Asia IP

IP Australia has announced upcoming reductions to its fee structure. Among other reductions, the fee for an international type search under the Patent Cooperation Treaty will be dropped from A$2,200 (US$1,700) to A$950 (US$725) beginning October 10, 2016. This is one of the largest decreases; it will benefit both inventors and businesses that are looking to progress their innovations.

“The fee decrease will be welcomed by all users, and the service is likely to greatly increase in popularity,” says Jo Shaw, a director at AJ Park in Sydney. “Australian residents and businesses are the biggest users of this service, so reducing this fee aligns with IP Australia’s innovation policy to support small businesses and not-for-profit entities.”

IP Australia expects an increase in demand for international type searches following the fee reduction. Applicants should be aware that, if this is the case, there may be a delay in completing searches and the six week delivery cannot be guaranteed. Accordingly, it recommends applicants take these considerations into account before determining the strategy that best meets their needs.

“The international type search allows the applicant of an Australian provisional patent to have his or her provisional application searched and assessed as if it were a PCT application,” Shaw says. “The fee changes are intended to simplify the fee structure, minimize touch points for customers, and align IP Australia with international practice. They follow stakeholder consultation and acknowledge a fee-weighting towards the late stages of IP protection, when rights have been in force longer and commercialization income more likely.”

This can be a valuable tool for a small company that didn’t undertake extensive patentability searching before filing, Shaw adds. “Provided the search is requested within 10 months of the filing date of the provisional application, IP Australia will provide the results of the search before the 12 month completion date. If the international type search identifies new prior art, the applicant may be able to address this when drafting the upcoming PCT or other complete application.”

If the report is particularly negative, an applicant may wish to withdraw the provisional application, keep the invention secret, and rely on other forms of IP protection, says Shaw.

The fee changes are effected by the Intellectual Property Legislation Amendment (Fee Review) Regulation 2016.