In this practice guideline
Filing a complete specification
0. Applications with complete specifications
A complete specification should describe the invention and the best known method of carrying it out, and ends with one or more "claims" which define the scope of the invention.
The front page of any complete specification (or as subsequently amended) filed using the online system should contain the title. There is no longer any requirement to include any other information such as an indication of an associated application accompanied by provisional specifications, cognated applications, divisional or parent applications.
Historically, patent form 5 formed the first page of a complete specification. However, in keeping with the introduction of our online system, there is no longer any need to file forms for many aspects of patent applications, including form 5. Therefore, applicants filing a new or amended first page of a specification will only be required to file a page with the title and the descriptive part of the specification.
The complete specification consists of the description, the claims, drawings (if any) and sequence listings (if any). The specification does not include the abstract. Where an abstract is filed with a specification, then the applicant will be required to provide a replacement specification without the abstract.
A complete application:
- Needs to disclose the full details of your invention.
- Is given a case number which can be searched for on the register.
- Will be examined and may lead to the grant of a Patent.
Applications accompanied by complete specifications should be made through our online service. Applicants must provide the following:
- A Complete Specification in English or Maori
- Payment of the filing fee.
- An address for service in New Zealand.
- The number, date, and country details of any other application from which they are claiming priority – convention, provisional or other complete
- A list of the inventors of the invention for the Patent where the application is not a convention application – for convention applications this must happen before the application can be accepted.
For Biotechnology applications a separate Sequence Listing document may be uploaded via a Voluntary Amendment.
Any application for a Patent with a Complete Specification made to IPONZ will automatically imply that a request for sealing has been submitted. There is no requirement for an applicant to submit a separate request for sealing. 1
Priority from Provisional Applications
An application with a Complete Specification may claim the priority date of an earlier Provisional Specification if the Complete Specification is filed within twelve months of the filing date (automatically extended to 15 months). Any application that claims priority from an earlier Provisional Specification will be given the filing date of the earlier Specification.
Dividing Complete Applications
An application with a Complete Specification may be divided into multiple applications where the specification contained multiple inventions (divisional applications). For any application that is divided from an earlier Complete Specification the applicant may claim any filing date from the date of the filing of the original application to the date of filing the new application.
An application with a Complete Specification may claim the priority date of an earlier application in a convention country provided it is filed within twelve months of the filing date of the convention application.
If the applicant in New Zealand is not the applicant in the convention country then documentary evidence of why the applicant is entitled to file the application in New Zealand must be provided.
Patents of Addition
Where an applicant makes an application for a Patent which represents a modification or improvement to another Patent (the main patent) for which they are the owner, they may apply for a grant as a patent of addition. A granted patent of addition has no renewal fees, is renewed or lapses as the main patent is renewed or lapses, and is granted for the same term as the main patent.
Declaration of Inventorship
The applicant must make a declaration that the inventors are the first and true inventors of the invention. This can be done at the time of application by checking the declaration on the online form, or subsequently by submitting a Declaration of Inventorship document via the Amendment facility. Where the list of Inventors provided at the time of application is not complete the applicant must amend the inventors listed on the application prior to grant.
1. Succinctness of claims
Section 10(4) of the Patents Act 1953 very specifically requires that claims of a complete specification must be succinct and this is taken to apply to each claim individually and to claims when considered as a set.
This provision avoids the burden of a reader having to read over repetitive matter in claims.
To meet the requirement of succinctness, each claim should clearly express the intended content without prolixity or undue repetition.
The presentation of plural independent claims, each one of which defines a different category of the invention, such as:
- a product,
- method of making the product,
- use (or method) of using the product,
- and apparatus for making the product,
will not in itself draw an objection that the claims are not succinct.
When plural independent claims of the same category are presented one independent claim should not fall wholly within the scope of another independent claim.
Objection will be taken to claims which do not meet the statutory requirement of succinctness.
Even where independent claims of the same category and having different and substantial mutually exclusive features, so that one does not fall wholly within the scope of another, are presented, objection that the claims are not succinct will be taken if repetition of subject matter from claim to claim is considered excessive.
If there is deemed to be such an excessive number of independent claims with excessive repetition, objection will be taken that such a plurality of independent claims makes it difficult, if not impossible, to determine the common novel inventive concept, that is, the claims taken as a whole do not clearly define the invention.
Where objection is taken that an independent claim falling wholly within the scope of another independent claim is not succinct, the Applicant may overcome the objection by
- amending the offending claims into the form of one independent claim and one or more dependent claims with consequential amendments, such as re-numbering, as necessary.
Where objection is taken to prolixity or undue repetition the Applicant may overcome the objection by more succinctly expressing the content intended.
It is appreciated that New Zealand legislation may differ to that in other countries, which may not have a statutory requirement that patent claims be succinct.