Despite their relatively small populations, the good health of the Australian and New Zealand economies means they both represent excellent markets and opportunities for companies from the United States, Europe and Asia. Moreover, the patenting process in both countries is relatively inexpensive and flexible. But there are some key differences that foreign applicants should be aware of in order to tailor their patent strategy in Australia and New Zealand.
Key differences
Perhaps the most significant difference from Australia (and for that matter most other jurisdictions) is that the New Zealand Patent Office does not examine for inventive step (obviousness). This is however a ground of opposition, so we advise applicants to give careful consideration to claim scope in relation to inventive step before the application is accepted.
The New Zealand Patent Office also only applies a local standard of novelty. This is perhaps less relevant now than what it used to be given internet availability of most information. But during revocation proceedings for example, particularly for older patents, it can be an important line of defence not available in any jurisdictions.
Australia is more generous in what it considers to be patentable subject matter, and importantly for those in the pharmaceutical industry, offers up to 5 years of extended patent term.
Changes on the horizon
Expect to see changes in practice, procedure and law in both countries. Important changes will come into law in Australia in April 2013. See An easy guide to Australia's new patent law under the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.
In New Zealand, a Patents Bill, which was read for the second time in parliament in September 2012 will change the local novelty standard to an absolute novelty standard and inventive step will be examinable. When enacted, this will ultimately bring New Zealand practice into closer alignment with Australian practice in some respects, although don’t expect anything too soon – the Bill was first introduced in 2008! And the second reading has introduced some potential “deal breakers”. We will provide an update as the Bill progresses. In the meantime, here’s a comparison of features of Australian and New Zealand practice as they stand today.
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AUSTRALIA |
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NEW ZEALAND |
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FILING REQUIREMENTS |
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31 months |
National phase deadline |
31 months |
|
Not required |
Power of attorney |
Not required |
|
English |
Filing language |
English Non-English applications can provide the translation 3 months post-entry |
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EXAMINATION |
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18 months after priority date |
Publication |
At acceptance |
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Within 6 months of the Patent Office issuing the direction to request examination |
Examination requests |
Automatic upon filing the application |
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Novelty Inventive step (obviousness) Unity Fair basis (support) Sufficiency and clarity Patentable subject matter Manner of manufacture |
Grounds of examination |
Novelty Unity Fair basis (support) Sufficiency and clarity Patentable subject matter Manner of manufacture |
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Absolute |
Novelty standard |
Local |
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Yes – complete application must be filed within 12 months of disclosure |
Grace period |
No |
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Allowable – as well as Swiss form claims |
Methods of medical treatment |
Not allowable – but Swiss form claims are |
|
Allowable |
Computer programs |
Allowable |
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Yes – fees payable for claims beyond 20 at time of acceptance |
Excess claims |
No limitation on claim number |
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No |
Prior art disclosure obligation |
No |
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21 months from first report |
Final acceptance deadlines |
18 months from first report (discretionary extensions) |
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Within 3 months of advertisement of acceptance OR prior to parent lapsing |
Divisional filing deadlines |
Prior to acceptance or prior to parent lapsing |
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Yes |
Post-acceptance amendments |
Yes |
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OPPOSITION |
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Pre-grant opposition |
Type |
Pre-grant opposition |
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Novelty Inventive step Fair basis (support) Sufficiency and clarity Entitlement Patentable subject matter Manner of manufacture Utility |
Grounds of opposition |
Novelty Inventive step Insufficiency Not an invention (ie not a manner of manufacture Entitlement |
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GENERAL |
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Yes |
Signatory to Budapest Treaty |
No |
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Yes – up to 5 years for pharmaceuticals in the medical field (excludes veterinary) |
Extension of term for pharmaceuticals |
No |
|
Annually from 4 years |
Renewals |
4th, 7th, 10th and 13th years payable once allowed |
BAppSc (Hons), PhD, MIP Law
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