IPONZ fee changes coming for Patents and Trade marks
Tuesday 25th June 2019
Article written by: Rachel McIvor
After a review of its fees late last year, IPONZ has now confirmed changes will be introduced for both trade mark and patent fees. While it is mostly good news for trade marks with fee reductions, changes to the patent fees include some substantial fee increases and the addition of a new excess claims fee.
A number of existing patent fees are going to increase. This includes increases to fees for maintenance, renewal, requesting examination, requesting re-examination, and for late payment. The largest increases are to the fees for amendments after acceptance (from NZD 150 to NZD 500) and for restoration (a 500% increase from NZD 100 to NZD 600). For patents under the Patents Act 1953 there will be an increase in the fee for filing a complete specification (from NZD 250 to NZD 500) and for amending the specification before (from NZD 60 to NZD 150) and after (from NZD 60 to NZD 500) acceptance, so the amendment fees will be the same as under the Patents Act 2013.
Most notably, IPONZ proposes introducing a new excess claims fee for applications that contain 30 or more claims at any time during examination. This fee will be NZD 120 for a specification with 30 claims, with an additional fee of NZD 120 for each 5 claims over the 30 claim threshold. Although this fee is calculated at acceptance, the total cost is to be determined based on the maximum number of claims that the patent specification contained during examination (i.e. any time between requesting examination and acceptance). For example, if a patent application contained 46 claims when first examined, and was amended before acceptance to reduce the claims to 37, the fee payable would be NZD 480 made up of one NZD 120 fee (first 30 claims) and three additional fees of NZD 120 for the 16 extra claims. This fee will need to be paid before the patent is granted.
Once the fee changes are implemented it will be important to consider the number of claims present in the application when requesting examination and throughout the entire examination process. The most cost effective approach will be to amend the claims before (or at the time of) requesting examination so there are 30 claims or fewer once examination begins.
Trade mark fees
Trade mark application fees will decrease. The fee for an application to register a trade mark will decrease from NZD 150 to NZD 100 and the fee for renewal of registration of a trade mark (per class, every 10 years) will decrease from NZD 350 to NZD 200. IPONZ will also introduce further fee reductions for applications which use a pre-approved list of goods and services (from NZD 150 to either NZD 50 or NZD 70).
Expected implementation date
Amendments to the Patents Regulations 2014, Patents Regulations 1954, and Trade Marks Regulations 2003 are currently being drafted, with IPONZ expecting the fee changes to be implemented in the third quarter of 2019.
Fee changes coming for IP Australia?
On a related note IP Australia are currently undertaking a fee review in 2019-2020. The review is in its early stages having just completed the public consultation period. We will likely get an indication of potential fee changes in December, as this is when IP Australia estimates that a draft Cost Recovery Implementation Statement (CRIS) will be made available to the public for further feedback.