Saturday, 24 January 2015

NEW ZEALAND........PATENT PROCESS


The patent process flow chart and commentary

Obtaining a patent in New Zealand involves a number of steps. This page provides:
  • A quick reference flow chart and commentary on the patent process under the New Zealand Patents Act 2013 and Regulations 2014
  • A brief outline of whether an application will be treated under the Patents Act 1953 or the Patents Act 2013 appears after the flow chart
  • A summary of key points


The patent process

The patent process flow chartPriority DateApplyRequest ExaminationRespond to ExaminationRequest HearingHearingAcceptanceGrantRe-examinationExamination ReportSearch and ExaminationPublicationThird Party AssertionsOpposition ProcessRevocation ProcessGrant refused / Patent revoked
[image] Key for patent process flowchart.

 

Priority date 

The priority date is the first time you disclose an invention in a patent application. It is an important date because it can establish first priority rights to an invention.
For example, the priority date for a Convention application is the date when an application relating to the same invention was filed in a Convention country.
Publication of the patent specification is triggered by the priority date of the application.
 

Further information:


Apply 

A New Zealand patent application must be filed at IPONZ.
A patent application must be accompanied by a patent specification in which the invention is described.
 

Further information:


Publication

A patent specification is published on the IPONZ website 18 months from the earliest claimed priority date of the application.
Documents such as examination reports and applicant responses will also be published on the IPONZ website from this date onwards.
Publication does not guarantee that a patent will be granted.
 

Further information:


Third party assertions

If a person thinks a claimed invention lacks novelty or an inventive step they can submit a written statement to IPONZ.
This must be done after publication and before acceptance of an application. It can only relate to complete specifications.
The statement must include:
  • information identifying a previous publication or use; and
  • reasons as to why a claim is not considered novel or inventive in light of that publication or use.
The statement and any relevant documents provided will also be published on the IPONZ website, and will be considered during examination.
 

Further information:


Request examination 

IPONZ must examine a patent application before it can be accepted.
 

Applicant requesting Examination

If you want your patent application to be examined, you must request examination within 5 years of the filing date of the complete specification. For Treaty applications, this is 5 years from the international filing date.
 

Third party requesting Commissioner to direct Examination

A third party may request the Commissioner to direct an applicant to request examination.
 

Commissioner directing Examination

The Commissioner may direct an applicant to request patent examination. When the Commissioner directs an applicant to request examination, examination must be requested by the applicant within 2 months.
 

Further information:


Search and examination 

Examination determines whether an application meets all legal requirements.
Examination focuses on the claims of the complete specification.
IPONZ will conduct a search of the claimed invention to ensure that it is new and inventive.
Examination of a New Zealand patent application may take account of examination of any corresponding patent applications in other countries. A corresponding application is a patent application for the same invention, with the same inventor(s), and where the claims are substantially similar to the claims in the New Zealand complete specification.
 

Further information:


Examination report

After IPONZ examines an application it will issue an examination report. If IPONZ considers that there are matters that require attention before it will accept your patent application, these will be detailed in the report.
An examination report will often refer to earlier publications which are relevant to determining whether the invention claimed is new and inventive.
The examination report will specify the time within which the applicant must respond. For a first examination report, the time is 6 months from the date of the examination report. For a subsequent examination report, the time is 3 months from the date of the examination report.
All issues raised in examination reports must be resolved within 12 months of the first examination report being issued. If a response is not received within the time set in an examination report, your application will become void.
 

Further information:


Respond to examination report

If your examination report identifies issues with your application it is your responsibility to respond to these issues within the set timeframe. This response could include:
  • You amending your specification to overcome matters raised. For example, the claims may be re-worded to provide a tighter definition of the invention; and/or
  • Arguments as to why the issues raised should not prevent acceptance.
IPONZ will consider your response and provide another report either accepting your application or detailing any issues outstanding.
If a response is not received within the time set in an examination report, your application will become void.
 

Further information:


Request a Hearing

An applicant or IPONZ may request a hearing on issues raised in an examination report where they can’t be resolved between the applicant and the examiner.
The hearing will be before the Commissioner of Patents, who will provide a decision on the issues.
 

Further information:


Hearing

A hearing is an opportunity for an applicant to state their case on issues raised in an examination report. This can include evidence and testimony from expert witnesses.
A hearing may be:
  • by appearance before the Commissioner; or
  • on the basis of written submissions; or
  • on the basis of a review of documents filed in the case.
     

Further information:


Acceptance

Your patent application will be accepted when all the requirements set out by IPONZ in examination reports have been met.
You may request that acceptance of your application is delayed by up to 12 months from the date IPONZ issued the first examination report. You must file this request before IPONZ accepts your application.
Acceptance of a patent application is advertised in the Journal of the Intellectual Property Office of New Zealand, which is electronically published by IPONZ on a monthly basis.
 

Further information:


Opposition process

Once an application is accepted by IPONZ, there is a three month period in which any person may oppose the grant of an accepted patent application.
To oppose the grant of a patent, an opponent must apply in writing, setting out the grounds of the opposition.
The applicant must file a counter-statement, and may amend the complete specification to address matters raised.
Before deciding the case, the Commissioner must give the applicant and the opponent an opportunity to be heard.
 

Further information:


Grant

If the grant of an accepted patent application is not opposed, the application is granted at the end of the 3 month opposition period.
 

Further information:


Re-examination

IPONZ must re-examine an accepted patent application or granted patent if requested to do so by any person.
 

Requesting re-examination

The request must set out the reasons the patent application or granted patent is invalid under the Patents Act 2013. For example, the claimed invention may not be a patentable invention, or may not be novel or inventive.
 

Re-examination process

When a re-examination request is received, IPONZ must re-examine the patent application or granted patent to decide whether it is invalid.
If IPONZ considers that there are grounds for objection, then it will issue a re-examination report detailing the objection(s).
The applicant or patentee may choose to amend the specification to overcome an objection, or provide an explanation of why the objection should not be sustained.
Where agreement cannot be reached, the applicant may request a hearing.
For an accepted application, if an objection is not overcome, the application will not be granted.
For a granted patent, if an objection is not overcome, the patent will be revoked, unless a hearing is requested.
 

Further information:


Revocation process

After a patent has been granted, any person may apply to have it revoked.
The application must be accompanied by a statement of case setting out the facts relied on.
The patentee may contest the application for revocation in a counter-statement, and may amend the complete specification to address the matters raised.
Before deciding the case, the Commissioner must give the applicant and the patentee an opportunity to be heard.
 

Further information:


Grant refused / Patent revoked

If an opposition to the grant of an accepted patent application is successful, then the grant of the patent will be refused.
If an application for the revocation of a granted patent is successful, then the patent will be revoked.
When a patent is revoked, it can no longer be enforced.
 

Further information:

 Summary of key changes to the patent process
The Patents Act 2013 fully commenced on 13 September 2014. Some of the key changes to the patent process are below. You can find further information on these changes on ourPatent process page.
  • Patent specifications are published 18 months from the earliest priority date.
  • You must request examination within 5 years after filing your complete specification.
  • You have 12 months from the date of the first examination report to resolve all issues raised by IPONZ.
  • IPONZ will publish examination reports and applicant responses on applications proceeding under the Patents Act 2013.
  • Any person may write to IPONZ regarding the novelty and inventive step of any claim in a complete specification.
  • IPONZ must re-examine an accepted application or a granted patent if requested to do so by any person.

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