New Zealand Introduces Excess Claims Fee in Patent Examination

by , | Oct 9, 2019

The Intellectual Property Office of New Zealand (IPONZ) has announced the introduction of excess claims fee, an increase in the examination fee, and increases in application/patent maintenance/renewal fees.  A full description of the fee changes can be found here.

In general, the fees will be applied from 13 February 2020.

New Excess Claims Fee

The new excess claims fee will apply during patent examination and must be paid for the application to proceed to grant.  The new excess claims fees will:

  • apply to all applications with an examination request lodged on or after 13 February 2020;

  • incur a NZD 120 fee for each 5th claim over 25 claims;

  • apply to the highest number of claims present any time during examination; and

  • be payable after acceptance of the application.

In the announcement, IPONZ provides a few working examples applying the new excess claims fee.  In practice, the excess claims fee will apply when the claim number reaches 30, with each fee increment becoming due when the 5th additional claim is reached.

For example:

  • no excess claims fee will be due if the claim number at any time during examination does not exceed 29;

  • if the highest number of claims during examination is 59, an excess claims fee in the amount of NZD 720 (6 x NZD 120) will be due after acceptance; and

  • if the highest number of claims during examination is 60, an excess claims fee in the amount of NZD 840 (7 x NZD 120) will be due after acceptance.

In view of the new excess claims fee, applicants interested in controlling prosecution costs should reduce the number of claims when requesting examination.

Increased Examination Fee

For examination requests made on or after 13 February 2020, the fee will raise from NZD 500 to NZD 750.

For cost conscious applicants, we recommend requesting examination prior to 13 February 2020.  Requesting examination earlier will also avoid application of the new excess claims fee.

Increased Maintenance/Renewal Fees

The increased maintenance/renewal fees apply when the applicable payment period begins on or after 13 February 2020.  For payments in the “grace period”, the implementation date of the increases differs depending on whether the payment is for a patent (renewal) versus an application (maintenance).  For maintenance fees, the increased “grace period” fee (payment within 6 months of the anniversary of filing) will apply when the payment period begins on or after 13 May 2020.  In contrast, for renewal fees in the grace period, the increased late payment fee applies if the request for late payment is made on or after 13 February 2020.  IPONZ helpfully provides working examples explaining the application of the increases.

Questions?  We would be happy to answer any questions!

Jennifer Enmon PhD, JD

Jennifer Enmon PhD, JD

Special Counsel Patent Attorney (Registered in US, AU & NZ; EU Qualified) Trade Mark Attorney, AU & NZ

Jennifer has been advising clients on life sciences related patent matters for over 15 years.

Jennifer is a registered Patent Attorney in Australia, New Zealand and the United States and is a qualified Patent Attorney in Europe. She is also a registered Trade Mark Attorney in Australia and New Zealand.

Naomi Pearce

Naomi Pearce

Principal Lawyer, Patent Attorney, Trade Mark Attorney

Naomi is listed in IAM Patent 1000 as one of Australia's leading patent litigators, and in IAM Strategy 300: The World's Leading IP Strategists. Underpinning Naomi’s legal work is a deep understanding of the pharma/biopharma industries, resulting from first hand experience and knowledge as VP of IP in-house at global pharma giants, and Partner of a top-tier international law firm.

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