New excess claim fees and how to avoid them
The Intellectual Property Office of New Zealand (IPONZ) has announced significant patent fee increases to take effect in 2020 as detailed here.
Most of the changes take effect 13 February 2020, although the new maintenance and renewal fee rates apply to fees due on or after 13 May 2020.
The fee increases are enormous in percentage terms – New Zealand’s patent fees are currently modest, whilst the increases are significant in absolute terms, e.g.:
- the final renewal fees increase from 350 NZD to 1000 NZD – a 186% increase, and
- the fee for restoring a patent application increases from 100 NZD to 500 NZD – a 400% increase.
Excess claim fees will be introduced. The new fees will:
- apply if examination is requested on or after 13 February 2020,
- cost 120 NZD for each 5th claim after the 25th based on the maximum number of claims at any point during the examination process, and
- be payable after acceptance (allowance).
Filing a voluntary amendment to reduce the number of claims prior to requesting examination would avoid the fees and may well be economic if there are 40 claims or more – a 150 NZD fee and professional charges are applicable to voluntary amendments. IPONZ has confirmed that filing a voluntary amendment and then requesting examination on the same day will avoid the fees (unless of course the claims are subsequently reinstated).
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