New Zealand patent prosecution: why Australian applicants can no longer treat it as a follow-on

Australian patent owners often treat New Zealand as a follow-on country: file the same specification across the Tasman, and run the two applications on the same plan. That was once a sensible shortcut. It is a riskier one now. This note sets out the practical points for Australian businesses that file in New Zealand.

Why has New Zealand patent practice moved away from Australia?

New Zealand's Patents Act 2013 changed what examination involves. Under the old law, inventive step was not tested during examination and was mainly a ground of opposition. Since the 2013 Act, an examiner must be satisfied that the invention involves an inventive step before an application can be accepted. That one change set New Zealand on its own path. For years the practical effect was hard to see, because few matters had worked through examination and hearings. More than a decade on, enough decisions exist to show how the system really behaves. Inventive step now features prominently in the Hearings Office's published decisions.

How is inventive step assessed in New Zealand?

Generally by a structured four-step approach known as Windsurfing/Pozzoli. The decision-maker defines the skilled person and what that person knows, works out what the claim actually contributes, compares that with the prior art, and decides whether closing the gap would have been an obvious step for the skilled person. Other frameworks are sometimes used for particular kinds of claim, such as Swiss-style claims or selection inventions. Examiners now often set out these steps by the second or third report, and where they have not, an applicant can fairly ask them to identify the skilled person, the common general knowledge and the route to the claimed invention.

Two lessons follow. A bare assertion that an invention is "not obvious" is unlikely to succeed, because a response should engage with the particular framework and facts. And evidence matters early. Concessions about what was common general knowledge can count against an applicant, including on appeal, and without expert evidence the decision-maker may form their own view of it. Evidence is best considered during examination, not first contemplated when a hearing has become unavoidable.

What is the five-year divisional deadline, and why does it matter?

New Zealand allows five years from the parent's effective filing date to file a divisional and to request its examination. That date is generally the international filing date, and the deadline is a hard stop on adding new family members. Many applicants defer examination to manage cost. In New Zealand, deferral can leave an applicant with a single real opportunity to obtain rights. A request lodged shortly before the fifth anniversary can mean the divisional window has closed before the first report is even issued. That is a live risk given that first reports can currently take up to about three years. A divisional filed just before the deadline can run alongside the parent as an alternative claim path, but it does not buy extra time to assess the examiner's position.

How tight are the response and acceptance deadlines?

Tighter than many Australian applicants expect. The application must be ready for acceptance within twelve months of the first examination report, and extensions are rarely available. The first report usually allows six months for a reply and each later report three. A single extra month can sometimes be obtained, but it should not be spent filing a divisional with no substantive response. If an adverse report issues after the acceptance deadline, there are just 10 working days to appeal. Leaving the main response to the last moment narrows the room to fix misunderstandings, file evidence or change claim position. The system rewards momentum.

Is it worth pushing back on an examiner's objection?

Often, yes, if the position is well founded. An objection that is pursued to a third report is typically reviewed by a Principal Examiner, which can sharpen the objection or lead to a favourable result. That does not mean every objection should run to a third report. It means an applicant should understand the internal escalation before abandoning subject matter or accepting an unnecessarily narrow amendment. Asking for a hearing does not count as a reply to an adverse report, so persistence has to take the form of a substantive response.

Can a hearing fix a weak examination record?

No. A hearing is not a second chance. Once a matter reaches the Hearings Office, the Commissioner directs any amendments needed to put the application in order, the applicant cannot introduce them as of right, and the matter cannot simply be sent back to the examiner. An appeal proceeds as a rehearing on the existing record, so gaps in the evidence may be impossible to fill later. Examination, not the hearing, is where the case has to be built.

What should Australian applicants do differently?

Three decisions stand out. First, review divisional strategy early: before the five-year deadline, look at the claim types that matter commercially, your fallback positions and any distinct inventions, rather than waiting for a report that may arrive too late. Second, build the inventive step case in examination, by identifying the real point of difference over the prior art, challenging unsupported statements about common general knowledge and obtaining expert evidence while it can still influence the outcome. Third, treat New Zealand as its own prosecution strategy. The two filings can sit side by side and share much of the work, but running them in lockstep is a mistake. The timing of the examination request, the decision to hold material back for a divisional and the depth of evidence each call for a separate decision.

Stellar IP Law advises on patent filing and prosecution strategy for Australian and trans-Tasman applicants, working with clients across Sydney, Gold Coast, Brisbane, Sunshine Coast, Newcastle and Wollongong. Contact us to review your New Zealand timetable before the options start to close.