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Overseas applications

Filing New Zealand applications overseas

A patent is a territorial right, meaning that separate applications must be filed in each country in which protection is required.

Patent protection can be obtained for inventions in over 141 countries via the Patent Co-operation Treaty (PCT). A PCT application does not result in the grant of a ‘world patent’. Instead, a PCT application extends the deadline for lodging a national phase patent application in a PCT member country or region by at least 18 months.

If you are only interested in obtaining patent protection in around one to three overseas countries, an alternative to filing a PCT application is to file a convention patent application directly into the country or countries of interest within 12 months of the filing date of your New Zealand patent application. However, if you do this adequate time needs to be allowed for obtaining any necessary translations or legalisation of the priority documents.

For more information please read our information sheets “Where to file first?“, “Overseas patent filing strategy: choosing countries” and “Overseas applications: PCT v Convention“.

In most countries, if an overseas application is filed within 12 months of the filing date of your New Zealand patent application, that country will treat the New Zealand filing date as the filing date in that country.

Australia is usually a key market for many New Zealand companies and patent applicants. The Australian patent system is very similar to that in New Zealand but there is one significant difference. In addition to standard patents, patent applicants in Australia have the option of filing an innovation patent. An innovation patent confers a shorter monopoly than a standard patent (8 years rather than 20 years), but it requires a lower degree of innovation to obtain a valid patent and it only needs to be examined if the patent rights need to be asserted. For more information please see our information sheet “Standard v innovation patents (Australia)“.

In general, a patent application should be filed before there is any public disclosure or commercial use of the invention. However, some countries have provisions allowing for a valid patent to be obtained even if there has been prior disclosure. As a rule, these provisions should not be relied upon and only used when necessary. For more information please see our information sheet “What options are available if I have already disclosed my invention?“.

If your New Zealand patent application has already been examined and one or more of its claims has been deemed patentable, then you can use this to expedite examination of corresponding applications in 21 other countries. This is achieved by using the Global Patent Prosecution Highway (GPPH), an examination regime designed to reduce patent examiners’ workloads by allowing them to duplicate the efforts of the original examiner instead of conducting their own examination. Find out more about how to utilise the GPPH by reading our information sheet “Global Patent Prosecution Highway – NZ & Australia

Filing overseas applications into New Zealand

For more information please see our information sheets “Overseas clients filing a patent application in New Zealand” and “Timeframe for examination of a national phase patent application in New Zealand“.

In certain circumstances, it is possible to expedite examination of a New Zealand patent application using the Global Patent Prosecution Highway (GPPH). If you have a patent application that has already been examined and had a claim allowed by a patent office in one country participating in the GPPH, this can be used to accelerate examination of the corresponding application in New Zealand, which is one of 22 countries involved in the GPPH. Alternatively, if examination of your NZ application is progressed quickly, expedited examination of applications in other countries may be able to be requested. Find out more by reading our information sheet “Global Patent Prosecution Highway – NZ & Australia