New Zealand.

The deadline for national phase entry into New Zealand is 31 months from the earliest priority date. Early national phase entry prior to publication of the international application is permitted.

An extension of time is available for national phase entry in prescribed circumstances. Please contact us if you require an extension of time.

The international application or publication number is required to proceed with national phase entry in New Zealand, if the international application was published in English. However, a copy of the application as originally filed must be provided if national phase entry is requested prior to publication of the originating international application.

Excess claim fees are not payable upon national phase entry or at any stage of New Zealand registration.

A Power of Attorney or any other document executed by an Applicant or an Inventor is not required to perfect national phase entry in New Zealand. However, we will need confirmation of the manner in which the Applicant derives entitlement from the Inventor(s) to grant of the patent in New Zealand (e.g., by way of assignment, employment contract), preferably together with copies of any documents establishing that entitlement. A Notice of Entitlement must be submitted prior to acceptance of the application.

For international applications in a language other than English or Maori, an English translation, verified by the translator, must be filed within three months of national phase entry into New Zealand. This is extendable by two months.

An examiner may request a verified English language translation of the priority patent document if a validity-related issue arises, in which determination of the correct priority date is important.

An application under the Paris Convention may be filed in New Zealand within 12 months of the earliest priority date. The following information will be required to secure a filing date:

• A copy of the complete specification in English (title, description, claims, drawings/sequences if any, and an abstract)
• The official number, filing date, and country of the priority application(s)
• The name of the inventor(s)
• The name, address, and nationality of the Applicant(s)

An examiner may request evidence in support of the convention priority claim during examination. The evidence is a certified copy of the basic application document and a verified translation thereof (if applicable). It must be supplied within two months of the request.

A Power of Attorney or any other document executed by an Applicant or an Inventor is not required to perfect national phase entry in New Zealand. However, we will need confirmation of the manner in which the Applicant derives entitlement from the Inventor(s) to grant of the patent in New Zealand (e.g., by way of assignment, employment contract), preferably together with copies of any documents establishing that entitlement. A Notice of Entitlement must be submitted prior to acceptance of the application.

​New Zealand is a first-to-file, absolute novelty country. Publication of the invention or public use anywhere in the world before the priority date can invalidate any patent granted on an application.
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New Zealand has a 12-month “grace period” for any disclosures that took place on or after 30 December 2018.

The Applicant may provide a statement to IPONZ that the invention was publicly disclosed by or with the consent of the Applicant in the 12-month period prior to the filing date of the complete specification.

The statement may be provided before the start of examination, or in response to an objection that the claimed invention is not novel or inventive in light of the disclosure.

A Request for Examination must be filed within 5 years of the filing date of the complete application. However, the Commissioner will usually direct the Applicant to request examination of the patent application within about 6 to 9 months from national phase entry. The direction sets a non-extendable 2-month period within which examination must be requested.

It is possible to request postponement of acceptance under New Zealand practice. The practical consequence of filing this request is that the request for postponement for acceptance will expire 12 months after receipt of the first examination report, which is also the deadline for putting the application in order for acceptance.

A first examination report sets a 6-month deadline for filing a response, which is extendable by two-months as of right. Subsequent examination reports set a 3-month deadline for filing a response. The patent application must be placed in order for acceptance within 12 months from issuance of the first examination report.
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It is possible to expedite examination of the New Zealand patent application using the Global Patent Prosecution Highway (GPPH). More information on this is available here.

A divisional application must be filed before acceptance of its direct parent. Acceptance is achieved when a Notice of Acceptance issues. That is, the New Zealand Examiner will determine when the Notice of Acceptance is issued and thus the acceptance date. The acceptance date is not an extendable deadline. An application may proceed to acceptance without issuance of an Examination Report.

Examination of a divisional application(s) must be requested within 5 years of the filing date of the first filed New Zealand application in the chain, which includes grandchild applications. The deadline to perform this act is not extendable. This aspect of New Zealand practice creates a 5-year deadline from the filing date of the first filed New Zealand patent application to file all divisional applications that may be required and request examination of the divisional application(s) within the 5-year time limit. This is particularly important if unity of invention issues have arisen.

Accordingly, it is best practice to file one or more divisional application(s) (if required) at the time examination of the parent application is requested.

Divisional claims in New Zealand should not cover substantially the same subject matter as the claims in the parent application, and IPONZ generally requires no overlap in scope between the claims of the divisional and parent application. This “double patenting” issue can be addressed during the examination stage.

Renewal fees are payable on the 4th anniversary of the complete application filing date, irrespective of whether or not a patent has been granted.
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The term of a New Zealand patent is 20 years from the filing date.

The following information is required to secure a filing date for a New Zealand trade mark application:

• Details of the trade mark, inclusive of any claim to a colour limitation. A high quality electronic file,  preferably JPEG or TIFF format, is required if the trade mark includes graphical elements.
• A description of goods and/or services categorised pursuant to the Nice Convention. Multi-class applications are permitted.
• The name and address of each Applicant. An Applicant must be an individual, a company, an incorporated association, a statutory body, or other legal person.

A trade mark application claiming Paris Convention priority from a foreign application must be filed within 6 months of the filing date of the first filed application. The following information is required to secure a filing date:

• Details of the trade mark, inclusive of any claim to a colour limitation. A high quality electronic file, preferably JPEG or TIFF format, is required if the trade mark includes graphical elements.
• A description of goods and/or services categorised pursuant to the Nice Convention. Multi-class applications are permitted.
• The name and address of each Applicant. An Applicant must be an individual, a company, an incorporated association, a statutory body, or other legal person.
• The official number, filing date, and country of the priority application(s)

Protection in New Zealand may also be extended under a Madrid Protocol application. An Authorisation of Agent form, executed by the Applicant, must be filed in order for us to assume representation of an International Registration Designating New Zealand.

A trade mark application will examined within 15 days of receipt of the application by IPONZ.

A compliance report will issue if lawful grounds of objection are raised by an examiner. The compliance report sets a 12-month period to respond to the issues raised by the examiner. Further compliance reports will either confirm the original deadline or, where more than 10 months have elapsed from filing the application, set a new deadline of 2 months from the date of the further compliance report.

The most common objections raised by the examiner include that the applied-for trade mark is non-distinctive or that there is a conflict with identical or similar trade marks on the register.

When the application is considered to comply with the requirements of the Trade Marks Act 2002, the application will be accepted and an acceptance notice will issue. The accepted application can be opposed by any party within 3 months of the advertisement date. In the absence of an opposition, the application will proceed to registration.

Filing of a divisional application is permitted in New Zealand.

There is no statutory requirement to include a basis of use in a New Zealand trade mark application. However, the application must contain a positive statement that the trade mark is in use or is proposed to be used in New Zealand before the application can be accepted.

There is no obligation that the owner of the trade mark demonstrates use of the trade mark as a condition of registration, or for maintenance of the trade mark on the trade mark register. Therefore, a trade mark can remain on the New Zealand trade mark register indefinitely without actual demonstration of use on the claimed goods and/or services during the course of trade.

Under s66 of the Trade Marks Act 2002, an aggrieved person may apply to the Commissioner for revocation of the registration of a trade mark on the grounds that at no time during a continuous period of 3 years or more was the trade mark put to genuine use in the course of trade in New Zealand. A “continuous period” means a period that commences from a date after the actual date of registration and continues uninterrupted up to the date 1 month before the application for revocation.

The application for revocation can be in respect of some, or all, of the claimed goods and/or services. The owner of the registration must then provide proof of the use of the trade mark or raise special circumstances that justify the non-use of the trade mark.

A trade mark registration can be renewed every 10 years. The renewal can be paid 12 months in advance of the deadline.

An international registration designating New Zealand is renewed at WIPO using the centralised Madrid Protocol renewal procedure.

The following material is required to secure a filing date for a New Zealand design application:

• A set of representations that completely and unambiguously identify the design. In the case of convention applications, unclear representations or representations not showing sufficient information will trigger a formality objection. It is possible to respond by providing improved representations in response to such an objection. However, the additional representations could indicate that the design was not adequately represented at the filing date. This could result in the filing date requiring post-dating.
• The name of the product in relation to which the design is to be registered.
• The name and address of the applicant(s) and the designer(s).

Applications lodged in the name of trusts, business names, trading styles, unincorporated associations, clubs, partnerships per se or societies will not be allowed.

An application for the registration of a design claiming Paris Convention Priority from a foreign application must be filed within 6 months of the filing date of the first filed application. The New Zealand application must be for the same design as the design of the earlier application. The scope of protection is limited to the representations filed with the application. However, it is possible to have a “Statement of Novelty” so that novelty can be assessed with regard to particular visual features. This can bring the New Zealand application into conformity with the basic application.

The following material is required to secure a filing date:

• The official number, filing date, and country of the priority application(s).
• A copy of the representations filed with the priority application(s).
• The name and address of each Applicant and Designer.
• A certified copy of the convention documents and verified translations (if necessary). These need to be filed within 3 months of the application date.
• A copy of any assignment documentation in terms of which the designer(s) has assigned rights to the applicant(s). Alternatively, we will need confirmation of the manner in which such assignment has occurred.
• An authorisation of agent, which is similar to a power of attorney.

New Zealand is not a member of the Hague Convention.

The application for registration will be examined within 15 working days of the filing date.

An Examination Complete report issues if the design is considered registrable. Instead, an examination report outlining the reasons that the design is not registrable is issued. Issuance of the report sets a 12 month deadline (extendable by 3 months) for meeting conditions of registrability. A hearing is possible if it is not possible to reach a resolution with the examiner.

The term of registration is 15 years from its date of registration, which is the filing date once the design is registered. Renewal fees are payable twice, by the 5th and 10th anniversaries of the registration date of registration.