NEW ZEALAND INTELLECTUAL PROPERTY OFFICE FEE CHANGES

• In Designs IP Gateway Patents Trade Marks
• 14 November 2019

NEW ZEALAND INTELLECTUAL PROPERTY OFFICE FEE CHANGES

From 13 February 2020 the New Zealand Intellectual Property Office (IPONZ) will make significant changes to official fees for Patents and Trademarks.  These changes are summarised below.

Patent Fees

Patent Examination Fees

The official fee for requesting examination will increase by 50% from $500 to $750.  The fee will apply to requests for examination or for re-examination of a granted patent made on or after 13 February 2020.

Accordingly, if New Zealand patent applicants wish to avoid payment of the increased fee, examination should be requested before 13 February 2020.

Excess Claim Fees

Currently, there are no excess claim fees payable in New Zealand.  Excess claim fees have now been introduced for patent applications with 30 claims or more.

The new fees will apply for pending patent applications for which a request for examination is made on or after 13 February 2020.

The new fee will be $120 for each 5^th claim over 25.  The claim number will be calculated based upon the maximum number of claims that were contained in the application at any time during the examination process.  The fee will be due on acceptance and must be paid before the patent is granted.

This may be compared to the practice of the Australian Patent Office whereby excess claim fees are calculated based upon the number of claims present upon acceptance.  Australian applicants therefore have the advantage of having the benefit of an examiner’s search and report prior to considering consolidation of the claim number.

For patent applications with large claim sets, requesting examination before 13 February 2020 will provide a further cost benefit.

In order to avoid excess claim fees for applications where examination is requested after 13 February 2020 the application will need to be amended to reduce the claim number at the time of requesting examination.   Applicants may have the benefit of prior opinion from foreign patent offices at this time.

It should be noted that multiply dependent claims are allowable under New Zealand practice and will be counted as a single claim for fee purposes.  Careful drafting of multiply dependent claims may therefore allow the overall claim number to be reduced without significant sacrifice of claim scope.

Amendment Fees

The fee for requesting leave to amend a complete specification after acceptance will increase significantly from $150 to $500.

It is our standard practice to request postponement of acceptance when requesting examination to avoid an application proceeding straight through to acceptance without giving the applicant an opportunity to conduct a final review of the specification and claims before taking acceptance. 

Maintenance, Renewal and Restoration Fees

Maintenance and renewal fees are payable annually from the 4^th anniversary of the effective filing date.

The fee changes are summarised below.

Under the New Zealand Patents Act 2013, renewal fees cannot be paid earlier then three months before the due date.  The increased fee will apply when the payment period begins on or after the due date.

In summary, it is not possible to avoid the increased renewal fees by early payment.

Finally, the fee for requesting restoration of patent through failure to pay a renewal fee within the grace period will also increase significantly from $100 to $600. 

Trademark Fees

However, it is good news for Trademark owners as Trademark renewal fees will decrease from 13 February 2020 from $350 to $200 (per class).

Trademark application fees will also decrease from $150 to $100 (per class) for applications filed on or after 13 February 2020.

Further reductions will be made available where search and preliminary advice was made within 3 months of the application being made and/or the specification of goods or services consist only of pre-approved descriptions.  This change would appear to be relevant only to self-filing applicants.