Thirty years on: Developments in NZ patent law

Technology

One of the biggest changes over the last thirty years has got to be our use of technology.

Back in 1994, I had a single cathode ray tube (CRT) screen connected to a mainframe in a server room. The 'computer' was used only for accessing the firm's electronic docketing and record system. That system had been written in-house and was pretty state of the art back then.

There were no cell phones, no smart phones, no tablets. There was internet access from a single stand-alone PC running Mosaic. We even had a telex machine. We eventually encouraged clients who still sent us telexes to send urgent instructions by fax instead.

Today, a bewildering selection of powerful mobile devices, combined with secure, web-based technology, means that our attorneys are able to work from virtually anywhere.

Legislative changes

When I started in the profession, we were advising clients on registered New Zealand intellectual property rights under the Patents Act 1953, the Trade Marks Act 1953, and the Designs Act 1953. Each piece of legislation was modelled on British legislation that had itself been repealed years earlier. On a daily basis, we worked with British case law that our friends in the United Kingdom had long forgotten about.

The sole survivor of this trio is the Designs Act 1953. The remaining two Acts have been replaced by the Patents Act 2013 and the Trade Marks Act 2002, which better reflect our unique situation in New Zealand.

On the one hand, we have obligations under international treaties to provide a coherent intellectual property regime that provides monopoly rights of limited duration to an identified author or creator. On the other, we have obligations under Te Tiriti o Waitangi (The Treaty of Waitangi) to recognise mātauranga Māori (Māori knowledge). There is an expectation that mātauranga Māori is regulated by tikanga (procedures), informed by a set of values, and handed down from generation to generation. These two sets of obligations can be hard to reconcile.

Over the years, we have kept up to date with a diverse range of other intellectual property rights arising out of new plant varieties, circuit layouts, geographical indications, and copyright.

Patentable subject matter

A patentable invention must be a ‘manner of manufacture’. What is and isn’t patentable subject matter is defined by case law and decisions of the Commissioner of Patents.

It is great to see a gradual expansion of what qualifies as a manner of manufacture. Inventors are still coming up with new types of inventions arising from new technology, and the law is adapting to keep up. Not many subject-matter decisions involve the New Zealand courts, so most guidance on patent-eligible subject matter comes from Patent Office decisions.

In the computer software area, for example, the Hughes Aircraft Company [1995] (http://www.nzlii.org/cgi-bin/sinodisp/nz/cases/NZIPOPAT/1995/3.html) Patent Office decision is acknowledged as a landmark case in the treatment of computer-related inventions. The New Zealand Hearing Officer adopted the test for eligible subject matter as whether or not the claimed invention involved ‘the production of some commercially useful effect’.

The Patents Act 2013 placed some restrictions on which inventions qualify as a manner of manufacture. Computer programs ‘as such’ are no longer patentable. In other words, the mere existence of a computer program or software code does not make an invention patentable. We adopted wording very similar to the equivalent United Kingdom legislation so that we could use their case law to help us work out whether an invention is a computer program ‘as such’.

The Patents Act 2013 also introduced some policy-based exclusions to patentability, including human beings, biological processes for their generation, methods of treatment of humans, and methods of diagnosis practiced on human beings. These exclusions are said to stem from policy considerations. More specifically, it is not in the public interest to grant patents in this subject area.

The convergence of New Zealand and Australia

During these 30 years and prior, we have seen a strengthening of the economic and trading relationship between New Zealand and Australia. As someone who has lived in both countries, I can see the value of providing the citizens of each country the freedom to live and work in either place.

In my early years working in New Zealand, we still had separate professions. You were either a New Zealand patent attorney working in New Zealand, or an Australian patent attorney working in Australia. Then along came the Closer Economic Relations (CER) agreement (1983), allowing most services to be traded between the countries free of restriction.

As a consequence of CER, the Trans-Tasman Mutual Recognition Act 1997 and the equivalent legislation in Australia recognized the role of patent attorney in each country as equivalent occupations. Registered patent attorneys in New Zealand could now apply for registration in Australia and vice versa. There was no need to requalify in either country. You could just ‘waive in’ based on your existing qualification.

Building on CER, New Zealand and Australia committed to a process called the Single Economic Market (SEM) agenda in 2004. The intention was to create a seamless trans-Tasman business environment.

As a consequence of SEM, the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016 established a joint registration regime between New Zealand and Australia for patent attorneys. The Act abolished the respective Australian and New Zealand patent attorney qualifications. What emerged was a Trans-Tasman IP attorneys register, which records the names of all attorneys licenced to provide patent advice in New Zealand and Australia.

Today, we effectively have a single market, with many firms having a physical presence in both New Zealand and Australia. I wouldn’t call it a completely seamless trans-Tasman business environment. There are still a few compliance costs arising from operating businesses in both countries, but it is certainly easier to manage now than it would have been 30 years ago.

What now?

It is hard to predict what the profession will look like in another 30 years. A lot will depend on the types of inventions innovators come up with, any further changes to the legislative framework we operate under, and the technology we use to help us advise our clients. It is likely that none of this will even remotely resemble what we have today.

Do you have any questions on NZ intellectual property law? Ask Matt Adams.