Australia: Changes To Australian Claim Acceptance Fees

On 13 December 2006, the Intellectual Property Legislation (Fees) Amendment Regulations 2006 was signed by the Australian Governor-General.

One of the most significant fee changes introduced in respect of Australian patent applications is that concerning acceptance fees. For any Australian patent application accepted after 1 March 2007 each claim over 20 in that application will incur an $100 acceptance fee. This is in contrast to the previous fee of $20 per claim over 20—a 500 per cent increase.

For many patent applications these new fees will incur significant costs. For example, an application with 40 claims will now be subjected to $2,000 in claim fees alone (in contrast with the previous claim fees of $400).

For those patent applications currently pending and nearing acceptance our recommendation is to actively attempt to have the claims accepted prior to the 1 March 2007 date on which the new claim fees become active.

Given that this strategy relies on the Australian Patent Office’s acceptance of applications prior to the now imminent 1 March 2007 deadline, the number of matters for which this approach will succeed is likely to be limited.

Under Australian legislation claim fees are paid at the time an application is accepted. After acceptance there is a three month window prior to the grant of the application in which the application may be opposed. An applicant may amend the application during this three month window to introduce new claims provided any additional claims fall within the scope of those claims accepted and the claims are fairly based on the specification. At this stage there do not appear to be any fees associated with the grant of claims that are introduced into the application after acceptance.

In light of this, a strategy for minimising claim acceptance fees is to delete dependent claims from an application prior to acceptance and then reintroduce those claims via a post-acceptance amendment. In respect of the dependence on accepted claims there can, presumably, be no question as to their scope being narrower than those claims allowed in the application, and nor can there be argument that the ’new’ claims are not novel or inventive (again by virtue of their dependence on previously accepted claims).

If this approach is taken, however, a further issue may arise where an application (and presumably any post-acceptance amendment) is opposed. Australian law provides that an amendment is held to be made when allowed and, if an amendment is opposed, allowance occurs at the resolution of the opposition proceedings. If the opposition time allowances and deadlines are taken into account, an opposed post acceptance amendment (which may well include the only valid and infringed claims of the application) may well take over a year to be made, time in which damages for infringement of those claims will not be recoverable.

While post-acceptance amendment may provide a medium term approach for minimising claim fees, it is our opinion that once this strategy is recognised by the Patent Office, steps will be taken to amend the legislation. For example, provisions may be introduced such that claim fees are paid at the examination or grant of the application rather than acceptance.

Ultimately, the only ’strategy’ for minimising claim fees is likely to be that of reducing the number of claims. This may be done either by the deletion of claims that are not of practical value or the consolidation of multiple claims into a single claim. Such consolidation is possible by taking advantage of Australia’s allowance of multiply dependent claims, or, if appropriate, by the introduction of Markush-style claims.

While it is possible to remove excess claims from a parent application and pursue these in a divisional application, this approach will not be of practical value if escaping excess claim fees is the sole purpose of the divisional application. The filing, examination, grant and renewal fees associated with an extra divisional application would quickly outweigh any excess claim fees avoided.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.