IP Australia review fees

IP Australia are presently reviewing various fees associated with obtaining and maintaining registered intellectual property.  In respect of this review, a consultation paper was recently made available to the public, and includes a number of interesting proposals.

Overall, the fee increases are relatively modest.  Patent related fees in general have increased by more than the Trade Mark related fees, as apparently the Trade Marks arm of IP Australia has been effectively subsidising the Patent arm for the past few years.

Some features of the proposal are discussed below.

At present, Patent annuities are required to be paid from the fifth year after initial filing onwards.  The proposal is to have the first annuity fee to be paid from the fourth year.  Overall, this is not a big change however applicants who are concerned about paying an annuity fee for a patent application that may not eventually be accepted may consider requesting examination of the application at an early date.

It is proposed to raise the fees for having an International Search (PCT) or an International-type Search performed by IP Australia to $2,200.  The International-type Search is currently cheaper than an International Search, despite the searches being essentially the same, and therefore the proposal not only increases the costs, but aligns the two similar services.

Further, the current ‘Raising the Bar’ Bill before Parliament provides for a new service, referred to as a ‘Preliminary Search and Opinion’, to enable applicants in Australia that do not have the benefit of an overseas patentability report (for example, a US, European or PCT examination report) to obtain a preliminary patentability report to assist in deciding to go ahead with a patent application and the associated fees.  The proposed cost of such a service is $2,200.

Finally, it is interesting to note that IP Australia is proposing that in most cases, online patent and innovation filings and renewals will attract a lower fee than filing via a traditional channel.

The public now have the opportunity to comment on the proposal.  It is the intention of IP Australia to begin the fee increases from July 2012.  A link to the consultation paper is available below.

IP Australia Fee Review 2011: Consultation Paper

Jeremy Robinson