New Zealand patent applications for US attorneys

A procedural outline noting differences to US practice

New Zealand applies the 12-month Convention priority deadline and the 31-month PCT national phase deadline.

• New Zealand Convention application deadline and filing requirements
• New Zealand national phase entry deadline and filing requirements

Unless examination is proactively requested, the application will likely remain dormant until the Patent Office directs that examination be requested, which could well be almost five years after the filing date (e.g. international filing date).

The Patent Office’s direction opens a three-month window in which examination must be requested. Examination can be requested without waiting for the Patent Office’s direction. Examination must be requested within five years of the effective filing date, e.g. the international filing date. The Office plans to issue examination reports within three months of examination being requested.

New Zealand has both acceptance and response deadlines:

• The first examination report opens a 12-month window to persuade the examiner that the application is in order for acceptance. Acceptance in New Zealand corresponds to allowance in the US.

• A six-month response deadline applies to the first examination report. That deadline is extendible as of right by one month upon request. A three-month response deadline will apply to any subsequent examination reports.

If the 12-month date is drawing near and time permits (noting the five-year deadline, below), a de facto extension might be secured by abandoning the application under examination and (before that application lapses) filing a divisional patent application.

Once the examiner’s objections have been overcome, the application will be accepted (allowed) and the acceptance will be officially published.

Interested parties may oppose the grant of a patent on the application by filing notice and a statement of case within three months of the official publication of acceptance. The three-month period is extendible. In the absence of opposition, a patent will typically be granted on the application shortly after the end of the opposition period.

The first annual renewal fee is due by the fourth anniversary of the effective filing date (e.g. international filing date).

Divisional patent applications

New Zealand divisional patent applications are akin to US continuation applications.

Potential divisional patent applications should be considered at filing and when responding to any examination reports. Divisional patent applications cannot be filed after acceptance. Divisional patent applications take the filing date of their parent (or grandparent, etc) application.

Multiple generations of divisional patent applications are allowed. The five-year deadline to request examination is in effect a deadline by when the last divisional patent application can be filed. We recommend aiming to fully complete prosecution of the New Zealand patent family within the five-year period to ensure that the option of filing a divisional patent application is available if an unexpected unity objection is raised during examination.

Further reading:

• Australian patent applications – from national phase entry or Convention filing to grant and beyond

Experienced Australian patent attorneys to care for your clients’ New Zealand patent applications.