Intellectual Property Office of New Zealand patent and trade mark fees changes

Key issues:

• The Intellectual Property Office of New Zealand has recently reviewed the fees it charges for patent, trade mark and design services.
• The proposed fees changes have now been approved by the New Zealand Government and will come into force on 13 February 2020.
• The fees changes have resulted in an overall increase in fees to apply for, prosecute, and maintain, a New Zealand patent.

The Intellectual Property Office of New Zealand (IPONZ) has recently reviewed the fees it charges for patent, trade mark and design services. Consequently, IPONZ proposed a number of changes in fees with respect to patent and trade mark services. No changes were recommended with respect to design services. 

The proposed fees changes have now been approved by the New Zealand Government and will come into force on 13 February 2020.

Patent fees

In summary, the fees changes have resulted in an overall increase in fees to apply for, prosecute, and maintain, a New Zealand patent.

The cost to file a patent application will increase from NZ$250 to NZ$500 and the cost to request examination will also increase from NZ$500 to NZ$750. The cost to amend a complete patent specification after acceptance will increase from NZ$150 to NZ$500. Annual maintenance or renewal fees, late fees to pay annual maintenance or renewal fees and the cost to restore a patent will also increase.

Annual maintenance and renewal fees:

IPONZ have also introduced a new ‘excess claims’ fee which will apply to patent applications containing 30 or more claims (payable after acceptance). The new ‘excess claims’ fee will apply to any application where a request for examination is made on or after 13 February 2020.

The New Zealand ‘excess claims’ fee is different to the IP Australia ‘excess claims’ fee. In Australia, the ‘excess claim’ fee is only charged if the patent specification contains more than 20 claims at acceptance of the patent application. In New Zealand, the new ‘excess claim’ fee will be charged if the patent specification contains 30 claims or more at any point during examination, regardless of whether the number of claims is reduced below 30 prior to acceptance.  

Trade marks fees

In summary, the fees changes have resulted in an overall decrease in fees to apply for and maintain a New Zealand trade mark.

The cost to file a trade mark application will decrease from NZ$150 to NZ$100 per class. The cost to renew a trade mark registration will also decrease from NZ$350 to NZ$200 per class.

IPONZ is also providing discounted trade mark application fees for applicants who obtain search advice and/or preliminary advice from IPONZ and where the specification of goods or services consists only of pre-approved descriptions. If an applicant meets these criteria, the cost to file a trade mark application will be reduced to NZ$50 per class (on top of the cost to request preliminary advice and search advice of NZ$50 per class).  Previously the applicant would pay the full fee to apply for a trade mark application.

For more information or discussion, please contact HopgoodGanim Lawyers’ Intellectual Property team.