Peculiarities in the NZ IP System

The most noticeable and often encountered difference in NZ intellectual property legislation resides in its patent practice. Through the adoption in 1953 of the British 1949 Patents Act, New Zealand practice allowed for:
- local novelty (considered novel if not known in NZ, even in known overseas), and
- invention by importation.

Local novelty will disregard the publication or use overseas of an invention overseas when assessing novelty of any alleged invention. Consequently this may allow for overseas applicants to file in New Zealand after sale, use, or the expiry of the 12-month patent convention period. This is extended to allow persons who see inventions overseas to apply in New Zealand for the invention, providing it is not known here.

However these provisions are largely archaic and date from a period in which bringing technology into a new and developing country was to be encouraged. This was also a period before telecommunications and modern rapid travel between countries. Today considerations affecting whether ‘local novelty’ is merely a concept not always achieved in practice include: constant updating of many overseas patent specifications held at the NZ Intellectual Property Office, the availability of many overseas periodicals and publications on the local market, trade material brought into the country by many delegates of trade conferences held overseas, and many foreign published texts received in many NZ libraries soon after publication.

The internet has also posed particular problems. Whether a web-page accessible on the internet constitutes local publication until such time as it physically exists (such as a printout) has yet to be determined. The problem will still remain as to establishing the accession date (date of first existence in the country) on media as fluid and dynamic as the internet. Current considerations of the Patents Act include a move towards absolute novelty as adopted by most other countries.

The NZ Patents Act also supports a two stage filing system, where a patent application may be filed with provisional specification. The content of this specification should outline the invention in general terms and outline the direction that further development will take. It is recognised that this specification (filed with a new patent application) is filed before any publication, and often while the invention is still at an early stage. The primary purpose of this document is to establish a priority date for the completed NZ application and any overseas applications filed under convention priority or through the PCT.

Within 12 months the application must be completed by filing a complete-after-provisional specification. This must describe the invention in more detail, including the best method known to the applicant for working the invention. The result is a two-stage filing system for applicants and allowing two opportunities to introduce material describing the invention.
For applicants who enter the NZ patent system through convention application the specification of the original priority application takes the place of the NZ provisional specification.

For the national phase of PCT applications, the specification of the original priority application takes the place of the NZ provisional specification. The international specification (filed in pursuance of the PCT application and establishing the international filing date) is deemed to take the place of the complete-after-provisional specification.
For non-convention applications by overseas applicants, the option exists for filing a NZ application with a provisional specification (which must be completed by filing a complete-after-provisional specification within 12 months) to take advantage of the two stage system, or by filing a complete specification in the first instance (a one step system). If a complete specification is filed in the first instance, an option remains to convert this into a provisional specification and then file a subsequent complete-after provisional specification – providing all this is done within 12 months of the application having been lodged.

The two stage system is useful where it is thought that further improvements may be made to an invention during the next 12 months, and there is no earlier priority claim to rely upon. The procedure can also be extended to allow a number of successive patent applications, each with a specification describing continuing advances in an invention, to be filed and cognated (combined) into a single patent application with a single complete-after-provisional specification. This allows an applicant to record successive advances prior to disclosure. The resulting cognated application is similar to a convention application with multiple priority dates stemming from different priority applications.

New Zealand practice also allows patent applications to be divided into separate applications. This is typically to cater for where more than one invention exists within the claims and/or specification. Any divisional application must be filed prior to acceptance of the parent patent application.

Unlike many countries, New Zealand still adopts the practice of publishing a patent specification only after acceptance of the application.

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