New Zealand patent applications to be safe from post-acceptance lack of unity attack

New Zealand patent applications to be safe from post-acceptance lack of unity attack – 19 November 2015

The New Zealand Patents Act 2013, which took effect 13 September 2014, constituted a comprehensive re-drafting of New Zealand’s patent law. Given the scale of the exercise, it is unsurprising that some of the new provisions had unintended effects.

Last year we identified two anomalies in the new legislation:

  1. the possibility of post-acceptance lack of unity attack, which could place patent applicants in the difficult position of having to choose between two valuable independent claims; and
  2. significant uncertainty surrounding patent filing dates (on which validity may turn).

Pleasingly, a Bill is now before the New Zealand Parliament to correct the first of these anomalies. The Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill 2015 (83-1) includes provision to specifically exclude lack of unity as a ground of post-acceptance opposition. The Bill includes an explanatory note which acknowledges that ‘1’ is unintentional and unfair:

“There was no policy intention to introduce lack of unity of invention as a ground of opposition in the Patents Act 2013. If this ground remains, patent applicants may be unfairly disadvantaged. The only way that patent applicants could deal with an opposition on this ground would be to amend the application so that patent protection is claimed for only 1 invention. The applicant would lose patent rights to the other invention or inventions.”

If and when the Bill is enacted, like in Australia, lack of unity will be assessed during examination but will not persist as a ground of invalidity thereafter.

Further reading

Authored by

Ben Mott Patent Attorney & Mechanical Engineer Ben Mott

Mechanical Engineer & Patent Attorney