New Zealand Update: Time to Examine Your Potential Patent Fees

Following our previous updates in November 2018 and April 2019, we now have certainty regarding patent fee increases in New Zealand. 

Cabinet and the Executive Council of the New Zealand Government have recently announced that fees for some patent services will increase as of 13 February 2020.

In this article, we outline what changes are being introduced to patent fees, and urge all New Zealand applicants to consider their positions before these changes come into force.

Excess Claims Fees Are Here

The most significant change is the introduction of excess claims fees, which will be payable after acceptance (i.e., allowance) for any application that has had at least 25 claims pending at any time during prosecution. 

The fee payable will be NZ$120 for each 5^th claim over 25, based on the largest number of claims pending at any time during examination.

The scheme as to how these excess claims fees will be calculated has been somewhat simplified compared to the original proposal (as previously discussed) although not substantially altered. As the calculation is based on the largest number of claims pending at any time between requesting examination and acceptance, the total claim number throughout the examination process should be closely monitored.  Similarly, for PCT applications with more than 25 claims, some consideration for amending before requesting examination may be needed.

The cost of requesting examination in New Zealand on or after 13 February 2020 will also significantly increase from NZ$500 to NZ$750.

Recommendations

Excess claims fees and increased examination costs will only be payable for applications where the request for examination is made on or after 13 February 2020. Therefore, to avoid these additional costs, we suggest current New Zealand applicants should review their applications and consider requesting examination before 13 February 2020.  If requesting examination after this date, you may wish to consider reducing the number of claims before proceeding. 

If you are in any doubt, please contact us to discuss your options.

Annuity Fees

Patent renewal fees and application maintenance fees are also set for a substantial increase, with the proposed changes reported previously being accepted by the Government in full. 

For all patents and applications that have their next renewal payment period commencing on or after 13 February 2020, the renewal fees payable will be $200 for the 4^th-9^th years (up from $100), $450 for the 10^th-14^th years (up from $200), and $1,000 for the 15^th-19^th years (up from $350). Notably, the renewal period begins three months before the filing anniversary, so will only begin to affect patents and applications with a filing anniversary from 13 May 2020.