IPONZ has recently updated its patent practices with regards to expedited examination requests under the Global Patent Prosecution Highway (GPPH) pilot program. These changes primarily affect how GPPH requests are assessed at IPONZ.
Filing of Swiss-style claims
When assessing whether a patent application’s claims “sufficiently correspond” to the claims accepted by a participating overseas office, IPONZ will now consider Swiss-style claims to correspond to other formats of second medical use claims allowed overseas.
Clarification of issues with GPPH expedited examination requests
In some circumstances, a submitted GPPH expedited examination request may not meet mandatory filing requirements. In these cases, IPONZ may now opt to seek clarification or request further documents, instead of declining the request outright. The requestor will then be provided with a limited timeframe within which they can provide a response.
IPONZ may still choose to decline a GPPH expedited examination request in the event that the claims do not sufficiently correspond, if the report or action is invalid, or in other circumstances where the request does not meet a minimum requirement threshold.