How New Zealand patent applicants can beat the 13 February 2020 fee hike

Author:Dr. Gareth Dixon and David Hvasanov
Profession:Shelston IP

On 13 February 2020, the Intellectual Property Office of New Zealand (IPONZ) will increase many of its fees - and add several new ones. As with any fee hike, some are justified more easily than others, some are "idiosyncratic" - and importantly, within the context of this article, some are avoidable altogether.

Specifically, if Applicants request voluntary examination prior to 13 February 2020, two of the changes, potentially amounting to several hundreds of dollars in additional fees, can be dodged:

The increase in examination fees (currently NZ$500, increasing to NZ$750); and The new and unlikely-to-be-popular claim fees (NZ$120 per bank of 5 claims in excess of 25). There is a narrow window within which to act - and it will soon slam shut. We encourage clients to take proactive steps for the reasons provided below.

It's not just cost reduction, it's also "best practice"

The notion of what constitutes "best practice" when it comes to prosecuting a New Zealand patent application has always been somewhat subjective. For every move that seems like a good idea, there's usually a decent counterpoint. However, we have recently attempted to reconcile all the pros and cons - and came to the conclusion that requesting early examination was as close to "best practice" as you were going to get.

Around the same time - more by coincidence than design, IPONZ announced some (fairly modest) increases in official fees, along with some new fees altogether. In combination, these stand as further drivers toward requesting early examination.

Why again was early examination thought to be "best practice"?

It's all to do with managing the 5-year statutory bar on requesting examination of a new Act (Patents Act 2013) case. Beyond five years of its filing date, a request for examination cannot validly be made. This, of course, creates all sorts of headaches when it comes to potential divisional applications (which can be filed, but not examined; the "zombie divisional" scenario). Throw in the fact that IPONZ presently has a large backlog of cases awaiting examination, and an Applicant risks having the 5-year bar expire on them before such time as they know where they stand on the divisional issue. Applicants can either guess - and file a precautionary divisional that may never be needed, or else run the gauntlet and risk missing out altogether in the event that unity is later raised during prosecution (after the 5-year bar), or the application cannot be placed in condition for acceptance prior to expiry of the 12-month...

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