The New Zealand Intellectual Property Office (IPONZ) has expanded the reach of its global patent prosecution network through an arrangement with the China National Intellectual Property Administration (CNIPA). The arrangement will allow patent applicants to request expedited examination in either office if at least one of the claims in a corresponding application has been found patentable.
In this article, Amanda Stark and Dr Megan Cole discuss how this arrangement can be used to decrease wait times for receiving a first examination report in New Zealand.
As discussed in an earlier article, the wait times for receiving a first examination report in New Zealand currently range from 16 months to over 3 years,[1]with applications falling within the pharmaceutical or biotechnology space experiencing the more significant delays.
Average wait times for a first examination report in New Zealand
| Technology Class | Duration |
| Biotechnology | 34 months |
| Chemical | 28 months |
| Electrical | 18 months |
| ICT | 18 months |
| Mechanical | 16 months |
Since New Zealand implements a 5-year rule for requesting examination of a patent application and also for filing any divisional applications, the wait time can – in some cases – be detrimental to ensuring adequate protection is obtained for all commercially relevant embodiments. This is particularly true where an unanticipated lack of unity objection is raised in the first examination report. Consequently, avenues to expedite prosecution in New Zealand without unduly narrowing the scope of the claimed monopoly could be highly desirable to applicants and, by effectively expanding the patent offices that constitute an ‘Office of Earlier Examination’[2] (which historically have excluded CNIPA since China is not party to the Global Patent Prosecution Highway (GPPH) program), the IPONZ-CNIPA arrangement may address at least half of the problem.
Similar to requests made under the GPPH program, a request for expedited examination of a New Zealand patent application via the IPONZ-CNIPA arrangement is available if:
- the relevant New Zealand application has the same priority date as the corresponding application examined by the CNIPA,
- at least one claim in the CNIPA application has been found to be patentable, as evidenced by a work product[3] issued by the CNIPA (e.g., a formal report or action containing an express statement of patentability),
- the NZ claims ‘sufficiently correspond’[4] (i.e., are identical or narrower) to those in the corresponding CNIPA application, and
- no examination report has issued on the NZ application.
IPONZ aims to provide a first examination report within 6 weeks (42 days) of an IPONZ-CNIPA PPH request being allowed.
However, while the reduced wait time for receiving a first examination report may be attractive, utilising the CNIPA as the Office of Earlier Examination may result in narrower claims in New Zealand than could have otherwise been achieved, since the inventive step test used by the CNIPA sets a higher bar than than in other jurisdictions, including New Zealand, Australia and the United States.
Notably, the test for inventive step in China involves three steps:
- determining the closest prior art;
- determining the distinguishing features of the invention and the technical problem actually solved by the invention; and
- determining whether the claimed invention is obvious to a person skilled in the art.
Unlike the ‘Windsurfing’[5] test in New Zealand, the ‘problem and solution’[6] approach in Australia, or the Graham[7] factual inquires in the United States, the inventive step test applied by the CNIPA is through the eyes of a ‘skilled person in the art’[8] (emphasis on the absence of the term ‘ordinary’). As such, prior art documents which could not be reasonably combined in New Zealand, Australia, or even in the United States may be freely combined (i.e., without an explicit teaching or motivation to do so) in an inventive step objection issued by the CNIPA, which in turn might necessitate limiting claims in an application before the CNIPA to a greater extent than would be required elsewhere.
It is expected that a similar fate would be encountered were the process reversed, that is, where a request is made to expedite an application before the CNIPA based on claims considered patentable before IPONZ. Although this approach could reduce the wait time for a first office action from CNIPA, it does not preclude that application from being examined under the CNIPA guidelines. Consequently, the IPONZ-CNIPA arrangement likely should not be considered a means by which to broaden the scope of a claimed monopoly in China.
In our opinion, the benefits gained from expediting examination of a patent application before IPONZ via the IPONZ-CNIPA arrangement may be less comprehensive than those available from a similar request made using GPPH with, e.g., the Australian Intellectual Property Office (IP Australia) as the Office of Earlier Examination. Notably, IP Australia accepts requests for expedited examination for ‘pressing commercial reasons’, effectively truncating the wait time for a first examination report on an application before that office to no more than eight weeks. Hence, if there are corresponding applications in Australia and New Zealand, a faster – and potentially better option for maintaining broad protection – would be to base a GPPH request in New Zealand on the expedited Australian counterpart.
However, as with most intellectual property decisions, the best path forward will certainly need to be determined on a case-by-case basis.
Key takeaways
The New Zealand Intellectual Property Office is facing significant delays in examining patent applications, and the newly implemented IPONZ-CNIPA arrangement may afford greater opportunities for expediting the process. However, the actual benefits of this arrangement will need to be considered in view of the higher inventive step bar to patentability before the CNIPA and the possibility that claims deemed patentable in a corresponding CNIPA application may be narrower than otherwise obtainable in New Zealand.
Therefore, for applicants seeking fast tracked routes to a granted patent, a critical eye to the Office of Earlier Examination is merited. In some instances, the IPONZ-CNIPA arrangement may prove wholly advantageous. However, in other cases, utilising the GPPH may provide a more (commercially) favourable outcome and, as noted above, electing IP Australia as the Office of Earlier can enable the two factors to be achieved simultaneously.
If you are interested in learning more about fast tracking a patent application in New Zealand and/or Australia, please do not hesitate to contact one of our knowledgeable trans-Tasman attorneys today. Our attorneys are able to act in both jurisdictions.
[1] New Zealand Intellectual Property Office, ‘Timeframes’, Support (Web Page) How long will I have to wait for my first examination report?
[2] New Zealand Intellectual Property Office, ‘Mandatory Requirements’, Global Patent Prosecution Highway (Web Page).
[3] New Zealand Intellectual Property Office, ‘Valid work products’, China National Intellectual Property Administration Patent Prosecution Highway (Web Page).
[4] Ibid The meaning of “sufficiently correspond”’.
[5] Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RBC 59, 73–74 approved in Lucas v Peterson Portable Sawing Systems Ltd [2006] 3 NZLR 721, 733 [54]–[55].
[6] Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 ALR 202, 220 [61].
[7] Graham v John Deere, 383 U.S. 1, 148 USPQ 459 (1966).
[8] Patent Examination Guidelines 2023 (CN) pt 2, ch 4, s 2.4.
