Last updated: 
26 August 2020

Trade marks

What does theregistration delayed for 10 or more years after filing date mean in relation to trade mark renewal fees?

This fee change is in relation to items 11 and 12 of the trade mark schedule of fees, and only apply in rare situations, where registration of the trade mark has been delayed for 10 or more years after the filing date. This specific change incorporates an option to pay renewals in these circumstances via preferred meansattracting a reduced fee, oranother means.

Are there any other changes to trade mark renewal fees?

There are no other changes to trade mark renewal fees. This includes no changes to either the Standard trade mark renewal fee of $400 per class, nor the $100 monthly late fee.

Are there any changes to the Headstart or picklist application fees?

There are no changes to the Headstart or picklist application fees.

Patents

What are the changes to patent excess claims? How do they apply?

The changes to the patent excess claims fees will apply according to the acceptance date of the patent application. Therefore, a case accepted prior to 1 October 2020 will only be subject to current excess claim fees, even if those fees are paid on or after 1 October 2020. A case accepted on or after 1 October will be subject to the new excess claim fees. 

The new excess claim fees are $125 for every claim over 20 claims but less than or equal to 30 claims at the point of acceptance, and $250 for every claim over 30 claims at the point of acceptance.

Scenarios

Simon has a patent application examined and on acceptance it contains 25 claims. Simon will receive an invitation to pay $625 ($125*5) for the additional 5 claims.

Tina submits a patent application and on acceptance it contains 32 claims. Tina will receive an invitation to pay $1750 ($125*10 plus $250*2).

Are there any changes to the innovation patent fees?

There are no changes to the innovation patent fees.

Is the fourth anniversary patent renewal fee changing?

There are no changes to the fourth anniversary fee. The fee changes apply from the fifth anniversary onward.

Designs

What is the fee associated with the More than one design within the same category?

IP Australia is implementing a fee reduction in certain circumstances when applying for a design.

Under paragraph 22(1)(c) or (d) of the Act, it is possible to apply for more than one design within a single application if each design is in the same category.  This category is the requirement that all designs in an application fall within the same Locarno class. The application fee associated with filing the first design has not changed.  This new fee is to reduce the amount for the second (and subsequent) designs when more than one design is included in a single application.

Scenario

Ashwin files a design application disclosing 4 designs in the same Locarno class. He files the application through IP Australia’s eServices (a preferred means). The total application fee will be $850 ($250 for the first design and 3 * $200 for the three further designs).

PBR

What is the change to PBR Qualified Persons (QP’s) fee?

The existing fee covers registration for a one-year period. The change commencing on 1 October 2020, will apply to new QP registrations or renewal of registrations, and will cover the registration of a QP for a three-year period.

New QP’s will be required to complete a new PBR QP Training Suite which will also be accessible to all QP’s to support and maintain their current knowledge.

All IP Rights

Where are the amending regulations located?

The amending regulations (Intellectual Property Laws Amendment (Fee Amounts and Other Measures) Regulations 2020 (Cth)) are located on the Federal Register of Legislation.

Are there changes to late payment fees?

There are no changes to late payment fees.

I have requested an extension of time to pay my fees. If my extension lasts until after 1 October 2020, will I have to pay the new fees, even though my fee was originally due before that date?

Yes, the new fees apply to all fee payments (apart from patent excess claims) that are made on or after 1 October 2020, regardless of when the fee is due for payment.

If you are having difficulty paying fees or meeting deadlines, please contact us to discuss your circumstances and how we may be able to assist you.  Find out more about our assistance for customers affected by COVID-19 here.

What is the expedited postage option?

The new expedited postage option enables a document request to be posted via an expedited method for an additional $20 fee. This additional fee will not increase processing time of any document request.