The IPONZ-EPO Patent Prosecution Highway (PPH) pilot programme is an arrangement between IPONZ and the European Patent Office (EPO). It allows patent applicants to request expedited examination in either office if at least one of the claims in a corresponding application has been found patentable.
This expedited examination means that we will examine your patent application earlier than our normal timeframes.
Your patent application must meet certain requirements before we can accept your request under the IPONZ-EPO PPH.
If your application does not meet the requirements under this PPH, you can also request that we expedite the examination of your patent application under provisions in the Patents Regulations 2014 or via another PPH programme.
Expedited examination for patent applications
How to file a request for expedited examination under the IPONZ-EPO PPH
Before you file a request for expedited examination under the IPONZ-EPO PPH (“an EPO PPH request”), you must check that your request meets the eligibility criteria for expedited examination under the IPONZ-EPO PPH, and that you have the required documents.
If you would like to request expedited examination under the IPONZ-EPO PPH, you must enter your request via the IPONZ case management facility.
- You can enter an EPO PPH request at either of the following times:
- At the point when you file your patent application.
- After you have filed your patent application, by requesting an amendment under Maintain a Patent.
- To submit your request, tick the Request expedited examination under a Patent Prosecution Highway (PPH) box, then select EPO PPH in your application or amendment form. This will prompt you to provide additional details and upload your supporting documentation.
If you have not yet requested examination for your patent application, entering an EPO PPH request will automatically request its examination, and you will be charged the corresponding examination fee.
If you are entering an EPO PPH request for a Treaty application, please note we cannot add your application to our examination queue before its eligibility date. If you intend for your application to be examined before its eligibility date, you will need to make a separate request for this.
Relevant dates for examination in New Zealand
Eligibility criteria
To be eligible for expedited examination under the IPONZ-EPO PPH, your application must meet the following conditions:
- The application to be examined by IPONZ and the corresponding application examined by the EPO must have the same earliest date (which may be the priority date or the filing date).
- At least one claim in the EPO application must have been found to be patentable by the EPO. That is – it must have been found to be novel, inventive and useful / industrially applicable. There must be an express statement of patentability for these claim(s) in a work product issued by the EPO.
Filing requirements
In order for your EPO PPH request to be accepted, all of the claims presented for examination at IPONZ must “sufficiently correspond” to one or more of the claims found patentable by the EPO. This may require you to submit a new complete specification document with amended claims as part of your request.
The meaning of “sufficiently correspond”
The following documents are required as part of your EPO PPH request:
- A copy of the work product(s) issued by the EPO which expressly identify the patentable claims. More information on what makes up a valid work product can be found below.
- A copy of the claims that the EPO examination has found to be patentable.
- A claim correspondence table which sets out the patentable claim(s) of the EPO application and identifies the "sufficiently corresponding" claim(s) to be examined by IPONZ. In instances where the claims to be examined are identical to those found patentable, a statement to this effect is also acceptable.
- A complete specification document that includes the claims which “sufficiently correspond” to those found patentable by the EPO.
If any of the above documents are not in English, you must provide English copies or translations of these documents.
Translations of the patentable claims should align with the claims submitted to IPONZ. In situations where these do not align, IPONZ may request a verified English translation in order to determine if these claims sufficiently correspond.
Optional documents
You can also provide additional documents with your request, such as a cover letter, documents cited against the corresponding application, non-patent literature cited by the EPO, or other materials that relate to the request.
IPONZ may also request copies of citations raised against the earlier application (or translations thereof) if they are not available via regular databases or search files.
The meaning of “sufficiently correspond”
All claims to be examined by IPONZ must “sufficiently correspond” to the patentable claim(s) of the EPO application.
Claims to be examined by IPONZ are considered to “sufficiently correspond” if either:
- The claims are of the same or similar scope to claims indicated as patentable by the EPO.
- The claims are narrower in scope than the claims indicated as patentable by the EPO.
Claim(s) to be examined by IPONZ cannot be broader in scope than those found patentable by the EPO.
IPONZ will also account for the effects of any translations into the English language if the original claims were not in English.
Different claim categories
Claim(s) which introduce a new or different category of claims to those claims determined to be patentable are not considered to sufficiently correspond.
For example, if the EPO application contains only claims to an article, then claims to be examined by IPONZ that include a method of making the article will not sufficiently correspond.
Second medical use claims are the exception to this rule.
Second medical use claims
Second medical use claims should be submitted in Swiss-type form. For the purpose of this PPH, Swiss-type claims will be considered to sufficiently correspond to equivalent second medical use claims in the EPO application.
- In EPO applications, second medical use claims in EP applications take the form of: “Product X for use in treating Y”.
- In New Zealand applications, second medical use claims are written in the Swiss-type form: “Use of product X in the manufacture of a medicament for treating Y”.
In New Zealand, a “product for use” would be construed as a product being suitable for that purpose, and consequently would have a broader scope than the same claim in the EPO application. As a result, second medical use claims written in forms other than Swiss-type should be amended to equivalent Swiss-type claims before requesting expedited examination.
If an accepted EPO PPH request contains second medical use claims that are written in forms other than Swiss-type, our examiners will raise an objection even if these are identical to claims accepted by the EPO. This is because of the above difference in claim construction, which means that IPONZ is unable to rely on the conclusions of the examination performed by the EPO.
Amending to claims which sufficiently correspond
You can amend your complete specification to include claims which sufficiently correspond. This can be done before or at the same time you file your EPO PPH request.
Please note that a voluntary amendment fee may apply if you make any amendments to your complete specification after you have requested for examination.
Valid work products
A work product is a formal report or action issued by the EPO.
If you file an EPO PPH request, your request must include a copy of a work product issued by the EPO that expressly identifies the patentable claim(s). Patentable claims must be assessed as novel, inventive and useful / capable of industrial applicability.
Work products can be any report or action issued by the EPO, as long as the patentable claims are clearly identified.
Written Opinions or International Preliminary Reports on Patentability that are issued by the EPO as the International Search Authority or International Examination Authority are also considered valid work products.
You can include multiple work products from the EPO in a single request, provided the applications share the same earliest date.
Relevant dates for examination in New Zealand
Requesting examination of an application prior to examination eligibility
National phase entry applications under the Patent Cooperation Treaty (also known as ‘Treaty’ applications) are only eligible for examination if at least 31 months have passed since their earliest priority date.
This examination eligibility requirement applies even if you request IPONZ to expedite the examination of your Treaty application under the IPONZ-EPO PPH.
If you intend for IPONZ to examine your Treaty application ahead of its eligibility date, you must request this separately from your EPO PPH request:
- If you are entering an EPO PPH request at the point where you are filing your patent application, you will need to first submit your patent application. Once you have completed this, you can request an amendment under Maintain a Patent to indicate you want IPONZ to examine your Treaty application ahead of its eligibility date.
- If you are entering an EPO PPH request as part of an amendment, you can tick the Request examination of a Treaty application prior to examination eligibility box in your amendment form. This will indicate you want IPONZ to examine your Treaty application ahead of its eligibility date.
Late entry into national phase requires restoration
If a Treaty application is filed at IPONZ later than the 31-month national phase entry deadline, a request for expedited examination under the IPONZ-EPO PPH cannot be made at the same time.
In this situation, your application will need to be restored before requesting expedited examination under the IPONZ-EPO PPH. Please see our restoration guidelines for more information.
Patents Examination Manual, Sections 117-128: Restoration of patents and patent applications
Late convention claims
If a convention application is filed at IPONZ later than the 12 month convention period, you can still make a request for expedited examination under the IPONZ-EPO PPH at the time of filing.
However, this request will not be actioned until the Commissioner is satisfied that the convention application is entitled to the claimed priority date.
If a convention claim is not found to be entitled to the claimed priority date, then the request for expedited examination under the IPONZ-EPO PPH will be refused as the New Zealand application and the EPO application would no longer share the same earliest priority or filing dates.
Processing of requests and timelines
Once IPONZ receives a request for expedited examination under the IPONZ-EPO PPH, we will assess the request to determine if:
- Your application meets the eligibility requirements.
- Your request meets the filing requirements, including the required documents.
If your application does not meet the eligibility requirements, IPONZ will refuse the request.
If your application is eligible, but does not meet the filing requirements, you will be given an opportunity to remedy any issues with the request. You must submit your response and/or additional documentation within 10 working days for your request to be considered, otherwise it will be declined. IPONZ may still choose to decline requests that are invalid or do not meet other filing requirements.
If the request meets the eligibility and filing requirements, IPONZ will accept the request.
Once a request for expedited examination is accepted, the application will be allocated to an examiner for substantive examination after the examination eligibility date has been reached.
IPONZ reserves the right to limit participation where incoming EPO PPH requests exceed resources.
Fees
There is no fee for requesting expedited examination under the IPONZ-EPO PPH.
Other fees may still apply, including a fee to request examination, voluntary amendment fees, or fees for excess claims. For more information, please see the Patent fees section of our website.
Using an IPONZ work product to file a PPH request with the EPO
You can use an IPONZ work product to request accelerated examination at the EPO.
Patent Prosecution Highway — European Patent Office
The work product will need to show that at least one claim is patentable (i.e. novel, inventive, and useful). Examples of suitable work products from IPONZ include:
- An examination report which says that one or more claims are patentable in the summary table on page 2.
- A notice of acceptance. This serves as an explicit statement that all claims are patentable.
The EPO has its own eligibility and documentation requirements for PPH requests. Your application may be subject to these requirements.