| Deadline | When a deadline falls due on a weekend or holiday, you may file by the next working day after the deadline without any loss of rights. |
| Applicant | Inventor(s) or the assignee of the inventor(s); the assignee may be individual(s) or a company. Two or more parties may apply jointly. |
| Publication | Patent specifications and any documents filed in support of the application which are not subject to legal privilege are open to public inspection 18 months from the priority date. |
| Third-party Observations | Assertions by third parties as to the lack of novelty and/or inventive step of the invention may be filed at the Patent Office at any time between publication and the acceptance of the application. |
| Examination | May be requested at any time, but must be requested either within five years from the date of filing of the complete specification in New Zealand/International Filing Date for a PCT application, or within two months of the Patent Office issuing a direction for examination, whichever date is the earlier. |
| Re-examination | The application/patent can be re-examined on the request of any party, or on the initiative of the Patent Office, at any time after the acceptance of the application. |
| Extra Claim Fees | Extra claim fees are payable at a rate of NZD 120 for each 5th claim over 25; the fee is calculated on the maximum number of claims in the complete specification at any point during the examination process, although the fee is not payable until after acceptance of the application. Thus, if an application starts the examination process with 30 or more claims, extra claim fees would be payable even if the specification when finally accepted actually has less than 25 claims. |
| Acceptance | The application must be in order for acceptance within 12 months of the date of issue of the first examination report. This date cannot be extended except by reason of delay in the Patent Office. |
| Opposition | Must be filed within three months of the publication of acceptance of the application; this period can be extended by one month without the applicant’s consent, or by two months with the applicant’s consent. |
| Term | 20 years from the date of filing of the complete specification or from the International Filing Date in the case of PCT applications, subject to the payment of maintenance/renewal fees. |
| Maintenance/renewal Fees | To maintain either a pending application or a granted patent, annual maintenance fees must be paid from the fourth anniversary of the filing of the complete specification (or from the International Filing Date in the case of PCT applications). The grace period is 6 months, subject to an additional fee. |
| Not Patentable | - Computer programmes "as such", but hardware programmed to operate in accordance with computer programmes may be patentable.
- Plant varieties (these are protected under the Plant Varieties Act).
- Inventions contrary to public order or morality (for example cloning human beings/industrial commercial use of human embryos).
- Methods of medical/surgical/diagnostic treatment of human beings when performed on the human body (veterinary equivalents are patentable).
- Computer programmes "as such", but hardware programmed to operate in accordance with computer programmes may be patentable.
- Plant varieties (these are protected under the Plant Varieties Act).
- Inventions contrary to public order or morality (for example cloning human beings/industrial commercial use of human embryos).
- Methods of medical/surgical/diagnostic treatment of human beings when performed on the human body (veterinary equivalents are patentable).
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| Novelty | Absolute novelty i.e. novel with respect to the “prior art base” which is anything which has been made available to the public in any form, anywhere in the world, before the priority date, subject to the following exceptions:
- Disclosure within one year prior to the filing date, if the disclosure was a result of matter obtained unlawfully or in breach of confidence from the inventor or a person who had been advised of the invention by the inventor, in confidence.
- Communication to a New Zealand Government Department within one year prior to the filing date.
- Public working within one year of the filing date by the patentee or a person authorised by the patentee, providing the working was for the purpose of reasonable trial and the nature of the invention was such that it was reasonably necessary for the working to be in public.
- There is a one year grace period for filing a complete specification, if the information relating to the invention has been made publically available by or with the consent of the patentee or the patentee’s predecessor in title, providing that the publicity occurred after 30th December 2018.
- Display/use with the consent of the inventor at an exhibition publicly notified to be an international/industrial exhibition by the Commissioner, and any consequent publication or use, providing the patent application is filed within six months.
- Secret use in New Zealand before the priority date, where the use was authorised directly or indirectly by the patentee/applicant, for the purpose of reasonable trial or experiment or by a New Zealand Government Department or a person authorised by a New Zealand Government Department or by any other person to whom the invention had been communicated by the patentee/applicant in confidence, as a result of a breach of confidence by that person.
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| Inventive Step | Applications are examined for inventive step/obviousness compared to the prior art base. |
| Deposit of Micro-organisms | A sample of the microorganism must be deposited with a prescribed depository institution in accordance with the Budapest Regulations on or before the filing date of the specification. A receipt for the deposit from a prescribed depository institution must be provided to the Patent Office within three months of the deposit date. |
| Marking | Not compulsory, but failure to do so is likely to affect the ability to claim damages or an account of profits for any infringement. Recommended marking: “NZ Pat” followed by the number of the patent. |
| Patents of Addition | Are available. |
| Global Patent Prosecution Highway | NZ is a member of the GPPH programme, and expedited examination can be requested if the application meets the GPPH criteria. Please contact us for details. |