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Renewal fees under the Patents Act 2013

The Patents Act 2013, in addition to other substantive changes, introduces annual maintenance fees (for patent applications) and renewal fees (for granted patents) from the fourth anniversary of the filing date. These fees will only be able to be paid up to three months in advance of the due date.

Under the 1953 Act, renewal fees are payable at 4 years, 7 years, 10 years and 13 years from the filing date of the application provided the patent has been granted. It is also possible to pay all of these renewal fees in advance. The table below sets out the various fees payable (in New Zealand dollars) under the two Acts.

Maintenance fees will not apply to any application filed or which enters national phase in New Zealand prior to 13 September 2014. However, annual renewal fees will apply to patents granted under the 1953 Act, but only from the date at which the next renewal fee is paid on or after 13 September 2014. Although the new renewal fees are set at a relatively low level, because they are payable annually, it is likely to be more expensive to renew a patent under the new regime.

In order to avoid this additional expense, applicants may wish to consider paying some or all of the renewal fees for a granted New Zealand patent prior to 13 September 2014. In this way they can avoid the annual renewal fee system for as long as the fees are paid for.

A more detailed description of the transitional provisions regarding renewal fees, including how they will apply to so called “late seal” patents can be found here.

If you require any advice on a specific situation, or have any questions, please do not hesitate to contact us.

David Nowak - 1 August 2014