INSIGHT

Significant fee changes for patents and trade marks are coming in New Zealand

Industrials Intellectual Property Patents & Trade Marks

In brief

On 2 April 2019, the Intellectual Property Office of New Zealand (IPONZ) announced a number of patent and trade mark fee changes that will take effect later in 2019. The changes will result in a significant increase in official fees throughout the lifecycle of a patent, and moderate fee reductions for trade marks. Associate Cici Cui outlines the upcoming IPONZ fee changes.

Background

IPONZ proposed the current fee changes as a result of a routine fee review, the purpose of which was to balance the revenue of patent and trade mark services. According to IPONZ, the costs of providing patent services continue to exceed its revenue, and the trade mark revenue continues to exceed its costs.

The fee changes were approved on 11 March 2019. This is bad news for patent owners and good news for trade mark owners. A complete overview of the changes can be found here.

The bad news for patents

The fee increases under the Patents Act 2013 are summarised below, ranging from 50 per cent to a staggering 500 per cent.

Services under Patents Act 2013
Current fee (NZ$)
New fee (NZ$)
Application maintenance fee if paid within 3 months of anniversary $100 $200
Application maintenance fee if paid within 9 months of anniversary $150 $300
Request for examination $500 $750
Re-examination $500 $750
Request for leave to amend after acceptance $150 $500
Request for restoration of patent or patent application $100 $600
4th-9th year renewal $100 $200
10th - 14th year renewal $200 $450
15th - 19th year renewal $350 $1,000
Late payment penalty $50 $100

In addition, new excess claims fees have been introduced. These fees will be calculated at acceptance (allowance) of a patent application on the basis of the maximum number of claims 'at any point' during the examination process. The excess claims fees will be a flat fee of NZ$120 for the first 30 claims, and an additional NZ$120 for each group of 5 claims in excess of 30.

Services under the Patents Act 1953 will also see a number of significant fee increases. Most relevantly, it will be much more expensive to amend a complete specification, whether before or after acceptance. The amendment fee is currently NZ$60, but will be increased to NZ$150 for amending a complete specification before acceptance, and NZ$500 for post-acceptance (including post-grant) amendments.

The good news for trade marks

The news is not all bad, with trade mark owners receiving a number of fee reductions:

Changes to trade mark fees
Current fee (NZ$)
New fee (NZ$)
Application – not based on pre-application advice and not using the pick-list of pre-approved terms (per class) $150 $100
Application – based on pre-application advice (per class) $150 $50
Application – using picklist of pre-approved classification terms (per class) $150 $70
Application – based on pre-application advice and using picklist of pre-approved classification terms (per class) $150 $50
Renewal (per class, every 10 years) $350 $200
Search and preliminary advice $40 each $50 combined

What's next

Following approval by the NZ Government, the changes are expected to take effect in the third quarter of 2019. We will provide an update on the date the new fees will come into force and any recommended actions for patent and trade mark rights holders once the date has been confirmed.