The Intellectual Property Office of New Zealand (IPONZ) is set to change its official fees. The new fees will be effective from 13 February 2020.
Recently introduced changes to the New Zealand Patent Regulations (New Zealand Patents Amendment Regulations 2019) result in an increase in the cost, in some cases dramatically, of examination, maintenance, renewal, amendment and administration of patents filed under both the Patents Act 1953 (the Old Act) and Patents Act 2013 (the New Act).
Introduction of excess claim fees
The most notable change is the introduction of excess claim fees. These will apply to all New Zealand patent applications for which examination is requested on or after 13 February 2020. This brings New Zealand closer into line with similar practices in other major jurisdictions.
The new excess claim fees fall due at acceptance and are calculated against the maximum number of claims, if the number of claims is above 30 at any point during examination. The excess claim fee is payable for every group of five claims over the 25th claim. Therefore, careful consideration should be given with respect to the total number of claims both at the time of requesting examination and during examination, including claim amendments in response to Office Actions, to either minimize or avoid excess claim fees.
Old Act cases
Some fees that apply to applications made under the Old Act have increased significantly. Notably, the filing fee for a divisional application made under the Old Act has doubled. In other words, the filing of an Old Act divisional application will cost twice as much as filing an application under the New Act. IPONZ has expressed concerns regarding ongoing “daisy chain” applications under the Old Act and the ongoing requirement for Examiners to examine under both acts. Presumably, the additional cost is to account for the additional effort involved by IPONZ in maintaining the dwindling numbers of applications under the Old Act.
In addition, any request to amend these applications (both before and after acceptance) has increased in cost, to bring the fees into line with amendment fees for applications filed under the New Act.
Requesting examination
The fee for requesting examination has increased significantly. The new fee applies to any application (both Old Act and New Act) where examination is requested on or after 13 February 2020.
Renewal and maintenance fees
Perhaps the most significant fee increase is the doubling of renewal fees for granted patents. In New Zealand, the payment period for renewal of both patent applications and granted patents commences three months prior to the actual due date. The new fees will apply when the payment period commences on or after 13 February 2020. Lower fees will continue to apply for any patent for which the payment period commences before this date – even if paid after 13 February 2020. However, the increased new fee (together with a late fee) applies if not paid by the due date. We therefore strongly recommend that any renewal fees that are due before 13 May 2020 are paid on time.
What action can be taken now?
There are several actions that can be taken prior to 13 February 2020, to reduce the impact of the immediate effects of the IPONZ fee increases:
Divisional applications under the 1953 Act
If you are an applicant with a pending application under the Old Act and you intend to file a divisional, consider filing before 13 February 2020. This will result in a saving of half the post 13 February 2020 fee.
Renewals
The fees for annuities are to be calculated 3 months before the annuity falls due, however unfortunately cannot be paid prior to this date. The annuities that fall due on or before 13 May 2020, if paid before this date will be calculated against the pre-13 February 2020 fee increase. Given the somewhat extreme increase in those fees, we strongly recommend paying those fees on time (i.e. prior to 13 May 2020).
Excess Claim Fees
The new excess claim fee is payable between acceptance and grant, and is based on the maximum number of claims of 30 or more at any point during examination. The excess claim fee applies to those applications where the request for examination is made after 13 February 2020. Accordingly, if action is taken to request examination before 13 February 2020 for applications with excess claims, this fee can be avoided. Alternatively, we recommend reviewing the number of claims before requesting examination in New Zealand after 13 February 2020.
Early request for examination
The increase in the examination request fee can be mitigated by requesting examination before the fee increases take effect on 13 February 2020.
Summary of changes to IPONZ Patent Fees from 13 February 2020
| Fee | Percentage increase | Current Fee (NZ$) | From 13 Feb 2020 (NZ$) |
|---|---|---|---|
| Filing and requesting examination | |||
| Filing complete specification under the 1953 Act (a divisional application with a date before 13 September 2014). | 100% | 250 | 500 |
| Request for examination or re-examination | 50% | 500 | 750 |
| Amendments | |||
| Application to amend complete specification before acceptance under the 1953 Act | 125% | 60 | 150 |
| Application to amend complete specification after acceptance under the 1953 Act | 733% | 60 | 500 |
| Request for leave to amend complete specification after acceptance under the 2013 Act | 233% | 150 | 500 |
| Maintenance and renewals | |||
| Annuities for due between the 4th to 9th year for the renewal of granted patent | 100% | 100 | 200 |
| Annuities due between 10th to 14th year for the renewal of granted patent | 125% | 200 | 450 |
| Annuities due between 15th to 19th year for the renewal of granted patent | 186% | 350 | 1000 |
| Late Renewal Fee | 100% | 50 | 100 |
| Maintenance fee due on the 4th and each subsequent year for patent applications, if paid before due date | 100% | 100 | 200 |
| Maintenance fee due on the 4th and each subsequent year for patent applications (if paid within 6 months after due date) | 100% | 150 | 300 |
| Excess claims | |||
| Excess claims fee for more than 30 claims, calculated as follows – each group of 5 claims over 25 based on the maximum number of claims at any time during examination (if exam request is made after 13 February 2020). | N/A | None | 120 |
| Restoration | |||
| Request for restoration of a patent application or patent | 500% | 100 | 600 |
Please refer to Patents Amendment Regulations 2019 [2019/220] for more information.
This article was written by Daniel Ash and Sarah Couper.
If you have any specific enquiries about this article, please contact Paul Jones or Debra Tulloch.
Jones Tulloch’s articles are provided as general information only, current at the date of publication. They do not constitute professional (patent and trade mark attorney) advice and should not be relied upon as such. If you need specific professional advice, for example in relation to a matter of interest arising from this communication, please contact us.