In this practice guideline
National phase entry
0. National phase entry
We will accept applications for entry into National Phase in New Zealand using our online system where a PCT application number can be validated with WIPO.
Note: If a PCT application number cannot be validated with WIPO using our online system see: Early Entry into National Phase.
Applicants must provide the following:
- A Certified English Translation of the Original Specification if the original WIPO specification was not in English or Maori.
- The specification which they wish to have examined, in English or Maori. This should incorporate all amendments made during the international phase which they wish to have examined.
- A description – i.e. marked up pages - of any voluntary amendments requested in the entry into National Phase. A fee is payable for these amendments.
- A documentary description of the applicants entitlement to file (how they derived the rights to the Patent), where the applicants are not the same as the applicants in the International phase.
- Payment of the filing fee(s).
- An address for service in New Zealand.
For Biotechnology applications a separate Sequence Listing document may be uploaded via a Voluntary Amendment.
An application to enter National Phase in New Zealand will have a National Phase entry date on the day of filing, or the next working day if filed when the office is closed. The filing date of the complete specification will be deemed to be the International Filing Date.
Any application to Enter National Phase in New Zealand 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.
Where an applicant wishes to have the examination of their application expedited they may request this at the time of entering National Phase, or subsequently. Applicants must submit evidence of good and substantial reasons to support this request.
Early entry into National Phase
Where an applicant wishes an application to enter the national phase in New Zealand before publication of the international specification using our online system then the applicant should:
- File the application as a standard application accompanied by a complete specification.
- The applicant should provide details of the international filing date and international application number of the application and provide copies of any Notifications or filing receipts issued by WIPO in respect of the international application as supplementary information filed with the standard application;
- Call our contact centre as soon as the standard application has been filed with a note of the application number and request that application be converted to a national phase application.
The application will be converted from a standard application to a national phase application.
Late entry into National Phase
A request to enter National Phase in New Zealand must be made within 31 months of the priority date of the application. Where the applicant fails to meet this deadline, a request to enter National Phase should be made as soon as possible and should be accompanied by supporting evidence in the form of a statutory declaration or affidavit. The declaration or affidavit should provide a full explanation of the events which led to the failure to meet the prescribed time limits.
Requests for late entry must establish that failure to enter the national phase within the prescribed time was unintentional and that no undue delay has occurred in making the late entry application. Where IPONZ judges that a late entry into National Phase should be allowed it will be published in the next journal and will be subject to a one month opposition period.
English language translation
A Certified English Translation of the Original Specification must be filed with IPONZ if the original WIPO specification was not in English or Maori. All Complete Specifications for examination in New Zealand must also be submitted in English or Maori.
The deadline for submission of the Certified Translation is within three months of entering National Phase. A further two month extension to this deadline is available and will be given on all submissions made within that extended period.
Failure to provide a Certified English Translation of the Original Specification within the three month period, or within the two month extension period (i.e. a total of five months) will result in the abandonment of the application.
Declaration of inventorship
For PCT entry applications that claim convention priority, 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. If the application does not include a convention priority, the applicant must supply a declaration describing the right of the applicant to make the application in New Zealand in lieu of the declaration of inventorship.
1. IPONZ International Patent Classification of patent
- Class symbols from the International Patent Classification (IPC) are entered against New Zealand patent records when a provisional specification is filed, when a Patent Cooperation Treaty (PCT) application enters national phase in New Zealand, and by the patent examiner during the examination of a complete specification.
- Class symbols are not generally amended or added to a patent record after acceptance and publication of the specification.
- Class symbols entered against a national phase patent record at the time of entry into national phase are simply copied from those published by WIPO in the PCT pamphlet. Each class symbol, though it was in force at the time it was applied by the International Searching Authority, may no longer be in force in the latest version of IPC advanced at the time of entry into national phase in New Zealand.
- If a class symbol is added to a patent record during examination or when a provisional application is filed then that symbol is taken from the latest version of IPC advanced level that is in force at that time.
- During examination the New Zealand examiner may add “in force” symbols to the record and may even delete symbols that are either inappropriate for the subject matter of the patent or have been retired from the IPC. Nevertheless, a patent record, even at the time of publication, may include class symbols that have been retired from IPC advanced, and as time goes by more of those symbols may be retired from the IPC.
- To say that a symbol has been retired from the IPC means that the symbol is no longer used in the IPC, though it was obviously an active or “in force” symbol in the IPC before it was retired, and may have been recorded on many patent documents. Symbols that have been retired are not reused with a new definition in later editions of the IPC.
- To date, at least not since the introduction of IPC4, IPONZ has not performed any reclassifications of NZ patent records. In other words, IPONZ does not presently have an ongoing program to update the classification symbols recorded on patents to be in accordance with the latest version of the IPC.
- Nor has the patent search facility on the IPONZ database been augmented in order to search retired class symbols on the basis of entry of only current or “in force” symbols into the search query.
- Consequently, to do a thorough search using classification symbols, both “in force” IPC class symbols and retired IPC class symbols should be utilised in the search query.
- Appropriate retired IPC symbols and definitions may be found by inspection of older versions of the IPC available on the WIPO IPC website.
Display of classification information on New Zealand patent records:
The Schedule and Edition associated with class symbols displayed on a patent record on our website is specified on the basis of the classification system (e.g. IPC) and the last edition of that system in which the symbol was or is in force.
For example, Patent 333718 shows: