Global Patent Prosecution Highway

Global Patent Prosecution Highway

The GPPH programme lets you request expedited examination with IPONZ if one or more claims in your patent 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 were found to be allowable by another GPPH IP office.

IPONZ joined the GPPH pilot programme on 6 July 2017. More information about the GPPH and its participating offices can be found on the GPPH website.

Global Patent Prosecution Highway

There is no additional fee for requesting expedited examination under the GPPH. However, your patent application must meet certain requirements before we can accept your GPPH request.

You can also request that we expedite the examination of your patent application under provisions in the Patents Regulations 2014 if your application does not meet the GPPH requirements.

Expedited examination for patent applications

Mandatory requirements

A request to expedite the examination of a patent application under the GPPH must fulfil the following conditions.

  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.

Claims to ‘sufficiently correspond’

In order for your GPPH request to be accepted, all of the claims to be examined by IPONZ must “sufficiently correspond” to the claims of the OEE application.

Amendments to your complete specification may be made before submitting your GPPH request. Any amendment to the specification should comply with the requirements of the Patents Act 2013 and the Patents Regulations 2014.

Please note that a voluntary amendment fee may apply for any specification amendments made after a request for examination. Such an amendment may also affect the number of claims calculated for excess claim fees.

All of the claims to be examined by IPONZ must be of identical or similar (including narrower) scope to claims accepted in 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 (i.e. claims that reflect new uses for known pharmaceuticals) 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.

Documents to provide

A request under the GPPH must include the documents below. You must also provide a verified English language translation with your request for any of these documents that are not in English.

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 may be made to the complete specification before submitting a GPPH request.

  1. A copy of the report or action issued by the OEE that expressly identifies the patentable claims.
  2. A copy of the claims that the OEE examination has found to be patentable.
  3. 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. In instances where the claims to be examined are identical to the claims found patentable in the OEE report, a statement to this effect is also acceptable.

You can also provide additional documents with your request, such as a cover letter, documents cited against the corresponding application, non-patent literature cited by the OEE, or other materials that relate to the request.

Your documents must meet the English language requirements of the Act and Regulations. If any documents you provide are not in English, you must provide a verified English language translation within a given timeframe.

Examination of Treaty applications prior to examination eligibility

An examination eligibility requirement applies to national phase entry applications under the Patent Cooperation Treaty (also known as ‘Treaty’ applications). If you request examination for your Treaty application, we will add it to our examination queue only if at least 31 months has passed since your earliest priority date.

This examination eligibility requirement applies even if you request us to expedite the examination of your Treaty application under the GPPH. If you intend for us to examine your Treaty application ahead of its eligibility date, you must indicate this as part of your GPPH request.

Filing a GPPH request

If you would like to request expedited examination under the GPPH, you must enter your request via the IPONZ case management facility.

  • You can enter a GPPH request at the time of filing your patent application. To do this, tick the Global Patent Prosecution Highway box in your application form. This will prompt you to provide additional details and upload your supporting documentation.
  • You can enter a GPPH request after you have filed your patent application. To do this, enter an amendment request for your existing application and tick the Global Patent Prosecution Highway box in your amendment request form. This will prompt you to provide additional details and upload your supporting documentation.
  • If you are entering a GPPH request for a Treaty application and want us to examine this ahead of its eligibility date, tick the Request examination of a Treaty application prior to examination eligibility box.

If you have not yet requested examination for your patent application, entering a GPPH request will automatically request its examination, and you will be charged the corresponding examination fee.

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, we will notify the applicant and invite them to remedy the issues with their request via the IPONZ online system. The applicant must submit their response and/or additional documentation for the examiner’s consideration within 10 working days for their request to be considered. 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.