The Ministry of Business, Innovation and Employment, and the Intellectual Property Office of New Zealand (IPONZ) issued a discussion document including proposed regulations under the Patents Act 2013. As we discussed here, the Patents Act 2013 is the first major overhaul of New Zealand patent law in 60 years. However the Act leaves it to the regulations to define a number of procedural aspects of the patent system. This discussion document gives us our first glimpse of what the patent system will look like under the new Act. Key points include:
- A moderate increase in the official fees associated with obtaining a patent.
- The introduction of a request for examination, proposed to be required within 3 years of the filing date or within 2 months of a direction to request examination.
- The reduction of the time period for placing the application in order for acceptance to 12 months.
- The mandatory use of an online filing system.
- More details around the proposed Single Application Process (SAP) for Australian and New Zealand patent applications.
- More information as to how a proposed Single Examination Process (SEP) for Australian and New Zealand patent applications.
IPONZ has requested submissions on the issues raised by this document by 24 January 2014. Please let us know if you wish to make submissions on your behalf.
The discussion document proposes a moderate increase to the fees associated with obtaining a patent in New Zealand. The table below sets out a comparison of the fees as they exist under the current (1953) Act and those proposed under the new Act.
Click here to view table.
*Includes PCT national phase entry and convention applications
**Currently renewal fees are payable at the 4th($170), 7th($340), 10th($540) and 13th($1000) years after the filing date.
The regulations will change the maintenance regime for all New Zealand patents. Currently renewal fees are only payable on a granted patent and are payable in the 4th, 7th, 10th and 13th years. In contrast, the new system will require annual renewal fees 4 years from the filing date regardless of the status of the patent. The overall cost of maintaining a patent in force for twenty years will be $3700, as compared to $2100 under the old system.
The other major increase is the introduction of an examination fee of $500. This fee will need to accompany an examination request and is intended to recoup at least some of the costs of examination. No request for examination is required under the Patents Act 1953, therefore no equivalent fee was payable.
Request for Examination
The new Act and Regulations will introduce the requirement to request examination.
Under the 1953 Act, an application proceeds automatically to examination. In contrast, it is proposed that the regulations require that a request for examination be filed by the applicant before an application will be examined. If a request for examination is not received within a defined period the application will be deemed abandoned.
It is proposed that the regulations require a request for examination to be filed before the earlier of the following time limits:
- three years from the filing date of the application (the International Filing Date in the case of a PCT national phase entry, or the date of filing of a complete specification in New Zealand in all other cases); or
- two months from the Commissioner sending a direction to request examination.
It is not currently proposed to provide an extension to either deadline.
In addition, a request for examination will be able to be filed voluntarily at any time prior to the expiration of above time limits.
Currently IPONZ examines applications at a very early stage. A PCT national phase entry is usually examined within 9 months of entry into national phase, while all other applications are examined within 15 working days of filing a complete specification. IPONZ expects to maintain this efficiency under the new Act and considers directions to request examination will issue within one year of the filing date for a complete specification, or within 6-12 months of the national phase entry date (in the case of PCT applications).
Time period for placing the application in order for acceptance
The discussion document proposes that the time period for placing an application in order for acceptance be reduced from 18 months (when fully extended under the Patents Act 1953) to 12 months from the issuance of the first examination report. This is equivalent to the time period allowed under Australian law.
It is not yet apparent how much discretion IPONZ will have to extend this deadline. Under the 1953 Act the examiner has a power under section 93(1) to extend the deadline. In particular, IPONZ has a published practice note based on a ‘stop the clock’ principle, whereby an extension of time under section 93(1) is granted for the amount of time the examiner spends considering the application. In practice this means the application cannot lapse while on the examiner’s desk. It remains to be seen if this practice will continue under the new Act.
Mandatory use of online filing
The new regulations will mandate the use of the IPONZ electronic filing system and IPONZ will no longer accept paper correspondence.
IPONZ introduced a new electronic filing system for patents in December 2012, and the majority of correspondence is already conducted using this portal. However, the regulations made under the Patents Act 1953 have not been amended to reflect the use of the electronic filing portal. These regulations require a number of forms to be filed in order to complete a patent application, which it is currently necessary to prepare and file as separate documents. It seems that the regulations under the Patents Act 2013 will remove this unnecessary duplication.
Single Application Process
The discussion document further outlines the proposal for a single application process for filing of New Zealand and Australian patent applications. A single online portal is envisaged where the following actions can be undertaken for New Zealand and Australian applications:
- Patent specifications can be filed. Proposed amendments will be able to be made, but only at the time of filing;
- A single application fee for both applications can be paid;
- A request for examination can be filed (but only at the time of filing); and
- A notice of entitlement can be filed.
The single application process will be optional. Patent applications will still be able to be filed separately to both IP Australia and IPONZ.
Single Examination Process
The discussion document also outlines the proposed single examination process. This process envisages a single examiner at either IPONZ or IP Australia undertaking the examination for both New Zealand and Australia. A single examination report will issue, and the applicant will be able to respond to issues at the same time. This process will only be available if the applicant uses the same correspondence address (e.g. the same patent attorney) in both New Zealand and Australia.
It is envisaged that an applicant will need to request single examination at the time of requesting examination. Thus where examination is requested separately in Australia and New Zealand, the application will continue to be examined by separate examiners in either country.
It will not be possible to stipulate which Office will examine the applications. Therefore if single examination is requested the applicant could receive an examination report from either IPONZ or IP Australia. No information is given as to how the applications will be allocated.
The fee for single examination has not yet been set. Therefore, it is not yet known if requesting single examination will be cheaper than requesting separate examination in each country. The discussion document makes no mention of a cheaper examination fee for single examination, and considers the chief benefit of the single examination process to the applicant is considered to be the need to respond to a single examination report, rather than issuing two separate responses.
The discussion document also considers other procedures such as third party assertions and re-examination of the application, and proceeding and in relation opposition and revocation proceedings under the Patents Act 2013. A full copy of the discussion document, including guiding questions for submissions is available here. The deadline for submissions is 24 January 2014.