Skip to main content.

Global Patent Prosecution Highway

The Global Patent Prosecution Highway pilot programme allows you to request for an expedited examination with IPONZ on the basis that one or more claims in your application have been found to be allowable by another GPPH IP office.

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.

GPPH requests filed 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.

Mandatory filing requirements

  1. 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).
  2. 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.
  3. 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 corresponding claim(s) to be examined by IPONZ.

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 for expedited examination under the GPPH to be accepted. 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 the effects of any translations into 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.

Optional materials in support of a request

The applicant may choose to provide copies 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.

How to request for expedited examination under the GPPH

A request for expedited examination under the GPPH can be made at either at the time of filing an application, or via a later amendment. Note that this will automatically request for the examination of the patent case.

Note that it is not possible to request for expedited examination for a patent case without also requesting for its examination at the same time.

To find out more about how to enter a request for expedited examination under the GPPH at the time of filing an application, visit Apply for a Patent.

To find out more about how to enter an amendment request for an existing application, visit Request an Amendment.

How GPPH requests are considered at IPONZ

Documents which accompany a request for expedited examination under the GPPH will be inspected to assess whether or not they contain the relevant information required for that document type.

The information within each document will also be assessed to ensure that it is sufficient for the request to progress. For example, the claims to be examined by IPONZ will be reviewed to ensure that they “sufficiently correspond” to the claims which were found to be allowable by the OEE.

Where a request for expedited examination has been found to be acceptable, the application will be allocated to an examiner for expedited examination.

Where the documents or information are insufficient, then the request will be rejected with reasons provided in an accompanying report. The applicant may address the deficiencies and refile the request for expedited examination under the GPPH.

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 its 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 its 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.