The Global Patent Prosecution Highway (GPPH) is an arrangement between a number of Intellectual Property (IP) offices. It allows patent applicants to request expedited examination by an IP office on the basis that one or more claims of a corresponding application were found to be allowable by another GPPH IP office.
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 GPPH request.
If your application does not meet the GPPH requirements, 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
For more information on the GPPH and its participating offices, see the GPPH website:
Global Patent Prosecution Highway
How to file a request for expedited examination under the GPPH
Before you file a request for expedited examination under the GPPH (“a GPPH request”), you must check that your request meets the eligibility criteria for expedited examination under the GPPH, and that you have the required documents.
If you would like to request expedited examination under the GPPH, you must enter your request via the IPONZ case management facility.
- You can enter a GPPH 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 GPPH 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 a GPPH request will automatically request its examination, and you will be charged the corresponding examination fee.
If you are entering a GPPH 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 GPPH, your application must meet the following conditions:
- The application to be examined by IPONZ and the application of the Office of Earlier Examination (OEE) must have the same date (which may be the priority date or the filing date).
- At least one claim in the OEE application must have been found to be patentable. 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 OEE.
Filing requirements
In order for your GPPH 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 OEE. This means you may need 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 GPPH request:
- A copy of the work product issued by the OEE that expressly identifies the patentable claims. More information on what makes up a valid work product can be found below.
- A copy of the claims that the OEE examination has found to be patentable.
- A claims correspondence table which sets out the patentable claim(s) of the OEE application and identifies the "sufficiently corresponding" claim(s) to be examined by IPONZ. In instances where the claims to be examined are identical to the claims found patentable in the OEE report, 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 OEE.
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 OEE, 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 of the claims to be examined by IPONZ must “sufficiently correspond” to the patentable claims of the OEE 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 in the OEE application.
- The claims are narrower in scope than the claims indicated as patentable in the OEE application.
Claim(s) to be examined by IPONZ cannot be broader in scope than those found patentable by the OEE.
IPONZ will also account for the effects of any translations into the English language if the original claims from the OEE were not in English.
Different claim categories
Claims which introduce a new or different category of claims to those determined to be patentable are generally not considered to sufficiently correspond.
For example, if the OEE 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 the equivalent second medical use claims in the OEE application.
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”. 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 GPPH 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 OEE. This is because forms of second medical use claims that may be allowable in other jurisdictions are construed differently in New Zealand. IPONZ is therefore unable to rely on the examination performed by the OEE for the claims in these forms.
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 GPPH 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 an OEE.
If you file a GPPH request, your request must include a copy of a work product issued by the OEE 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 a participating office, as long as the patentable claims are clearly identified.
Written Opinions or International Preliminary Reports on Patentability that are issued by the International Search Authority or International Examination Authority from a participating office are also considered valid work products.
Participating offices – Global Patent Prosecution Highway
You can include multiple work products from the same participating office in a single GPPH request, provided the applications share the same earliest date.
Multiple work products from different offices in a single GPPH request will not be accepted.
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 us to expedite the examination of your Treaty application under the GPPH.
If you intend for IPONZ to examine your Treaty application ahead of its eligibility date, you must request this separately from your GPPH request:
- If you are entering a GPPH 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 a GPPH 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 GPPH cannot be made at the same time.
In this situation, your application will need to be restored before requesting expedited examination under the GPPH. 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 GPPH 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 GPPH will be refused as the New Zealand application and the OEE 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 GPPH, 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 GPPH requests exceed resources.
Fees
There is no fee for requesting expedited examination under the GPPH.
Other fees may still apply, including fees 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 GPPH request with another participating office
You can use an IPONZ work product to request expedited examination at other IP offices. The IP office must be participating in the GPPH pilot.
Participating offices – Global Patent Prosecution Highway
The work product will need to show that at least one claim is patentable (that is - 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.
Each participating office has its own eligibility and documentation requirements for GPPH requests. Your application may be subject to these requirements.