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Transitional provisions under the Patents Act 2013: Maintenance and renewal fees
On 17 April 2014, the Intellectual Property Office of New Zealand (IPONZ) issued a document regarding the transitional provisions from the Patents Act 1953 to the Patents Act 2013. We have noted most of the transitional provisions as they apply to patent applications in previous articles. However, certain provisions of the Patents Act 2013 will apply to patents granted under the Patents Act 2013.
One such provision is the payment of renewal fees. 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 2013 Act will introduce annual maintenance fees (for patent applications) and renewal fees (for granted patents) from the fourth anniversary of the filing date. These fees will not be payable in advance.
Because the renewal fees are payable annually under the new Act it is likely to be cheaper to pay the renewals under the Patents Act 1953. Accordingly applicants may wish to consider paying some or all of the renewal fees for your granted New Zealand patents prior to 13 September 2014.
Maintenance fees will not apply to any application to which the Patents Act 1953 applies. 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 the commencement of the Patents Act 2013 (13 September 2014). For example, if a patent has a filing date of 20 September 2009 then the next (7 year) renewal fee is payable by 20 September 2016, no renewal fees will be due in 2014 or 2015. From 2016 onwards however, annual renewal fees will be due by 20 September each year.
If the 13th year renewal fee is paid prior to 13 September 2014, then no further renewal fees are due, and the transitional provisions of the Patents Act 2013 will not be triggered. In such a case no further renewal fees are payable.
The amount of any renewal fee due after commencement of the Patents Act 2013 will be determined by the Patents Regulations 2014 (yet to be finalised), rather than the amount due under the Patents Regulations 1954. Thus in the example above, the renewal fee payable by 20 September 2016 will not be $340 (as would have been the case under the Patents Regulations 1954), but rather the fee set under the Patents Regulations 2014 (currently proposed to be $100).
As noted above, under the Patents Act 1953, maintenance fees are not payable on patent applications. If an application reaches the fourth (or 7th, 10th or 13th!) anniversary from the filing date without being granted, no fee is payable on that date.
However, once the application is granted, all renewal fees which would have been payable if a patent had been granted must be paid within four months of grant. Thus in the example above, if a patent was not granted by 20 September 2013, then no renewal fee would be payable prior to that date. However, the four year renewal fee will be payable within four months of grant of the application. Thus if the application was granted on 26 November 2013, the fourth year renewal fee would have been payable by 26 March 2014 and the next renewal fee will be the seven year renewal fee due 20 September 2016.
This system will continue to exist for applications to which the Patents Act 1953 applies. However once this renewal fee has been paid, the annual renewal fee system under the Patent Regulations 2014 will apply. For example, where the application discussed above is not granted until 26 November 2014, the first renewal fee will be payable on 26 March 2015. However, the next renewal fee will be due on 20 September 2015 (the anniversary of the filing date) and annually thereafter.
Due to the introduction of maintenance fees, there is no equivalent of this “late seal” system for applications to which the Patents Act 2013 applies.
Once the Patents Act 2013 is bedded in, the process of annual renewals will be simple and bring New Zealand into line with the rest of the world. IPONZ will issue reminders as to when renewal fees are due, which should assist in the transition; however they caution that this reminder system should not be relied upon. If you are not using a patent attorney to pay your maintenance/renewal fees, we recommend at least having a patent attorney summarise when they are due for cases during this transitional period.
Most cases will have transitioned to the annual renewal fee system within three years. However, applicants will need to be cautious of the first renewal date for divisional applications which are granted under the Patents Act 1953 for some years to come.
David Nowak - May 2014
