The “Advancement Patent”: Second-tier patent system on the horizon in New Zealand?

Labelled the “Advancement Patent”, the Bill has been drafted taking into account experience from other countries, in particular Australia’s innovation patent system, which is currently undergoing its own scrutiny.

An “advancement step”

In particular, the Bill outlines that the Advancement Patent would be easier and less costly to obtain than a standard patent, and would require a lower patentability threshold than the “inventive step” required for a standard patent i.e. it would involve an “advancement step” (analogous to an innovative step in Australia).

A claim would involve an advancement step if:

1. the advancement is distinctly different from what would be known before the advancement by a person who is:

1. a skilled worker in the field, but
2. has only common general knowledge of the art, having regard to any matter which forms part of the prior art base, and of other related technology, and common general knowledge in other jurisdictions generally; and

2. the advancement makes a useful improvement to the working of the thing referred to in the claim.

Furthermore, the Bill proposes to define that a patentable advancement “involves less advancement than is required for an inventive step”, clearly legislating that the patentability tests between a standard patent and Advancement Patent are different.

As such, the proposed definition of an advancement step differs from the Australian test for innovative step and takes into account the test for the grant of second-tier patents in Denmark, as well as recommendations made during the initial review of Australia’s innovation patent system by the Intellectual Property Advisory Council (Aust) back in May 2015.

Other points

The remaining main features of the Bill essentially mirror those of Australia’s innovation patent system, with the only notable difference being a patent term of 10 years (as opposed to 8 years in Australia). Otherwise, the application process for an Advancement Patent would be very similar, requiring examination and certification for it to be enforceable.

The introduction of the Bill is a welcome development in the current climate of scrutiny surrounding Australia’s own second tier patent system. It will likely take a year before this Bill is debated in Parliament, by which time we may have more certainty around the future of the Australian innovation patent. Should both systems become available, it would present applicants with the opportunity to secure second-tier patent rights in both Australia and New Zealand.