IPONZ - Proposed Changes to Patent and Trade Mark Fee Schedu

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.