Closer inspection of the changes to the New Zealand patent law, commencing on 13 September 2014, has revealed the following nuances (or perhaps more accurately nuisances) arising from the changes.
Examination Requests
The new law introduces a five years from filing/two months from Direction period for requesting examination. However, for divisional applications, Regulation 71 provides that the five year period commences on the filing date of the first filed relative (parent, grandparent, etc). This effectively limits filing of divisional applications to five years from the filing date of the first filed relative, because there is no provision for extending that five year period (see below).
This could have serious consequences for applications facing unity of invention objections. It may be necessary to anticipate such objections and file early divisional applications as a precautionary measure. Similarly, for applications facing difficult prosecution early filing of divisional applications may well be necessary to preserve applicant rights.
Extensions of Time
Section 125 provides for restoration of void or abandoned patent applications. Failure to file an examination request within two months of a Direction results in the application being treated as abandoned (Section 64(6)), and therefore eligible for an extension.
However, there is no provision for an application to become void or abandoned as a direct result of the five year timeframe being missed and therefore (apparently) no basis on which to seek an extension of time.
Bizarrely, the application could potentially remain pending for 20 years on payment of annual NZD100 maintenance fees. Whether an “inadvertent” failure to pay such a fee would open an avenue for a restoration application which involved an examination request is unknown.
Prosecution Timeframes
The time for putting an application in order for acceptance is 12 months from the date of the first examination report (Regulation 80).
However, IPONZ intends to take advantage of Section 67 by imposing deadlines for filing responses to each report. Those deadlines will be six months for responding to a first report, and three months for responding to each further report (but reducing where the 12 month deadline approaches and takes precedence). Each period can be extended on request by one month (no government fee), again except where the 12 month deadline interferes.
These requirements will place additional onus on IP practitioners and clients alike to handle examination reports expeditiously.
Our summary of the changes to the New Zealand Patents Act may be found here and here.
