The New Zealand Patents Act 2013 (the New Act) received Royal Assent on Friday 13th of September 2013. The New Act will commence fully on 13 September 2014. The Intellectual Property Office of New Zealand (IPONZ) has issued proposals for regulations to be made under the New Act in a discussion document. This discussion document has undergone a period of public consultation, and we now await release of the final Regulations. This is not expected to occur until August 2014.
This article looks at the proposed fees (in NZ$) for applications that will be processed under the New Act and how this might affect upcoming patent application filing strategies.
Summary
The proposed change in fee structure will add increased costs for patent applicants filing and processing new applications in New Zealand after 12 September 2014. Based on the proposal, the official lodgement fees (including examination) of a patent application could increase three-fold, with renewal fees for the life of a patent almost being doubled.
- The increase in official lodgement fees can largely be offset where this firm is instructed to handle both the Australian and New Zealand corresponding cases.
- Applicants may wish to consider filing any available complete applications and national phase entry applications in New Zealand prior to 13 September 2014 in order to not only avoid the more stringent patentability requirements of the New Act but also to avoid the new fee structure.
Application and Examination Fees
It has been proposed that application fees for filing complete applications, whether directly or via national phase entry, will be maintained at $250. Although a separate examination fee is not required under the current 1953 Act, under the New Act a new examination fee of $500 is being proposed by IPONZ.
Renewal Fees
Renewal fees under the current 1953 Act are staged at the 4th ($170), 7th ($340), 10th ($540) and 13th ($1,000) years after grant of a patent. Under the New Act, it is proposed that annual maintenance or renewal fees similar to that applied under the Australian Patents Act 1990 is introduced. This will require maintenance fees to be paid from the 4th year after filing, regardless of whether the application is granted, and subsequent fees to be paid every year the application/patent remains active.
These proposed fees are $100 for years 4 through to 9, $200 for years 10 through to 14 and $350 for years 15 through to 20.
Fees for filing voluntary amendments and amendments after acceptance
As part of the current 1953 Act, a fee of $60 is charged if an amendment is considered a voluntary amendment. It is proposed that this fee is increased to $150. IPONZ also proposes that the same amount is charged if an applicant files a request to amend a specification after acceptance.
Hearing, Revocation and Opposition Fees
IPONZ proposes that Hearing, Revocation and Opposition fees are brought into line with fees introduced in 2012 for similar processes under the Trade Marks Regulations 2003. These fees include $850 for requesting a Hearing, $350 for filing a Notice of Opposition and $350 for filing a Revocation request.
Exclusions
It is understood that the new proposed fee structure will not apply to any divisional applications that have a parent application being processed under the existing 1953 Act.