On 2 April 2019 the Intellectual Property Office of New Zealand (the Office) released the result of their review of Office fees and subsequent consultation. The result is a general increase in patent fees, as well as the introduction of a new fee, and a decrease in trade mark fees. The regulations implementing the new fees are still being drafted, but they are expected to come into force during the third quarter of 2019. Information about the fee review, including the original and revised proposals, as well as submissions can be found here.

• Changes to Patent Fees
• Changes to Trade mark fees
• Implementation
• Advice to Patent Applicants and Patentees
• Advice to trade mark applicants

Changes to Patent Fees

Certain existing fees for applications and patents under both the Patents Act 2013 and Patents Act 1953 will increase. All fees are in New Zealand dollars.

Patents Act 2013

Action	Current Fee	New Fee
Request for examination or re-examination	$500	$750
Excess claim fee -	None	$120 for each five claims over 25*
Maintenance fee (from year 4 onwards) if paid prior to annual deadline	$100	$200
Maintenance fee if paid within six months of anniversaryt	$150	$300
Amendment after acceptance	$150	$500
Request for restoration of a patent or patent application	$100	$600
Annual renewal fee (4th to 9th year)	$100	$200
Annual renewal fee (10th to 14th year)	$200	$450
Annual renewal fee (15th to 19th year)	$350	$1000
Fee for late payment of renewal fee (within six months)	$50	$100

* Excess claim fees will be calculated on the basis of the greatest number of claims in the application at any time during examination.

^t This fee is incorrectly stated in the revised Fee proposal as payable within 9 months.

Patents Act 1953

Action	Current Fee	New Fee
Filing of a complete specification (e.g. divisional application)	$250	$500
Voluntary amendment fee (pre-acceptance)	$60	$150
Amendment after acceptance	$60	$500

Changes to the original proposals

The original proposals included increases to renewal fees payable under the Patents Act 1953. These fees are now only payable in relation to applications filed under that Act (now largely limited to divisional applications). As a result of submissions from Henry Hughes IP showing the unintended consequences of the proposal, this suggestion has now been abandoned.

In addition the proposal for excess claim fees has been changed from $200 for every 10 claims in excess of 20 (i.e. fees would be payable for 30, 40 or 50 claims) was changed to the current proposal due to submissions from the New Zealand Institute of Patent Attorneys (NZIPA).

Changes to Trade mark fees

Unlike the patents fees, fees for trade mark applications will decrease:

Action	Current Fee	New Fee
Application to register a trade mark (per class) not based on pre-application advice and not using the pick-list of pre-approved terms.	$150	$100
Application to register a trade mark - based on pre-application advice (per class)	$150	$50
Application to register a trade mark - using picklist of pre-approved classification terms (per class)	$150	$70
Application to register a trade mark - based on pre-application advice and using picklist of pre-approved classification terms (per class)	$150	$50
Combined search and preliminary advice	$80	$50
Renewal of registration of a trade mark (per class, every 10 years)	$350	$200

Implementation

In general it is proposed for the fee changes to take effect for all actions conducted on or after the commencement date. Exceptions to this are the patent excess claim fee, which will apply to applications for which examination is requested after the commencement date, and the discounted rate for trade mark applications based on search and preliminary advice, which will only apply to applications where the search and preliminary advice issued after the commencement date. At this stage the exact commencement date has yet to be determined, however the Office has advised that they will give at least three months' notice of the actual commencement date. We will keep you updated in this regard.

Advice to Patent Applicants and Patentees

Given the increases in patent fees, a patent applicant or patentee may wish to consider whether to undertake an action prior to the commencement, or take other action to avoid additional costs. Some particular considerations are set out below:

Request examination prior to commencement

Not only will the cost of the request be cheaper (by $250), but the applicant will also avoid excess claim fees (regardless of the cost).

Pay maintenance fees in advance of the deadline to avoid extra cost

This will only be possible in certain cases with impending maintenance dates, as it is not possible to pay maintenance or renewal fees more than three months prior to the anniversary.

Reduce the number of claims prior to or at the time of requesting examination

In order to avoid the payment of excess claim fees, the number of claims will need to be reduced by the time examination is requested. An added bonus to this approach is that voluntary amendment fees ($150) are not payable prior to examination being requested.

Advice to trade mark applicants

Take care when delaying filing of an application

The reduction in trade mark application fees makes it tempting to delay filing an application until after commencement of the new fees. Whilst this is a possible strategy, it should be employed with caution, especially for longer periods as intervening applications may make it more difficult or impossible to achieve protection.

Be aware of the limitations of search and preliminary advice

Search and preliminary advice offered by the Office can provide good information, and given the reduced cost make it a useful tool. However, search and preliminary advice only provides advice regarding the registrability of a mark and only searches trade marks which are registered in New Zealand. Common law trade marks (brands which are used in New Zealand but have never been registered) will not be picked up by such a search and may still be used by third parties to challenge your use of, or application for, a new trade mark.

Use the picklist cautiously

The reduced fee for using the picklist is intended to encourage use of the picklist as it is easier for the Office. However applicants should not be under the impression they are restricted to the terms in the picklist. If there is a better term which describes the goods and/or services provided then this should be used even if it means a small increase in cost.

Be careful when making a trade mark application

Just because applying for a trade mark is relatively cheap (and getting cheaper) does not mean that it is easy (or cheap) to fix mistakes. It is not advisable to assume that if a mistake is made it is possible to simply refile and pay the additional fee. In many cases a mistake only becomes apparent at a much later date, perhaps when a dispute arises, when it may be costly or even too late to fix the mistake. It is important to have an understanding of how the trade mark system works at the outset when applying for a trade mark, so as to avoid these errors. In many cases it may be advisable to obtain specialist advice.

Please feel free to contact us if you have any questions.

David Nowak - April 2019