How to Challenge a Patent Application in New Zealand and Australia
You have a client that is a competitor’s patent away from a bad year, a General Counsel who is not a patent lawyer, and 2,000 words including footnotes. The hard part of a patent practice letter of advice is rarely the technology. It is knowing which door to knock on to challenge a patent application in New Zealand and Australia, and by when.
Quick answer: to challenge a patent application in New Zealand and Australia, match the route to the stage the application has reached. Before acceptance, both countries let any person put prior art in front of the examiner (in Australia, until three months after acceptance is advertised). After acceptance, both give a three-month opposition window. After grant, you are into re-examination or revocation. Get the trigger date right, keep the grounds brief, and explain the choice to a non-specialist reader.
This is study guidance, not legal advice. The scenario this guide follows is the patent practice letter of advice set for LAWCOMM 785 at the University of Auckland. You can find the course among the University of Auckland questions (the dedicated question page is on its way), and the companion model letter extract is for reference only, not for submission as your own work.
If you would like a second opinion on structure before you write, our law assignment help page explains how support works.
How to challenge a patent application in New Zealand and Australia: the routes
Start with the table. It is the part examiners and markers expect you to have in your head, and it is the quickest way to see where New Zealand and Australia differ.
| Stage | New Zealand | Australia |
|---|---|---|
| Before acceptance | Written assertion that a claim lacks novelty or inventive step, between publication and acceptance (ss 90–91) | Notice of matters affecting validity (s 27), from publication until three months after acceptance is advertised |
| Mechanism, third-party notice | Statement identifying prior publication or use; considered in examination | One-way notice to the examiner; novelty and inventive step only |
| After acceptance, before grant | Opposition (s 92), three months from publication of acceptance | Opposition (s 59), three months from advertisement of acceptance |
| Who decides | Commissioner of Patents; appeal to the High Court | Commissioner’s delegate; appeal to the Federal Court |
| Re-examination | Any person can request it for an accepted application or a granted patent (ss 94–95) | Before grant only the Commissioner can start it; after grant any person can request it (s 97) |
| After grant | Revocation application to the Commissioner by an aggrieved person (s 112) | Revocation proceedings (s 138) |
| Cost, qualitatively | Opposition and revocation are moderate; re-examination is lower; a hearing adds cost | Notice is lowest; opposition is moderate to high; court revocation is highest |
Treat the cost row as a way of saying “cheaper” or “dearer”, and nothing more. The brief for this kind of task asks for costs qualitatively, and invented dollar figures will cost you marks.
Opposition, and the deadline that trips students up
New Zealand opposition is open to any person for three months from the date acceptance is published in the IPONZ Journal. The extension rules are narrow. IPONZ says the period can be extended by one month without the applicant’s consent, or by two months with consent, and the request must be made within the original three months.
That matters in a scenario with a stated publication date. If acceptance was published on 25 September 2026, the period runs to 25 December 2026. Say that, then note that 25 December is a public holiday and advise filing earlier rather than relying on how the day is counted. Markers like a student who spots a practical problem.
Australia works on the same three-month idea but starts from advertisement of acceptance. The Australian application in the scenario has had only a first examination report, so it has not been accepted and no opposition clock is running. Write that sentence. Many students apply a deadline to an application that has not reached the stage yet.
Grounds belong in a short paragraph, not an essay. In New Zealand the grounds include that the invention is not a patentable invention under section 14, which is where novelty and inventive step sit, along with entitlement, specification defects, fraud and secret use. In Australia the grounds include lack of novelty or inventive step and lack of support. Name them and move on.
Need a model of how another LAWCOMM letter handles structure? The case study help page covers scenario-based legal writing.
Re-examination and revocation without the confusion
New Zealand re-examination is the route students forget. Any person can request it, IPONZ must act, and the process is ex parte, so the requester drops out after filing. That makes it cheaper, but you lose control over what the applicant amends.
Australian re-examination depends on timing. Before grant only the Commissioner can start it, so do not promise your client they can force it. After grant, any person can request it. If you cannot confirm a point of procedure, say so in the letter and flag it as something to check. That is better than a confident error.
Revocation only matters once a patent is granted. Include it as the fallback, not as the main recommendation, in a scenario where both applications are still pending or only just accepted.
How to structure a patent practice letter of advice
You are writing to a commercial in-house lawyer, so the letter should read like advice, not like a judgment. A structure that works well:
- Recommendation first, in a short summary paragraph.
- Options in each jurisdiction, as a table with deadline, forum, pros and cons.
- A coordinated strategy that explains the order of steps and why.
- Implications for the client’s own applications.
- Further information you need, and how each answer would change the advice.
The fourth part is the one most students under-write. EvoLift’s earlier priority date can make its later-published specifications part of the prior art against your client’s own claims for novelty. In New Zealand that is section 8(2). In Australia it is the whole of contents rule. Spend real words on it.
The grace period is the other trap. New Zealand has had a general grace period for the applicant’s own disclosures since 30 December 2018, so do not write that New Zealand has none. Both countries give twelve months, counted back from the filing date, and a provisional application does not start the clock in Australia. In a scenario where a client disclosed an idea to investors long before filing, work out the gap in months and state your assumption.
Mistakes that cost marks
- Arguing the technical merits in detail. The brief asks for brief grounds, not a full invalidity case.
- Using the wrong deadline trigger, such as counting from grant, from the examination report or from the priority date.
- Ignoring the client’s own applications, even though the brief asks what the competitor’s filings mean for them.
- Citing a section number from memory. A wrong number reads worse than describing the mechanism correctly.
- Skipping the word limit. Footnotes count towards 2,000 words, with a small leeway.
- Giving dollar figures when costs are meant to be qualitative.
Mark-maximising checklist
- State your assumptions about dates and entitlement in one short paragraph.
- Give the deadline and the trigger for every route you recommend.
- Name the grounds briefly, and tie each to the prior art in the scenario.
- Compare pros and cons in a table so a non-specialist can scan it.
- Give a clear recommendation, and say what would change it.
- Flag unsettled law and ambiguous facts instead of smoothing them over.
- List the further information needed, with the reason for each item.
- Check every statutory reference against the official legislation site before submitting.
What students tell us is hardest
The same four complaints come up. The brief carries a lot of dates, so the timeline is easy to muddle. Two countries mean two rule sets that look similar and are not. The word limit leaves little room for caveats. And the General Counsel is not a patent specialist, so every term of art needs a plain-English gloss.
A practical fix is to build a one-page date table before you draft: priority dates, filing dates, publication dates, disclosure dates and the deadline each one drives. Draft from the table and the letter nearly writes itself. If your drafting is in good shape and you only need a final check, the proofreading assignment help service can review the finished letter. Looking for other IP topics? See how the same two-country approach works for designs in our blog on AI-generated designs in NZ and Australia, or browse the full samples library.
Frequently asked questions
Can anyone oppose a patent in New Zealand?
Yes. IPONZ states that any person may file an opposition against an accepted application, within three months of the publication date.
Can the opposition period be extended?
Briefly. IPONZ guidance says it can be extended by one month without the applicant’s consent or by two months with consent, and the request has to be filed within the original period.
What is a section 27 notice in Australia?
It is a notice of matters affecting validity, lodged with IP Australia before or shortly after acceptance. It is limited to novelty and inventive step, and the notifier takes no further part once it is lodged.
Does New Zealand have a grace period for my own disclosures?
Yes, for disclosures made on or after 30 December 2018. It is a one-year period under section 9(1)(f), measured back from the patent date, and IPONZ treats the complete specification filing date as the starting point during examination.
Can a competitor’s earlier application affect my client’s patent?
It can. An earlier-priority specification published later can count against your client’s claims for novelty. In New Zealand this is section 8(2), and in Australia it is called the whole of contents rule.
Do I need exact section numbers in a letter of advice?
Use them where you are sure, and check them on the legislation sites. Where you are not sure, describe the mechanism precisely and say what you would confirm. Submitting a model answer as your own work is a different matter: our samples are for reference, and you remain responsible for following your university’s rules.
When your draft is ready, send it for a structure and citation check through our Auckland assignment help team before the 2 November deadline.
About the expert
According to his profile, George Stewart is an academic researcher and article writer who has published research articles in international journals and written proposals, research projects and law content, with topics that include trade law, international law, constitutional law, consumer protection and labour law.
References
- Intellectual Property Office of New Zealand, Opposition to grant of a patent (2013 Act).
- Intellectual Property Office of New Zealand, Examination process.
- Intellectual Property Office of New Zealand, Section 9: Disclosure to be disregarded in certain circumstances.
- IP First Response, Challenge a new or amended patent.
- IP First Response, Third-party notices.
- Patents Act 1990 (Cth), Federal Register of Legislation.
