The New Zealand Patents Act 2013 came into force just over two years ago. The most significant changes were to examine applications for inventive step, expanding the prior art base worldwide, limiting the time period to respond to examination reports and some subject matter exclusions.
Although not heralded, new Section 34 of the Act (relating to divisional applications) had some unintended (or perhaps intended) consequences and confusion and uncertainty has reigned since.
Now, two years later, the NZ government are seeking input on proposed amendments to transitional provisions of the Patents Act 2013 relating to divisional patent applications.
Interested parties have until 14 October 2016 to make their views known.
Submissions may be made here.
So, what is the problem?
New Section 34 sets out the provisions for filing divisional applications, with sub-section (1) stating that such an application is to be in the “prescribed manner”. The prescribed manner is contained in sub-regulation 52(3). In essence, the sub-regulation requires that neither the divisional nor parent applications include a claim for substantially the same matter as claimed in the other application.
This language is quite different (and more onerous) than the old act, sub-regulation 23(2), which provided that the Commissioner may require amendment of the complete specification of one or other of the applications is to ensure neither claims matter claimed in the other.
There is uncertainty as to whether the new requirement must be met on filing of the divisional application in order for the application to be entitled to divisional status. This has the potential to disrupt ‘genuine’ divisional applications unless particular care is taken when preparing those applications.
‘Genuine’ or distinct and separate invention divisionals
The new Section 34 requirement should not be a problem in cases of ‘genuine’ invention plurality, with the parent and divisional applications each being directed to respective inventions.
However, even then care needs to be exercised to ensure compliance with Regulation 52(3), i.e.
(a) the divisional application does not include a claim or claims for substantially the same matter as claimed in the parent application; and
(b) the parent application does not include a claim or claims for substantially the same matter as claimed in the divisional application.
There is some uncertainty around this provision. That is, whether the absence of substantial matter overlap must be evident, at least at the time of filing the divisional application. There is a view that before actually filing the divisional application, applicants should make sure the claims in the parent application have been suitably amended (as necessary) to exclude the subject matter which is to be claimed in the proposed divisional application. Otherwise the divisional application may not be entitled to divisional status.
“I’ve run out of time” divisionals
There is also a view that Section 34 may be intended to stymie a “refiling” of the parent application, e.g., where it has not been possible to achieve acceptance by the final acceptance date, or as a precautionary measure in anticipation of a possible opposition to the parent application.
The sub-regulation may be satisfied where the divisional application at the time of filing includes at least one claim which does not correspond to any claim in the parent application. Another approach might be to voluntarily radically amend and/or delete the claims in the parent application so that preferred claims can be retained in the new divisional application.
The New Zealand Patents Act 2013 has given rise to some unintended consequences relating to divisionals and in particular “genuine” divisionals. It will be interesting to see, as a result of the consultation, if the prohibition on using divisional applications as an application refiling strategy prevails.