Welcome to the new version of the Patents Manual. Please note there are changes to the numbering and sequence of the chapters and pages in the manual. You are encouraged to take the time to explore and familiarise yourself with this new structure. Payment of fees

Date Published

Key Legislation:

Patents Act:

  • s227 Fees payable under this Act  

Patent Regulations: ​​​​​​​

  • reg 22.2 General fees
  • reg 22.2A Failure to pay: patent attorneys fees
  • reg 22.2B Failure to pay: filing fees for patent requests
  • reg 22.2C Failure to pay: certain other filing fees etc
  • 22.2D Failure to pay: fees payable by patentee for requests under s 101A(b) of the Act
  • reg 22.2EA Failure to pay: fee for grant of leave to amend specification (person invited to pay)
  • reg 22.2F Consequence if Commissioner does not invite payment
  • reg 22.2G Failure to pay: hearing fees
  • reg 22.2H Failure to pay: certain fees for actions by Commissioner
  • reg 22.2HA Failure to pay: fees for requesting expedited dispatch
  • reg 22.2I Failure to pay: acceptance fee
  • reg 22.6 Exemption from fees
  • reg 22.7 Refund of certain fees

Fee payment basis

In general, fees are payable in respect of:

  • the doing of an act by the Commissioner;
  • the doing of an act by a person other than the Commissioner;
  • the filing of a document; and
  • the filing of a request.

The fees are set out in schedule 7 of the Regulations.​​​​​​​

Fees Not Paid or Requested

Regulations 22.2A - 22.2I provide for the consequences of failing to pay a fee.

Where a fee has not been paid, CEG will issue an invitation to pay the fee. In most situations, the case will not be sent to the relevant examination section until the fee is paid.

If the fee is not paid within the period allowed in the invitation, the application, request or other relevant document is taken to have not been filed, has lapsed or the patent ceases.

If an examiner receives a case file containing a document in respect of which a fee has not been paid but has been requested, CEG should be notified immediately and no examination action should proceed until the fees are paid.

However, where examiners receive a case containing a document or request for action in respect of which a payable fee has not been requested, the following procedure applies:

  • if the case is received within one month of the receipt of the document or request in the Office, examiners should immediately notify CEG, who in turn will arrange for an expeditious request of the fee (to meet the requirements of the applicable regulation); or
  • if the case is received more than one month from the date of receipt of the document or request, examiners should proceed with examination of the case. A note should be added at the end of any report issued, that the fee has not yet been paid and whilst it is to be understood that the document or request is deemed to have been filed or made, the fee remains payable (reg 22.2F).

Late Fee

In the situation where a fee is paid late and there has been a change in the fee schedule since the due date, the fee payable is the fee applicable at the date the fee is paid, plus the extension of time penalty for late payment in accordance with the schedule.

Exemption From Fees – Regulation 22.6

Regulation 22.6(1) allows the Commissioner to give exemptions to fees (in whole or in part), if the Commissioner is reasonably satisfied that an exemption is justified given all the circumstances.

Examiners should refer any Requests for exemption from fees to the relevant Assistant General Manager.

The circumstances where the Commissioner might exempt a person or organisation from payment of fees is not prescriptive, each case needs to be assessed on its own merits.

However, the following general principles outlined in the Corporate Guidelines for Refunds and Waivers apply:

The Commissioner will exempt the customer from paying a fee, either in whole or in part;

  • if IP Australia has made an error, given incorrect advice or failed to provide a notification, in such a way as will make the customer liable for a fee that they would not otherwise have needed to pay; or
  • if IP Australia has made an error or given incorrect advice that has given the customer a clear expectation that they need to pay an amount that is less than the prescribed fee.

Additionally, the Commissioner will generally not exempt payment of a fee for filing a document associated with an action upon subsequent withdrawal of that action (for example, filing a notice of opposition and subsequent withdrawal of the opposition).

Reduced fee due to a Period of Delay

Where there has been a delay in examination or acceptance due to an error or omission by the Office, the period of delay will not be taken into account when calculating the fee amount (reg 22.6(2)).

The case should be referred (together with a statement outlining the circumstances) to a supervising examiner for consideration of whether an office error or omission has contributed to a delay. If the supervising examiner is in agreement, the matter should then be referred to the relevant Assistant General Manager for fee considerations.

Refund of Certain Fees - Regulation 22.7

Regulation 22.7(1) allows for the filing fee to be refunded if a complete standard application is withdrawn before the specification becomes OPI.

The amount refunded will usually be the filing fee minus any costs associated with processing the application.

In general, the cost of filing a provisional application is used as an indication for the costs for processing applications. In addition, where the application has been classified the Commissioner will estimate the costs associated with the classification and related actions.

Requests for refunds of fees associated with standard applications should be referred to CEG while those associated with PCT fees should be referred to the PCT Unit.

Note: Examiners should not include in their reports any suggestion of waiving, transferring or refunding a fee.

When Refund or Transfer is Not Available

Except for the certain fees mentioned above, a fee is generally not available for refund or transfer, if the act required by that fee has already been done.​​​​​​​

Additionally, an application which is lapsed cannot be withdrawn (see Withdrawal of an application) and thus no fee refund is applicable in these circumstances.

Amended Reasons

Amended Reason Date Amended

Published for testing

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