Tuesday, 4th December, 2018

An update on the Intellectual Property Office of New Zealand’s fee review

Earlier this year, 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 of NZ$200 (about US$150) for each set of 10 claims over 30 – payable when requesting examination

  • 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 have now been considered, and IPONZ is seeking Cabinet approval for its revised proposals. Unfortunately, IPONZ has not released details of those revisions.

Pending Cabinet approval, instructions will be provided to the Parliamentary Counsel Office to give effect to the proposals, which will require amendments to the:

  • Trade Marks Regulations 2003

  • Patents Regulations 2014

  • Patents Regulations 1954.

If the regulations are approved, they will be gazetted and the changes will take effect three months after that. The earliest date of any changes to IPONZ fees will be 1 May 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 fee changes by requesting examination now, before any changes take effect.