Patents Amendment Regulations 2019
Patsy Reddy, Governor-General
Order in Council
At Wellington this 16th day of September 2019
Present:
Her Excellency the Governor-General in Council
These regulations are made under section 114(1) and (2)(k)  of the Patents Act 1953
(as continued in effect by section 7(2) of the Patents (Trans-Tasman Patent Attorneys
and Other Matters) Amendment Act 2016) and sections 243 and 244 of the Patents
Act 2013 on the advice and with the consent of the Executive Council.
Contents
Page
1 Title 2
2 Commencement 2
Amendment to Patents Regulations 1954
3 Amendment to Patents Regulations 1954 2
Amendments to Patents Regulations 2014
4 Amendments to Patents Regulations 2014 2
5 New regulation 3A inserted (Transitional, savings, and related
provisions)2
3A Transitional, savings, and related provisions 3
6 Regulation 5 amended (Amount of fees and penalties) 3
7 Regulation 6 amended (Time of payment of fees and penalties) 3
8 Regulation 9 amended (Periods within which maintenance fees
must be paid)32019/220
19 Regulation 10 amended (Period within which renewal fees must be
paid)3
10 New regulation 11A and cross-heading inserted 3
Excess claims fee
11A Excess claims fee 4
11 Regulation 66 amended (Fees payable for international
applications and Treaty applications)5
12 Regulation 98 amended (Circumstances in which grant of patent
may be postponed)5
13 Regulation 172 amended (Hearing fee) 5
14 New Schedule 1AA inserted 5
15 Schedule amended 5
Schedule 1
New Schedule 1AA inserted in Patents Regulations 20146
Schedule 2
Part 1 of Schedule of Patents Regulations 2014 replaced7
Regulations
1 Title
These regulations are the Patents Amendment Regulations 2019.
2 Commencement
These regulations come into force on 13 February 2020.
Amendment to Patents Regulations 1954
3 Amendment to Patents Regulations 1954
(1) This regulation amends the Patents Regulations 1954.
(2) In Schedule 1, replace items 2 and 3 with:
2 On filing complete specification 500.00
3 Application to amend complete specification before acceptance 150.00
3A Application to amend complete specification after acceptance 500.00
Amendments to Patents Regulations 2014
4 Amendments to Patents Regulations 2014
Regulations 5 to 15 amend the Patents Regulations 2014.
5 New regulation 3A inserted (Transitional, savings, and related provisions)
After regulation 3, insert:r 1 Patents Amendment Regulations 2019 2019/220
23A Transitional, savings, and related provisions
The transitional, savings, and related provisions set out in Schedule 1AA have
effect according to their terms.
6 Regulation 5 amended (Amount of fees and penalties)
In regulation 5, replace “the Schedule” with “Schedule 1”.
7 Regulation 6 amended (Time of payment of fees and penalties)
(1) In regulation 6 , after “Fees and penalties ”, insert “, other than an excess claims
fee,”.
(2) In regulation 6, insert as subclause (2):
(2) Any excess claims fee payable under regulation 11A must be paid after the
Commissioner has informed the applicant that it is payable.
8 Regulation 9 amended (Periods within which maintenance fees must be
paid)
In regulation 9(2), replace the example with:
Example
M files a complete specification on 1 May 2017.
The first maintenance fee is due on 1 May 2021. That first maintenance fee must
be paid between 1 February 2021 and 1 November 2021.
The maintenance fee in any year is $200 if M pays the fee between 1 February
and 1 May. The maintenance fee in any year is $300 if M pays the fee between
2 May and 1 November ( see Schedule 1).
If M does not pay the maintenance fee by 1 May in any year, the Commissioner
may postpone the grant of the patent ( see regulation 98(a)).
M’s patent application is treated as abandoned under section 35(2) of the Act if M
does not pay the maintenance fee by 1 November in any year.
If M pays a maintenance fee between 1 February and 30 April in any year and M’s
patent is granted before 1 May, the maintenance fee is treated as the renewal fee
for that anniversary date.
If M’s patent is granted on 25 January 2023, M’s last maintenance fee is the one
that must be paid by 1 November 2022.
9 Regulation 10 amended (Period within which renewal fees must be paid)
In regulation 10, example, replace “the Schedule” with “Schedule 1”.
10 New regulation 11A and cross-heading inserted
After regulation 11, insert:2019/220 Patents Amendment Regulations 2019 r 10
3Excess claims fee
11A Excess claims fee
(1) This regulation applies if —
(a) an applicant asks under section 64 of the Act for an examination of the
patent application and the complete specification relating to the applica-
tion; and
(b) the Commissioner accepts the specification under section 74 of the Act;
and
(c) at any time between the request under section 64 and the acceptance of
the specification, the specification contains 30 or more claims concur-
rently.
(2) The applicant must pay an excess claims fee for the examination.
(3) After accepting the specification, the Commissioner must —
(a) inform the applicant that an excess claims fee is payable; and
(b) specify the amount of the fee; and
(c) advise the applicant that the grant of the patent may be postponed until
the fee has been paid.
(4) However, the Commissioner must waive the excess claims fee, or refund it at
the applicant’s request, if —
(a) the applicant withdraws the application; or
(b) the application is treated as abandoned under these regulations or the
Act; or
(c) the grant of the patent is opposed under section 92 of the Act and the
Commissioner’s decision, or the decision on appeal, finally disposing of
the case is that the patent should not be granted; or
(d) the Commissioner refuses to grant the patent, in accordance with section
98 of the Act.
(5) A waiver or refund under subclause (4)(b) no longer applies (and the applicant
must repay any refunded excess claims fee) if the application is restored by
order under section 128 of the Act.
(6) In this regulation, specification  includes a specification as amended under sec-
tion 40 of the Act.
Example
J makes a request under section 64 of the Act for J’s patent application and com-
plete specification to be examined. At the time of the request, the complete specifi-
cation contains 28 claims.
J amends the complete specification twice under section 40 of the Act before it is
examined. The first amendment removes 2 claims and the second amendment
adds 12 claims. The complete specification now contains 38 claims.r 10 Patents Amendment Regulations 2019 2019/220
4The complete specification is examined under section 65 of the Act and the exam-
ination report is sent to J.
In response to the report, J amends the complete specification by removing 3
claims and files a notice of entitlement under section 73 of the Act.
The amended complete specification with 35 claims is examined and accepted
under section 74 of the Act.
The number of claims for the purpose of calculating the excess claims fee is 38.
The excess claims fee payable by J is $240 ($120 for the 30th claim, and $120 for
the 35th claim) ( see Part 1 of Schedule 1).
The Commissioner advises J that an excess claims fee of $240 is payable and that
the grant of the patent may be postponed until it has been paid.
J fails to pay a maintenance fee that is due under section 35 of the Act, and J’s
patent application is treated as abandoned under that section. The excess claims
fee is waived.
J makes a request to the Commissioner for the restoration of J’s patent applica-
tion, under section 125 of the Act. J’s request is successful and the Commissioner
extends the period for J to pay the outstanding maintenance fee. J pays the main-
tenance fee.
J is required to pay the excess claims fee before the patent is granted ( see regula-
tion 98).
11 Regulation 66 amended (Fees payable for international applications and
Treaty applications)
In regulation 66(1), replace “the Schedule” with “Schedule 1”.
12 Regulation 98 amended (Circumstances in which grant of patent may be
postponed)
After regulation 98(a), insert:
(aa) an excess claims fee payable under regulation 11A has not been paid; or
13 Regulation 172 amended (Hearing fee)
In regulation 172(1), replace “the Schedule” with “Schedule 1”.
14 New Schedule 1AA inserted
Insert the Schedule 1AA set out in Schedule 1 of these regulations as the first
schedule to appear after the last regulation of the Patents Regulations 2014.
15 Schedule amended
(1) In the Schedule heading, after “ Schedule ”, insert “ 1”.
(2) In the Schedule , replace Part 1 with the Part 1 set out in Schedule 2 of these
regulations.2019/220 Patents Amendment Regulations 2019 r 15
5Schedule 1
New Schedule 1AA inserted in Patents Regulations 2014
r 14
Schedule 1AA
Transitional, savings, and related provisions
r 3A
Part 1
Provision relating to Patents Amendment Regulations 2019
1 Transitional provision relating to maintenance and renewal fees
(1) In this clause, commencement date  means the date on which the Patents
Amendment Regulations 2019 come into force.
(2) This clause applies to the following items in Part 1 of Schedule 1:
(a) the 1st, 2nd, and 3rd items (renewal fees):
(b) the 7th and 8th items (maintenance fees).
(3) Those items, as in force immediately before the commencement date, continue
to apply to fees in respect of which the period of 3 months referred to in regula-
tion 9(1)(a) or 10 begins before the commencement date (regardless of whether
they are paid within that period).Schedule 1 Patents Amendment Regulations 2019 2019/220
6Schedule 2
Part 1 of Schedule of Patents Regulations 2014 replaced
r 15
Part 1
Matters under Act and regulations
Section of Act FeeAmount (NZ$)
(exclusive of GST)
20(2) Renewal fee due on the 4th, 5th, 6th, 7th, 8th, and 9th
anniversary of the filing date of the complete
specification200
20(2) Renewal fee due on the 10th, 11th, 12th, 13th, and
14th anniversary of the filing date of the complete
specification450
20(2) Renewal fee due on the 15th, 16th, 17th, 18th, and
19th anniversary of the filing date of the complete
specification1,000
21(2)(c) Penalty payable for a request to extend the period for
payment of a renewal fee100
32 Patent application accompanied by a provisional
specification100
32 Patent application accompanied by complete
specification (including convention applications)250
35(1) Maintenance fee due on the 4th and each subsequent
anniversary of the filing date of the complete
specification if the fee is paid during the period
prescribed by regulation 9(1)(a)200
35(1) Maintenance fee due on the 4th and each subsequent
anniversary of the filing date of the complete
specification if the fee is paid during the further period
prescribed by regulation 9(1)(b)300
40 Amendment by applicant of the complete specification
before acceptance (other than in response to an
objection raised in a report issued by the
Commissioner under section 65 or 97 of the Act)150
64, 94, 95 Request for examination or re-examination 750
64 Excess claims fee for examination, for each 5th claim
referred to in regulation 11A(1)(c) in excess of 25120
85(3) Request for leave to amend the complete specification
after acceptance500
87, 92, 116(3), 123,
127, 202(4)Notice of opposition 350
112(1) Application to revoke a patent 350
117(2), 125(2) Request for restoration of a patent or patent
application600
Various Request for a hearing 8502019/220 Patents Amendment Regulations 2019 Schedule 2
7Michael Webster,
Clerk of the Executive Council.
Explanatory note
This note is not part of the regulations, but is intended to indicate their general effect.
These regulations, which come into force on 13 February 2020, amend the Patents
Regulations 1954 (the 1954 Regulations ) and the Patents Regulations 2014 (the 2014
Regulations ) by—
• increasing fees payable to the Commissioner of Patents; and
• introducing a new excess claims fee payable to the Commissioner of Patents
for the examination of patent applications with complete specifications con-
taining 30 or more claims.
Fees under the 1954 Regulations apply to some patent applications that were made
under the Patents Act 1953 (before its replacement by the Patents Act 2013). Those
fees are increased as follows:
• filing of the complete specification relating to a patent application: increase
from $250 to $500:
• amendment of the complete specification before it is accepted: increase from
$60 to $150:
• amendment of the complete specification after it is accepted: increase from $60
to $500.
Fees under the 2014 Regulations are increased as follows:
• maintenance of a patent application on the fourth and subsequent anniversaries
of the filing date of the complete specification: increase from $100 to $200 if
paid within the 3 months ending with the anniversary date, and increase from
$150 to $300 if paid within the 6 months after the anniversary date:
• request for the examination or re-examination of a patent application and com-
plete specification: increase from $500 to $750:
• request for leave to amend the complete specification after it has been
accepted: increase from $150 to $500:
• renewal of a patent on the fourth to ninth anniversaries of the filing date of the
complete specification: increase from $100 to $200:
• renewal of a patent on the 10th to 14th anniversaries of the filing date of the
complete specification: increase from $200 to $450:
• renewal of a patent on the 15th to 19th anniversaries of the filing date of the
complete specification: increase from $350 to $1,000:
• request to extend the period for payment of a renewal fee: increase from $50 to
$100:
• request to restore a patent or patent application: increase from $100 to $600.Explanatory note Patents Amendment Regulations 2019 2019/220
8The new excess claims fee applies to the examination of a patent application and
complete specification in cases where—
• the Commissioner accepts the specification; and
• at any point between the applicant’s request for examination and the Commis-
sioner’s acceptance of the specification, the specification contains 30 or more
claims at the same time.
The excess claims fee is $120 for each fifth claim over 25, so it is $120 if there are 30
to 34 claims, $240 if there are 35 to 39 claims, and so on. The Commissioner may
postpone the grant of the patent until the excess claims fee has been paid.
Regulatory impact assessment
The Ministry of Business, Innovation, and Employment produced a regulatory impact
assessment on 16 November 2018 to help inform the decisions taken by the Govern-
ment relating to the contents of this instrument.
A copy of this regulatory impact assessment can be found at—
• https://www.mbie.govt.nz/have-your-say/consultation-on-changes-to-fees-
charged-by-the-intellectual-property-office-of-nz/
• http://www.treasury.govt.nz/publications/informationreleases/ria
Issued under the authority of the Legislation Act 2012.
Date of notification in Gazette : 19 September 2019.
These regulations are administered by the Ministry of Business, Innovation, and Employment.
Wellington, New Zealand:
Published under the authority of the New Zealand Government—20192019/220 Patents Amendment Regulations 2019 Explanatory note
9