Excess claim fees in Australia from 1 October 2024

IP Australia rolls out changes to its fee from 1 October 2024.

Excess claims fees stand out as a major change, discouraging prosecution of claim sets beyond 20 claims by the imposition of a fee penalty.

Accordingly, voluntary amendments are suggested at or before requesting examination

Currently, excess claims fees are payable in Australia based on the number of accepted claims. That is:

• if examination is requested before 1 October 2024, excess claim fees are calculated based on the number of claims only at acceptance (allowance).

However, the following important changes are commencing on 1 October 2024:

• if examination is requested on or after 1 October 2024, excess claim fees will be calculated:
  1. based on the number of claims at issue of the first examination report; and
  2. again at acceptance (allowance) if the number of claims increases beyond those at the first report at any point during examination (and in excess of 20 claims). That is, excess claims fees at acceptance will be calculated based on the highest number of claims on file between issue of the first examination report and acceptance (no longer on the number of accepted claims).

Whilst the quantum of the official excess claims fees will remain the same (namely AU$125 per claim for each claim numbered 21 to 30, and AU$250 per claim for each claim numbered 31 onwards), the new practice will reduce flexibility for Applicants, and particularly the ability to have high numbers of claims examined without necessarily incurring excess claims fees.

If you wish to avoid these procedural changes, we encourage you to consider requesting examination before 1 October 2024. Otherwise, we recommend you consider reducing the number of claims when requesting examination.

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