New Zealand practice change: patent application acceptance process

New Zealand practice change: patent application acceptance process

New Zealand practice change: patent application acceptance process

Recent changes implemented by the Intellectual Property Office of New Zealand (IPONZ) have altered the acceptance process for New Zealand patent applications.

Previously, the Examiner would issue a final examination report which stated that an application was considered to be in order for acceptance, and then the case would be passed to the IPONZ acceptance division to process acceptance and issue the Notice of Acceptance. The Notice of Acceptance typically issued approximately one month from the final examination report.

Now the process has been streamlined in what appears to be an attempt to minimise procedural handling of cases, by enabling Examiners to issue a Notice of Acceptance as soon as they deem all objections to be overcome.

This change has important ramifications for both voluntary amendments and the filing of divisional applications in New Zealand, because once an application has been accepted:

  1. the scope of allowable amendments is severely restricted; and
  2. a divisional application can no longer be filed.

In the past, the one month window between the final examination report and the Notice of Acceptance provided the Applicant with an opportunity to evaluate the scope of the accepted claims in the pending application, and to decide whether any further amendments or divisional applications were warranted.

This window was particularly useful because New Zealand continues to examine well ahead of most other jurisdictions. Many of the issues which arise during prosecution of the corresponding applications overseas, for example in Europe and the United States, are often not raised by the New Zealand Examiner, although they may be issues that the Applicant would want to address in the New Zealand application before the application is accepted. There may be other reasons as to why an Applicant might want to amend the pending application – for example to ensure a newly developed commercial embodiment is specifically claimed.

Now that the Notice of Acceptance may conceivably issue at any time, the acceptance date cannot be predicted. This means that without taking strategic action in prosecuting the pending application, the opportunity to file voluntary amendments or a divisional application could be lost.

Smart prosecution strategies can be adopted to avoid lost opportunities. The following is a list of some possible actions an Applicant can take to maintain some level of control over the prosecution of a New Zealand application:

  1. Filing a divisional application
    Since New Zealand is a relatively inexpensive jurisdiction, the cost of prosecuting patent applications and filing divisional applications may in some circumstances be off-set by the benefit in having a pending application. Therefore, should an Applicant anticipate that they might want to seek protection for subject matter disclosed but not claimed in a pending application they should consider filing a divisional application soon after filing the parent application or at the time of filing the response to the first examination report. This strategy will ensure the Applicant has at least one pending New Zealand application to tailor as desired.
  2. Requesting deferment of acceptance
    Under Section 20(1) of the Patents Act 1953 an Applicant may request deferment of acceptance up to 18 months from the date of filing of the complete specification. Deferment can be requested at the time the application is filed.
  3. Requesting the issuance of an examination report In June 2008, IPONZ issued a direction stating that in the instance that an application is deemed allowable at first examination the Examiner should issue a first examination report to provide the Applicant with one month to file a voluntary amendment and/or a divisional application. There is however no basis under the Patents Act 1953 or Patents Regulations 1954 requiring the Examiner to issue such a report and accordingly no guarantee can be given that an Applicant will be given the opportunity to make amendments or to file a divisional prior to acceptance.

However, to remind the Examiner of this direction, applications could be filed with the following instruction:

“In the event that the application is on order for acceptance at first examination, so that the Applicant has an opportunity to file a divisional application, we request that an examination report issue in line with the IPONZ practice note of 10 June 2008.”

Other strategies may be more appropriate, and need to be determined on a case-bycase basis. Contact your patent attorney at DCC if you would like to discuss further.