Patent Application Requirements in New Zealand

Securing a patent is often the most critical step an inventor or business can take to protect their creations.

Before filing any documents, it is crucial to establish whether your invention is truly novel. It is highly advisable to search existing patents to determine if your invention already exists, as patents are exclusively reserved for new inventions. Applicants can perform these searches using the IPONZ Patents register or through broader internet searches to identify similar technologies, however, professional help is recommended. Identifying prior art early can save significant time and resources by preventing the filing of applications for inventions that are not patentable. Our firm can help with the prior art searches to create a strong base for an application.

Preparing a patent application is a complex matter requiring a blend of technical expertise and legal strategy. A qualified patent attorney provides not only the necessary professional skills and experience but can also clarify which aspects of an invention are patentable and offer strategic legal advice.

Drafting the Patent Specification

The most important part of a patent application is the “specification.” This is a written description of the invention that provides detailed information on how to make and use it. The quality of the specification often determines the strength of the patent. In New Zealand, you can choose to begin the process by filing either a provisional specification or a complete specification.

The provisional specification is a popular option for inventors who are in the early stages of development. It serves to provide time, allowing the applicant to gather funding or conduct further research while establishing an early priority date for the invention. A provisional specification broadly describes the invention, often in less detail than a complete specification. However, it must still include a title and a description sufficient to enable a skilled person to perform the invention. That said, a provisional specification by itself is not enough to obtain a patent; if you do not file a complete specification within the prescribed time, the application will be abandoned.

The complete specification is a more comprehensive document that must be filed if you want your application to be examined and your invention patented. This document must include a title, a detailed description, an abstract, and one or more claims. The description serves as the bulk of the specification, explaining the invention’s technical field, background, and detailed technical aspects, often utilizing graphs or flowcharts.

The most vital part of the complete specification is the claims section. Patent claims define the boundary of the invention. Claims must be clear, concise, relate to a single invention, and be fully supported by the description. Structurally, each claim must be written as a single sentence, generally starting with the broadest claim and progressing to narrower, dependent claims. It is important to avoid laudatory statements in claims, such as asserting the invention is “cheaper” or “the best way”. While a specification can have any number of claims, an “excess claims” fee applies if the specification contains 30 or more claims at any point between the request for examination and acceptance. At our firm, we specialize in managing these complexities. We ensure that your specifications are drafted to meet rigorous standards and your claims are strong to ensure registration.

Application Pathways

Applicants have several pathways to file for patent protection, depending on their commercial goals and geographical focus.

• Standard New Zealand Application: This is the most direct route for protection solely within New Zealand. You may start with a provisional specification and must follow it up with a complete specification within 12 months, which is extendable to 15 months upon request. Once the complete specification is filed, you must request an examination within five years of the filing date.
• Paris Convention Application: For applicants who have already filed an application overseas, for example, in Australia, the Paris Convention pathway allows them to file a New Zealand application based on that first “basic application”. This must be done within 12 months of the earliest basic application’s filing date. The primary benefit here is that the New Zealand application retains the priority date of the original overseas filing. This allows applicants to delay decisions on export markets for up to a year while securing their priority rights. When filing, you must provide details of the basic application, such as the country, filing date, and application number, and potentially a verified English translation if the original was in another language.
• Patent Cooperation Treaty (PCT) Application: The PCT application is a powerful tool for seeking protection in multiple export markets simultaneously via a single application. If you have filed a PCT application internationally, you can enter the New Zealand “national phase” to seek local protection. This request for entry must be made within 31 months of the earliest priority date. In this scenario, the international filing date is considered the filing date of the complete specification in New Zealand. The description and claims contained in the international application are treated as the complete specification for the New Zealand phase.
• Divisional Applications and Patents of Addition: Sometimes, an application needs to be split or augmented. A divisional application can be made from a pending parent application that has not yet been accepted. This is common when an examiner objects that an application covers more than one invention; the applicant can transfer specific claims to a new divisional application while retaining the parent’s filing date. Alternatively, if you improve upon your own main invention, you can apply for a patent of addition. This protects modifications that share the essential features of the main invention but may not necessarily have an inventive step over it. A significant advantage is that no renewal fees are payable for a patent of addition, though it expires when the main patent ceases.

Examination and Acceptance

Submitting the application is only the beginning. An application will not be automatically examined; one must explicitly request examination. This request can be made at the time of filing or deferred for up to five years from the complete specification filing date. If you defer, you will receive a task in your inbox to request examination later; failing to complete this by the deadline will prevent you from proceeding.

Once examination is requested, the application joins a queue. An examiner will assess the invention to determine if it is different from what is already known (novelty) and inventive. If there are issues, an examination report will be issued outlining matters that must be addressed.

Final checklist of required documents

The comprehensive list of documents required to register a patent in New Zealand based on different application types are provided below:

• Patent Specification: Every application must be accompanied by a specification document, uploaded in Word or PDF format. Depending on the stage of the application, this will be either be a Provisional Specification which must include the title of the invention and a description of the invention or a Complete Specification which must include a title, a description of the invention, and one or more claims. For Treaty applications, you generally do not need to upload a specification unless you are filing a verified English translation or making voluntary amendments, as the system will download the original from WIPO.
• Drawings: Drawings often form part of the specification to show how the invention works. If included, these should be placed at the end of the specification document. Drawings must be in A4 format with specific margins (Left/Top: 2.5 cm, Right: 1.5 cm, Bottom: 1 cm).
• Abstract and Abstract Drawing (Mandatory for Complete Specification): Abstract is a summary is mandatory upon filing a complete application. In Abstract Drawing one should upload a drawing chosen from the specification that the abstract text refers to. For PCT National Phase entries, these are automatically copied from the published international application.
• Notice of Entitlement: You must add a document stating the grounds on which the applicant (if they are not the inventor) has the right to be granted the patent.
• Priority & Convention Documents: If the application claims priority under the Paris Convention, Priority Documents, i.e. electronic copies of the documents filed for the basic application (the overseas application). Also, verified English translations must be provided if the basic application documents are not in English, you must provide verified English translations.
• PCT / Treaty-Specific Documents: Verified English translation must be provided if the international complete specification is not in English, a verified translation must be filed (ideally upon entry, or within 3 months). If entering the national phase before publication, you must upload copies of notifications or filing receipts received from WIPO. Statutory Declaration or Affidavit (For Late Entry) must be provided if entering the national phase after the 31-month deadline, you must file a statutory declaration or affidavit proving that the delay was unintentional and that there has been no undue delay in requesting restoration.
• Traditional Knowledge Document: If the invention is derived from Māori traditional knowledge or indigenous plants/animals, you may choose to upload a document containing further details.

While the list of requirements above is extensive, you do not have to navigate it alone. IPONZ explicitly advises that preparing a patent application is a complex matter and recommends professional assistance to ensure your application is strong. As your dedicated intellectual property partners, we are here to manage this entire process for you.

Contact us today

Whether you are filing a provisional specification to secure a priority date or entering the national phase of a global PCT application, the requirements are strict and the deadlines are unforgiving.

At our firm, we specialize in managing these complexities. We ensure that your specifications are drafted to meet rigorous standards, your claims are strong, and your procedural pathways are selected to maximize commercial advantage. By understanding the IPONZ requirements outlined above, you are better positioned to protect your innovations, but you do not have to do it alone.

Contact us today for a free consultation.