sampa®k & co

Intellectual Property Lawyers | Patent & Trade Mark Attorneys | Notaries

Intellectual Property Lawyers

Patent & Trade Mark Attorneys

Notaries

An International IP Practice


New Zealand | Renewal Requirements | Patents

National continuation | renewal fees are payable in New Zealand in order to keep the patent application alive or a granted patent in force, otherwise the application or patent will lapse or cease in due course. The renewal requirements for the various types of patents are as follows.


Standard Patent | Filed on after 13 September 2014 | Maximum Term 20 Years

Annual Fees

These patent applications are governed by the Patent Act 2013. Annual national continuation or renewal fees apply, the first due before the 4th anniversary of the filing date of the patent application and then due before every anniversary thereafter until the last which falls due before the 19th anniversary.

The annual fees can be paid up to 3 months before they fall due.

Late Renewal | Risks

Continuation / renewal fees can be paid up to a maximum 6 months after they fall due (the renewal grace period) but must be accompanied by an additional monthly late fee for each month, or part of a month after the due date.

The actual lapsing of an application/patent does not occur until the expiry of this 6 month renewal grace period but the lapsing of the application is backdated to the date it was originally due.

Please note there is a risk associated with late renewals and it is recommended that renewals are paid good time before they fall due.

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Standard Patent | National Phase of PCT | National Phase on or after 13 September 2014 | Maximum Term 20 Years

These patent applications are governed by the Patent Act 2013. The renewal requirements, grace periods and late payment risks provided above for a standard patent filed on after 13 September 2014 also apply to these national entry cases.

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Standard Patent | Filed before 13 September 2014 | Maximum Term 20 Years

Annual Fees |Transitional Provisions

Patent applications filed before 13 September 2014 ('old act cases') were filed under the Patent Act 1953 (the old act). Under the old act no national continuation fees applied to ld act cases prior to grant however after grant a renewal fee would fall due before the 7th filing date anniversary, 10th filing date anniversary and 13th filing date anniversary.

Under the current act transition provisions apply to old act cases and annual renewal fees now apply to old act cases but will not start to apply to an old act case until a renewal calculated under the old act for that old act case falls due.

For example if a patent was granted 25 March 2015 pursuant to a patent application filing date of 10 January 2012 then it would be an old act case. Once this old case is granted the first applicbale renewal fee calcualted under the old act would fall due before 10 Janaury 2019 (the 7th anniversary of the filing date). Under the current act transiton provisions annual renewal fees would not commence to be payable untill 10 Janaury 2019.

Renewal fees can be paid up to 3 months before they fall due.

Late Renewal | Risks

Continuation / renewal fees can be paid up to a maximum 6 months after they fall due (the renewal grace period) but must be accompanied by an additional monthly late fee for each month, or part of a month after the due date.

The actual lapsing of an application/patent does not occur until the expiry of this 6 month renewal grace period but the lapsing of the application is backdated to the date it was originally due.

Please note there is a risk associated with late renewals and it is recommended that renewals are paid good time before they fall due.

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Divisional Application for a Standard Patent

Date of Patent

The renewal time limits in the case of divisional patent applications is referable to the “date of the patent” and not the filing date of the divisional application. The “date of the patent” in the case of a divisional application is the filing date of the earliest parent application in the preceding chain of applications that led to the divisional.

That is if a continuation | renewal fee applies to a parent application | patent then the same continuation | renewal fee and time limit will also apply to the divisional application.

Renewal Fees - Parent Applications Having Filing Date on after 13 September 2014

The applicable renewal fees and late renewal provisions that apply is the same as the renewal requirements provided above for a standard patent filed on or after 13 September 2014.

Renewal Fees - Parent Applications Having Filing Date before 13 September 2014

The applicable renewal fees and late renewal provisions that apply is the same as the renewal requirements provided above for a standard patent filed before 13 September 2014.

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Patent of Addition | Maximum Term Is Contingent on the Term of the Live Parent

Before Grant of the Patent of Addition

Before a patent of addition is granted the same renewal requirements, grace periods and late payment risks provided above for a standard patent also apply to application for a patent of addition, ie the application should be maintained like a normal standard patent application by paying annual maintenance fees before the 4th filing anniversary of the parent.

After Grant of the Patent of Addition

Once a patent of addition is granted, annual maintenance fees are not required on the patent of addition. However, once granted the parent application needs to be maintained for the patent of addition to remain in force.

Once the parent patent ceases, so does the patent of addition.

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King George Chambers Suite 415, 375 George St. Sydney NSW 2000 Australia

T +61 2 9299 7731 F +61 2 9299 3589 office@spco com au www.spco.com.au skype spcoip ABN 028 892 863

King George Chambers Suite 415, 375 George St. Sydney NSW 2000 Australia

T +61 2 9299 7731 F +61 2 9299 3589 office@spco com au

www.spco.com.au skype spcoip ABN 028 892 863

King George Chambers

Suite 415, 375 George St.

Sydney NSW 2000 Australia

T +61 2 92997731

F +61 2 92993589

office@spco com au www.spco.com.au

skype spcoip ABN 028 892 863