Same But Different: Comparison of Patent Prosecution in Australia and New Zealand (Part 1)

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 series of two articles, we outline some of the key differences and similarities between prosecuting patent applications in these two jurisdictions.  This article (part 1) will look at differences and similarities during examination, including patentable subject matter, expediting examination and excess claim fees.  Part 2 (to follow) will look at divisional applications, entitlement, transfer of ownership, opposition and grace periods.

Filing

In both Australia and New Zealand national phase entry of PCT applications is due 31 months from the earliest priority date.  A power of attorney/authorisation of agent is generally not required for filing in either jurisdiction. Likewise, an Information Disclosure Statement (IDS) is not required, but examiners in New Zealand may request the applicant provides relevant information on related cases.

Patentable Subject Matter

Both Australia and New Zealand require that the invention be a ‘manner of new manufacture’ within the meaning of section 6 of the Statute of Monopolies 1623. Exclusions to patentability that have been codified in the legislation are summarised in Table 1 below.

Notably, in Australia, there is an express prohibition against the patenting of human beings and the biological processes for their generation. Australian law does not expressly exclude from patentability plant varieties or software/business methods that are implemented as computer software. So long as the claimed invention as a matter of substance meets the requirements for a manner of manufacture, i.e. it is not an abstract idea, scheme or mere information, it is considered patentable. Methods of medical treatment of humans, including diagnostic methods, are considered patentable. Consequently, such claims are often pursued in parallel with second medical use or Swiss-style claims.

In contrast, New Zealand has expressly codified the exclusion of methods of medical treatment of humans by surgery or therapy and diagnosis practised on humans. However, methods performed in vitro or ex vivo (i.e. outside the human body), or methods performed on non-human animals are patent eligible.  Methods of cosmetic treatment (which are non-invasive) are also patent eligible. Further, Swiss-style and product for use (EPC 2000) claims are generally considered patent eligible.  

Finally, plant varieties that can be protected under the New Zealand Plant Varieties Act are also excluded from patentable subject matter in New Zealand.

TABLE 1: Codified exclusions

Examination

In Australia, examination may be requested at any time within 5 years of the filing date, or within 2 months of being directed to do so by the Commissioner. Such directions often issue around 1-2 years after filing the application, although in some technology areas this may be longer and in some cases the direction may issue in the lead up to the 5-year deadline.

Present timeframes for IPA to issue a first examination report vary between 1 to 2 years from the examination request, depending on the technology area. As of January 2026, the published timeframes by IPA for applications in the chemistry and biotechnology fields were 16 to 21 months, in the electronics and computing fields 11 – 16 months, and in the mechanical and allied fields 12 to 14 months.

Once the first examination report is issued, the application must be accepted within 12 months of the date of the first report, otherwise it will lapse. There is no deadline for filing a response, but in practice this needs to be sufficiently ahead of the acceptance deadline for the examiner to have time to consider the response. Multiple rounds of examination are possible.

In New Zealand, examination may be requested at any time within 5 years of the filing date of the application. As of January 2026, IPONZ practice was not to issue directions to request examination. Recent timeframes published by IPONZ show that the pendency from requesting examination to issuance of a first examination report is longer in New Zealand than Australia: 26 to 30 months for the chemistry and biotechnology fields, around 20 months for the electronics and computing fields, and around 17 months for the mechanical and allied fields.

Once the first examination response is issued, an initial 6-month deadline to respond applies, with a 1-month extension available with filing of a substantive response. The application must be accepted within 12 months of the first examination report, otherwise it will lapse. Extension of this deadline may be possible in certain circumstances where there has been office delay. Multiple rounds of examination are possible.

Expediting Examination

Both Australia and New Zealand are a party to the Global Patent Prosecution Highway (GPPH), including US, Great Britain, Canada and Japan. The European Patent Office (EPO) is a notable absentee from the GPPH.  However, IPA and the European Patent Office have a Patent Prosecution Highway (PPH) program that allows a PPH request to be based on an allowable claim in a European patent application.

To request that examination be expedited under the GPPH, the request must be filed before the first examination report is issued by IPA or IPONZ and based on a patent or application from one of the countries party to the GPPH (earlier application) where the applicant has received a ruling that the application contains an allowable claim. The claims of the application must ‘sufficiently correspond’ (or be amended to do so) to at least one of the allowed claims.  Generally, a first examination report will issue between 4 to 6 weeks after the request.

In Australia, it is also possible to request expedited examination under ‘special circumstances.’ This may include alleged infringement, commercial reasons or to obtain an allowed claim on which to base a PPH request in another jurisdiction. New Zealand also expedites examination with ‘good and substantial reasons.’  However, this is less utilized as the bar to demonstrate ‘good and substantial reasons’ is comparatively high and requires evidence.

Excess Claim Fees

Excess claim fees are payable in both Australia and New Zealand.  In Australia, if an application has more than 20 claims at the time of issuance of the first examination report, IPA will issue an invoice for the excess claim fees, giving the applicant one month to pay those fees so that examination can continue.

At acceptance, a further invoice will be issued for the highest number of claims present during examination that exceeds 20 and represents an increase from the number of claims at the issuance of the first examination report.

We generally recommend that the number of claims is taken into account when requesting examination and reduced by amendment, if required, to minimise excess claim fees.  Current IPA practice is to provide 6-months’ notice before commencing examination, which provides another prompt for considering the number of claims in an application before excess claim fees are incurred.

In New Zealand, excess claim fees are payable for applications with 30 or more claims, based on the maximum number of claims in the complete specification during the examination process. These fees are charged when the patent application is accepted, and must be paid before the application can proceed to grant. Excess claim fees in New Zealand are lower, so consideration should be given to whether amendment is justified.

Summary

Table 2 below gives a summary of the similarities and differences in prosecuting Australian and New Zealand patent applications that have been discussed in this article.

TABLE 2:  Similarities and differences in patent prosecution in Australia and New Zealand

In our follow-up article, we will present further details on the processes and requirements of patent prosecution in Australia in comparison to New Zealand.

In the meantime, if you have questions about patents in Australia, New Zealand, or both, you can contact the MBIP team via our website. Our knowledgeable patent attorneys will be able to discuss your situation and path forward.

Australian flag image by wirestock on freepik 

New Zealand flag image by wirestock on freepik