Possible changes to the law relating to divisional patent applications in New Zealand

The New Zealand Ministry of Business, Innovation and Employment (MBIE) is considering changes to the current provisions of the 2013 New Zealand Patents Act pertaining to divisional patent applications filed after 13 September 2014 (the date at which the 2013 act came into force).

Current provisions state that, provided that the parent application was filed prior to the 2013 act coming into force, a subsequent divisional application filed after the 2013 Act came into force will be treated as a patent application made under the 1953 Act. This provision extends to “daisy chained” (e.g. 3rd/4th generation) divisional patent applications which arise from a parent application filed under the old act.

The MBIE has identified a number of issues as a result of the current provisions [1], these include:

Much higher criteria for acceptance being required under the 2013 Act compared to the 1953 Act, due to patents filed under the previous act not being examined for an inventive step.

Flow on effects including patent applications being accepted for products already marketed.

Third parties being required to unnecessarily oppose patent applications, pay licencing fees or cease production of a product when they should be free to operate within this space.

A Lack of an inventive step is still grounds for opposition of a patent application examined under the 1953 Act and this may lead to an unnecessary burden on IPONZ.

Several options for dealing with this have been proposed by MBIE, including [1]:

Not making any changes to the current provisions.

Amending the transitional provisions such that after a specified date it would not be possible to make divisional applications arising from a parent application which is regarded as a 1953 Act application.

After a specified date, divisional patent applications arising from an application which is treated as a 1953 Act application will be examined under the criteria set out in the 2013 Act.

Option three has been identified as the preferred option by the MBIE, with the “specified date” providing sufficient time to decide whether to file divisional applications under current provisions, but not to be so far into the future as to unnecessarily prolong the uncertainties of the current provisions.

However, if a deadline were to be introduced, the number of patent applications in New Zealand would be likely to balloon out significantly, as was the case in Australia when changes were made in 2013 to the Patents Act (Raising the Bar Act 2012). We believe that by allowing the 20 year transition to remain, this effect would be less pronounced as older patents continue to expire gradually over time and in turn this would be more likely to maintain a smooth patent examination process.

Retaining the current transitional provisions (option 1 outlined by the MBIE report) ensures current patent holders’ rights are maintained and we believe this is fair to all parties.  On the other hand, option 2, and to a lesser extent option 3, remove rights that would have otherwise been available to current patent holders, as they could no longer file divisional patent applications based on conditions outlined at the time the parent application was filed.

It is intended that any changes will be progressed as soon as a suitable legislative vehicle becomes available, although MBIE identifies that this is likely to be some time away.  MBIE is currently reviewing written submissions addressing these issues.

If you have any specific enquiries about this decision, please contact Debra Tulloch or Paul Jones.

This article was written by Dr Benjamin Cleary


Divisional Patent Applications (2016), Ministry of Business, Innovation & Employment