New Zealand joins the Global Patent Prosecution Highway

As of 6 July 2017, New Zealand has joined the Global Patent Prosecution Highway (GPPH) pilot program. As a result it is now possible to request accelerated examination of a New Zealand patent application based on the allowance of at least one claim of a corresponding application in another GPPH office (known as the Office of Earlier Examination or OEE). It is also possible to accelerate examination in another GPPH country based on allowance of at least one claim in New Zealand (in which case New Zealand is the OEE).

Contracting parties

At present the Offices (Countries) which are part of the GPPH network are as follows:




IP Australia (Australia) HIPO (Hungary) Rospatent (Russia)
CIPO (Canada) ILPO (Israel) PRV (Sweden)
DPMA (Germany) IPO (Iceland) IPOS (Singapore)
DKPTO (Denmark) JPO (Japan) USPTO (USA)
EPA (Estonia) KIPO (Korea (South)) NPI (Nordic)
SPTO (Spain) NIPO (Norway) APO (Austria)
PRH (Finland) PPO (Poland) IPONZ (New Zealand)
UKIPO (Great Britain) INPI (Portugal) INICIO (Columbia)*

*Although it has not confirmed, we have been informed Columbia joined the GPPH on the same day as New Zealand.

Whilst there are some notable absences from this list (China and the EPO for example), certain jurisdictions do have accelerated examination agreements with those countries, meaning that a judicious use of both the GPPH and these other agreements could result in accelerated examination in most major markets.

Requirements for requesting accelerated examination

The requirements for requesting accelerated examination in New Zealand based on allowance in another jurisdiction are as follows:

  1. The New Zealand application and the application of the OEE must have the same earliest filing or priority date (whichever is relevant).
  2. At least one claim in the OEE application must have been found to be patentable, i.e. novel, inventive and useful. There must be an express statement of patentability for these claim(s) in a report or action issued by the OEE. We have been informed that an opinion of one of the GPPH countries as an ISA or IPEA that at least one claim is allowable will be sufficient.
  3. The claim set must sufficiently correspond to the claims considered by the OEE. New Zealand is interpreting “sufficiently correspond” to mean claims which are identical or similar to the scope of the claims examined by the OEE. Claims which are broader than those examined by the OEE cannot form the subject of a GPPH request.
  4. A request under the GPPH must include the following documents:

a. A copy of the report or action issued by the OEE which expressly identifies the patentable claims.
b. A copy of the claim set which includes the patentable claim(s) of the OEE application.
c. A claims correspondence table which sets out the patentable claim(s) of the OEE application and identifies the corresponding claim(s) to be examined by IPONZ.

Further information on the requirements and test to be applied can be found here.

Comments

The effect of a GPPH request in New Zealand will be to bring the case to the front of the examination queue, i.e. it will be allocated to the next available examiner. However, the examiner will almost certainly still conduct a full examination of the case in accordance with New Zealand law. Thus applicants should not assume that because the OEE has allowed some or all of the claims, no objections will arise in New Zealand.

At present there may be little additional value to making a GPPH request in New Zealand over a standard examination request. When standard examination is requested, the Office usually issues an examination report promptly within three months. This leaves little room for further acceleration as a result of the GPPH request. Of course if time frames change, then a GPPH request may become more valuable.

However, because examination can happen so promptly, prosecution in New Zealand may be valuable to accelerate examination in other GPPH countries: In addition to the short time period between requesting examination and a first examination report issuing, examiners have a relatively short time period for considering a response (usually around 20 working days). Accordingly, it is possible to receive allowance in New Zealand relatively quickly and then use the allowed New Zealand claims as a basis for a GPPH request in other jurisdictions.

If you require any further information or require guidance as to how the GPPH can be utilised, please do not hesitate to contact us.

David Nowak

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