Find out how you can use Convention, Treaty and Regional applications to seek protection for your invention in important export markets. This information will help you to decide which options are best for your situation and objectives.
The Patent Cooperation Treaty
The Patent Cooperation Treaty (the 'Treaty') makes it easier to file applications in multiple countries and regions. Using the Treaty you can apply for protection in over 140 countries through one centralised application process. It has the same effect as filing multiple applications at the same time.
For more discussion on the advantages of using the Treaty system, see Why use the Patent Cooperation Treaty?
The Treaty is administered by WIPO. For an up-to-date list of member countries, see PCT Contracting States.
Innovators can protect their patents around the world through the Patent Cooperation Treaty. You can see more details on these applications in our infographics:
- How innovators protected their inventions in New Zealand and around the world in 2018 [477 KB PDF]
- How innovators protected their inventions in New Zealand and around the world in 2017 [491 KB PDF]
- How innovators protected their inventions in New Zealand and around the world in 2016 [491 KB PDF]
- How innovators protected their inventions in New Zealand and around the world in 2015 [492 KB PDF]
How the Treaty system works
Making a Treaty application is the first step. The application is filed with WIPO or one of its receiving offices and searched by an international searching authority. This is called the 'international phase'.
Next you must request entry into the countries or regions where you want to gain patent protection. You only gain protection in these markets after each national or regional patent office has examined the application and made a decision to refuse or grant a patent. This is called the 'national phase'.
A family of patents having the same priority date(s) can be gained from a single Treaty application.
- WIPO's PCT FAQs
- Filing a Treaty application from New Zealand
- Sections 46-52 of the Patents Act 2013
- Regulations 61-65 of the Patents Regulations 2014
- WIPO Lex, which provides free access to IP treaties administered by WIPO, as well as the laws and regulations of its member states.
The Paris Convention
The Paris Convention (the 'Convention') makes it possible to file applications in overseas countries based on your first filed application (called the 'basic application').
A key benefit of the Convention is that it gives you additional time to file overseas applications. Using the Convention, any overseas applications filed within 12 months will be back-dated to the date of your basic application (called the 'priority date').
The Convention can also be a cost-effective option when you want to file separate patent applications in a few countries or regions.
All countries involved must be members of the Paris Convention (the 'Convention'). The Convention is administered by the World Intellectual Property Office (WIPO). For an up-to-date list of member countries, see Paris Convention Contracting Parties.
What you need for a Convention application
A New Zealand patent application can be used as the basic application for one or more Convention applications.
When you apply for an overseas patent under the Convention, you must include details (e.g. application number, filing date and Convention country) of the basic application with your application. Usually, you must include a certified copy of the application that you originally filed with us. This may be required either when you file or within a time set by the relevant patent office.
Applicants or their agents can request a certified copy of their New Zealand patent application via our case management system (under Information Requests in your Inbox).
The Budapest Treaty
The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure ("The Budapest Treaty") allows for the deposit of a microorganism in a single international depositary for the purpose of meeting disclosure requirements in all contracting states.
The Budapest Treaty also allows for interested parties to request samples of the microorganisms in certain circumstances.
For an up-to-date list of contracting states, see the Budapest Treaty Contracting States. For an up-to-date list of depositaries, see the Budapest Treaty International Depositary Authorities.
How to request a microorganism sample under the Budapest Treaty
Any interested party may request access to a microorganism sample under Rule 11.3(a) of the Regulations under the Budapest Treaty. IPONZ can provide certification for any patent or patent application filed with IPONZ which refers to a deposited microorganism.
To do this, you can make a request for certification on WIPO Form BP/12 sent to email@example.com using the subject heading “Request for certification for the furnishing of samples of deposited microorganisms”.
IPONZ will then review the request, certify the BP/12 form and return this via email.
Regional patent applications
Regional patent applications can be a good way to seek protection in a group of countries.
You can file a single application that has effect in all the countries within the region. The application is usually examined by one intellectual property office. For more information, see the regional patent office websites:
- African Regional Intellectual Property Organization (ARIPO)
- Gulf Cooperation Council Patent Office (GCC Patent Office)
- Eurasian Patent Organization (EAPO)
- European Patent Office (EPO)
How innovators protected their inventions in New Zealand and around the world in 2016