A draft Patents Amendment Bill released for public consultation by New Zealand’s Ministry of Business, Innovation and Employment (MBIE), proposes amendments to the transitional provisions of the Patents Act 2013 (the 2013 Act). If enacted, the Bill will raise the examination standards for newly filed divisional patent applications originating from an earlier application filed under the now-repealed Patents Act 1953 (the 1953 Act). In several key respects, the Bill would treat these divisional applications as patent applications filed under the 2013 Act rather than the 1953 Act.
MBIE invited submissions on the draft Bill by 1 April 2025.
Daisy-chaining of 1953 Act divisional applications
The examination standards in the 1953 Act applied to all patent applications filed between 1 January 1955 and 13 September 2014, when the 2013 Act came into force. Notably, the 1953 Act imposed no restrictions on sequentially dividing a new patent application from an earlier application, a process colloquially known as ‘daisy-chaining’.
The transitional provisions of the 2013 Act did not limit the continuation of this practice for applications initially filed under the 1953 Act. Consequentially, more than a decade after the 2013 Act’s commencement, new divisional applications continue to be filed that trace their origins to applications filed before 13 September 2014. These applications are currently examined under the less stringent requirements of the 1953 Act rather than the more rigorous requirements of the 2013 Act.
Examination standards: 1953 Act vs 2013 Act
The Intellectual Property Office of New Zealand (IPONZ) applies substantially different examination criteria under the 1953 and 2013 Acts. Under the 1953 Act:
- a patent application could be refused only if the claimed invention had been “published in New Zealand” before filing;
- there was no requirement to assess inventive step against prior art;
- the claims of the complete specification had to be “fairly based” on the matter disclosed in the specification; and
- established case law required the Commissioner of Patents to give the applicant the “benefit of any doubt” during examination.
Conversely, under the 2013 Act:
- the Commissioner of Patents must refuse an application if the claimed invention lacks novelty in light of “all material … available to the public (whether in New Zealand or elsewhere)” before filing;
- examination includes an assessment of inventive step relative to the prior art;
- claims must be “supported” by the matter disclosed in the specification; and
- the Commissioner must be satisfied “on the balance of probabilities” that the application meets the statutory requirements, rather than giving the applicant the benefit of any doubt.
Implications of the proposed amendments
The revised transitional provisions would apply to any divisional patent application divided from a 1953 Act application and filed more than three months after the Bill receives Royal assent.
Such divisional applications will remain as 1953 Act patent applications but be subject to several heightened examination standards and additional grounds of challenge from the 2013 Act. Specifically:
Before acceptance, the Commissioner of Patents must be satisfied, on the balance of probabilities, that the claimed invention:
- possesses worldwide novelty over the prior art;
- has an inventive step over the prior art; and
- is “supported” by the matter disclosed in the specification.
Third parties will have expanded grounds to challenge such applications during opposition, revocation, and re-examination. These additional grounds mirror the more stringent examination standards: the claimed invention lacks worldwide novelty or an inventive step over the prior art, or the claims of the complete specification are not “supported” by the matter disclosed in the specification.
Conclusion
If enacted in its current form, the Patents Amendment Bill will not prohibit applicants from continuing to daisy-chain divisional applications originating from 1953 Act applications. However, by introducing more rigorous examination criteria and providing additional grounds for third-party challenges, the Bill is likely to diminish many of the advantages of this practice.
