New Zealand joins Global Patent Prosecution Highway

As from 6 July 2017 the Intellectual Property Office of New Zealand (IPONZ) will be accepting requests for accelerated examination under the Global Patent Prosecution Highway (GPPH).

The GPPH is an arrangement between over 20 Patent Offices around the world that allows expedited examination to be requested on the basis of claims of a corresponding application that have been found to be allowable by another Patent Office that is a member of the GPPH, for example the US Patent Office or the European Patent Office.  This office is known as the Office of Earlier Examination (OEE).

There is no additional fee to request expedited examination under the GPPH, though a request for examination with the appropriate examination fee must either have been made previously or filed with the GPPH request.

Requirements for filing a GPPH request in New Zealand are:

  1. The New Zealand application and the application of the Office of Earlier Examination (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.
  3. A request under the GPPH must include the following documents:
    1. A copy of the report or action issued by the OEE which expressly identifies the patentable claims.
    2. A copy of the claim set which includes the patentable claim(s) of the OEE application.
    3. 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.

Comment: Australia has been a member of the GPPH since 2013 and now foreign applicants seeking patent protection rapidly in both Australia and New Zealand will be able to use the GPPH, provided of course, they have claims that have been found to be allowable by another member of the GPPH.

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