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Circumventing the NZ divisional deadline: Primapak and Magic Leap
Chris Baxter
Chris Baxter

Two recent decisions of the IPONZ hearing office highlights how appealing to the Commissioner’s broad discretion can reverse a missed deadline for divisional filing where a genuine mistake has been made.

Section 34 of the NZ patents Act requires that a divisional patent application must be filed before the parent application is accepted. Hence, putting in place a postponement of acceptance when requesting examination is considered standard practice.

In Primapak LLC [2019] NZIPOPAT 1 (7 January 2019) and Magic Leap, Inc. [2019] NZIPOPAT 8 (30 April 2019), a deadline was missed when a postponement of acceptance was mistakenly withdrawn before a divisional application was filed, as instructed.

In each case, the examiner considered the actions which resulted in the deadline being missed to be mistakes and to fall within the scope of section 202(1).

Under Section 202(1),

(1) The Commissioner may (on application by any person or on the Commissioner’s own initiative) correct an error or omission that the Commissioner is satisfied has been made by any person in—

(a) the patents register; or

(b) any patent; or

(c) any patent application; or

(d) any documents filed in connection with a patent application or filed in proceedings before the Commissioner in connection with a patent or patent application.

In Primapak LLC [2019] NZIPOPAT 1, the first request under s202(1) was declined by IPONZ as it was considered an error of judgement by the agent rather than any error in a document.

However, the agent quickly filed a new complete application, requested that it be treated as the divisional application and therefore, take the earlier filing date of the parent.

The agent then requested a hearing with IPONZ requesting reinstatement of the postponement of acceptance and consequential correction of the patents register under either s202(1)(a) or s201(1)(a) to record the date of filing of the divisional patent application as being before the acceptance date of the parent, and the newly filed complete application to be treated as a divisional of the parent via regulation 52 or a waiver of the regulation 52 requirements under regulation 149.

Primapak emphasised that they would otherwise lose valuable patent rights and that no third party would be harmed as a result.

While section 201 provides that the Commissioner may correct any mistakes that they have made and section 202 provides that the Commissioner may correct any mistakes that someone else has made.

The supporting evidence provided by the agents was persuasive in showing that the actions of the agent, while deliberate, were a genuine mistake.

The online tick-box form for postponed acceptance periods was considered to be “a document filed in connection with a patent application” or part of the “patent application” and so, was considered to fall within the scope of s202(1).

Regulation 149 sets out the power of the commissioner to waive requirements (such as those of regulation 52) in exceptional circumstances. Given that the online filing system would not allow the applicant to request that the patent application be treated as a divisional application in the usual way, the examiner waived the reg 52 requirements pursuant to reg 149.

The approach in Primapak LLC [2019] NZIPOPAT was more or less repeated in Magic Leap, Inc. [2019] NZIPOPAT and Primapak LLC [2019] NZIPOPAT successfully provided precedent for the Magic Leap, Inc. [2019] NZIPOPAT decision.

Notably, in these cases s202 and reg 149 together provided mechanisms for a compelling appeal for the commissioner’s discretion.

If you have any questions about NZ patent practice, around NZ patent filings and prosecution, feel free to contact Baxter IP’s Australian and New Zealand patent attorneys.

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About the author
Chris Baxter
Managing Director, Patent & Trade Mark Attorney
Chris Baxter is a Sydney patent and trade mark attorney specialising in software patents, computer patents, medical device patents and engineering patents.

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