Patent Prosecution Highway Between New Zealand and European Patent Office Now in Effect

The Intellectual Property Office of New Zealand (IPONZ) and the European Patent Office (EPO) have entered into a 3-year trial Patent Prosecution Highway (PPH) agreement with effect from 1st December 2024.

PPH agreement Terms:
IPONZ’s PPH agreement with the EPO is on much the same terms as applies for its recently announced PPH agreement with the China National Intellectual Property Administration (CNIPA). Namely, the application from the Office of Earlier Examination (OEE) and the application for which the Office of Later Examination (OLE) has been requested to expedite examination are required to have the same earliest date and sufficiently correspond to one or more of the claims found to be patentable by the OEE. Use of the PPH arrangement is not limited to applications filed on or after the effective date. Both accepted applications and granted patents (or EPO mentions of grant) in an OEE can be used for expediting examination in the OLE, whether or not the OEE created that work product before or after the effective date.

Second Medical Use Claims:
As the EPO and IPONZ have different allowable second medical use claim formats, there is an asymmetrical relationship when considering whether the second medical use claims found to be patentable by the OEE will be considered to sufficiently correspond to the allowable second medical use claim format in the OLE. IPONZ requires second medical use claims to have Swiss-type claims of the form ‘Use of [known substance or composition] in the preparation of a medicament for use in [new therapeutic use]’ – being a purpose limited process or method of manufacture claim. By contrast the EPO requires second medical use claims to have the form ‘[Known substance or composition] for use in [new therapeutic use]’ – being a purpose limited product claim. As previously noted, since October 2019 IPONZ has been exercising more leniency in its application of the ‘sufficiently correspond’ criterion. In particular, IPONZ allows (and requires) other formats of second medical use claims allowed overseas to be converted into Swiss-type claims. As purpose limited product claims generally have wider scope than a purpose limited process claim, arguably a purpose limited product claim can be converted into a purpose limited process claim, but not vice versa. Indeed, as noted at II.B(3) of the EPO’s announcement of the trial PPH:

“a claim in the EP application which introduces a new/different category of claims than those indicated to be patentable/allowable by the OEE is not considered to sufficiently correspond. For example, where the OEE claims only contain claims to a process of manufacturing a product, then the claims in the EP application are not considered to sufficiently correspond if the EP claims introduce product claims that are dependent on the corresponding process claims.”

Consequently, a Swiss-type claim found to be patentable by IPONZ cannot be used for the purposes of expediting examination of a second medical use claim before the EPO.

Expediting Patent Examination:
Like the CNIPA, the EPO is not part of the Global Patent Prosecution Highway (GPPH). By entering into bilateral PPH agreements with those two offices New Zealand applicants now have options to expedite examination in the most frequently filed locations for their patent applications. Conversely, the work products of those offices can be used to expedite examination in New Zealand. Notably, the relevant work products of those offices will include Written Opinions or International Preliminary Reports on Patentability that are issued by the CNIPA or the EPO as the International Search Authority or International Examination Authority of a PCT International Phase application.

Given that the EPO and CNIPA have significant examination backlogs, the PCT related work products are most likely to be what is relied upon for expediting examination in New Zealand. Although not as long, IPONZ also has significant examination backlogs. It may be prudent for the applicant of a New Zealand patent application who wants to expedite examination before the EPO or CNIPA (or GPPH member office) to seek expedited examination of the New Zealand application. Regulation 77 of the Patents Regulations 2014 allows applications to have examination expedited where there are ‘good and substantial reasons’. IPONZ gives the following guidance on what qualifies as good and substantial reasons:

• where your enforceable rights are likely to be breached or infringed if the allowance of your claims in New Zealand is delayed;
• where you are likely to suffer financial losses if the allowance of your claims in New Zealand is delayed;
• where you will be commercially disadvantaged if the allowance of your claims in New Zealand is delayed;
• where there is a likely threat that your invention will be stolen and/or remodelled by a competitor;
• where an early allowance of your claims in New Zealand would facilitate an improvement of people's lives by providing therapeutic treatment of a disease or condition;
• where there is an immediate commercial need, e.g. a signed licencing agreement that requires a granted New Zealand patent.

Given that every application for a patent is for the potential purpose of commercialising the invention, IPONZ does not consider the following examples as “good and substantial reasons”:

• a statement that you want to commercialise the disclosed product;
• a statement that expedited examination would assist in the commercialisation of the invention;
• a statement that you are concerned about a possible infringement threat that might exist;
• a statement that a number of your claims in your patent application were found to be allowable by an overseas IP office;
• a potential or possible commercial reason, or a reason that applies to the majority of applications e.g. conjectured plans for licensing to a New Zealand company, or to ensure certainty for investors;
• a statement that you wish to obtain feedback from an examiner on the merits of the application, before a deadline to enter national phase or otherwise file in other jurisdictions.

Developments in PPH Agreements and Global Networks:
Notably IP Australia entered a trial PPH agreement with the EPO in July 2016 and that arrangement became permanent in July 2022. However, as yet, IP Australia has not entered into a PPH agreement with the CNIPA. This latter fact gives cause for prospective applicants from Australia or New Zealand who are interested in subsequently extending their patent rights into China to file early in New Zealand.

In addition to the 22 IPOs (including one intergovernmental organisation) that were members of the GPPH when New Zealand joined, the GPPH has since been supplemented by the IPOs of Brazil, Chile, Columbia, Peru and the Visegrad Patent Institute. The latter is an intergovernmental organization for cooperation in the field of patents established by the four Visegrad countries: the Czech Republic, Hungary, Poland and the Slovak Republic, which can be selected as an ISA and IPEA for PCT International Phase applications from those countries as well as Lithuania.

Concluding Remarks:
The PPH agreements offer valuable opportunities for expediting patent applications. However, the complexities of claim formats, examination backlogs, and eligibility criteria may require careful consideration. To fully leverage these benefits and protect your intellectual property effectively, you may wish to consult a qualified patent attorney in respective jurisdictions for expert guidance. At Pipers, our highly experienced team can help you navigate these complexities, assess your eligibility, and make the most of the strategic advantages offered by the PPH agreement for your IP.

Authors: Quinn Miller and Pritesh Lohani

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