Restrictions to Filing Divisional Applications Under New Zealand’s New Patent Law

The New Zealand Patents Regulations 2014 have effectively introduced a five year deadline for filing divisional applications.

The deadline arises as a result of restricting the period in which examination of a divisional application may be requested. In this regard, examination must be requested within five years of the date of filing of the parent application, or for a series of divisional applications, within five years of the date of filing of the first application in the series.The new requirements apply to patent applications which are filed or enter the New Zealand national phase on or after 13 September 2014. The requirements do not apply to applications filed prior to 13 September 2014.

The new requirements will limit the filing of cascading divisional applications which, under the old Act, could be continuously filed such that applicants were able to maintain a pending patent application during the life of the patent that issued on the first filed application.

The restriction is similar to that introduced by the European Patent Office in 2010 whereby all divisional applications had to be filed within two years of the date of issue of the first Examination Report. The practice was abandoned in April this year following the filing of a large number of speculative, precautionary divisional applications.

When prosecuting patent applications in New Zealand that include multiple applications, applicants will need to ensure that all required divisional applications are filed and examination requested before five years have elapsed from the filing date of the first filed application.

As most applications in New Zealand are the result of Patent Cooperation Treaty (PCT) national phase entries applicants will, in effect, have about two and a half years from the national phase entry date to file and request examination of all required divisional applications (assuming national phase entry occurs about 31 months from the priority date).

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