The China National Intellectual Property Administration (CNIPA) and the Intellectual Property Office of New Zealand (IPONZ) launched the China-New Zealand Patent Prosecution Highway (PPH) pilot program on 1 November 2024.
Examination delays in New Zealand
The current wait time for examination of patent applications in the field of biology is approximately 3 years from the date of requesting examination, while in the field of chemistry it is slightly shorter (at approximately 2 years from the date of requesting examination).
Limitations to filing divisional applications in New Zealand
A divisional application must be filed before the parent application is accepted. In addition, any divisional application must be filed within 5 years of the filing date of the parent application, and examination of the divisional application must also be requested within this 5-year period. If a complex issue arises during examination of the parent application, the 5-year period mentioned above may have an adverse impact. For example, the opportunity to pursue objectionable claims in a divisional application will not be available if the 5-year period has passed.
Eligibility for the China-New Zealand PPH
A new option to deal with these restrictions is to request accelerated examination under the China-New Zealand Patent Prosecution Highway (PPH) pilot program. No official fee is required for making this request.
For a New Zealand patent application "NZA" filed with IPONZ, if there is a corresponding Chinese patent application "CNA" filed with CNIPA, then a request for accelerated examination of NZA may be made if the patent applications meet the following conditions:
- NZA and CNA have the same earliest date (which can be the priority date or the filing date);
- at least one claim of CNA is considered patentable, and this is confirmed by a work product produced by CNIPA (for example, a formal report or examination opinion clearly identifying the patentable claim(s));
- all claims to be examined in NZA "sufficiently correspond" to the claim(s) in CNA that is/are considered patentable (i.e. the former has the same or narrower scope than the latter); and
- NZA has not received an examination report.
If the PPH request is allowed, the applicant should receive a first examination report from IPONZ within 4 to 8 weeks. This reduced time frame will significantly reduce the examination wait time for patent applications in the fields of biology and chemistry and will preserve the flexibility that divisional applications provide.