Improved Intellectual Property Office of New Zealand Website

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Requesting Patent Foreign Filing Permits – Section 25(5) by e-mail

Where a NZ resident wishes to file an application for a patent abroad without first filing a corresponding patent application in New Zealand, the resident must obtain a foreign filing permit from the Commissioner under section 25(5) before making the foreign patent application.

IPONZ will now accept requests for foreign filing permit by email.

The request should name the applicants for the patent in the foreign country, and the countries or organizations in which the application is to be made, and include a description of the invention, preferably as an attached copy of the specification to be filed abroad or a detailed synopsis of the subject matter.

In response to the request, IPONZ will issue a permit (if appropriate) by reply e-mail. This will be the only form of permit issued and serves as the written permit as required under section 25(5).

It should be noted that a New Zealand resident does not need a foreign filing permit where:

(a) the resident has made an application for a patent in New Zealand for the same invention at least six weeks before intending to file a corresponding foreign patent application; or

(b) the resident is making a foreign application which is claiming convention priority from an application for the same invention filed abroad by a non-resident.

New Patents Bill tightens up on patents process

The Patents Bill was introduced to Parliament on 9 July, and will replace the Patents Act 1953.

The purpose of the new Bill is to update New Zealand’s patent regime to ensure that it continues to provide an appropriate balance between providing adequate incentives for innovation and technology transfer while ensuring that the interests of the New Zealand public are safeguarded.

At present, the examination process under the Patents Act 1953 is less strict than in most other countries and in many cases had led to patents being granted that are broader in scope than patents granted on the same applications in other countries.

To address this issue the new Bill will provide NZ Examiners to consider the ground of inventive step during the examination of the application on a basis similar to that currently adopted in Australia.

The new Bill also contains measures that will assist in protecting the interests of Maori in their traditional knowledge and indigenous plants and animals and will reform the regulatory regime for the Patent Attorney profession.

IPONZ - Examination delays continue

There are ongoing delays at IPONZ in considering responses to Examination Reports. Consideration of responses for substantive issues is now taking approximately 6-8 months.

Applicants are encouraged to file their responses electronically via the IPONZ website. Correspondence filed online will automatically generate a confirmation receipt and can be tracked online.

New Zealand Patents Bill

The long awaited New Zealand Patents Bill having key provisions substantially modeled on the Australian Patents Act has been introduced into the New Zealand Parliament. It is expected that the first reading of the Bill and referral to the Select Committee should occur within the next few months. Once the Bill has been referred to the Committee, submissions will be invited. At this stage it is not possible to predict when the Bill will be enacted but it is unlikely to come into force before late 2009.

IPONZ streamlines patent applications acceptance process

From 1 June 2008, IPONZ will be streamlining the patent applications acceptance process.

The current acceptance process includes an examiner issuing an examination report indicating that the application is in order for acceptance and then a Notice of Acceptance is issued by IPONZ some time thereafter. In the new process, the examiner will issue the Notice of Acceptance when an application is considered by the examiner to be in order for acceptance. There will no longer be a separate examination report and Notice of Acceptance issued by IPONZ.

The new process will be applied to all patent applications where a response to an examination report places the application in order for acceptance and where a response is received by IPONZ on or after 1 June 2008.

Where an applicant has requested that acceptance of an application be delayed under s20(1), then acceptance will be delayed as requested.

Where an application is in order for acceptance at first examination, then an examination report will be issued providing the applicant with one month to file voluntary amendments or attend to filing of any divisional applications before the application is accepted.

Restoration of priority claims for PCT applications

The Patent Cooperation Treaty (PCT) Rules have been amended to allow Member States acting as a Receiving Office or as a Designated Office to provide restoration of a priority claim up to two months beyond the 12 month Paris Convention deadline for international patent applications filed on or after 1 April 2007. Under the amended rules two grounds are available for filing of requests for restoration of priority i.e. that the international application was not filed within the 12 month convention period either in spite of “due care” required by the circumstances having been taken, or that the failure to file in time was “unintentional”.

IPONZ has advised that it will only allow restorations of priority on the condition of “due care” having been exercised. That is IPONZ will not allow the priority to be restored under the ground of “unintentional” failure to file. In applying the “due care” requirement, the provisions of section 93A of the Patents Act 1953 will apply.

New Practice – contrary to morality objections

IPONZ has reviewed its practice with regard to raising objections under s17(1) of the Patents Act 1953.

Following this review, IPONZ will continue to raise objections under s17(1) where it appears that the use of the invention would be contrary to morality for New Zealand society as a whole or for a significant section of the community, including Maori.

As a general guide, claims to the following subject matter are likely to attract an objection under s17(1):
human beings;
processes which give rise to human beings and biological processes for their production;
methods of cloning human beings;
totipotent human stem cells;
human embryos and processes requiring their use;
placental and umbilical cord tissues and processes requiring the use of placental and umbilical cord tissues; and
transformed host cells within a human and other cells and tissues within a human.

Surrendering of patents under section 43 of the Patents Act

Where a patentee offers to surrender their patent under section 43, then the patentee should file a patent form 46 (regulation 107) ensuring that reasons are provided for the offer of surrender.

The offer of surrender will be acknowledged by IPONZ in a letter to the patentee. The offer will be advertised (regulation 107) in the next Journal for an opposition period of one month (regulation 108(1)). The patentee will be informed of any opposition lodged against the offer of surrender of the patent (regulation 108(2)).

The patentee will not otherwise be informed of expiry of the opposition period and the patent will consequently be marked off as surrendered by the patentee if no opposition is lodged (patent form 47) under regulation 108(1).