Filing an application

Applications for Patents

Applications for Patents in New Zealand may be made using our online services. The online filing forms supersede any paper forms formerly in use. ¹

Any valid application made through our online services will be given a filing date. If an application is filed on an Official closed day, such as on a weekend or statutory holiday, it will be assigned the next working day as the filing date. Applications for Patents in New Zealand may be accompanied by either a provisional or complete specification. 

Authorisation of Agent

An authorisation of agent is generally not required at filing of an application accompanied by a complete specification if the application is filed by an agent on behalf of the applicant (see also patent office practice note 1997/5).

Correspondence from the Office

All correspondence in regard to an Application for a Patent will be provided to the applicant via our online services. Alerts about new correspondence from us will be sent via email to the case contact’s email address. It is the applicant’s responsibility to ensure that their electronic contact details are kept up to date.

Deadlines from the Office

Deadlines in the Patent application process will be provided to the applicant via our online services. A failure to respond to a deadline will result in the application going abandoned. All enforced deadlines incorporate any available extensions of time and there is no requirement to submit other requests for extension of time.

Examination Hearing

In response to an issue raised by the Office and applicant may request a hearing using our online services. After the hearing, or after considering the applicant’s written submissions, the Assistant Commissioner will either accept or reject the applicant’s submissions. A decision will be issued in writing, stating the reasons for the Assistant Commissioner’s decision. 

1. Supplementary practice note - online filing facilities

With the release of our upgraded Patent Case Management system in December 2012 those online filing facilities are modified and all requests previously based on forms included. This note further clarifies the legality and use of the online filing facilities and forms.

Patents and designs forms

The online filing facilities are modifications of the scheduled forms as directed by the Commissioner and replace the application forms of the schedules when completed online. Similarly, the modifications of all Patent forms are modifications directed by the Commissioner under Patent Regulation 9.

Regulation 9 of the Patents Regulations 1954 prescribes that the scheduled forms shall be used in all cases to which they are applicable and may be modified as directed by the Commissioner. 

Under the respective regulations 9, the portions of the online filing facilities for making of such declarations or requests are modifications as directed by the Commissioner of the scheduled forms in which such declarations or requests would be made under the regulations and replace these forms.

2. Antedated divisional applications

When filing a new application which is a divisional of a complete after provisional no filing fee for any of the provisional specifications linked to the parent application is required.

A divisional application should include:

1. a request for antedating; and
2. identify the parent application with linked provisional application(s) which are to accompany the divisional application (i.e. all of the provisional specifications of the parent application).

Please note that applications filed online using the electronic file management system will by default include an antedating request back to the filing date of the parent application.

The change in practice took effect for all divisional applications filed on or after 10 December 2012.

This supersedes:

• Office practice note 8 1974
• Info for clients nos. 16 and 23
• Business update antedated divisional applications 19 March 2009.

3. Declaration as to inventorship requirements for patents

A declaration as to inventorship is a specific, distinct, and independent declaration by the applicant for a patent in New Zealand and declares the name, address and nationality of each inventor of the invention described in the complete specification. 

A declaration is required because the original inventor(s) may not be the only person(s) to have contributed to the development of the invention during the period between the initial patent filing date and the complete specification or PCT international application filing date.

The form and filing requirements of the declaration as to inventorship for the respective circumstances in which a complete specification is filed are set out in the table below. In all cases the declaration must be provided before the application can be accepted.

A declaration as to inventorship may be provided at the time of filing, or at any time before acceptance of the application.

To amend inventor details after filing use the Change or Add Inventor. 

At the time of filing, a declaration as to inventorship may be made after selecting one or more inventors in the “Inventor(s)” section of the application form, and ticking the checkbox below the inventor(s) name(s).

At any time before acceptance of the application a declaration as to inventorship may be made. This may be made by selecting “Maintain a Patent” from your User Inbox then “Amendment”. You may make the declaration as to inventorship by either:

• ticking the checkbox below the inventor(s) name(s) in the “Inventor(s)” section of the online form, or
• by adding a declaration as to inventorship document in the “Declaration of Inventorship” section of the online form, or
• under the “Additional Documents” section of the online form, adding a declaration of inventorship document.

Footnotes

• 1 Modifications to the forms are directed by the Commissioner under Patent Regulation 9.