Following hot on the heels of the 13 September 2013 royal assent of the New Zealand Patents Act 2013, the Intellectual Property Office of New Zealand (IPONZ) has issued a discussion paper seeking feedback on proposed regulations and fees for the new Act.

The discussion paper provides details on proposed changes to:

  • Fees payable for various services, requests and processes;
  • Timeframes and procedures for submitting requests for examinations and re-examinations, third-party assertions and responding to reports issued by the Commissioner;
  • Mandating online communication with the Commissioner of Patents;
  • New powers for the Commissioner of Patents to control proceedings under the Act; and
  • New requirements relating to an address for service.

Highlights of the proposed changes to the FEE structure include:

  • Introduction of yearly annuity fees (compared to currently requiring payment on 4th, 7th, 10th and 13th anniversary of the complete filing date); (New Fee)
  • Introduction of late fee of NZ$50 for renewals in 6 month grace period; (New Fee)
  • Introducing restoration request fee of NZ$100; (New Fee)
  • Introducing examination and re-examination request fee of NZ$500; (New Fee)
  • Introducing revocation request fee of NZ$350; (New Fee)
  • Increasing provisional patent filing fee from NZ$50 to NZ$100; and (100% increase)
  • Increasing voluntary amendment fee from NZ$60 to NZ$150. (150% increase)

Highlights of the proposed changes to the REGULATIONS include:

  • Examination request must be made within the earlier of 3 years from the date of filing complete specification or PCT international filing date, or 2 months following issuance of a direction from IPONZ;
  • Acceptance deadline reduced from 18 months to 12 months from date of issuance of first report;
  • Address for service extended to include New Zealand and Australian addresses;
  • Single address for service allowable for  proposed Trans-Tasman patent application;
  • Greater supporting information requirements specified for third party assertions (section 90);
  • New re-examination procedure prescribed, similar to the current Australian system;
  • Period to respond to a re-examination report to be 2 months from report issuance; and
  • Revised hearing regulations to be modelled on corresponding NZ Trade Mark regulations (regulations 26 to 36).

A number of the new regulations have been informed by corresponding provisions in Australian patent law. This alignment appears to be a logical consequence of the impending Trans-Tasman patent application and examination process that both the IP Australia and IPONZ have been working towards for some years.  In line with this goal, the discussion paper also provides a brief outline of Trans-Tasman patent application process and single examination process for discussion.

Submissions providing feedback on any of the proposed changes close on 24th January 2014.

We remind our clients and associates that some parts of the 2013 Act are already in force.  However, the substantive sections relating to filing, examination and post grant procedures will commence on 13 September 2014.  The provisions of the Patents Act 2013 will apply to all New Zealand applications (complete, national phase, divisional applications) filed after the commencement date of the Act.  Applications filed prior to that date will be handled under the 1953 Act.