Protecting NZ Invention Overseas

Patents are inherently territorial, i.e. a New Zealand patent protects your invention only within New Zealand. To secure exclusive rights in other jurisdictions, whether it be the United States, Europe, or Asia, one must navigate the complex landscape of international patent law.

Fortunately, it is not required to file a separate, disconnected application in every single country from day one. Several international treaties and regional systems have been established to streamline this process, making it easier, more cost-effective, and more strategic for you to protect your invention globally. As your intellectual property partners, we are here to guide you through these pathways, helping you choose the route that best aligns with your business objectives and budget.

The Patent Cooperation Treaty (PCT)

For innovators looking to target a wide array of international markets, the Patent Cooperation Treaty (PCT) is often the most powerful tool in their arsenal. Administered by the World Intellectual Property Organization (WIPO), the PCT makes it possible to seek protection for an invention in over 140 countries simultaneously through a centralized application process.

The core advantage of the PCT is efficiency. Instead of filing dozens of separate applications in different languages and paying varying fees immediately, you file a single “international application”. This single filing has the legal effect of filing separate applications in all the PCT member countries at the same time. This effectively “reserves” your right to patent the invention in those countries without forcing you to commit to the full costs of prosecution immediately.

Understanding the PCT requires distinguishing between its two main stages: the “international phase” and the “national phase”.

The International Phase is the process that begins when we file a Treaty application on your behalf. This application can be filed with WIPO directly or through a receiving office, such as IPONZ. Once filed, your invention enters the international phase. During this period, your application is searched for by an International Searching Authority (ISA). The ISA produces a report listing existing technology (prior art) that might affect your patent claims. This gives you early, valuable insight into whether your invention is likely to be granted a patent before you spend money entering specific countries.

In the National Phase is the next phase. It is important to remember that the PCT itself does not grant a patent. It facilitates the application process. To actually obtain a patent, you must eventually enter the national phase. This means formally requesting that your international application be processed by the specific national or regional patent offices where you want protection.

You must request entry into the national phase within a specific timeframe, typically 30 or 31 months from your earliest priority date. Once you enter the national phase, each country’s patent office will examine your application according to its own laws and decide whether to refuse or grant the patent.

The PCT is ideal if you need time. By delaying the national phase, you buy yourself roughly 30 months from your initial filing date to assess the commercial viability of your invention, secure investment, or find licensing partners in overseas markets.

The Paris Convention

While PCT is excellent for broad global coverage, it may not be necessary for applicants who only strictly target one or two overseas markets. In such cases, the Paris Convention for the Protection of Industrial Property offers a more direct, and sometimes more cost-effective, alternative.

The Paris Convention establishes a system based on a “priority date”. Under this system, you file your first patent application, known as the “basic application” in your home country (e.g., New Zealand). This establishes your priority date.

Once your basic application is filed, the “Convention clock” begins to tick. You have a 12-month window to file separate patent applications in other Convention member countries. These later filings are “back-dated” to the date of your basic application.

This back-dating is vital because it prevents your own public disclosure of the invention (or a competitor’s independent discovery) during that 12-month window from being used against you. As long as you file overseas within 12 months, your novelty is assessed as of the date you filed in New Zealand.

We often recommend the Paris Convention route when an applicant has a clear, focused strategy, for example, a New Zealand company that only intends to export to Australia and the United States. In this scenario, filing three direct applications (NZ, AU, US) under the Paris Convention might be cheaper and faster than navigating the two-stage PCT process.

When filing a Convention application overseas, we must provide specific details of your basic application to the foreign patent office, including the application number, filing date, and country of origin. Most foreign offices will also require a “certified copy” of your original New Zealand application. We can request this certified copy directly through the IPONZ case management system on your behalf.

The Budapest Treaty

For the applicants in the biotechnology and pharmaceutical sectors, patenting an invention often involves more than just written descriptions and drawings. If your invention involves a microorganism, you may be required to deposit a sample of that biological material to meet disclosure requirements.

The Budapest Treaty simplifies this obligation significantly. Without this treaty, you might technically be required to deposit a sample of your microorganism in every single country where you seek a patent, a logistical and financial nightmare.

Under the Budapest Treaty, you can deposit your microorganism in a single “International Depositary Authority”. This single deposit is recognized by all contracting states for the purposes of patent procedure. This means you do not need to ship biological samples to patent offices around the world; one recognized deposit satisfies the requirement for all member countries.

The treaty also governs how interested parties can access these deposited samples. If a third party (or the patent holder) needs to request a sample of a microorganism referenced in a patent, they must follow specific procedures under Rule 11.3(a) of the Regulations under the Budapest Treaty.

If you need to request access to such a sample for a New Zealand patent application, we can assist you in obtaining the necessary certification. This involves submitting a WIPO Form BP/12 to IPONZ. We would send this request to mail@iponz.govt.nz with the subject line “Request for certification for the furnishing of samples of deposited microorganisms”. IPONZ reviews the request, certifies the form, and returns it, allowing the release of the sample.

How Do We Assist You?

Navigating these international applicants and procedures require precise timing and strict adherence to procedural rules. A missed deadline, such as the 12-month Paris Convention window or the 31-month PCT national phase entry, can result in the total loss of your patent rights in lucrative markets.

As your IP firm, we act as the central hub for your global strategy. The decision to take your invention global is a significant milestone. It opens the door to vast new markets but also introduces new layers of complexity. Whether you choose the broad reach of the PCT, the targeted approach of the Paris Convention, or the efficiency of a Regional Patent, the key to success is preparation.

Contact us today to discuss which international strategy is right for your invention.