IPONZ fees review and consultation

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IPONZ fees review and consultation

Updated 2 April 2019

The Intellectual Property Office of New Zealand (IPONZ) is a business unit within the Ministry of Business, Innovation and Employment (MBIE). IPONZ’s trade mark, patent and design services are fully cost-recovered. This means that IPONZ charges fees to recover the costs of its services from those who directly benefit from holding IP rights.

IPONZ has recently carried out a routine review of our fees to support a more consistent and transparent approach to cost-recovery across the range of services that we provide.

The review identified a number of areas where changes could be considered, intending to rebalance patent and trade mark revenues to appropriate levels, and to improve the efficiency, equity and effectiveness of the two regimes.

The proposals were:

  1. Increasing fees for patent renewals and maintenance.
  2. Increasing fees for high-cost patent services such as patent restorations and amendments after acceptance, and introducing an ‘excess claims’ fee for complex patent applications.
  3. Introducing discounted trade mark application fees for applicants who use IPONZ’s ‘search and preliminary advice’ reports and classification picklist.
  4. Simplifying trade mark application processes by phasing out separate services for ‘search’ and ‘preliminary advice’ reports.

Changes to fees for designs, plant variety rights, geographical indications and hearings services are not being proposed at this time.

Consultation

Between 25 June and 30 July 2018 public submissions were sought on the proposals. A brief explanation of the fees review and fee change proposals is provided in the ‘Summary’ documents below. Full information is provided in the discussion document.

What's changed?

A total of seven submissions were received from the consultation period and considered carefully.

Two proposals relating to patents fees have changed as a result of feedback from submitters. For more details on these, please refer to the Update to Proposed Patent and Trade Mark Fee Changes (April 2019) document above, and the Final Policy Approvals Cabinet Paper and Attachments document below, the latter of which includes a summary of submissions and IPONZ's responses.

Revision of excess claims fee

The original proposal for the excess claims fee was $200 per 10 claims for a patent application that contained 30 or more claims. NZIPA suggested that the excess claims fee should be charged on each individual claim above the threshold of 30, and the fee should be reduced to $20.

Although making the excess claims fee payable on each individual claim would more effectively incentivise lower claim numbers, NZIPA’s proposal would lead to applicants owing IPONZ very small sums of money that would need to be paid before grant. IPONZ considered that an appropriate revision to the original proposal would be to make the excess claims fee payable on every 5 claims above the threshold, and to reduce the fee to $120. Cabinet has agreed to this revised proposal.

Withdrawal of increases to Patents Act 1953 renewal fees

The original proposal included an increase in renewal fees under the Patents Act 1953 to match the renewal fees under the Patents Act 2013.

Henry Hughes IP Ltd suggested that the proposed increases to renewal fees under the Patents Act 1953 could have unintended consequences, and suggested that the transitional provisions of the Patents Act 2013 should be amended instead. IPONZ has withdrawn the proposal to increase renewal fees under the Patents Act 1953. This is because IPONZ considers that amendments to the transitional provisions of the Patents Act 2013 would be a more effective way to address the issues identified with divisional applications under the Patents Act 1953.

The process

Cabinet approved the changes to fees at its meeting on 11 March 2019. The Cabinet paper and minutes for the fees proposals are provided below. Amendments will be made to the Trade Marks Regulations 2003, the Patents Regulations 2014 and the Patents Regulations 1954 to give effect to the proposals.

The amendments to the regulations are currently being drafted and we expect them to be submitted to Cabinet and Executive Council for approval in the first half of 2019.

After the regulations have been amended, IPONZ will officially notify the World Intellectual Property Organization (WIPO) of changes to our fees for trade mark and patent applications filed under the Madrid and Patent Cooperation Treaty systems. We will also make changes to our case management facility and payment systems to allow for the new fees.

The fee changes are expected to be implemented in the third quarter of 2019. Once a final implementation date has been determined, IPONZ will notify our clients at least three months in advance of the effective date.

How to stay informed

IPONZ will continue to update clients as more precise information is available.

To receive early notice of updates, subscribe to our Latest News email newsletter.

If you have any particular questions in relation to the changes you may email IPONZ.

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