On 1 December 2024, the Intellectual Property Office of New Zealand (IPONZ) and the European Patent Office (EPO) launched a new Patent Prosecution Highway (PPH) pilot programme.
The PPH pilot programme is intended to run for at least three years (i.e. until 30 November 2027), after which time, IPONZ and the EPO will evaluate the results of the pilot programme to determine whether and how the PPH should be fully implemented.
The IPONZ-EPO PPH allows patent applicants to request accelerated examination of their patent application in either New Zealand or Europe if at least one patent claim of a corresponding application (having the same priority date or filing date) has been allowed in the other country.
There is no official fee for requesting examination under the PPH at IPONZ, but the following documents must be provided with the request:
- A copy of a European examination report, or any other formal report or action issued by the EPO (such as a Written Opinion or International Preliminary Report on Patentability where the EPO is the International Search or Examination Authority), and confirming the allowance of at least one claim of the corresponding patent application;
- A copy of the allowed claims of the European patent application;
- A complete specification for the New Zealand application that includes claims that ‘sufficiently correspond’ to the European claims (i.e. the New Zealand claims must be of the same scope, similar scope, or of narrower scope to the claims of the European patent application); and
- A claims table that matches the allowed European claims to the corresponding New Zealand claims, or a statement to this effect where the claims are identical.
- An English translation of any of the above documents, if not in English.
If necessary, it is possible to amend the claims of the New Zealand patent application to sufficiently correspond with the European claims when submitting the request for examination under the IPONZ-EPO PPH, or beforehand.
Being able to fast-track the patenting process can offer important benefits to patent applicants, such as the potential for reduced patent examination costs, and the early securement of patent rights to harness market potential and hold competitors at bay.
But the IPONZ-EPO PPH path might not be appropriate for all patent applications. Before using the IPONZ-EPO PPH, we suggest giving close consideration to the nature of protection sought in New Zealand. This is because New Zealand patent law generally accommodates a wider range of claim strategies in a patent application than European patent law allows. For example, in Europe, it is only possible to include one independent product claim and/or one independent method claim in a European patent. In contrast, New Zealand allows multiple independent product claims and/or method claims to be included in a patent application, provided that the claims are unified to protect the same inventive concept and that the claim set is succinct. Furthermore, Europe charges excess claims fees for all claims in excess of 15, whereas in New Zealand, excess claims fees are only payable for patent applications that include 30 or more claims. It is therefore not unusual for patent applicants to take the opportunity to increase the scope of patent protection in New Zealand by amending their New Zealand patent application to include independent claims and dependent claims that were not included in a European patent application of the same patent family.
As noted above, the claims of a New Zealand patent application, for which an IPONZ-EPO PPH request has been made, must ‘sufficiently correspond’ to the claims of the corresponding European patent application. According to the IPONZ guidelines, if the New Zealand application includes a new or different category of claims to those of the European patent application (i.e. if the New Zealand application includes additional independent claims), then the claims will not be considered to sufficiently correspond. An exception is made for second medical use claims, which should be submitted in Swiss-type form.
If you would like further information about the IPONZ-EPO PPH, please contact us.