New Zealand is introducing excess claims fees, and increasing other patent fees, from 13 February 2020. What can you do to save costs?
The Intellectual Property Office of New Zealand (IPONZ) is increasing the fees IPONZ charges for many patent services from 13 February 2020. Here we summarise the changes and when they will come into force. We also provide some practical suggestions for actions you should consider taking to save you, or your clients, money.
Excess claims fees
IPONZ is introducing an excess claims fee of NZ$120 (approximately US$75) for each 5th claim over 25 for examination of a patent application with 30 claims or more.1 The new fee will only be payable after the application is accepted, and is calculated based on the maximum number of claims contained concurrently in the specification at any time after examination of the application is requested. The fee will apply to any application for which a request for examination is made on or after 13 February 2020.
Maintenance and renewal fees
IPONZ is increasing all patent application maintenance and patent renewal fees due under the Patents Act 2013 (the 2013 Act). The maintenance fee due on the 4th and each subsequent anniversary, if paid by the anniversary date, will increase to NZ$200 (US$125), if the period for payment begins on or after 13 February 2020. The period for paying a maintenance or renewal fee commences three months before the anniversary date. The maintenance fee, if paid late in the six-month grace period, will increase to NZ$300 (US$190).
Patent renewal fees will similarly increase from 13 February 2020. The renewal fee due on each of the 4th to 8th anniversaries will increase to NZ$200 (US$125); the renewal fee due on each of the 10th to 14th anniversaries will increase to NZ$450 (US$285); and the renewal fee due on each of the 15th to 19th anniversaries will increase to NZ$1,000 (US$650). The fee for requesting an extension of up to six months to pay a renewal fee will also increase to NZ$100 (US$65).
Filing and examination request fees
The fee for filing a complete specification under the repealed Patents Act 1953 (the 1953 Act) is being increased to NZ$500 (US$315) from 13 February 2020. Although the 1953 Act has been replaced by the 2013 Act, it is still possible to file a divisional application (under the 1953 Act) from an application that is proceeding under the 1953 Act. The fee for filing a complete specification under the 2013 Act (NZ$250, approximately US$160) is not changing.
The fee for requesting examination of a patent application, or re-examination, is being increased to NZ$750 (US$475) from 13 February 2020.
IPONZ is increasing the fee for requesting leave to amend a complete specification after acceptance under the 2013 Act to NZ$500 (US$315) from 13 February 2020. IPONZ is also increasing the fee for applying to voluntarily amend a complete specification before acceptance under the 1953 Act to NZ$150 (US$95), and after acceptance to NZ$500 (US$315).
The fee for requesting restoration of a patent or patent application that has inadvertently lapsed will increase to NZ$600 (US$380) from 13 February 2020.
We recommend New Zealand applicants with complete specifications that will or are likely to contain 30 or more claims at any time after examination is requested in New Zealand, and who have not already requested examination, consider requesting examination before 13 February 2020 to avoid the new excess claims fees. Potential applicants should consider filing complete (non-provisional) patent applications in New Zealand earlier (before 13 February 2020). PCT applicants should also consider entering the national phase in New Zealand earlier. Similarly, all applicants who want to avoid the increase in the fee for requesting examination will need to request examination before 13 February 2020, without waiting for IPONZ to first issue a direction to request examination.
We also recommend existing New Zealand applicants consider whether it is appropriate to file any divisional applications (and request examination of those divisional applications) in advance of 13 February 2020.
When examination of a patent application is going to be requested on or after 13 February 2020, the applicant or its attorney should also consider if it is appropriate to reduce the number of claims before requesting examination. The total number of claims should then be monitored at each stage of the examination process up to the acceptance of the application.
 All fees in US dollars that are included in parentheses are approximate amounts. NZ$1.00 is currently about US$0.65 (as at 10 October 2019).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.