New Regulations of the Australian Patent Office on Additional Fees for Claims

On October 1, 2024, IP Australia updated its fees to continue to cover the costs of managing intellectual property (IP) rights and related laws, and implemented a six-month interim measure to accelerate the examination of patent applications containing more than 20 claims. In response, IP Australia has notified applicants that if additional claim fees will be incurred, applicants can make proactive amendments before the first examination opinion is issued.

But this temporary measure will end on April 1, 2025.

From 1 April 2025, IP Australia will notify applicants who have made a request for examination six months before the expected start of examination, regardless of the number of claims in the application, to allow the applicant to make any required amendments before examination. The timing of notification may vary for each invention type.

If the applicant has filed a request for accelerated examination, it is recommended that any required amendments to reduce the number of claims be made at the time of filing the request for examination. This also applies to applications filed via the Patent Prosecution Highway route.

IP Australia will issue a notice of additional claim fees (ITP) after completing the first office opinion. The applicant must pay the ITP within one month from the date of the first office opinion. The applicant may also choose to pay it at any time within the next 11 months without requesting an extension. However, the patent application will be deemed invalid within these 11 months.

Once the applicant has paid the full fee, the applicant will receive the first review opinion from IP Australia and review the response.