New Zealand

Spruson

Overview

Capital: Wellington

Population: 4,242,048 (estimated 2013)

Languages: English

Area: 271,000 km2

Currency: New Zealand Dollar (NZD)

Legal System: Based on English Common Law

IP Registration and Protection in New Zealand

Spruson & Ferguson’s team of patent and trade mark attorneys are qualified to act directly before the Intellectual Property Office of New Zealand (IPONZ) enabling us to provide seamless and coordinated IP services across the Tasman.

We regularly assist clients with drafting, filing and prosecution of patent and designs in New Zealand along with watching, searching and renewal services. Our trade mark related services are comprehensive and include clearance, searching, watching, filing and prosecution through to renewals of New Zealand trade marks.

Patent Practice Summary

Filing Statistics

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Key Issues

  • Litigation and prosecution may be in English or Māori
  • Ranked 3rd in the world for IP protection in the World Economic Forum’s Global Competitiveness Report 2013/2014

Enforcement

  • An enforceable jurisdiction
  • Potential for alternative dispute resolution in IP matters via arbitration, mediation, settlement
  • Infringement remedies – damages, account of profits, injunctions
  • Innocent infringer defence
  • Potential relief against groundless threats

Prosecution

  • National phase entry deadline for PCT applications in New Zealand: 31 months
  • Patentable subject matter – all subject matter patentable except diagnostic, therapeutic and surgical methods of treating humans
  • Local novelty
  • Examiner’s not permitted to examine for inventive step, though inventive step is a ground for opposition and revocation
  • Automatic examination
  • Extension of time only available for national phase entry where the delay was unintentional and no undue delay has occurred. Also available for filing a convention application under certain conditions
  • Amendments allowed at any time prior to acceptance. Post-acceptance amendments are restricted to disclaimers, corrections or explanations, or correcting a clerical error or obvious mistake
  • Double patenting is strictly prohibited
  • Voluntary Divisional applications possible, must be filed before acceptance of the parent
  • A new Patents Act will come into force on 13 September 2014
    • All subject matter patentable except medical treatment methods, human beings, and biological processes for their generation, plant varieties, computer programs
    • Absolute novelty
    • Inventive step will be a ground for examination
    • New utility requirement
    • Examination must be requested
    • Post-acceptance amendments allowable where they relate to matter that is in substance disclosed, or where the amended claim falls wholly within the scope of a claim of the specification before amendment
    • Generous extension of time provisions
    • Experimental use exceptions

Other issues

  • Pre-grant opposition and time-limited post-grant opposition currently available. Under the new Patents Act 2013, pre- and (unlimited) post-grant opposition will be available
  • Patent Term Extensions – not available
  • Pathways for the approval of biosimilars – available
  • Parallel importation – available except for pharmaceuticals under certain conditions
  • Foreign filing license – required
  • Pharmaceutical Data Exclusivity Laws – data exclusivity (5 years)
  • Renewal fees payable only after grant
  • Accelerated examination available on request for “good and substantial reasons”

Filing Requirements

 

Affiliations

Bodies

 

Member

  • Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks
  • Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks
  • Singapore Treaty on the Law of Trademarks
  • Patent Cooperation Treaty Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms
  • Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods
  • Paris Convention for the Protection of Industrial Property
  • Berne Convention for the Protection of Literary and Artistic Works

Please complete these details to download your free copy of our Trade Marks Guide for Australia.

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