[The IPKat] Important changes to New Zealand divisional patent practice

[Claire Gregg]

Important changes to New Zealand divisional patent practice

 Dr Claire Gregg Saturday, June 27, 2026 - #patents, Claire Gregg, divisionals, legislative reform, New Zealand, OzKat

As of 5 June 2026, the validity of divisional applications filed under the New Zealand Patents Act 1953 (1953 Act) will be assessed according to the higher validity standards of the Patents Act 2013 (2013 Act). This change, implemented by amendment to the 2013 Act, is intended to ensure that applicants can no longer file unlimited divisionals with effective filing dates before 13 September 2014 that are subject to significantly lower standards of novelty, inventive step, and disclosure.

New Zealand's double standard

Applications with an effective filing date before 13 September 2014 are subject to the 1953 Act, whereas patent applications with an effective filing date on or after 13 September 2014 are subject to the 2013 Act. Key differences in the validity standards between the 1953 and 2013 Acts include: 

Validity ground	1953 Act	2013 Act
Novelty	Local prior art base	Worldwide prior art base
Inventive step	Local prior art base	Worldwide prior art base
	Not assessed during examination	Assessed during examination
Disclosure	Claims must be fairly based on the matter disclosed in the specification	Claims must be supported by the matter disclosed in the complete specification
	Specification must particularly describe the invention and the method by which it is to be performed	Specification must disclose the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art

The updated standard for 1953 Act divisionals will apply during examination, re-examination, opposition and revocation proceedings. However, the updated standard will only apply to 1953 Act divisionals filed after commencement of the amended legislation on 5 June 2026.

Prior use has also been removed as a defence to infringement of 2013 Act divisionals.

Same, same but different

Some aspects of 1953 Act divisional application practice will remain the same. For example, it will remain possible to file sequential divisionals of 1953 Act applications without limitation. By contrast, all 2013 Act applications (including divisional applications) are subject to a five-year deadline from the effective filing date to request examination, a consequence of which is that all divisionals must be filed, and their examination requested, within five years of the filing date of the ultimate parent application.

The priority test for 1953 Act divisionals will remain a fair basis test, as opposed to a support test under the 2013 Act. However, the internal support and sufficiency tests for 1953 Act divisionals may present problems for applicants. In particular, the absence of support and sufficiency cannot effectively be rectified in a 1953 Act divisional, as any matter added to the divisional will preclude the application being antedated to the filing date of the parent application and give rise to poisonous priority.

 

Divisional Kats

Final thoughts

These changes mean that all divisional applications filed on or after 5 June 2026 will be assessed under the 2013 Act validity standards, even if they have an effective filing date before 13 September 2014. However, applicants will still be able to file sequential divisionals from 1953 Act applications without limitation. This approach is similar to the dual system in Australia, where applications with an examination request date on or after 15 April 2013 (including divisionals with an effective filing date before this date) are subject to a higher standard of validity than their pre-15 April 2013 counterparts.

It will be interesting to see whether the change in validity standards for 1953 Act divisionals will have any substantial impact on patenting strategies and patentability. In particular, it is likely that the majority of applications filed in New Zealand over the last 20 years were drafted with higher validity standards in mind, given the standards applied in other major jurisdictions during that time.

 

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