In brief 4 min read
On 13 February 2020, official patent fees will significantly increase in New Zealand, while certain trade mark fees are set to decrease. We outline the new fee structure and potential ways to save.
How does this affect you?
- If you have a patent or application in New Zealand, or are considering filing a patent application, significant savings on official fees may be possible if you act before 13 February 2020.
- If you have a trade mark or application in New Zealand, you may wish to consider delaying certain actions until after 13 February 2020 for moderate savings on official fees.
Background
As discussed in our previous article, the Intellectual Property Office of New Zealand (IPONZ) has overhauled its fee structure for patents and trade marks, while designs fees remain unaffected. The fee changes have now passed through Parliament and are set to take effect from 13 February 2020.
Patent owners will suffer the most, with some fees increasing by up to 500%.
Patent owners will suffer the most, with some fees increasing by up to 500%. On the other hand, trade mark owners will find some relief under the new regime, with moderate decreases across a range of services.
The fee changes and potential ways to save are summarised below. A complete overview of the fee changes, together with working examples, can be found here.
Patent fee changes
The patent fee changes are summarised in the table below. The key changes include:
- Increased examination fee;
- Introduction of excess claim fees; and
- Increased renewal fees.
Service |
Current fee (NZ$) |
New fee (NZ$) |
Effective date |
How to save |
Filing |
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| Filing a complete specification under the 1953 Act (ie divisionals having an effective filing date before 13 Sep 2014) | $250 | $500* | Applications filed on or after 13 Feb 2020 | File any divisionals of 1953 Act cases before 13 Feb 2020 |
Examination |
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| Request for examination | $500 | $750 | Requests filed on or after 13 Feb 2020 | File request before 13 Feb 2020 |
| Request for re-examination | ||||
Amendments |
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| Voluntary amendments filed after acceptance | $150 | $500 | Amendments filed on or after 13 Feb 2020 | File post-acceptance amendments before 13 Feb 2020 |
| Voluntary amendments filed before acceptance under the 1953 Act (ie amendments to specifications having an effective filing date before 13 Sep 2014) | $60 | $150* | Amendments filed on or after 13 Feb 2020 | File voluntary amendments to Old Act cases before 13 Feb 2020 |
Excess claims |
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| 30 claims or more (payable upon acceptance for each group of 5 claims over 25 based on the maximum number of claims at any stage during examination) | N/A | $120 | Examination requested on or after 13 Feb 2020 |
Request examination before 13 Feb 2020 |
Maintenance and renewals |
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| Application maintenance fee (due within 3 months before the anniversary) |
$100 | $200 | 3-month payment period begins on or after 13 Feb 2020 | Pay maintenance/ renewal fees (if possible) before 13 May 2020 |
| Late payment of maintenance fee (if paid within 6 months after the anniversary) |
$150 | $300 | 6-month late payment period begins on or after 13 May 2020 | |
| 4th – 9th year renewal fee (due within 3 months before the anniversary) |
$100 | $200 | 3-month payment period begins on or after 13 Feb 2020 | |
| 10th – 14th year renewal fee (due within 3 months before the anniversary) |
$200 | $450 | ||
| 15th – 19th year renewal fee (due within 3 months before the anniversary) |
$350 | $1000 | ||
| Late payment of renewal fee (if paid within 6 months after the anniversary) |
$50 | $100 | 6-month late payment period begins on or after 13 Feb 2020 | |
Restoration |
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| Request for restoration of an application/patent | $100 | $600 | Requests made on or after 13 Feb 2020 | Apply for restoration (if possible) before 13 Feb 2020** |
* These fees are being raised to match the current fees under the 2013 Act
** Noting that restoration must be requested as soon as possible after discovering that an application/patent has inadvertently lapsed/expired
Trade mark fee changes
The trade mark fee changes are summarised in the table below. The key changes include:
- Reduced application fees; and
- Reduced renewal fees.
Service |
Current fee (NZ$) |
New fee (NZ$) |
Effective date |
How to save |
Application |
||||
| Filing a new trade mark application (per class) | $150 | $100 | Applications filed on or after 13 Feb 2020 | Delay application (if possible) until after 13 Feb 2020 |
| Adding a class to an existing application (per class) | $150 | $100 | ||
Renewals |
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| Renewal (per class, payable every 10 years) | $350 | $200 | Requests made on or after 13 Feb 2020 | Delay renewal payment (if possible) until after 13 Feb 2020 |
IP Australia fee review
IP Australia is also conducting a fee review and received over 80 submissions during the initial public consultation period. Once the public submissions have been reviewed, a draft Cost Recovery Implementation Statement (CRIS) will be issued for further feedback. The draft CRIS is scheduled for December 2019 and we will keep you informed of any changes to the IP Australia fee structure as they arise.
Actions you can take now
- Where possible, consider taking action in relation to the patent services outlined above before 13 February 2020.
- Where possible, consider delaying action in relation to the trade mark services outlined above until on or after 13 February 2020.
- Get in touch with our Patent & Trade Mark Attorney team if you have any questions.