New Zealand patent applications

From national phase entry or convention filing to grant and beyond

See also patent protection for Australians and New Zealanders

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

Applications will likely remain dormant until about 38 months from the priority date when the Patent Office plans to direct that examination be requested. The 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 during which the application must be placed in order for acceptance (allowance). Additionally, a six month response deadline applies to the first examination report. A three month response deadline will apply to any subsequent examination reports. The earlier of the two possible deadlines applies. By way of example:

  • if a first examination report issues 1 January 2015, a response must be filed by 1 July 2015 and the application must be placed in order for acceptance by 1 January 2016;
  • if a further report issues 1 September 2015, a response must be filed by 1 December 2015; and
  • if a further report issues 1 November 2015, a response must be filed by 1 January 2016 and the application must be placed in order for acceptance by that date.

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

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:

Experienced New Zealand patent attorneys to care for your clients’ New Zealand patent applications. BRM Patent Attorneys.

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