In a couple of days, on 13th February 2020, changes to the fees charged by the Intellectual Property Office of New Zealand (IPONZ) for patents and trade marks will come in effect.
There are a number of fee changes, but to summarise:
Patents will see the following fees increase:
- Filing and examination request fees
- Renewal and application maintenance fees
- Some amendment and restoration fees
Trade marks, however, will see the following fees decrease:
- Application fees
- Renewal fees
The trade mark search and preliminary advice fees will also change, with the fees for the individual services increasing, but the fee for the combined S&PA service decreasing.
Fees relating to design rights remain unaffected.
Possible Implications and Effects
Thus, at first sight, patent owners are likely to be financially impacted the most, with trade mark owners seeing financial benefits. The actual impacts of these changes, however, are only likely to be realised over time.
From a patent perspective, costs appear to be increasing. However, since a patent is providing the owner with a temporary monopoly in the market, these increases in costs are likely to be reasonable if the patent is truly of value and the invention appropriately monetised.
Further, some commentators have speculated that the increase in fees may actually benefit New Zealand businesses. As in many other global jurisdictions, there is no usage requirement for a patent in New Zealand. Patents are often filed and used strategically to frustrate competitors, with no intention to work the claimed invention.
The longer-term impact of the patent fee increases may be to dissuade foreign competitors who have been filing in New Zealand with the sole aim of disrupting their competitors here, such that they allow their patents to lapse early, or do not file here in the first place.
From a trade mark perspective, costs appear to be decreasing, which will be welcomed by New Zealand businesses looking to establish and protect their brands.
However, it has been speculated that this may actually lead to an increase in trade mark filings, particularly for applications with an unduly broad scope or from applicants with no real intention to use the mark, resulting in the trade mark register becoming relatively bloated with poor quality registrations.
Ironically, this may lead to an increase in branding costs as oppositions and actions brought for non-use and invalidity may be needed to enforce genuine marks and those registered in good faith.
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Bainbridge D. (2012). “Intellectual Property.” 9th edn, Pearson Education Limited, Harlow, England.
Blijlevens A. (2019, August 22). “Protecting innovation using patents and designs”. Webinar attended August 22, 2019; available from: https://www.ajpark.com/insights/videos-and-webinars/resource/protecting-innovation-using-patents-and-designs-recording
Ellis Terry. (2019, October 07). “Fee Changes For NZ Patents and Trade Marks”. Retrieved February 04, 2020, from: https://ellisterry.com/official-fee-changes-for-patents-and-trade-marks-in-new-zealand/
McIvor R. (2019, June 25). “IPONZ fee changes coming for Patents and Trade marks”. Retrieved February 04, 2020, from: https://www.baldwins.com/news-resources/news/iponz-fee-changes-coming-for-patents-and-trade-marks
New Zealand Intellectual Property Office. (2019, September). “Patent and Trade Mark Fee Changes on 13 February 2020”. Retrieved January 28, 2020, from: https://www.iponz.govt.nz/assets/pdf/about-iponz/patent-and-trade-mark-fee-changes-september-2019.pdf
New Zealand Intellectual Property Office. (2020, January 28). “New patent and trade mark fees will commence from 13 February 2020”. Retrieved January 28, 2020, from: https://www.iponz.govt.nz/news/new-patent-and-trade-mark-fees-will-commence-from-13-february-2020/
Tidbury K, Coughlan O. (2019, September 27). “Changes to IPONZ patent and trade mark fees”. Retrieved February 04, 2020, from: https://www.simpsongrierson.com/articles/2019/changes-to-iponz-patent-and-trade-mark-fees
Ting S, Henning K, Griffiths T. (2019, October 02). “Changes to the Intellectual Property Office of New Zealand’s fees to come into force on 13 February 2020”. Retrieved February 04, 2020, from: https://www.ajpark.com/insights/ip-updates/intellectual-property-office-of-new-zealands-fee-changes/