New Zealand and Europe launch Patent Prosecution Highway (PPH)

The Intellectual Property Office of New Zealand (IPONZ) have announced that as of 1 December 2024, they will launch a new Patent Prosecution Highway (PPH) pilot programme with the European Patent Office (EPO).

This new pilot programme allows applicants to request accelerated examination of their patent application in either New Zealand or the European Regional Phase provided that at least one patent claim of their patent application has been allowed in the other jurisdiction.

While full details of the new IPONZ-EPO PPH are yet to be released, in line with current expedited examination options, we expect there to be no official fee for requesting examination under this pilot programme, and that it will be permissible to adapt the format of claims to account for differences in allowed subject matter (for example the conversion of EPC2000 claims to equivalent New Zealand approved Swiss-style claims). It is likely that the eligibility criteria and filing requirements will be similar to those established, by IPONZ, for examination proceeding under the Global Patent Prosecution Highway (GPPH). See our earlier article summarising these filing requirements.

Previously, IPONZ have appeared hesitant to accept the merit of submissions, filed during prosecution, where domestic claims have been amended to conform with the allowed scope of a corresponding European application. By launching this new pilot programme with the EPO, it will be interesting to see if the IPONZ-EPO PPH process is more persuasive towards IPONZ Examiners accepting granted European counterpart claims.

This new examination pathway comes hot off the heels of IPONZ announcing another PPH pilot programme with the China National Intellectual Property Administration. Together with the GPPH, applicants now have a number of examination avenues to fast-track the patenting process at IPONZ, which is currently is seeing significant standard examination delays of up to three years from when examination is requested to the time a first examination report issues.

The launch of this new PPH with the EPO is a welcome development that allows applicants another tool for tailoring a prosecution strategy for one or more patent families.

We will summarise the full details of this new IPONZ-EPO PPH once they are released. In the meantime, please reach out to FB Rice if you have any queries regarding examination options in New Zealand, or another aspect of local patent practice.