The Global Patent Prosecution Highway (GPPH) is an arrangement between a number of Intellectual Property (IP) offices. It allows patent applicants to request expedited examination by an IP office on the basis that one or more claims of a corresponding application have been found to be allowable by another GPPH IP office.
IPONZ joined the GPPH pilot programme on 6 July 2017.
There is no additional fee for requesting expedited examination under the GPPH. However, the patent application must meet certain requirements before the request can be made.
How to file GPPH requests with IPONZ
All requests to expedite the examination of a patent application under the GPPH pilot must be filed via the IPONZ case management facility.
There is no fee to request expedited examination under the GPPH pilot at IPONZ. However, all such requests must meet the requirements below.
Requests can be made either at the time of filing an application, or via a later amendment. In either case, this will automatically request examination of the patent case.
To find out more about how to enter a request at the time of filing an application, visit Apply for a Patent.
To find out more about how to enter an amendment request for and existing application, visit Request an Amendment.
Mandatory filing requirements
A request to expedite the examination of a patent application under the GPPH must fulfil the following conditions. Please note that any submitted documents will be compared against the claims in the complete specification on file.
- If amendments to these claims are required, these changes should be made to the complete specification before submitting a GPPH request.
- The New Zealand application and the application of the Office of Earlier Examination (OEE) must have the same earliest filing or priority date (whichever is relevant).
- At least one claim in the OEE application must have been found to be patentable, i.e. novel, inventive and useful. There must be an express statement of patentability for these claim(s) in a report or action issued by the OEE.
- A request under the GPPH must include the following documents:
a. A copy of the report or action issued by the OEE which expressly identifies the patentable claims.
b. A copy of the claim set which includes the patentable claim(s) of the OEE application.
c. A claims correspondence table which sets out the patentable claim(s) of the OEE application and identifies the "sufficiently corresponding" claim(s) to be examined by IPONZ. Where the claims to be examined are identical to the claims found patentable in the OEE report, a statement to that effect is an allowable alternative.
Claims to ‘sufficiently correspond’
The claims of the OEE application and those to be examined by IPONZ must “sufficiently correspond” to one another for a request to be accepted.
If necessary, an amendment to the complete specification should be made before the GPPH request. Any amendment to the specification should comply with the requirements of Section 40 of the Patents Act 2013 and Regulation 58 of the Patents Regulations 2014.
Voluntary amendments made after a request for examination will require a fee, and will affect the number of claims calculated for excess claim fees.
The claims to be examined by IPONZ must be identical or similar (including narrower) scope to the claims of the OEE application. IPONZ will also take into account the effects of any translations into the English language if the original claims from the OEE were not in English.
Claims to be examined by IPONZ cannot be broader in scope than those of the OEE application.
Similarly, claims to be examined by IPONZ which are in different categories from those of the OEE application are not considered to sufficiently correspond. For example, if the OEE application contains only claims to an article, then claims filed at IPONZ which also include a method of making the article will not be considered to sufficiently correspond.
Solely for the purposes of requesting GPPH expedition, Swiss-style claims will be considered to “sufficiently correspond” to second medical use claims allowed overseas. The claims should be otherwise equivalent such that reliance can be placed upon the conclusions of the OEE.
Optional materials in support of a request
The applicant may choose to provide copies of other non-mandatory materials, such as documents cited against the corresponding application, a cover letter, non-patent literature cited by the OEE, or other materials which relate to the request.
Documents to be filed in English language
All of the documents filed with IPONZ must meet the English language requirements of the Act and Regulations. Where the documents provided above are not in English, then the applicant must provide a verified English language translation within the relevant time period.
What happens when IPONZ receives a GPPH request?
Requests for expedited examination under the GPPH will be assessed to determine if they meet the eligibility requirements set out in annex B of the agreement. For example, the claims to be examined by IPONZ will be reviewed to ensure that these "sufficiently correspond" to the claims which were found allowable by the OEE.
If the mandatory filing requirements are not met, the applicant will be notified and where appropriate, invited to rectify the deficiency within 10 working days, otherwise the request will be refused. IPONZ may still choose to decline requests that are invalid or do not meet a minimum requirement threshold.
If the request for expedited examination is allowed, the application will be allocated to an examiner for substantive examination after the eligibility date has been reached.
Late entry into national phase
If a Treaty application is filed at IPONZ later than the 31-month national phase entry deadline, a request for expedited examination under the GPPH cannot be made at the same time. This is because the application will first need to undergo the Restoration process before its examination can proceed.
A request for expedited examination under the GPPH can be made via an amendment request following the restoration of the Treaty application.
Late convention claims
If a convention application is filed at IPONZ later than the 12 month convention period, a request for expedited examination under the GPPH can be made at the time of filing. However, this request will not be actioned until the applicant has satisfied the Commissioner that the convention application is entitled to the claimed priority date.
Where the convention claim is not found to be acceptable, then the request for expedited examination under the GPPH may be refused as the New Zealand application and the OEE would no longer share the same earliest priority or filing dates.
Using an IPONZ work product to file a GPPH request with another participating office
You can use an IPONZ work product to request accelerated examination at other IP offices. The IP office must be participating in the GPPH pilot.
The work product will need to show that at least one claim is patentable (i.e. novel, inventive, and useful).
Here are two examples of suitable work products from IPONZ:
- An examination report which says that one or more claims are patentable in the summary table on page 2.
- A notice of acceptance. This serves as an explicit statement that all claims are patentable.
Each participating office has its own eligibility and documentation requirements for GPPH requests. The Patent Prosecution Highway website has information for many of the participating offices.