Patent filing system changed

The Intellectual Property Office of New Zealand is implementing some changes to patent practice in New Zealand that are worthy of mention.

The first is the Intellectual Property Office of New Zealand (IPONZ) now issues a request for English translations of international application  shortly after entry into national phase in New Zealand. Previously, IPONZ did not request this information.

Under this new practice there is now a three-month deadline set 31 months from the earliest priority date in which to file a verified translation of any document which forms part of a PCT application for entry into national phase in New Zealand and which is not in the English language.

The three month deadline is extendible by two months. If an extension request is not filed or final deadline is not met then the application will be made void and the application will not be restorable.

Another change, which has not yet been implemented, is a proposal by IPONZ to dispose of “significant sections” of their collection of foreign patent documents. To practitioners in many jurisdictions, this may appear to be insignificant. However, New Zealand still has only a local novelty requirement. Therefore, the ability to obtain evidence of receipt of a particular publication with a proven date of public availability in New Zealand can be vital in oppositional or revocation proceedings. A further issue is the lack of clarity on the status of applications available via the internet, which the Court have not to our knowledge considered. The problems surrounding the New Zealand local novelty requirement should be resolved when proposed patent legislation which includes an absolute novelty requirement eventually comes in to force.

This article was published in Managing Intellectual Property, March 2009.