New Zealand Nouvelle-Zélande Neuseeland Report Q193 in the name of the New Zealand Group by Tim JACKSON Divisional, Continuation and Continuation in Part Patent Applications Questions I) Analysis of the current law 1) Are divisional, continuation or continuation in part applications, respectively, available under your national or regional law? Divisional applications are available in New Zealand. The filing of divisional applications is governed generally by section 12(5) of the Patents Act 1953 which provides that regulations may make provision for the filing of a divisional application directed to any part of the first filed application. Regulations 23, 24, and 26 of the Patents Regulations 1954 then allow the filing of divisional applications. Regulation 23 allows divisional applications to be filed for matter included in the first application provided the divisional application is filed before acceptance of the first application. When filing a divisional application it is possible to amend the specification to remove subject matter but it is not possible to add subject matter (as the subject matter of the divisional application must have been included in the first filed (or parent ) application). The divisional application must be made by the applicant of the parent application and practice dictates that the number of the parent application should be indicated in the application. The application form for the divisional application must state that ante-dating of the divisional application is requested. Finally, neither of the applications should include a claim for matter claimed by the other. Regulations 24 and 26 govern the situation where the content of a New Zealand application can be divided if the application claims priority from 2 or more basic applications and the Patent Office takes the view that the 2 or more basic applications are not related. As will be explained further below, divisional applications may be filed in most circumstances without any requirement of separate invention, and without being limited to the originally filed claims. Consequently, New Zealand divisional applications can serve a similar function to continuation applications in other jurisdictions. Although this question is not concerned with patents of addition, it is noted that such patents are also available in New Zealand, and can in some circumstances fulfill a similar function to a continuation-in-part applications in other jurisdictions. 2) What is the justification behind allowing the filing of divisional, continuation and continuation in part applications in your law? Divisional applications are justified on the basis that New Zealand patent law only allows for one invention to be protected in each application. Filing a divisional application allows an additional invention to be divided out from the parent application into a new application without loss of priority right. 1
However, case law and Patent Office practice have established that a divisional application may be validly filed and priority retained for any invention which is disclosed in the parent application. 3) Under what circumstances and conditions may divisional, continuation and continuation in part applications (or combinations thereof) be filed in your national or regional patent system? At the time of making the divisional application the parent application must not have been accepted following examination. Acceptance allows for the application to be published for pre-grant opposition purposes. The divisional application must be made by the applicant of the parent application and practice dictates that the number of the parent application should be indicated in the application. The application form for the divisional application must state that ante-dating of the divisional application is requested. 4) Are cascades of divisional, continuation and continuation in part applications allowed, i.e. is it possible to file a divisional, continuation or continuation in part application on the basis of another divisional, continuation or continuation in part application? Yes. There is no limit on cascading of divisional applications per se. However, ante-dating of the divisional to the date of the originally filed parent is at the Commissioner of Patents discretion. Therefore it is possible that in some circumstances ante-dating could be refused and thus the ability to cascade prevented. 5) At what time during the prosecution of the parent application may divisional, continuation or continuation in part applications be filed? A divisional application may be filed at any time before the parent application has been accepted. Acceptance results in the parent application being published for pre-grant opposition purposes. 6) Is it a requirement for filing an application that is a divisional, continuation or continuation in part of an original application (or of another divisional, continuation or continuation in part thereof) that the original application (or the direct parent application, or both) is still pending at the time of filing of the divisional, continuation or continuation in part application? Yes see response to question 5 above. The divisional application must be filed preacceptance. 7) Is it a requirement that the original application (or the direct parent application, or both) is still pending throughout the prosecution of a divisional, continuation or continuation in part application derived therefrom? No. The status of the direct parent application is of significance only at the time of filing the divisional application. After the divisional application has been filed, its parent may lapse without affecting the divisional. 8) Are there any restrictions as to what may be included in a divisional, continuation or continuation in part application? Yes. A divisional application can only include subject matter that was part of the parent application (see response to question 1 above). 2
9) In particular, may the description and/or claims contain or claim matter that was not contained or claimed in the original application, or other application from which the divisional, continuation or continuation in part application derives? No. (Note the reference to patents of addition in the response to question 1 above.) 10) Is it possible to extend the patent term in respect of matter contained in the original application by filing divisional, continuation or continuation in part applications, including divisional, continuation or continuation in part applications containing added matter, to the extent the addition of new matter is allowed? A divisional patent has its term determined based upon the filing date of the parent patent application. Thus, it is not possible to extend the patent term in respect of matter contained in an original application by filing divisional applications. 11) Is double patenting permitted or must the matter claimed in divisional, continuation or continuation in part applications be deleted from the claims of the original application, or other application from which the divisional, continuation or continuation in part application derives? Double patenting is not permitted in New Zealand. The ground of prior claiming is available as a ground of pre-grant opposition (section 21) and revocation (sections 41 and 42). Further, regulation 23, which regulates the filing of divisional applications, states that neither of the applications should include a claim for matter claimed by the other application. The claims of the parent and divisional applications will need to be amended to ensure that double patenting is avoided, but subject matter need not be removed from the specifications. 12) Does it matter in this respect whether the divisional, continuation or continuation in part application was filed in response to a restriction requirement issued by the patent granting authority? In the event that a parent patent requires amendment to reduce the number of inventions claimed to one, the deleted inventions can be protected through a divisional application. However, double patenting is still not permitted. II) Proposals for adoption of uniform rules 1) In the opinion of your National or Regional Group, what are the advantages, for applicants and third parties, of allowing the filing of divisional, continuation or continuation in part patent applications? The main advantages for applicants of allowing the filing of a divisional, continuation or continuation-in-part applications are: Protection for more than one invention disclosed in the parent application can be obtained. New matter can be added and claimed. Where, during examination, acceptance for a parent application has not been achieved, the application can be pursued as a divisional, continuation or continuation-in-part application. This is particularly important in jurisdictions where possibilities of amendment may be restricted at later stages of prosecution or appeal. It may be an alternative to appeal. Divisional, continuation or continuation-in-part applications may also be used for delay by the applicant, in order to avoid the final determination of the application. 3
We do not consider that there are any advantages for third parties. However, we do consider that allowing the filing of such applications provides advantages for patent examination authorities, as they offer the possibility to avoid unnecessary appeals, and provide a mechanism for dealing with unity of invention and potentially other issues which cannot be fairly resolved by amendment alone. 2) In the opinion of your National or Regional Group, what are the disadvantages, for applicants and third parties, of allowing the filing of divisional, continuation or continuation in part patent applications? We do not consider that there are any disadvantages for applicants. For third parties, the main difficulty relates to delay and uncertainty. If a large number of continuations are pending, for example, then it is complex for a third party to keep track of all the applications. One or more may be rejected, or limited, whilst other still await examination. Divisional, continuation or continuation-in-part applications may be filed purely in order to induce delay and uncertainty. In effect, the application may, by filing divisional, continuation or continuation-in-part applications be kept pending for the whole term of the original parent, creating uncertainty for competitors as to the scope of protection which will be ultimately granted. The uncertainty issue in New Zealand is increased as patent applications are not published until acceptance (i.e. following examination). There is no provision for early publication. In jurisdictions where the term is not limited back to the term of the first parent (as it is in New Zealand), further issues of potential extension of term also arise. 3) In the opinion of your National or Regional Group, should the filing of divisional, continuation or continuation in part patent applications, respectively, be permissible? The opinion of the New Zealand Group is that the filing of divisional, continuation or continuation-in-part applications should be permitted. 4) If international harmonisation were to be achieved in respect of the rules governing divisional or continuation patent applications, what should be the common rules in respect of the circumstances and conditions in which divisional, continuation or continuation in part applications may be filed? The New Zealand Group proposes the following common rules: Any divisional, continuation or continuation-in-part applications are limited in term to the term of the first parent application. The divisional, continuation or continuation-in-part application must be co-pending with its immediate parent at the time it is filed. Each claim of the divisional, continuation or continuation-in-part application is only entitled to the earliest priority date at which the claimed subject matter was disclosed and supported. If the parent has been published, the divisional, continuation or continuation-in-part application must be published shortly after or upon filing. At least one claim in the divisional, continuation or continuation-in-part application must be based on an invention disclosed and supported in each parent from which such status is claimed. The claims of the divisional, continuation or continuation-in-part application should not be limited to the scope of claims present in the parent. 4
The New Zealand Group considers that there should be no strict limit on the number of divisional, continuation or continuation-in-part applications that can be filed from a parent. However, a restricted discretion to allow refusal of cascading may be needed to avoid possible abuse of process issues, such as when divisionals are continually cascaded with no possibility of rights being available to an applicant. 5) In particular, should a harmonised system permit the addition in a divisional, continuation or continuation in part application of matter that was not contained in the original application as filed? The New Zealand Group considers that the addition of new matter should be permitted, however, the priority date of any claim which either explicitly claims the new matter, or relies on the new matter to provide adequate support in the specification, should be the date when the new matter was added, and not the date of any earlier application. It is noted that the purpose of continuation-in-part applications, in those jurisdictions where they exist, is to allow the addition of new matter. 6) Should it be permitted to use a divisional, continuation or continuation in part patent application to obtain new examination and decision of an application that contains claims that are identical or essentially identical with claims finally rejected in the course of the prosecution of the parent application? Should there be an exception where case law on the substantive conditions for patent grant of the patent granting authority has changed since the parent application was rejected? Would this possibility adequately take into account the interests of third parties in legal certainty? In the case of an application which has been finally rejected - that is, when all possible patent office and other appeal processes have been concluded - the New Zealand Group does not consider that it should be generally possible to file a divisional, continuation or continuationin-part application with identical claims. However, we would not favour such a rule applying until all appeal processes are concluded. This is because a divisional, continuation or continuation-in-part filing can provide an applicant with an alternative path to grant, or provide further time to overcome objections. In practice many divisional, continuation or continuation-in-part applications are filed at some earlier point in the examination process. Given the wide disparities between appeal processes in different countries, the New Zealand Group does not consider it practical to lay down a general rule. Further, this question may be answered differently depending upon the nature of the rejection. For example, if the issue is one of unity of invention, then in fairness the possibility of filing a divisional in order to meet the final rejection of the parent case should always be available. As to the exception based on changes in the case law, the New Zealand Group sees this suggestion as an example of a situation where the imposition of hard limitations on divisional, continuation or continuation-in-part applications can create unintended practical difficulties for applicants. Finally, the New Zealand Group does not consider that the interests of third parties in terms of legal certainty would be best served by including a case law exception. We consider that the balance between the interests of third parties and the interests of applicants would be best served by early examination and publication of divisional applications. While not based on issues of legal certainty for third parties, the New Zealand Group is, however, of the opinion that divisionals do allow flexibility for applicants where case-law on the substantive conditions for patent grant of the patent granting authority has changed, or has the possibility of changing, since the parent application was rejected. Exactly this situation occurred in New Zealand during the debate as to the allowability of Swiss-form 5
claims for example. Cascading of divisionals allowed the grant of patent rights for applications that had previously been refused. 7) Should it be possible to extend the patent term in respect of matter contained in the original application by filing divisional, continuation or continuation in part applications, including divisional, continuation or continuation in part applications containing added matter? The New Zealand Group does not consider that it should be possible to extend the patent term of the original application by filing divisional, continuation, or continuation-in-part applications, whether or not matter is added. 8) In the opinion of your Group, would it be justified to limit the access to filing divisional, continuation or continuation in part applications primarily with the object of limiting the backlog of patent granting authorities? The New Zealand Group is sympathetic to the workload issues of patent examining authorities. The filing of divisional applications for unity of invention issues is based on financial and third party issues. From the financial perspective, permitting multiple inventions in one application will yield lower fees for the patent granting authority. From the third party perspective, the presence of more than one invention in a granted patent makes it difficult to ensure that its actions will not infringe patent rights (although full text patent searching may mitigate this difficulty somewhat). From the patent applicants perspective, if access to divisional applications in response to unity objections is limited, applicants can be greatly prejudiced, as they may be forced to choose between filing more applications than needed in order to avoid possible unity rejections. This will result in a number of separate applications being filed that are directed to similar inventions. As these applications will be otherwise unrelated, it will be more difficult for third parties to address potential infringement issues. In addition the number of basic applications filed is likely to increase not decrease thus any reduction in workload for patent granting authorities will be short lived. In our opinion, such proposed rules would be entirely counter-productive for all parties and the New Zealand Group submits it should not be justified to limit access in order to reduce workload. The New Zealand Group repeats its earlier recommendation and says that the balance between the interests of third parties and the interests of applicants would be best served by early examination and publication of divisional applications. 9) In the opinion of your Group, would it be desirable, in the interest of legal certainty of third parties, if databases of patent granting authorities ensured that a clear link was always indicated between original patent applications and all divisional, continuation or continuation in part applications derived therefrom? The New Zealand Group strongly supports this view. National and Regional Groups are invited to make any additional comment concerning divisional, continuation and continuation in part applications which they find relevant. 6
Summary New Zealand has a relatively restrictive approach to the filing of divisional applications. New matter cannot be added, filing of divisional applications must be prior to acceptance, and publication of applications, divisional and non-divisional, follows examination and acceptance. The result is that the content of a New Zealand application can remain confidential for many years by cascading applications and withdrawing the parent applications before publication. The New Zealand Group supports the adoption of permissive, harmonized rules regarding the filing of divisional, continuation and continuation-in-part applications, and see such applications as an integral part of the international patent system. We are opposed to the imposition of rules restricting the availability of such applications in an attempt to reduce patent examining authority backlogs. 7