Patent went void on procedural grounds but High Court found a critical flaw in the call
The High Court has revived AbbVie Inc’s rheumatoid arthritis drug patent application, ruling the assistant commissioner of patents wrongly refused to extend a procedural deadline.
In AbbVie Inc v The Commissioner of Patents [2026] NZHC 1140, Heine J ruled that the assistant commissioner erred in refusing to extend the prescribed period under s 230 of the Patents Act 2013, although the court rejected AbbVie’s broader argument that s 72 of the Act delivers an automatic extension.
The American pharmaceutical company, which operates a New Zealand branch in Wellington, requested examination of patent application 781297 on 15 October 2021. The application covers a chemical compound for an oral extended-release tablet treating rheumatoid arthritis. The first examination report issued on 11 January 2024, setting 11 January 2025 as the s 71 prescribed period deadline.
AbbVie responded to the first and second examination reports within the available extensions. The third examination report, issued on 21 January 2025, departed from the earlier reports. It set no s 67 response deadline, extended the s 71 deadline to 19 February 2025, and advised AbbVie that it had a right to request a hearing on any objections in the report.
Two days before that deadline, AbbVie lodged a hearing request. The hearing proceeded on 22 May 2025 – three months after the prescribed period expired. The assistant commissioner subsequently declared the application void, finding that AbbVie had attempted to use the hearing procedure to put the application in order in place of the examination process.
On appeal, Heine J first addressed AbbVie’s s 72 argument. AbbVie contended that s 72(3) automatically extends the prescribed period where an applicant requests a hearing within time but the decision issues later. The court disagreed, holding that s 72 applies only where a commissioner’s decision has issued before the prescribed period expires. Heine J found AbbVie’s reading inconsistent with the plain text, the legislative history, and the Act’s emphasis on strict timeframes. The judge noted that absent extension under s 230, the Act imposes a hard time limit, with s 71(1) requiring applicants to take a higher-order step to make sure the listed matters receive attention.
However, the judge sided with AbbVie on s 230. That provision lets the commissioner extend time limits where something fails to occur in time because of a delay by the commissioner. Heine J rejected the commissioner’s criticisms that AbbVie failed to prosecute the application diligently and prudently, finding no such obligation exists in the Act.
The court accepted that the third examination report effectively directed AbbVie to request a hearing rather than file a substantive response. Heine J said AbbVie could properly rely on what the third examination report told it was the appropriate next step. The hearing’s scheduling outside the prescribed period – which the judge accepted occurred for understandable reasons given the timeframes involved – constituted a delay attributable to the commissioner.
Heine J held the assistant commissioner erred whether the appeal proceeded by rehearing or against discretion, since the assistant commissioner failed to take account of a relevant consideration – the terms of the third examination report – and the decision was plainly wrong.
The court allowed the appeal and directed the parties to confer on relief, filing a joint memorandum within 20 working days. The judge made no costs order, both parties having achieved a measure of success.
