A proposal to retrospectively change New Zealand’s patent regime is unfair and will disadvantage affected businesses, an intellectual property expert says.

The changes being considered relate to ‘divisional’ patent applications, which are used to protect additional inventions described in a previous application and retain the original (parent) application’s filing date.

Following the passing of the Patents Act 2013, the Patent Regulations 2014 introduced a time limit for these applications, which the Intellectual Property Office of New Zealand (IPONZ) says requires them to be filed within five years of the original/parent application’s filing date.

However, James & Wells Partner Jonathan Lucas says IPONZ is considering implementing a five-year time limit to applications filed under the previous law, the Patents Act 1953.

“Retrospectively bringing in regulations for old patent applications would be unfair for all businesses that made patent applications under the previous law,” he says.

“If you filed your patent application under the old regime you would expect that to apply. Some businesses would have filed applications before the new law kicked in on the basis that this time limit would not apply. To change it now would leave them at a disadvantage.”

Lucas says the retrospective proposal is a concern but only part of the wider debate about imposing time limits on divisional applications and the time limit set by the new legislation is also controversial. The legal basis for the time limit has been questioned by New Zealand patent attorneys and many consider that it does not prevent divisional applications being filed after the deadline.

“If businesses find that the divisional deadline becomes a roadblock they should strongly consider challenging the basis on which IPONZ says it will apply the time limit.”

Divisional patent applications are a common feature of patent regimes around the world and they are a useful tool for businesses to protect their inventions as they are developed, he says.

“They are important to businesses because they give more options to protect inventions. It is not always possible to determine what aspects of a development are patentable early on in the product development process. Divisionals are an important mechanism if it turns out that there are multiple patentable aspects involved, which can often only be determined once the patent office examines an application.

“Having a strict deadline for filing divisional applications limits a business’ options to protect all its intellectual property. In many cases businesses will need to take a precautionary approach by filing applications they don’t actually need, costing them money.”

Lucas notes Australia and the European patent system have both tried imposing time limits on divisional patent applications and in both jurisdictions the changes have been reversed.

“These systems were brought in to reduce the number of divisional applications filed, but they had the opposite effect, with people filing a flood of applications while they still had the opportunity. It is hard to see why New Zealand would experience a different outcome.”

Lucas says that any business concerned about what impact these changes have on their ability to protect their innovations should discuss what action can be taken with its IP advisor.