New Zealand

New ZealandCapital: Wellington
Capital Timezone: GMT + 12
Population: 4,509,461 (est. 2014)
Languages: English, Màori
Currency: New Zealand Dollar (NZD)
Legal System: English common law

Key Issues

• Litigation and prosecution may be in English or Màori
• Ranked 3rd in the world for IP protection in the World Economic Forum’s Global Competitiveness Report 2013/2014

Enforcement

• An enforceable jurisdiction
• Potential for alternative dispute resolution in IP matters via arbitration, mediation, settlement
• Infringement remedies – damages, account of profits, injunctions
• Innocent infringer defence
• Potential relief against groundless threats

Prosecution

• National phase entry deadline for PCT applications in New Zealand: 31 months
• Patentable subject matter – all subject matter patentable except diagnostic, therapeutic and surgical methods of treating humans
• Local novelty
• Examiner’s not permitted to examine for inventive step, though inventive step is a ground for opposition and revocation
• Automatic examination
• Extension of time only available for national phase entry where the delay was unintentional and no undue delay has occurred. Also available for filing a convention application under certain conditions
• Amendments allowed at any time prior to acceptance. Post-acceptance amendments are restricted to disclaimers, corrections or explanations, or correcting a clerical error or obvious mistake
• Double patenting is strictly prohibited
• Voluntary Divisional applications possible, must be filed before acceptance of the parent
• A new Patents Act will come into force on 13 September 2014
– All subject matter patentable except medical treatment methods, human beings, and biological processes for their generation, plant varieties, computer programs
– Absolute novelty
– Inventive step will be a ground for examination
– New utility requirement
– Examination must be requested
– Post-acceptance amendments allowable where they relate to matter that is in substance disclosed, or where the amended claim falls wholly within the scope of a claim of the specification before amendment
– Generous extension of time provisions
– Experimental use exceptions

Other issues

• Pre-grant opposition and time-limited post-grant opposition currently available. Under the new Patents Act 2013, pre-and (unlimited) post-grant opposition will be available
• Patent Term Extensions – not available
• Pathways for the approval of biosimilars – available
• Parallel importation – available except for pharmaceuticals under certain conditions
• Foreign filing license – required
• Pharmaceutical Data Exclusivity Laws – data exclusivity (5 years)
• Renewal fees payable only after grant
• Accelerated examination available on request for “good and substantial reasons”

For more information contact us on mail@fak.com.au or +61 7 3011 2200.