Differences between Australian and New Zealand patent practice and law

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[author: Karen Bentley]

Despite their relatively small populations, the good health of the Australian and New Zealand economies means they both represent excellent markets and opportunities for companies from the United States, Europe and Asia. Moreover, the patenting process in both countries is relatively inexpensive and flexible. But there are some key differences that foreign applicants should be aware of in order to tailor their patent strategy in Australia and New Zealand.

Key differences

Perhaps the most significant difference from Australia (and for that matter most other jurisdictions) is that the New Zealand Patent Office does not examine for inventive step (obviousness). This is however a ground of opposition, so we advise applicants to give careful consideration to claim scope in relation to inventive step before the application is accepted.

The New Zealand Patent Office also only applies a local standard of novelty. This is perhaps less relevant now than what it used to be given internet availability of most information. But during revocation proceedings for example, particularly for older patents, it can be an important line of defence not available in any jurisdictions.

Australia is more generous in what it considers to be patentable subject matter, and importantly for those in the pharmaceutical industry, offers up to 5 years of extended patent term.

Changes on the horizon

Expect to see changes in practice, procedure and law in both countries. Important changes will come into law in Australia in April 2013. See An easy guide to Australia's new patent law under the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.

In New Zealand, a Patents Bill, which was read for the second time in parliament in September 2012 will change the local novelty standard to an absolute novelty standard and inventive step will be examinable. When enacted, this will ultimately bring New Zealand practice into closer alignment with Australian practice in some respects, although don’t expect anything too soon – the Bill was first introduced in 2008! And the second reading has introduced some potential “deal breakers”. We will provide an update as the Bill progresses. In the meantime, here’s a comparison of features of Australian and New Zealand practice as they stand today.

 

AUSTRALIA

 

NEW ZEALAND

FILING REQUIREMENTS

31 months

National phase deadline

31 months

Not required

Power of attorney

Not required

English

Filing language

English

Non-English applications can provide the translation 3 months post-entry

EXAMINATION

18 months after priority date

Publication

At acceptance

Within 6 months of the Patent Office issuing the direction to request examination

Examination requests

Automatic upon filing the application

Novelty

Inventive step (obviousness)

Unity

Fair basis (support)

Sufficiency and clarity

Patentable subject matter

Manner of manufacture

Grounds of examination

Novelty

Unity

Fair basis (support)

Sufficiency and clarity

Patentable subject matter Manner of manufacture

Absolute

Novelty standard

Local

Yes – complete application must be filed within 12 months of disclosure

Grace period

No

Allowable – as well as Swiss form claims

Methods of medical treatment

Not allowable – but Swiss form claims are

Allowable

Computer programs

Allowable

Yes – fees payable for claims beyond 20 at time of acceptance

Excess claims

No limitation on claim number

No

Prior art disclosure obligation

No

21 months from first report

Final acceptance deadlines

18 months from first report (discretionary extensions)

Within 3 months of advertisement of acceptance OR prior to parent lapsing

Divisional filing deadlines

Prior to acceptance or prior to parent lapsing

Yes

Post-acceptance amendments

Yes

 

OPPOSITION

 

Pre-grant opposition

Type

Pre-grant opposition

Novelty

Inventive step

Fair basis (support)

Sufficiency and clarity

Entitlement

Patentable subject matter

Manner of manufacture

Utility

Grounds of opposition

Novelty

Inventive step

Insufficiency

Not an invention (ie not a manner of manufacture

Entitlement

GENERAL

Yes

Signatory to Budapest Treaty

No

Yes – up to 5 years for pharmaceuticals in the medical field (excludes veterinary)

Extension of term for pharmaceuticals

No

Annually from 4 years

Renewals

4th, 7th, 10th and 13th years payable once allowed

 

 

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