New Zealand divisional filing deadline


It has been just over three years since the new New Zealand patent law, in the form of the Patents Act 2013 and Patents Regulations 2014, came fully into force.

The new patent law applies to all patent applications filed, and national phases commenced, in New Zealand on or after 13 September 2014.

One of the significant changes brought about by the new law, was that patent applications would no longer be automatically examined. Instead it is now necessary to request examination, which can be done voluntarily, or in response to a direction from the Commissioner of Patents. The deadline for filing a request for examination is 5 years from the filing date of the application. Importantly, for national phase applications, the filing date is not the date national phase is commenced, but the filing date of the International (PCT) application.

The deadline for requesting examination has a flow-on effect for any divisional applications stemming from the original application. Specifically, the deadline for requesting examination of any divisional application is five years from the filing date of the original application. This deadline must be considered together with the statutory deadline for filing a divisional, which provides that a divisional application can be filed at any time before acceptance of the parent application.

In other words, whilst a divisional application can be filed before acceptance of the parent application, if the divisional application is filed more than five years after the filing date of the parent, then it will not be possible to request examination of the divisional application, and so the divisional will automatically lapse as a result of failure to request examination.

The five year deadline for requesting examination will start to be relevant for applications which commenced the national phase shortly after the Patents Act 2013 came fully into force. These applications will have divisional filing deadlines falling in February 2018. It would therefore be prudent to check any pending applications in New Zealand that are being examined under the Patents Act 2013 to confirm the divisional filing deadline.

The Intellectual Property Office of New Zealand (IPONZ) is relatively fast (compared to other patent offices) at issuing examination reports and considering responses to reports. Consequently, the issue of the deadline for requesting examination of divisional applications might not arise for the first divisional filed from an application. Where it might become a concern is for second or third divisional applications, that is, ‘daisy-chain’ divisionals.

Finally, another cautionary note regarding New Zealand divisional practice. Due to unintended consequences of the wording of the new Act and Regulations, the claims of a divisional application must not cover ‘substantially the same matter’ as the claims of the parent, at the time of filing the divisional. Therefore, careful consideration needs to be given to claims for a divisional application to ensure they do not fall foul of the strict interpretation in New Zealand of double patenting.

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