New Zealand divisional filing practice warning

New Act Divisional Application Issues

In summary, we bring to your attention three new Act divisional application issues as follows:

• an absolute bar exists for filing a divisional application later than 5 years from the complete filing date (i.e. international PCT filing date for national phase applications) of the originating parent by preventing availability to request any examination of the divisional application
• divisional applications need to be filed within the initial response period set after issuance of an examination report, and without reliance on any extension of time, otherwise a “substantive response” must be filed on the parent in order to validly file the divisional, and
• divisional applications may result in self-collision (poisonous priority) with its parent application where claims of the parent and/or divisional contain added subject matter not present in the original priority/provisional filing, and therefore any added subject matter should be quarantined in separate claims for both parent and divisional applications.

We will provide reminders to our clients of relevant new Act deadlines and seek your instructions at the appropriate time. Please also note that divisional filing practice for old Act applications remains unchanged, and for both new Act and old Act applications, a divisional must be filed in New Zealand before acceptance.

Old Act Practice (1953 Act)

Old Act applications cover any applications that were directly filed or entered the national phase in New Zealand prior to 13 September 2014 (including any divisional applications thereof filed after 13 September 2014). Issuance of a first examination report sets a response deadline for an old Act application of 15 months plus 3-month extension (retrospectively applied).

An application may proceed automatically to acceptance when filing a response and therefore divisional applications should be filed at the same time as filing a response on a parent application. However, where a divisional application is filed in the 3-month extension period, there is no requirement to file any substantive response on the parent application, which now contrasts with new Act practices.

New Act Practice (2013 Act)

New Act applications cover any applications that were directly filed or entered the national phase in New Zealand after 13 September 2014. Issuance of a first examination report now sets a 12-month final acceptance deadline in which a shorter 6-month response deadline is provided within the 12-month acceptance deadline. The 6-month response deadline can be retrospectively extended by up to 1-month.

A divisional application can be filed without a “substantive response” during the 6 month response period. However, if a divisional application is filed in the 1-month extension period then a “substantive response” must also be filed on the parent. The “substantive response” requires all objections raised by the Examiner to be addressed either by amendment and/or by fair and substantial submissions/argument.

Any divisional application also needs to be filed at the time of filing any response since it is standard practice to withdraw the postponement of acceptance at the time of filing the response. Should objections be maintained and a 2nd examination report issue, a new response deadline is provided (usually 3 months). The same divisional filing protocols apply for any subsequent examination report and response deadline, noting that any further extension period ends after 1 month or at the 12 month acceptance deadline, whichever is earlier.

We also remind you that divisional claims in New Zealand should not cover “substantially the same” subject matter as the claims in the parent application, and IPONZ generally requires no overlap in scope between the claims of the divisional and parent application. This “double patenting” issue in overlap in scope between the claims of the divisional and parent applies for both the old Act and new Act, and can be addressed during the examination stage.

Poisonous Priority

It is also important to be aware that divisional applications may result in self-collision (poisonous priority) with its parent application where the claims of the parent and/or divisional contain added subject matter not present in the original priority/provisional filing. Separate claims should be provided in the parent and divisional applications to quarantine any added subject matter from original priority entitled subject matter.

The self-collision (poisonous priority) issues arise because ‘whole of contents’ novelty operates in combination with added subject matter to disentitle a claim to its earliest priority date and in New Zealand each claim can have a single priority date only. If you are aware of any added subject matter claimed at the time of filing a parent or divisional application, then this should be brought to our attention for consideration in appropriately amending to quarantine claims to address any self-collision issues that may be activated when filing a divisional application.