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The Process of Gaining Patent Protection in NZ

If you are serious about an idea or basic product and want to transform it into an invention, it is very important that you get patent protection. Without patent protection, it is unwise to promote or advertise the idea, as it can be easily stolen. More than that, your idea will not be taken seriously by businesses you approach because without the patent protection, your idea is just that – an idea.

Patenting in New Zealand offers protection within the country. If you want to get patent protection in a foreign country, you will need to apply for a patent in that country or in a region that includes that certain country.

Before we get into the details of what to expect, it is important to note, that this process should be walked through with a Patent Attorney who specialises in this type of work. Our explanation has simplified what to expect, but is in no way being offered in place of solid legal advice!

Procedure for Obtaining a Patent

The process of patenting a new idea or product is not simple, in fact, it can be quite complex. Here is the procedure in a nutshell:

1. Search Existing Patents

The first step is to search in order to see whether your idea or product has already been patented. You may be out of luck if your basic idea or product has already been patented. If it isn’t, then you can proceed to complete your patent application. It may sound easy, but in truth, it’s not. Patent searches are likely to reveal a similar idea or product that has already been patented. If that is the case, then you might need to alter your idea/product to make it less similar.

2. Apply for a Patent

The next step is to apply for a patent. You will need to complete an application and submit it to IPONZ and also pay a $100 fee (provisional). You can either file a new application for a provisional specification or a complete specification. Keep in mind that the application for a patent is not similar to completing an employment application. It is a hectic procedure and must be done correctly so that your idea or product as well as your future rights to it are protected. Any mistakes may result in a quick denial from IPONZ.

3. Pending Application

Once you have submitted your application, it will become a pending application. The procedure after that depends on the route you have chosen for patent filing. In some jurisdictions, a patentability search will be carried out within 6 months of filing the application.

4. Publication

Patent applications are generally published on the IPONZ website approximately 18 months after they are first filed. From that date, anyone can access the contents of your patent application. It is also possible for you to see copies of correspondence with IPONZ as the application is examined.

5. Examination

Once your patent application is published, the next step is to request examination of the application. You can usually do this within 6 months of publication and you can expect to receive the first examination report within the 12 months period of requesting examination. You must also file a response to the examination report, generally within 3-6 months of receiving the examination report. In some cases, multiple examination reports will be issued. If successful, your patent will be granted within 6 months of filing a successful response to your examination report.

6. Acceptance

If there are no objections from the examination, your patent will be accepted and the accepted form of your application will be published in the IPONZ Journal. Once the patent is accepted and your application has been allowed, you will need to pay some form of official fee associated with the issue or grant procedure. Once granted, you will need to pay annual government renewal fees that are usually due each year up to and including the 20th year so that your patent is kept in force.

7. Renewal Fees

Annual renewal fees are payable in most countries, even on pending applications. They are generally paid from the third year onwards. In New Zealand, you are required to pay renewal fees in the 4th, 7th, 10th and 13th years after the date the application was first filed. The term of a patent is 20 years from the date of filing the complete specification.

Your patent is your most valuable asset and it lasts for 20 years. Most people who have gone through the process say that getting patent protection is a bit like buying a house. The procedure can be frustrating and overwhelming, but undeniably worthwhile once completed. To take that next step, contact a reputable and experienced attorney to discuss your idea. 

We can recommend people if you need advice on where to go too, so give us a call if this applies to you.