IPONZ - Proposed Changes to Patent and Trade Mark Fee Schedu

IPONZ - CHANGES TO PATENT AND TRADE MARK FEES

The Intellectual Property Office of New Zealand (IPONZ) is set to significantly increase their patent fees and in contrast, make streamlining reductions to their Trade Mark Application fees.

Over the past 18 months, IPONZ has conducted a review of their patent and trade mark fee structure. Even though changes in patent and trade mark legislation only came into effect in 2014, IPONZ cites a requirement for a reduction in their memorandum account balance, rebalancing of patent and trade mark revenues, and a need for “improved efficiencies of the patent and trade mark regimes” as the stimulus for the significant fee increases (patents) and reductions (trade marks). No changes are proposed for their design services. The proposed changes discussed below have received Cabinet agreement. The next step towards implementation is to amend the Regulations to accommodate the fee changes, and final approval from the New Zealand government. If approved, we expect that the fee changes will most likely come into effect in the third quarter of this year (2019).

Patents

Significant increases in government fees are expected across the board for all services provided by IPONZ, including a doubling of the filing fee for a divisional application (1953 Act), to the doubling (10-14 years) and tripling (15-19 years) of renewal (maintenance) fees. These fee increases do not only apply to applications filed under the 2013 but also flow on to applications filed under the 1953 Act. In addition to existing service fees, an excess claim fee, with a complex calculation system based on the number of claims considered during examination (payable on acceptance), have been introduced. The following changes have been reproduced from information provided in the Update to Proposed Patent and Trade Mark Fee Changes April 2019, issued by IPONZ. Patent Service Fees

Ser v ice Fee (2013 Ac t) Filing a complete application Filing a request for examination

Current Fee (NZD)

Proposed Fee (NZD)

250 500 150

250 (no change)

750 500

Request for leave to amend a complete application after acceptance Request to Restore a Patent/Application

100

600

Ser v ice Fee (1953 Ac t) Filing a complete application

Current Fee (NZD)

Proposed Fee (NZD)

250

500 150

Application to amend complete specification (before acceptance) Application to amend complete specification (before acceptance)

60

60

500

Patent Renewal (Annuity/Maintenance) Fees

Not only are the annual renewal fees set to increase, the fee for attending to the payment of the fee has also increased. The proposed fee changes are set out below:

Ser v ice Fee (1953 & 2103)

Current Fee (NZD)

Proposed Fee (NZD)

Apply pay renewal fee within 3 months on anniversary Apply pay renewal fee within 9 months on anniversary Annual Renewal Fee 4-9th year Annual Renewal Fee – 10-14th year Annual Renewal Fee – 15-19th year

100

200

150

300

100 200 350

200 450

1000

Late Payment Penalty

50

100

Patent Excess Claim Fees – New

Consistent with many other patent offices, IPONZ proposes to introduce an excess claim fee. The fees are not simply based on the number of additional claims filed over a certain threshold, but takes into consideration the number of claims pending during examination (and not the total number of claims at acceptance). It appears that this will default to the highest number of claims considered during examination.

Briefly, an excess claim fee will apply if there are 30 or more claims. A minimum excess claim fee of NZD 120 will apply to any accepted application where there are at least 30 claims. Additional fees will then be calculated for each group of five (5) claims over the 30 claim threshold. The total fee payable will be calculated based on the maximum number of claims that were considered during the examination process. For example, at any stage after filing a request for examination of the application, there are 50 claims, an excess claim fee of the minimum NZD120 (30 claims) plus 4 x 120 (claims 31-50) will be incurred, even though there may only have been 29 claims filed, and less than 30 claims accepted. It also appears to apply to any pending application filed under either the 1953 Act or the 2013 Act.

We will provide information on our proposed strategies for addressing these fee increases in a separate communication.

Trade Marks

IPONZ offers a “simplified application process” for filing trade marks, and has reduced their fees associated with these services.

Briefly, IPONZ proposes to reduce their fees associated with new trade mark applications. A list of the fees associated with the various services under the New Zealand Trade Marks Act 2002 is set out below.

Ser v ice Trade Mark Ac t 2002 TM application (per class) (does not use pre-application advise or pre-approved pick list)

Current Fee

Proposed Fee

150

100

TM application (per class) Based on pre-application advise TM application (per class) Based on pre-approved pick list

150

50

150

70

TM application (per class) Based on pre-application advise & pre- approved pick list

150

50

Renewal Fee (per class)

350

200

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