New Zealand’s new Patents Act 2013 (“the new Act”), which replaced the Patents Act 1953 (“the old Act”), commenced on 13 September 2014.
The new Act and Patents Regulations 2014 (“the new Regulations”) restrict the period during which a divisional application can be filed to 5 years from the effective filing date of the parent application. It does this by setting the deadline by which examination of a divisional application must be requested at 5 years from the antedated date of filing the divisional application. This is stated in Regulation 71 (a) of the new Regulations, which recites:
“71 Manner of making request for examination of patent application
A request under section 64(1) of the Act for an examination of a patent application and the complete specification relating to the application must be made as follows:
(a) for a divisional application, within 5 years of the date that the complete specification for the divisional application is filed or treated as having been filed, whichever is the earlier…”.
In contrast, under the old Act, a divisional application can be filed at any time while an application is pending and before it has been accepted for grant. That is, the above 5 year deadline does not apply to divisional applications that are antedated to a pre-13 September 2014 complete filing date.
In the case of applications for which national phase entry is effected on or after 13 September 2014, the 5 year deadline means that applicants are likely to have less than 2.5 years within which to file all associated divisional applications (and request examination), following the 31 month national phase entry deadline. Once the 5 year deadline has passed, it will no longer be possible to file a divisional application. As a result, the practice of filing a divisional application for continued prosecution (e.g., where acceptance was not achieved prior to the initial prosecution deadline), or to pursue additional inventions where a lack of unity is found, will no longer be possible after the expiry of the 5 year deadline.
This will significantly reduce patent applicants’ flexibility during the examination process, and will more than likely impact on their ability to obtain commercially relevant patent protection, particularly in the pharmaceutical and biotechnology areas.