Procedure for obtaining a patent
The usual procedure for patenting an invention is summarised below.
Typical time periods are shown but it should be appreciated that the procedure for obtaining a patent can be accelerated if it appears pending rights could be infringed.
An application may be abandoned at any stage. As the subject matter of abandoned provisional applications is never made public, a patent application may be post-dated or refiled at a later date if there has been no other disclosure of the invention.
A patent application must be accompanied by a full description of the invention. The best way to do this is through face to face communication with the inventor. A meeting with the inventor enables us to familiarise ourselves with the invention and your needs, as well as to assess the best methods of protection. We are happy to answer questions you may have on any other relevant matter at the same time.
A patent search is recommended for four main reasons:
1. To determine whether the use or manufacture of an invention will infringe the rights of other parties;
2. To determine the likely patentable features of an invention by comparing it with located material. This helps us to assess the possible scope of any monopoly and consequently whether it is commercially worthwhile to proceed with a patent application;
3. To gain access to technical information contained in published patents. Information in granted patents which have ceased may be freely used by the public; and
4. Searching can also provide you with an industry profile of potential competitors.
We can conduct reliable international computer database searches. The cost of each search will depend on the number of patent specifications in a subject classification, the time it takes to consider relevant material, and the number of full patent specifications which have to be studied.
It can take up to two weeks to conduct a patent search, consider the results and report them to you. However, in cases of urgency, a search can be conducted and reported within 2-3 days.
Our report will advise you on the patentability of an invention and indicate whether there is any possibility of infringing other parties’ rights.
Types of patent application/specification
A provisional specification describes the invention in broad terms. It is filed to obtain a priority date and filing number. It then allows the applicant up to 12 months (which in New Zealand is extendable by a further three months) additional time to develop the invention and assess its commercial worth before filing a full description of the invention in a complete specification.
A complete specification describes the invention in detail and includes a set of claims (numbered paragraphs at the end of the specification) which define the scope of protection sought. The complete specification should describe the preferred form(s) of the invention and the best method of using the invention then known to the applicant. It should also contain sufficient detail to enable a skilled reader to replicate the invention by following the wording in the complete specification. The complete specification is critically examined by the Intellectual Property of New Zealand (IPONZ) on a number of grounds. Once accepted and granted the applicant is given a monopoly for the invention the scope of which is defined by the granted claims.
For more information read our information sheet: “Parts of a complete specification: what are they and why do we use them?“.
At any time before acceptance of a complete specification (and provided the family of applications has not been pending in New Zealand for over five years) the subject matter can be divided out into a separate complete specification. A ‘divisional’ application can be useful where the complete specification contains more than one invention (which prevents the parent complete specification from being accepted) or where more time is needed to respond to an examination report on the complete specification.
For more information read our information sheet: “Divisional patent applications: what are they and why should you use them?‘
Patents of addition
If a patent has already been granted for an invention, and is current, novel improvements or modifications to the invention still can be patented via a patent of addition.
For more information read our information sheet: “Patents of addition“.
Filing a patent application
Patent application documents are filed with either a provisional specification or a complete specification, both of which define the invention. A provisional specification describes the invention in broad terms which cover foreseeable modifications.
A complete specification describes the invention with more detail and includes a set of claims which defines the scope of the monopoly sought.
In most cases it is advisable to file a provisional specification in the first instance, as it can be prepared and filed in less time than a complete specification and it reduces the initial financial outlay. A complete specification need not be filed until twelve months after filing the provisional specification. This period allows the invention to be developed within the bounds of the broad description of the provisional specification, and its commercial viability assessed – all without endangering the rights to the invention. On the other hand a complete specification filed in the first instance commits the applicant to a more specific description which may have inherent limitations.
When preparing a patent specification we forward a draft to you for your approval before the specification is filed at the Patent Office with the application papers.
ONLY ONCE THE APPLICATION HAS BEEN FILED CAN YOU SAFELY DISCLOSE THE INVENTION, CONDUCT MARKET RESEARCH, PUBLISH DETAILS OR OFFER THE INVENTION FOR SALE. HOWEVER SOMETIMES IT IS STILL ADVISABLE TO KEEP DETAILS CONFIDENTIAL TO PROVIDE MORE OPTIONS FOR EXTENDING SUBSEQUENT FILING DEADLINES.
We can advise you of your options.
The filed patent application will receive a filing date and an application number. Marking the invention and related literature with the application number acts as a deterrent to would-be copiers.
Completing the patent application
A patent application is usually completed within twelve months of the filing date by filing a complete-after-provisional specification (aka CAP) which includes a full description of the invention, claims defining the invention and, in most cases, drawings.
Claims are statements which clearly define the invention and therefore demarcate scope of the monopoly being sought and are referred to when determining infringement of a patent.
The complete specification should disclose all features of the invention which are known to the inventor. After the complete specification has been filed it is difficult to add new material.
For more information on the completion of a patent application, read our information sheet ‘Completion of a patent application‘.
It is possible to delay the deadline for completing a patent application. For more information, read our information sheet ‘Options for allowing greater time to complete your patent application‘.
New Zealand patent applications are published on the IPONZ website 18 months after they are first filed (or after the corresponding overseas application from which the New Zealand application derives was first filed). From that date it is possible for anyone to access the contents of a patent application. It is also possible for anyone to see copies of correspondence with the Intellectual Property Office of New Zealand (IPONZ) as the application is examined.
A complete specification will not be examined by IPONZ until a formal request is made. IPONZ may direct that the request is made at any time, but if otherwise the request must be made within five years of filing the application.
Once examination has been requested IPONZ will examine the complete specification within approximately three months. Examination will determine whether the complete specification complies with the requirements of the Patents Act. It will include an assessment of whether the invention is novel and inventive in view of similar inventions published before the patent application was filed. You can find out more about what the examiner is looking for by reading our information sheet “The patent examination process: what the examiner is looking for – 1953 Act” (for NZ patent applications filed under the Patents Act 1953) or “The patent examination process: what the examiner is looking for – 2013 Act“(for NZ patent applications filed under the Patents Act 2013).
When an examination report issues we will forward it to you for consideration together with copies of any prior art cited by the examiner. We will also advise how best to respond to the report. Upon receipt of instructions from you we will lodge a response to the examiner’s report. The wording of the claims may require adjustment to distinguish your invention over the prior art. We will also attend to any other objections raised by the examiner at this time.
Once the examiner’s objections have been overcome, the accepted form of the application is apublished in the IPONZ Journal.
Any person having reasonable grounds may oppose the grant of a patent. They must do so within three months from the date of publication of the specification. If no opposition is filed, or the application is not successfully opposed, a patent will be granted and the Deed of Letters Patent will then issue.
Legal action against a patent infringer cannot be taken until the Deed of Letters Patent has issued. Damages will normally accrue from the date that acceptance of the patent application was published in the Patent Office Journal.
The term of a patent in New Zealand is 20 years from the date of filing the complete specification. This is subject to the payment of renewal fees in the 4th, 7th, 10th and 13th years (the 4th year renewal fee is also payable if the application is still pending after four years). We maintain renewal records and remind our clients when renewal fees are due.
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. Find out more by reading our information sheet Global Patent Prosecution Highway – NZ & Australia