New Zealand’s Poisonous Divisionals: Will New Zealand harmonise with its trading partners?

Friday 13th October 2017

The issue of self collision (or “poisonous” divisionals) is well known and has been the subject of much debate internationally. The matter is particularly acute in New Zealand as a New Zealand patent claim can only have one priority date.  However, a recent indication suggests New Zealand’s position could soon change.

Self-collision between a New Zealand patent application and a divisional remains an issue that has the potential to penalise New Zealand patent applicants based on their own disclosures through the patent system itself.  The matter is particularly acute in New Zealand as a New Zealand patent claim can only have one priority date.  If a claim is entitled to two priority dates, that claim must take the later of the two possible dates.  When this is coupled with a ‘whole of contents’ novelty approach to patent applications having overlapping priority claims, the potential for self collision is clear.  

The EPO Enlarged Board of Appeal (case G1/15) decision on this issue is unlikely to assist in New Zealand as Europe allows patent claims to have multiple priorities.  The decision may be more persuasive in Australia where patent claims having multiple priorities are also permissible.  

The problem in New Zealand could be the result of legislative intent even though it results in a lack of harmonisation with its trading partners.  An anti-self collision clause was actually included in the draft legislation leading to the New Zealand Patents Act 2013, but was removed before that Act came into effect.  The reason provided was simply that few countries have anti-self collision provisions and internationally there is little support for them.

There has recently been an indication however that New Zealand’s position could change.  This arises from an EPO document entitled “Cornerstones for Harmonisation: a B+ Sub-Group / Industry Symposium Munich, Tuesday, 20th June 2017 – Summary of Position of Australian/NZ Users”.  This summarises Australia and New Zealand’s position, as at June 2017, on harmonisation of Grace Periods, Prior User Rights and Conflicting Applications.

In the section directed to Conflicting Applications (see page 6) Australia and New Zealand say their position on protection against self-collision is:

  • “None beyond recognition of partial or multiple priorities”.

The reason for this is said to be:

  • “In a whole of contents novelty system where applicants are treated equally and where multiple and partial priorities are fully recognised there is no need for protection against self collision”.

If the New Zealand position is indeed as stated we can look forward to the New Zealand Patents Act 2013 being amended to allow multiple and partial priorities.  If not, the Australian and New Zealand positions are not harmonised as stated, and New Zealand will be taking a more anti-patent applicant stance than its trading partners.

We will keep you informed of any progress.

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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