Divisional applications and the importance of postponing patent allowance in New Zealand

Why postpone allowance in New Zealand?

In New Zealand, a divisional patent application must be filed before acceptance of the parent application (and within five years of the complete filing date). To preserve flexibility, patent applicants typically request a postponement of acceptance for a period of twelve (12) months from the first examination report when requesting examination. This tick box exercise of an electronic form preserves, amongst other things, the right to file divisional applications.

Unlike in Australia, the postponement period automatically expires at the conclusion of the nominated period – meaning that an application that is otherwise in order for allowance will automatically be accepted once the postponement period expires. Therefore, once an application is deemed in order for allowance, it can remain pending up to the expiry of the postponement period whilst applicants decide whether divisional applications are required.

However, if the postponement period is reduced to zero (0), i.e. withdrawn – usually at the time of filing a response to an office action - without consideration of whether divisional applications are required, acceptance will occur almost immediately and without warning, meaning the opportunity to validly file a divisional application is then lost.

When things go wrong

But what happens if the postponement period was “mistakenly” withdrawn? Section 202 of New Zealand’s Patents Act 2013 allows for the correction of an error or omission by an applicant, including in relation to any document filed in connection with the patent application. Recent decisions have confirmed that this also extends to correcting the postponement of acceptance such that the date of acceptance of any parent application can also be deferred, meaning that later filed application(s) can be considered timely filed divisionals.

Primapak LLC and Magic Leap, Inc

In Primapak LLC [2019] NZIPOPAT 1 (Primapak) and Magic Leap, Inc. [2019] NZIPOPAT 8 (Magic Leap), the postponement period was mistakenly withdrawn before divisional applications were filed. Despite this being a deliberate action, it was considered an error given the applicant in each matter had provided express instructions to file a divisional application. Consequently, IPONZ held that the withdrawal of the postponement period was a genuine mistake contrary to instructions and thus allowed correction of the postponement period in order to correct the date of acceptance of the parent application so a later‑filed application could be treated as a validly filed divisional.

NXT Building System Pty Ltd

In NXT Building System Pty Limited v Commissioner of Patents [2024] NZHC 2141 (NXT), no postponement of acceptance had been requested at all for an application containing six inventions, despite a consistent intention by the applicant to divide them into six separate divisional applications. Ultimately, the parent application was accepted before any divisional applications were filed.

While the correction request was initially refused by IPONZ, the High Court in New Zealand confirmed on appeal that the power to correct the postponement of acceptance could also extend to situations where it was erroneously not put in place at all. However, the Court stressed that correction remains discretionary and should not undermine careful prosecution practices.

Regeneron Pharmaceuticals, Inc

In the most recent decision, Regeneron Pharmaceuticals, Inc. [2026] NZIPOPAT 1 (Regeneron), two errors were advanced in a request to correct the postponement period which was withdrawn during prosecution leading to allowance before a divisional application could validly be filed.

The first alleged error was that the postponement of acceptance was mistakenly withdrawn during prosecution through prefilled boilerplate text generated in the response, despite prior communication from the applicant to be reminded regarding divisional application deadlines – which arguably inferred a desire to file such an application. However, a draft version of this response was approved by the applicant, which was subsequently filed along with withdrawal of the postponement period.

The Delegate held that this initial withdrawal of the postponement period was not a correctable error, noting there was at least implicit approval of the applicant, and unlike Primapak and Magic Leap – where explicit divisional instructions had been provided - the request to be reminded of divisional deadlines did not indicate an intention by the applicant to file a divisional application.

However, correction was allowed in relation to the second later alleged error. Instead of allowance, a further office action issued raising new objections. The applicant instructed the filing of a response and a divisional application. However, when the subsequent response was filed, no divisional application was filed nor was the postponement period reinstated to preserve the ability to do so. Consequently, the parent application was promptly accepted thus preventing the valid filing of a divisional application.

After applying the principles outlined in NXT, the Delegate accepted that the request to reinstate the postponement period constituted a correctable error, as once the instruction to file a divisional had been received, failing either to file it or to preserve pendency was inconsistent with the applicant’s intention and therefore amounted to an error correctable under section 202 , and consequently corrected the acceptance date accordingly to allow a later filed application to be afforded divisional status.

Although not influencing their decision, the Delegate did offer some brief commentary as to the potential vulnerability of divisional status that depends on retrospective correction of acceptance in this manner and raised the prospect that such patents could be challenged in future proceedings on the basis that acceptance was never lawfully deferred.

Take home points

These decisions reinforce that postponement of acceptance in New Zealand should be treated as a key strategic control and not a routine administrative step when managing New Zealand patent portfolios.

In particular, applicants should ensure the postponement period is maintained during prosecution and not removed until there is a clear decision regarding whether divisional applications are also required. If a divisional application is desired, it is then essential that it is filed early or the postponement period is at least kept in place to preserve the ability to later file one before acceptance.

Finally, applicants are reminded that any divisional application must not only be filed before acceptance of the parent application but must also have examination requested within 5-years of the complete filing date (e.g. within 5 years of the International PCT filing date). Examination requests may be made after this deadline based on “exceptional circumstances”, although this request is at the discretion of IPONZ and has essentially been restricted to where a lack of unity is raised after the 5-year deadline.

In view of current examination delays of up to about 2 years, this 5-year examination request deadline is usually the default deadline for filing (and requesting examination) on any voluntary divisionals. Monitoring this 5-year examination request deadline and assessing the need for any precautionary divisionals well ahead of acceptance on the parent application is therefore recommended.