Can you be sure of your New Zealand patent filing date? – 26 September 2014
The New Zealand Patents Act 2013 took effect 13 September 2014, accompanied by the Patent Regulations 2014. Like any new legislation, some aspects of the new provisions may have unintended consequences. Here we flag one such aspect that may well prove contentious in the years to come.
Regulation 19 provides:
(1) A document is filed when it is received in proper form.
(2) A document is in proper form only if—
(a) it is legible; and
(b) it complies with the requirements of the Act and these regulations; and
(c) it is accompanied by the prescribed fee or penalty, if any.
(Our emphasis.)
In our view, this apparently innocuous provision creates uncertainty and places New Zealand patents at risk of being held invalid due to trivial non-compliances (e.g. an incorrect page margin) that would be correctable in other jurisdictions.
The regulation has the potential to render a patent invalid if, for example, it results in a complete specification being taken to have been filed after an applicable 12 month convention deadline. Subsection (2)(b) broadly refers to the Act and Regulations which, relevantly to determining the filing date of a complete specification, includes the formal requirements (such as margins and page numbering, etc) and specification requirements (such as sufficiency, support, unity and clarity).
The regulation is open to two possible interpretations because 19(1) could be read in an inclusive or in an exhaustive sense. In our view, both interpretations are reasonable but problematic.
If the regulation is read in an inclusive sense:
- it does not follow that a document is not filed if it is filed in improper form; and
- the regulation merely removes the Commissioner’s discretion to take a document not to have been filed.
In our view, this is the better of the two interpretations but remains problematic in that the minimum filing requirements are not clearly prescribed. Rather, the filing date of a document (including a complete specification) is a matter of the Commissioner’s discretion.
The alternative interpretation is to take the provision as exhaustively setting out the only circumstances in which a document is taken to be filed. This would have the draconian result that any patent application subject to, for example, a formal objection or unity objection would lose its filing date, which may render it invalid.
Further reading:
- New Zealand patent applications – From national phase entry or convention filing to grant and beyond
- New Zealand convention application deadlines and filing requirements
- New Zealand national phase entry deadlines and filing requirements
