IP Australia fees to change from 1 October 2020

What you need to know

• From 1 October 2020, a number of official fees for patents, trade marks, designs and plant breeders' rights will increase.
• The fee changes follows a detailed fee review and are intended to ensure that IP Australia's fees are "consistent, transparent and recover the costs associated with administering the IP rights system".  

What you need to do

• For trade marks, most of the filing fees will increase from 1 October 2020.  If you are planning to file any trade mark applications in Australia in the near future it is worth filing them prior to 1 October 2020 to take advantage of the lower fees, particularly if your applications will be filed in multiple classes.
• For the other IP rights the key changes are to the renewal fees. If your patent, design or plant breeders' rights registration are due for renewal, if possible, consider paying the renewal fees prior to 1 October 2020 to take advantage of the lower renewal fees.

Some IP Australia fees will change on 1 October 2020

From 1 October 2020, a number of official fees (those charged by IP Australia) associated with patents, trade marks, designs and plant breeders' rights will increase.  There will also be changes to the fees for patent and trade mark attorney registration and Olympic insignia protection.

The most significant fee increases apply when the payee pays the fee by a means other than the preferred means (which is using IP Australia's online system).  In this article we have focused on the fee changes for the "preferred means" only.

Set out below is an overview of the changes for each IP right.

Trade marks

The most significant change to the fees for trade marks is an increase in the trade mark application filing fee.  From 1 October 2020, the filing fee will increase by:

• AU$70 per class from AU$330 to AU$400 for a standard trade mark application; and
• AU$70 per class from AU$480 to AU$550 for a series application.

The filing fees for applications where the IP Australia "pick list" is used for the goods and services description will not change.  

There will also be changes to the hearing fees to reflect the fact that it is more expensive for IP Australia to conduct in person as opposed to remote hearings.  Therefore the hearing fees will be changed so there is a flat fee of AU$400 for requesting a hearing and then a different hearing fee depending on how the matter is heard.  Those fees will be AU$800 per day for an in person hearing, AU$600 per day for any other form of hearing (eg, virtual) and AU$400 for a hearing by written submissions only. 

Patents 

For patents, the most significant change is to the renewal fees which will increase from 1 October 2020.  The amount of the increase varies depending on to which anniversary of the filing date of the patent the renewal relates.  The fees rise at an increasing rate as was recommended by the Productivity Commission in their report on the 2016 inquiry into Australia's intellectual property arrangements.  For example the renewal fee for the fifth anniversary rises by AU$15 from AU$300 to AU$315.  However, the renewal fee for the twentieth anniversary rises by AU$1,450 from AU$2,550 to AU$4,000.

Designs

For designs, there are two key fee changes.  First, the renewal fee will increase by AU$80 from AU$320 to AU$400.  Secondly, for new design applications, where a new design application contains more than one design in the same category the fee for each additional design in the application will reduce from AU$250 to AU$200.