Intellectual Property Laws Amendment (Fee Amounts and Other Measures) Regulations 2020 (Cth)
I, General the Honourable David Hurley AC DSC (Retd), Governor-General of the Commonwealth of Australia, acting with the advice of the Federal Executive Council, make the following regulations.
Dated 06 August 2020
David Hurley
Governor-General
By His Excellency’s Command
Karen Andrews
Minister for Industry, Science and Technology
Contents
1............ Name............................................................................................................................. 1
2............ Commencement............................................................................................................ 1
3............ Authority....................................................................................................................... 1
4............ Schedules...................................................................................................................... 1
Part 1—Main amendments 2
Designs Regulations 2004 2
Olympic Insignia Protection Regulations 1993 3
Patents Regulations 1991 4
Plant Breeder’s Rights Regulations 1994 8
Trade Marks Regulations 1995 10Part 2—Amendments substituting references to Common Regulations with references to Madrid Regulations 16
Trade Marks Regulations 1995 16
This instrument is the
Intellectual Property Laws Amendment (Fee Amounts and Other Measures) Regulations 2020 .
(1) Each provision of this instrument specified in column 1 of the table commences, or is taken to have commenced, in accordance with column 2 of the table. Any other statement in column 2 has effect according to its terms.
The whole of this instrument | 1 October 2020. | 1 October 2020 |
Note: This table relates only to the provisions of this instrument as originally made. It will not be amended to deal with any later amendments of this instrument.
(2) Any information in column 3 of the table is not part of this instrument. Information may be inserted in this column, or information in it may be edited, in any published version of this instrument.
This instrument is made under the following:
(a) the
Designs Act 2003 ;(b) the
Olympic Insignia Protection Act 1987 ;(c) the
Patents Act 1990 ;(d) the
Plant Breeder’s Rights Act 1994 ;(e) the
Trade Marks Act 1995 .
Each instrument that is specified in a Schedule to this instrument is amended or repealed as set out in the applicable items in the Schedule concerned, and any other item in a Schedule to this instrument has effect according to its terms.
Insert:
expedited dispatch means a means of supplying documents that can reasonably be expected usually to be faster than ordinary post.
Insert:
(1) This regulation applies if a request for the supply of documents is filed as mentioned in item 13 or 14 of the table in clause 1 of Schedule 4.
(2) The Registrar must not supply the documents by means of expedited dispatch unless:
(a) a request that the supply be by means of expedited dispatch is filed; and
(b) the fee mentioned in item 15 of that table for filing the request for expedited dispatch is paid.
Repeal the item, substitute:
1 | Filing a design application:
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| $250 |
| $450 |
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| The sum of: (a) $250; and
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| The sum of: (a) $450; and
|
4
Clause 1 of Schedule 4 (table item 2, column headed “Fee ”) Omit “$350”, substitute “$450”.
5
Clause 1 of Schedule 4 (table item 5, column headed “Fee ”) Omit “$320”, substitute “$400”.
6
Clause 1 of Schedule 4 (table item 5, column headed “Fee ”) Omit “$370”, substitute “$450”.
Repeal the item.
8
Clause 1 of Schedule 4 (at the end of the table) Add:
15 | If a request for the supply of documents is filed as mentioned in item 13 or 14—filing a request that the supply be by means of expedited dispatch | $20 for each request for the supply of documents |
9
Regulation 2 (definition of Designs Regulations ) Repeal the definition.
Repeal the regulations, substitute:
For the purposes of the provision of the Act mentioned in column 1 of an item of the following table, the fee mentioned in column 2 of the item is prescribed:
1 | Paragraph 10(2)(b) (application to register design) | $450 |
2 | Paragraph 11(2)(b) (application for extension of protection period) | $450 |
For the purposes of section 12 of the Act, the prescribed times for the Register of Olympic Designs to be open to the inspection of the public are the times prescribed, from time to time, for the purposes of subsection 113(1) of the
Designs Act 2003 for the Register of Designs to be available for inspection.
Insert:
expedited dispatch means a means of supplying documents that can reasonably be expected usually to be faster than ordinary post.
Omit “rule 80.2 of the Regulations under the Patent Cooperation Treaty set out in Schedule 2A”, substitute, “Rule 80.2 of the PCT”.
Omit “rule”, substitute “Rule”.
Repeal the subregulation.
Omit “221,”.
Omit “or application”.
Insert:
(1) This regulation applies if a request is made for the supply of documents as mentioned in item 233 or 234 of the table in clause 2 of Schedule 7.
(2) The Commissioner must not supply the documents by means of expedited dispatch unless:
(b) a request is made that the supply be by means of expedited dispatch; and
(b) the fee mentioned in item 235 of that table for the request for expedited dispatch is paid.
Insert:
(1) The amendment of item 213 of the table in clause 2 of Schedule 7 made by the
Intellectual Property Laws Amendment (Fee Amounts and Other Measures) Regulations 2020 applies in relation to acceptance of a patent request and complete specification if the acceptance occurs on or after 1 October 2020.(2) The amendment of item 222A of the table in clause 2 of Schedule 7 made by the
Intellectual Property Laws Amendment (Fee Amounts and Other Measures) Regulations 2020 applies in relation to a grant of leave if the leave is requested on or after 1 October 2020.
19
Clause 1 of Schedule 7 (table item 104, column headed “Fee ($) ”) Omit “300”, substitute “350”.
20
Clause 1 of Schedule 7 (table item 105, column headed “Fee ($) ”) Omit “350”, substitute “400”.
21
Clause 1 of Schedule 7 (table item 106, column headed “Fee ($) ”) Omit “550”, substitute “600”.
22
Clause 1 of Schedule 7 (table item 107, column headed “Fee ($) ”) Omit “250”, substitute “300”.
23
Clause 1 of Schedule 7 (table item 108, column headed “Fee ($) ”) Omit “300”, substitute “350”.
24
Clause 1 of Schedule 7 (table item 109, column headed “Fee ($) ”) Omit “350”, substitute “400”.
25
Clause 1 of Schedule 7 (table item 110, column headed “Fee ($) ”) Omit “550”, substitute “600”.
26
Clause 1 of Schedule 7 (table item 111, column headed “Fee ($) ”) Omit “250”, substitute “300”.
27
Clause 2 of Schedule 7 (table item 202, column headed “Fee ”) Omit “$280”, substitute “$380”.
28
Clause 2 of Schedule 7 (table item 203, column headed “Fee ”) Omit “$470”, substitute “$570”.
Repeal the item, substitute:
211 | Continuation fee under paragraph 142(2)(d) of the Act, or renewal fee under paragraph 143(a) of the Act, for: |
(a) the fourth anniversary: | |
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(b) the fifth anniversary: | |
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(c) the sixth anniversary: | |
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(d) the seventh anniversary: | |
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(e) the eighth anniversary: | |
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(f) the ninth anniversary: | |
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(g) the tenth anniversary: | |
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(h) the 11th anniversary: | |
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(i) the 12th anniversary: | |
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(j) the 13th anniversary: | |
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(k) the 14th anniversary: | |
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(l) the 15th anniversary: | |
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(m) the 16th anniversary: | |
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(n) the 17th anniversary: | |
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(o) the 18th anniversary: | |
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(p) the 19th anniversary: | |
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and, in addition, if the fee is not paid on or before the anniversary but is paid within 6 months after the anniversary | $100 for each month, or part of a month, in the period between the anniversary and the day when the fee is paid |
Repeal the item, substitute:
213 | Acceptance of a patent request and complete specification under section 49 of the Act: |
| $250 |
| The sum of: (a) $250; and
(c) $250 for each claim in excess of 30 (if any) |
31
Clause 2 of Schedule 7 (table item 214A, column headed “Fee ”) Omit “$470”, substitute “$570”.
32
Clause 2 of Schedule 7 (table item 222A, column headed “Fee ”) Omit “$110”, substitute “$250”.
Insert:
235 | If a request is made for the supply of documents as mentioned in item 233 or 234—requesting that the supply be by means of expedited dispatch | $20 for each request for the supply of documents |
34
Clause 2 of Schedule 7 (table item 236A, column headed “Fee ”) Omit “$2,200”, substitute “$950”.
35
Clause 4 of Schedule 7 (table item 403, paragraph (a)) Repeal the paragraph.
Insert:
Insert:
expedited dispatch means a means of supplying copies or documents that can reasonably be expected usually to be faster than ordinary post.
Insert:
Insert:
Insert:
Repeal the regulation, substitute:
Schedule 1 has effect.
Note: Schedule 1 prescribes fees, as mentioned in subsection 80(2) of the Act.
(1) This regulation applies if a request is made for a copy, or for the supply of documents, as mentioned in item 8, 12 or 12A of the table in clause 1 of Schedule 1.
(2) The Registrar must not supply the copy or documents by means of expedited dispatch unless:
(a) a request is made that the copy or document be supplied by means of expedited dispatch; and
(b) the fee mentioned in item 13 of that table for the request for expedited dispatch is paid.
Omit “specified in”, substitute “prescribed by”.
Insert:
Omit “sets outs”, substitute “prescribes”.
45
Clause 1 of Schedule 1 (table items 1A and 1B, column headed “Fee ”) Omit “$50”, substitute “$240”.
46
Clause 1 of Schedule 1 (table item 4, column headed “Fee ”) Omit “$445”, substitute “$545”.
Insert:
13 | If a request is made for a copy, or for the supply of documents, as mentioned in item 8, 12 or 12A—on making a request that the copy or documents be supplied by means of expedited dispatch | $20 for each request for a copy, or for supply of documents |
48
Clause 1 of Schedule 1 (table item 15, column headed “Fee ”) Omit “$345”, substitute “$400”.
49
Clause 1 of Schedule 1 (table item 15, column headed “Fee”) Omit “$395”, substitute “$450”.
Insert:
expedited dispatch means a means of supplying documents that can reasonably be expected usually to be faster than ordinary post.
information system has the same meaning as in theElectronic Transactions Act 1999 .
Madrid Regulations has the meaning given by regulation 17A.2.
official goods and services pick list : goods or services are specified, in an application to register a trade mark in respect of the goods or services, by using theofficial goods and services pick list if:
(a) the application is filed by means of a digital information system that is:
(i) made available by IP Australia; and
(ii) a preferred means of filing the application; and
(b) the applicant specifies the goods or services in the application by selecting the goods or services from a pre-populated list of goods or services that is made available by the digital information system for that purpose.
Omit “for that Part”, substitute “by item 35 of the table in clause 1 of Schedule 9”.
52
Regulation 5.2 (definition of notice of intention to oppose ) Repeal the definition.
53
Regulation 5.2 (definition of notice of opposition ) Repeal the definition, substitute:
notice of opposition means a notice of opposition under section 52 of the Act.
Repeal the regulation, substitute:
(1) The components of a notice of opposition are:
(a) a notice of intention to oppose; and
(b) a statement of grounds and particulars.
(2) A notice of opposition is taken to be filed when both of its components have been filed.
Omit “the grounds mentioned in subregulation 5.18(1)”, substitute “any of the grounds mentioned in regulation 4.15A”.
56
Regulation 9.2 (definition of notice of intention to oppose ) Repeal the definition.
57
Regulation 9.2 (definition of notice of opposition ) Repeal the definition, substitute:
notice of opposition means a notice of opposition under section 96 of the Act.
Repeal the regulation, substitute:
(1) The components of a notice of opposition are:
(a) a notice of intention to oppose; and
(b) a statement of grounds and particulars.
(2) A notice of opposition is taken to be filed when both of its components have been filed.
59
Regulation 17A.2 (definition of Common Regulations ) Repeal the definition.
Insert:
Madrid Regulations means the Regulations under the Madrid Protocol, as the Regulations are in force for Australia on 1 October 2020.Note 1: The Regulations could in 2020 be viewed on the World Intellectual Property Organization website ( 2: For
Madrid Protocol , see regulation 2.1 of these Regulations.
Repeal the subregulations.
Insert:
The amendments of items 14 to 20 of the table in clause 1 of Schedule 9 to these Regulations made by the
Intellectual Property Laws Amendment (Fee Amounts and Other Measures) Regulations 2020 apply in relation to a hearing if:
(a) the request for the hearing is made on or after 1 October 2020; or
(b) if no request is made for the hearing—the Registrar notifies a person under subregulation 21.16(1) or (2) in relation to the hearing on or after 1 October 2020.
Repeal the items, substitute:
1 | Filing an application to register a trade mark under subsection 27(5) or 45(1) of the Act in respect of goods or services in one or more of the classes provided for by subregulation 3.1(1) (not including submission of an AFS request as an application as mentioned in paragraph 3A.5(1)(b) of these Regulations): |
(a) by preferred means: | |
| $250 for each class |
| $400 for each class |
(b) by another means | $450 for each class |
2 | Filing an application to register 2 or more trademarks, in respect of goods or services in one or more of the classes provided for by subregulation 3.1(1), as a series under section 51 of the Act: |
(a) by preferred means: | |
| $400 for each class |
| $550 for each class |
(b) by another means | $600 for each class |
64
Clause 1 of Schedule 9 (table item 4, column headed “Fee ”) Omit “$500”, substitute “$600”.
65
Clause 1 of Schedule 9 (table item 4, column headed “Fee ”) Omit “$350”, substitute “$450”.
Repeal the items, substitute:
7 | Filing a notice of intention to oppose the registration of a trademark, as mentioned in regulation 5.6 | $250 |
8 | Filing a notice of opposition to the granting of a request for the amendment of an application for registration of a trademark, as mentioned in regulation 6.6 | $250 |
9 | Filing a notice of opposition to the granting of a request for an amendment in relation to a registered trade mark, as mentioned in regulation 8.4 | $250 |
9A | Filing a notice of intention to oppose an extension of protection in Australia to a trade mark that is the subject of an IRDA, as mentioned in regulation 17A.33 | $250 |
9B | Filing a notice of opposition to an extension of time for more than 3 months, as mentioned in regulation 21.20B | $250 |
Repeal the items, substitute:
11 | Each potential renewal period requested by a person under section 80D of the Act in respect of goods or services in one or more of the prescribed classes: |
(a) fee paid by preferred means; | $400 for each class |
(b) fee paid by another means | $450 for each class |
12 | Each potential renewal period requested by a person under paragraph 80G(1)(b) of the Act in respect of goods and services in one or more of the prescribed classes: |
(a) fee paid by preferred means; | $400 for each class |
(b) fee paid by another means; | $450 for each class |
and, in addition, if the request for renewal is made within 10 months after the end of the prescribed period, regardless of the number of potential renewal periods requested | $100 for each month, or part of a month, after the end of the prescribed period |
Repeal the items, substitute:
14 | Filing a request for a hearing | $400 |
15 | Being heard by the Registrar: | |
(a) if the hearing is in person; | The sum of:
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| The sum of:
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| $400, less any amount paid under item 14 in relation to the hearing | |
16 | The Registrar making a decision in proceedings before the Registrar, if no party to the proceedings has: (a) filed a request for a hearing; or (b) been heard by the Registrar | $400 |
Insert:
23 | If a request is made for documents as mentioned in item 21 or 22—request that the documents be supplied by means of expedited dispatch | $20 for each request for documents |
70
Clause 1 of Schedule 9 (table item 28, column headed “Fee ”) Omit “$200”, substitute “$250”.
71
Clause 1 of Schedule 9 (table item 29, column headed “Fee ”) Omit “$350”, substitute “$400”.
72
Clause 1 of Schedule 9 (table item 30, column headed “Fee ”) Omit “$550”, substitute “$600”.
73
Clause 1 of Schedule 9 (table item 31, column headed “Fee ”) Omit “$250”, substitute “$300”.
Repeal the items, substitute:
32 | Submitting an AFS request under regulation 3A.3
| $200 for each class of goods or services to which the AFS request relates |
33 | Amending an AFS request under subregulation 3A.3(5) for the purpose of adding one or more classes of goods or services | $200 for each additional class |
34 | Amending an AFS request under regulation 3A.5: | |
| $200 for each additional class | |
| $150 for each class of goods or services to which the AFS request relates | |
(c) if the amendment is both:
| The sum of (a) $200 for each additional class; and
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35 | Submitting, as mentioned in paragraph 3A.5(1)(b), an AFS request as an application for registration of a trade mark in respect of goods or services in one or more of the classes provided for by subregulation 3.1(1) | $130 for each class |
75
Clause 1 of Schedule 9 (table item 36, column headed “Fee ”) Omit “$300”, substitute “$350”.
76
Clause 1 of Schedule 9 (table item 37, column headed “Fee ”) Omit “$350”, substitute “$400”.
77
Clause 1 of Schedule 9 (table item 38, column headed “Fee ”) Omit “$550”, substitute “$600”.
78
Clause 1 of Schedule 9 (table item 39, column headed “Fee ”) Omit “$250”, substitute “$300”.
79
Amendments of listed provisions—Madrid Regulations
1 | Regulation 17A.2 (definition of | Common Regulations | Madrid Regulations |
2 | Subregulation 17A.6(3) | Common Regulations | Madrid Regulations |
3 | Subregulation 17A.8(2) (note) | Common Regulations | Madrid Regulations |
4 | Regulation 17A.14A (note) | Common Regulations | Madrid Regulations |
5 | Subregulation 17A.15(2) (note) | Common Regulations | Madrid Regulations |
6 | Subregulation 17A.16(1) | Common Regulations | Madrid Regulations |
7 | Paragraph 17A.25(2)(a) | Common Regulations | Madrid Regulations |
8 | Subregulation 17A.32(2) | Common Regulations | Madrid Regulations |
9 | Subregulations 17A.35B(2) and (3) | Common Regulations | Madrid Regulations |
10 | Paragraph 17A.35B(5)(b) | Common Regulations | Madrid Regulations |
11 | Subregulations 17A.41A(2) and (3) | Common Regulations | Madrid Regulations |
12 | Paragraph 17A.41A(5)(b) | Common Regulations | Madrid Regulations |
13 | Paragraph 17A.50(3)(c) | Common Regulations | Madrid Regulations |
14 | Paragraph 17A.54(5)(b) | Common Regulations | Madrid Regulations |
15 | Regulation 17A.57 | Common Regulations | Madrid Regulations |
16 | Subregulation 17A.58(1) | Common Regulations | Madrid Regulations |
17 | Subregulation 17A.58A(1) | Common Regulations | Madrid Regulations |
18 | Paragraph 17A.59(1)(a) | Common Regulations | Madrid Regulations |
19 | Paragraphs 17A.66(2)(e) and (3)(f) | Common Regulations | Madrid Regulations |
20 | Subregulation 17A.69(3) | Common Regulations (wherever occurring) | Madrid Regulations |
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