Excess claim fees in New Zealand and Australia can have a significant effect on patent filing and prosecution costs. This article explains how the two systems work and highlights practical strategies to minimise unnecessary fees.
Key points
- New Zealand calculates fees based on the highest number of claims present after requesting examination.
- Australia calculates fees when examination begins and may charge additional fees at acceptance.
- Australian fees increase significantly above 30 claims.
- Early claim management can reduce costs in both jurisdictions.
Overview
Jurisdiction |
Claim threshold |
When fees are paid |
Basis of calculation |
|
New Zealand |
29 claims |
After acceptance |
Maximum number of claims after requesting examination |
|
Australia |
20 claims |
During examination and/or acceptance |
Maximum number of claims examined |
|
United States |
3 independent / 20 total |
At filing |
Claims filed (with adjustments) |
|
Europe (EPO) |
15 claims |
Shortly after NPE |
Claims filed |
New Zealand: fees are based on maximum claim number at any time after requesting examination
In New Zealand, excess claim fees are calculated based on the maximum number of claims present at any point after requesting examination. Fees apply when the application contains 30 or more claims and are due after acceptance (allowance). The fee must be paid for the application to move to grant.
Unlike most jurisdictions, the Intellectual Property Office of New Zealand (IPONZ) doesn’t charge per claim. Instead, fees are charged for each complete group of five claims above 25.
Strategy tips
The official fees for additional claims are low compared to many jurisdictions, NZ$120 for each set of five claims. For applications with fewer than 40 claims it may be more cost-effective to pay the excess claim fees rather than amending the claims. But as the number of claims increases, it can be more cost-effective to amend the claims.
Once you pass the threshold for a set of five claims, you can get up to four extra claims for “free”. For example, there is no difference between the fee for 50 claims and the fee for 54 claims.
In New Zealand, the claims of an application can be amended at any time during prosecution, i.e. you are not limited to the invention searched in the first examination report.
Examples
Examination requested with more than 29 claims
The PCT specification contains 92 claims. No amendments are made before requesting examination. Before the first examination report issues, the claim set is reduced to 25 claims. Excess claim fees are still payable for 92 claims.
Examination requested with fewer than 29 claims
The PCT specification contains 92 claims and amendments are filed before requesting examination to reduce the number of claims to 20. In response to the first examination report, the applicant adds new claims for a total of 46 claims. The application is later accepted with 19 claims. Excess claim fees will be due for 46 claims.
Australia: fees are assessed twice during prosecution
In Australia, excess claim fees apply once an application exceeds 20 claims, with higher fees for each claim beyond 30. Claims 21 to 30 cost AU$125 per claim, and claims 31+ cost AU$250 per claim.
Excess claim fees are calculated twice, once when the first examination report issues, and again at acceptance if the number of claims increased during prosecution. This is a change from the previous practice of assessing excess claim fees only on the claim set as accepted (allowed).
If your application has more than 20 claims when the first examination report is issued, IP Australia will set a payment deadline of one month from the date of the first examination report. The application will lapse if the excess claim fees are not paid, but it can be restored by paying the excess claim fees any time before the acceptance deadline (12 months from the date of the first examination report).
If the number of claims increases after the first examination report, additional fees may become payable at acceptance. This can happen if:
- the claim count increases from 20 or fewer claims to more than 20 claims; or
- the claim count exceeds the number of claims examined in the first examination report.
The amount payable depends on the highest number of claims present during prosecution.
Where the number of claims increases from 20 or fewer to more than 20, the excess claim fees will be for the maximum number of claims present during prosecution.
If excess claim fees were paid after the first examination report, and the number of claims increases, the excess claim fees at acceptance will be based on the maximum number of claims present during prosecution but will take into account any payment made after the first examination report.
Strategy tips
Excess claim fees are due soon after the first exam report issues and before the response deadline. If you miss the payment deadline, you can restore the case and continue examination by paying the fee within 12 months. However, the acceptance deadline will not be extended.
Reducing the number of claims after requesting examination will reduce the excess claim fees, so long as examination hasn’t begun.
Like New Zealand, you can amend the claims during prosecution and are not limited to the invention first examined.
Examples
Examination requested with more than 20 claims
Examination is requested with 92 claims. The first examination report will include a requirement to pay excess claim fees within one month. Examination will not proceed until the excess claim fee is paid. The application is later accepted with 25 claims. No additional fees are due.
Amendments filed before examination
Examination is requested with 92 claims, but claim amendments are filed to reduce the claim set to 21 claims before the first examination report issues. Excess claim fees for one claim will be due when the first examination report issues. Later in prosecution, new claims are added to increase the claim set to 34. Excess claim fees for the 13 additional claims will be due after acceptance.
Key differences compared to the US and Europe
In the US and Europe, fees arise at or near filing. In New Zealand and Australia, fees are paid during or at the end of prosecution.
The number of independent claims in Australia or New Zealand does not affect the fees, and neither does the presence of multiply dependent claims.
Claims do not need to be amended at filing. There is usually a delay of at least a year between national phase entry and requesting examination.
Practical guidance
Align your claim strategy with examination timing rather than filing alone and consider whether excess claim fees may be more cost effective than amendment costs.
Australian excess claim fees can be punishing after 30 claims. If you have a large claim set but are still unsure which embodiments you want to pursue, you can limit the claims to e.g. the first 20 PCT claims or just the independent claims when you request examination. You can then amend the claims to your preferred embodiments during prosecution.
The fees in New Zealand are lower and the group of five approach allows for more flexibility. We still recommend reducing the number of claims when requesting examination if the claim set is large or if the applicant has already decided on their preferred claim scope.
We can reduce claim numbers by combining claims with preference clauses. However, preference clauses in claims are likely to be ignored by the Australian and New Zealand courts, so we recommend this approach only in the early stages of prosecution.
Sometimes large claim sets are the best option. If there are multiple aspects of the invention that you want to cover, even a large number of excess claim fees can be more cost-effective than filing a divisional application and paying a second set of maintenance fees.
