Changes in excess claim fee practice for Australian patent applications

What are the changes to excess claim fee practice?

Under the current practice, excess claims fees are payable based on the total number of claims on file at acceptance. Accordingly, any number of claims can be examined initially, and excess claim fees can be reduced or avoided by filing an amendment at any time prior to acceptance, e.g., when responding to the first examination report.

Under the new practice, excess claims fees will be payable based on the highest number of claims on file between issuance of the first examination report and acceptance. There will be two periods for payment: within one month of a first examination report being issued; and within the three months after acceptance. The latter fee will cover any changes in the number of claims on file which were not encompassed in the initial payment.

The new practice will therefore reduce flexibility for applicants, and particularly the ability to have high numbers of claims examined without necessarily incurring excess claims fees.

Excess claims fees are calculated as follows:

Excess fees for each claim over 20 claims

Claims 21 to 30	Claims 31+
AUD125	AUD250

What is the change in patent office procedure?

The change in practice will result in several new communications being issued by IP Australia, including a notification on the expected commencement of examination issued six months prior to expected commencement of examination.

We currently anticipate using this communication as basis for seeking final instructions from clients to (a) pay any excess claims fees and/or (b) file a reduced claim set prior to examination commencing (if the application includes more than 20 claims). It should be noted, however, that this communication will not be issued when expedited examination has been requested.

If any excess claims that are due when the first examination report issues are not paid within one month from issuance of the first examination report, the application will lapse. However, the application can be revived if the payment of the fee is made prior to the final date of acceptance (i.e. within 12 months from issuance of the first examination report).

What action might be taken now?

For applications that include (or intend to be amended to include) more than 20 claims and for which a Request for Examination has not yet been filed, it may be more cost effective to file a Request for Examination prior to 1 October 2024. This would ensure that the higher number of claims can be considered in the first examination report while still having the option of reducing claims subsequently to avoid excess claims fees at acceptance.

Where can I find further information and examples?

IP Australia have issued a notice explaining and exemplifying the changes here. We also recommend that you discuss any questions that you have with your usual FB Rice representative.