The New Zealand Patents Act 2013 (the New Act) replaced the New Zealand Patents Act 1954 (the Old Act) on 13 September 2014. However, a number of transitional provisions are and will be in place for some time to come.
This article looks at a couple of these transitional provisions in respect of divisional applications of PCT national phase applications and maintenance/renewal fees.
PCT Transitional Provisions and antedating of divisional applications
There are various transitional provisions with regards to Treaty applications (PCT National Phase entry applications) and associated divisional applications.
According to S.258 of the New Act, any fresh application (e.g. a divisional application), filed on or after 13 September 2014 will be processed under the Old Act if i) its parent is being or was processed under the Old Act, i.e. if its parent includes subject matter from an application being processed under the Old Act, and ii) it is “given a date” before 13 September 2014 (i.e. the divisional application is antedated).
Divisional applications filed from national phase applications are antedated to the filing date of the PCT application from which national phase entry was effected. This means that there will be many divisional applications that obtain an antedated filing date from before 13 September 2014. However, this does not mean that a divisional application of a New Act Treaty application will be processed under the Old Act. Although item ii) above is satisfied, the parent of the divisional application is being processed under the Old Act and so the divisional application must also be processed under the Old Act according to item i) above.
Divisional applications and renewals
As a divisional application may be antedated to the oldest application in a family of divisional applications, there will be divisional applications being processed under the Old Act for some time to come. Therefore, it is important to understand how renewals will apply to these particular applications.
Maintenance fees (i.e. fees due on applications from the 4th year anniversary) will not apply to divisional applications being processed under the Old Act. However renewal fees will apply to Old Act divisional applications from grant.
Back payment of all renewal fees due prior to grant will be based on the Patents Regulations 1954. The next renewal due date following grant will be based on the Patents Regulations 19541. However, the amount of the next fee due after grant will be based on the Patents Regulations 20142 in force at the time payment is due.
The following provides two different scenarios to explain how this transitional provision operates.
After 13 September 2014, a divisional application is granted 11 years after its (antedated) filing date. Renewal fees that fall due on grant are for the 4th and 7th year anniversaries under the Patents Regulations 1954. The next renewal due date is calculated based on the Patents Regulations 1954 not the Patents Regulations 2014. The amount however is calculated based on the fees in the Patents Regulations 2014 in force at the time the fee is due.
That is, the next renewal fee is due at the 13th year anniversary of the (antedated) filing date, not the 12th year anniversary. However, this fee would be the new fee of NZ$200.
After payment of this renewal fee, subsequent renewal fees fall under the New Act and so the next renewal due is on the 14th year anniversary and the amount is according to the 2014 Regulations.
After 13 September 2014, a divisional application is granted 14 years after its (antedated) filing date. Renewal fees that fall due on grant are for the 4th, 7th and 13th year anniversaries under the Patents Regulations 1954. As there is no further renewal due date based on the Old Act and the Patents Regulations1954, no further renewal fees are due.
As with most new legislation, it is the transitional provisions that can potentially cause problems. Various other transitional provisions are provided in the New Act and 2014 Patents Regulations.
Please contact us if you have any questions.
1Section 254(2)(c) of the NZ Patents Act 2013 2Regulation 5 and Schedule Fees and penalties of the NZ Patents Regulations 2014