Fee Changes – IP Australia Fee Review Update

Stakeholder consultation on IP Australia's proposed fee changes, as documented in the Cost Recovery Implementation Statement (CRIS) 2016-17, closed on 2 May 2016.  IP Australia would like to thank everyone who contributed and provided feedback to this review. 

IP Australia is now moving ahead to have the fee changes, as documented in Attachment A of the CRIS, implemented by way of amendments to the associated IP Rights regulations.  These changes are proposed to take effect from 12am AEDT, 10 October 2016, subject to amending regulations being made.  Please note changes to Madrid import application and import renewal fees are scheduled to apply from 12am AEDT, 28 October 2016.

We urge our customers to be aware of the new fee arrangements for IP Australia’s products and services that span these dates.  A summary of the most significant fee changes is provided below.

A full version of IP Australia's CRIS, endorsed by the Director General of IP Australia, can be downloaded here:

If you require further information please contact the Fee Review Team at feereview@ipaustralia.gov.au, or by mail to: Fee Review, IP Australia, PO Box 200 Woden ACT 2606.

Patents

International Type Search

Description:

Current fee:

New fee:

International type search           

$2,200

$950

The reduction in the international type search fee is part of IP Australia’s innovation policy to support small business.

Patent Renewals - fee paid by approved means

Description:

Current fee:

New fee:

4th to 9th anniversaries

    $300

    $300 

10th to 14th anniversaries

    $500

    $550

15th to 19th anniversaries

$1,120

$1,250

20th to 24th anniversaries

$2,300

$2,550

Patent Renewals - fee paid by another means

Description:

Current fee:

New fee:

4th to 9th anniversaries

    $350

$350

10th to 14th anniversaries

    $550

$600

15th to 19th anniversaries

$1,170

$1,300

20th to 24th anniversaries

$2,350

$2,600

There is no increase to patent renewals until the 10th year anniversary. The increase to patent renewal fees has been graded: with a $50 increase in the 10th to 14th anniversary range; a $130 increase in the 15th to 19th anniversary range; and a $250 increase in the 20th to 24th anniversary range. These increases to patent renewal fees reflect the balance between both innovation and cost recovery policy objectives.

Patent Opposition Fees

Description:

Current fee:

New fee:

Request for Dismissal Patent Opposition (item 217)

$600

No fee

Objection to Proposed Amend Patent (item 219)

$600

No fee

Objection to Granting a Patent or any other action (item 220)

$600

No fee

Commissioner’s Discretionary Powers (item 229)

$600

No fee

The removal of these opposition fees is consistent with the red-tape reduction initiatives and the efficiency and effectiveness principle outlined in the Australian Government Cost Recovery Guidelines. It is also IP Australia’s aim to simplify the fee structure for customers where possible.

Patent Sale of Documents

Description:

Current fee:

New fee:

Copy of Patent Specification (item 233)

$50

No fee

Copy of Document other than Patent Specification (item 234 (b))

$50

No fee

Photocopy of Pages (Beyond 6 Documents) (item 234 (a))

$1

No fee

Copy of 6 Documents From the Same File (item 234 (a))

$200

No fee

Certified Copy of a Document (item 235)

$50

No fee

NEW FEE – Copy of 1 to 3 documents from the same file

No fee

$50 each

NEW FEE – Copy of 4 or more documents from the same file

No fee

$200

There are numerous fees for the sale of documents across patents, trade marks, and designs. The fee structure has been simplified by removing all the fees for the sale of documents, extracts and certified copies and replacing them with 2 fees that are standard across these IP Rights.

Trade Marks

Trade Mark Registration

Description:

Current fee:

New fee:

Trade mark registration            

$300

No fee

Under the new fee structure, applicants will pay a fee when they submit a trade mark application. The pending trade mark will then be examined by IP Australia and if it complies with all the requirements of the Trade Marks Act and Regulations, the trade mark will be advertised as accepted. If no opposition is filed in the 2 month opposition period, or if opposition is decided in favour of the applicant, the trade mark will then be automatically registered.

Removing the trade mark registration fee will bring IP Australia into line with other international IP Offices, specifically 95 out of the 97 countries that are current members of the Madrid Protocol. Despite the increase to the trade mark application fee, the removal of the registration fee reduces the overall up-front cost to register a trade mark. The simplified fee structure also provides a clear benefit to trade mark applicants with one less point of interaction with IP Australia.

If an applicant files a trade mark application prior to 10 October 2016 and subsequently their trade mark is registered after this date; the applicant will still be required to pay a $300 registration fee.

Trade Mark Applications

Description:

Current fee:

New fee:

TM Headstart (pre-application service) new request - per class                     

$120

  $200

TM Headstart (pre-application service) new representation - per class        

$120

  $150

TM Headstart (pre-application service) additional class fee - per class  

$120

  $200

TM Headstart (pre-application service) Part 2 fee - per class                            

$80

  $130

 

 

 

Trade mark application - with picklist per class                                                   

$120

  $250

Trade mark application - without picklist per class                                            

$200

  $330

Series trade mark application -with picklist per class                                        

$270

  $400

Series trade mark application - without picklist per class                                 

$350

  $480

 

 

 

Trade mark application (not using online services) - per class        

$220

  $350

Series trade mark application (not using online services) - per class

$370

  $500

 

 

 

Madrid import application – per class                                                                  

$420

  $350

The majority of trade mark application fees will increase by $130 per class to partially offset the removal of the $300 registration fee.

Trade Mark Renewals

Description:

Current fee:

New fee:

Trade mark renewal (online services fee) - per class 

$300

$400

Trade mark renewal (fee by other means) - per class                                       

$350

$450

 

 

 

Madrid import renewal – per class

$300

$400

The TM renewal fee will increase by $100 to partially offset the removal of the $300 registration fee.

Increasing the renewal fee allows for a smaller increase to the application fee; this supports our innovation policy by providing a cheaper up-front cost to register a trade mark.

Trade Mark extension of time to pay late renewal fees

Current fee:

New fee:

$100 per class per month or part thereof from the renewal due date

$100 per month or part thereof from the renewal due date

The current extension of time to pay a late renewal fee is charged per class for each month, or part of a month, from the renewal date. After the fee change, the extension of time to pay late renewal fees will apply per trade mark for each month, or part of a month, from the renewal date and not per class.

Trade Mark Opposition Fees

Description:

Current fee:

New fee:

Filing a notice of intention to oppose removal/cessation of protection of a trade mark for non-use (item 7(b))

  $150 per trade mark

No fee

Filing written submissions when not attending a requested hearing (item 17A)

  $100 per trade mark

No fee

The removal of several opposition fees is consistent with red-tape reduction initiatives and the efficiency and effectiveness principle outlined in the Australian Government Cost Recovery Guidelines. It is also IP Australia’s aim to simplify the fee structure for customers where possible.

Trade Mark Sale of Documents

Description:

Current fee:

New fee:

Certificate by the Registrar of Trade Marks (item 21)

$50

No fee

Supply of Duplicate TM Certificate (item 21A)

$250

No fee

Copy of an extract from the Register (item 22)

$50

No fee

TM Document requiring a Search (item 23)

$100

No fee

NEW FEE – Copy of 1 to 3 documents from the same file

No fee

$50 each

NEW FEE – Copy of 4 or more documents from the same file

No fee

$200

 

There are numerous fees for the sale of documents across patents, trade marks, and designs. The fee structure has been simplified by removing all the fees for the sale of documents, extracts and certified copies and replacing them with 2 fees that are standard across these IP Rights.

Designs

Design Opposition Fees

Description:

Current fee:

New fee:

Exercise of discretionary powers (item 10)

  $500

No fee

Filing a notice of opposition (item 9)

  $550

$600

The removal of several opposition fees is consistent with red-tape reduction initiatives and the efficiency and effectiveness principle outlined in the Australian Government Cost Recovery Guidelines. It is also IP Australia’s aim to simplify the fee structure for customers where possible.

Design Sale of Documents

Description:

Current fee:

New fee:

Duplicate Certificate of Registration or Exam (item 13)

$250

No fee

Copy of an Extract (item 14)

$100

No fee

Copy of Document other than an Extract (item 15)

$50

No fee

Filing a request for certification of a document (item 16)

$50

No fee

NEW FEE – Copy of 1 to 3 documents from the same file

No fee

$50 each

NEW FEE – Copy of 4 or more documents from the same file

No fee

$200

 

There are numerous fees for the sale of documents across patents, trade marks, and designs. The fee structure has been simplified by removing all the fees for the sale of documents, extracts and certified copies and replacing them with 2 fees that are standard across these IP Rights.

Plant Breeder’s Rights

PBR Discounted Examination

Current Requirement:

Fee:

Examination - multiple application

 

Applicable only to two or more varieties of the same species, tested at the same site in Australia, and when applications and descriptions are lodged simultaneously by the same applicant and QP, and examined simultaneously

  $1,380

 

New Requirement:

Fee:

Examination - multiple application

 

Applicable only to two or more varieties, tested at the same site in Australia, and when applications and descriptions are lodged simultaneously by the same applicant and QP, and examined simultaneously

  $1,380

The fee for discounted examination remains the same however the requirements to qualify for a discounted examination will change. Currently, discounted examination only applies when 2 or more varieties of the same plant species are tested simultaneously at the same site in Australia. The new arrangement will allow for discounted examination when 2 or more varieties of any plant species are tested simultaneously at the same site in Australia.

PBR other fee changes

Description:

Current fee:

New fee:

Amendment of the register on notification of assignment under section 21 (item 3)

$100

No fee

On making a request for a variation of an application under subsection 31 (1) (item 5)

$100

No fee

NEW FEE – Copy of 4 or more documents from the same file

No fee

$200

A new fee has been introduced for a copy of 4 or more documents from the same file. This is consistent with the introduction of a similar fee for patents, trade marks and designs.

Publish online date: 
Wednesday, August 3, 2016