The New Zealand Patent Act 2013, which comes into force on 13 September 2014, contains several changes to the examination process for New Zealand patent applications (including Convention and PCT national phase applications filed in NZ after the act comes into force).
While the changes are significant in terms of the change from the existing process in New Zealand, in some cases at least, overall the effect is to align New Zealand patent law with what is common to many of our trading partners, especially the recently introduced changes to Australian patent law. This brief overview relates to changes introduced to the examination process, including new grounds to be considered during examination and changes to the deadlines for various steps of the examination process.
- New requirement for an applicant to request examination within five years of the filing date of the complete application and pay an examination fee.
- At any time, the Intellectual Property Office of New Zealand (IPONZ) can issue a Direction to Request Examination, following which the applicant has two months in which to file the request and to pay the fee. It is expected that the Commissioner will, where no voluntary request for examination has been filed, issue a Direction within 6-12 months from the filing date of the complete application or national phase entry.
- If the application and specification are open to public inspection any person may request that the Commissioner issue a Direction to Request Examination.
- The new examination process will include examination for inventive step as well as absolute novelty.
- Patentability assessments will be made on a “balance of probabilities” basis instead of giving the benefit of the doubt to the applicant as is the case under the existing law.
- The Applicant may request a hearing during examination.
- A new deadline for overcoming all objections has been set at one year from the date of issue of the first examination report.
- A new re-examination process has been introduced to enable third parties to challenge the validity of an accepted patent application or a granted payment. The cost of doing this is expected to be similar to the examination fee.