Auckland, New Zealand – 6 December 2024

Integrated IP (IIP) is very pleased to hear about the launch of a new Patent Prosecution Highway (PPH) program between the Intellectual Property Office of New Zealand (IPONZ) and the European Patent Office (EPO). This new collaboration is implemented to streamline the patent application process, seeking to offer significant benefits to New Zealand innovators by expediting the examination process and reducing associated costs.

The new IPONZ-EPO PPH program, effective from 1 December 2024, allows applicants who have received a favourable finding on a patent claim from either IPONZ or the EPO to fast-track the examination process in the other office. This collaboration aims to enhance the efficiency of patent prosecution, with the view to providing a more streamlined path for New Zealand businesses and inventors to secure their intellectual property rights in European jurisdictions.

This new initiative is welcomed by Dr Dan Wadsworth, Principal of IIP, noting: “This is a good development for Kiwi innovators. The Patent Prosecution Highway program should not only expedite the patent process but also help reduce costs, making it easier for New Zealand businesses to protect their innovations in Europe. We look forward to seeing how much of a positive impact this will have on our clients and the broader innovation ecosystem in New Zealand.”

Overview of the new IPONZ-EPO PPH Program

The new PPH program leverages fast-track patent examination procedures already available at IPONZ and the EPO. By allowing each office to utilise the work previously done by the other, the IPONZ-EPO PPH program will operate to try and reduce the time and effort required to obtain corresponding patent rights. This initiative is expected to foster greater innovation and global competitiveness among New Zealand businesses.

Eligibility Criteria

To participate in the new IPONZ-EPO PPH program, applicants must meet the following criteria:

  1. Corresponding Application: The application at the Office of Later Examination (OLE) must have the same earliest date (priority or filing date) as the corresponding application at the Office of Earlier Examination (OEE). The OEE is the patent office with which an applicant has already filed the corresponding application that has been found to contain patentable or allowable claims. The OLE is the patent office with which the applicant has filed the application whose claims correspond with those found patentable or allowable by the OEE.
  2. Patentable Claims: The corresponding application must have at least one claim that has been determined to be patentable/allowable by the OEE.
  3. Sufficiently Corresponding Claims: All claims in the application at the OLE must “sufficiently correspond” to the patentable/allowable claims in the OEE application. Claims are considered to sufficiently correspond if they are of the same or similar scope, or if they are narrower in scope than the claims in the OEE application.
  4. Examination Status: Substantive examination of the application at the OLE must not have commenced.

Meaning of “Sufficiently Correspond”

Item 3 above requires that all claims in the application at the OLE “sufficiently correspond” to the patentable/allowable claims in the OEE application.

The term “sufficiently correspond” is intended to mean that the claims in the application at the OLE must be of the same or similar scope as the claims in the corresponding OEE application, or they must be narrower in scope. A claim is considered narrower if it includes additional features that further limit the scope of the claim, provided these features are supported by the specification. Claims that introduce a new category of claims (e.g., product claims instead of process claims) are not considered to sufficiently correspond.

Filing Requirements

Applicants wishing to participate in the IPONZ-EPO PPH program must submit the following documents with the appropriate request form:

  1. Work Product Copy: A copy of the OEE’s work product identifying the patentable claims.
  2. Patentable Claims Copy: A copy of the claims found patentable by the OEE.
  3. Claim Correspondence Table: A table showing the patentable claims from the OEE application and the “sufficiently corresponding” claims for examination by the OLE. If the claims are identical, a statement confirming this is acceptable.
  4. Complete Specification Document: A document including the claims that correspond to those found patentable by the OEE.

The same general documentation is required whether the OLE is IPONZ or the EPO. Please contact us if you wish to learn more about the specific filing requirements to make use of the IPONZ-EPO PPH program.

Entry into the PPH Process

Applicants can enter the IPONZ-EPO PPH program at any point after receiving a favourable ruling on a patent claim from the OEE, provided that substantive examination has not yet begun at the OLE. This flexibility allows applicants to take advantage of the expedited examination process at a time that best suits their strategic needs.

Benefits for New Zealand Innovators

The launch of the PPH program between IPONZ and the EPO represents a significant milestone for New Zealand’s innovation landscape. By streamlining the patent application process and reducing associated costs, the IPONZ-EPO PPH program is expected to make it easier for New Zealand businesses to protect their intellectual property in Europe. This, in turn, should help enhance their ability to compete in the global market and drive economic growth.

Initial Concerns

While the PPH programs offer numerous benefits, they usually attract initial concerns regarding their implementation. Some stakeholders have worried about the potential for increased administrative burden and the need for additional resources to manage the fast-tracked applications. There are usually also questions about the consistency of examination standards between participating patent offices, and whether the expedited process can compromise the thoroughness of patent examinations. However, these concerns usually abate through diligent planning and collaboration between the two offices, increasing prospects that the relevant PPH program maintains high standards of patent quality and integrity.

Other Countries with Similar Arrangements

In addition to this new collaboration with the EPO, IPONZ is involved in similar PPH arrangements with several other countries as a participant in the Global Patent Prosecution Highway (Global PPH or GPPH), including:

  • Australia
  • Canada
  • China
  • Japan
  • South Korea
  • Singapore
  • United States

GPPH is a plurilateral PPH pilot program that facilitates PPH workflows between two participating offices. These arrangements further facilitate the international patent application process, providing New Zealand innovators with more opportunities to protect their technologies globally.

For more information about the IPONZ-EPO PPH program and how Integrated IP can assist with your intellectual property needs, please contact us.

About Integrated IP and IIP Law

Integrated IP is a leading intellectual property firm based in New Zealand and Australia, dedicated to helping businesses and inventors protect and manage their intellectual property assets. With a team of experienced professionals, Integrated IP offers comprehensive services in patent, trademark, and design protection, ensuring that clients’ innovations are safeguarded both locally and internationally. Integrated IP is also associated with IIP Law, a specialised law firm providing expert legal services in intellectual property matters.

Integrated IP is committed to supporting New Zealand’s innovative community by providing expert intellectual property services and guidance. We believe this new PPH program will be a significant step forward in fostering innovation and helping Kiwi businesses thrive internationally.

For more information about how Integrated IP can assist with your intellectual property needs, please contact us.