If you have filed a patent application with us that includes a complete specification, you may ask for us to expedite its examination.
There is no additional fee for requesting expedited examination. However, you will need to justify why your application should be examined ahead of other applications.
For more detailed steps on requesting expedited examination, please see our Maintain a Patent page.
Maintain a Patent: Request for expedited examination
Expedited examination under Regulation 77(1)(b)
You can request us to expedite the examination of your existing patent application under Regulation 77(1)(b) of the Patents Regulations 2014. This will require you to provide us with a “good and substantial reason” to advance your application out of turn.
Regulation 77(1)(b) of the Patents Regulations 2014 — New Zealand Legislation
Your expedited examination request must be accompanied with evidence of your circumstances, which will be assessed to see if this meets the “good and substantial” requirement. This evidence must be in the form of a statutory declaration or affidavit.
We will consider requests to expedite examination for a patent application in the following scenarios:
- where your enforceable rights are likely to be breached or infringed if the allowance of your claims in New Zealand is delayed;
- where you are likely to suffer financial losses if the allowance of your claims in New Zealand is delayed;
- where you will be commercially disadvantaged if the allowance of your claims in New Zealand is delayed;
- where there is a likely threat that your invention will be stolen and/or remodelled by a competitor;
- where an early allowance of your claims in New Zealand would facilitate an improvement of people's lives by providing therapeutic treatment of a disease or condition;
- where there is an immediate commercial need, e.g. a signed licencing agreement that requires a granted New Zealand patent.
Given that every application for a patent is for the potential purpose of commercialising the invention, we do not consider the following examples as “good and substantial reasons”:
- a statement that you want to commercialise the disclosed product;
- a statement that expedited examination would assist in the commercialisation of the invention;
- a statement that you are concerned about a possible infringement threat that might exist;
- a statement that a number of your claims in your patent application were found to be allowable by an overseas IP office (see our section on GPPH requests below for this situation);
- a potential or possible commercial reason, or a reason that applies to the majority of applications e.g. conjectured plans for licensing to a New Zealand company, or to ensure certainty for investors;
- a statement that you wish to obtain feedback from an examiner on the merits of the application, before a deadline to enter national phase or otherwise file in other jurisdictions.
Filing an expedited examination request under Regulation 77(1)(b)
If you would like to request expedited examination under Regulation 77(1)(b), you must enter your request via the IPONZ case management facility.
You can request expedited examination by entering an amendment request for your existing application, then ticking the Request examination of an application be advanced out of turn in accordance with regulation 77(1)(b) box. This will prompt you to upload your supporting documentation.
If you have not yet requested examination for your patent application, your request for expedited examination will automatically do so. You will be charged the corresponding examination fee as part of your request.
For more detailed steps on requesting expedited examination, please see our Maintain a Patent page.
Maintain a Patent: Request for expedited examination
Expedited examination under a Patent Prosecution Highway programme
IPONZ is a participant in Patent Prosecution Highway (PPH) programmes with other international Intellectual Property offices. These programmes allow you to request expedited examination for your patent application if it was granted by one of the participating overseas offices.
For information and requirements around requesting expedited examination under these PPH pathways, please see the relevant Patent Prosecution Highway page.
Global Patent Prosecution Highway (GPPH)
IPONZ - European Patent Office Patent Prosecution Highway (IPONZ-EPO PPH)
Claims that are found patentable in New Zealand may also be used to expedite the examination of overseas applications in these PPH agreements. Please see the relevant overseas websites for more information on their filing requirements.
Examination of Treaty applications prior to examination eligibility
An examination eligibility requirement applies to national phase entry applications under the Patent Cooperation Treaty (also known as ‘Treaty’ applications). If you request examination for your Treaty application, we will add it to our examination queue only if at least 31 months have passed since its earliest priority date.
This examination eligibility requirement applies even if you request us to expedite the examination of your Treaty application. If you intend for us to examine your Treaty application ahead of its eligibility date, you must indicate this as part of your expedited examination request.
To do so, tick the Request examination of a Treaty application prior to examination eligibility box. This will prompt you to upload your supporting documentation for our review.