The following presents a general summary of some, but not all of the changes made to the New Zealand Patents Act. It is not intended to replace legal advice.
GENERAL FILING CHANGES
All new applications will be published 18 months from the earliest claimed priority. This allows third parties to file observations from publication to acceptance (ex parte).
All prosecution documents (e.g. exam reports, responses, assignment documents etc) will be publically available on the IPONZ database.
REQUESTING EXAM
For applications filed on or after 13 September 2014, it will be necessary to file a request for examination.
A direction to request examination will issue within 5 years from the International filing date or complete filing date of the application. Examination may be requested at any time once the application has been filed.
Once the Direction has issued, the applicant has two (2) months within which to file the request for examination.
EXAMINATION
Following the request for examination, a first examination report should issue within three (3) months from the date of filing the request for exam.
The applicant will be given an initial six (6) month period within which to respond to the report, with a maximum initial period of 12 months (extendable deadline).
Further reports may issue after 12 months. However, the period of time in which to respond will depend on the circumstances.
NOVELTY
The prior art base has been expanded to include any publication anywhere in the world, increasing the test from “local” novelty to “absolute “novelty. In addition, a document can now be considered part of the prior art base for assessing novelty if it has an earlier priority date than
the priority date of the claimed invention, but has a later publication date (whole contents).
INVENTIVE STEP
New Zealand Patent law now allows for the consideration of documents when determining whether the claimed subject matter has the necessary inventive step.
SUPPORT
A claim of the invention must be supported by the “disclosed matter”, raising the requirements of disclosure with the possibility that the scope of protection sought may be narrower than under the 1953 Act. In addition, a complete specification must disclose the invention “clear and complete enough” to a person skilled in the art
DIVISIONAL APPLICATIONS
A divisional application(s) where the first application is filed in New Zealand on or before 13 September 2014 will be considered under the 1953 Act.