The New Zealand Patents Amendment Regulations 2019 (“the 2019 Regulations”) were recently signed into force and will have effect from 13 February 2020. The 2019 Regulations introduce a raft of changes to the official fees for the patent process in New Zealand, affecting examination, annuity and renewal, amendment and administration costs for New Zealand patent rights. These fee increases apply to patent applications filed under both the Patents Act 2013 and the Patents Act 1953.
The most significant change to the official fees is the introduction of a new “excess claim fee”. This change will impact how patents for valuable technologies are obtained in New Zealand. It is important that patent owners are aware of the changes and take proactive steps to prepare for them. We provide here an overview of the likely effects of the excess claim fee and options to mitigate these.
The excess claim fee will be charged for any patent application that includes 30 or more claims at any point between requesting examination and acceptance of the application. The excess claim fee is payable for every group of five claims over the 25th claim.
The number of claims on which excess claim fees are paid is the maximum number of claims in an application at any point during the examination process. The practical consequence of this is that an applicant needs to consider excess claim fees when requesting examination rather than just as the application approaches acceptance, as is the case for Australian applications.
To give an indication of the level of the excess claim fees, the additional fees payable under the Patents Regulations will be:
No excess claim fees if an application includes a maximum of 29 claims during examination;
$120 if the application includes a maximum of 30 to 34 claims during examination;
$240 if the application includes a maximum of 35 to 39 claims during examination; and
$360 if the application includes a maximum of 40 to 44 claims during examination.
Excess claim fees can of course be avoided by reducing the number of claims included in a New Zealand patent application to 29 or less. However, this may have significant adverse consequences on the protection provided by a patent. For instance, reducing the number of claims included in an application reduces the ability to rely on the deleted claims if amendment is required to ensure a patent is valid. That could lead to additional costs during the examination process, and after grant scenarios could arise in which a patentee is unable to save an invalid patent.
Some applicants should consider mitigating against these effects by electing to maintain claims and paying the excess claim fees anyway.
The 2019 Regulations also introduce official fee increases for other steps incurring fees for New Zealand patents and patent applications, including examination, maintenance, renewal and amendment fees. Those fee increases will cumulatively increase a patent applicant’s costs.
The increased fees take effect for all 2013 Act applications for which examination is requested after 13 February 2020. This provides patent owners an opportunity to act in advance of the changes.
Therefore, we recommend that New Zealand patent applicants:
Review their New Zealand patent portfolios to identify commercially important cases for which the examination process has not yet commenced; and
Request examination of these commercially important cases, and file any required divisional applications, before 13 February 2020.
As always, the James & Wells team are happy to help you understand the consequences of the 2019 Regulations and develop a suitable strategy. Feel free to reach out to us for pragmatic advice.
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