Patents: Timing and Costs associated with Amendments in New Zealand

australia or new zealand kangaroo road sign next to kiwi road signContinuing on with my article in relation to timing and costs associated with amendments in Australia, this article delves into differences in New Zealand. Despite the relatively close proximity of the two countries, the timing and costs in New Zealand and Australia are quite different.

Pre-prosecution

An amendment to the claims and/or specification prior to requesting examination in New Zealand is not deemed a voluntary amendment fee (NZ$250). This is somewhat different to Australia where amendments prior to examination are a voluntary amendment. In this regard, the New Zealand Patent Office (IPONZ) views the amendments as lowering the burden of examination on the Examiner. It is assumed that the amendments will bring the claims closer to allowance.

As a side note, New Zealand excess claim fees are levied for each 5th claim (NZ$120) after the 25th claim. In this regard, the excess claim ‘number’ is based on the maximum number of claims during prosecution. As such, reducing the claims during prosecution will not reduce the excess claim fee applicable at allowance. Consideration should be given to reducing the total number of claims prior to requesting examination to ensure that excess claim fees are minimized.

During prosecution

During prosecution, amendments to the specification and/or claims do not incur a voluntary amendment fee only if the amendments are for addressing an objection raised in an Examination Report. Any amendment that is deemed not addressing an objection will incur a voluntary amendment fee. For instance, addition of new claims will incur a voluntary amendment fee because they are not directed to addressing an objection. This is somewhat different to Australia where essentially any amendment during prosecution does not incur a voluntary amendment fee.

After prosecution

Amendments made after acceptance and grant will incur a greater voluntary amendment fee (NZ$500). Please note that it also only permissible to amend the claims such that there is a reduction in claim scope. That is, the claims as amended must fall completely within the scope of the unamended claims.

Amendments made during this period will be advertised in the Official Journal for opposition purposes. The amendments will be advertised for a period of two (2) months.

As you will see there are subtle differences between the timing and fees associated with amendments in New Zealand and Australia. As such, there are strategies which we can employ to minimize the costs associated with amendments. Please do not hesitate to contact our patent attorneys if you require any further information regarding amendments in New Zealand or Australia.

 

written by David Tso, Senior Associate



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