Differences in patent application procedures between Australia and New Zealand

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Australia

New Zealand

The final acceptance period for IP Australia is 12 months from the date of issuance of the first examination report.

Australian patent law does not have a strict deadline for responding to an examination opinion, but in practice, applicants need to ensure that the examiner has enough time to consider final acceptance within 12 months. According to regulations, the Australian examiner should issue a subsequent examination opinion within 20 working days after receiving the applicant's response.

The AUIPO will not adjust the 12-month acceptance period due to the examiner's delay in issuing a subsequent office action. Therefore, the 12-month deadline is the final deadline and will not be extended even if there is a delay by the patent office.

The deadline for IPONZ final acceptance is 12 months from the date of issuance of the first examination opinion.

Within the 12-month period, the response period to the first office action is 6 months, which can be extended by 1 month if a substantive response is submitted. The response period to subsequent office actions is even shorter.

If the application fails to meet the conditions for granting of the patent within the Acceptance period due to delays caused by IPONZ, and the applicant still has more than 20 working days to respond to the substantive examination opinion, the Patent Office may extend the period accordingly.

If the Patent Office fails to issue a subsequent examination opinion within 20 working days after receiving the applicant's response, it will be deemed as a delay by the Patent Office. In this case, the original 12-month Acceptance deadline will be extended accordingly by the number of days that exceeded the deadline.

A divisional application in Australia can be filed at any time while the parent patent application is pending. The deadline for filing a divisional application depends on the progress of the parent patent application:

• If the parent case enters the Acceptance procedure, the deadline for divisional applications is within 3 months from the date of publication of the parent case in the Official Journal of Australian Patents.
• If the parent case fails to enter the authorized status before the Acceptance deadline, the deadline for the divisional application will be the same as the final acceptance deadline of the parent case.

In Australian practice, there is also a mechanism to maintain the survival of a case, namely, by continuously submitting divisional applications ("chain division") to keep the case valid throughout the 20-year patent protection period.

The deadline for filing a divisional application for a New Zealand patent application is the earlier of:

• Date the parent case was accepted
• 5 years from the date of submission of the complete application

If item 2 applies, a request for substantive examination must be filed at the same time as the divisional application is filed.

If the parent application is not granted within five years from the filing date, the divisional period will expire.

IP Australia is a member of the Global Patent Prosecution Highway (GPPH) program and has signed bilateral PPH agreements with several countries.

Under the GPPH and PPH programs, the claims in the Australian application must sufficiently correspond, or be amended to sufficiently correspond to, one or more claims in the overseas application that have been examined and determined to be allowable/patentable by the Office of First Examination (OEE).

In addition, applicants can also request standard accelerated examination, with reasons including commercial or infringement considerations, or because the invention involves the field of green technology (cleantech). Such requests do not require the claims to correspond to the overseas application, and the examination speed is the same as GPPH or PPH.

IPONZ is a member of the Global Patent Prosecution Highway (GPPH) program and has also signed bilateral PPH agreements with some countries.

Under the GPPH and PPH programmes, all claims in the New Zealand application must fully correspond, or be amended to fully correspond to, one or more claims in the overseas application that have been examined and determined allowable/patentable by the Office of First Examination (OEE).

When assessing whether the claims of a patent application "sufficiently correspond" to accepted claims, IPONZ considers that Swiss-type claims correspond to second medical use claim forms permitted in other countries.

IPONZ also offers a "standard" accelerated examination route. However, the examination standards are stricter. The following circumstances will not be considered "sufficient and legitimate reasons" by IPONZ:

• Desire to commercialize the disclosed product
• It is believed that accelerated examination will help commercialize inventions
• Worried about possible infringement threats

The purpose of the double patent refusal in Australia is to prevent the granting of two or more patents for the “same invention”. This refusal only applies if one or more claims of a patent application are identical in scope to one or more claims of a related patent (i.e., one with the same priority date and the same inventors), such as a divisional application.

In Australian practice, the claims of a divisional application can be broader than those of the parent application, or even completely encompass the claims of the parent application, and vice versa, as long as the claims are not identical. However, if the differences in the claims are minor, they are likely to be considered "the same invention."

In Australia, duplicate patent application is not a ground for invalidity; it can only be used as a ground for refusing the relevant application for patent.

A refusal of double patent in New Zealand is only triggered if a patent application contains one or more claims whose subject matter is “substantially the same” as a claim in an accepted related application, or vice versa.

The meaning of "substantially the same" is defined as "substantially the same", "same except for insignificant details", and/or "not materially different". If the claims fall entirely within the scope of the relevant granted patent application, or entirely cover the scope of the relevant application, they will be allowed by IPONZ and will not be considered to constitute prohibited overlap.

To assess whether there is an overlap of prohibitions, IPONZ has established a "double infringement" test:

• If the claims of the first application are infringed, does that necessarily constitute an infringement of the claims of the second application?
• If the claims of the second application are infringed, does that necessarily constitute an infringement of the claims of the first application?
• If the answer to both questions is “yes,” then the claims are deemed to be “directed to substantially the same subject matter,” and prohibited overlap is found to exist.

Double licensing is not a ground for invalidating a patent.

In Australia, for patent applications with a request for examination filed after October 1, 2024, if the number of claims exceeds 20 at the time of the issuance of the first office action, an excess claim fee will be charged. Multiple dependent claims are considered one claim and no additional official fee will be charged due to the multiple dependencies.

Calculation method of excess fee:

• Calculated based on the number of claims when the first examination opinion is issued
• If the number of claims increases during the examination process, the claim calculation must be repeated.

Fees:

• Claims 21-30, each: AUD 125.00
• Item 31 and above, each item: AUD 250.00

Payment deadline:

• The claim surcharge must be paid within one month from the date of issuance of the first examination opinion.
• If the payment is not made within one month, the application will be deemed abandoned.
• The application can only be reinstated if the fees are paid before the final Acceptance deadline, which is 12 months from the date of issuance of the first examination opinion.

After a request for examination of a New Zealand patent application has been made, if the application has 30 or more claims at any point in time, a claims surcharge will be payable at the time of aceeptance. Multiple dependent claims are treated as one claim and no additional official fee will be charged due to the multiple dependencies.

Calculation method of excess fee:

• Calculated based on the maximum number of claims during the examination period
• Each additional 5 claims beyond the first 25 will be charged NZD 120.00.