Attacking accepted patent applications in NZ: A plurality of approaches to unity

Article  \  6 Nov 2015

While the new Trans-Tasman Patent Attorney scheme has been garnering most of the attention, we are pleased to note that the “Other Matters” aspect of the Bill seeks to rectify a bothersome unity of invention issue that arose in the recently enacted Patents Act 2013.

The Patents Act 2013 as it is currently worded includes lack of unity of invention as a ground of pre-grant opposition and re-examination.  The Patents Act 2013 is clear, however, that granted patents cannot be challenged on the ground of lack of unity.

The Bill amends the Patents Act 2013 to specify that lack of unity of invention is not an available ground for challenging patent applications pre-grant[1].  The Explanatory Note to the Bill also confirms informal feedback we have received: there was no policy intention to include lack of unity of invention as a ground of challenge pre-grant.  To view the Bill and Explanatory Note on the New Zealand Parliament website click here.

Correcting this is of course very welcome, but we have been advised that the correction is not intended to have a retrospective effect and will only apply to patent applications filed after the Bill takes effect.  Therefore, unless the Bill is amended, any patent applications filed in New Zealand from 13 September 2014 (when the Patents Act 2013 came into effect) until the date the Bill is enacted (a date yet to be determined) will be able to be challenged pre-grant on the basis of a lack of unity of invention.

Why this issue is not being resolved with retrospective effect is unclear.  The Patents Act 2013 itself clarifies earlier legislation by retrospectively making New Zealand a convention country for National Phase applications having a New Zealand priority claim[2].

If Parliament did not intend to include lack of unity of invention as a ground of challenge then that ground should not be available to challenge any patent application, regardless of when filed.  It simply means that patent applicants may need to take steps to minimise the potential validity risks that arise for a defined group of patent applications.  Inevitably this will mean incurring additional cost, and for no good reason.

Hopefully the Bill will be amended to restore the position under the Patents Act 1953 for all patent applications. This would reflect the intention expressed in the Explanatory Note to the Bill:

“Clause 4 amends section 92 of the Act to remove the right to oppose a grant of patent on the ground that the claim or claims relate to more than 1 invention, and to bring the law back to the position under the Patents Act 1953.”

Precautionary divisional applications recommended

If there is any doubt about whether the claims of affected patent applications lack unity, applicants should consider filing one or more precautionary divisional applications to mitigate the risk of a pre-grant challenge on this ground.  For example, this could be appropriate if a unity objection was raised against the corresponding PCT International application.

Divisional applications must be filed before the original (or parent) application has been accepted following examination.  The 3-month pre-grant opposition period begins after acceptance. Therefore, if a divisional application has not been filed before the opposition period commences it may not be possible to retain claims directed to all inventions originally claimed.

As noted above, granted patents cannot be challenged on the ground of lack of unity.  Therefore, the precautionary divisional application need only be kept pending until the 3-month pre-grant opposition period for the original patent application has expired.  The divisional application could simply be abandoned once the original patent application has been granted.  If the original patent application is challenged on the basis of unity of invention, the original application could be amended to remove any affected claims and those claims could be included in the divisional.

If you have any questions about unity or divisional practice in New Zealand or Australia please contact us today.

[1]Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill 2015 (83-1), cl 4

[2] Patents Act 2013, s 252(2)


This article is intended to summarise potentially complicated legal issues, and is not intended to be a substitute for individual legal advice. If you would like further information, please contact a AJ Park representative.