New Zealand's new Patents Act 2013 came into force on
September 13 2014. The changes in the new Act were intended to
align New Zealand's patent laws more closely with those of
other countries including major trading partners.
The Patents Act 2013 is the first major overhaul of New
Zealand's patent system in 60 years. As the majority of
applications filed at the Intellectual Property Office of New
Zealand (IPONZ) are national phase entries into New Zealand,
few of the changes will cause difficulties for applicants long
used to stricter requirements in other jurisdictions. However,
a five year restriction on filing divisional applications is
causing some consternation.
The other significant changes include tougher examination of
patent applications, stricter deadlines, subject matter
exclusions, more challenge options and annual renewal fees.
- Applications will be published 18 months
from the earliest priority date, rather than on acceptance as
under the 1953 Act.
- Examination is no longer automatic. You must request
examination within five years of filing or two months of
receiving a direction, whichever is earlier, and pay an
- Applications will now be examined for
inventive step, not just novelty. The prior art base, against
which both novelty and inventive step will be tested,
encompasses all matter and information available anywhere
before the priority date.
- Applications must be in order for acceptance within one
year of a first examination report issuing. The applicant
must respond to the examination report within six months, and
to any further exam reports within three months, all subject
to the one year prosecution deadline.
- Divisional applications can only be filed
within five years of the filing date of the application to
which they are antedated. Examination must also be requested
within this period.
- Conflicting applications are considered using the whole
contents approach, replacing the more limited prior claiming
- The new Act will prevent or make it more
difficult for software inventions to be patented. Methods of
treatment and diagnostic methods are also not
- As well as retaining pre-grant opposition and post-grant
revocation, the new Act introduces new ways to challenge
patents and applications in the form of pre-acceptance
third-party observations and pre- and post-grant
- Annual renewal fees will be due to keep an
application pending or a granted patent in force under the
new Act, compared to four payments under the old Act. A
pre-grant maintenance fee is also payable, beginning on the
fourth anniversary of the filing date.
The changes brought in by the new Act have necessitated a
complete overhaul of IPONZ's electronic filing and file
management system which may take some time to bed down.
IPONZ has indicated that applications will be examined
within about three months of a request for examination being
made. Unless you wish to be one of the first to road test the
new legislation, we suggest you wait for a direction to issue
before requesting examination.
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