Have your say: NZ Govt seeks feedback on possible changes to divisional patent application practice

Tuesday 20th September 2016

The New Zealand Government is seeking feedback on proposed amendments to how divisional patent applications that are still proceeding under the old 1953 Patents Act are dealt with. The consultation document and details about making a submission can be found here. The deadline for submissions is Friday, 14 October 2016.

The new Patents Act 2013 came into force in New Zealand about 2 years ago. However, patents with a filing date before 13 September 2014 are still examined under the criteria of the old 1953 Patents Act. The transitional provisions of the Patent Act 2013 stipulate divisional applications from these older patent applications will also continue to be examined under the 1953 Patents Act.

Under the 1953 Patents Act a divisional can be filed at any time while the parent application is still pending i.e. prior to the parent being accepted or going void. This means there is the potential to have a series of divisional applications that could keep a patent application pending for up to 20 years.

This appears to be causing a problem for the New Zealand Intellectual Property Office (IPONZ), who could be required to examine patent applications under two different criteria (the 1953 Patents Act or the 2013 Patents Act) for quite some time to come. The consultation document also notes these old Act patent applications are causing problems and uncertainty. Patent applications proceeding under the 1953 Patent Act are not examined for obviousness of the invention, although a patent must be directed to a non-obviousness invention to be valid. Some consider this is being exploited to obtain acceptance of patent applications of dubious validity.

The consultation document identifies three potential options for dealing with divisional applications proceeding under the 1953 Patents Act:

  1. No change to the current procedure;
  2. Change the law so that after a specified date it will not be possible to file any further divisional applications from a patent application that is proceeding under the 1953 Act.
  3. Change the law so that after a specified date a divisional application from a patent application proceeding under the 1953 Act will be examined under the 2013 Patents Act criteria.

The consultation document promotes option 3 as the government’s preferred choice. 

On the other side of the argument, the specifications for these older patent applications may have been specifically prepared some time ago to meet the requirements of the 1953 Patents Act. This is more likely to be the case for patent applications belonging to New Zealand companies prepared in New Zealand. Further information cannot be added to a patent specification after the filing date (without losing that filing date), so these patent applications cannot now be supplemented to meet the stricter requirements of the 2013 Patents Act. If a divisional application that was prepared for the 1953 Patents Act is examined under the 2013 Patents Act it could mean the applicant may not be granted a patent or be granted a patent with narrower claims than they were originally entitled to.

If you have any questions about divisionals or the differences between the New Zealand 1953 Patents Act and the 2013 Patents Act please contact a Baldwins representative.

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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