Divisional dilemmas – tricks and traps for New Zealand practice

Friday 4th August 2017
Article written by: Dr Fiona Pringle

The Patents Act 2013 introduced significant changes in practice around divisional patent applications in New Zealand. This article summarises the main changes and particularly some of the new requirements that may cause issues for unwary applicants. Continue reading to find out more about the important changes to divisional practice including some helpful take home tips.    

In the almost three years since the Patents Act 2013 came into force in New Zealand over 10,000 national phase entries and over 4,500 complete patent applications have been filed.While generally the transition has been smooth and the update to New Zealand’s patent law a welcome one, there are things to be aware of to ensure that rights in an invention are not inadvertently lost.

One significant change in practice is around divisional applications.  The basic requirement is that any divisional application must be filed before acceptance of its direct parent.  This is the same as under the previous Act.  However, the 2013 Act introduced some other requirements which may cause issues for the unwary.

Examination request deadline for divisionals

Under the 2013 Act, examination must be requested within five years of the filing date of the complete application (this is the international filing date for a national phase entry) or within two months of being directed to do so.  Although the 2013 Act allows for a divisional application to be filed any time before acceptance of a direct parent that is not void or abandoned, there is a catch.  For any divisional application (including grandchild applications) the deadline to request examination is five years from the antedated filing date.  So, while it is possible to file a divisional application from any patent application that has not yet proceeded to acceptance, it will not be possible to request examination of that application if the divisional’s antedated filing date is more than five years earlier.  

This situation applies even in circumstances that may seem unfair to an applicant.  For example, a new unity issue could be raised during prosecution of a divisional application (perhaps because new art is discovered).  If it is more than five years from the antedated date of the divisional, a further divisional could be filed but a request for examination would be out of time.

Take home tip: An applicant can request examination at any time without waiting for the direction to issue.  If you are aware that a divisional application may be required:  request examination of the parent application early to allow plenty of time for filing and requesting examination of any divisional application(s).

It’s all about the timing

Under the previous Act, examination reports set an acceptance deadline of 15 months which was extendible by three months upon request.  This extension of time could be requested retrospectively and a divisional application could be filed in the extension period without taking substantive action on the parent. 

In contrast, examination reports under the 2013 Act set both a deadline by which a substantive response to the issues raised must be filed and a 12 month deadline for gaining acceptance of the application.  Generally, the response deadline can be extended by one month upon request.  The problem is that the Intellectual Property Office of New Zealand (IPONZ) considers that the one month extension of time is for filing a substantive response and requesting an extension of time is not considered a substantive response.  A consequence is that a divisional application cannot be validly filed in the one month extension period without also filing a substantive response.  Therefore, if a divisional application is to be filed solely to extend the time for responding to an examination report, this must be done before the one month extension period.  A divisional application may be filed at any other time before acceptance, including on the 12 month acceptance deadline.

Take home tip: If it is not going to be possible to file a substantive response to an examination report, consider whether a divisional application is required before the response deadline (and not during the one month extension period). 

Claim overlap with the parent application

The intention under the 2013 Act in respect to overlap in claims between a parent and its divisional is that the same approach should be taken as under the previous Act.  That is, any claim overlap may be addressed during prosecution of the divisional application.  This is the approach that IPONZ is taking.  If there is claim overlap between a parent and its divisional, the divisional’s first examination report will object to the overlap and set a shortened response deadline of two months (normally six months).  However, the regulation relating to claim overlap implies having no overlapping claims is a filing requirement.  IPONZ is taking a pragmatic approach and is following the intention rather than the letter of the regulation.  In addition, this issue will likely be addressed by way of an amendment to the regulation at some stage in the future.

Take home tip:  We believe that it is unlikely a divisional filing could be successfully challenged on the basis that there were overlapping claims with the parent at the time the divisional was filed, but a strict interpretation of the regulation leaves open this possibility.  If time permits, ensure that there are no overlapping claims at filing.

If you have any questions or concerns about divisional practice under the 2013 Act, please contact us.

This article is intended to summarise potentially complicated legal issues, and is not intended to be a substitute for individual legal advice. If you would like further information, please contact a Baldwins representative.

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