PCT Applicant's Guide New Zealand EQE - Valid as from 31 Oct 2023

GENERAL INFO
RO
BIO
NATIONAL CHAPTER

Materials for the European Qualifying Examination (EQE)
Special edition as of 31 October 2023, prepared for EQE candidates

Useful information

The PCT Applicant’s Guide is updated almost every week with information received by the International Bureau.

In case of question, please contact the Office or the International Bureau (pct.guide@wipo.int).

List of abbreviations used in this document:

Office: Intellectual Property Office of New Zealand (IPONZ)

NZPA: New Zealand Patents Act

NZPR: New Zealand Patents Regulations 2018

Sec.: Section of the Patents Act

Reg.: Regulation of the Patents Regulations 2018

List of currencies used in this document:

NZD (New Zealand dollar)

Countries and Offices information:

The list of acronyms used for Offices is no longer shown as it has been integrated in the mouseover functionality for each ST.3 code shown in this document.
Refer to List of WIPO Standards, Recommendations and Guidelines formerly Annex K, List of country names and two-letter codes. It includes a list of short names and two-letter codes accepted for use in indicating States, other entities and intergovernmental organizations and their Offices in documents relating to international applications under the PCT. The list is as set out in WIPO Standard ST.3.
Also refer to PCT Contracting States formerly Annex A.

Office profile

For more technical information about the Office, refer to ePCT Office profile.

PCT Reservations, Declarations, Notifications and Incompatibilities

Rule 49.6(f)
Refer to the full list.

Office Closed dates

The Office is closed weekly on Saturday and Sunday

Additional closed dates can be consulted on the Office Closed dates page

International Phase

Annex B - Information on Contracting States or Intergovernmental Organization

Contracting State:

New Zealand

Two-letter code:

Name of Office:

Intellectual Property Office of New Zealand (IPONZ)

Location:

15 Stout Street
Wellington 6011
New Zealand

Mailing address:

P.O. Box 9241
Marion Square
Wellington 6141
New Zealand

Telephone:

International calls
(64-3) 962 26 07
National free calls
0508 447 669
Free calls from Australia
1800 796 338

E-mail:

General enquiries
info@iponz.govt.nz
Enquiries concerning ePCT
epct@iponz.govt.nz

Website:

http://www.iponz.govt.nz

Facsimile:

None

Does the Office accept the filing of documents by facsimile or the like means (PCT Rule 92.4)?

Yes,

via the Office’s online case management facility

Which kinds of documents may be so transmitted?

Please refer to the Office

Must the original of the document be furnished in all cases?

Please refer to the Office

Does the Office send notifications via e-mail in respect of international applications?

Yes

Would the Office accept evidence of mailing a document, in case of loss or delay, where a delivery service other than the postal authorities is used (PCT Rule 82.1)?

Is the Office prepared to allow applicants to make applications available to the WIPO Digital Access Service for Priority Documents (DAS) (PCT Rule 17.1(b-bis)?

Yes, the Office is prepared to allow applicants to make national applications available to the WIPO DAS

Competent receiving Office(s) for international applications filed by nationals or residents of this State:

IB,

Does national legislation restrict the filing of international applications with foreign Offices?

Refer to the Office

Competent designated (or elected) Office(s) for this State:

Refer to corresponding National Phase.

Types of protection available via the PCT:

Patents

Patents of addition

Availability under the national law for an international-type search (PCT Article 15):

None

Provisional protection after international publication:

Section 81 of the New Zealand Patents Act 2013 provides that after the complete specification has become open to public inspection and before the patent is granted the nominated person (as defined in section 5) is taken to have generally the same privileges and rights as if the patent had been granted on the day that the specification became open to public inspection except the nominated person cannot bring a proceeding until after the patent has been granted.

Information of interest if this Contracting State is designated (or elected)

Time when the name and address of the inventor must be given:

May be in the request or may be furnished later. If not already complied with within the time limit applicable under PCT Article 22 or 39(1), the Office will invite the applicant to comply with the requirement within a time limit fixed in the invitation.

Are there special provisions concerning the deposit of microorganisms and other biological material?

Yes, refer to Annex L.

Annex C - Receiving Office

Competent receiving Office for nationals and residents of:

New Zealand

Language in which international applications may be filed:

English

Language accepted for language-dependent free text in the sequence listing:

Same as above

Language in which the request may be filed:

English

Number of copies required by the receiving Office if application filed on paper:

Does the receiving Office accept the filing of international applications in electronic form?

Yes, the Office accepts XML and PDF files filed using ePCT-Filing

For the relevant notifications by the Office, refer to the Official Notices (PCT Gazette) dated 25 September 2014, pages 140 et seq. and 28 July 2022, page 198.

Where the international application is filed in electronic form in accordance with and to the extent provided for in Part 7 and Annex F of the Administrative Instructions, the total amount of the international filing fee is reduced (refer to “Fees payable to the receiving Office”).

Where the international application contains a sequence listing as a separate part of the description, this must be furnished in accordance with Annex C of the Administrative Instructions, that is, in compliance with WIPO Standard ST.26 XML format; no fees are due for sequence listings filed in this format.

Does the receiving Office accept requests for restoration of the right of priority (PCT Rule 26bis.3)?

Yes, the Office applies both the “unintentional” and the “due care” criteria to such requests

Competent International Searching Authority:

AU,

EP,

KR,

Competent International Preliminary Examining Authority:

AU,

EP ¹,

KR,

US ¹

Fees payable to the receiving Office:

Transmittal fee:

207 NZD

Inclusive of Goods and Services Tax

International filing fee:

2,387 NZD

This fee is reduced by 90% if certain conditions apply (refer to Annex C(IB)).

Fee per sheet in excess of 30:

27 NZD

Reductions (under Schedule of Fees, item 4):

Electronic filing (the request in character coded format):

359 NZD

Electronic filing (the request, description, claims and abstract in character coded format):

539 NZD

Search fee:

Refer to
Annex D(AU)
Annex D(EP)
Annex D(KR)
Annex D(US)

Fee for priority document (PCT Rule 17.1(b)):

None

Fee for requesting restoration of the right of priority (PCT Rule 26bis.3(d)):

None

Is an agent required by the receiving Office?

Who can act as agent?

Any person registered to practice before the Office as a patent attorney

Information about registered patent attorneys is available from the Trans-Tasman IP Attorneys Board at:
https://www.ttipattorney.gov.au/

Waiver of power of attorney:

Waivers of powers of attorney do not apply (PCT Rule 90.4(e) and 90.5(d)) where the agent or common representative submits any notice of withdrawal during the international phase (PCT Rule 90bis.1 to 90bis.4, also refer to International Phase, paragraph 11.048).

Has the Office waived the requirement that a separate power of attorney be submitted?

Yes

Particular instances in which a separate power of attorney is required:

Where there is a change in representation, that is where an applicant is represented by a new agent or representative

Has the Office waived the requirement that a copy of a general power of attorney be submitted?

Yes

Particular instances in which a copy of a general power of attorney is required:

Where there is a change in representation, that is where an applicant is represented by a new agent or representative

Annex L - Deposits of Microorganisms and Other Biological Material

Requirements of designated and elected Offices

Only Offices whose applicable national law contains provisions concerning the deposits of microorganisms and other biological material are listed in Annex L. Unless otherwise indicated, deposits may be made for the purposes of patent procedure before these Offices with any depositary institution having acquired the status of international depositary authority under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure.

For a list of these institutions refer to:

http://www.wipo.int/treaties/en/registration/budapest/pdf/idalist.pdf

Notifications related thereto may be consulted under:

http://www.wipo.int/treaties/en/registration/budapest/

Further information concerning the requirements of international depository authorities under the Budapest Treaty is available at:

http://www.wipo.int/budapest/en/guide/index.html

Time (if any) earlier than 16 months from priority date by which applicant must furnish:

— the indications prescribed in Rule 13bis.3(a)(i) to (iii):

None

— any additional indications:

At the time of filing (as part of the specification)

Additional indications (if any) which must be given besides those prescribed in Rule 13bis.3(a)(i) to (iii) pursuant to notifications from the Office:

To the extent available to the applicant, relevant information on the characteristics of the microorganism

National Phase

Summary of requirements for entry into the national phase

Time limits applicable for entry into the national phase:

Under PCT Article 22(3): 31 months from the priority date
Under PCT Article 39(1)(b): 31 months from the priority date

Translation of international application required into (one of) the following language(s):

English

Required contents of the translation for entry into the national phase:

Under PCT Article 22: Description, claims, any text matter of drawings (if any of those parts has been amended, both as originally filed and as amended)

Under PCT Article 39(1): Description, claims, any text matter of drawings (if any of those parts has been amended, both as originally filed and as amended)

Is a copy of the international application required in particular circumstances?

Applicant should only provide a copy of the international application if he/she has not received Form PCT/IB/308 and the Office has not received a copy of the international application from the International Bureau under PCT Article 20. This may be the case where the applicant expressly requests an earlier start of the national phase under PCT Article 23(2).

National fees:

Must be furnished or paid within the time limit applicable under PCT Article 22 or 39(1).

Patents or patents of addition

Filing fee

250 NZD

plus Goods and Services Tax for New Zealand residents

Exemptions, reductions or refunds of fees:

None

Special requirements of the Office (PCT Rule 51bis):

If not already complied with within the time limit applicable under PCT Article 22 or 39(1), the Office will invite the applicant to comply with the requirement within a time limit fixed in the invitation.

Name and address of each inventor if they have not been furnished in the “Request” part of the international application ²

Address for service in New Zealand or Australia (no representation by an agent is required)

An electronic communication address must be provided by all persons communicating with the Office

Verification of translation of international application

Who can act as agent?

Any person registered to practice before the Office as a patent attorney

Information about registered patent attorneys is available from the Trans-Tasman IP Attorneys Board at: https://www.ttipattorney.gov.au/

Does the Office accept requests for restoration of the right of priority (PCT Rule 49ter.2)?

Yes, the office applies both the “unintentional” and the “due care” criteria to such requests

The procedure in the national Phase

NZ.01 FORM FOR ENTERING THE NATIONAL PHASE

It is strongly recommended that the national phase application be filed through the Office’s online case management facility, which operates in real time so that the applicant receives immediate confirmation of the filing date. The applicant is required to provide an electronic communication address for all further communications between the Office and the applicant, which must take also place via the case management facility.

NZ.02 TRANSLATION

PCT Rule 17.2(a), PCT Rule 51bis.1(d), PCT Rule 91, NZPA Sec. 50, NZPA Sec. 51(1)(d), NZPA Sec. 51(1)(e), NZPR 63(2), NZPR Reg. 65, NZPR Reg. 70
A verified translation into English of any document forming part of the international application must be furnished to the Office within three months of the commencement date of the national phase, which time can be extended by up to two months. Documents include the original specification, Article 19 and Article 34 amendments and Rule 91 rectifications; these translations must be filed as separate documents. A verified English translation of the priority document is not required, unless requested by the Office.

NZ.03 TRANSLATION (VERIFICATION)

The required verified translation is a translation into English of an accompanying document that has a certificate of verification attached. The certificate of verification is a statement that a document to which the statement refers is a true and complete translation of the accompanying document to the best of the knowledge of the person who signs the statement and must be dated and signed.

The (or each) certificate must contain the NZ patent application number or the PCT international application number and should be included in a single document with the translation(s) referred to, or if the certificate is not so included it must be filed on the same day and evidently correspond to its translated document as part of the same filing transaction.

The Office will invite the applicant, during an on line request to enter national phase, to file a verified translation in the prescribed format and time. Failure to do so may result in the application being deemed void, and the applicant may then request restoration.

NZ.04 TRANSLATION (CORRECTION)

Errors in the translation of the international application can be corrected with reference to the text of the international application as filed (refer to National Phase, paragraphs 6.002 and 6.003).

NZ.05 FEES (MANNER OF PAYMENT)

The manner of payment of the fees indicated in the Summary and in this Chapter is outlined in Annex NZ.I.

NZ.06 REQUEST FOR EXAMINATION

The Office examines national patent applications only after a request for examination has been received and the examination fee has been paid. Examination must be requested within five years of the international filing date, or where the Office issues a direction to the applicant to request examination, within two months of the date of the direction.

The amount of the fee for requesting examination is set out in Annex NZ.I. An application must be accepted within 12 months after the date of issuance of the first examination report.

Before an application is accepted, a notice of entitlement of the applicant to the grant of the patent must be filed. The notice must be filed before acceptance. This requirement may be met if the applicant files a notice indicating the relevant declarations in accordance with PCT Rule 4.17(ii).

NZ.07 ADDRESS FOR SERVICE

NZPR Reg 3, NZPR Reg 14, NZPR Reg 34
An applicant, irrespective of whether or not he/she is a national of or a resident in New Zealand, is not required to be represented by an agent, but is required to have an address for service (of notices and other communications) in New Zealand or Australia. Any applicant may be represented by a patent attorney authorised to practice before the Office and the address for service should normally be that of a registered patent attorney.

Information about registered patent attorneys is available from the Trans-Tasman IP Attorney Board at:
https://www.ttipattorney.gov.au/

NZ.08

PCT Art. 4(4)
he name and address of each inventor must be provided at the time of requesting entry into the national phase or within a time subsequently prescribed by the Office.

NZ.09 AMENDMENT OF THE APPLICATION; TIME LIMITS

PCT Art. 28, PCT Art. 41, NZPA Sec. 33(5), NZPA Sec. 40, NZPA Sec. 201, NZPA Sec. 202, NZPR Reg. 58, NZPR Reg. 136, NZPR Reg.137, NZPR Reg. 138, NZPR Reg. 139, NZPR Reg. 140
The applicant may make the following modifications to his application before the Office:

(i) prior to acceptance:

— corrections of clerical errors or omissions in the patents register, patents, patent applications, or any documents filed in connection with a patent application or proceedings before the Commissioner in connection with a patent or patent application. This does not apply to errors or omissions in a patent specification;

— amendments that do not result in the broadening of the description and/or claims by the incorporation of new matter (beyond the disclosure of the international application as filed) otherwise the Commissioner may direct post-dating of the application and specification;

(ii) after acceptance:

— corrections of clerical errors or omissions per (i) above;

NZPA Sec 83, NZPA Sec 84, NZPA Sec 85, NZPA Sec 86, NZPA Sec 87, NZPA Sec 88,, NZPR Reg 87, NZPR Reg 88, NZPR Reg 89
— no amendment is allowed, except for the purpose of correcting an obvious mistake, the effect of which would be that the application as amended would claim or describe matter not disclosed in substance in the application before amendment, or that any amended claim would not fall wholly within the scope of a claim of the application before amendment.

NZ.10 PATENT OF ADDITION

PCT Art. 4(3), PCT Art. 43, PCT Rule 49bis.1(c), PCT Rule 76.5, NZPA Sec. 106, NZPA Sec. 107, NZPA Sec. 108, NZPA Sec. 109, NZPA Sec. 110, NZPA Sec. 111, NZPR Reg. 100
A request by the applicant to have a patent granted as a patent of addition may be made at any time from the date of filing of the national phase application. The applicant should also indicate the number of the patent or patent application to which he seeks a patent of addition.

NZ.11 MAINTENANCE AND RENEWAL FEES

NZPA Sec. 20, NZPA Sec. 21, NZPA Sec. 35, NZPR Reg. 8, NZPR Reg. 9, NZPR Reg. 10
Maintenance fees are payable annually on all applications from the 4^th anniversary of the international filing date. After grant, renewal fees are payable annually and are due on the corresponding anniversary of the international filing date. An annual maintenance fee is due on the 4^th anniversary of the international filing date of applications following entry into national phase. Following grant, an annual renewal fee is payable on the anniversary date of the international filing date. Where a maintenance fee has been paid, and a patent is granted before the next annual payment is due, then the next annual payment will be the renewal fee. Maintenance and renewal fees may be paid in the period of three months preceding the anniversary date, and up to six months late (with an increased maintenance fee or a penalty fee for renewal fees). The amounts of the maintenance and renewal fees are indicated in Annex NZ.I.

NZ.12 EXCESS CLAIMS FEE

NZPR Reg. 11A
An excess claims fee for the examination of the application and specification will be payable after the application has been accepted if, at any time between the filing of the request for examination and the acceptance of the specification, the specification contains 30 or more claims concurrently. The applicant will be informed of the fee amount, as indicated in Annex NZ.I, after the specification has been accepted, and the grant of the patent will be postponed until the excess claims fee has been paid. The excess claims fee will be waived or refunded at the applicant’s request if the application is withdrawn or abandoned, or if the grant of the patent is refused. If an application is abandoned then restored, the excess claims fee remains payable.

NZ.13 REVIEW UNDER ARTICLE 25 OF THE PCT

PCT Art. 25, PCT Rule 51, NZPA Sec. 208
The applicable procedure is outlined in paragraphs 6.018 to 6.021 of the National Phase. If, upon review under PCT Article 25, the Office denies an error or omission on the part of the receiving Office or the International Bureau, the applicant may request a hearing before the Commissioner.

NZ.14 EXCUSE OF DELAYS IN MEETING TIME LIMITS

PCT Art. 24(2), PCT Art. 48(2), NZPA Sec. 231, NZPA Sec. 232, NZPR Reg. 146, NZPR Reg. 147, NZPR Reg. 148
Once the application has entered the national phase, the Commissioner may, in his/her discretion, extend certain time limits for doing acts or taking proceedings under the regulations, upon request. Such extension may be granted although the time has expired for doing the act or taking the proceedings. A request for such an extension can be filed through the online system.

NZ.15 CHANGE OF NAME OR SUBSTITUTION OF APPLICANT

NZPA Sec. 129, NZPR Reg. 122
Where the applicant for entry into national phase in New Zealand differs from the applicant for the corresponding international application and this change of name or substitution has not been recorded at the International Bureau under Rule 92bis, the New Zealand applicant should apply to the Office to record the change of name or substitution of applicant using the Office online system.

Annexes

Annex NZ.I - Fees

These amounts are periodically updated and are available from the Office at:
https://www.iponz.govt.nz/about-ip/patents/fees/

Standard patent applications

Filing fee

250 NZD

Maintenance (payable only at pre-grant):

— on the 4^th and each subsequent anniversary of the filing date of the complete specification if the fee is paid during the period prescribed by regulation 9(1)(a)

200 NZD

— on the 4^th and each subsequent anniversary of the filing date of the complete specification if the fee is paid during the further period prescribed by regulation 9(1)(b)

300 NZD

Renewal fees (payable only at post-grant):

— on the 4^th, 5^th, 6^th, 7^th, 8^th and 9^th anniversary of the filing date of the complete specification if the fee is paid during the period prescribed by regulation 10

200 NZD

— on the 10^th, 11^th, 12^th, 13^th and 14^th anniversary of the filing date of the complete specification if the fee is paid during the period prescribed by regulation 10

450 NZD

— on the 15^th, 16^th, 17^th, 18^th, and 19^th anniversary of the filing date of the complete specification if the fee is paid during the period prescribed by regulation 10

1,000 NZD

Penalty payable for a request to extend the period for payment of a renewal fee during the penalty period prescribed by section 21(1)

100 NZD

Fee for voluntary amendment of a complete specification:

— before acceptance

150 NZD

— after acceptance

500 NZD

Request for examination fee

750 NZD

Excess claims fee for examination, for each 5^th claim in excess of 25

120 NZD

Request for restoration of a patent or patent application (including ‘late entry’ into the national phase)

600 NZD

Request for a hearing

850 NZD

Patents of addition

All fees as for standard patent applications, with the exception that renewal fees are not payable

How can payment of fees be effected?

For more information see:
https://www.iponz.govt.nz/about-ip/patents/

Fees must be paid by electronic means once an application has entered the national phase. Goods and Services Tax is payable by New Zealand residents.

Forms

Please refer to the Office.

Notes:
¹ ^a ^bThe Office is competent only if the international search is or has been carried out by that Office.
² ^aThis requirement may be satisfied if the corresponding declaration has been made in accordance with PCT Rule 4.17.

Processing

NZ - New Zealand
Intellectual Property Office of New Zealand (IPONZ)

Useful information

International Phase

Annex B - Information on Contracting States or Intergovernmental Organization

Annex C - Receiving Office

Annex L - Deposits of Microorganisms and Other Biological Material

National Phase

Summary of requirements for entry into the national phase

The procedure in the national Phase

Annexes

Processing

NZ - New Zealand Intellectual Property Office of New Zealand (IPONZ)

Error Information Warning Confirmation

NZ - New Zealand
Intellectual Property Office of New Zealand (IPONZ)