FAQs on Additional Fees for Patent Applications in Australia

Australia's new claim fee regulations, which will take effect in October 2024, are very different from previous patent application practices. We have prepared the following content for applicants applying for patents in Australia for reference when applying for patents.

Q1: When does the excess claims fee procedure take effect?

• Australia’s new fee structure comes into effect on 1 October 2024. The new excess claims fee procedure will apply to applications for which a request for examination is made on or after this start date.
• For applications for which a request for examination is filed before the implementation date of the new rates, the old excess claim fee procedure will apply, with fees payable only at the stage at which the application is accepted.

Q2: How do changes to excess claim fees work in practice?

• IP Australia will issue a fee payment notice immediately after completing the first report if the patent application contains more than 20 claims to be considered. Fees must be paid within 1 month from the first report.
• If the fee is not paid within 1 month after the first office action is issued, the application will be deemed invalid. The application can only be reinstated if the fee is paid before the final date for acceptance (the final date is 12 months from the date of issuance of the first report). In the case where the fee is paid within the 12-month period, no late payment fee or extension fee will apply.
• If, after acceptance, the examiner considers a number of claims exceeding the number in the first office action and exceeds 20, IP Australia will issue a further notice to pay the claim surcharge.
• For more information, see the proposed excess claim fee flow chart and typical use case scenarios below:

Q3: How does the applicant know when the examination report will be issued?

• IP Australia endeavours to commence its examination within 12 months of the date of the request for examination.
• Applicants will receive a notification approximately six months before the expected examination process begins. This notification will provide applicants with an opportunity to make proactive amendments prior to examination.
• PPH accelerated examination is an exception to the notification process described above. IP Australia seeks to accelerate examination within 8 weeks from the date of the request. Since the request for acceleration is initiated by the applicant, the applicant is expected to provide the necessary amendments when filing the request to reduce or avoid any claim surcharge.

Q4: Will there be any communications or reminders to applicants regarding excess claim fees?

• Beginning on the date the new rates go into effect, the following notices will contain information related to excess claim fees:
  • Application receipt notice
  • Notice of Examination Request Instructions
  • Examination Request Confirmation Notice
  • Notice of expected examination commencement – sent six months before the examination is expected to commence
  • If no response is received within three months of the final acceptance date, a review response reminder will be issued
  • Applicants may apply to amend their specifications at any stage before examination begins to reduce or avoid any excess claim fees that may apply.

Q5: Do I need to pay a fee to modify the number of claims?

• Claim amendments filed during pre-examination are free of charge. Any voluntary amendments filed under s104 that are considered before examination will be charged as per the fee schedule.

Q6: How will the divisional application be handled?

• Divisional applications will be subject to this new excess claim fee procedure. Divisional applications are generally directed to be examined immediately.

Q7: Will the excess claim fees be refunded if the claims are not examined?

• The claims surcharge is based on the number of claims submitted to IP Australia for consideration. If an opinion is reserved, no refund will apply.

Q8: What happens if the excess claim fees are not paid?

• If the claims fee is not paid within 1 month of the issuance of the first office action, the application will lapse. The application can only be reinstated if it is paid before the final date for acceptance (the final date is 12 months from the date of the issuance of the first report, or a date extended under s223).

Q9: Will IP Australia process the response to the First Examination Report if the claims fee is not paid?

• No. Where applicable, the claim fee must be paid before the examiner considers the response to the First Examination Report. IP Australia strives to respond to the response to the First Examination Report within 20 working days of receipt of the response, but failure to pay the claim fee will extend this period.

With the introduction of the new IP Australia regulations, changes to the excess claim fees for patent applications will have a significant impact on application strategies. The effective date of this regulation is October 1, 2024, and understanding and flexibly applying the new regulations will be key to ensuring the smooth progress of applications. For patent applicants, it is crucial to plan the number of claims in advance and carefully consider the application strategy before examination.