Patent applicant and its attorneys acted quickly upon realizing the mistake, judge finds
The High Court recently overturned a ruling by the assistant commissioner of patents and permitted a correction of a procedural error in a patent application process.
In November 2016, Australian company NXT Building System Pty Ltd filed a patent application in New Zealand for six inventions. NXT intended to split the filing into six separate applications – one parent application and five divisional applications – to ensure the protection of all the inventions.
However, due to a series of errors by its attorneys, NXT failed to file the necessary divisional applications before the acceptance of the parent application in March 2022. This oversight led to a loss of patent protection for five of the inventions.
NXT applied to correct this error under s. 202 of the Patents Act 2013, which allowed the correction of errors or omissions in patent applications.
The assistant commissioner refused to correct the error on the basis that such a correction would bypass the requirement in regulation 83(1) of the Patents Regulations 2014 that a request for postponement of acceptance should precede the acceptance of the application.
This refusal prompted NXT to appeal.
Patent correction permitted
In NXT Building System Pty Ltd v Commissioner of Patents, [2024] NZHC 2141, the High Court of New Zealand (Wellington Registry) allowed NXT’s appeal and reversed the assistant commissioner’s decision.
The court directed the assistant commissioner to publish the proposed correction of the patent application and to amend the patents register to reflect the new acceptance date if unopposed. The court also extended the time for NXT to request examination of the divisional applications.
The assistant commissioner incorrectly interpreted the law, the court ruled. Section 202 should be interpreted broadly to allow for the correction of errors that impede the efficient and effective operation of the patent system, the court explained.
The Patents Act aims to promote innovation and economic growth while balancing the interests of inventors and the public, the court stressed. In this case, the assistant commissioner failed to properly weigh the effectiveness of the patent system, the consequences of correction for the patent holder, and the interests of third parties, the court found.
The assistant commissioner inappropriately made NXT’s technical non-compliance with the requirement in regulation 83(1) a decisive factor, the court held. NXT had always intended to divide the application and only failed to do so due to a procedural error by its attorneys, who acted swiftly to correct the mistake upon discovery, the court noted.
Correcting the error would not be prejudicial to third parties because NXT publicly disclosed the invention and because publishing the correction would mitigate any potential prejudice, the court said.
