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Modernisation of New Zealand Patent Law

Date: 22 October 2013
Author: John Landells
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A new Patents Act 2013 was introduced into New Zealand by Royal Assent on 13 September 2013. The Patents Act 2013 provides a major update and modernisation of the previous Patents Act 1953 and significantly raises the threshold for patentability in New Zealand. Key provisions of the New Zealand Patents Act 2013 are discussed below.
 

Background

The New Zealand Patents Act 2013 has been making its way through Parliament for a number of years. A final delay in introducing the new Act involved concerns over a provision to broadly exclude computer software, which has since been amended to narrow the exclusion to ‘computer software as such’ to accord with European practice. 
 

Implementation

The New Zealand Patents Act 2013 is set to come into full force on 13 September 2014. The provisions of the new Act will not apply to patent applications that have been filed in New Zealand before 13 September 2014. The higher threshold provisions of the new Act will apply to all patent applications filed in New Zealand on or after 13 September 2014. For PCT originating applications, national phase applications will need to be filed at the Intellectual Property Office of New Zealand (IPONZ) before 13 September 2014 to obtain examination and grant under the lower threshold provisions of the previous Patents Act 1953.
 
The Patents Regulations 2013 accompanying the new Act have not yet been released and are not anticipated to be until at least July 2014. A discussion and consultation paper is expected to be released by IPONZ in November 2013 outlining the key procedures and timeframes proposed in the Regulations.
 

Key Provisions

A brief summary of key provisions in the Patents Act 2013 are provided as follows:
  • absolute novelty (previously local novelty), which includes information provided in prior filed (later published) patent specifications
  • request for examination required (previously automatic examination) and includes examination based on novelty, inventive step and utility (inventive step and utility previously not examined), with higher standard being on ‘balance of probabilities’ (previously ‘benefit of doubt’) 
  • an invention must be ‘useful’ by having ‘a specific, substantial and credible utility’
  • complete specifications must disclose ‘best method’ and the invention in a ‘clear and complete enough manner’ to be performed by a person skilled in the art
  • 12-month grace period provided for unauthorised disclosures or public working of invention for purpose of reasonably necessary trial only
  • 6-month grace period provided for disclosures at prescribed exhibitions
  • claims to be ‘clear and concise’ and ‘supported by matter’ disclosed in the complete specification
  • exclusion from patentability
      • contrary to public order or morality (e.g. cloning of human beings, commercial use of human embryos, modifying germ line genetic identity of animals likely to cause suffering without substantial medical benefit)
      • human beings and biological processes for their generation
      • methods of medical treatment of humans by surgery or therapy
      • methods of diagnosis practiced on humans
      • ‘computer software as such’ (in line with UK Aerotel decision essentially still allowing for patenting of embedded software)
  • 18 month publication of patent specifications
  • provide online availability and publication of Examiner’s reports and communications
  • third party submissions available as ex parte action against novelty and inventive step grounds after 18 month publication and before acceptance
  • divisional applications available if filed before acceptance
  • re-examinations available on all grounds between post-acceptance/pre-grant period for patent applications and at any stage after grant for granted patents
  • post-acceptance/pre-grant opposition available on all grounds
  • revocation of granted patents available before Patent Office or Court
  • no extensions of patent term are available
  • restorations available based on unintentional lapse providing no undue delay in requesting restoration once unintentional lapse discovered
  • contributory infringement provisions available
  • exclusions to infringement provided for spring-boarding (regulatory approval), prior use and experimental research

 

What you need to know

  • The New Zealand Patents Act 2013 will come into full force on 13 September 2014.
  • The new Act provides a major update and modernisation of patent law and practice in New Zealand and significantly raises the threshold for patentability.
  • To obtain examination and grant under the lower threshold provisions of the old Patents Act 1953, patent applications (including national phase filings for PCT originating applications) will need to be filed in New Zealand before 13 September 2014. 
  • The Patents Regulations 2013 accompanying the new Act have not yet been released although a discussion and consultation paper released by IPONZ in November 2013 outlining proposed key procedures and timeframes suggests no surprising provisions.
Tags:  New Zealand, Patent
 
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