The Intellectual Property Office of New Zealand joins the Global Patent Prosecution Highway


IP Australia commenced a pilot program of a Patent Prosecution Highway (PPH) with the United States Patent and Trademark Office (USPTO) in April 2008. In January 2014, this was effectively replaced by a Global Patent Prosecution Highway (GPPH) pilot that involved the Patent Offices of the following thirteen countries/regions:

Australia, Canada, Denmark, Finland, Japan, Korea, Nordic (Denmark, Iceland, Norway), Norway, Portugal, Russia, Spain, UK; and USA.

A notable absence from this list is the European Patent Office (EPO). However, in December 2015, IP Australia commenced a separate pilot PPH program with the EPO. The GPPH pilot program has since been expanded to include 21 patent offices (adding Austria, Estonia, Germany, Hungary, Iceland, Singapore, Israel, and Sweden to the above list).

Many of our clients file patent applications in both Australia and New Zealand. Since commencement of the GPPH pilot, we are often asked by clients that have allowed claims in Europe and/or the USA, if they can leverage those allowances to advance prosecution of corresponding Australian and New Zealand applications. Up until now, it has not been possible to advance prosecution in New Zealand by way of the GPPH. However, today, the Intellectual Property Office of New Zealand (IPONZ) announced that as of 6 July 2017, they have joined the GPPH pilot program.

This will be welcome news for clients looking to advance prosecution of their New Zealand patent applications.

There are no official fees associated with requesting that examination in New Zealand proceed via the GPPH, however there are three mandatory requirements:

1. the New Zealand application and the application upon which GPPH examination is to be based must have the same earliest filing or priority date;

2. at least one claim of the application upon which GPPH examination is to be based must have been found to be patentable (novel, inventive and useful), with an express statement to this effect; and

3. the request for examination under the GPPH must be accompanied by the following documents:

a. a copy of the examination report or office action that expressly identifies the patentable claim(s);

b. a copy of the claim set of the allowed application that includes the patentable claims; and

c. a table setting out the correspondence between the claims of the New Zealand application and those of the allowed application.

If any of the required documents are not in English, a verified English translation of such documents must be provided.

A cautionary note is that the claims of the New Zealand application must ‘sufficiently correspond’ to the claims allowed by another GPPH office. In the notes provided by IPONZ, an example is provided that if the allowed claims are directed only to an article, then claims directed to a method of making the article will not be considered to sufficiently correspond.

Of significance to those with applications in the life sciences will be the issue of Swiss-style use claims. Specifically, some countries in the GPPH pilot program, such as Australia and the USA, allow claims directed to methods of medical treatment of humans. These claims are not patentable subject matter in New Zealand and are routinely converted to Swiss-style use format, as this format is allowable in New Zealand. However, given that the scope of Swiss-style and method claims have been determined to be different, it would be good if IPONZ could provide some guidance as to whether or not method of treatment claims will be considered to ‘sufficiently correspond’ to Swiss-style use claims. We will keep you updated on any advice we receive from IPONZ.

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