Recent changes to intellectual property fees and legislation worldwide
Australia
As of October 1, 2024, an updated intellectual property (IP) fee schedule entered into effect in Australia. The following fee changes encompass some of the most substantial changes, and reflect fees paid by the preferred means of the Australian IP Office, namely by way of payment completed online. Any IP related fees which are paid by means other than electronic payments, such as by paper means, will be subject to fees at a higher rate than those paid electronically.
The full fee schedule can be found on the IP Australia website, and tailored fee quotations can be generated via the IP-Coster system found here.
Industrial Designs
The fees in relation to industrial design applications have been amended across the board, with the cost for the filing of an application for one design, as well as the fee for the filing of the first design in an application comprising multiple designs, decreasing by 20% from 250 AUD to 200 AUD respectively.
Similarly, the cost for each additional design in a multiple design application has fallen by 25% from 200 AUD to 150 AUD. The fee for the filing of a request to amend a design application to add further designs has decreased by 20% from 250 AUD to 200 AUD per additional design.
Whilst the aforementioned filing fees experienced decreases, other industrial design fees have inflated in line with the cost amendments.
As such, the fee for the request for the examination of a registered industrial design has risen by approx. 19% from 420 AUD to 500 AUD in total, which is payable in whole if the request is made by the design owner. For examination requests submitted by a third party, the fee is to be paid in equal 50/50 parts by both the third party and the registered design owner, totalling 250 AUD payable each.
Patents
Multiple fees in relation to patent filing and maintenance have also been amended, with the alterations comprising both increases and decreases throughout.
As per the new fee schedule, the cost in relation to the filing of a standard patent application in Australia has risen by approx. 8% from 370 AUD to 400 AUD, whilst the fee associated with the filing of a provisional patent application has decreased by approx. 9% from 110 AUD to 100 AUD. The filing fee for an innovation patent has increased by 11% from 180 AUD to 200 AUD.
The costs in relation to PCT applications have also been amended, with the fee for national phase entry in Australia having inflated by approx. 8% from 370 AUD to 400 AUD.
With regard to the examination of patents, the fee for the request of an examination for a standard patent application has risen by approx. 17% from 300 AUD to 350 AUD in instances whereby the Australian IPO conducted the International Preliminary Examination (IPE) on the application, and by approx. 12% from 490 AUD to 550 AUD in all other instances.
For the examination of an innovation patent application, the cost has increased by 10% from 500 AUD to 550 AUD when requested by the patent applicant themselves. In instances whereby the examination of an innovation patent is requested by a third party, the cost is split 50/50 between the applicant and the third party, totalling 275 AUD each.
The cost in relation to a preliminary search and opinion on a standard patent application will now comprise 1100 AUD, rising by approx. 16% from 950 AUD, with the fee for a request for an international-type search for a provisional patent application also having increased from 950 AUD to 1100 AUD.
A new fee has been implemented in relation to the examination of patent claims in excess of 20, with the fee for the examination of each claim between the 21st and 30th constituting 125 AUD, and each claim over the 30th incurring an examination fee of 250 AUD. These new fees which have been implemented at the examination stage replace the previous fees which were incurred for each excess claim in a complete application upon grant.
Moreover, the minimum grant fee for all standard patents has risen by 20% from 250 AUD to 300 AUD, whilst all patent annuity fees starting from the 6th year have inflated across the board. As such, the fee for the sixth anniversary of patent renewal has increased by approx. 3% from 335 AUD to 345 AUD, the tenth by 10% from 490 AUD to 540 AUD, and the nineteenth by approx. 6% from 2650 AUD to 2815 AUD.
Trademarks
Trademark fees have largely remained the same for procedures such as filing and the like, however, a new fee has been implemented in relation to the filing of a statement of grounds and particulars (SGP) in an opposition to registration of a trademark, as well as for an opposition to extension of protection to an IRDA. As such, the fee payable for the fourth and any further opposition ground, as well as the fee for each of the 11th and further registered or protected trademarks that the opposed mark is claimed to be substantially identical with, constitutes 250 AUD respectively.
Moreover, the fee in relation to the filing of a request for the removal of a trademark from the Register on the ground of non-use, and the fee for requesting the invalidation of a protected international trademark on the same ground, have increased by approx. 40% from 250 AUD to 350 AUD respectively.
Several other fees have also been amended, including those regarding IP-related hearings and proceedings, as well as other procedural matters for intellectual property. The aforementioned fee changes are in line with the quadrennial reviews that take place in relation to the IP fees in Australia, with the latest costs review having commenced in 2023 prior to being implemented this year, and in accordance with the IP Office’s commitments to keeping its cost recovery arrangements consistent with the Australian Government Charging Policy.
Yemen
There have been several significant advancements to the intellectual property systems which concurrently operate in Yemen in recent months.
As per the new trademark rules, as of October 22, 2024, trademark applications submitted to the Yemeni-Sana’a Office or the Yemeni-Aden Office may now include up to ten goods or services per trademark, with the previous system only allowing up to four in an application. This new regulation applies to both new applications submitted on or after October 22, as well as to previously submitted applications which are awaiting examination, meaning that applicants can amend an application to include up to ten goods or services whilst examination is pending.
Moreover, the goods and services detailed in an application must align with those contained within the 12th Edition of the Nice Classification, which was officially adopted by Yemeni IPO’s on October 10, 2024. The adoption of the Nice Classification in Yemen harmonizes the country’s classification of goods and services with that of global standards, demonstrating a move toward a more international approach to IP which, in turn, should help to foster greater consistency in the IP field and encourage IP filings within the jurisdiction.
Ukraine GI Rules
As of August 16, 2024, Ukraine implemented new rules in relation to the registration of Geographical Indications (GIs). The Order was approved by the Ministry of Economy and registered on July 24, 2024, and establishes consistent and clear requirements for the registration of GIs in relation to agricultural goods, food and alcoholic beverages for Ukraine.
The new rules implemented by the Order encompass a multitude of areas regarding GIs, providing clarity as to who is eligible to obtain GI registration, what documents should be submitted, and what to include in a product specification.
With regard to those who are eligible for the registration of a GI right, the new rules confirm that an association of persons that produces goods and/or extracts and/or processes raw materials for goods in the specified geographical location, the special quality, reputation or other characteristics of which are due to this geographical location, and individuals or legal entities in the cases established by the law, are able to register GIs with the Ukrainian National Office for Intellectual Property and Innovations ("UANIPIO").
For GI applications in relation to a name denoting a transboundary geographical location, the new rules clarify that such applications can be filed jointly by applicants from different states, either directly to the Ukrainian IPO, or through the IPO of the applicant’s relevant state.
The recently implemented Order also obliges applicants to file for GI protection with the application being submitted in the Ukrainian language, in either paper or electronic form, containing only one geographical indication per application.
Moreover, GI applications submitted to the Ukrainian IPO must contain a completed application for the registration of a GI, a "Holistic Document,", and the specification of goods approved by the relevant specially authorized body. Specifically, the Holistic Document is a specialized form which was established by the newly implemented rules and intended to include a summary of the subject matter of the GI which is to be registered.
The recently enacted rules in relation to Geographical Indications in Ukraine were adapted and implemented in line with EU regulations, resulting in the possibility of Ukrainian GIs being officially recognized and protected within the EU. This is a significant step towards the development and marketing of Ukrainian specialist products, allowing local producers the potential for breaking into new markets on a global scale.