In this guideline
Costs awards
Section 95(1) – Patents Act 1953
Section 212 – Patents Act 2013
The Commissioner normally orders the unsuccessful party in hearing proceedings to pay costs to the successful party.
In most cases, costs are awarded in accordance with the following schedule of costs. However, when a party’s conduct warrants it, the Commissioner may depart from the standard schedule of costs. The schedule of costs is not intended to reflect the ‘actual costs’ of the parties.
The Commissioner normally awards costs once the proceedings have been concluded, for example, when:
- one party withdraws from the proceedings or is deemed to have abandoned the proceedings or the application through a regulated process, or
- the Commissioner issues a decision without any agreement as to costs having been reached by the parties.
Costs awards reflect the steps that had been completed when the proceedings were concluded.
Schedule of costs
IPONZ reviewed and consulted on its schedule of costs awards in 2018. As a result, the following schedule of costs applies to patent proceedings from 1 February 2019 onwards.
| Costs awards | Costs for proceedings filed before 1 February 2019 | Costs for proceedings filed from 1 February 2019 |
|---|---|---|
| Preparing and filing Notice of Opposition/Application for Revocation+ | $500 | $700 |
| Preparing and filing counter-statement* | $300 | $300 |
| Preparing and filing opponent’s/applicant for revocation’s evidence+ | $800 | $1200 |
| Receiving and perusing opponent’s/applicant for revocation’s evidence* | $400 | $500 |
| For preparing and filing applicant’s/owner’s evidence* | $800 | $1200 |
| Receiving and perusing applicant’s/owner’s evidence+ | $400 | $500 |
| For preparing and filing opponent’s/applicant for revocation’s evidence strictly in reply+ | $200 | $500 |
| Receiving and perusing opponent’s/applicant for revocation’s evidence strictly in reply* | $100 | $200 |
| Preparation of case for hearing+* | $500 | $800 |
| Attendance at hearing by counsel+* | $180 per hour or $810 per day | $220 per hour or $1210 per day |
| Disbursements | Costs for proceedings filed before 1 February 2019 | Costs for proceedings filed from 1 February 2019 |
|---|---|---|
| An opponent or applicant for revocation receiving an award of costs may expect to be awarded its Notice of Opposition or Application for Revocation fee+ | $350 | $350 |
| Hearing fee will be awarded to the successful party+* | $850 (under 2013 Act) $750 (under 1953 Act) | $850 (under 2013 Act) $750 (under 1953 Act) |
| Preparing bundle of documents | N/A | $150 |
Notes:
+ Awards to an opponent.
* Awards to an applicant.