An administration fee will be charged to process refunds and requests for Withdrawals and Surrenders for Plant Breeder's Rights. This is costed at the General fee rate of $75 per hour (Plant Breeder's Rights Regulations, item 16).

Error by us

If we have made an error, given incorrect advice or failed to provide a notification, in such a way as will make you liable for a fee that you would not otherwise have needed to pay then this money should be refunded or waived as appropriate. The principle is that you should not be penalised as a result of our error. This principle forms part of the service standards in our customer service charter and should always be adhered to.

Business Process

The Financial Management Section (FM) process all refunds and waived/exempted fees. They do not decide whether to refund or waive fees, they enact the decisions communicated to them by the other business areas. This communication needs to inform FM:

  • the fee
  • you
  • whether it is a refund or a waiver
  • whether it is in full or in part

It also needs to inform:

  • who has taken the decision
  • what reasons they have for making their decision

Delegations

We maintain a Register which lists the positions which have authority to approve refunds and waivers. It is the responsibility of each business area to ensure that the delegations under the relevant Act for waivers and refunds are properly allocated and exercised.

Origin of delegation to refund or waive fees

The Public Governance, Performance and Accountability Act 2013, and the AAIs give the Accountable Authority and her nominated delegates the authority to approve the non-recovery of a debt where:

  • it is authorised by an Act
  • it is not legal to require the payment
  • it is not economical to pursue payment of the money

The Patents, Trade Marks, Designs and Plant Breeder's Rights Acts each have provision for the Commissioner/Registrars and their delegates to refund or waive payments.

 

Foreign Currency

In general, we prefer to accept payment in Australian currency. A delegate may make an exception to this, but it should be in cases where one of the following applies: 

  • paying in Australian currency is not a feasible alternative for the customer
  • the delay involved in the payer making the exchange to Australian currency would adversely affect the validity of an IP right or transaction 
  • there is an established practice that the transaction may be undertaken in a foreign currency, or the payer has an understanding with us that they may pay in non-Australian currency. (For example, under Rule 16.1(b) of the PCT, Receiving Offices in other countries may send applications to us with payments in currency that is "freely convertible into the currency of [Australia]")

We will also pay refunds and other monies in Australian currency, except for specific ongoing transactions where an alternate mode of exchange has been negotiated (some transactions with WIPO fall into this category).

Overpayments/Underpayments

Underpayment

In general, if the amount of money paid for an action is less than the prescribed fee, the action will not be performed until or unless the fee is made good.

Waiving or exempting part of an unpaid fee - Patents and Designs only

In exceptional cases, Patents and Designs delegates may decide to waive the difference between the paid amount and the prescribed fee. Possible examples include: 

  • where a change in fee amounts has occurred recently, and the customer has, in good faith, paid the old fee 
  • the customer has been given incorrect advice by IP Australia, and has a clear expectation based on that advice that a lesser amount is due 
  • where the customer has, in good faith, attempted to pay the fee, but their financial institution has unexpectedly levied a bank charge, causing the payment to be underpaid, IP Australia will waive the difference up to $20 as not economical to pursue

Important Note: The Trade Marks Act and the Plant Breeder's Rights Act do not permit these sorts of waivers or exemptions.

See the section of this document "Waivers/Exemptions - Principles involved", for further information.

Special circumstances: Patent Response Fee

Although we will generally not perform an action in the case of an underpayment until the fee is fully paid, a specific exception noted under the Patents Act (regulation 22.2E) is that if the Response fee is unpaid or underpaid, examination will nevertheless continue. The Commissioner of Patents will, however, issue an "invitation to pay" the fee. If the fee is not paid in full, the application will lapse.

Overpayment

Where the amount of money paid for an action is more than the prescribed fee, the excess money will be automatically refunded to the customer. Unlike other refunds, they will not need to apply to us to have the money returned to them.

Foreign currency exchange

In cases where the delegate has decided to accept a payment in a foreign currency, variations in exchange will be handled accordingly: 

  • where a variation in exchange rate means that the fee is underpaid, then we will waive the difference as being uneconomical to pursue 
  • where a variation in exchange rate means that the fee is overpaid, we will retain any additional sum less than $15 as a partial recompense for its additional processing work. Where a sum in excess of $15 is left after exchanging the foreign currency and processing the fee, it will be treated as a normal overpayment

If there is no way that the amount submitted in foreign currency could be expected to exchange to the correct fee amount in Australian Dollars (e.g. someone pays $US1 for a $A200 fee), then it  should be treated as an underpayment, and no waiver be granted.

Refunds - Principles Involved

Summary - Refunds

We will automatically refund money when:

  • you have submitted a payment and request for something we do not do (e.g. car registrations), or 
  • you have submitted a payment and request for something that is not legally or practically capable of being done. (e.g. opposing a newly filed application), or 
  • the fee is overpaid.
  • a fee has been incurred as a result of an office error. Where we have made an error, given incorrect advice or failed to provide a notification, in such a way as will make the customer liable for a fee that they would not otherwise have needed to pay then, if the fee has been paid we will refund it

In other circumstances, we will only consider giving a refund if you lodge a request for one. Where a fee has been paid for lodging a document, and the document has been lodged with us, then the fee cannot and may not be refunded. Where a fee has been paid and the accompanying document is not considered to have been lodged then the fee may be refunded, on the customer's request. Where a fee has been paid for us to perform a particular action, and that action has been performed, then the fee cannot and may not be refunded. Where a fee has been paid and the required action has not been performed, then the fee may be refunded, on your request in writing.

Refunds on fee items will be paid in full, or not at all, with the exception of Plant Breeder's Rights where an administrative charge is levied. Refunds on cost recovery activities (such as providing data extracts from IP Australia's information systems) may be partial refunds. The cost of any effort in servicing the original requested activity will be deducted from the refunded sum. We will apply these principles consistently in respect of all of its customers.

Refunds and associated action

When a fee is fully refunded, the action associated with that fee is taken to not have been performed. An exception to this is where the fee was incurred due to us having made an error, given incorrect advice or failed to provide a notification, in such a way as has made the you liable for a fee that they would not otherwise have needed to pay. In these cases where the fee is refunded the action is still taken to have been performed. When a partial refund is given, then: 

  • Part of the action has not been performed, and it is considered equitable that part of the tendered fee should be returned.

Automatically granted refunds

In exceptional cases, we will automatically provide a full refund. Examples are: 

  • You have submitted a request and payment for something outside of our scope of activity (e.g. if you deposit a car registration form and fee, they will have both returned to them) 
  • You have submitted a request for an action that is within our scope of activity, but the action is not capable of being performed or legally valid. (e.g. if you lodge an opposition to a newly filed application, or try to pay multiple renewal fees for the same intellectual property at once), or 
  • The fee is overpaid. 
  • A fee has been paid as a result of an office error. Where we have made an error, given incorrect advice or failed to provide a notification, in such a way as will make you liable for a fee that they would not otherwise have needed to pay then, if the fee has been paid we will refund it.

In these cases, you do not need to lodge a request for refund.

Double payments

This would mean that in the case of someone paying for the same action twice (e.g. doubling up on renewal payments), the second payment would be automatically repaid. It is regarded as an  overpayment. 

  • as a practical note, it should be checked that a double payment has actually taken place before processing the refund - an application number may have been incorrectly quoted

Online Payments

For some fees, we use different price structures for on-line transactions (e.g. filing an entire application through the internet site is cheaper than filing a paper version). This gives rise to the following possibilities: 

  • where the transaction is undertaken online, but you pay the standard fee rather than the online rate, it is considered an overpayment, and the money in excess of the online rate will be  automatically refunded 
  • where you have attempted to undertake the transaction online at a time when our online services are unavailable because of an action taken by us, the customer may apply for a refund of the money in excess of the online rate 
  • where you have undertaken part of the transaction online, and the rest of it using conventional mail or paper, they are not eligible for the online rate, and must pay the standard fee

A refund must be applied for

In all other cases, we will only consider providing a refund when you lodge a request for the refund.

Plant Breeder's Rights - withdrawals and surrenders

A formal request to withdraw an application for a Plant Breeder's Right or surrender a Plant Breeder's Right is taken to include a refund of any unearned fees.

What may be considered

When deciding whether to refund a fee in whole or in part, the following should be considered: 

  • Has the action associated with the fee been performed?
  • What outcome will ensure that the party involved is being treated equitably?
  • Can the principles in this decision be clearly explained and repeated?

What may not be considered

In deciding whether to refund a fee, the following factors should not influence the decision: 

Ability to bear the cost. A person or organisation may not have a fee refunded because they would find the payment a hardship. If they choose to undertake the transaction, they must pay the  accompanying fee. 

  • the level of knowledge or experience of the person/organisation involved 
  • whether the person has received refunds/waivers in other matters. Each case must be considered on its own merits. 
  • the nature of the person/organisation involved. Whether it is an individual, attorney, multi-national company, charity or government department, is not relevant to the decision

Waivers/Exemptions - Principles involved

Summary - Waivers/Exemptions

We will waive fees in part or in full only in rare circumstances

  • there are differences between the various IP rights Acts administered by us which result in different approaches to waiving fees

Trade Marks

IP Australia may waive part or all of a trade marks fee only when:

  • we have made an error, given incorrect advice or failed to provide a notification, in such a way as will make the customer liable for a fee that they would not otherwise have needed to pay

Plant Breeder's Rights

There are no current provisions in the PBR Regulations to waive or exempt prescribed fees. However the Governor General does have powers under s80(2)(c) of the PBR Act to make such regulations.

Patents

We may waive part or all of a fee for a patents or designs transaction when: 

  • we have made an error, given incorrect advice or failed to provide a notification, in such a way that will make you liable for a fee that they would not otherwise have needed to pay 
  • we have made an error or given incorrect advice that has given you a clear expectation that you need to pay an amount that is less than the prescribed fee 
  • it would otherwise be in the public interest, or ensure fair and equitable treatment of our customers

Other

In all other cases intellectual property fee items will not be waived. For other financial transactions, we may waive some or all of the money due to be paid if: 

  • the sum involved is so small as not to be economically worthwhile to be pursued 
  • it would otherwise be in the public interest, or ensure fair and equitable treatment of our customers we will apply these principles consistently in respect of all of its customers

Waiver/Exemption: Definition

When a fee is waived or exempted, it means that the customer does not have to pay all or part of the fee, but that the requested action will still be undertaken by us.

Trade Marks - rules for waiving or exempting a fee

Trade Marks regulation 21.24 provides a very strict definition of when a trade marks fee may be waived. A trade mark fee may only be waived if: 

  • a trade marks officer has made an error or omission; and
  • this error or omission has made the customer liable for a fee that they would not otherwise have needed to pay.

This means that trade marks delegates must approach fee waivers and exemptions differently from the rest of the organisation. For trade marks delegates, the other considerations listed in this section of this document cannot be factored into the decision on whether to waive a fee.

The considerations below apply ONLY to Patents and Designs delegates

Waiving or exempting part of an unpaid fee

In exceptional cases, the delegate may decide to waive the difference between the paid amount and the prescribed fee. Possible examples include: 

  • where a change in fee amounts has occurred recently, and you have, in good faith, paid the old fee 
  • you have been given incorrect advice by us, and have a clear expectation based on that advice that a lesser amount is due

What may be considered

When deciding whether to waive a fee in whole or in part, the following should be considered: 

  • If we has made an error, given incorrect advice or failed to provide a notification, in such a way as will make you liable for a fee that they would not otherwise have needed to pay 
  • If we have made an error or given incorrect advice that has given you a clear expectation that they need to pay an amount that is less than the prescribed fee 
  • What outcome will ensure that the party involved is being treated equitably? 
  • Is the waiver in the public interest? 
  • If it is an underpaid fee, is it not economical to pursue the shortfall? 
  • Can the principles in this decision be clearly explained and repeated?

What may not be considered

In deciding whether to waive a fee, the following factors should not influence the decision: 

  • Ability to bear the cost. A person or organisation may not have a fee waived because they do not have the funds to pay, or would find the payment a hardship. If they choose to undertake the transaction, they must pay the accompanying fee. 
  • The level of knowledge or experience of the person/organisation involved 
  • Whether the person has received refunds/waivers in other matters. Each case must be considered on its own merits. 
  • The nature of the person/organisation involved. Whether it is an individual, attorney, multi-national company, charity or government department, is not relevant to the decision.

Special circumstance: Patent Searches

It is a requirement under the Patent Cooperation Treaty Rules that when a search request comes in that can be partly or fully serviced by the results from a previous search, then part of the search will be waived/exempted, and sent back to the customer.

Last Updated: 01/10/2013

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