New Zealand Patent Application Q&A

Can patents cover any type of invention, including software, business methods, and medical procedures?

• In New Zealand, the following are specifically excluded from patentability:
  • computer software or business methods;
  • Human and biological manufacturing methods;
  • Surgery or treatment method;
  • Diagnostic methods for humans; and
  • Plant varieties.

In New Zealand, who owns the patent for an invention by a company employee, independent contractor, multiple inventors or a joint venture? How is patent ownership transferred?

• A patent can only be owned by the inventor or a person who derives title from the inventor, and if one of them dies, then it will be owned by their personal representative. The inventor is the person who made a substantial contribution to the invention for which the invention is claimed.
• Ownership of inventions by company employees is determined by the terms of the relevant employment contract. Explicit contractual terms will be given priority when determining patent ownership. In the absence of explicit contractual provisions, the nature and scope of the employee's role will be considered and, in general, patent ownership will belong to the company. The Intellectual Property Office of New Zealand (IPONZ) can hear and determine any disputes between employers and employees regarding patent ownership.
• For independent contractors, the contract terms will take precedence. If there is no express contractual provision, if the independent contractor is the actual inventor of the invention, they will have patent rights.
• If there are multiple inventors for an invention, any resulting patent rights will be owned jointly by all inventors, unless otherwise agreed to the contrary, with each inventor entitled to a share of the patent. Each inventor may exercise his or her exclusive rights without regard to the others, although any license or assignment requires the approval of all inventors.
• For joint ventures, the terms of the joint venture agreement will take precedence. If there is no express provision, it is presumed that the invention patent right belongs to the joint venture. If during the joint venture, one party engages in activities outside the scope of the joint venture, such as the invention is created by the joint venture partners and they claim exclusive ownership of the invention patent, then the party has the responsibility to determine that the invention is not within the scope of the joint venture agreement.
• The transfer of invention rights will be recorded on the IPONZ Patent Register and it is the primary responsibility of the patent owner to register and record the transfer of invention rights.

How long does it usually take to obtain a New Zealand patent for an invention and how much does it usually cost?

In New Zealand, the time it takes to obtain a patent varies by technology, and in certain technical fields, such as chemistry or biotechnology, IPONZ has significant examination backlogs.

• The average grant time for invention patents in the mechanical field is three years from the date of filing a request for substantive examination.
• The average authorization time for invention patents in other technical fields is 4-5 years.
• If a request for examination under the Global Patent Prosecution Highway (PPH) is made, the substantive examination is usually conducted within two months, and the average authorization time is 1-2 years.
• The cost of granting a patent varies widely depending on the type of examination requested, the nature of the opposition filed, the number of office actions, and whether an opposition or reexamination request is filed after grant.

Is there any accelerated patent application procedure for invention patents in New Zealand?

• Requests for accelerated PPH examination can be made under the global PPH scheme, which IPONZ has participated in since 2017.
• A request for accelerated examination may be made for business reasons, such as patent infringement activity known to the applicant.
• If infringement, economic loss or commercial disadvantage may occur due to delay in examination of patent application, a request for accelerated examination may be filed, but sufficient reasons must be submitted and supported by written evidence.