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New Zealand increases patent fees

Date: 01 October 2019
Author: Paul Whenman, David Herman
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IPONZ increases official fees for patent applicants

The Intellectual Property Office of New Zealand (IPONZ) will increase many patent-related official fees payable on or after 13 February 2020. While some of the fee changes are significant, the increase appears consistent with many of the fees charged in other jurisdictions. We summarise IPONZ’s increase in patent-related fees below:

Excess claim fees

Excess claims fees will now be payable for applications proceeding under the Patents Act 2013 (the “new Act”) where a request for examination is made on or after 13 February 2020 and contains 30 claims or more at any point from the time of requesting examination to acceptance (allowance).

Calculation of the fee will be based on the largest number of claims that were pending during examination, where a specification with 30 claims will incur NZ$120, and each fifth claim thereafter will incur an additional NZ$120. For example, if an application accepted for grant included 56 claims at the time of requesting examination, an excess claim fee of NZ$720 (6 x $120) will be payable before the patent is granted.

The determination of the excess claim fee payable will be made after acceptance of an application. Payment of the fee must be made before a patent is granted. The fee is not payable if an application is not accepted or granted. Finally, excess claim fees will not apply to applications accepted under the Patents Act 1953 (the “old Act”).

Examination request fees

In addition to the excess claim fees, the cost for requesting examination of new Act applications on or after 13 February 2020 will increase from NZ$500 to NZ$750.

Along with the increased examination fee, we remind applicants that under the new Act, any New Zealand application (e.g. national phase entry or divisional application) must be filed and have examination requested within five years from the complete/PCT filing date. We have recently summarised other proposed changes to New Zealand’s divisional patent practice here.

Maintenance and renewal fees

Annuity fees will also significantly increase for applications filed and granted under the new Act that have their next renewal or maintenance fee payment period commencing on or after 13 February 2020. A summary of the increased annuity fees is provided in the table below.

As the renewal and maintenance period begins three months before the filing anniversary, the increased annuity fees will only be imposed on patents and applications having a filing anniversary from 13 May 2020. If requesting to pay a renewal fee in the extended period (i.e. within 6 months after the filing anniversary), the increased penalty fee will apply to any late payment requests made on or after 13 February 2020. Importantly, increases to renewal fees payable on old Act applications and patents will not be introduced.

Other fee increases

Other fee increases will apply on or after 13 February 2020 for re-examination and restoration requests, the filing of old Act applications, and amendments.

A complete overview of the increased fees can be found here, and are summarised in the following table.

Tips to reduce fees

As noted above, requests for examination will increase 50% from 13 February 2020. We recommend applicants file and/or request examination for any application in advance of this date to attract the lower current examination fee as well as avoid the excess claim fees.

For applicants who request examination on or after 13 February 2020, while the increased examination fee will be charged, a suitable preliminary amendment reducing the number of claims at the time of requesting examination will be appropriate as a means to reduce or eliminate the excess claim fees.

Whilst the imposition of excess claim fees is consistent with the practices of many jurisdictions, we are pleased to see that New Zealand practice continues to permit, without additional charge, multiply dependent claims as well as multiple independent claims covering alternative claim categories. It follows that in some cases, multiply dependent claims may be incorporated into a preliminary amendment to achieve a reduction in claim numbers.

Conclusion

All applicants are globally exposed to official fee increases as IP offices seek to ensure their costs are being recovered. Here we note that whilst some fee increases represent significant percentage increases, in global terms, these new New Zealand official fees are in line with those of other IP offices. Since applicants are being notified well in advance of the above increases, there is ample time available should applicants wish to avail themselves of the present lower fee structure.

If you have any questions regarding the increase in patent-related fees in New Zealand, please contact FB Rice.

Tags:  IPONZ, New Zealand, NZ, patent fees, patents

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