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
New Zealand patent applications are examined automatically (i.e. without requirement for a request for examination by applicant). If there are lawful grounds of objection (eg 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.
Once the examiner is satisfied that there are no outstanding issues, the application is accepted, and 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.
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 claims that contain overlapping subject matter. No new matter is allowed in a divisional application.
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.
The specification should include details of the deposit including the accession number of the deposit, the name of the depository institution. A full morphological description and details of the deposit should also be included in the specification.
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.
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