Court Decision Gives Some Respite for Otherwise Strict Section 71 Acceptance Deadline

In AbbVie Inc v The Commissioner of Patents [2026] NZHC 1140 the lack of time in which to hold a hearing after the applicant requested one 2-days before the section 71 deadline was found to constitute a delay due to the Commissioner, thereby making the applicant eligible for an extension of time.

Background:
Section 71 of the Patents Act 2013 has the effect that an application is voided if it is not in order for acceptance within 12-months from the issuance of the first examination report. The section 71 deadline is only extendable in accordance with the following provisions:

• Section 72, which allows an extension if an appeal of an Assistant Commissioner’s (AC’s) decision to the High Court is pending or possible on account of the 20-working day appeal period; or
• Section 230, which allows an extension for delays due to the Commissioner; or
• Regulation 147, which allows an extension where exceptional circumstances apply. This provision was not relevant for the appeal.

In addition to the section 71 deadline, section 67 provides for interim deadlines in which to make a substantive response to each adverse examination report. A 1-month extension of time is available for the interim deadlines, but the section 67 deadlines cannot extend the section 71 deadline. IPONZ generally sets the deadline for the first substantive response as 6-months from the issuance of the first examination report, with subsequent deadlines generally being the longer of the deadline for the first substantive response or 3-months from the issuance of the subsequent examination report.

In this case the first examination report issued on 11th January 2024, creating a section 67 interim deadline of 11th July 2024 and a section 71 deadline of 11th January 2025. The applicant used the 1-month extension of time for the initial and subsequent section 67 deadlines, with the result that their second substantive response was filed on 17th December 2024 – less than a month from the section 71 deadline. The examiner issued a third examination report on 21st January 2025 and, in order to account for the delay in issuing that report, provided an extension of time under section 230 thereby amending the section 71 deadline to 19th February 2025.

However, on 17th February 2025, without filing a substantive response to the third examination report, the applicant requested a hearing. In May 2025 the applicant filed its written submissions for the hearing and additionally filed specification and claim amendments. The AC’s decision issued on 14th August 2025. The AC acknowledged that the amendments would constitute a substantive response to the third examination report, but declined to allow them as they were filed after the section 71 deadline for which the AC found there to be no basis for further extension.

The Appeal:
In its appeal of the AC’s decision the applicant argued both that:

1. section 72(3) automatically extends the section 71 deadline to 20-working days after the AC’s decision; and
2. the AC should have granted a further extension under section 230.

The Judge found the applicant’s section 72(3) interpretation to be inconsistent with the plain meaning of the section, its legislative history and the Act’s emphasis on the timely progression of applications. The Judge found section 72 only applies where a decision of the AC has issued before the expiry of the section 71 deadline. While this means there is little flexibility in the section 71 deadline, the Judge noted that if an appeal is pending or is brought, then the court has discretion under section 72(2) to extend the section 71 deadline.

However, the Judge found that the AC should have granted a further extension under section 230. In the context of the wording of the third examination report the Judge found that the applicant was entitled to consider the filing of an appeal as an appropriate response. Notably, at [82] the Judge stated: 

“The third examination report effectively conveyed to AbbVie that the appropriate response was to request a hearing at which any objections would be considered. There was no suggestion in the third examination report that AbbVie should lodge a substantive report before requesting a hearing — unlike the first and second examination reports, the third examination report did not set a date for a response to the objections.” 

The Commissioner argued at the hearing that while the third examination report did not stipulate a section 67 deadline for response, it was implicit that the deadline was the section 71 deadline. However, the Judge declined to consider that on the basis that it was a new point which was not raised in written submissions.

From that basis the Judge further found that the inability to conduct the hearing before the expiry of the section 71 deadline was a delay due to the Commissioner for which the AC should have granted an extension of time under section 230. The parties were given 20-working days in which to file a joint memorandum on appropriate relief.

Concluding Remarks
It is not clear that the strictness of the section 71 deadline is required to satisfy the Act’s purposes of providing an efficient and effective patent system or that it is an appropriate criterion for the granting of a patent. The default and strictly interpreted 12-month time frame for the section 71 deadline has undoubtedly resulted in the demise of many applications having patentable subject matter. The Judge’s finding that the inability to conduct the hearing before the expiry of the section 71 deadline is a delay due to the Commissioner will be a welcome clarification of the reach of section 230.

However, the judgment also confirms that section 72 is of little practical value to applicants as it would be rare that within 12-months of the first examination report an impasse is reached, a hearing requested, held and decision issued. Consequently, affected applicants are left relying upon the discretion of High Court Judges under section 72(2).

It will be interesting to see whether the Commissioner appeals this decision. There seems to be grounds for alleging that the Judge erred at [82] in making the above noted findings and later declining to consider the Commissioner’s oral submission regarding the implicitness of the revised section 67 deadline. In making those findings the Judge gave preference to the wording of the examination report over the clear wording of the patent’s legislation which specifies that the section 67 deadlines cannot extend the section 71 deadline and that the applicant must make a substantive response to examination reports.

Authors: Quinn Miller and Jim Piper

//www.piperpat.com/news/article/court-decision-gives-some-respite-for-otherwise-strict-section-71-acceptanc