Same but different: Comparison of patent prosecution in Australia and New Zealand

Australian and New Zealand Patent Attorneys can act before both the Intellectual Property Office of Australia (IPA) and the Intellectual Property Office of New Zealand (IPONZ).  But this does not mean that the practices before the two offices are the same.  Here we outline some of the key differences and similarities between prosecuting patents in these two jurisdictions, including differences and similarities with patentable subject matter, examination, opposition and grace periods.

Patentable subject matter

Both Australia and New Zealand require that the invention be a ‘manner of new manufacture’ within the meaning of section 6 of the Statute of Monopolies of 1623.  Exclusions to patentability that have been codified in the legislation are summarised in Table 1 below.

Notably, in Australia, there is an express prohibition against the patenting of human beings and the biological processes for their generation. Australian law does not expressly exclude from patentability plant varieties or software/business methods that are implemented as computer software. So long as the claimed invention as a matter of substance meets the requirements for a manner of manufacture, i.e. it is not an abstract idea, scheme or mere information, it is considered to be patentable. Methods of medical treatment of humans, including diagnostic methods, are considered patentable. Consequently, such claims are often pursued in parallel with second medical use or Swiss-style claims.

In contrast, New Zealand has expressly codified the exclusion of methods of medical treatment of humans by surgery or therapy and diagnosis practised on humans.  Plant varieties that can be protected under the New Zealand Plant Varieties Act are also excluded from patentable subject matter in New Zealand.

TABLE 1: Codified exclusions

Entitlement/Ownership/Transfer of ownership

On filing an application at either IPA or IPONZ, applicant and inventor details must be provided. A statement of entitlement to the invention is also required.  However, no documentary evidence of this needs to be filed.

Entitlement can be challenged by a third party (for example at opposition, re-examination or revocation) so it is important to ensure that the applicant(s) has entitlement from the inventor(s) at the filing date. Derivation of entitlement to the invention will be dependent on the jurisdiction in which the invention has been made. For example, in Australia and New Zealand, entitlement to an invention may be derived by employment on the basis that the invention was made in the course of the employment of the inventor.

Ownership can be transferred by assignment. This must be in writing and signed by at least the assignor.  When recording the transfer of ownership a copy of the assignment needs to be provided to IPA or IPONZ.

Examination

In Australia, examination may be requested at any time within 5 years of the filing date, or within 2 months of being directed to do so by the Commissioner. Such directions usually issue around a year after filing the application.

Present timeframes for IPA to issue a first examination report vary between 1 to 2 years from the examination request, depending on the technology field. At June 2022, the published timeframes by IPA for applications in the Chemistry and Biotechnology fields were 18 to 24 months. Once the first examination report is issued, the application must be accepted within 12 months, otherwise it will lapse.

In New Zealand, examination may be requested at any time within 5 years of the filing date of the application. No direction will be issued. Recent timeframes published by IPONZ at May 2022 show that the pendency from requesting examination to issuance of a first examination report varies between 1 to 2.5 years. At May 2022, the delay in the Chemistry and Biotechnology fields was 29 months.  Once the first examination response is issued, an initial 6 month deadline to respond applies. The application must be accepted within 12 months of the first examination report, otherwise it will lapse.

Expediting patent examination

Both Australia and New Zealand are a party to the Global Patent Prosecution Highway (GPPH), including US, Great Britain, Canada and Japan. The European Patent Office (EPO) is a notable absentee from the GPPH.  However, following the success of a pilot program, IPA and the European Patent Office have just announced that they will continue a Patent Prosecution Highway (PPH) program that allows a PPH request to be based on an allowable claim in a European patent application.

To request that examination be expedited under the GPPH, the request must be filed before the first examination report is issued by IPA or IPONZ and based on a patent or application from one of the countries party to the GPPH (earlier application) where the applicant has received a ruliing that the application is contains an allowable claim. The claims of the application must ‘sufficiently correspond’ or be amended to ‘sufficiently correspond’ to at least one of the allowed claims.  Generally, a first examination report will issue between 4 to 6 weeks after the request.

Formal amendments, such as introduction of multiple dependencies, are considered to ‘sufficiently correspond’, however claims that are in different categories from those of the earlier application are not.   In the case of Swiss-style claims, second medical use claims are considered to ‘sufficiently correspond’. However, methods of medical treatment are considered to be in a different category.

Even though methods of medical treatment are not patentable in New Zealand, it is still possible to request expedited examination based on an earlier application with such claims.  These will need to be amended to swiss-style claims once an adverse examination report is issued.

In Australia, it is also possible to request expedited examination under ‘special circumstances.’ This may include alleged infringement, commercial reasons or to obtain an allowed claim on which to base a PPH request in another jurisdiction. New Zealand also expedites examination with ‘good and substantial reasons.’  However, this is less utilized as the bar to demonstrate ‘good and substantial reasons’ is comparatively high and requires evidence.

Excess claim fees

Excess claim fees are payable in both Australia and New Zealand.  In Australia, the fee is based on the total number of claims at acceptance. The fee is payable for each claim above claim 20.

In New Zealand, excess claims are payable for any claim 30 and above that is examined, even if the total number of claims is reduced to below 30 claims during examination.

Divisional applications

Divisional applications may be filed to pursue claims of different scope to those allowed in an earlier application, so long as the subject matter is disclosed in the earlier application. It is not necessary for a unity objection to have been raised in the earlier application.

In Australia, the divisional application must be filed within three months of the date of publication of acceptance (allowance) of the earlier application.  By contrast, in New Zealand the divisional application must be filed before the earlier application is accepted. Therefore, it is common practice to file a divisional application along with the response to an examination report in New Zealand, as the application could then be accepted at any time. Alternatively, a deferral of acceptance can be maintained when the response is filed, so that the application cannot proceed to acceptance.

Daisy chain or cascading divisionals are allowable in both Australia and New Zealand, so long as there is a pending application. However, in New Zealand examination of the divisional application must be requested within 5 years of the date of filing the original application.  This means that, in practice, any divisional in New Zealand must be filed and examination requested before this five-year deadline.

Grace period

Both Australia and New Zealand have a grace period for self-disclosures, which allows any information made publicly available, with or without the consent of the applicant, the patentee or the inventor, within 12 months before the effective filing date of a complete application (or PCT application), to be disregarded from the prior art base for assessment of novelty and inventive step.

In line with most jurisdictions, other types of disclosures, including disclosures in breach of confidence and displays at international exhibitions, reasonable trial and learned societies may also be subject to a grace period.

Appeals

Adverse decisions (including following opposition or examination) by the Commissioner of Patents of either IPA or IPONZ may be appealed as of right to the Federal Court of Australia and to the High Court of New Zealand, respectively.

Pre-grant oppositions

Both Australia and New Zealand have a pre-grant inter partes opposition procedure conducted before a delegate of IPA or IPONZ respectively.

In Australia, any person can oppose the grant of a standard patent application by filing a notice of opposition within 3 months of the date of publication of acceptance of the application.  After filing the notice, the opponent has an additional 3 months to file a statement of grounds and particulars together with copies of any documents referred to in the statement.

Both parties are given an opportunity to file evidence in the form of declarations or affidavits. Once the evidence stage is completed the opposition will be set down for hearing.  The hearing officer will usually issue a written decision within 3 to 6 months. Either party can appeal within 21 days of the decision.

The process is slightly different in New Zealand. Any person can oppose the grant of a standard patent application by filing a notice of opposition within 3 months of the date of publication of acceptance of the application. A statement of case must be filed that fully sets out the facts on which the opponent relies to support their grounds of opposition and the relief sought.  The patent applicant has two months to file a counterstatement if it wishes to defend the application. The counterstatement must set out the grounds upon which the applicant contests the opposition.  If the applicant does not file a valid counterstatement, the patent application will be treated as abandoned.

Once the counterstatement is filed, then the parties will have the opportunity to file their evidence in the form of declarations or affidavits.  Once the evidence stage is completed the opposition will be set down for hearing.  The Assistant Commissioner will usually issue a written decision within 3 to 6 months (although some decisions are taking longer due to the current backlog at IPONZ). Either party can appeal within 20 working days of the decision.

Re-examination

In Australia, re-examination may be requested by the Patentee or a third party.  A request for IPONZ to re-examine a granted patent may be made by any person.  IPA and IPONZ will re-examine the patent and if an adverse report is issued, will give the Patentee the opportunity to respond, including by way of amendment.

Amendments

A patent may be amended after grant provided that the amendment falls within the scope of the claims as accepted and has basis in the specification as filed. An amendment to correct an obvious mistake can be made at any time.

Fees for requesting amendments are payable for all voluntary amendments.  In Australia, amendments made either before requesting examination or after acceptance are considered to be voluntary. No fee is payable during examination. In New Zealand, an amendment to the claims and/or specification deemed to be voluntary (even during examination) may incur a fee.  Generally, any amendment that addresses an objection raised in an examination report or is considered to bring the application closer to allowance with not incur a fee.

Summary

Table 2 below gives a summary of the similarities and differences in prosecuting Australian and New Zealand patent applications that have been discussed in this article.

TABLE 2:  Similarities and differences in patent prosecution in Australia and New Zealand

This article was written by Sarah Couper, 4 August 2022.