New Zealand | The Changing Shape Of Patent Prosecution

New Zealand patent prosecution is distinct from Australia, requiring applicants to make key decisions earlier than they might expect.

Australian and New Zealand patent applications may begin with the same specification, but they cannot be prosecuted on the assumption that the same strategy will work in both jurisdictions. New Zealand’s divisional deadline and compressed prosecution timetable can close off options earlier than applicants expect.

Here we examine the distinct aspects to New Zealand practice, and the decisions applicants should make early to protect claim scope and preserve flexibility.

Changes after New Zealand’s Patents Act 2013

Fifteen years ago, New Zealand was commonly treated as a follow-on jurisdiction to Australia. Related applications could often be prosecuted using substantially the same strategy, and the relatively limited body of New Zealand examination and hearing practice gave applicants little reason to expect material divergence. The two countries even operated on complementary timelines, with Australian prosecution moving conveniently quicker, which often resulted in “rubber stamp” New Zealand allowances.

New Zealand’s Patents Act 2013 set that position on a different course. By introducing substantive changes to examination, including examination for inventive step, it created the conditions for New Zealand practice to develop independently. The direction of travel could be anticipated, but its practical consequences could not be assessed from the legislation alone.

Those consequences have necessarily taken time to emerge. New Zealand is a comparatively small patent jurisdiction, and examination practice, internal Office approaches and hearing decisions develop gradually. More than a decade after the 2013 Act, enough matters have now progressed through examination and the Hearings Office for a clearer and more definitive picture to be drawn. The important development is therefore not a sudden change in the law, but the accumulation of evidence showing how the post-2013 system operates in practice.

Seen in that context, the fixed deadline for divisional filings, overlapping prosecution deadlines, escalating internal review and growing body of inventive step decisions are not merely isolated features of New Zealand procedure. Collectively, they show a jurisdiction developing its own examination culture and strategic expectations. Applicants are increasingly expected to identify their strongest positions earlier, support them properly and prosecute them proactively.

The strategic risk lies in continuing to treat New Zealand as an Australian follow-on after the basis for doing so has materially weakened. The question is no longer whether divergence was foreseeable. It is whether applicants are responding now that the divergence can be demonstrated from a meaningful body of practice and decisions.

Inventive step is revealing the practical divergence

Perhaps the clearest indicator of this shift is the prominence of inventive step in modern New Zealand Hearings practice. Well over a quarter of substantive patent hearing decisions issued under the Patents Act 2013 have involved inventive step: 34 decisions out of 82 reviewed between 2017 and August 2026.

The significance of that statistic is not simply that inventive step disputes are common. It is that the post-2013 system has now generated enough decisions to reveal recurring features of IPONZ’s approach: closer attention to the structure of the obviousness analysis, the evidentiary basis for common general knowledge and the case developed during examination. Those features help explain why a prosecution strategy carried across from Australia may no longer be sufficient.

Inventive step was not evaluated during prosecution under the Patents Act 1953 and instead operated as a ground of opposition. Under the 2013 Act, however, inventive step is considered during substantive examination and an invention must involve an inventive step to be patentable. For applicants accustomed to the former regime, or to treating New Zealand as a secondary follow-on filing, obviousness can therefore assume greater practical importance than expected.

In practice, inventive step is assessed using the Windsurfing/Pozzoli1 approach:

1. identify the person skilled in the art and their common general knowledge
2. identify the inventive concept of the claim
3. identify the differences between the prior art and the inventive concept, and
4. determine whether those differences would have been obvious to the skilled person.

Different circumstances however may call for different approaches to be employed. Opposed applications and Swiss-style claims have been considered using the related Osmose approach (e.g., 2019 NZIPOPAT 5 2020 NZIPOPAT 5, 2022 NZIPOPAT 1), while selection inventions may engage principles drawn from decisions such as Dr Reddy’s/Generics (e.g., 2023 NZIPOPAT 6, 2022 NZIPOPAT). The broader point is that an inventive step response should engage with the particular legal and factual framework applicable to the claimed invention, rather than rely on a general assertion that the invention is “not obvious”.

The structure of the Examiner’s reasoning also matters. Applicants have succeeded where the inventive step analysis was not properly worked through. Examiners now commonly articulate the Windsurfing/Pozzoli steps, particularly by the second or third examination report. Where that has not occurred, it may be appropriate to ask the Examiner to identify the asserted skilled person, common general knowledge, inventive concept and route to the claimed invention. A clearly framed objection gives the applicant a fair opportunity to identify precisely where the reasoning breaks down; an unstructured objection may also be more difficult to sustain at a hearing.

Recent decisions also underline the importance of evidence and of testing assertions about common general knowledge. Concessions as to what formed part of the common general knowledge can operate against the applicant, including on appeal. In the absence of expert evidence, the Assistant Commissioner may make an independent assessment of the common general knowledge on the material available. The practical implication is that evidence should be considered during examination, not first contemplated once a hearing has become unavoidable.

The obviousness threshold should not, however, be overstated. An unverified hypothesis is not necessarily an obvious step, and accidental production of an invention does not itself establish obviousness. Equally, weak secondary indicia, such as evidence of later copycat products, may not cure shortcomings in the primary obviousness analysis. The strongest responses will therefore focus on the technical route from the prior art to the claimed invention and support that analysis with evidence where it will materially assist.

The shrinking flexibility of deferred examination

The rise of inventive step is occurring within a procedural framework that can require strategic decisions earlier than many applicants anticipate. The most consequential feature is the five-year deadline for divisional filings.

In New Zealand, both a divisional application and its request for examination must be filed within five years of the parent application’s effective filing date (generally speaking, the International Filing Date). Because that deadline is a hard stop on filing new family members, a divisional application cannot be used to preserve prosecution flexibility indefinitely.

Applicants often defer examination as a cost-management measure. In New Zealand, however, deferral can leave an applicant with only one meaningful opportunity to obtain patent rights. If examination is requested close to the five-year deadline, the opportunity to file a divisional may have disappeared by the time the first examination report issues. This is particularly true given current IPONZ examination turnarounds, which may have the applicant waiting up to three years for a first report.

A divisional filed and placed under examination immediately before the deadline may proceed alongside the parent. It can provide an alternative claim pathway, but not necessarily additional time in which to evaluate the Examiner’s position. This can surprise applicants accustomed to jurisdictions in which continuation or divisional applications remain available for years.

The strategic consequence is straightforward. Claim scope, fallback positions and possible divisional subject matter should be reviewed before the five-year deadline, not in reaction to an examination report issued after it. A trans-Tasman filing strategy may therefore begin with aligned claims, but the timetable for preserving optionality in New Zealand must be managed independently.

Patent prosecution is becoming increasingly front-loaded

New Zealand’s deadline framework reinforces the same trend. Applicants must manage both an acceptance deadline and response deadlines, and each affects the practical time available to resolve objections.

An application must be in order for acceptance within 12 months after the first examination report, subject to extension only in limited circumstances. There is no formal limit on the number of responses that may be filed during that period. Acceptance itself need not occur before the deadline, provided the application was in a condition suitable for acceptance at the deadline. If an adverse examination report issues after the acceptance deadline, the applicant has 10 working days in which to appeal.

That possibility should not be treated as a prosecution strategy. The preferable course is to address objections substantively and early enough to allow further examination before the acceptance deadline. Leaving the principal response until late in the period can reduce the opportunity to correct misunderstandings, file supporting evidence or pursue a materially different claim position.

Separate response deadlines also apply. The first examination report generally carries a six-month response period, while each subsequent report carries a three-month period. A one-month extension may be available, but the extension period should not be treated as an opportunity to file only a divisional application without also filing a substantive response. As the Assistant Commissioner has observed, responding at the last available moment can be risky because it limits the time remaining for further examination and resolution of outstanding objections.

Viewed together, the acceptance and response deadlines reward prosecution momentum. Delay may preserve short-term cost or defer a difficult decision, but it can also narrow the applicant’s options when the remaining issues become clearer.

1. Why persistence can matter

Front-loaded prosecution does not mean that applicants should concede a contested issue at the first sign of resistance. IPONZ’s internal checking procedures can make persistence to a further examination report worthwhile in an appropriate case.

Where an objection is maintained through to a third examination report, it is typically reviewed by a Principal Examiner. That review may sharpen the basis of the objection or support a favourable outcome for the applicant. The practical point is not that every objection should be pursued through three reports. It is that an applicant with a well-founded position should understand the internal escalation process before abandoning subject matter or adopting an unnecessarily narrow amendment.

A request for a hearing is not itself a valid response to an adverse examination report. Persistence must therefore take the form of a substantive response that squarely addresses the outstanding issues and preserves the applicant’s position.

2. Hearings are not a second chance

Recent hearing decisions make the front-loaded nature of New Zealand prosecution particularly clear. Applicants should treat examination, rather than the hearing, as the primary opportunity to establish their case.

Once a matter is before the Hearings Office, amendments required to place the application in order for acceptance are for the Commissioner to direct, rather than for the applicant to introduce as of right. A matter may not simply be returned to examination for further consideration. An appeal from the Patent Office is a rehearing, and it may not be possible to introduce new evidence later to remedy deficiencies in the examination record.

The practical lesson is broader than hearing procedure. A hearing cannot safely be treated as a forum in which to rebuild an inventive step case, develop an evidentiary record or test a new claim strategy for the first time. Those matters should be addressed during examination, while there remains scope for dialogue with the Examiner and for further reports before the statutory deadlines expire.

Three strategic decision points for applicants

1. Make divisional decisions earlier

Applicants should review commercially important claim categories, fallback positions and potentially distinct inventions before the five-year deadline. Waiting for an examination report may mean waiting until the divisional opportunity has gone.

2. Develop the substantive case during examination

Inventive step responses should identify the actual point of difference over the prior art, challenge unsupported assertions about common general knowledge and consider expert evidence while it can still influence examination. The hearing should confirm a case already developed, not serve as the first occasion on which that case is assembled.

3. Treat New Zealand as a separate prosecution strategy

Australian and New Zealand filings can still be coordinated, and much work can be shared. Coordination should not become automatic replication. The New Zealand timetable, divisional constraints and developing inventive step practice require independent decisions about when to request examination, when to preserve additional subject matter and how fully to develop evidence and argument.

Independent patent strategy for NZ applicants

The distinct character of New Zealand patent practice did not occur overnight. Its legislative foundation was laid by the Patents Act 2013, but the relatively small number of matters moving through examination and the Hearings Office meant that the practical operation of the new regime could only emerge gradually. The value of the accumulated decisions is that they now permit something more reliable than prediction: a considered assessment of the examination culture produced by the post-2013 regime.

New Zealand’s divisional constraints, deadline framework, approach to inventive step and expectations at hearings all favour earlier and more deliberate prosecution decisions. Whilst New Zealand remains a closely connected jurisdiction to Australia, that connection should not be mistaken for strategic equivalence.

The central question is not merely whether the same application can be filed in both jurisdictions. It is whether the New Zealand application has been given an independent strategy before the available options begin to close.

How we can help

With experienced Trans-Tasman attorneys registered in both Australia and New Zealand, we assist clients to file more patents across the two countries than any other IP firm, providing seamless and commercially strategic advice aligned to the nuances of each jurisdiction.