New Zealand has passed a new Patents Act. The new Patents Act comes into force as of 13 September and will implement some significant changes to New Zealand's patent laws, including the practice around divisional patent applications.
There is a stated desire by IPONZ to reduce the daisy chaining of divisional applications to protract the prosecution of patent rights in NZ. Therefore, under the new Patents Act there will be a significant limitation on the filing of divisional applications. For any patent family governed under the new Patents Act (when the new Patents Act applies is explained below) it will now only be possible to request examination of a divisional application no later than five (5) years after the effective filing date of the divisional application, which equates to the date of filing the initial parent application from which the divisional is ultimately divided. In effect, there will be a maximum deadline of five years by which all necessary divisional applications must be filed.
It is also unclear whether the new Patents Act will introduce the problem of so called "poisoned divisionals" to New Zealand. This is a potential situation where parent and child patent applications are considered relevant prior art to the novelty of each other. The new Patents Act extends the definition of prior art to include all applications filed in New Zealand before the priority date of a given application and which have not yet been published. Therefore, arguably, the problem of “poisoned divisionals” as is being debated in Europe may also become a relevant consideration in New Zealand.
The good news though is that the restrictions introduced by the new Patents Act can be avoided. Any application filed in New Zealand before 13 September 2014 will be governed by the old Patents Act. In addition, any divisional application will be governed by the law to which its parent application is subject. To ensure that your or your client's applications are governed by the old Patents Act it is necessary to file a request for national phase entry in New Zealand, or Paris Convention application, on or before 12 September 2014.
There are a number of other changes being brought into effect by the new Patents Act. Each of these individually will increase the standard of examination and make it harder to secure protection in New Zealand. You can find more information about these on our website or by contacting us directly.