Patents

Requirements for Filing a Patent Application in New Zealand

Information and documentation required for filing an application:

  • a copy of the specification (in English) and drawings (if any)
  • the applicant's full name, street address, and nationality/state in which incorporated
  • details of the priority date(s) to be claimed (if any) and country
  • details of each inventor, including full name, address and nationality
  • derivation of rights from inventors/priority applicant, e.g. details of assignment.

A copy of any assignment made before filing is not required.

Other documentation required to complete filing formalities:

  • an application form signed by the applicant (file within 4 months of date of filing)
  • a certified copy of the priority application (file within 3 months of date of filing)
  • a verified translation of the priority application if not in English (file within 3 months of date of filing)
  • formal drawings (file within 4 months of date of filing).

Notes:

The Intellectual Property Office of New Zealand allows us to sign the application form on behalf of the applicant. However the Patent Regulations have not yet been amended to support this practice. Thus, we recommend that an application form signed by the applicant be filed.

An application can be filed informally using a specification received by facsimile, in which case a formal specification must be filed within 4 months after the date of the filing of the application.

Requirements for Entering the National Phase in New Zealand for a PCT International Application

Information and documentation required for filing an application:

  • details of the International Application number and applicant
  • if application has not been published and forwarded to national office, copy of
  • specification and drawings (if any)
  • details of priority date(s) claimed (if any) and country
  • applicant's full name, street address, and nationality/state in which incorporated
  • details of each inventor, including full name, address and nationality.
  • derivation of rights from inventors/priority applicant, e.g. details of assignment.

A copy of any assignment made before filing is not required.

Other documentation required to complete filing formalities:

Notes:

The Intellectual Property Office of New Zealand allows us to sign the request form on behalf of an applicant. However the Patent Regulations have not yet been amended to support this practice. Thus, we recommend that a request form signed by the applicant be filed.

The signed Request for Entry into National Phase form will meet all formal requirements for Authorisation of Agent and designation of inventor(s).

If the International Application is assigned prior to entry into National Phase, and

  • Assignment has been recorded at WIPO - Application can proceed in the name of the Assignee - no copy of Assignment needed.
  • Assignment not recorded at WIPO - National Phase must be entered in the name of the original applicant and the assignment then recorded at the Intellectual Property Office.

As a consequence of the amendment of Patent Cooperation Treaty rule 51bis1(e), the Intellectual Property Office of New Zealand no longer requires that verified English translations of priority documents for PCT national phase applications be filed unless the Office specifically requests that a translation be filed. If the Office requests that a verified translation be filed the verified translation will need to be supplied within three months of the date of that request.

However, if translations of the priority document(s) have already been prepared it may be worthwhile filing these documents in New Zealand to avoid the additional expense of preparing these documents again at a later date should the Office request them.

Note that the above practice applies only to PCT national phase applications. Verified translations of priority documents and copies of priority documents are still required to be filed in the case of convention applications.

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