Filing Divisionals in New Zealand: Navigating the Five-Year Trap and Evolving Double Patenting Landscape
Introduction
New Zealand represents one of the most challenging jurisdictions for divisional patent practice, where even experienced practitioners can find themselves ensnared by unique procedural requirements that exist nowhere else in the patent world. The notorious "five-year deadline" has claimed countless potential divisionals, while recent shifts in double patenting practice—though welcome—have added layers of complexity that require careful navigation. For biotech and pharmaceutical innovators, where portfolio management and strategic considerations are paramount, understanding New Zealand's divisional peculiarities is not merely advisable—it's essential for preserving valuable IP rights in this increasingly important market.
The Five-Year Trap: New Zealand's Unique Filing Deadline
The Foundation of the Problem
Unlike virtually every other major patent jurisdiction, New Zealand indirectly imposes an absolute deadline for filing divisional applications: five years from the effective filing date (being the filing date of the ultimate parent application, typically the PCT filing date). This situation arises because the deadline is inextricably linked to New Zealand's deadline for requesting examination, creating a perfect storm of procedural constraints that can catch even seasoned practitioners off guard.
Under the Patents Act 2013, examination of all patent applications—including divisionals—must be requested within five years of the effective filing date of the complete specification. For divisional applications, this means the examination request deadline is tied not to the divisional's own filing date, but to the original parent application's filing date. Consequently, if the five-year window to request examination has passed, it is not possible to file a divisional application.
When the Clock Stops Ticking
The five-year deadline creates an absolute bar with limited exceptions. A divisional application can only be filed while the parent application is pending, but not yet accepted (allowed). Once a parent application is accepted, the window for filing divisionals from that application closes permanently.
This creates challenges for PCT national phase entries, where the five-year deadline often arrives before substantive examination has even commenced on the parent application. The result is that applicants must make divisional filing decisions in an information vacuum, often before knowing whether unity objections or other grounds for division will arise during examination.
The Examination Backlog Dilemma
Significant examination backlogs at IPONZ have exacerbated the situation. Current wait times for first examination reports range from 16 months for mechanical applications to over 34 months for biotechnology applications. This means that for many applications, particularly in the life sciences space, the five-year deadline arrives well before any substantive examination feedback is received.
As one commentator aptly noted, "an applicant knew where they stood (relative to whether or not they needed to file a divisional application) comfortably within the deadline for doing so" in earlier years when examination was more expeditious. Today's reality is far less forgiving, requiring proactive case management and strategic foresight that many practitioners find challenging to provide without crystal ball capabilities.
Strategic Filing Windows and Timing Constraints
The Extension Period Trap
New Zealand's divisional practice contains a particularly insidious trap that caught the applicant in the Avalyn Pharma decision. While it is generally possible to file a divisional application in lieu of responding to an examination report, this option is not available during the one-month extension period for responding to that report. During this extension period, the application is treated as lapsed, precluding divisional filing unless a substantive response is also filed to re-enliven the parent application.
This creates a narrow window of opportunity that requires precise timing. If an applicant receives an examination report raising objections that might warrant divisional filing, they must act quickly—before invoking any extension period—or risk losing the divisional option entirely.
The Avalyn Pharma Cautionary Tale
The Avalyn Pharma [2024] NZIPOPAT 4 case perfectly illustrates how New Zealand's divisional peculiarities can ensnare even well-intentioned practitioners. In this case, after the five-year deadline had passed, the US attorney—misunderstanding New Zealand's unique requirements—instructed the filing of a divisional application. Unable to comply, the New Zealand attorney was forced to incorporate the proposed divisional claims into the pending parent application, risking a lack of unity objection and potentially compromising the overall prosecution strategy.
This scenario underscores the critical importance of early planning and clear communication between international and local counsel about New Zealand's distinctive requirements.
Double Patenting: From Draconian to Reasonable
The Historical Approach
For years, New Zealand's approach to double patenting between parent and divisional applications was notably more restrictive than other jurisdictions. Under the now-revoked regulation that preceded the current system, divisional applications were at risk of being "dead on arrival" if they included claims for substantially the same matter as the parent application. This created a minefield for practitioners attempting to coordinate New Zealand filings with their Australian and other foreign counterparts.
The Oracle and Ganymed Revolution
Two landmark IPONZ decisions in 2021 fundamentally shifted New Zealand's double patenting landscape: Oracle International Corporation [2021] NZIPOPAT 5 and Ganymed Pharmaceuticals GmbH et al. [2021] NZIPOPAT 6.
The Oracle decision clarified that parent and divisional applications are directed to "substantially the same matter" only if they have "substantially the same scope," applying a "double infringement" test. Under this test, a notional infringement of the parent application claims must also necessarily infringe the divisional application claims, and vice versa, for a double patenting objection to apply.
The Ganymed decision addressed remedies, clarifying that double patenting objections can be overcome by surrendering or amending the parent application—a previously uncertain area that had created significant prosecution difficulties.
Current Practice: Alignment with Australia
Following these decisions, IPONZ updated its Patent Examination Manual in February 2023 to reflect a substantially more reasonable approach to double patenting. The current practice now allows:
Claims with overlapping but distinct scope: Where parent and divisional claims overlap but also include distinctly different subject matter, both may be acceptable.
Markush-type claim scenarios: Where a parent contains broad Markush-type claims and a divisional claims specific compound within that scope, both may proceed.
Remedial measures: Double patenting objections can be resolved by withdrawing the earlier accepted application, surrendering an earlier granted patent, or amending claims.
Family-Wide Application
Importantly, IPONZ applies double patenting analysis across entire divisional families, not just direct parent-child relationships. This means that claims in any application will be compared against accepted claims of any application within the same divisional patent family, including grandparent, parent, sibling, and child applications. However, double patenting does not apply beyond this inter-family relationship (e.g., to co-pending applications).
Key Procedural Requirements and Best Practices
Proactive Case Management Imperatives
Success in New Zealand divisional practice requires abandoning passive prosecution strategies in favor of proactive case management. Key recommendations include:
Early Examination Requests: Given the five-year deadline, consider requesting examination shortly after national phase entry rather than waiting for IPONZ directions. This provides maximum time to assess whether divisionals may be needed.
Priority Analysis: Review international prosecution history for potential unity of invention issues, as these often presage similar objections in New Zealand.
Coordinated Planning: Establish clear communication protocols with international counsel to ensure New Zealand's unique requirements are understood and accommodated in global filing strategies.
Leveraging Acceptance Delays
New Zealand practice allows applicants to delay acceptance for up to 12 months after the first examination report. This delay mechanism can provide breathing room for divisional decisions, but must be carefully managed to ensure it doesn't conflict with the five-year deadline or other prosecution requirements.
Documentation and Support Requirements
New Zealand applications must be supported by the disclosure in the parent application as originally filed. Any new matter introduced when filing the divisional will receive only the divisional filing date for priority purposes. This reinforces the importance of comprehensive initial disclosures, particularly for biotech and pharmaceutical applications where evolutionary development during prosecution is common.
Practical Implications for Biotech and Pharmaceutical Practitioners
Portfolio Management Strategies
The five-year deadline necessitates a front-loaded approach to portfolio development in New Zealand. Rather than the reactive divisional strategies often employed in other jurisdictions, New Zealand requires:
Early divisional filing for distinct inventions, even if examination feedback has not yet indicated the need; and
Coordinated family management to avoid double patenting issues across complex divisional chains.
It may also assist to file comprehensive initial claim sets covering all potentially patentable subject matter so as to flush out any potential lack of unity issues before it's too late.
Conclusion and Strategic Outlook
New Zealand's divisional practice represents a unique challenge in the global patent landscape, where the confluence of absolute filing deadlines, examination backlogs, and evolving double patenting requirements creates both risks and opportunities for astute practitioners. While the five-year deadline remains an immutable constraint that demands respect and careful planning, recent developments in double patenting practice have eliminated many of the arbitrary obstacles that previously frustrated applicants.
The Avalyn Pharma decision serves as a stark reminder that New Zealand's peculiarities can catch even experienced practitioners unaware, while the Oracle and Ganymed decisions demonstrate that IPONZ is capable of pragmatic evolution when presented with compelling arguments for change. For biotech and pharmaceutical innovators, success in New Zealand requires abandoning the reactive prosecution strategies that may work elsewhere in favor of proactive, front-loaded portfolio development that anticipates divisional needs before they become apparent.
As examination backlogs continue to challenge the practical intersection of the five-year deadline with substantive prosecution needs, practitioners must remain vigilant for further legislative or regulatory developments that might provide relief. Until such changes materialize, however, the watchwords for New Zealand divisional practice remain: plan early, file strategically, and never underestimate the unforgiving nature of the five-year trap.
Key Takeaways
The Five-Year Absolute Deadline: All divisional applications must be filed AND their examination requested within five years of the parent application's effective filing date.
Examination Backlog Challenges: Current wait times of 16-34 months for first examination reports mean divisional decisions often must be made before receiving substantive prosecution feedback.
Extension Period Trap: Divisional applications cannot be filed during the one-month extension period for responding to examination reports, creating narrow timing windows that require precise coordination.
Double Patenting Evolution: The Oracle and Ganymed decisions fundamentally improved New Zealand's double patenting practice, now allowing overlapping but distinct claim scope between parent and divisional applications.
Family-Wide Analysis: Double patenting objections can arise from any application within the same divisional family, not just direct parent-child relationships.
Proactive Management Essential: Success requires abandoning passive prosecution strategies in favor of early examination requests, comprehensive initial filings, and coordinated international planning.
Post-Acceptance Bar: Once a parent application is accepted, no further divisionals can be filed from that application—making timing decisions critical for portfolio development.
This post was written by Lisa Mueller and Dr. Claire Gregg of Davies, Collison and Cave.