Patent Examination Process in New Zealand

For innovators and businesses seeking protection in New Zealand, the examination process is the rigorous testing ground where the validity, novelty, and scope of your invention are scrutinized.

The Priority Date

This is the date on which you first disclose your invention in a patent application. It is a critical milestone because it establishes your precedence over other inventors; generally, the first person to file for an invention is the one entitled to the patent. For applications filed under international conventions, this date is often tracing back to when an application for the same invention was filed in a convention country.

Once your application is filed with the Intellectual Property Office of New Zealand (IPONZ), you are allocated an application number. From this moment, you can officially refer to your invention as having “pending” status, using the designation “NZ Pat. Ap. No.” followed by your number.

Publication and Public Visibility

Approximately 18 months from your earliest claimed priority date, your patent specification will be published on the IPONZ website. This is a pivotal moment because your invention moves from being a confidential document to part of the public record. The published specification is assigned a two-character designation (such as A0 or A1) that indicates its status to other intellectual property offices and third parties.

Publication also opens the door for third-party scrutiny. Between the time of publication and the acceptance of the application, third parties who believe your invention lacks novelty or an inventive step can submit assertions to IPONZ. These written statements must identify previous publications or uses that challenge your claims. These assertions and any accompanying documents are published online and will be considered by the examiner during the formal examination. As your representatives, we monitor these developments closely, prepared to defend your application against any such external challenges.

The Requirement to Request Examination

A common misconception is that filing an application automatically triggers an examination. In New Zealand, this is not the case for complete specifications. You must actively request an examination to place your application in the queue.

You have a window of five years from the filing date of your complete specification to make this request. For international applications entering the national phase via the Patent Cooperation Treaty (PCT), this five-year period runs from the international filing date. While this flexibility allows you to strategize timing, perhaps to align with commercial developments or overseas proceedings, you must not miss this deadline.

In some specific scenarios, IPONZ may direct you to request examination earlier. If this occurs, you will have a strict two-month window to comply. Conversely, if you require a faster resolution, perhaps to enforce your rights against an infringer, we can request “expedited examination” on your behalf under certain conditions, such as through the Patent Prosecution Highway (PPH).

The Examination Phase

Once examination is requested, your application enters the queue to be assessed by a patent examiner. The examiner’s primary role is to ensure your complete specification meets all legislative requirements. They will conduct a comprehensive search of the “prior art base”, i.e. publicly available information, to determine if your invention is truly new and inventive. This scrutiny focuses heavily on your claims, as these define the precise scope of the monopoly you are seeking.

During this phase, the examiner may also review corresponding applications you have filed in other countries. IPONZ can access examination notes from international offices to see how similar claims were treated abroad. This harmonization means consistency across your global portfolio is essential.

Additionally, New Zealand has unique provisions regarding Māori traditional knowledge. If your invention is derived from indigenous plants, animals, or traditional knowledge, your application will be referred to the Māori Patents Advisory Committee. This committee advises whether commercializing the invention would be contrary to Māori values, and their advice becomes a formal part of the examination process.

The Examination Report and Your Response

It is rare for a patent application to be accepted without some back-and-forth. The result of the examiner’s review is the “Examination Report. If there are issues, such as unclear wording or overlapping prior art, these will be detailed in the report.

This initiates a strict timeline. For the first examination report, you typically have six months to respond. For any subsequent reports, the deadline tightens to three months. Failing to respond within these windows results in the application becoming void.

Our role during this phase is to analyze the objections and formulate a strategic response. This might involve amending your specification to narrow the claims or providing legal arguments to persuade the examiner that the invention is indeed patentable.

There is also an overarching Section 71 deadline. Regardless of how many reports are issued, you must resolve all issues and place the application in order for acceptance within 12 months of the first examination report. This date requires efficient management of the amendment process to ensure we do not run out of time.

Hearings and Acceptance

If we reach an impasse where the examiner’s objections cannot be resolved through written responses, we may request a hearing. This is typically a last resort used as the Section 71 deadline approaches. A hearing moves the decision-making power from the examiner to an Assistant Commissioner and provides an opportunity for us to argue your case formally, potentially using expert evidence.

Once all objections are overcome and the application meets all criteria, it is accepted. Acceptance is advertised in the Journal of the Intellectual Property Office of New Zealand. At this stage, if your specification contains 30 or more claims, an excess claims fee will be calculated and must be paid before the grant can proceed.

Opposition and Grant

Acceptance triggers a three-month opposition period. During this time, any person can formally oppose the grant of your patent by filing a written statement. If an opposition is filed, it launches a quasi-judicial process where both sides file evidence, and the Commissioner eventually hears the case.

If no opposition is filed, or if you successfully defend against one, and all fees are paid, the patent is granted. You are then issued a “B2” publication specification, and you can legally use the term “New Zealand Patent” or “NZ Pat. No.” with your number.

Re-examination and Revocation

Even after a patent is granted, it is not immune to challenge. IPONZ provides mechanisms for “re-examination” and “revocation” to ensure only valid patents remain in force.

Any person can request a re-examination by asserting that the granted patent is invalid (e.g., it was not novel). If IPONZ agrees that questions exist, they will issue a re-examination report. We would then defend the patent by amending the specification or providing counter-arguments. If we cannot satisfy the objections, the patent could be revoked.

Alternatively, a third party can apply directly for revocation of the patent. This is a contentious proceeding similar to an opposition, involving statements of case, counter-statements, and hearings. If successful, the patent is revoked and can no longer be enforced.

Contact us today

The path from a filed application to a granted, enforceable patent involves navigating a complex web of deadlines, legal definitions, and potential disputes. Whether it is responding to a technical objection in an examination report, defending against a third-party assertion, or ensuring the 12-month deadline is met, every step requires professional vigilance.

As your intellectual property partners, we manage this entire lifecycle. We ensure your priority dates are secure, your requests for examination are timely, and your responses to IPONZ are legally robust. By entrusting the examination process to us, you ensure that your invention is given the best possible chance of achieving the protection it deserves.

Contact us today for a free consultation.