Reducing examination wait times in New Zealand
In our second article of this four part series, Practice Group Leader – ChemLife, Amanda Stark and Patent Attorney, Dr Megan Cole, provide tips and tricks for bypassing examination wait times in New Zealand so the end goal – a granted patent – is reached expediently.
As discussed in Part 1 of this four-part series, the wait times for receiving a first examination report in Australia or New Zealand can be extensive, particularly for applications in the biotech, bio-therapeutics or chemical space. Previously, we provided tips and tricks for reducing examination wait times in Australia. Here, we shift our focus to New Zealand.
In New Zealand, not only is it necessary to voluntarily file a request for examination to initiate the substantive review process,[1] but the wait times for receiving a first examination report upon lodging the request currently range from 16 months to over 3 years.[2]
Average wait times for a first examination report in New Zealand
| Technology class | Duration |
| Biotechnology | 34 months |
| Chemical | 28 months |
| Electrical | 18 months |
| ICT | 18 months |
| Mechanical | 16 months |
The significant delay in examination may pose damage beyond the mere inconvenience of waiting. New Zealand has a notorious “5-year rule” for filing divisional applications, mandating a divisional application not only be filed within five years of effective filing date of the parent but also that a request for examination of the divisional application be made within that same five-year period. Therefore, a means to expedite prosecution may be advantageous for applicants generally.
Here, we present tips and tricks which may be used to reduce examination wait times in New Zealand and, ultimately, expedite patent prosecution.
Tips and tricks for reducing examination wait times in New Zealand
Tip 1: Request examination upon filing
It is necessary to voluntarily file a request for examination within five years of the effective filing date of an application, which for PCT applications entering national phase in New Zealand, is five years from the international filing date.[3] Typically, no direction to request examination will issue, placing the onus for lodging a request substantially on the applicant.[4] Hence, an applicant’s inactivity can add years to their wait time for a first examination report, which when coupled with the current substantial delays at the Intellectual Property Office of New Zealand (IPONZ), can unnecessarily add years to the applicant’s wait for a granted patent.
Trick: The sooner a request for examination is made, the shorter the wait time will be. Requesting examination at filing can reduce wait times by as long as five years.
Tip 2: Request expedited examination
Expedited examination can be requested, including when making a request for examination,[5] but the request must be supported by ‘good and substantial reasons’[6] in the form of a statutory declaration or affidavit. ‘Good and substantial reasons’ include situations where the applicant faces a genuine risk of commercial and/or financial damages which may be circumvented by expediting examination, for example, an alleged infringement.[7]
Statements directed purely to the desire to commercialise and/or license a claimed invention in New Zealand are not considered ‘good and substantial reasons’ since ‘every application for a patent is for the potential purposed of commercialising the invention’.[8]
For example, IPONZ considers requests falling into the following scenarios provide ‘good and substantial reasons’ for expediting examination:
- where the applicant’s enforceable rights are likely to be breached or infringed as a result of delayed allowance of the claims;
- where the applicant is likely to suffer financial losses if allowance of the claims is delayed;
- where the applicant will be commercially disadvantaged if allowance of the claims is delayed;
- where there is a likely threat of the invention being stolen and/or remodelled by a competitor;
- where early allowance of the claims in New Zealand could provide a valuable therapeutic treatment of a disease or condition; or
- where there is an immediate commercial need, for example, signed licencing agreement that requires a granted New Zealand patent.
However, general commercialisation statements, such as the following, are not considered satisfactory:
- a statement that the applicant wants to commercialise the disclosed product;
- a statement that expedited examination would assist in the commercialisation of the invention;
- a statement that the applicant is concerned about a possible infringement threat that might exist;
- a statement that a number of the claims in the patent application were found to be allowable by an overseas IP office. In this case, examination may be expedited using the Global Patent Prosecution Highway (‘GPPH’; see below);
- a potential or possible commercial reason, for example, conjectured plans for licensing to a New Zealand company; or
- a statement that the applicant wants to obtain feedback form the examiner on the merits of the application before a deadline to enter national phase or otherwise file in other jurisdictions.
Where a request for expedited examination is accepted, IPONZ aims to provide a first examination report within six weeks.[9]
Trick: Expedited examination can reduce the wait time for a first examination report from 16+ months to six weeks.
Tip 3: Enter national phase early
It is possible to enter national phase in New Zealand prior to the 31-month deadline,[10] including prior to publication of the PCT international specification.[11] A request for examination may be made at the same time; however, the application will not be queued for examination until after the 31-month deadline has passed.[12] This applies even where a request for expedited examination is made. That is, expedited examination will not automatically commence ahead of the 31-month deadline.
Thus, in general, entering national phase early in New Zealand affords little, if any, time saving advantage. A notable exception is where the applicant has a pressing commercial need. In such cases, it is possible to expedite examination ahead of the eligibility date by expressly indicating this preference in the request for expedited examination and by providing evidence supporting the reasons for making the request.[13]
Trick: Entering national phase early can advance the examination timeline ahead of the 31-month deadline where pressing commercial interests are at risk.
Tip 4: Utilise the global patent prosecution highway (GPPH)
New Zealand is a participant in the GPPH. However, unlike Australia, there is no bilateral Patent Prosecution Highway (‘PPH’) between New Zealand and the European Patent Office.
Examination under the GPPH is available if:
- an associated foreign application has been examined by an ‘Office of Earlier Examination’[14] (that is, a GPPH participating Office[15]) and found to have at least 1 allowable claim,
- the NZ claims ‘sufficiently correspond’[16] (that is, are identical or narrower) to those in the associated application, and
- no examination report has issued on the NZ application.
IPONZ aims to provide a first examination report within 6 weeks (42 days) of a PPH request being allowed.
Trick: Requesting examination under the PPH can reduce the wait time for a first examination report from 16+ months to about 6 weeks.
Key takeaways
The New Zealand Intellectual Property Office is facing significant delays in examining patent applications. Consequently, for applicants seeking fast tracked routes to a granted patent, filing a request for examination early and/or seeking an expedited examination for allowable reasons is highly encouraged.
If you are interested in learning more about fast tracking a patent application in New Zealand, please do not hesitate to contact one of the knowledgeable attorneys at Griffith Hack today.
We also encourage you to look out for the next article in this four-part series, where we will present, Tips and tricks for delaying prosecution timelines in Australia.
[1] Patents Act 2013 (NZ) s 64(1); Patents Regulations 2014 (NZ) reg 71(b).
[2] New Zealand Intellectual Property Office, ‘Timeframes’, Support (Web Page) How long will I have to wait for my first examination report?
[3] Patents Act 2013 (n 1) s 64(1); Patents Regulations 2014 (n 1) reg 71(b).
[4] Patents Act 2013 (n 1) s 64(2); Patents Regulations 2014 (n 1) reg 72.
[5] Patents Regulations 2014 (n 1) reg 77.
[6] Ibid reg 77(1)(b).
[7] New Zealand Intellectual Property Office, ‘Expedited Examination for Patent Applications’, Apply for a Patent (Web Page) Expedited examination under Regulation 77(1)(b).
[8] Ibid Expedited examination under Regulation 77(1)(b).
[9] New Zealand Intellectual Property Office, ‘Patents’, Timeframes (Web Page) Expedited Examination under the GPPH.
[10] Patents Act 2013 (n 1) ss 46–52; Patents Regulations 2014 (n 1) reg 63.
[11] New Zealand Intellectual Property Office, ‘Entry into New Zealand from a Treaty Application’, Apply for a Patent (Web Page) Early Entry into National Phase.
[12] Patents Act 2013 (n 1) s 51(1)(b); Patents Regulations 2014 (n 1) reg 62.
[13] Patents Regulations 2014 (n 1) reg 64. New Zealand Intellectual Property Office, ‘Expedited Examination for Patent Applications’, Apply for a Patent (Web Page) Examination of Treaty Applications Prior to Examination Eligibility.
[14] New Zealand Intellectual Property Office, ‘Mandatory Requirements’, Global Patent Prosecution Highway (Web Page).
[15] World Intellectual Property Organization, ‘Global Patent Prosecution Highway’, PCT-Patent Prosecution Highway Program (PCT-PPH and Global PPH).
