Steps to take before the patent law changes in New Zealand
As outlined in our previous article, there is a new Patents Act coming into force in New Zealand on 13 September 2014, which will make it harder to secure patent protection in New Zealand. Some of the key changes are outlined below.
Importantly, patent applications filed in New Zealand before 13 September 2014 will be governed by the old Patents Act. Therefore, we recommend that, for any appropriate cases, consideration is given to entering the national phase in New Zealand or filing a New Zealand patent application (convention or non-convention) on or before 12 September 2014.
Please note that divisional applications will be governed by the law that is applicable to the parent application (or grandparent application). So provided the parent or grandparent application was filed under the old Act, that Act will apply to divisional applications filed after the commencement of the new Act, so long as they include (at the time of filing) a request for antedating to the date of the parent application.
Some of the key changes introduced by the new Act include:
• a requirement to request examination, rather than it happening automatically;
• tougher examination of patent applications, including examination for inventive step as well as novelty;
• abolition of local novelty in favour of world-wide novelty;
• tighter examination deadlines and a 12 month acceptance deadline from the date of the first examination report;
• specific subject matter exclusions;
• recognition of traditional Maori knowledge; and
• a restriction on the period in which a divisional application can be filed (5 years from the effective filing date of the parent or grandparent application).
The new Act will also introduce annual renewal fees from the fourth anniversary of the filing date, as opposed to the current arrangements where renewal fees are due after grant 4, 7, 10 and 13 years from the filing date. In certain circumstances there are considerable cost savings to be made by paying renewal fees early under the old Act.
Remember, to ensure that your patent application is governed by the old Patents Act it is necessary to file your application in New Zealand or file a request for national phase entry in New Zealand on or before 12 September 2014.
If you have any specific enquiries about the legislative changes in New Zealand, or require more information or assistance, please contact Paul Jones or Debra Tulloch.
This article was written by Debra Tulloch.