Expedited Examination of a New Zealand patent application under the Global Patent Prosecution Highway (GPPH).

The Intellectual Property Office of New Zealand (IPONZ) is a participating office in the GPPH. The GPPH allows expedited examination before IPONZ based upon at least one allowable claim issued on a corresponding application from an Office of Earlier Examination (OEE).

The following Offices of Earlier Examination (OEE) participate in the GPPH:

  • Austrian Patent Office
  • Korean Intellectual Property Office
  • Canadian Intellectual Property Office
  • Nordic Patent Institute
  • Danish Patent and Trademark Office
  • Norwegian Industrial Property Office
  • Estonian Patent Office
  • Patent Office of the Republic of Poland
  • Finnish Patent and Registration Office
  • Portuguese Institute of Industrial Property
  • German Patent and Trade Mark Office
  • Russian Federal Service for Intellectual Property
  • Hungarian Intellectual Property Office
  • Spanish Patent and Trademark Office
  • Icelandic Patent Office
  • Superintendence of Industry and Commerce – Colombia
  • IP Australia
  • Swedish Patent and Registration Office
  • Intellectual Property Office of Singapore
  • United Kingdom Intellectual Property Office
  • Israel Patent Office
  • United States Patent and Trademark Office
  • Japan Patent Office
  • Visegrad Patent Institute

Requirements

The following requirements must be met for consideration under the GPPH:

  1. The New Zealand application and the corresponding application considered by the OEE must have the same earliest filing date or priority date (whichever is relevant).
  2. The corresponding application must include at least one claims that is novel, inventive, and useful. An official correspondence from the OEE must include an express statement of patentability for these claim(s).
  3. Supporting documents in the form of:
  • A copy of the official correspondence issued by the OEE that expressly identifies the patentable claims;
  • A copy of the claims that includes the patentable claims(s) of the corresponding application; and
  • A claim concordance table which identifies the patentable claim(s) of the corresponding application and identifies the corresponding claim(s) to be examined by IPONZ. The claims must sufficiently correspond to one another. The claims for consideration by IPONZ must be of the same, similar or narrower scope than the patentable claim(s). The claims to be considered by IPONZ cannot be broader in scope than the patentable claim(s). Claims in different categories are not considered to sufficiently correspond. By way of example, if the corresponding application contains only claims to a composition of matter, then claims filed at IPONZ including a method of making the composition of matter will not be considered to meet the standard of “sufficiently correspond”.

Where the supporting documents are not in English, a verified English translation must be provided to IPONZ.

A request for expedited examination under the GPPH can be made at either at the time of filing an application, or via a later amendment. Filing of a request under the GPPH will automatically commence examination of an application.

Other material may be filed with the GPPH request, such as cited documents, a cover letter, non-patent literature cited by the OEE, or other materials which relate to the GPPH request.