National phase entry
The deadline for filing a national phase application in New Zealand from a PCT application is 31 months from the earliest priority date. A PCT application must enter New Zealand national phase in the form in which it exited international phase. Amendments to the specification may be filed at any time during prosecution but require payment of an official fee if they are considered before examination.
Translations
A verified translation of a PCT specification filed in a language other than English must be filed within 5 months (3 months plus 2 months’ extension) of the commencement date of the national phase.
Requesting examination
A request for examination must be filed within 5 years from the effective filing date of the application. However, at any time before this date, the Commissioner of Patents may direct the filing of a request for examination on two months’ notice. Examination may be requested at any time (e.g., at the time of filing of the application) and expedited examination is available.
Postponement of acceptance
At the time of national phase entry, we will request postponement of acceptance to ensure that the application does not inadvertently proceed to acceptance in the event that examination is favourable in the first instance. This will provide the opportunity to make any desired amendments or to file divisional applications before acceptance. The postponement will automatically expire 12 months from the date of the first examination report, unless it is lifted in the meantime.
Excess claim fees
Excess claim fees of AU$120 are payable for each 5th claim over 25 during examination. Accordingly, you may wish to consider reducing the number of claims when requesting examination in order to conserve costs. Multiply dependent claims are allowable in New Zealand and count as a single claim for the purposes of calculating claim fees.
Examination
An examination report will usually be issued approximately 12 months from requesting examination, setting a 6-month deadline for responding to the report and a 12-month deadline for overcoming all objections and placing the application in order for acceptance.
Please note that responses filed in New Zealand must be accompanied with a detailed statement identifying explicit support for all amendments and reasons for making them.
Expedited examination
Expedited examination under the Global Patent Prosecution Highway (PPH) based on a clear IPRP or an allowed/granted patent application issued by a participating patent office (see Global PPH). Please note that all claims in the New Zealand application must be sufficiently correspond to the allowable/patentable claims. Amendments for conformity with New Zealand practice are permitted (e.g., amendment of medical use claims to the Swiss-style format, and inclusion of multiple dependencies) but a claim which introduces a new/different category of claims to those claims indicated as allowable/patentable is generally not considered to sufficiently correspond.
Divisional applications
If a divisional application is required, it must be filed before acceptance of the parent (which itself may be a divisional). Importantly, all divisional applications must be filed and examination requested within 5 years of the international filing date.
Acceptance and grant
Once the application is in order for acceptance, a Notice of Acceptance will issue. The acceptance is published in the official journal, which commences a three month opposition period, during which any interested third party may oppose the granting of the patent.
Assuming no opposition to grant is made, an electronic Deed of Letters Patent will issue around one month after the expiry of the three month opposition period.
Renewals
Renewals are payable in New Zealand from the fourth anniversary of the international filing date, regardless of whether the patent has been granted yet or not. Renewal fees are then due each anniversary after that until the patent ceases.
Double patenting
In New Zealand, a divisional application will not be accepted if it includes claims that have “substantially the same scope” as a parent case, even if the phrasing, terminology and/or ordering of claims under consideration is not identical. Small differences between claims are sufficient to avoid a double patenting objection, provided the differences are not trivial, irrelevant or inconsequential. Double patenting may be rectified by argument, amendment or withdrawal of the parent case.
Medical use claims
Method of treatment claims are not allowable under New Zealand patent law. However, Swiss-style claims (i.e., use of substance X for the manufacture of a medicament for the treatment of disease Y) are patentable in New Zealand and method of treatment claims may be converted to this format in order to confer patentability.
With regard to purpose-limited composition clams (e.g., substance X for use in the treatment of disease Y), the term “for” in such a claim is construed under New Zealand patent law as only indicating that the substance is suitable for the specified use (i.e., it is not limited to the specified use). Should the limitation be required for patentability, such claims may be replaced with Swiss-style claims.
Diagnosis claims
Diagnostic methods when practised on the human body are excluded from patentability under New Zealand patent law. Accordingly, amendment may be required to limit the claims to in vitro diagnostic tests performed on blood or other samples removed from the body in order to confer patentability.
Claims to microorganisms
A microorganism is patentable in New Zealand if technical intervention has resulted in an artificial state of affairs which does not occur in nature. Isolation of naturally occurring micro organisms is considered to satisfy the requirements for technical intervention.
If the claims refer to a microorganism deposit made under the Budapest Treaty for enablement, a copy of the deposit receipt (and a verified English translation, if required) must be filed at the New Zealand Patent Office within 12 months from the date of the first examination report.
Claims to peptides or nucleic acids
The principle established for micro-organisms also applies to peptides and nucleic acids. Generally, the inclusion of the terms “isolated” or “recombinant” in the claims is sufficient to distinguish the peptide or nucleic acid from their naturally occurring counterpart and confer patent eligibility.
Antibody claims
Claims to antibodies defined by structure are allowable in New Zealand but an objection may be raised if not all six CDRs are defined, or the claim allows for variability within the CDRs. However, it may be possible to overcome such objections if there are sufficient examples in the specification to determine the minimum structural features or homology required to produce the desired activity.
Patent term extensions
Extensions of patent term to compensate patentees for the time taken to gain regulatory approval are not currently available in New Zealand.
Product by process claims
A claim to the product of a process will only be considered to be novel if there are material differences between the product claimed and what is known in the prior art base, even if it is claimed by being made by a novel process. If the product is novel, a product-by-process claim will only be allowable if the product could not be described in any other way, such as by its composition, structure or other testable parameters.