How to reduce the claim fee during the Australian patent application process

In the patent application process, handling the number of claims is not only related to technical protection, but also directly related to the expenditure of application fees. This article will analyze for you how to effectively manage the number of claims when applying for a patent with the Australian Patent Office through several specific scenarios, so as to effectively reduce related costs.

Current Process Use Case Scenario

• Scenario 1
  • The applicant submits 100 claims. The application enters the examination process and all 100 claims will be examined. During the substantive examination, the applicant amends the number of claims to 20 in order to overcome the examiner's objection. No claim surcharge is required at the grant stage.
• Scenario 2
  • The applicant files 100 claims. During the examination process, 100 new claims are added. The applicant then amends the number of claims to 50 during the examination. The total number of claims at the time of final grant is 50. A 30-claim surcharge is required (i.e., 50-20, $125 each for the first 10 claims, and $250 each for the next 20 claims).

New Process Use Case Scenario

• Scenario 1
  • The applicant submitted 100 claims. Amendments were submitted before substantive examination, and the total number of claims was expected to be reduced to 20. No claim surcharge was required during the first office opinion stage. Examination was conducted based on 20 claims and smoothly entered the grant stage. The total number of claims did not change during the grant stage, and no claim surcharge was required.
• Scenario 2
  • The applicant submits 20 claims. Submit amendments before substantive examination , and the total number of claims is expected to increase to 100. At the first examination opinion stage, the claim fee for 80 claims is required (i.e., 10 claims are $125 each, and the remaining 70 claims are $250 each). During the substantive examination, if the claims are amended to 20 claims, the application is granted with 20 claims, and no claim fee is required.
• Scene 3
  • The applicant submits 100 claims. By submitting amendments before substantive examination, it is expected that the total number of claims will be reduced to 20. No claim surcharge is required during the first examination opinion stage. During the substantive examination, 20 new claims are added, and the substantive examination will be conducted based on 40 claims. The application is granted with 40 claims, and an additional claim surcharge based on the 20 new claims is required (i.e., US$125 per claim for 10 claims and US$250 per claim for the remaining 10 claims).
• Scene 4
  • Applicant files 100 claims. Submits amendments before substantive examination, expected to reduce total number of claims to 20. No claim fee is required during the first office opinion stage. Increases claims to 100 during substantive examination. Before grant, reduces total number of claims to 20, claim fee will be calculated based on maximum number of claims during substantive examination. First 20 claims are free, claim fee for 80 additional claims (i.e., $125 per 10 claims, $250 per remaining 70 claims).
• Scene 5
  • The applicant submits 100 claims. No amendments are made before substantive examination, and the number of claims remains at 100. At the first examination opinion stage, a claim fee of 80 claims is required (i.e., 10 claims are $125 each and the remaining 70 claims are $250 each). During the substantive examination and grant stage, the total number of claims remains at 100, and no additional claim fee is required.
• Scene 6
  • The applicant submits 100 claims. No amendments are made before substantive examination, and the 100 claims are maintained. After substantive examination, if the application meets the conditions for grant, then the claim surcharge for 80 claims must be paid at the grant stage (i.e., US$125 per claim for 10 claims and US$250 per claim for the remaining 70 claims).
• Scene 7
  • The applicant submits 100 claims. No amendments are made before substantive examination, and the 100 claims are maintained. At the first examination opinion stage, a claim surcharge is required for 80 claims (i.e., 10 claims at $125 each and the remaining 70 claims at $250 each). During the substantive examination, 50 new claims are added. At the grant stage, the total number of claims is 150, and an additional claim surcharge of $250 for each of the 50 new claims is required.

In intellectual property management, rationally planning the number of claims in a patent application can not only reduce unnecessary expenses, but also improve the efficiency of the examination process. Applicants can proactively make strategic adjustments to the claims before facing the first examination opinion, which not only saves costs, but is also an effective way to deal with potential examination challenges.