What’s new for New Zealand patents?

Article  \  17 Sep 2021

Recently, there have been several updates in the patent space in New Zealand. AJ Park experts Christine Egan and Katie Wei summarised these changes.


Double patenting

Under regulation 82(b) and (c), an application must not include a claim for “substantially the same subject matter” as accepted in a parent or divisional application.

The Intellectual Property Office of New Zealand (IPONZ) has indicated that it will release updated guidelines following Ganymed Pharmaceuticals GMBH et al. [2021] NZIPOPAT 6. This decision held that a parent application can be amended or surrendered after its acceptance or grant to address a double patenting or claim overlap objection. This reversal now allows the prosecution of a broader divisional application because the parent specification may be amended or surrendered.

The decision in Oracle International Corporation [2021] NZIPOPAT 5 introduces the double infringement test:

‘If the claims….are such that an infringement of the first is an infringement of the second and an infringement of the second is an infringement of the first, then this is necessary and sufficient for the Commissioner to conclude that the first and second claims have the same scope’. 

IPONZ has clarified that the Oracle decision does not change its double patenting practice on permissible claim overlap. Accordingly, claims in one case that sit wholly within the scope of another case are still not permitted.


Expedited examination under Global Patent Prosecution Highway (GPPH)

IPONZ has clarified that expedited examination under the GPPH may be requested after examination has been requested (but before examination has begun).

New Zealand is a participating member of the GPPH. Applicants may request expedited examination by a participating IP office based on one or more claims of a corresponding application allowed by another participating IP office. There is no additional fee for requesting expedited examination under the GPPH.

View the GPPH mandatory filing requirements here.


Survey of New Zealand Patent Activity

Derwent and Clarivate Analytics conducted a survey of New Zealand Patent activities up to 2019. New Zealand continues to be a valuable and strategic jurisdiction for patent filing. Domestic applicants in New Zealand continue to file in technologies related to agriculture, food, industrial engineering, and civil engineering. There is also growing domestic activity in biotechnology and pharmaceutical patents.


Proposed Intellectual Property (IP) Laws Amendment Bill

The release of the proposed IP Laws Amendment Bill for public consultation has been delayed.

Earlier this year, Ministry of Business, Innovation and Employment (MBIE) provided recommendations for amendments to the Patents Act 2013, the Trade Marks Act 2002, the Designs Act 1953, and associated regulations to Cabinet. Cabinet agreed to these recommendations in June 2020.

The proposed IP Laws Amendment Bill is currently being drafted to implement these recommendations. The Bill will be available for public comment by November or December 2021.

View the recommendations here.


Plant Variety Rights (PVR) Bill

The PVR Bill is currently in the parliamentary Select Committee stage.

The PVR Bill aims to modernise the PVR Act 1987 that is now over 30 years old and no longer provides the protection required for the modern plant breeding industry. Read more in our article New Plant Variety Rights Bill introduced to Parliament.


Non-substantive response guidance

IPONZ will be releasing an updated guideline to confirm that, where a non-substantive response to an examination report was filed in good faith, an extension of time of one month to file a substantive response will be given.

Generally, under section 66(2)(b) of the Patents Act 2013, a substantive response must be provided by the deadline set by the Commissioner in an examination report.