On 13 February 2020, the Intellectual Property Office of New Zealand (IPONZ) will increase its fees in relation to patents, with a full list of the changes found here. Further, IPONZ will introduce some altogether new fees. The reasoning for these changes to fees is said to be “to reduce IPONZ’s memorandum account, rebalance patent and trade mark revenues, and improve the efficiency of the patent and trade mark regimes.”
An overview of the changes and possible strategies to avoid paying the higher fees are set forth below.
The patent fee changes
An overview of the more pertinent fee increases/additions are as follows:
- Application filing fee is to increase from NZ$250 to NZ$500.
- Request for examination fee is to increase from NZ$500 to NZ$750.
- A new ‘excess claims’ fee is introduced, payable after an application is accepted (allowed). This fee will be NZ$120 for each 5th claim over 25 claims. In other words, for every five claims over 25 there will be an additional NZ$120 payable (e.g. 30 to 34 claims the fee will be NZ$120, 35 to 39 claims the fee will be NZ$240, 40 to 44 claims the fee will be NZ$360, 45 to 49 claims the fee will be NZ$480, and so on). Importantly, this fee is based on the maximum claim count during examination. An example scenario is set out as follows:
o Examination was requested with 29 claims;
o Prior to receiving an Examination Report, a further 5 claims were added and the 34 claims are all examined;
o In response to an Examination Report, 5 claims were then cancelled, and the application is accepted with 29 claims;
o The acceptance fee payable is calculated based on the maximum number of claims at any point during examination, that being 34, so an excess claim fee of NZ$120 would be payable after acceptance.
- The fee to accompany voluntary amendments before acceptance is to increase from NZ$60 to NZ$150.
- The fee to accompany voluntary amendments after acceptance is to increase from NZ$150 to NZ$500.
- Renewal fees are to increase (based not on the due date but on the commencement of the payment period which is three months prior to the due date being on or after 13 February 2020) as follows:
o Renewal fees due on 4th to 9th anniversary are to increase from NZ$100 to NZ$200.
o Renewal fees due on 10th to 14th anniversary are to increase from NZ$200 to NZ$450.
o Renewal fees due on 15th to 19th anniversary are to increase from NZ$350 to NZ$1,000.
o Late renewal fee payments (payable up to six months after the due date) will increase from NZ$50 to NZ$100 per month.
How to avoid paying the increased fees
As noted above, these fees come into effect on 13 February 2020. Therefore, if actions are taken on a patent application prior to this deadline, the present lower fees will be payable. In the case of the excess claim fee due at acceptance, this will only be applicable where examination is requested on or after 13 February 2020.
As such, New Zealand patent applicants with applications that are likely to yield significant excess claim fees may wish to consider requesting examination prior to 13 February 2020 to avoid those fees.
Given the increase of the examination fee, more cost-conscious applicants may wish to request examination earlier.
Further, applicants with pending PCT applications and/or have a desire to seek patent protection in New Zealand may be interested in entering national phase/filing their application and requesting examination early, before 13 February 2020.
Getting on the front foot and filing early could also be beneficial in maximising the prosecution time in order to make an informed decision on whether to file New Zealand divisional applications, noting that such divisional application must be filed and have examination requested within 5 years of the filing date of the original parent application (which in many cases is the PCT filing date).
If you have any questions regarding strategies for saving costs and/or wish to discuss how the above actions could be applicable to your own patent portfolio, please contact us and we would be more than happy to discuss this with you.
By Nicholas Lakatos