The deadline for filing a divisional application in New Zealand is the date on which a Notice of Acceptance is issued on the parent case. Where the deadline for filing a divisional patent application has been missed, an extension of time cannot be relied upon as the relevant legislation does not appear to provide for an extension in this situation. Consequently, a patent application (wishing to claim divisional status) but filed after the date of issue of the Notice of Acceptance will not be considered a divisional patent application and have the priority date of its own filing date. This will generally be fatal to the claims of the application as the parent application was previously published and would be considered prior art.
Further the Notice of Acceptance may be issued without prior warning. Under the current New Zealand Patent Office practice, the Notice of Acceptance is issued after the examiner determines that there are no outstanding objections to the grant of the patent. In some circumstances, the Notice of Acceptance may issue without an objection being raised.
In summary, an applicant cannot file a divisional patent application after the date of issue of the Notice of Acceptance of the parent application and the applicant does not know when the Notice of Acceptance will issue. For applicants considering filing a divisional application, there is uncertainty as to when and whether divisional applications can be filed.
Wynnes have developed a strategy to counter this uncertainty. We recommend the filing of a Request to Postpone Acceptance as soon as the applicant considers that they may wish to file a divisional patent application. The decision then whether to file a divisional patent application can be delayed and is controlled by the applicant. Postponement of acceptance hands control of the acceptance date back to the applicant. While postponement cannot extend the period beyond what is normally allowed to achieve acceptance of the application, the postponement mechanism can be used to prevent acceptance of the application until such time as the applicant withdraws the postponement request and after the filing of any divisional application.
If this is relevant to you and you wish to discuss the matter further, please do not hesitate to contact us.