A New Patents Act for New Zealand
New Zealand patent law is set for a major overhaul with the Patents Act 2013 receiving Royal Assent on 13 September 2013. While the commencement date of the new act is yet to be confirmed, it is likely to come into force one year from the date of assent, i.e. on 13 September 2014. The new Patents Act will replace the 60 year old existing legislation, and in doing so will better align New Zealand patent law with that in Australia and many other developed nations. With the passing of this new act, the New Zealand government has also given approval to implement a single application and examination process for New Zealand and Australian patent applications.
The existing New Zealand Patents Act 1953 has several outdated features, including local novelty, and examination for novelty only (and not inventive step). The new Patents Act will strengthen the criteria for granting a patent to ensure that patents are granted only for genuine innovations that are a ‘manner of manufacture’, are novel, non-obvious and useful. In addition the new act addresses the interests of the Maori in protecting their traditional knowledge.
A summary of some of the key provisions of the new Patents Act are:
- The ‘local novelty’ clause has been discarded. Currently, novelty and inventive step are assessed only against knowledge and publications available within New Zealand. With the new Patents Act, the prior art for assessment of novelty and inventive step will include information made public anywhere in the world.
- The examination of New Zealand patent applications will be expanded to include assessment of inventive step and utility. Currently in New Zealand, although obviousness is a ground for opposition or invalidity, patent applications are not examined on this basis.
- Maori knowledge will be recognized. The act goes some way towards addressing Maori concerns about the granting of patents for inventions derived from indigenous plants and animals or traditional knowledge. To achieve this, a Maori advisory committee will be appointed to advise the Commissioner of Patents.
- The new act provides additional options for a party to challenge an application or patent. In addition to pre-grant opposition, patents will be able to be challenged via pre-grant re-examination and post-grant re-examination. The re-examination process will be similar to that carried out under Australian law and presents a cost-effective way to challenge a patent.
- Specific exclusions from patentability include:
- Inventions contrary to public order or morality
- Human beings and biological processes for their generation.
- Therapeutic, surgical and diagnostic methods for the treatment of human beings
- Plant varieties
- Computer programs ‘as such’
Possibly the most controversial aspect of the new Patents Act has been in relation to patents for inventions incorporating software. This controversy has played a key part in the lengthy 5-year passage of the bill. Under the new Patents Act, software ‘as such’ will not be patentable. However, inventions that incorporate both software and other inventive elements should be patentable, if the contribution that the invention makes is judged to arise from an aspect of the invention other than the software, and provided the other tests for patentability are met.
Approval of a single trans-Tasman patent application
Following the announcement of the passing of the New Zealand Patents Act, Commerce Minister Craig Foss has announced that the New Zealand Government has given approval to implement a single application and single examination process for New Zealand and Australian patent applications. It should be noted, however, that it will still be possible to file applications separately in each country.
This trans-Tasman implementation plan will initially involve work sharing between Australian and New Zealand patent examiners, who would share examiners’ reports and searches for prior art.
The second stage will enable a single patent application to be filed for both Australia and New Zealand, which will result in a common filing date in both countries.
The third stage would involve patent applications common to Australia and New Zealand undergoing a single examination in either Australia or New Zealand, leading to separate decisions in both jurisdictions. Two separate and independent patents would ultimately be granted.
Potential benefits of this single trans-Tasman patent application and examination process include:
- Savings in patent prosecution costs by eliminating duplicate examinations and reducing administrative costs.
- A faster and more efficient examination process.
- Consistent examination resulting in more robust patent rights.
While the timetable for implementation of the single application and examination process is not clear, work sharing is expected to commence within about 6 months, with the single application process and the single examination process following some 1 to 2 years later, probably sequentially.
If you have any specific enquiries about the legislative changes in New Zealand or the single trans-Tasman patent application, please contact Paul Jones or Debra Tulloch.
This article was written by Rosemary Manhire-Heath.