Patent law in New Zealand in recent years has undertaken quite a facelift. For example, under the new law, stricter support requirements are in place, obviousness is now a ground for examination, re-examination is available for third parties to oppose applications and there are shorter deadlines for prosecuting applications and filing divisional applications.
Now the Intellectual Property Office of New Zealand (IPONZ) has announced another change with their adoption of the Global Patent Prosecution Highway (GPPH). The GPPH provides a means to expedite examination in New Zealand on the basis that another application that corresponds to the New Zealand application ('Corresponding Application') has been allowed in another jurisdiction.
Basic requirements of the GPPH
- The New Zealand application and the allowed Corresponding Application must have the same earliest filing or priority date.
- At least one claim in the Corresponding Application must have been found to be patentable.
- At least one of the allowed claims in the Corresponding Application must ‘sufficiently correspond’ to one of the proposed New Zealand claims, and the New Zealand claims cannot be broader than the claims of the Corresponding Application. Claims of different categories to those of the Corresponding Application also cannot be pursued in New Zealand under the GPPH.
- A report or action issued confirming allowance of the Corresponding Application must be filed with the request, together with a copy of the allowed claims.
There is no additional fee to request GPPH over standard examination.
To GPPH or not to GPPH, that is the question
Previously, the only option for expedited examination in New Zealand required there to be 'good and substantial reasons'1 for the request. IPONZ does not consider commercial importance alone to constitute 'good and substantial reasons', rather, another element, such as evidence suggesting that potential infringement is imminent, is also required. Expedited examination, therefore, has rarely been allowed and the introduction of the GPPH is a welcomed change.
As there is limited ability to amend the claims if utilising the GPPH, however, there will be several important aspects to consider before choosing this path over standard examination. For example, New Zealand does not impose fees for excess claims, whilst most jurisdictions do. This may mean that the protection of certain subject matter is forfeited or weakened in New Zealand where it does not need to be, or a divisional application will need to be filed at further expense to protect different categories of claims to those of the Corresponding Application, which could have been included in the original application for no extra fee if undergoing standard examination.
Examination in New Zealand is generally quite fast compared to some other jurisdictions so the GPPH may not always be the best strategy, even if available.
The fast examination of patent applications in New Zealand actually also draws the question of whether there will be much of an opportunity to utilise the GPPH at all, as the New Zealand application may well reach allowance, without expedited options, before any of its Corresponding Applications.
The introduction of the GPPH in New Zealand provides a great opportunity for applicants to have their applications granted quickly. There are, however, many aspects that should be carefully considered before pursuing this approach. Please contact us if you would like any assistance with weighing up the pros and cons of this approach for your specific application.