Background

On 13 September 2014 the New Zealand patent laws changed significantly. A major impact of the 2013 Act is that Applicants for patent applications disclosing an invention which is a micro-organism, or involves the use, modification or cultivation of a micro-organism (and the invention could not be performed by a skilled person without a sample of the micro-organism which is not reasonably available in New Zealand), must file a deposit of the micro-organism at a prescribed depositary institution on or before the filing date of the complete specification (see section s43(1)(a)) and a receipt for the deposit at the Intellectual Property Office of New Zealand (IPONZ) within 3 months of making the deposit (see section s43(1)(b) and regulation 59). 

Failure to provide deposit receipt

The above deposit requirements act as a sufficiency and clarity requirement for a complete specification which should state all relevant information on the characteristics of the micro-organism and include the name of the prescribed depositary and accession number. Failure to comply will result in the application being considered void.

However where an applicant could not have been reasonably expected or required to provide the deposit receipt then an extension of time may be requested (see IPONZ practice note 01/2014 and regulation 147) with supporting evidence demonstrating ‘exceptional circumstances’ which lead to the failure to comply with regulation 59. In practice the extension of time request should be made when filing the complete specification or as soon as practically possible thereafter. 

Conclusions

For international applicants filing into New Zealand (for example a PCT national phase application) literal interpretation of the regulation 59 timeline would mean filing the deposit receipt in some cases years before the actual New Zealand filing was made. It is for these applicants that the extension of time was envisaged, for example, where the invention involves the use, modification or cultivation of a micro-organism and it was not clear at the PCT filing date that the micro-organism was not reasonably available to a skilled person in New Zealand.

It is likely that the regulation 59 timeline will be redrafted in the first round of legislative amendments to the 2013 Act likely in 2015. In the meantime IPONZ have indicated they will not take a literal interpretation of s43(1)(b) and regulation 59 to ensure that the rights of applicants are not adversely affected by the apparent mistake in the legislation.