Lack of unity is a ground of opposition in New Zealand

Lack of unity is a ground of opposition in New Zealand – 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, and suggest how to best guard your clients’ interests.

During the New Zealand patent prosecution process, once an Examiner’s objections have been overcome, the application is accepted. The acceptance is then officially advertised. This advertisement opens a three month window in which interested parties may oppose the grant of a patent on the application.

The grant of a patent may be opposed on the basis of lack of unity[1]. However, once an application has been accepted, divisional patent applications cannot be filed. Hence, during opposition proceedings, patent applicants are at risk of learning that their application is directed to multiple inventions, and then being forced to choose one of the inventions such that rights in the other inventions are lost.

This situation is not far-fetched. By way of example, lack of unity might only come to light when an opponent presents evidence anticipating an independent claim. Most jurisdictions, including Australia, do not allow a granted patent or accepted application to be attacked on the grounds of unity for this reason.

To reduce the risk of being forced to choose between inventions, we suggest filing a divisional patent application shortly before acceptance:

  1. as an additional precaution for commercially important patent applications; and/or
  2. if there is reason to suspect that a third party will oppose the grant of a patent.

Whilst point ‘2’ above has always been good practice, it is now more important than ever.

It seems that the risk of being forced to choose between inventions does not extend beyond the grant of a patent. Section 104 of the Act provides:

(1) A patent must be granted for one invention only.

(2) However, it is not competent for any person in an action or other proceeding to take any objection to a patent on the ground that it has been granted for more than 1 invention.

(Our emphasis.)

Further reading:

[1] Section 92(1)(c) requires compliance with Sections 36 to 45 and Section 39(2)(a) requires that the claims relate to a single invention.

Authored by

Ben Mott Patent Attorney & Mechanical Engineer Ben Mott

Mechanical Engineer & Patent Attorney