This year New Zealand’s patent laws are changing. This article continues our series on the new laws and explains the new application procedure that patent applications filed on or after 13 September 2014 will undergo.

Background

The New Zealand Patents Act 2013 will come into force on 13 September 2014. Amongst other changes, patent applications filed under the new Act will be subject to a different application process from those filed prior to 13 September.

The new application process under the new Act will apply to any complete application, Convention application or PCT national phase application filed on or after 13 September 2014.

In general terms, the new Act brings New Zealand’s patent system more into line with international standards, and particularly the law and procedures of Australia.

Who can apply for a New Zealand patent?

Under the current laws, only the inventor or an assignee of the inventor is legally able to apply for a patent in NZ.

Under the new laws, anyone will be able to apply for a patent, but a patent will only be granted to a party that can show entitlement to the invention. This will be achieved by filing a document that states what entitlement the applicant has to the invention (known as a Notice of Entitlement) before the patent can be granted. Entitlement may be gained through assignment or an employment agreement, for example.

For New Zealand applicants, this requirement will avoid delays at the start of the application process, since a company can be named as a patent applicant immediately. The transfer ownership of the invention from the inventor can be completed later. 

For overseas applicants, this requirement will usually amount to a minor administrative step that can be completed as part of the examination process.

Publication

Presently, NZ patent applications are not made available to the public until they are accepted by the Intellectual Property Office of New Zealand (IPONZ). 

After commencement of the new Act, NZ patent applications will be published 18 months from their priority date. 

This means that competitors will be able to access the contents of NZ patent applications before they are accepted and provide IPONZ with relevant prior art in time for it to be considered by an examiner. Another consequence of earlier publication is that, since damages for infringing activity may be calculated from the date of first publication of a claim that is similar to a claim ultimately granted, damages may be accrued from an earlier date compared to the existing situation.

For both these reasons, monitoring a competitor’s NZ patent activity will be increasingly important under the new Act.

Request for Examination

NZ patent applications are currently examined automatically and, by international standards, very quickly. Applications that do not claim overseas priority are examined within a few weeks while applications claiming overseas priority are usually examined within 9-18 months, depending on their subject area.

From 13 September 2014, examination of NZ patent applications will need to be formally requested and an examination fee paid. The deadline for requesting examination is still to be confirmed, but has been proposed to be 3 years from the NZ filing date or the international filing date in the case of PCT applications. 

Alternatively, IPONZ may issue a direction that the applicant must request examination, in which case the applicant will be given a limited period of time in which to do so. This period is again still to be confirmed but is expected to be short – a period of only 2 months has been proposed. IPONZ expects to issue directions to request examination prior to the 3 year deadline in most cases, but will use this as a mechanism to control its examination backlog.

The new procedure gives applicants flexibility to time examination of their NZ patent applications as desired to suit their commercial plans, delay costs or fit in with their international filing strategy. Once examination is requested, examination is still expected to occur relatively quickly by international standards so advancing examination of a NZ patent application may remain a useful way to gain a preliminary assessment of patentability.

Third parties may be able to request examination of a patent application but only after the application has been published.

Acceptance Deadline

The NZ application process will retain the use of an acceptance deadline as opposed to deadlines for responding to individual examination reports. Once examination occurs, a period will be set within which time the application will need to be placed in order for allowance. This period is still to be confirmed but has been proposed to be 12 months after a first examination report issues.

Divisional Applications

The regulations around filing divisional applications under the new Act are still to be confirmed. However it is expected that IPONZ will attempt to curtail the ability of applicants under the current laws to file chains of divisional applications for the same subject matter to effectively keep an application pending for a long time. Details of the how this will be curtailed are eagerly awaited.

Take action by 12 September 2014

Patent applications in NZ will be subject to the existing laws provided a complete specification is filed on or before 12 September 2014. For patent applications filed in NZ claiming priority from overseas applications, the NZ national phase filing date or the Paris Convention application filing date must be on or before 12 September 2014.

Both the application procedure and the examination criteria are likely to be easier to navigate under the existing laws so it may be advantageous to file applications in NZ before the new laws commence. 

Further information

We will be releasing further information on the changes on our website over the course of 2014.