A practical guide: Commonly asked questions during patent prosecution in Australia and New Zealand

Patent attorneys in Australia and New Zealand, so-called Trans-Tasman patent attorneys, are registered to practise under a joint registration regime.  However, the Trans-Tasman patent laws are far from harmonized. There are a number of important differences between the two jurisdictions to watch out for and we consider some of them here in respect to commonly asked questions during patent prosecution under the Australian Patents Act 1990 and New Zealand’s new Patents Act 2013.

 

Once an examination report is issued, when is the deadline for placing the application in order for acceptance?

Australia

 

New Zealand

The final acceptance deadline is 12 months from the date of issuance of the first examination report.Australia does not have deadlines for responding to an examination report, meaning it’s up to the Attorney/Applicant to manage the deadline themselves (if prosecution is likely to be difficult, don’t wait 11 months before filing your first response). 

 

 

 

 

The final acceptance deadline is 12 months from the date of issuance of the first examination report. However, there is a 6-month response deadline within the 12-month acceptance deadline. The 6-month response deadline can be retrospectively extended by up to 1-month.Second and subsequent examination reports come with shorter response deadlines.Practically-speaking, juggling and docketing response and acceptance deadlines can be challenging.

Further, response deadlines are not just for filing any response, it needs to be a “substantive” response addressing (but not necessarily overcoming) every objection.

Can we request expedited examination?

Australia

 

New Zealand

Yes – the Australian Patent Office (IP Australia) is a member of the Global Patent Prosecution Highway (GPPH) program. IP Australia and the European Patent Office (EPO) are also running a bilateral Patent Prosecution Highway (PPH) pilot program.Under the GPPH and PPH programs, while examination is accelerated, all claims in the Australian application must sufficiently correspond or be amended to sufficiently correspond to one or more of those allowed/ patentable claims of the overseas application examined by the offices of earlier examination (OEE).As an alternative, there is an option to request “ordinary” expedited examination, reasons for which may include commercial and legal (infringement) considerations and if the invention is in the field of “cleantech”. This requires no corresponding amendments to the claims and examination takes place at the same pace as under the GPPH.

 

Yes – the Intellectual Property Office of New Zealand (IPONZ) is a member of the GPPH program. There is currently no bilateral PPH agreement between the EPO and IPONZ.Under the GPPH program, while examination is accelerated, all claims in the New Zealand application must sufficiently correspond or be amended to sufficiently correspond to one or more of those allowed/ patentable claims of the overseas application examined by the OEE.When assessing whether a patent application’s claims “sufficiently correspond” to the claims accepted by a participating overseas office, IPONZ will consider Swiss-style claims to correspond to other formats of second medical use claims allowed overseas (remembering that methods of medical treatment are prohibited by statute in New Zealand).

IPONZ also offers an “ordinary” expedited examination route on similar grounds to those offered by IP Australia.  However, the bar to a successful request is set rather high by comparison with the criteria applied by IP Australia.

 When is the deadline for filing a divisional application?

Australia

 

New Zealand

A divisional application may be filed from a parent application at any time while the parent application is pending.The deadline for filing a divisional application will depend on the fate of the parent application. Provided the parent application proceeds to acceptance, the deadline for filing a divisional application will be 3 months after advertisement of acceptance.In instances where an application is not placed in order for acceptance on or before the acceptance deadline, the deadline for filing a divisional application is the same as the final acceptance deadline.

Australian practice also offers the facility to maintain pendency by “daisy-chaining”  successive divisionals throughout the 20 year term of the patent, which can impede third parties with legitimate commercial interests in an invention for which an application may be pending indefinitely.

The deadline for filing a divisional application is based upon the earlier of:(1)   the date upon which the parent application is accepted; and(2)   5 years from the filing date of the complete application from which priority is derived.

If item (2) applies, then the divisional application must be filed along with a request for its official examination.

The 5-year statutory bar is a strong driver for Applicants to request early examination of New Zealand applications.  If acceptance cannot be obtained within 5 years of the filing date, the divisional route then expires and the invention cannot be patented.  This is a key limiting difference between Australian and New Zealand practices.

Please refer to our earlier article on this subject.

 

 Under what circumstances would a double patenting objection be raised?  

Australia

 

New Zealand

A double patenting objection may be raised to prevent the grant of two or more patents having the same priority date and to the same inventor(s) having claims to the same invention. Such objection is often raised during prosecution of a divisional application in light of the pending parent application or granted parent patent when there is substantial overlap between the two sets of claims.In practice, an Australian divisional application can be broader than and can even wholly encompass the claims of the parent application/ patent, provided that their overall scope is not identical (if the differences in wording is inconsequential, the two sets of claims may still be considered the same invention).Significantly, if double patenting is overlooked by an Examiner during prosecution, it is not a ground for subsequent opposition or invalidation. Similar to the situation in Australia, a double patenting objection may be raised to prevent the grant of two or more patents having the same priority date and to the same inventor(s) having claims to the same invention.However, New Zealand has strict laws regarding double patenting. IPONZ will typically object to the claims of a divisional application if they are identical to, are wholly encompassed by or wholly encompass the claims of the parent application/patent, or if there is any overlap between the subject matter claimed in a parent application/patent and divisional application. There is case law which can be relied on under certain conditions to address claims with overlapping scope.  However, New Zealand’s approach to double patenting is perceptibly stricter than Australia’s.Similarly though, double patenting is not a ground for invalidity of allowed or granted New Zealand patents.

Is there an excess claims fee? 

Australia

 

New Zealand

Yes – from 1 October 2020, excess claim fees will increase to be payable at acceptance in two tiers: AU$125 for each claim in excess of 20 claims and equal to or less than 30 claims; and AU$250 for each claim in excess of 30 claims.There is thus an opportunity to rationalise the number of claims just before acceptance to minimise the fee payable.  Applicants do not need to rationalise the number of claims prior to examination commencing, as the claims fee is only levied at the time of acceptance, making this an exploitable loophole.The excess claims fee will be AU$250 for each additional new claim over 20 if the claims are added after acceptance (post-acceptance amendments). Yes – unlike the old regime where no excess claims fee was payable, IPONZ has now introduced an excess claims fee (as of 13 February 2020) for examination of a patent application with 30 claims or more. The excess claims fee is NZ$120 for each 5th claim over 25 – this fee will not be payable until after the acceptance of the application.Importantly, this fee is payable based upon the maximum number of claims on file at any stage during examination. Therefore, reducing the number of claims immediately prior to acceptance does not avoid or lessen the fee, and Applicants (hopefully upon receiving proactive advice from their attorney) should consider filing an amendment prior to, or concurrently with examination being requested. 

 

Are post-acceptance claim amendments allowed? 

Australia

 

New Zealand

Yes – correction to clerical or obvious errors are allowed. Applicants may make claim amendments to the extent that the amendments fall within the scope of the claims before amendment and are supported by a clear and unambiguous disclosure in the specification as originally file – that is, “narrowing” amendments. Yes – but there are strict limitations. Aside from correcting obvious mistakes, Applicants can generally only make a narrowing claim amendment.Post-acceptance amendments in New Zealand have always been perceptibly harder to obtain than by comparison with Australian practice.

The above exemplifies some of the questions we are asked regularly during patent prosecution in Australia and New Zealand.  Important differences between the two jurisdictions require vigilant and proactive management by an attorney. Shelston IP patent attorneys indeed employ a proactive approach to effectively manage our clients’ corresponding applications across these two very similar – but at the same time, very distinct jurisdictions.