From 5 April 2018, various amendments to the Patents Regulations 2014 (the Regulations) come into effect in New Zealand to address a few unintended problems arising from the new Patents Act 2013 (new Act) and its Regulations. Issues being fixed include addressing filing requirements around divisional claims and microorganism deposits. In particular, new Act divisional applications will no longer require any avoidance of double patenting with parent claims at the time of filing the divisional application.
Current divisional filing practice
Currently, the filing of a divisional application under the new Act requires under Regulation 52(3) that a divisional application “must not include a claim or claims for substantially the same matter as claimed in the parent application” (emphasis added).
It is understood Parliament’s original intention was to establish an avoidance of double patenting as an examination requirement and not a filing requirement. The amendment clarifies this intention and essentially relaxes the divisional filing requirements to enable any set of claims to be lodged at the time of filing the divisional application, and any double patenting objections can then be addressed at a later stage during examination if required.
It is worth noting these amendments do not relax IPONZ’s strict interpretation around double patenting that essentially requires little to no overlap in scope between the claims of the divisional and its parent. It is also important to remember that New Zealand patent law requires each claim to have a single priority date, therefore the filing of a divisional application can in some circumstances trigger a poisonous priority (self-collision) issue between the divisional application as new prior art against its own parent application (and vice versa). Before filing a divisional application in New Zealand, consideration needs to be given to determining if any new subject matter has been added into a complete specification that is not supported by its original priority specification. If so, ensure there is support in the original parent specification for quarantining claims around such added subject matter before filing the divisional application.
Unfortunately these Regulation amendments do not address the requirement that examination must be requested for any divisional application within 5 years from the complete filing date of its originating parent application (eg within 5 years of the International PCT filing date). Divisional applications filed after their “5 year examination request deadline” expiry will essentially sit in limbo without being able to be examined. IPONZ has proposed addressing this issue more formally in further changes to the new Act due to be pursued in a bill before Parliament next year. It is understood that the proposed change will enable examination to be requested for a divisional application at its time of filing.
Microorganisms deposit requirements
The amendments include addressing microorganism deposit requirements at a later stage prior to acceptance. The filing of a receipt from microorganism deposit institution can now be attended to prior to the acceptance deadline, which is a deadline set at 12 months from the first examination report.