Same But Different: Comparison of Patent Prosecution in Australia and New Zealand (Part 2)

By Sarah Couper and Debra Tulloch

Australian and New Zealand Patent Attorneys can act before both the Intellectual Property Office of Australia (IPA) and the Intellectual Property Office of New Zealand (IPONZ).  However, this does not mean that the practices before the two offices are the same.  In this second of two articles, we outline some of the key differences and similarities between prosecuting patent applications in these two jurisdictions.  The first article (part 1) covered differences and similarities during examination, including patentable subject matter, expediting examination and excess claim fees.  This article (part 2) will look at divisional applications, entitlement, transfer of ownership, opposition and grace periods.

Divisional Applications

Divisional applications may be filed in both Australia and New Zealand to pursue claims of different scope to those allowed in an earlier application, so long as the subject matter is disclosed in the earlier application. In both jurisdictions, it is not necessary for a unity objection to have been raised in the earlier application.

In Australia, the divisional application must be filed within three months of the date of publication of acceptance (allowance) of the earlier application.  By contrast, in New Zealand the divisional application must be filed before the earlier application is accepted. Therefore, it is common practice in New Zealand to file a divisional application, if required, along with the response to the first examination report, as the application could then be accepted at any time. Alternatively, a deferral of acceptance can be maintained when the response is filed, so that the application cannot proceed to acceptance.

Daisy chain or cascading divisional applications are allowable in both Australia and New Zealand, so long as there is a pending application. However, in New Zealand examination of the divisional application must be requested within 5 years of the date of filing the original application.  This means that, in practice, any divisional application in New Zealand must be filed and examination requested before this five-year deadline.

Entitlement

On filing an application with either IPA or IPONZ, applicant and inventor details must be provided. A statement of entitlement to the invention is also required.  However, no documentary evidence of this needs to be filed.

Entitlement can be challenged by a third party (for example during opposition, re-examination or revocation) so it is important to ensure that the applicant(s) has entitlement from the inventor(s) at the filing date. Derivation of entitlement to the invention will be dependent on the jurisdiction in which the invention has been made. For example, in Australia and New Zealand, entitlement to an invention may be derived by employment on the basis that the invention was made in the course of the employment of the inventor, or by assignment.

Transfer of Ownership

Ownership can be transferred in both Australia and New Zealand by assignment. This must be in writing and signed by the assignor and assignee.  When recording the transfer of ownership, a copy of the assignment needs to be provided to IPA or IPONZ. A scanned copy is generally sufficient.  IPONZ also usually requires an Authorisation of Agent form signed by the applicant, for a new agent to record the assignment.

Grace Period

Both Australia and New Zealand have a grace period for self-disclosures, which allows any information made publicly available, with or without the consent of the applicant, the patentee or the inventor, within 12 months before the effective filing date of a complete application (or PCT application), to be disregarded from the prior art base for assessment of novelty and inventive step. In New Zealand, the grace period provision applies only to public disclosures of an invention made on or after 30 December 2018, for which a complete specification is filed within the subsequent one year.

In line with most jurisdictions, other types of disclosures, including those in breach of confidence and displays at international exhibitions, reasonable trial and learned societies may also be subject to a grace period.

Pre-Grant Opposition

Both Australia and New Zealand have a pre-grant inter partes opposition procedure conducted before a delegate of IPA or IPONZ, respectively.

In Australia, any person can oppose the grant of a standard patent application by filing a notice of opposition within 3 months of advertisement of the application being accepted.  After filing the notice, the opponent has 3 months to file a statement of grounds and particulars, together with copies of any documents referred to in the statement.

Both parties are given an opportunity to file evidence in the form of declarations or affidavits. Once the evidence stage is completed the opposition will be set down for hearing.  The hearing officer will usually issue a written decision within 3 to 6 months. Either party can appeal within 21 days of the decision.

The process is slightly different in New Zealand. Any person can oppose the grant of a standard patent application by filing a notice of opposition within 3 months of publication of acceptance. A statement of case must be filed that fully sets out the facts on which the opponent relies to support their grounds of opposition and the relief sought.  The patent applicant has two months to file a counterstatement if it wishes to defend the opposition. The counterstatement must set out the grounds upon which the applicant contests the opposition.  If the applicant does not file a valid counterstatement, the patent application will be treated as abandoned.

Once the counterstatement is filed, then the parties will have the opportunity to file their evidence in the form of declarations or affidavits.  After the evidence stage is completed the opposition will be set down for hearing.  The Assistant Commissioner will usually issue a written decision within 3 to 6 months (although some decisions are taking longer due to the current backlog at IPONZ). Either party can appeal within 20 working days of the decision.

Re-Examination

In Australia, re-examination may be requested by the Patentee or a third party.  A request for IPONZ to re-examine a granted patent may be made by any person.  Both IPA and IPONZ will re-examine the patent and if an adverse report is issued, will give the Patentee the opportunity to respond, including by way of amendment.

Third party observations are similar in both jurisdictions, in that they are limited to novelty and inventive step and are ex parte.

Amendments

In both jurisdictions, the scope of amendments allowed is broader and the process for requesting amendments is more straightforward prior to acceptance (allowance). In both jurisdictions amendments must be adequately supported by the specification as filed.  In New Zealand, there is the possibility of post-dating where ‘added matter’ is introduced. In New Zealand, reasons must be given for the amendments.

In both jurisdictions, a patent may be amended after grant provided that the amendment falls within the scope of the claims as accepted and has basis in the specification as filed. Amendments to correct a clerical error or obvious mistake are not subject to the same requirements.

Fees for requesting amendments are payable for all voluntary amendments.  In Australia, amendments made either before requesting examination or after acceptance are considered to be voluntary. No amendment fee is payable for amendments made when requesting examination or during examination. In New Zealand, an amendment to the claims and/or specification deemed to be voluntary (even during examination) may incur a fee.  Generally, any amendment that addresses an objection raised in an examination report or is considered to bring the application closer to allowance will not incur a fee in New Zealand.

Appeals

Adverse decisions (including following opposition or examination) by either IPA or IPONZ may be appealed as of right to the Federal Court of Australia or to the High Court of New Zealand, respectively.

Term/Extension of Term

In both Australia and New Zealand, the term of a standard patent is 20 years. In Australia, it is possible to extend the term by up to 5 years for patents relating to pharmaceutical substances. (Australian Patent Term Extensions Under the Microscope – MBIP) New Zealand does not have any similar provisions to extend the term of a pharmaceutical patent.

Summary

Table 1 below gives a summary of the similarities and differences in prosecuting Australian and New Zealand patent applications that have been discussed in this article.

TABLE1:  Similarities and differences in patent prosecution in Australia and New Zealand

If you have questions or would like guidance on any of the above, please reach out to MBIP’s patents team by calling 07 3369 2226, via email (mail@mbip.com.au) or through our “book a meeting” form.