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New Zealand divisional patent practice – restrictive now and likely to become more restrictive?

Date: 07 August 2019
Author: Paul Whenman, David Herman
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New Zealand’s government recently proposed sweeping changes to its divisional patent practice, a copy of which can be found here. If implemented the changes will see New Zealand divisional patent practice become one of the most restrictive, and certainly in marked contrast, to Australian divisional patent practice.

Why are divisional applications filed?

Applicants elect to file divisional applications, when there is a lack of unity objection, to preserve rights in case an opposition is filed against the parent application, and/or to maintain pendency during prosecution. This latter filing is the only option available in New Zealand to preserve pendency when acceptance (allowance) cannot be achieved in the time available.

The Australian position

Australian practice is simple and effective. If a divisional application is desired, it must be filed no later than three months from the date of advertisement of acceptance of the parent application which must also be in force.

There is no limit to the number of divisional applications that may be filed from a parent. In addition, it is permissible to file a divisional application based on an application that is itself divided from an even earlier application (ie. a “daisy chain”). Divisional applications may be filed right up to the end of the patent term.

Importantly, Australia allows claims in a divisional application to overlap with the claims of its parent application, providing there are no claims of identical scope between the parent and divisional applications.

The New Zealand position

New Zealand practice is currently complex and quite restrictive. This partially arises as there are two sets of patent laws, the Patents Act 1953 (old Act) and the Patents Act 2013 (new Act).

If an originating parent application was filed under the old Act, any divisional applications of that parent is governed under the old Act. This is desirable as old Act applications are subject to a substantially lower patentability standard compared to applications filed under the new Act. Like Australia, it is also possible to “daisy chain” old Act divisional applications right up until the patent term ends. All divisional applications must be filed prior to the acceptance of its parent.

By contrast, under the new Act, “daisy chaining” is somewhat restricted as any divisional application must be filed and have examination requested (REX) within five years from the filing date of the earliest filed parent.

Divisional applications filed under either Act cannot have claims granted with any substantial overlap with any accepted parent claims. A further restriction is you can no longer withdraw an accepted or granted parent with narrower claims to pursue a divisional with broader claims. As a result, these restrictions require a unique best practice prosecution strategy for New Zealand. Claims of broadest commercially relevant scope should be pursued early in the examination process, and if necessary through to an examination hearing. In addition, all commercially relevant embodiments should be pursued as dependent claims in the parent application. Alternatively, you need to ensure the various alternative commercially relevant embodiments can each be carved into separate divisional applications without introducing overlapping claims between the applications.

New Zealand - more divisional restrictions coming?

The New Zealand Government proposes to amend the Patents Act 2013 in two restrictive ways:

Firstly, all old Act divisional patent applications filed after a specific date will be subject to the higher patentability standard of the new Act.

Secondly, the five year statutory bar deadline would be tightened by the additional requirement that all divisional applications must be filed, examination requested and accepted within either the 12 month acceptance deadline of the parent application, or the five year statutory bar deadline from its first complete filing date (whichever is earliest). The obvious effect of this latter restriction is to practically prohibit prolongation of prosecution of subject matter - that is, no “daisy chaining”. Below is a graphical representation of how the Government’s proposed divisional application changes might look:

Public consultation regarding the proposed changes have now closed. It remains to be seen if New Zealand will adopt new legislation that is not only out of step with Australian law but indeed major jurisdictions including Europe, US, South Korea and Japan.

We are hopeful that the New Zealand government will not adopt this proposed, highly restrictive legislation. Nevertheless, we will continue to monitor progress and if adopted will be well prepared to meet the challenge of providing clients with best practice advice.

Tags:  divisional patent, divisional application, New Zealand patent practice, divisional patent practice, IPONZ, Australian patent practice

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