Online filing facility for patent applications

An online facility for filing patent applications was introduced by IPONZ in early November 2008. The facility has a number of differences from the existing methods of filing a patent application on paper.

The online filing facility allows registered users to file patent applications in the English language accompanied by either a provisional specification or a complete specification, and allow requests for entry into national phase in New Zealand from Patent Cooperation Treaty (PCT) applications.

Applicants are able to file online applications for: “divisional" applications and request antedating of the application; patents of addition; and to designate whether the application is a “convention application” or a “non-convention” application.

The online filing facility does not provide an option for filing of a “complete after provisional” specification i.e. a complete application which claims priority from one or more earlier filed applications accompanied by a provisional specification. However, a complete after provisional specification can be filed either using the online correspondence facility provided by IPONZ or on paper.

Patent forms 1, 2 and 3 and entry into national phase requests.

The use of the online application form by a registered user satisfies certain filing requirements of a new patent application. When using the online application form there is no need to file separate patent forms 1, 2, or 3 or an “entry into national phase request form” with the online application or to send these patent forms separately at a different time. Under Regulation 9, IPONZ accepts the online form as a suitable alternative to the identified forms.

Requirements for online filing of patent specifications:

As with filing a patent application on paper, only one copy of a provisional or complete specification is required to be provided with an application made using either the online filing or the online correspondence facilities. Only a single specification document can be attached to the online application, preferably in the .pdf document format.

All specifications, other than those accompanying entry into national phase applications that are filed online, should be in the English language and include a first page that is either a patent form 4 (provisional specification) or a patent form 5 (complete specification) as appropriate.

Alternatively, a first page that clearly indicates that the specification is a “Provisional Specification” and includes the title of the invention will be an acceptable alternative to a form 4, and a first page that clearly indicates that the specification is a “Complete Specification” and includes the title of the invention will be an acceptable alternative to a form 5.

If the complete specification is filed (using the online correspondence facility) to complete an earlier filed provisional specification or specifications, the alternative front page should include an indication of the earlier application numbers and dates of filing from which priority is being claimed.

For national phase entry applications, applicants may attach an English language translation (including as part of a single document the certification of the translation) or a copy of the English pamphlet of the international specification to the online filing form. Amended pages may also be attached as a separate document. IPONZ will generally recover the other pertinent documents for the application from WIPO and applicants are requested not to attach other documents to the online filing form for national phase entry.

Users should be aware that the online application “forms” are not permanent forms, but rather online data entry forms for creating a patent application record in the IPONZ patent database. Consequently, except for a brief period of up to 90 days for which they are stored and can be presented and printed for the applicant, thereafter the “forms” no longer exist and IPONZ does not store or keep a record of the completed form. Of course, the data extracted from the form immediately the application is submitted is part of the patent application record. IPONZ considers that the process complies section 26 of the Electronic Transactions Act 2002 which sets out the legal requirement to retain information that is in electronic form.

Authorisation of agent

An authorisation of agent form is not required when filing a patent application using the online filing facility, as the agent will be recognised as the appointed agent. Regulation 14 requires the applicant to provide a written and signed authorisation of agent to the satisfaction of the Commissioner. The signatory requirements of applicants and/or their representative are considered by the Commissioner to have been met when filing online using the online filing form. (see also the practice note on General Signatory Requirements for Online Filing of Patents and Designs)

Convention applications: verified convention documents and verified translation certificates

An electronic copy of the convention document (including the verification certificate) as a single electronic file, may be attached and uploaded with the online filing form to satisfy the requirements under regulation 25(1). The document may be in the electronic form as provided by the originating office or may be derived from a scanned paper document and verification certificate.

Original verification certificates of English translations do not need to be supplied to IPONZ, a scanned electronic copy of the verification certificate uploaded with the translated specification will be deemed to satisfy regulation 25(2).

Alternatively these documents which support the claim to convention priority may be filed at a later date, either on paper or preferably as electronic documents via the online correspondence facility.

Declaration of inventorship:

The online filing form provides the option of providing various inventorship details equivalent to a patent form 6 (a declaration of inventorship). If these parts of the online forms are completed at the time of filing then a declaration of inventorship signed by the applicant will not be required at a later date.

General signatory requirements for online filing of patents and designs

With the introduction of patents and design applications online filing facilities, IPONZ considers that the user logon requirements which must be completed before an application can be filed online satisfy the conditions under Section 22 of the Electronic Transactions Act 2002 for a legal requirement for a signature to be met by means of an electronic signature.

Therefore, regulation 13 of the Patents Regulations 1954, and regulation 19 of the Designs Regulations 1954, (which provide (in part) that an application to the Commissioner for the granting of a patent or registration of a design shall be signed by the applicant or his agent) are met by a user completing the logon requirements of the online filing facilities and becoming a registered user.