Australian patent costs for US attorneys

Costs in USD from national phase entry to the last annuity

Australia is a popular patent-filing destination for US innovators. It has a stable, high-value economy and a patent system that provides a straightforward path to reliably enforceable patents.

This page sets out typical Australian patent costs for each and every step from national phase entry (or Convention filing) through to the last annuity. The quoted figures are for actions completed on the instructions of a US patent attorney and include both official fees and professional fees.

Australian patent costs for US attorneys
	AUD	USD
National phase entry	1975	1420
Convention filing	1975	1420
Divisional filing	1975	1420
Requesting examination	1315	930
Forwarding an examination report	640	460
Excess claim fee per claim for claims 21 to 30	145	100
Excess claim fee per claim for claims 31+	270	190
Responding to an examination report	1000	720
Acceptance (allowance) and grant	1220	900
First annuity	640	460
Last annuity	3155	2270

The following chart provides an overview and assumes (a) there are no more than 20 claims, (b) a first examination report issues, and (c) the response to that report is wholly successful. If a response is unsuccessful, a further report-response iteration may add about 1,000 USD to the prosecution costs.

National phase entry

Entering the national phase in Australia costs 1,975 AUD (about 1,420 USD) including the 400 AUD (about 290 USD) official fee. National phase entry is straightforward. We do not require a Power of Attorney or any other document signed by the applicant. See AU national phase filing requirements or contact us to get started.

Other options

Instead of entering the national phase in Australia, an Australian non-provisional patent application might be filed with:

1. a claim to Convention priority from a US patent application; and/or
2. a claim to divisional status from a pending international patent application (PCT application).

Options 1 and 2 are likewise straightforward, entail the same costs as simply entering the national phase and lead to the same ongoing steps and costs described below.

Option 1 extends the timing of the ongoing steps, e.g. the first renewal fee will fall due on the fourth anniversary of the Australian filing date rather than the same anniversary of the international filing date.

Option 2 is appropriate if there is new matter to add. Australian divisional patent applications:

• can include new matter and in this respect are analogous to US continuation-in-part applications; and
• must disclose the best version of the invention known to the applicant at the time of filing the divisional patent application.

Prosecution

Requesting examination

After entering the national phase, the application will likely remain dormant for two years or so until the Patent Office directs that examination be requested. Requesting examination currently costs 1,315 AUD (about 930 USD) including the 550 AUD (about 400 USD) official fee.

It is not necessary to wait for the Patent Office’s direction. Examination can be requested at any time. We apply a 300 AUD (about 215 USD) discount when the national phase is entered and examination is requested simultaneously.

Typically, the examiner will provide their feedback 12 to 18 months after an ordinary request for examination. The actual timeframe varies based on workloads within the Patent Office’s different technology groups and can be checked here.

Requesting expedited examination

Expedition can be requested without additional cost and should lead to the examiner’s feedback within eight weeks.

A reason sufficient to satisfy the Patent Office that:

• [expedition] is in the public interest, or
• there are special circumstances that make [expedition] desirable

must be provided. In practice, requesting expedition is straightforward. The Patent Office’s electronic portal includes the following selectable options:

• Green technology (climate ready)
• Commercialisation or SME fast track
• Possible infringement
• Licensing reasons

‘SME’ refers to Small to Medium Enterprise and is not clearly defined. We do not charge to request expedition due to one of these selectable reasons.

Expedition can be requested under the Patent Prosecution Highway (PPH), although this will (a) entail additional administration, and (b) not lead to examination any faster than simply choosing one of the above selectable options. If you supply us with a copy of the foreign Patent Office work product and a claim concordance table, requesting expedition under the PPH will cost 300 AUD (about 215 USD).

Voluntary amendments

Simply filing a revised set of claims (that you provide) alongside a request for examination attracts a 300 AUD (about 215 USD) service fee but no official fee. There is no official fee for filing amendments in the period from requesting examination until the application is accepted (allowed), although an amendment to add claims may lead to excess claim fees.

Voluntary amendments can be filed before requesting examination, but an official fee of 250 AUD (about 180 USD) must be paid if those amendments are to be officially processed before the application is taken up for examination.

Postponement of acceptance

In Australia, patent applications are accepted rather than allowed and it is customary to:

1. file a request for postponement of acceptance alongside a request for examination, to ensure that an examination report issues even if the examiner has no objections; then
2. make minor amendments desirable to suit Australian practice in response to the examination report.

This approach defers cost and extends the opportunity to make broadening claim amendments. There is no cost to request postponement of acceptance when requesting examination.

Instead of 1 and 2, we might:

1. review the specification and make any such minor amendments at a cost of about 500 AUD (about 360 USD) when requesting examination; and
2. proceed without the request for postponement of acceptance.

This might avoid the expense of an examination report and may be appropriate if, for example, the claims remain satisfactory to the applicant and have been allowed elsewhere.

Excess claim fees

Each claim after the 20^th claim attracts an excess claim fee. Including official and professional fees, the excess claim fees cost:

• 145 AUD (about 100 USD) per claim for claims 21 to 30, and
• 270 AUD (about 190 USD) per claim after the 30th claim.

The excess claim fees are calculated based on the number of claims when the examiner takes up the application for the first time and must be paid within one month of the first examination report (or within one month of the Notice of Acceptance if the application proceeds directly to acceptance without an examination report issuing).

The excess claim fees can be avoided (or reduced) by deleting claims before the examiner takes up the application.

Examination

Forwarding a routine examination report to you along with brief comment will cost about 640 AUD (about 460 USD).

Filing a response to an examination report, including argument and amendment prepared by you, would likely cost about 1,000 AUD (about 720 USD). This figure includes an allowance for briefly reviewing the specification and making routine minor amendments to suit Australian practice.

No RCE or late response fees

In Australia, the issuance of the first examination report opens a 12-month window to persuade the examiner that the application is in order for acceptance (allowance).

During the 12-month window, multiple report-response iterations are allowed without any additional fees or any new restrictions on the amendment options available. Australian patent examiners typically process responses within 20 working days and often move more swiftly if the 12-month deadline is drawing near.

Generally speaking, the 12-month deadline is not extendible, although it is commonplace to file a divisional patent application shortly before the deadline, and then allow the application under examination to lapse, to secure a de facto extension.

Acceptance (allowance) and grant

If the application is accepted (allowed) and if there is no third-party opposition, a patent should be granted on the application a few months later. Processing acceptance and grant currently costs 1,220 AUD (about 900 USD).

Renewal fees

The first annual renewal fee falls due on the fourth anniversary of the international filing date. Paying that fee currently costs 640 AUD (about 460 USD). The renewal fees increase from year to year. The last renewal fee is due on the 19^th anniversary of the international filing date. Paying that fee currently costs 3,155 AUD (about 2,270 USD).

New Zealand

The New Zealand patent application process and costs are similar to the Australian process and costs outlined above, although:

• in Australia it is customary to simply to wait (usually for two years or so) until the Patent Office directs the applicant to request examination; whereas
• in New Zealand it is prudent to request examination (and file and request examination of any planned divisional patent applications) within three years of the international filing date, with the goal of finalising the New Zealand prosecution in advance of a five-year deadline for filing divisional patent applications.

We offer a discount for proceeding in both countries simultaneously, so the total cost to enter the national phase in both Australia and New Zealand would be 3,500 AUD (about 2,520 USD).

Getting started

If you are ready to get started, please email your instructions to ma**@********************om.au, and of course please let us know if anything further would be helpful.

Frequently Asked Questions