New Zealand Update: Patent fees on the increase, but are they Excess-ively complex?

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Following our previous update in November (here), we now report on progress that has been made regarding upcoming changes to patent fees in New Zealand. While many of the fee changes likely to be introduced will be as originally proposed (and as we described earlier), there are some differences to be aware of.

In this article we discuss when these changes may come into force, and the differences between the earlier proposed fees and those approved by the New Zealand Government.

Estimated Date of Fee Changes

On 11 March 2019, the NZ Cabinet approved changes to the fees payable to the Intellectual Property Office of New Zealand (IPONZ) for the provision of patent services. The amendments to the Patents Regulations 2014 required to bring these increased fees into force are currently being drafted, and we expect these fee changes to apply from the third quarter of 2019.

Different Excess Claims Fees

As mentioned in our previous article, excess claims fees will be introduced in New Zealand. The excess claims fees originally proposed were NZ$200 for each 10 claims (or part thereof) over 30 which were payable when requesting substantive examination. However, the scheme approved by Cabinet is far more complex.

Once implemented, excess claims fees will be payable at acceptance for any application that contains more than 30 claims at any point during examination. The excess claims fees are then calculated on the largest number of claims that were pending during examination. The fees payable will be NZ$120 for a specification with 30 claims, and a further NZ$120 for each full set of 5 claims over 30 claims.

To make sense of this calculation scheme, consider the below illustrative Case Study, adapted from one provided by IPONZ:

Company C requests examination in September 2019 of an application with 29 claims. Following an Examination Report, amendments are filed to add 12 new claims, thereby increasing the claim number to 41. Objections are raised to the new claims, which are then removed and acceptance gained with 29 claims.

Under the new scheme, the excess claims fee payable in this case study would be NZ$360 (NZ$120 for claim 30 + NZ$120 for claims 31-35 + NZ$120 for claims 36-40, but no fees for claim 41), even though there were less than 30 pending claims before examination and at acceptance.

We expect that excess claims fees will only be payable on applications proceeding under the 2013 Act where the request for examination is made after the regulations are amended. Coupled with an increase in fees for requesting examination, from NZ$500 to NZ$750, it may be worth considering if examination of your filed NZ application should be requested sooner rather than later. Once the fee changes are implemented we recommend that you consider amending the claims to reduce claim numbers to under 30 at the time of requesting examination.

Renewal Fees for 1953 Act patents and applications

As previously reported, substantive increases to renewal fees were proposed for all patents and applications currently proceeding under the previous legislation (Patents Act 1953). The purpose of these changes was to dissuade the continued practice of filing divisional applications for these 1953 Act applications (as there is no 5-year deadline under the 1953 Act).

However, increases to renewal fees payable on 1953 Act applications and patents will not be introduced with these changes, as they would then apply to all 1953 Act cases, which may have unintended consequences. Cabinet has preferred to amend the transitional provisions of the current 2013 Act, meaning they will need approval from Parliament to make these changes. Such changes are likely be introduced in the long-awaited IP Omnibus Amendments Bill alongside other expected changes to provisions regarding divisional applications, to be introduced into Parliament at a later date.

Changes to renewal fees for patents and applications under the 2013 Act will still be introduced, with fees increasing to $200 for the 4th-9th years, $450 for the 10th-14th years, and $1000 for the 15th-19th years.

Summary

To avoid an increase in official fees, and the possible confusion around the calculation of excess claims fees, it may be prudent to request examination of filed New Zealand patent applications before the amendments to the Patent Regulations 2014 are implemented, likely to be around September 2019.

If you would like to discuss these changes further, please contact us.

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