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.
If you would like to take advantage of the new China-New Zealand PPH pilot program, or have any questions about the program, please contact our team.
