An important procedural change is being introduced in the process for obtaining an Australian patent, with new excess claims fees being introduced and moving the existing excess claim fees to earlier in the process.

The ramifications for not paying the excess claim fees correctly under the new system are dire, with the Australian application lapsing and the rights being lost.

Current system

Under the current system, an Australian patent application can be filed with any number of claims and excess claim fees are only charged based on the number of claims present in the application when it is accepted/allowed (passed examination). At that time, an excess claims fee of AUD110 is charged for each claim in excess of 20 claims.

New system

In the new procedure, patent applications will incur excess claim fees if the number of claims is greater than twenty (20) at the time of issuance of the first Examination Report.

Under the new procedure, IP Australia will issue an invitation to pay (ITP) the excess claims fees upon completion of the first examination report if there are more than 20 claims on file for consideration. So, they will examine the claims on file and issue an Invitation with the first examination report.

The excess claims fees will then be payable within one (1) month of the date of the first report.  If the fees are not paid within one-month time limit, the application will lapse.  The application will only be revived if payment of the outstanding fees is made prior to the final date of acceptance (i.e., 12 months from the date of the first report).

Importantly, the excess claim fee will have to be paid once the invitation to pay (ITP) has been issued, regardless of whether the number of claims is subsequently reduced.

Further, if the number of claims after acceptance/allowance of the patent application exceeds the number of claims considered at the time of the first Examination Report and there are more than 20 claims, then further excess claims fees will be payable.

The excess claim fee charged by IP Australia will be AUD110 per claim for claims 21-30, and AUD250 for each claim over 30.

To provide applicants with forewarning of any excess claims fees being incurred, IP Australia has advised that it will provide a notification approximately six (6) months prior to the expected commencement of examination.  In this way, applicants should have sufficient opportunity to amend their specifications prior to the applications being examined if they wish to avoid or minimise the excess claims fees payable.

There will be warnings about the new fees in Filing Receipts, Directions to Request examination and other official documentation issued in relation to new applications moving forward but an issue will be created for applications already filed and on which examination has not yet been requested.

When does this start?

The new procedure will apply to applications that have filed a Request for Examination on or after 1 October 2024.

Patent applications for which Examination has already been requested before this date will operate under the current procedure where excess claim fees are calculated at the time of acceptance.

Best action to reduce the cost

There are various options available to avoid the new excess claim fees.

These options include:

a) request examination before 1 October 2024 to avoid the new excess claim regime (this will ensure that the application is processed under the current system but will pull costs forward);

b) request examination as normal after 1 October 2024 and make an amendment to reduce the number of claims to 20 to avoid the new excess claim fees; or

c) pay the excess claims fees due after requesting examination (for applications based on a UK priority filing, the claim set will normally have 25 claims and therefore will attract the excess claim fees).

For applications with more than 20 claims, a voluntary amendment can be filed to reduce the number of claims on file, but there is an official fee of AUD250 for an amendment requested before examination (before the request for examination has been filed).

Therefore, in the case of option 2, to avoid the official fee for a voluntary amendment, and the excess claim fees, it would be best to amend the claims to no more than 20 claims, either when requesting examination, or immediately thereafter.

As always, for any advice, please contact one of our attorneys.