[The IPKat] Schrödinger's cat, and correcting an error or omission in New Zealand
Claire Gregg
Schrödinger's cat, and correcting an error or omission in New Zealand
Dr Claire Gregg Tuesday, July 07, 2026 - #patents, Claire Gregg, correction of errors, New Zealand, OzKat
Under New Zealand law, the Commissioner of Patents has the discretion to correct an error or omission in the patent register, any patent, or any other document issued under the Act. A recent decision by the New Zealand Patent Office (IPONZ) in Regeneron Pharmaceuticals, Inc. [2026] NZIPOPAT 1 highlights some of the key considerations in correcting an error or omission in a patent application and related documents.
Background
As New Zealand imposes both response and acceptance deadlines for patent applications, it is common practice in New Zealand for applicants to request postponement of acceptance. This can be a particularly important practice because divisional applications cannot be filed after acceptance and, in the event an Examiner deems the application to be in order for acceptance it will typically proceed to acceptance with little or no warning.
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Schrödinger's Kat |
In Regeneron, the patent application at issue was filed with a request for postponement of acceptance, which was subsequently withdrawn when responding to the first examination report. This appears to have occurred due to the presence of a pro forma paragraph in the response letter stating, "We withdraw postponement of acceptance of this application". Withdrawing postponement requires the postponement period to be manually set to "0" months in the New Zealand Patent Office register, and the presence of the pro forma statement in the response letter appears to have prompted that action.
A further examination report was issued and, in the course of providing response instructions, the applicant requested that a divisional application also be filed. However, the response was filed without reinstating the postponement of acceptance and the application proceeded to acceptance before the divisional application was filed. The applicant filed the divisional application one week later, together with a request for correction of an error under s 202 of the Patents Act 2013.
Correcting an error
Section 202(1) provides that the Commissioner of Patents has the discretionary power to correct an error or omission made by any person (other than the Commissioner) in: the patents register; any patent or application; or any documents filed in connection with a patent application, or filed in proceedings before the Commissioner in connection with a patent or patent application.
The High Court in NXT Building System Pty Ltd v The Commissioner of Patents [2024] NZHC 2141 stated as follows (with apparent approval) in relation to the Patent Office decisions in Primapak LLC [2019] NZIPOPAT 1 and Magic Leap, Inc. [2019] NZIPOPAT 8:
The Commissioner … considered that s 202 allowed correction of more than mere slips or clerical errors. It covers more deliberate or voluntary errors than simply making an inadvertent mistake in a document, but does not extend to errors of judgement, such as delaying taking a step and missing a deadline or failing to appreciate the consequences of an action or decision. Rather, it extends to true mistakes. …
Under s 202(3), the Commissioner must advertise the correction request for opposition purposes if they believe that the correction would materially alter the meaning or scope of the document to be corrected; and it ought not be made without notice to persons who have an interest in it.
Section 201 makes provision for the correction of errors or omissions by the Commissioner.
The alleged error and correction sought
The Applicant argued that the following error and omission had occurred:
1. the response to the first examination report erroneously included a statement withdrawing the postponement of acceptance; and
2. in view of (i), the response to the second examination report omitted a statement reinstating the postponement of acceptance.
The corrections sought were (i) reinstating the 12 months postponement period and (ii) post-dating the acceptance date of the parent application so that it fell after the filing date of the divisional application. In seeking these corrections, the Applicant referred to three decisions in which the postponement period had been incorrectly set to "0" months by mistake and correction was permitted in circumstances where a divisional application was intended to be filed before acceptance of the parent (NXT, Magic Leap and Primapak LLC).
Findings in Regeneron
In circumstances where, at the time of responding to the first examination report, the Applicant had not previously indicated any desire to maintain the postponement of acceptance or to file a divisional application, the Assistant Commissioner did not consider that the attorney had made any error or omission in withdrawing the postponement. However, when a second examination report was issued and the Applicant instructed the attorney to file a response and a divisional application, the attorney's failure to reinstate the postponement, so as to allow additional time to file a divisional application after the response was filed, was considered an omission capable of enlivening s 202.
Accordingly, the following corrections were directed:
1. correction of the postponement period from "0" to "12" months;
2. correction of the date of acceptance of the parent application to the date the corrected postponement period expired;
3. correction of the late-filed divisional application to claim divisional status and antedating its filing date to the parent filing date.
In considering whether it was necessary to advertise the corrections, the Assistant Commissioner noted that allowing the divisional application could result in the Applicant claiming subject matter beyond the scope of the parent, which could impact third parties. Accordingly, the Assistant Commissioner decided to advertise the corrections.
What does Schrödinger's cat have to do with it?
In reaching their conclusion in relation to whether an error or omission had occurred, the Assistant Commissioner likened the situation to Schrödinger's cat:
Whilst reviewing this case I have come to the conclusion that whether or not an error has been made in the patent application is a bit like asking whether Schrödinger's cat is dead or alive. If one focuses solely on the actions of … the attorney … responsible for prosecuting the application, no error in the postponement setting on the application is revealed, whereas if one focuses more broadly on the intention and instructions from the applicant for the patent, an error in the setting of the postponement period in the patent application might be perceived.
These musings suggest that the Patent Office is willing to take a more pragmatic, big-picture approach to correcting errors and omissions made by attorneys that involves considering the applicant's intentions, rather than viewing the attorney's actions in isolation.
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