New Zealand - from filing to grant

Our patent attorneys are registered to practice before the New Zealand Patent Office, and they routinely practice on all aspects of New Zealand patent prosecution.

New Zealand National phase entry

New Zealand national phase applications must be filed by 31 months from the earliest claimed priority date. For national phase entry, generally all that is required from you is the PCT application number or International (WO) publication number and, if the specification is not in English, a verified English translation. View filing requirements in New Zealand.

New Zealand Convention applications

New Zealand is a Convention country, meaning that a New Zealand application can be validly filed within 12 months from filing a priority application filed according to the Paris Convention for Protection of Industrial Property. Generally all we require from you is a copy of the specification of the priority application and if the specification is not in English, a verified English translation. View filing requirements in New Zealand.

Late filing and extensions of time

Late entry into the national phase in New Zealand is permissible where the failure to enter the national phase was unintentional and no undue delay has occurred in making the late entry request. Within 2 months of such a request, it is necessary to file evidence in the form of a Statutory Declaration or affidavit by a person with first hand knowledge of the history.

It is also possible to extend the time for filing a convention application although the criteria is more stringent and will be refused where the applicant or has agent has failed to act with due diligence.

Examination and acceptance of a New Zealand patent application

2013 Patents Act cases

1953 Patents Act cases

Request for examination

A request for examination must be filed within 2 months of receiving a direction from the Patent Office to file a request, or within 5 years of the filing date of the application. In the case of divisional applications, it is 5 years from the filing date of the original (parent) application.

Examination

If there are lawful grounds of objection (e.g. the invention is not novel) a report will be issued giving the applicant a substantive response deadline set by the Commissioner. A ‘substantive response’ is considered to be one that gives a fair and reasonable answer (including amendments) to each of the objections raised. For first reports, this deadline is typically 6 months, although may be as short as 3 months for divisional applications containing claims substantially the same as the parent. Subsequent reports will typically set a 3 month substantive response deadline.

Overall, the applicant is given a maximum of 12 months to achieve acceptance in New Zealand.

If the application is not accepted by this time, it will lapse. One alternative is to file a divisional application (see below) if acceptance cannot be achieved by the due date, subject to the divisional filing being able to meet the 5 year deadline for requesting examination.

Acceptance

Once the examiner is satisfied that there are no outstanding issues, the application is accepted and advertised for a period of 3 months for opposition. If there is no pre-grant opposition, or if following opposition there is found to be patentable subject matter in the application, the New Zealand Patent Office will grant the patent. A Patent Deed is issued and sent to the patent applicant or their attorneys.

Request for examination

Examined automatically (i.e. without a requirement for a request for examination by applicant). 

Examination

If there are lawful grounds of objection (e.g.  the invention is not novel) a report will be  issued giving the applicant a prescribed period to have the application accepted. Currently the applicant is given a maximum of 18 months to achieve acceptance in New Zealand. If the application is not accepted by this time, it will lapse. One alternative is to file a divisional application (see below) if acceptance cannot be  achieved by the due date. 

Acceptance

Once the examiner is satisfied that there are no outstanding issues, the application is accepted and advertised for a period of 3 months for opposition. If there is no pre-grant opposition, or if following opposition there is found to be patentable subject matter in the application, the New Zealand Patent Office will grant the patent. A Patent Deed is issued and sent to the patent applicant or their attorneys.

Divisional applications

2013 Patents Act cases

1953 Patents Act cases

Divisional applications

A New Zealand divisional application must be filed before acceptance of a parent application. It cannot be filed after this time. As the New Zealand examiner determines when acceptance will occur, we strongly advise our clients seeking divisional application protection to file a divisional application no later than the time of responding to a New Zealand examination report.

Examination of a divisional application must be requested within 5 years of the date of filing of the original application. For a convention filing,  this will mean 5 years from filing the application in New Zealand. For a PCT filing, this will mean 5 years from the international filing date. Practically speaking, this sets a 5 year deadline from the filing date of the first New Zealand application in which to file all divisional applications.

We therefore recommend planning ahead and, if necessary, filing one or more divisional applications to ensure complete flexibility in being able to pursue additional inventions where a lack of unity is found, or in the event that continued prosecution of subject matter not allowed by the acceptance deadline.

There are certain limitations on the scope of New Zealand divisional applications. In particular, the Commissioner may require a divisional applicant to amend the divisional or parent specifications to remove claim/s for substantially the same subject matter.

Divisional applications

A New Zealand divisional application must be filed before acceptance of a parent application. It cannot be filed after this time. As the New Zealand examiner determines when acceptance will occur, we strongly advise our clients seeking divisional application protection to file a divisional application no later than the time of responding to a New Zealand examination report.

There are certain limitations on the scope of New Zealand divisional applications. In particular, the Commissioner may require a divisional applicant to amend the divisional or parent specifications to remove claim/s for substantially the same subject matter.

All divisional applications filed from 1952 Act cases remain subject to the provisions of the 1952 Act.




 

Micro-organisms

2013 Patents Act cases

1953 Patents Act cases

Despite New Zealand not being a signatory to the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure, the 2013 Act has introduced deposit requirements for inventions relating to micro-organisms.

In practice, a deposit of the micro-organism must be made on or before the filing date of the application, but preferably before the priority date to ensure the ability to rely on the priority date for a claim to the micro-organism defined only by the deposit.

The Patent Regulations currently indicate that the deadline to provide the New Zealand Patent Office with the deposit receipt is 3 months from making the deposit. In many circumstances however, this deadline will occur before an application is even filed in New Zealand. While the new legislation is being amended to correct this issue, the New Zealand Patent Office is requiring applicants to apply for an extension of time in which to provide a copy of the deposit receipt, preferably at the time of entering the national phase or filing of the convention application. No fees are payable in this situation.

The specification should include details of the deposit including the accession number of the deposit and the name of the depository institution. A full morphological description and details of the deposit should also be included in the specification to the extent possible.

New Zealand is not a signatory to the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure. However, the New Zealand Patent Office generally applies the Treaty to applications relating to micro-organisms as if it was a signatory and so will nonetheless take the deposit into consideration when determining whether or not the description is sufficient.

In practice, a deposit of the micro-organism must be made on or before the filing date of the application, but preferably before the priority date to ensure the ability to rely on the priority date for a claim to the micro-organism defined only by the deposit. The specification should include details of the deposit including the accession number of the deposit and the name of the depository institution before filing of the specification as a convention or PCT application. A full morphological description and details of the deposit should also be included in the specification to the extent possible.

It may be possible to amend the specification to include details of micro-organism deposit if they have not been included at the filing date. We can advise you further on what is required to  amend the specification in order to comply with  the requirements.

At this stage, there is no formal requirement to furnish a copy of the micro-organism deposit receipt to the New Zealand Patent Office.


Meet our Patent Administrators

Rebecca Carbarns: Team Leader (Records and Renewals Patent Administration)

Patricia Harder: Team Leader (Sydney Patent Administration)

Pia Mucilli: Team Leader (AU/NZ Patent Administration)

Clare Taylor: Team Leader (Foreign Patent Administration)