Patent & Trade Mark

Excess claim fee avoidance - IP Australia closes loophole

Date: 20 July 2010
Author: FB Rice
At present, Australia has a loophole allowing applicants to avoid paying excess claim fees.  To avoid applicants abusing the system, the patent office are introducing new rules on 1 August 2010 to shut this option down.
The Australian patent office (IP Australia) currently charges excess claim fees of $100 to be paid for each claim over 20 with the excess claim fee determination being made on acceptance. As such, there has been no mechanism to charge further excess claims fees for additional claims added after acceptance. Some have exploited this loophole by limiting the number of claims on file at acceptance and then subsequently filing larger numbers of dependent claims either prior to grant or after the patent seals.  While there are risks associated with this strategy, some applicants have used it to avoid considerable excess claim fee payments.
From 1 October 2010, IP Australia are closing this loophole.  Excess claim fees will still be payable on acceptance as normal but further excess claim fees will also be payable to capture claims added after acceptance.  If a request to amend is filed after acceptance which increases the claim numbers, IP Australia will charge a fee of $100 for each newly added claim over 20.  For example, if a case is accepted with 22 claims the applicant will need to pay $200 in excess claim fees. If, after acceptance, the applicant requests leave to file amended claims resulting in a total of 25 claims they will need to pay an additional $300 (on top of the standard amendment fee of $250).

Please speak to your contact at FB Rice if you would like further information on this topic.
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