Changes to divisional patent deadlines coming. Eventually

The government has recommended a change to the deadline for filing a divisional patent application in New Zealand, abolishing the current 5 year deadline and replacing it with a requirement that any divisional applications be filed during the examination phase of the parent. However, implementation of the change is likely to be more than a year away.

Current situation

The current situation is that a divisional application can be filed at any time while a parent application is pending, i.e. before lapse or acceptance. However, examination can only be requested up to a date five years from the filing date of the parent. This has resulted in the farcical situation where divisional applications can be filed perfectly validly - but it is not possible to request examination of the application and thus achieve acceptance and grant.

More importantly, significant delays in the examination team at IPONZ have resulted in many cases not having a first examination report by the five year deadline. This means an applicant often has to decide if a divisional application is necessary without the benefit of New Zealand examination. We are aware that some applicants are filing and requesting examination of divisional applications prior to the five year deadline 'just in case' a divisional application becomes necessary during prosecution. This potentially unnecessary filing of "precautionary" divisional applications is a drain both on applicant and Intellectual Property Office resources.

The proposal

Cabinet has recommended the drafting of an Intellectual Property Laws Amendment Bill. A copy of the Cabinet recommendations is available here. Amongst other changes (discussed here) this Bill will recommend that the situation above be rectified.

It is proposed that the Patents Act 2013 will be amended so that a divisional application will only be able to be filed during the period commencing on the request for examination of the parent application and finishing on the date in which the parent application is either accepted or lapses. The "parent application" will be the first New Zealand application in the chain that is not itself a divisional. The divisional application will need to be accompanied by a request for examination, but importantly, the request for examination will not need to be filed during the five year deadline.

The proposal would still prevent "daisy chaining" divisional applications indefinitely (as was possible under the old Patents Act 1953). However, at least applicants can have, if they desire, the benefit of the full prosecution of the original parent before deciding if one or more divisional applications is required.

The road from here

The proposal is still at the very early stage of legislative reform. The Intellectual Property Laws Amendment Bill will now be sent for drafting, following which a disclosure draft will be released for comment, following which the Bill will have to go through parliamentary procedure. Thus any Act is unlikely to come into force in 2021.

The proposed transitional provisions require that the above requirement will only apply to applications filed in New Zealand, or entering national phase after the date of commencement of the Act. This means that for applications filed in the meantime applicants will still need to be aware of the current five year deadline.

We will keep you updated as to the progress of this piece of legislation.

David Nowak - November 2020

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