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The New Zealand Patents Act 2013, while broadly in line with other developed regimes, has some important differences, particularly around practice and procedure for divisional patent applications, that can undo the unwary.
Two recent decisions from the Intellectual Property Office of New Zealand (IPONZ) illustrate the problems that can befall foreign applicants and patent attorneys, even Australian patent attorneys who are registered to practice in New Zealand. We will take you through them below.
In the meantime, we offer you some stunning scenery before which to consider the wisdom of appointing New Zealand counsel familiar with the regulatory terrain; would you climb Mt Everest without a Sherpa?
Divisional applications – Australia/NZ comparison
The key points of difference are around timing.
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Time Limit |
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Australia |
New Zealand |
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Requesting examination |
5 years from the deemed filing date2 |
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Filing a divisional application |
3 months after acceptance of the parent application3 |
Before acceptance of the parent application4 |
One effect of these differences is that, while in Australia a chain of divisional applications may be filed in sequence to maintain pendency of the patent family for an extended period of time, in New Zealand they must all be filed before the earlier of acceptance (or abandonment) of the parent application or five years from the filing date of the parent application.
Examples of what can go wrong
NXT Building System Pty Ltd [2023] NZIPOPAT 15
The prosecuting Australian attorney in NXT Building System6 requested examination within the five-year time limit and responded to a number of examination reports. But they neglected to request postponement of acceptance, and the patent application was accepted before divisional applications could be filed.
On becoming aware of the mistake, the prosecuting attorney:
- requested a correction of error, being their failure to request postponement of acceptance; and
- belatedly filed five divisional applications together with requests for extensions of time for requesting examination.
Assistant Commissioner Luiten found:7
…[the] Australasian patent attorney practice responsible for prosecuting patent applications in New Zealand… [was] using patent management software without New Zealand specific reminders… [and the] experienced Australasian patent attorney… [was] unaware of the r71 5-year deadline for requesting examination on ante-dated divisional applications.
The Assistant Commissioner declined to allow the correction of error, reasoning that to do so would be contrary to the reg 83(2) requirement that postponement of acceptance must be requested before the complete specification is accepted.8 That decision effectively voided all five divisional applications, rendering the requested extensions for examination of those applications moot.
A harsh outcome for the innocent applicant – especially as the Assistant Commissioner noted that, if the correction had been allowed, it was likely the extension would have been granted due to “exceptional circumstances.”9
Avalyn Pharma Inc [2024] NZIPOPAT 4
Initially, the instructing US attorney in Avalyn Pharma10 was correctly advised of the time limits for requesting examination, filing divisional applications, and responding to examination reports.
But a misunderstanding became apparent when a divisional application was instructed after that time limit had already expired.
And as the time limit for responding to the first examination report approached, the prosecuting Australian attorney advised that, unless they had instructions regarding a substantive response, they would “file a divisional application… to maintain options for the Applicant.” This is a common strategy in Australia but by then was no longer possible in New Zealand.
That advice was corrected two weeks later, but the instructing US attorney’s docketing records were not updated with the result that a response to the first examination report was not filed, so the patent application was deemed abandoned.
Extension and restoration applications to IPONZ were rejected. The Applicant requested a hearing, engaged a New Zealand King’s Counsel, and submitted seven declarations in support of their application for restoration.
Restoration of the patent application was ultimately allowed by Assistant Commissioner Coles on the basis that the failure to respond was unintentional and arose from unique circumstances involving “a series of compounding errors”. But this result presumably came at considerable expense to the client, the US attorney, the Australian attorney, and/or their professional indemnity insurers.
Chapman Tripp comment
These decisions and others like them demonstrate the importance of understanding the detail of the New Zealand regime. Overlooking these requirements can be fatal to divisional filing strategies. And this can be particularly problematic if unity of invention objections are raised when it is no longer possible to file a divisional application.
There are, of course, ways of preserving a divisional filing strategy, including:
- Requesting postponement of acceptance,11
- Deferring submission of the notice of entitlement,12
- Filing an early request for examination, and/or
- Proactively considering the need for divisional applications in advance of the time limits.
But such options require the patent attorney to be familiar with New Zealand patent practice and procedure – and the surest way to access that familiarity is by hiring local expertise – just as taking the precaution of hiring a Sherpa will significantly improve your chances of a successful summit of Everest.
1. Unless directed to do so earlier: s 44, reg 3.1.
2. Unless directed to do so earlier: s 64, reg 71.
3. s 79B, reg 6A.1.
4. s 34(2).
5. Equivalent to allowance under US practice.
6. NXT Building System Pty Ltd [2023] NZIPOPAT 15 (6 October 2023).
7. At [53].
8. At [33].
9. At [54].
10. Avalyn Pharma Inc [2024] NZIPOPAT 4 (14 February 2024).
11. s 75.
12. s 73.
