National Phase Entry – NEW ZEALAND

NEW ZEALAND NATIONAL PHASE ENTRY INFORMATION

If you’re an overseas attorney, an individual, or a member of a company or other organisation that has an international patent application under the Patent Cooperation Treaty (PCT) then the following information is for you.

We are registered in New Zealand and interact directly with the Intellectual Property Office of New Zealand (IPONZ).

PCT NATIONAL PHASE ENTRY DEADLINE MINIMUM REQUIRED INFORMATION

The deadline for national phase entry into New Zealand is 31 months from the earliest priority claim whether or not International Preliminary Examination has been requested (Chapter II Application).

There is no requirement for a Power of Attorney or an Inventor’s Declaration.

At a bare minimum we require information identifying the application, i.e. the PCT number or the WIPO publication and preferably a copy of the front page of the WIPO pamphlet.

In New Zealand the National Phase Entry fee is a flat fee irrespective of the number of claims in the international application, whether or not there are multiple claim dependencies or the length of the patent specification.

After IPONZ has been provided with a New Zealand or Australian address for service, national phase entry fee payment and the verified translation, if the PCT application was not in English, it will issue a filing receipt.

TRANSLATIONS

If the PCT application is in a language other than English (a non-English application) then an English language translation of the international patent specification must also be lodged with IPONZ before the 31 month deadline. The English language translation must be verified by the translator as being a true and complete translation of the original PCT application including any amendments that were made during the international phase under Article 19 or article 34 of the PCT. If any further amendment is required then such an amendment must be made separately and should not be included in the translation of the PCT application that is lodged.

If the priority application was in a language other than English then a certified English language translation of the priority document may be requested by the Examiner during examination. This will occur if, during examination, a validity-related issue arises in which the determination of the correct priority date becomes important.

NOVELTY REQUIREMENTS

New Zealand is a first-to-file, absolute novelty country so that publication of the invention or public use anywhere in the world before the priority date is invalidating. However, there is a Grace Period as discussed below.

GRACE PERIOD

New Zealand has a twelve month grace period. According to the Grace Period provisions non-confidential disclosure, made by the inventors or their successors in title is not invalidating so long as a complete New Zealand patent application is filed within twelve months. The filing of a PCT application designating New Zealand is sufficient to trigger the Grace Period. No declarations as to when the first disclosure was made have to be lodged.

The grace period is not triggered by the filing of a provisional application, or other earlier application from which priority is claimed. It is only triggered by the filing of a standard New Zealand patent application or an international patent application under the PCT. This is a complex area so please contact us if you have any questions.

REQUEST FOR EXAMINATION

Examination must be requested within five years of the application date.

NOTICE OF ENTITLEMENT

Prior to allowance of the patent application a statement must be lodged with the Patent Office explaining how rights to the invention have transferred from the inventor to the applicant.

The Notice of Entitlement must also attest that the applicant has the right to claim priority from the basic application or applications.

We can attend to the Notice of Entitlement requirement once we have details of the mechanism by which rights have transferred, for example information concerning an employer-employee relationship or an assignment.

AMENDMENTS PRIOR TO ACCEPTANCE

Voluntary amendments may be lodged after the national phase has been entered, either before or after an examiner’s report issuing. The amendments must not result in the inclusion of any matter that was “not in substance disclosed” at the filing date of the application.

AMENDMENTS AFTER ACCEPTANCE

Voluntary amendments can also be lodged after acceptance of a patent application has been advertised however any amendments to the claims must be such that they fall within the scope of the claims that were accepted.

THIRD PARTY OPPOSITION TO GRANT

In general, the deadline for filing a notice of opposition for:

opposing the grant of a patent is 3 months from the publication by the Patent Office of the accepted complete specification; and
opposing a proposed post-acceptance amendment is 2 months from the publication by the Patent Office of the request for leave to amend the specification.

For further information please contact us. This webpage is meant to provide general background information only about New Zealand patent practice. If you have a specific problem then please email your query.