IPONZ Patents Examination Manual Practices Updated

IPONZ has updated its Patents Examination Manual practices by introducing sections on restoration and extensions of time in exceptional circumstances and amended its practice on claim overlap between parent and divisionals following recent Assistant Commissioner decisions.

Restoration
The guidance on restoration of patents or patent applications that became lapsed, abandoned or void due to failure to meet a deadline requires that the failure was unintentional, that the request is made within 12 months or if not was made without undue delay. The restoration application needs to be supported by a detailed statement on the circumstances leading to the failure and if relevant why the delay was not undue and supporting evidence in the form of a statutory declaration or affidavit. The statutory declarations or affidavits need to be from the person or persons most relevantly connected to the circumstances for the failure and those declarations must be consistent and plausible. Along with the payment of restoration fees, any outstanding fees need to be paid.

While missing a deadline can be construed as unintentional in the sense that it goes against the motivation to obtain or maintain a patent that is not sufficient. It needs to be unintentional in the sense of being accidental or inadvertent, and not on account of a change of mind or back-door attempt at obtaining an extension of time.

If awareness of the omission occurred more than 12 months after the due date undue delay is assessed in relation to when the patentee discovered or reasonably ought to have discovered that omission, within the context of status information being readily available online.

If an unrecorded assignment occurred before or after the lapse (etc) date, or if an assignment was recorded after the lapse date, then only the assignor can request restoration. If the assignment was recorded before the lapse date, then only the assignee can request restoration.

Where a prima facie case for restoration is established it will be published for opposition purposes and any person can oppose on the basis that the failure to meet the deadline was not unintentional or if relevant that there was undue delay. If a patent is restored, then it will be subject to the condition that a party who availed themselves of the invention or took definite steps towards so availing themselves during its period of lapse will be protected or compensated.

Extensions of Time in Exceptional Circumstances
The guidance on extensions of time in exceptional circumstances confirms that it is discretionary, subject to some exclusions and is only available where extension options under other regulation have been exhausted. A request for an extension of time on the basis of exceptional circumstances is not precluded by the time limit having already expired or the prior grant of such a request. The Commissioner also has the ability to proactively grant such extensions despite no application being made, with IPONZ’s allowing extensions during the early stages of the COVID-19 pandemic given as an example. Exceptional circumstances need to be unusual or out of the common run.

The request should specify the amount of extension required, exceptional circumstances leading to the need for an extension of time and be supported by evidence in the form of statutory declarations or affidavits.

Claim Overlap Betweem Parent and Divisional
The guidance on claim overlap between parent and divisional was updated to take into account two recent Assistant Commissioner decisions, namely: Oracle International Corporation [2021] NZIPOPAT 5 and Ganymed Pharmaceuticals GmbH [2021] NZIPOPAT 6.

Oracle clarified that ‘substantially the same’ means ‘essentially the same’, ‘the same but for minor unimportant details’, and/or ‘not substantially different’”. Having regard to the plain meaning of the words, the claims of the respective applications must be ‘for substantially the same matter' to trigger regulation 82.

Following Ganymed, a parent-divisional overlap objection may be overcome by:

• Providing a persuasive objection response, or
• Amendment of the pending application, or
• Amendment of the accepted application or granted patent, or
• Withdrawal of the accepted application, or surrender of the granted patent.

Author: Quinn Miller

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