The New Zealand government has released a consultation draft of a Patents Amendment Bill.  The sole purpose of this Bill is to require that future divisional applications derived from applications originally filed under the Patents Act 1953 be subject to the higher standards of the Patents Act 2013. 

The Patents Act 2013 substantially raised requirements for a patent grant and validity when compared to the ‘old’ Patents Act 1953.  These changes included the examination standard increasing from “benefit of the doubt to the applicant” to “balance of probabilities”, examination for inventive step (where previously only novelty had been considered), and the requirement for “support” rather than “fair basis”. 

The transitional provisions of the Patents Act 2013 allowed divisional applications to continue to be filed from applications filed under the Patents Act 1953 and provided that the lower standards of the Patents Act 1953 would apply to those divisional applications.  Because there is no deadline for filing of these divisional applications, they can continue to be filed in a serial manner up to the lifetime of the patent.  Over ten years from entry into force of the Patents Act 2013 there are around 80 applications still subject to the Patents Act 1953. 

The proposed Bill will mean that any divisional application filed after a defined date (proposed to be 3 months from entry into force of the Bill) will be subject to the higher standards of the Patents Act 2013, both for examination and validity purposes. 

This change was originally part of a wider suite of changes originally consulted on in 2020.  However, the Government has now decided that this particular change is a priority.  As a result, only a short consultation period, finishing on 1 April 2025 has been allowed.  If you want to make a submission or to discuss this matter in more detail, please do not hesitate to contact us. 

David Nowak - March 2025