New Zealand Introduces Excess Claims Fee In Patent Examination
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.
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!