Patents
Filing to grant
Our patent attorneys are registered to practise before the New Zealand Patent Office, and they routinely practise 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.
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.
Examination and acceptance of a New Zealand application
A New Zealand patent application is not examined automatically. In order to have the application examined, a request for examination must be filed within 2 months of receiving a direction from the Patent Office to file such a request or, in absence of a direction being issued, within 5 years of the filing date of the application. In the case of divisional applications, the deadline for requesting examination is 5 years from the filing date of the first New Zealand application, which applies to all subsequently filed divisional applications. 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.
If there are lawful grounds of objection, an examination report will be issued setting out these objections and giving the applicant a substantive response deadline set by the Commissioner. A ‘substantive response’ is considered to be one that gives a fair and substantial answer (including amendments) to each of the objections raised. For first examination reports, this deadline is typically 6 months, although may be as short as 2 months for divisional applications that contain at least some claims that are substantially the same as the parent. Subsequent reports will typically either set a 3 month substantive response deadline, or keep the same response deadline as the first report, whichever is longer. Overall, the applicant is given a maximum of 12 months to achieve acceptance (allowance) in New Zealand with all objections overcome.
If the application is not accepted within 12 months, it will lapse. If acceptance cannot be achieved within that timeframe, one option is to file a divisional application (see below), subject to the divisional filing being able to meet the 5 year deadline for requesting examination.
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. The applicant can also elect to delay acceptance up to 12 months from the date of the first report. In this case, once all objections are overcome, the applicant can either elect to remove the delay of acceptance or maintain the delay. If the delay is maintained, the application will then proceed to acceptance after the delay period expires. Delaying acceptance may be useful in allowing time to decide on filing divisional applications particularly in view of amendments made to the parent application during its examination.
Following advertisement of acceptance, 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.
New Zealand is a participating country in the Global Patent Prosecution Highway (GPPH) agreement.
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, unless a delay of acceptance is in place (depending on when that delay of acceptance will expire).
As noted above, examination of a divisional application must be requested within 5 years of the filing date of the original (parent) application.
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.
Micro-organisms
New Zealand is now a signatory to the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure. For inventions relating to micro-organisms, patent applicants are required to provide details of any deposits made in accordance with the Treaty.
In order to satisfy the deposit requirements as set forth in the Patents Act, the 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.
A copy of the deposit receipt must be provided to the Commissioner within12 months of the first examination report (which is the same as the acceptance deadline). If the receipt is not in English, a verified translation of the receipt must be provided.
The complete specification as filed must include all relevant information relating to the characteristics of the micro-organism known to the applicant at the time of filing of the application. Relevant information includes, but is not limited to, morphological, taxonomic and biochemical characteristics, and scientific name of the micro-organism. Details of the deposit (accession number, and name of depository institute) must also be included in the specification as filed.
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. Accompanying such a request should be evidence in the form of a Statutory Declaration or affidavit providing a full explanation of the events which led to the failure to enter the national phase on time.
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.
A number of other deadlines are extendible, but often the grant of these extensions is at the discretion of the Commissioner.
Oppositions
Opposition proceedings will commence if, within the opposition period, a third party opposes certain opposable actions such as the grant of a patent or a post-acceptance amendment. Such proceedings commence by an opponent filing a notice of opposition. Generally speaking, there are fixed deadlines for taking every step in the opposition process. In general, the deadline for filing a notice of opposition for:
- opposing the grant of a patent is 3 months from the publication by the Patent Office of the accepted complete specification; and
- opposing a proposed post-acceptance amendment is 2 months from the publication by the Patent Office of the request for leave to amend the specification.
If you have an interest in a particular application and are considering an opposition, it is imperative to monitor for any relevant advertisement on it by the Patent Office. We offer a searching and watch service to assist with the watching requirements of our clients.
Re-examination
There is an option for re-examination of accepted patent applications or granted patents in New Zealand. A third party can make a request for re-examination and submit relevant documents to support an allegation for refusal of grant or revocation of a patent, which the examiner will take into consideration whilst re-examining the application/patent.
The grounds on which re-examination can be requested prior to grant of the application are the same as those for opposition, and those requested after grant of the patent are the same as those for revocation. These pre- and post-grant grounds are essentially the same and include, amongst others, that the invention claimed is not a patentable invention (including that the invention is not useful, novel or inventive).
The person who requested the re-examination does not have any rights to be heard or participate in the re-examination proceeding, nor to appeal the Commissioner’s decision.
Pharmaceuticals
New Zealand does not have provisions for a patent term extension for pharmaceutical substances.
New Zealand currently provides data protection of 5 years from the date of marketing approval for a new pharmaceuticals.
Searching
Our attorneys are all trained in the formulation of searching strategies, whether for the purpose of determining the state of the art relating to an invention, competitor landscape searching or freedom to operate (FTO) analysis. At the option of our clients, we can perform searching in-house or contract searching out to any of a variety of specialist searching agents in our network, either in New Zealand or overseas. Please contact us to discuss your needs.
Design
Filing to registration
A registered design protects one or more visual features of an article or set of articles. The visual features may be three-dimensional, such as the shape or configuration of a product, or two-dimensional, such as the pattern or ornamentation of the product.
Securing the earliest possible filing date is important, as this is the date used to determine if your design is new and original. There is no grace period available for designs in New Zealand, however only local novelty applies.
A New Zealand application can provide you with a priority date for overseas design applications, filed within six months of the New Zealand application. Similarly, if you have already filed an application for a design registration (or a design patent) overseas, a New Zealand application may use the filing date of the foreign application as its priority date, if your New Zealand application is filed within six months of the foreign application.
Examination of design applications is automatic in New Zealand. The examiner will conduct a search and consider whether the design is new and original. For a registered design to be valid, it must be new and original over designs registered or published in New Zealand in respect of the same or any other article. Differences only in immaterial details or in features which are variants commonly used in the relevant trade are not sufficient to distinguish a design.
If the examiner is satisfied that there are no grounds of invalidity the design will be registered. Alternatively, if the examiner’s has objections you will be given 12 months to overcome them. If the objections cannot be overcome the registration is refused. You will be given the right to request a hearing.
The initial term of registration is 5 years, renewable twice up to a maximum term of 15 years.
