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A patent gives you protection and control over an invention. In New Zealand, the Intellectual Property Office of New Zealand (IPONZ) is responsible for granting and registering intellectual property rights, including patents. The process is fairly complex, and your application must comply with the law. In this article, we set out what you need to do to obtain patent protection with the IPONZ as well as some of the benefits of patent registration.

What is Patent Protection? 

A patent is a legally enforceable right that is granted for an invention. In New Zealand, a patentable invention could be a:

  • new product or process; 
  • new uses of known products; 
  • business methods; 
  • computer software; or 
  • genetically modified organisms. 

To obtain patent protection, your invention or innovation must, as a minimum: 

  • be novel (new); 
  • involve an inventive step; and 
  • be useful. 

This means that your invention must not already be in use or published about. Therefore, it is important to keep your invention confidential if you wish to obtain patent protection. 

What Are the Benefits of Patent Protection?

There are a number of benefits to patent protection. A patent will provide you, as the owner, with the exclusive right for up to 20 years to exploit your patent (and to prevent others from using your invention).   

When the invention is a product, the term ‘exploit’ includes:

  • hiring the product;

  • selling the product; 

  • disposing of the product; 

  • or using of the product; or

  • importing the product. 

Where the invention is a process, it includes using the process to do any of those actions above. 

A patented invention is a valuable business asset as it can give you a monopoly in the market for a certain period of time. You can license your patent to others so that they can use your invention or innovation. In return, for you may receive payment in the form of a royalty or a license fee.

How Do I Apply for Patent Protection?

You can make an application to register your patent directly through IPONZ online. The patent process is fairly complex, and we recommend that you speak to a patent lawyer before you file a patent application. This is a good idea to ensure your invention and application meet all the requirements.

Before you apply for a patent, you should search the patent register to make sure that your invention does not already exist, ensuring that the use or manufacture of your invention will not infringe the rights of another party. Once you have assured yourself that your invention is new, you will need to write a patent specification, which is a description of your invention. The specification must include detailed information on the construction and use of the invention. This could be demonstrated by way of diagrams or drawings. 

Should I File a Provisional or Complete Specification? 

In New Zealand, you can file your patent application with either a provisional specification or a complete specification. A provisional application will generally comprise of a broad description of the invention and, by itself, is not enough to obtain a patent. 

You can file a provisional specification to give yourself a little more time to develop and assess commercial opportunities before you decide as to whether you will continue with the patent application. It will establish a priority filing date and filing number for your patent claims.

A complete specification describes your invention in more detail and must include a set of claims, which define the scope or boundary of the protection sought for your invention. Generally, you must file a complete specification within 12 months after filing your provisional specification. Otherwise, your application will be abandoned. 

There are specific requirements for what you must include in a patent specification and requirements for the formatting of a patent specification. 

For example, a patent specification must include (amongst other things): 

  • a title for the invention; 
  • a description of the technical field (what the invention relates to or is suitable for);
  • a statement of the invention or summary of the essential and preferred features of the invention; and
  • a detailed description of the invention and the claims which define the scope or boundary of the invention.

I Have Submitted a Complete Specification, Now What?

Once you submit a complete specification, you must then request an examination. IPONZ will examine your complete specification within approximately three months. The examiner will assess whether your invention meets the requirements of the Patents Act and will issue a report setting out any objections that need to be overcome to progress your application. Some common objections include: 

  • that the subject matter of the claim is not patentable subject matter in New Zealand;
  • that the title of the patent specification does not adequately identify the subject matter of the invention; and
  • that there is insufficient detail in the body of the specification to enable a skilled reader to produce or perform the invention. 

Once the examiner’s objections have been overcome, they will publish your application in the IPONZ Journal and any person, who has reasonable grounds to, may oppose the grant of your patent. An opposition must be filed within three months of the date of publication of the specification. If no opposition is made, or no opposition is successful, your patent will be granted, and the Deed of Letters Patent will be issued.  

You should be aware that a New Zealand patent will only give you protection within New Zealand. If you would like to obtain patent protection in another country, you will need to file a patent application in that country too. 

Key Takeaways

The process for obtaining a patent in New Zealand is complex. Help from a patent attorney will give you the best chance of securing patent protection. If you need advice about protecting your inventions in New Zealand, contact LegalVision’s New Zealand intellectual property lawyers on 0800 005 570 or fill out the form on this page.

FAQs

What is a patent?

A patent is a legally enforceable property right that is granted for an invention. In New Zealand, examples of a patentable invention could include a new product or process, business methods or computer software. To gain a patent the invention must be new, useful and involve an inventive step.

What does it mean to exploit a patent?

Patent protection will provide the owner with an exclusive right to exploit the patent for up to 20 years. The meaning of exploit where the invention is a product includes the making, hiring, selling, using, disposing of, or importing of the product. Where the invention is a process, it includes using the method to undertake any of those actions.

What are common objections to a patent application?

A common objection is that the subject matter of the claim is not patentable subject matter in New Zealand. Additionally, the title of the patent specification might not identify the subject matter of the invention adequately. Another common objection is that there is not enough detail in the body of the specification to enable a skilled reader to produce or perform the invention.

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