The Intellectual Property Office of New Zealand (IPONZ) has changed how it will consider requests for expedited examination under the Global Patent Prosecution Highway (GPPH) pilot programme. The changes should make it easier for patent applicants to request expedited examination in New Zealand under the GPPH.

Background

IPONZ joined the GPPH pilot programme in 2017. The GPPH enables patent applicants to request expedited examination based on another GPPH patent office having found one or more claims of a corresponding overseas application allowable. Under the GPPH, IPONZ aims to issue a first examination report within two months. In comparison, at present, IPONZ typically issues a first examination report for an application that is not proceeding under the GPPH within about six to nine months of receiving a request for examination.

To proceed under the GPPH, the claims of the New Zealand patent application must “sufficiently correspond” to the claims of the overseas application. That is, the New Zealand claims must be substantially identical or of narrower scope to the allowable overseas claims.

What is changing?

IPONZ will now consider Swiss-type pharmaceutical use claims “sufficiently correspond” to equivalent medical use claims in the allowed overseas application.

Methods of treatment of humans are not patentable subject matter in New Zealand. In consequence, where possible, such method of medical treatment claims in overseas-originating patent specifications are often converted to the allowable Swiss-type format. However, IPONZ did not previously consider Swiss-type claims to “sufficiently correspond” to method of treatment claims. In consequence, an applicant would typically need to request expedited examination under the GPPH with the (invalid) method of treatment claims and then subsequently amend the method of treatment claims to Swiss-type claims after receiving a first examination report.

IPONZ will now also provide applicants who make a request for expedited examination under the GPPH that is deficient in some respect with an opportunity to clarify or remedy the request before declining the request. IPONZ previously declined requests for expedited examination under the GPPH that did not meet mandatory filing requirements, without first giving the requestor the opportunity to provide further information. If a request to proceed under the GPPH was declined, it was necessary for the requestor to then prepare and file an entirely new request.