A New Zealand Government review concluded more than 16 months ago under which the facility to “daisy chain” divisionals from applications proceeding under the Patents Act 1953 was squarely under threat. Nothing of significance appears to have happened in the interim – at least publicly, and one assumes the Government (which, of course, changed following the general election of September 2017) is carefully considering the feedback it received from stakeholders. Notwithstanding, there remains a rather short-priced favourite outcome in which certain changes to New Zealand divisional practice are likely, if not inevitable.
“Old Act”, “new Act” and “daisy chaining”
New Zealand patent applications are presently binary. They are either what we term an “old Act” case (subject to the Patents Act 1953 throughout its lifecycle), or a “new Act” case (subject to the Patents Act 2013). The critical date here was 13 September 2014, which corresponds to the date of commencement of the new Act – an application for which a complete specification was filed in IPONZ prior to this date is an “old Act case”; and an application filed on or after this date is a “new Act case”.
The one exception to this rule arises with respect to divisional applications. A divisional filed from an old Act case proceeds as an old Act case, irrespective of whether it was filed before, on, or after the date of commencement. Availing of this facility is advantageous in two main respects: a) the patentability criteria prescribed under the old Act are perceptibly softer; and b) the “daisy-chaining” of old Act divisionals is not restricted, meaning that in theory, one can keep the subject matter of a patent application pending throughout its 20-year lifecycle.
Unsurprisingly, a divisional filed from a new Act case will itself proceed as a new Act case. The new Act prescribes not only higher patentability standards, but also limits the period that examination can be requested on a new Act divisional to five years from the filing date of the original “parent” application (you can still daisy-chain new Act divisionals beyond 5 years, you just can’t request examination of them – cue the term “zombie divisional”).
As such, from a patentee’s perspective, it is clearly advantageous for a divisional to proceed as an old Act case, if possible – lower patentability standards and the facility to daisy chain for 20 years make this statement fairly uncontroversial. Indeed, this was identified in our earlier article as one of the main incentives for bringing forward the filing of a New Zealand patent application to before the date of commencement (i.e., to capture an application as an old Act case).
Government review – completed October 2016
New Zealand’s Ministry of Business, Innovation and Employment (“MBIE”) published a paper entitled “Divisional patent applications: Possible changes to the transitional provisions in section 258 of the Patents Act 2013”. Public submissions from interested stakeholders closed Friday, 14 October 2016.
As stated in the paper, the purpose of the review was to:
..seek feedback on whether or not the transitional provisions in section 258 of the Patents Act 2013 (“the 2013 Act”) relating to divisional patent applications should be amended to limit when divisional applications can be filed or examined under the Patents Act 1953 (“the 1953 Act”), and if so, what those amendments should be.
In other words, there was a recognition on the Government’s part that the transitional provisions, as they stand, could give rise to certain unintended consequences. Specifically, it is plausible that we could still have the last of the old Act divisionals pending in the year 2033. The question, therefore, was whether the transitional provisions attached to the Patents Act 2013 were consistent with the policy intent underpinning such legislation.
Policy intent of the Patents Act 2013
Paraphrased heavily, the policy intent of the Patents Act 2013 could be summarised as, on the one hand, a recognition that the primary users (patentees) of the New Zealand patent system are foreigners – and on the other hand, that those principally encumbered by thickets of broad patents (as were achievable under the old Act) are locals (third parties). The new Act thereby sought to redress any imbalance – be it real or perceived – in favour of third parties.
Hand-in-hand with this broad policy objective came the realisation that the facility to daisy chain old Act divisionals indefinitely (of course, not beyond the 20 year patent term) created an undue burden on third parties. Whether a patent applicant intent on maintaining pendency (and thereby uncertainty on the part of competitors looking to enter the market) for a period of two decades was abusing, or merely making use of the system is immaterial – the point is that with this possibility came a perception on the part of the New Zealand Government that third parties were being commercially “paralysed” in the interim. In general, locals could not afford to do battle with foreign corporations during opposition or revocation proceedings – and the facility to daisy chain divisionals indefinitely meant that even if they could (and assuming that they won), the next generation divisional/s may effectively block them for the entire 20-year patent term.
Of course, the above is an extreme/unlikely scenario. However, it nonetheless exists as defining the practical limits to which the present transitional provisions could be worked in favour of the patentee – and this has been identified as potentially contrary to the spirit of the new legislation.
Proposals under the review
The review put forward three main proposals:
- Do nothing/maintain the status quo. This option would likely prevail in the event that public submissions failed to identify indefinite daisy chaining as being an issue.
- Establish a final date by which no further old Act divisionals may be filed. This option arguably goes too far in respect of removing certainty for patentees (taking away their right to file a divisional) and may be inconsistent with New Zealand’s international obligations (Paris Convention, Articles 4G(1) and 4G(2)).
- Establish a date after which any divisional filed from an old Act case will proceed under the new Act. This was MBIE’s preferred option having regard to the competing factors identified above.
Is indefinite daisy chaining actually an issue?
The review identified that as of mid-July 2016, there were still 3054 pending applications made under the old Act. Of these, more than half (1693) were divisionals. Further, 661 of the 1693 divisionals were “first generation” divisionals (divided from applications that are not themselves divisional applications); 691 of the 1693 were “second generation” divisionals (divided from applications that are first generation divisionals) and 341 were “third generation” divisionals, divided out of second generation divisionals.
The data thereby show that whilst the practice of daisy chaining is indeed being followed, there is a drop-off from second to third generation (and likely beyond). This is unsurprising – and suggests that in the extreme situation whereby old Act divisionals could conceivably still be pending in 2033, it is highly unlikely that there would be more than “a handful” of such applications. This, itself, is somewhat self-evident even in the absence of any data. However, the issue at hand for MBIE in conducting this review was whether the mere facility to have old Act divisionals still pending in 2033 was contrary to the policy underpinning the new Act. To this end, there were also significant implications for IPONZ:
The effect of this is that the Intellectual Property Office of New Zealand (“IPONZ”) must maintain the capacity to examine 1953 Act divisional applications potentially for up to twenty years after entry into force of the 2013 Act. This requirement would mean examiners would need to be trained to examine applications under both Acts until at least the early 2030s. This imposes additional costs and complexity for IPONZ which may mean that IPONZ fees may be higher than might otherwise be the case.
One could suspect, on the basis of the data presented, the longer-term implications for IPONZ and the over-arching policy incentive to promote the interests of third parties that a significant “issue” will have been raised via the public submission process (submissions have not been made public). In such circumstances, the status quo is unlikely to prevail and options 2 and 3 (of which the latter is the only reasonable option for the reasons provided above) may come to be considered in greater depth at Government level. That is, after a certain to-be-determined date, a divisional filed from an old Act case will proceed as a new Act case, subject to (amongst other restrictions) the five year limit on daisy chaining identified above.
A hypothetical example
Should “option 3” prevail, as expected, the following is an example of how the amendments may work in practice:
The sunset date is set at 1 January 2019 – that is, a divisional filed from an old Act case after this date will proceed as a new Act case. Hypothetical application NZ ‘777 is an old Act case having a filing date of 1 July 2015; it is still pending, which means a divisional may still be filed from it. If that divisional (NZ ‘888) is filed pre-1 January 2019, it will proceed as an old Act case. However, if it is filed post-1 January 2019, it will not only proceed as a new Act case, but its examination will need to be requested no later than 1 July 2020. Finally, for the sake of appearances, any further divisional filed from NZ ‘888 after 1 July 2020 would be a “zombie divisional” – a feature of the register, but neither dead nor alive because the deadline for requesting examination would have passed already.
The IP Omnibus Bill 2018
It is expected that a consultation document toward an “IP Omnibus” Bill will be released within the next few months. This will expectably cover issues such as the present review, other proposed amendments to the Act and Regulations, New Zealand’s participation (from an IP perspective) in the CPTPP, trade mark issues, designs issues and so forth. Coordinating each of these timelines so that all matters can be addressed within the single document may set its release back a little. Irrespective, we understand that this will be the medium through which the divisional issue is to be progressed.
We are presently less than 3½ years into the new Act – and as such, any major issues relating to daisy chaining (of the type identified above) are yet to be encountered in practice. That said, the Government review was predicated largely on preventing any such issues before such time as they manifested in day-to-day New Zealand practice. In that sense, there was a certain inevitability to this review, given that the daisy chaining facility had been identified as a possible unintended loophole almost immediately upon release of the final text of the new Act.
All things considered, we suspect that a lethal dose of glyphosate is soon to be poured on the facility to daisy chain old Act divisional applications indefinitely.
Spruson & Ferguson’s New Zealand practice
All of Spruson & Ferguson’s patent attorneys are registered to practise on both sides of the Tasman and would be pleased to assist with any queries relating to either Australian or New Zealand patent law.