Maintenance of New Zealand Patent

To ensure your intellectual property rights remain enforceable and aligned with your business needs, ongoing maintenance is essential. From paying renewal fees to updating ownership details, the Intellectual Property Office of New Zealand (IPONZ) requires specific actions to keep your patent in force.

Renewals and Maintenance

To keep a patent or patent application alive, you must pay periodic fees. These ensure that your rights do not lapse or become abandoned. Even before your patent is granted, “maintenance fees” may be required. These are due on the 4th anniversary of the filing date of your complete specification and every subsequent year while the application is pending.

Once granted, these annual payments are called “renewal fees.” They are also due annually from the 4th anniversary onwards. Fees must be paid within specific windows. Missing a deadline can result in the patent lapsing. If a fee is missed, it can sometimes be paid late with an additional penalty fee, but this should be avoided to prevent risk to your rights.

We monitor these critical dates for you, ensuring payments are made on time so you never risk losing your patent due to an administrative oversight.

Changes in Ownership

Business structures change, companies merge, assets are sold, and names are updated. It is vital that the patent register reflects the current legal owner of the invention. If the register is inaccurate, it can create significant hurdles during enforcement or licensing deals. If you sell or assign your patent, the new owner must be recorded on the register. This requires filing a request via the IPONZ case management facility. You must provide digital or scanned evidence of the transaction, such as a Deed of Assignment, Sale and Purchase Agreement, or a Certificate of Merger. The new owner must have a valid address for service in New Zealand or Australia.

If the owner remains the same but has legally changed their name (e.g., a company rebrand), this must be updated on the client record, not just the patent case. Evidence such as a Certificate of Incorporation on Change of Name is required.

Registering Licenses and Interests

If you license your patent to a third party or use it as security for a loan (mortgage), these interests should be recorded on the register. Recording a license or interest puts third parties on notice of these rights. It is particularly important for licensees to ensure their rights are recognized.

We can file a request to “Change or Add Licensee/Mortgagee/Financial Interest” on your behalf. This requires uploading evidence of the agreement, such as the License Agreement or Mortgage Deed. Note that licenses can only be recorded for granted patents, not pending applications.

Restoration of Lapsed Patents

If a renewal fee is missed and the grace period expires, the patent will lapse. All is not necessarily lost, but reviving the patent is a complex legal process known as restoration. To successfully restore a patent, you must prove two things, that the failure to pay the fee was unintentional and there was no undue delay in applying for restoration once the error was discovered.

You cannot simply ask for restoration; you must file a Statutory Declaration or Affidavit. This legal document must explain the circumstances of the failure (e.g., a docketing error) and prove that it was not a deliberate choice to let the patent lapse.

Once a restoration request is accepted, it is advertised in the IPONZ Journal. Third parties have two months to oppose the restoration if they believe the failure was intentional or the delay was too long.

Restoration is not guaranteed and attracts higher government fees. It is a safety net, not a strategy.

Surrender and Withdrawal

Before a patent is granted, you can choose to withdraw the application. This might be done to prevent publication (if done early enough) or to stop costs if the commercial value has dropped. Once withdrawn, it is generally difficult to reinstate.

Also, after a patent is granted, you can offer to surrender it if you no longer wish to maintain the monopoly. This is a formal process where you offer to give up your rights, often used to avoid the costs of defending a revocation action or paying further renewal fees.

Contact us today

Maintaining a patent portfolio requires diligence. From the routine payment of renewals to the complex drafting of restoration evidence, our firm acts as your partner, ensuring your intellectual property remains secure, valid, and ready to work for your business.

Ready to streamline your IP management? Contact us to discuss how we can handle your renewals and portfolio updates.