The New Zealand Patent Office (IPONZ) has recently published a schedule of fees which will take effect as of 13 February 2020. Amongst the wide-ranging increase in rates, some of the most significant relate to excess claim fees, renewal fees and requesting examination.
Excess Claim Fees
Unlike many other patent offices around the world, there is currently no fee associated with the number of claims contained in a patent specification in New Zealand. However, this is set to change with the introduction of the new schedule which stipulates the following:
- Excess claim fees of NZD 120 payable for examination of applications with 30 or more claims, for each 5th claim over 25;
- The fee is payable after acceptance of the application but must be paid before grant;
- The total fee payable will be calculated based on the maximum number of claims contained concurrently in the complete specification at any point during the examination process;
- Fees will not be charged if the application does not pass to acceptance;
- This fee will only apply for applications where the request for examination is made on or after 13 February 2020; and
- Cases proceeding under the “old” Patent Act 1953 will not be subject to the new schedule.
A valid request for examination for all patent applications must be made within 5 years of the complete (or PCT) filing date, including any associated divisional applications. The fee to do so is set to increase to NZD 750, which is an increase of NZD 250 over the current cost. Under the new scheme, requesting examination will also trigger the beginning of the period within which the maximum number of claims is assessed for the purposes of the excess fee charge.
Given that the deadline is now only a few months away, to avoid being stung with potentially large government fees before grant, we would suggest reviewing any applications with considerable numbers of claims. For those applications, it may be best to request examination before the new schedule takes effect. Where it is not possible to request examination before this date, it may be prudent to file voluntary amendments to reduce the claim numbers before requesting examination. Of course, this is only advisable if the cost of preparing and filing such an amendment outweighs the cost of excess claims fees! Fortunately, in New Zealand there is little in the way of limitations on multiple claim dependencies, so reducing the claim numbers is likely to be possible in many circumstances.
Finally, renewal fees are also set to increase in this jurisdiction, particularly the 15th to 19th year renewals, increasing from NZD 350 to NZD 1000-. Therefore if the commercial value or likelihood of asserting your patent rights is waning in the latter part of their term in New Zealand, we would suggest considering the pay-off in renewing such properties in their twilight years.