Changes to Excess Claims Fees for Australian Patent Applications

IP Australia has just announced that a new Fee Schedule will be effective from 1 October 2024.

A significant change concerns how ‘excess claims’ fees are to be levied, if there are more than 20 claims in the patent specification.

Specifically, when a Request for Examination is filed on or after 1 October 2024, excess claims fees will then become payable if there are more than 20 claims being examined at any point during the examination process.

Payment will be due in two tranches, excess claim fees will first be calculated at issuance of the Examiner’s First Report, and will be payable within 1 month that Report (or the application will lapse), and then, a second payment will be due after acceptance to cover fees due for any discrepancy between the maximum number of claims examined at any point during the examination process, and the number of claims examined (and already paid for) at the First Report stage.

This differs from the current regime whereby excess claims fees are only payable if there are more than 20 claims in the specification at the time of acceptance/allowance for grant.

The actual official fees and our charges for payment of the excess claims have not changed, but it is the timing as to when the fees are levied and payable which is changing.

Our recommendation
Our general recommendation is that, if there are more than 20 claims in a pending patent application, and a Request for Examination has not yet been filed, then you file a Request for Examination by 30 September 2024. This will then mean that the excess claims fees will be assessed under the current regime and will only be payable if there are more than 20 claims in the specification at the time when the case is accepted/allowed.

If you require any further information or would like us to provide more specific advice in relation to a particular patent application, please contact us at mail@halfords.com.au

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