Wednesday, 3rd April, 2019

A further update on the Intellectual Property Office of New Zealand's fee review

In 2018, the Intellectual Property Office of New Zealand (IPONZ) carried out a review of its fees, with a view to providing consistency and transparency across the services it provides. That review resulted in proposals to: 

  • introduce excess claim fees
  • increase the examination request fee from NZ$500 (about US$375) to NZ$750 (about US$560)
  • significantly increase fees for patent renewals and maintenance
  • increase fees for high-cost patent services, such as patent restorations and amendments after acceptance
  • introduce discounted trade mark application fees for applicants who use the IPONZ ‘search and preliminary advice’ reports and classification picklist
  • simplify the trade mark application process by phasing out separate services for ‘search’ and ‘preliminary advice’ reports.

No changes to fees for designs, plant variety rights, geographical indications or hearings were proposed. Full information can be found in IPONZ’s Discussion Document.

In June and July 2018, IPONZ sought public submissions on its proposals. Those submissions were considered, and IPONZ revised its proposals, which have now been approved by Cabinet.

The revised proposals change the excess claims fees from the originally proposed NZ$200 (about US$150) for each set of 10 claims over 29 to NZ$120 (about US$90) for each set of five claims over 29. That fee will be payable between acceptance and grant, but is calculated based on the maximum number of claims presented during the examination process.

IPONZ’s original proposals included an increase in renewal fees under the Patents Act 1953 to match the renewal fees under the Patents Act 2013. IPONZ has withdrawn those proposals and intends to, instead, make future amendments to the transitional provisions of the Patents Act 2013.

Full information about IPONZ’s fees review can be found here.

The next stage in the fee review process is the drafting of amendments to the:

  • Trade Marks Regulations 2003
  • Patents Regulations 2014
  • Patents Regulations 1954.

When the amendments to the regulations are approved, IPONZ will publicly notify the changes and officially notify the World Intellectual Property Organization (WIPO) of changes to fees for trade mark and patent applications filed under the Madrid and Patent Cooperation Treaty systems. The changes will take effect three months after public notification. IPONZ expects to implement the fee changes in the third quarter of 2019.

Our renewals team is currently reviewing portfolios and looking at ways to minimise the impact of the proposed renewal fee changes. 

You can minimise the impact of the patents fee changes by requesting examination now, before any changes take effect.