The official fees (note fees below are shown exclusive of GST) charged by the Intellectual Property Office of New Zealand (IPONZ) are revised from time to time, with changes made following a ‘cost recovery’ model.
New official fees come into force on 13 February 2020, and there is good news for trade mark owners, but a range of increases and a new excess claim fee for patent owners.
The key fee changes for trade mark owners are as follows:
- Trade mark application fees will be reduced from NZ$150 to NZ$100 per class; and
- Trade mark renewal fees will be reduced from NZ$350 to NZ$200 per class.
Reduced fees for trade mark applications apply to applications (including adding a class to an existing application) filed on or after 13 February 2020. For renewals, the reduced fee applies when the renewal fee payment is made on or after 13 February 2020.
Other fees relating to trade mark oppositions, revocations, and invalidity proceedings before IPONZ remain unchanged.
There are only increases to patent fees and the introduction of a new fee. The changes will affect applications that are still pending under the previous Patents Act 1953 (which are essentially all divisional applications), as well as applications and patents under the current Patents Act 2013.
For 1953 Act applications fees will increase as follows:
- Filing a complete specification will increase from NZ$250 to NZ$500;
- Voluntary amendments before acceptance will increase from NZ$60 to NZ$150;.and
- Amendments of a specification after acceptance will increase from NZ$60 to NZ$500.
The above fees apply from 13 February 2020. The change to the fee for voluntary amendments before acceptance brings applications under the 1953 Act into line with those under the Patents Act 2013. For amendments after acceptance, the fee under the 2013 Act is also increasing to NZ$500.
The following fee increases apply for applications and patents under the 2013 Act:
- Request for examination or re-examination of an application will increase from NZ$500 to NZ$750;
- Amendments of a specification after acceptance will increase from NZ$150 to NZ$500;
- Maintenance fees for pending applications (payable annually from the 4th anniversary of the filing date) will increase from NZ$100 to NZ$200;
- Patent renewal fees (4th to 9th year) will increase from NZ$100 to NZ$200;
- Patent renewal fees (10 to 14th year) will increase from NZ$200 to NZ$450;
- Patent renewal fees (15th to 19th year) will increase from NZ$350 to NZ$1000;
- The fee for maintenance or renewal payments made within six months after the due date increases from NZ$50 to NZ$100; and
- The fee to request to restore a patent will increase from NZ$100 to NZ$600.
A new excess claim fee is also being introduced. The excess claim fee applies where an application is accepted, and at any time between the request for examination being filed and acceptance, the specification has contained 30 claims or more. That is, the excess claim fee is not calculated from the number of claims present when examination is requested, or at acceptance, but by whether there have been 30 or more claims in the specification at any time between the request for examination being made and acceptance.
The excess claim fee is NZ$120 for each 5th claim over 25 claims. This means that if there are 30 to 34 claims present at any time after examination is requested and before acceptance, the fee will be NZ$120. For 35 to 39 claims, the fee will be NZ$240, and so on. The fee will be due after acceptance and grant may be postponed by the Commissioner until the excess claim fee is paid. Excess claim fees are not required if the application is withdrawn or is abandoned (e.g. through non-response to an examination report). The new excess claim fee will not be retrospective in effect and will only apply to applications where a request for examination is made on or after 13 February 2020.
The increased fees for requesting examination or re-examination, amendments after acceptance, and restoration apply for requests made on or after 13 February 2020.
Patent maintenance and renewal fees have a payment period that starts three months before the due date and ends on that day. The increased fees will apply if the three month payment period begins on or after 13 February 2020. If the three month payment period begins before this date, the old fee for maintenance or renewal will apply even if payment is made after the new fees take effect. Maintenance fees have a second payment window that runs for six months from the day after the due date. This will also be the old fee if the initial payment window begins before 13 February 2020. The increased fee for late payment of renewal fee will apply to requests for an extension of time for paying a renewal fee that are made on or after 13 February 2020.
Please contact us if you have any questions or would like more information.