Official fee changes & new 4th Anniversary Patent Renewal

The Australian Patent Office announced last week a new schedule of fees that will mostly take effect from 1 July 2012, with changes to fees for filing new applications taking effect from 1 October 2012. A copy of the new fee schedule published by the Australian Patent Office can be found here.

There are two very important considerations in light of these changes:

1. New 4th anniversary renewal fee
A new 4th anniversary renewal fee has been introduced for all patent applications with a filing date on or after 1 July 2008 (previously, renewal fees commenced on the 5th anniversary of the filing date). Accordingly, this will apply to:

• all national phase applications stemming from PCT applications filed on or after 1 July 2008;
• all divisional applications stemming from an earliest parent application filed on or after 1 July 2008; and
• all complete standard applications filed on or after 1 July 2008.

The new 4th anniversary renewal fee cannot be paid in advance of 1 July 2012, so any applications with filing dates on or shortly after 1 July 2008 will have a very narrow window for payment of the renewal fee. For applications with filing dates of 1 or 2 July 2008, this window for payment will be a single day, 2 July 2012 (as 1 July 2012 is a Sunday). Payments made after the due date will attract the standard 6-month grace period monthly extension fees.

2. Advance payment of fees
Any fees paid by 30 June 2012 (or by 30 September 2012 for filing new applications) will be paid at the current fee value. Accordingly, as almost all fees are increasing as of these dates, applicants can choose to pay official fees in advance, in order to take advantage of the lower fee rates. Applicants may also wish to consider bringing forward actions that have associated fee payments, such as national phase entries (before 1 October 2012), requests for examination, acceptance fee payments, or renewal fee payments (before 1 July 2012).

Please contact Cotters if you would like any further information about the changes or if you wish to request examination on any pending patent applications.

By Marcus Dalton
Cotters Patent & Trade Mark Attorneys
21 May 2012