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New Zealand expands accelerated patent examination options
New Zealand has recently entered into new patent prosecution highway (PPH) agreements with the European Patent Office (EPO) and the China National Intellectual Property Administration (CNIPA) respectively. This allows an applicant to request accelerated patent examination in New Zealand based on allowance of at least one claim in the equivalent European or Chinese application and vice versa.
New Zealand is already a member of the Global Patent Prosecution Highway (GPPH) along with 28 other Offices (listed here). However, neither the EPO, nor the CNIPA are members of that agreement. Thus, until now, a PPH request could not be made in New Zealand based on EPO or CNIPA allowance, or vice versa. These new agreements will remedy this deficit.
The requirements for all PPH requests (including the GPPH) are broadly similar:
1. The application examined by the Office of Earlier Examination (OEE) must share the earliest priority date with the application to be accelerated;
2. At least one claim must have been found to be allowable/patentable by the OEE;
3. The claims of the application to be examined need to be the same, similar or narrower scope than the allowed claims; and
4. The necessary documents must be filed. These documents include:
- A copy of the work product(s) issued by the OEE which expressly identifies the patentable claims.
- A copy of the claims found to be patentable by the OEE.
- A claim correspondence table which sets out the patentable claim(s) of the OEE application and identifies the "sufficiently corresponding" claim(s) to be examined by IPONZ. In instances where the claims to be examined are identical to those found patentable, a statement to this effect is also acceptable.
- A complete specification document that includes the claims which are the same, similar or narrower scope to those found patentable by the OEE and which is to be examined.
There are no additional Office fees for a PPH request. Some costs may apply in drafting and submitting the necessary documents
The new PPH agreements provide two valuable new pathways for accelerating examination. These may be of particular utility given the current delays in receiving a first examination report from IPONZ. If you are considering whether these options would suit you, then please do not hesitate to contact us.
David Nowak - December 2024
