New Zealand


Patents

International Agreements Patent Cooperation Treaty (PCT) (from 1 December 1992).
Paris Convention (from 29 July 1931).
Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) (from 1 January 1995).
Patent Authority Intellectual Property Office of New Zealand (IPONZ)
Types of Patents/Applications Available

  • Provisional Patent Application.
  • Standard Patent.
      • Convention.
      • Non-Convention.
      • National Phase PCT Application.
      • Divisional Patent.

  • Patent of Addition.
PCT National Phase Entry Deadline: Thirty-one (31) months from the earliest claimed priority date.
Patentability Requirements

  • Absolute novelty: the invention has not been publicly disclosed in any form, anywhere in the world.
  • Involves an inventive step, i.e. would not have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed anywhere in the world before the priority date.
  • Useful, i.e. the invention has a specific, substantial and credible use which can be appreciated by a person skilled in the relevant art.
Non-Patentable Subject Matter

  • Scientific theories or mathematical formulae.
  • Art works and literature.
  • Business schemes or ways of presenting information.
  • Computer programs.
  • Methods of human medical treatment.
  • Diagnostic methods practised on humans.
  • Processes for cloning humans.
  • Using human embryos for industrial or commercial purposes.
  • Plant varieties.
Filing Requirements

  • Applicant’s Name and Address, State and Country of Incorporation (if applicable);
  • Inventor’s Name, Address and Nationality;
  • Specification in English, or a verified translation of the PCT publication if not in English;
  • Convention Priority details (if relevant); and
  • Government filing fee.
Grace Period for Disclosure Twelve (12) months prior to filing of the Application if the disclosure was an unauthorised disclosure, or as a result of a reasonable trial of the invention. Six (6) months if the disclosure was at a prescribed exhibition.
Patent Term A Standard Patent is protected for twenty (20) years from the date of filing.
Search and Examination

  • Examination of a Standard Patent Application is compulsory.
  • Examination may be requested at any time but must be requested within five (5) years of the filing date, together with payment of the Government fee. IPONZ may issue a Direction to Request Examination at any time, after which Examination must be requested within two (2) months or the Application will lapse.
  • A Third Party may request IPONZ to issue a Direction to Request Examination.
  • After IPONZ examines an Application it will issue an Examination Report, detailing any matters that require attention before the Application can be accepted.
  • The Examination Report will specify the time within which the Applicant must respond. A response must be filed within six (6) months of a first Examination Report, and three (3) months from the date of a subsequent Examination Report.
  • If a response is not received within the time set in an Examination Report, the Application will lapse.
  • All issues raised in Examination Reports must be resolved within twelve (12) months of the first Examination Report being issued.
Duty of Disclosure

  • The Applicant must advise the Examiner of the results of searches conducted by any foreign Patent Offices if corresponding Patent Applications have been filed.
  • This duty remains until the Patent proceeds to grant.
Third Party Observations and Oppositions Pre-acceptance – s90 and s91 observations.
Post-acceptance and pre-grant – s87, s92 and s93 opposition.
Post-acceptance – s94 to s100 re-examination.
Post-grant – s112 to s114 revocation.
Patent Term Extension Provisions Not available.
Restoration Provisions Available under specific circumstances.
Renewals

  • Renewal fees fall due from the fourth (4th) anniversary of the filing date.
  • Renewal fees are then due each anniversary after that until the Patent ceases.

General

  • There is no need for a Power of Attorney or an Inventor’s declaration to be lodged on filing of an Application.
  • A Notice of Entitlement which sets out the devolution of Title from the Inventor(s) to Applicant(s) must be filed before the Application can be accepted.
  • A Māori Advisory Committee will advise IPONZ whether an invention is derived from Māori traditional knowledge or indigenous plants or animals, as well as whether the commercial exploitation of the invention is likely to be contrary to Māori values.
  • Any Divisional Application must be filed prior to acceptance of the Parent Application and examination must be requested within five (5) years from the date of filing of the Parent Application.

Trade Marks

International Agreements Paris Convention for the Protection of Industrial Property (as amended on 28 September 1979).
Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (as amended on 28 September 1979).
Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) (from 1 January 1995).
Singapore Treaty on the Law of Trademarks (2006).
Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (as amended on 12 November 2007).
Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods.
Trade Mark Authority Intellectual Property Office of New Zealand (IPONZ)
Types of Trade Marks Available

  • Standard.
  • Certification.
  • Collective.
  • Series.
  • Madrid Designation.
Non-Traditional Trade Marks Available

  • Colour.
  • Scent.
  • Shape.
  • Sound.
  • Animation or moving images.
Paris Convention Deadline: Six (6) months from the earliest claimed priority date.
Provisions for Filing of Multi-Class Applications Yes.
Excess Goods/Services Fee No.
Registrable Trade Marks

  • Must be capable of being represented graphically.
  • Must be of distinctive character.
Non-Registrable Trade Marks

  • Trade Marks that are likely to mislead or confuse;
  • Trade Marks that are offensive to a significant section of the community, including Māori (where a Trade Mark is, or appears to be, derivative of a Māori sign, the Application will be forwarded to the Māori Advisory Committee for review);
  • Trade Marks that are descriptive, superlative or laudatory;
  • Trade Marks that are geographical locations associated with the goods or services;
  • Trade Marks that are the same or similar to another trader’s current Trade Mark Application or Registration with an earlier filing date, so that use of the Mark is likely to cause deception or confusion; and
  • Trade Marks that are the same as, or similar to, well-known Marks in New Zealand.
Filing Requirements

  • Applicant’s Name and Address, State and Country of Incorporation (if applicable);
  • Specification of the goods and/or services in relevant Nice classes;
  • A statement that the Trade Mark is being used or proposed to be used;
  • A clear representation of the Trade Mark;
  • If Convention Priority is claimed, the Number, Date, Country and details of the Basic Application; and
  • Government filing fee.
Initial Trade Mark Term A Trade Mark is protected for ten (10) years from the date of filing, and is renewable every ten (10) years thereafter.
Search and Examination

  • Examination of a Trade Mark Application is automatic.
  • A Trade Mark Application will be examined within fifteen (15) working days of the date of filing, and a Compliance Report will issue shortly thereafter.
  • If a Compliance Report issues, an Applicant has twelve (12) months from the filing date of the Application to file a response.
  • If the response does not address the issue(s) raised in the Compliance Report, a further Compliance Report will issue. Normally, up to three (3) Compliance Reports are issued before a Rejection Notice is issued, which may take up to twelve (12) months.
  • If a Rejection Notice issues, a Hearing before IPONZ may be requested.
Amendment of Goods and Services

  • Before the Trade Mark is registered, limited amendments may be made to the Trade Mark Application in response to a Compliance Report, or to divide the Trade Mark Application.
Third Party Oppositions and Applications

  • Opposition of Trade Mark Application.
  • Declaration of Invalidity of Registration.
  • Revocation of Registered Trade Mark.
  • Cancellation or Alteration of Trade Mark.
Restoration Provisions

  • The owner of the Trade Mark may apply to late renew (restore) the Trade Mark Registration within twelve (12) months of the expiry of the Registration.
  • Where the Application for the late renewal of a Trade Mark Registration is outside the twelve (12) month period, IPONZ will decline the Application.
Renewals

  • Renewal fees fall due from the tenth (10th) anniversary of the filing date.
  • Renewal fees are then due each tenth (10th) anniversary thereafter.
General There is no need for a Power of Attorney or Authorisation of Agent to support the filing of an Application, but an Authorisation of Agent may be needed to assume responsibility for an existing Application/Registration.

Designs

International Agreements Paris Convention for the Protection of Industrial Property (as amended on 28 September 1979).
Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) (from 1 January 1995)
Locarno Agreement Establishing an International Classification for Industrial Designs (as amended on September 28, 1979).
Design Authority Intellectual Property Office of New Zealand (IPONZ)
Types of Designs Available Single Designs.
Paris Convention Deadline: Six (6) months from the earliest claimed priority date.
Registrability Requirements

  • The Design must be new and original and must:
      • Not be published in New Zealand before the filing date;
      • Consist of new or original “features of shape, configuration, pattern or ornament” that are applied to an article by any industrial process or means;
      • Have features that appeal to and are judged solely by the eye; and
      • Not be purely functional or relate to a method or principle of construction.

Non-Registrable Designs

  • A Design which is a method or principle of construction;
  • Designs applied to works of sculpture except if they are to be used as casts or models for mass production;
  • Designs applied to wall plaques and medals; and
  • Designs applied to printed matter primarily of a literary or artistic character (e.g. bookjackets, calendars, certificates, maps, plans, or leaflets).
Filing Requirements

  • Class(es) according to the Locarno Classification system;
  • Applicant’s Name and Address, State and Country of Incorporation (if applicable);
  • Designer’s Name, Address and Nationality;
  • Entitlement of the Applicant; i.e. how the Applicant has derived the right to the Design from the Designer (Assignment, Employment or other Agreement);
  • Name of article(s) in relation to which the Design is sought to be registered;
  • Representation(s) of the Design as applied to the article;
  • A Statement of Novelty;
  • An Authorisation of Agent;
  • Optionally: Any Convention Claim and the details (Date, Number and Country) of the Basic Application from which Convention Priority is claimed; and
  • Government filing fee.
Initial Design Term Five (5) years.
Full Term (if all renewals are paid timeously) Fifteen (15) years.
Search and Examination

  • Examination is automatic.
  • A Design Application will be examined within fifteen (15) working days of the date of filing, and an Examination Report will issue shortly thereafter. The Examination Report will either state that the Application is in order for Registration, or will identify objections against the Application.
  • If an Adverse Examination Report issues, an Applicant has twelve (12) months from the filing date of the Application to achieve Registration. This deadline is extendable to fifteen (15) months. A further extension of time may be obtained in special circumstances. If the Applicant does not achieve Registration within this time period, the Application will be deemed abandoned.
  • If the Applicant’s response(s) does not address the issue(s) raised in the Examination Report, and an impasse is reached between the Applicant and the Examiner, a Hearing may be requested, upon payment of Government fees.
  • If the Application is considered to be in order for Registration, a Certificate of Registration will issue and the Design will be advertised for Opposition purposes.
Amendment

  • A Design Application may be amended for the purpose of correction only.
Third party Oppositions and Applications

  • Certificate of contested validity of Registration: If in any proceedings before the Court the validity of the Registration of a Design is contested, and it is found by the Court that the Design is validly registered, the Court may certify that the validity of the Registration of the Design was contested in those proceedings.
  • Groundless threats: Where any person (whether entitled to, or interested in, a registered Design or an Application for Registration of a Design or not) threatens any other person with proceedings for infringement of a Registered Design, any person aggrieved thereby may bring an action against him for a Declaration to the effect that the threats are unjustifiable; an injunction against the continuance of the threats; and such damages, if any, sustained by that person as a result of the threats.
  • Request for Cancellation of Design: An interested person may apply for the cancellation of a Registered Design on the basis that the Design was not new or original at the date of Registration or on the basis of any other ground on which the Commissioner could have refused to register the Design.
  • Opposition to Restoration of Design: Opposition to the restoration of a Design Application or a Registered Design may be filed by any person within two (2) months of the restoration being advertised.
  • Opposition to Correction of Clerical Error of Design: The Commissioner may correct any mistake in the Register, or any document issued under the Designs Act 1953. If the Commissioner considers the correction would materially alter the meaning or scope of any document the correction will be advertised and it may be opposed by anyone within one (1) month of that advertisement.
Restoration Provisions

  • Under certain conditions, it is possible to restore a lapsed/abandoned Design upon request. An Applicant/Owner will need to show that the failure to pay a renewal fee or respond to the Examination Report was unintentional. If restoration is requested after twelve (12) months of the lapse/abandoned date, evidence will be required showing that there was no undue delay in applying for the restoration.
  • When requesting restoration of a lapsed/abandoned Design, an Applicant/Owner must provide justification as to why the Commissioner should consider the request and return the lapsed Design to the Register, or return the abandoned Application to “Examination” status for reconsideration.
Renewals

  • A Design Application may be renewed twice, once on the fifth (5th) anniversary of the filing date of the Application and once on the tenth (10th) anniversary.
  • Renewal fees must be paid within six (6) months of the renewal date, or the Registration will lapse.
General

  • A Basic Application that is not in English must be accompanied by a verified translation into English.