The New Zealand government is now looking to accelerate the extinction of these dinosaurs. It has published draft legislation that will amend the transitional provisions of the 2013 Act such that any further divisional applications, filed more than three months after commencement of the amendments, will effectively be subject to many of the elevated standards of the current act, rather than the lower standards that applied under the old act. The idea seems to be that such applications would either be invalid (if they fail to meet the higher standards required under the current law) or could be granted as patents only to the extent that they substantially satisfy the same requirements that would apply had the originating application been filed on or after 13 September 2014.
On 18 March 2025 the New Zealand government published a notice seeking feedback on the draft legislation. Any submissions are due no later than 5pm (New Zealand time, which is earlier in the day almost everywhere else in the world) on 1 April 2025. That does not allow much time to review and respond to the draft! It should, however, be noted that the scope of the consultation is very narrow. The government is not interested in hearing from anyone who disagrees with the policy or legislative intent (which was supposedly addressed in an earlier consultation) – the sole subject of feedback being sought is ‘whether the drafting of the Bill achieves the policy intent or could have unintended consequences.’
When I saw the notice, I was curious about the extent of the impact this proposed legislation would have on applicants and the New Zealand patent system generally. I wondered how may applications would be implicated after all these years, and whether there are particular applicants that have been ‘exploiting’ the transition provisions more than others (spoiler alert: it turns out that there are). So that is what this article is mostly about.
A Bit of Background
You might be wondering why any of this matters. Well, transitional provisions under the 2013 Act allow divisional applications claiming ancestry back to applications originally filed under the 1953 Act to be kept pending for up to 20 years after the 2013 Act entered into force. The criteria for granting a patent under the 1953 Act – including the standards and available prior art for novelty and inventive step, as well as the level of disclosure required to support a valid claim – were less strict than the criteria required under the 2013 Act. This means that patents may continue to be granted for inventions that might not be permitted under the current law.
Some (myself included, if I’m honest) might say ‘so what?’ The original applications were made under the laws in force at the time of filing. The applicants were entitled to expect that those laws – including the existing right to file divisional applications on the same terms – would govern the applications and any resulting granted patents over their entire lifetime. Indeed, the applicants could not have known at the time that there was any need to prepare their applications to meet higher standards that had not yet been enacted. There is nothing unusual or controversial about any of this. In the absence of exceptional circumstances, reasonable governments do not upset expectations by legislating with retrospective effect.
The term of a patent in New Zealand (as in every country nowadays) is measured from the original filing date. Any patent claiming the benefit of a filing date prior to 13 September 2014 must, by definition, expire at most 20 years after its filing date, being no later than 12 September 2034. A decade from now, all these patents will be dead, regardless.
And even if there is a legitimate concern, in principle (there isn’t), about pending applications that remain subject to more lenient validity provisions, it is hard to identify any great practical problem here. After all, we are now talking about just 82 applications. In addition to the 26,029 applications pending under the current Act there are, at present, 11,806 1953 Act cases, and 13,179 2013 Act cases, that have passed examination, including 11,781 patents granted under the old act, and 12,071 patents granted under the current act. That is to say, there are 51,014 uncontentious live patents and applications, in comparison with the 82 remaining dinosaurs. This hardly sounds like a ‘problem’ worthy of extensive legislative attention, does it?
Well, the New Zealand government does not agree. Back in 2019, it conducted a consultation on a suite of proposed amendments to the country’s intellectual property laws. Just one of these proposals was to effectively ‘neuter’ new applications claiming filing dates under the 1953 Act by amending the transitional provisions of the 2013 Act such that the substantive patentability requirements of the current act relating to novelty. inventive step, and support in the disclosure of the specification would apply, notwithstanding that the application would otherwise be subject to the provisions of the old act. The government agreed to this recommendation, among many others, and indicated that it anticipated publishing draft legislation to implement all of the accepted recommendations by the end of 2021.
So here we are, in 2025, looking at a short bill implementing only the changes to the transitional provisions to capture ongoing divisional filings.
Who Will Be Affected?
As I have already noted, there are just 82 ‘dinosaur’ applications, not yet accepted, to which the 1953 Act still applies. Once an application has been accepted in New Zealand, it can no longer serve as the basis for a new divisional filing. Thus any of these applications – but no others – could (as of now) be the source of further divisional applications that might be captured by changes to the transitional provisions in the 2013 Act.
The 82 applications are owned by just 51 applicants. Of these, 43 applicants own a single application, and five own two. The top three in the group are the University of Washington with three, Regeneron Pharmaceuticals with five, and the Australian ‘sleep health’ med tech company Resmed Pty Ltd with 26. That does seem rather a lot, more than 10 years down the track since commencement of the 2013 Act, and I suppose I can understand how some people might be caused to wonder whether Resmed is somehow ‘gaming’ the system. But the system is what it is, and Resmed – like any other applicant – is entitled to use the mechanisms provided by the system to further its own IP protection objectives.
I was also curious to know which firms and/or attorneys might have the most clients affected by a change to the transitional provisions. There are only 17 in total, and the majority of the remaining ‘dinosaur’ applications are handled by just three firms: A J Park and Spruson & Ferguson with 12 apiece, and James & Wells with 31. Following these, FB Rice handles five of the affected applications, with Davies Collison Cave, Griffith Hack and Henry Hughes handling three each. A further ten firms are resposible for one or two applications apiece.
Conclusion – Much Ado About (Almost) Nothing?
As I have already indicated, the New Zealand government is consulting stakeholders to determine whether the proposed legislation may result in any unintended consequences. It is difficult to see how this could be the case, given that the amendments are confined to transitional provisions that should only apply to applications having an effective filing date earlier than 13 September 2014 – of which there are just 82 remaining.
But, even so, why risk it – and go to all this effort – over a legislative amendment that targets just 0.3% of pending applications? Sure, these applications present a degree of uncertainty regarding the scope of rights that might ultimately be granted. However this is true of all pending applications, and there are currently 3,803 applications filed in 2020 or earlier that are still pending and creating uncertainty on a far larger scale. And it is also true that any of the remaining 1953 Act applications could, theoretically, spawn countless further divisionals prior to their 20 year expiry dates. But there is no reason to believe that this is remotely likely.
I cannot help thinking that this tiny number of 1953 Act dinosaurs still quietly roaming the New Zealand Patent Office is looming far larger in somebody’s consciousness than is really justified.
In any event, once the amendments come into force, a final three month period will be provided within which further divisional 1953 Act applications can still be filed under the current transitional provisions. It is therefore possible that some of the remaining applicants will use this last opportunity to file a batch of ‘precautionary’ divisional applications that might not otherwise have been filed. I wonder – does that count as an ‘unintended consequence’?
Before You Go…
Thank you for reading this article to the end – I hope you enjoyed it, and found it useful. Almost every article I post here takes a few hours of my time to research and write, and I have never felt the need to ask for anything in return.
But now – for the first, and perhaps only, time – I am asking for a favour. If you are a patent attorney, examiner, or other professional who is experienced in reading and interpreting patent claims, I could really use your help with my PhD research. My project involves applying artificial intelligence to analyse patent claim scope systematically, with the goal of better understanding how different legal and regulatory choices influence the boundaries of patent protection. But I need data to train my models, and that is where you can potentially assist me. If every qualified person who reads this request could spare just a couple of hours over the next few weeks, I could gather all the data I need.
The task itself is straightforward and web-based – I am asking participants to compare pairs of patent claims and evaluate their relative scope, using an online application that I have designed and implemented over the past few months. No special knowledge is required beyond the ability to read and understand patent claims in technical fields with which you are familiar. You might even find it to be fun!
There is more information on the project website, at claimscopeproject.net. In particular, you can read:
- a detailed description of the study, its goals and benefits; and
- instructions for the use of the online claim comparison application.
Thank you for considering this request!
Mark Summerfield
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