For patent applications where examination is requested on or after 1 October 2024, an excess claim fee may be imposed at the time of the issuance of the first adverse report (or if the application proceeds immediately to acceptance at first report stage the excess claim fees will be calculated as part of the acceptance fee). In reckoning the number of claims in a specification at first examination stage, regard is had to any requests to amend the specification at the time of the first adverse report. The number of claims for reckoning the amount of the fee is the number that would be in the specification if each proposed amendment had been made.

An invitation to pay excess claim fees will issue at the time of the first adverse report if the number of claims considered exceeds 20 claims. The invitation will provide one month for payment with a consequence of non-payment being that the application will enter a state of lapse. If the fee is paid within 12 months of the date of the first report, then the application is restored without the need for an extension of time under s223.

Examiners must enter the total number claims on file before them for consideration at the first report stage and each subsequent further report stage into the examination report template to enable the automatic generation of an invitation to pay fees at the first report stage, and to enable final reckoning at acceptance based on maximum number of claims examined throughout the entire examination process. An examiner should not continue to examine an application following a response from the applicant unless any payable excess claim fees are paid.
For applications where examination is requested before 1 October, excess claims will only be payable at acceptance stage as set out under Reg 23.54 (2).

Determining total number of claims for excess claims fee consideration

The total number of claims on file is the number of potential claims, taking into account all amendments proposed to date, the applicant has put forward to be considered at the time of issuance of the examination report.

The total count of potential claims that are being considered that needs to be entered into the relevant field in the template (shown Below). Please note that the field in the template will only accept a numerical value, for example, if you have 25 claims, then you must enter 25 or select 25 from the drop down list of values.

In the event you are reserving opinion on one or more claims for reasons as set out in 3.3.3 Reserving Opinion and Restricting Search, the total number of claims you must enter will still need to be the number of potential claims you are considering at the time of examination. The fee is payable for the number for claims the applicant is putting forward for consideration at first report stage, not for the number of claims you can necessarily comment on with respect to novelty, inventive step or patentable subject matter. For example, if there are 40 claims including amendments and you are reserving opinion on claims 21-40. The total number of claims on file you must enter is 40.

In some instances, the claim set you are considering may be misnumbered. For example, claims are numbered 1-20 but the actual count of claims is 23 due to the error in numbering. The total number of claims on file you must enter is 23.

Some worked examples of determining total number of claims for excess claims fees

Example 1:

The original claim set has 48 claims on file. The applicant has proposed amendments in anticipation of examination to reduce the number of claims to 20 claims however the proposed amendment is deemed not allowable. In this instance, the total number of claims on file for fee purposes would be “20”. The examination report should based on the proposed amended claims with reasons for non-allowability and opinion formed to the extent possible.

Example 2:

The original claim set has 45 claims on file. The applicant has proposed amendments in anticipation to increase the number of claims to 60 claims however opinion cannot be formed on claims 21-40 for reasons as set out in MPP 3.3.3. In this instance the total number of claims on file for fee purposes would be “60”. The examination report should based on the proposed amended claims and opinion formed to the extent possible including reasons for reservation.

Example 3:

The original claim set has 45 claims on file. The applicant has proposed S104 amendments to increase the number of claims to 55 claims. The S104

amendments to the claims are considered prior to examination and deemed not allowable. At first report stage, if no further amendments are received, the total number of claims on file for fee purposes would be “55”. The examination report should based on the proposed amended claims with reasons for non-allowability referring to the adverse S104 report and opinion formed to the extent possible.

What if incorrect number of claims has been captured at First Report stage?

Whilst care must be taken in updating this field it’s possible that the number of claims is entered incorrectly as a result of typo or incorrect claim set has been examined.

The process around re-issuance of examination report in the case incorrect claim-set has been examined or correction of other errors in the report would continue to be the same as set out in MPP 5.6.2. .

Once the examiner is aware that incorrect number of claims has been entered then examiners should put a case note on file and inform CEG so they can update the systems accordingly. In some instance, this may involve fee refunds /waivers or corrected ITPs which CEG will coordinate.

Entering total number of claims on file for acceptance tasks

The total number of claims on file including amendments is the number of claims that would form part of the accepted specification. It is this number that is required to be entered into the relevant field in the template (shown Below)

Calculation of Excess Claims Fee and Invitation to Pay

The systems will automatically calculate the excess fee payable. A system generated invitation to pay (ITP) for excess claims (where applicable) will be issued at the time first examination report is issued and where applicable at the acceptance stage.

It should be noted that an invitation to pay an excess claims fee will only issue at the first report stage or at acceptance. Any increase in claims during further prosecution relevant to an excess claims fee, while recorded in the system, does not trigger an invitation to pay and subsequent adverse further report stages.

However the number of claims recorded at each further stage will be used to calculate excess claims fee payable at acceptance stage.
At first report stage, the excess claims fee is calculated based on total number of potential claims on file the applicant has put forward to be considered at the time of examination. Fee will be payable if there are more than 20 claims on file.

At acceptance stage, excess claims fee is calculated based on the delta of maximum number of potential claims filed at any stage during the examination proceedings and number of potential claims at First Report stage.

The excess claims fee at first examination report and the adjusting amount payable at acceptance are prescribed in items 203A and 213 in clause 2 of Schedule 7 to the Patents Regulations respectively.

Worked scenarios on how excess claims fee is calculated:

Scenario 1 (Adverse First Report)

Applicant files 100 claims. Prior to examination they opt to file an amendment in anticipation reducing the total number of claims to 20. There is no excess claim fee payable at First Examination Report stage. The application is examined on the basis of the 20 claims. No additional claims are introduced at further stage and the application proceeds to acceptance. No excess claim fees payable.

Scenario 2 (Adverse First Report)

Applicant files 20 claims. Prior to examination they opt to file an amendment in anticipation increasing the total number of claims to 100. The excess fee payable at First Examination Report stage would be for 80 claims ((i.e. 10 claims at $125 each and the remaining 70 claims at $250 each). At further stage, they amend the specification to 20 claims. The application is accepted with 20 claims. No further excess fees payable at acceptance.

Scenario 3 (Adverse First Report)

Applicant files 100 claims. Prior to examination they opt to file an amendment in anticipation reducing the total number of claims to 20. There is no excess claim fee payable at First Examination Report stage. During examination they introduce an additional 20 claims. Examination proceeds with 40 claims. The application is accepted with 40 claims. A further excess claim fee is charged based on additional 20 claims (i.e. 10 claims at $125 each and the remaining 10 claims at $250 each.)

Scenario 4 (Adverse First Report)

Applicant files 100 claims. Prior to examination they opt to file an amendment in anticipation reducing the total number of claims to 20. There is no excess claim fee payable at First Examination Report stage. During examination they introduce additional claims taking the total to 100 claims. Prior to acceptance, they reduce the total number of claims to 20. An excess claim fee is charged based on the maximum number of claims examined. The first 20 claims are ‘free’, and a fee charged on the additional 80 claims (i.e. 10 claims at $125 each and the remaining 70 claims at $250 each.)

Scenario 5 (Adverse First report)

Applicant files 100 claims. Prior to examination they opt to maintain the claim numbers at 100 claims. The excess fee payable at First Examination Report stage would be for 80 claims ((i.e. 10 claims at $125 each and the remaining 70 claims at $250 each). During examination and at acceptance stage, the total number of claims remain at 100 claims. No additional excess claim fee is payable at acceptance stage.

Scenario 6 (Clear First Report)

Applicant files 100 claims. Prior to examination they opt to maintain the claim numbers at 100 claims. Following initial examination, the application is considered to be in order for acceptance. The excess fee payable at acceptance stage would be for 80 claims ((i.e. 10 claims at $125 each and the remaining 70 claims at $250 each).

Scenario 7 (Adverse First Report)

Applicant files 100 claims. Prior to examination they opt to maintain the claim numbers at 100 claims. The excess fee payable at First Examination Report stage would be for 80 claims ((i.e. 10 claims at $125 each and the remaining 70 claims at $250 each). During examination, they introduce an additional 50 claims. At acceptance there are 150 claims in total. An excess claim fee is payable based on the additional 50 claims at $250 each.

Scenario 8 (Adverse First Report)

Applicant files 30 claims. Prior to examination they opt to maintain the claim numbers at 30 claims. The excess fee payable at First Examination Report stage would be for 30 claims ((i.e. 10 claims at $125). During examination, they retain the number of claims at 30 but replace the claims with a new claim set. Application proceeds to acceptance with 30 claims. No additional excess claim fee is payable at acceptance stage.

Consideration of Standard Examination Requests

For examination requests made from 1 October 2024, applicants will be notified approximately six months ahead of expected commencement of examination of their application. This will be based on work front levels at each section level and would vary given the delays in some subject areas. The current response times for each area of technology are published on our external website.

Noting this lead time is intended to allow applicants time to make any desired amendments in anticipation of first examination report, examiners should ensure applications are not examined until this six-month notification window has passed unless explicitly requested by the applicant.

In situations where it may be prudent to assess an application within this window then the examiner should reach out to the applicant’s representative allowing them an opportunity to make any desired amendments before a first report is issued.

Refunds and waivers

Generally, no refunds or waivers would apply for excess claims fee unless there is an administrative error on IP Australia’s part in determining the fee payable.

Refunds/waivers will not apply in situations where the examiner has reserved opinion on one or more claims for reasons as set out under 3.3.3 Reserving Opinion and Restricting Search.

However, for extenuating circumstances, the Fee Refunds and Waivers delegate can make determination on a case-by-case basis based on information provided by the applicant or their representative.

Amended Reasons

Amended Reason	Date Amended
Publishing Externally	27 Oct 2025

5.6.2.7 Excess Claims Fees and Invitation to Pay

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Excess Claims Fees and Invitation to Pay