A Cabinet Paper approving the drafting of the Patents Regulations 2014 was released on 2 July 2014. Amongst other requirements, regulations drafted in line with the proposals will (effectively) restrict the time period for filing a divisional application to five years from the filing date of the original parent application. Thus it appears that under the Patents Act 2013 the common process of filing serial divisional applications (commonly referred to as “daisy chaining”) will be significantly curtailed.
In the most part the proposals in the Cabinet Paper correspond to those outlined in the Discussion Document issued by the Intellectual Property Office of New Zealand discussed here. Whilst a number of the submissions by interested parties (including Henry Hughes) suggested changes, in most cases the Office has chosen not to act on these suggestions.
One proposal which has changed from the Discussion Document is the time period for requesting examination. Initially the Office proposed that the period be set at 3 years after the (international) filing date. However, following submissions, it was recognised that not only was such a short period out of line with Australia (a key trading partner), but it also allowed an unreasonably short period for requesting examination of a national phase entry of a PCT application which does not claim convention priority. The suggested time period is now 5 years after the (international) filing date.
Significantly, a number of areas on which the Discussion Document was silent are discussed in the Cabinet Paper in a section, disingenuously entitled “Other minor and technical regulations required for implementation of the Patents Act 2013”.
In particular, the Cabinet Paper purports to (effectively) limit the period in which a divisional application must be filed to within five years of the filing date of the parent application. It intends to do so by restricting the period in which examination can be requested for the divisional application to 5 years from the antedated filing date. This requirement is in addition to the requirement that the divisional application must be filed prior to acceptance of the parent application.
Thus where an application claims multiple inventions, it appears it will be necessary for an applicant to make an early assessment as to the number of inventions they wish to pursue in New Zealand, and file (and request examination for) a sufficient number of divisional applications to protect those inventions. Alternatively (or additionally), it may be necessary to file and request examination of a number of “precautionary” divisional applications to allow the applicant to protect additional inventions if they decide to do so.
The provision is similar in effect to the change in practice brought in by the EPO on 1 April 2010 (which restricted a divisional application to being filed within 2 years of the first examination report). Those who follow EPO law will know that the provision was a failure leading to a dramatic increase of “precautionary” divisional applications and was abandoned on 1 April 2014.
We have previously written encouraging applicants to file or enter national phase prior to 13 September 2014 (see our earlier article). The proposed provisions regarding divisional applications add another reason to do so. The old law will apply to all applications which are filed or enter national phase prior to 13 September 2014, and to any divisional applications filed from an application to which the old law applies. Thus the possibility of “daisy chaining” from an application filed prior to 13 September 2014 will remain. With this in mind, particularly where an ISR or IPRP has raised issues of unity, we strongly recommend entering national phase in New Zealand prior to 13 September 2014 where possible.
Other notable changes not covered in the discussion document include:
- Regulations which prescribe that a range of documents including application documents, specification and correspondence to and from the Commissioner (including examination reports) are publicly available.
- Restriction of the period for restoration of a patent which has lapsed due to failure to pay a renewal fee to 12 months (presumably from the prescribed period for paying the renewal fee).
- Restriction of the period for restoring a void or abandoned patent application to 3 months (presumably from the prescribed period for paying the fee or taking the required action)