New Zealand Passes Landmark Patent Law Reform

by K&L Gates LLP
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Summary
Following on from recent patent law changes in the U.S. and Australia, New Zealand recently passed the Patents Act 2013 (Act). With the passing of this Act, New Zealand patent law has been overhauled and modernised so that it is now consistent with the patent laws of other developed countries.

At this stage, the new Act will apply to all applications having a filing date on or after 13 September 2014. The current legislation will continue to apply to all applications having a filing date before 13 September 2014.

Amongst the many new provisions, is a provision which excludes from patentability alleged inventions where the actual contribution to the art lies solely in it being a computer program.

Key Changes
The Act introduces the following key changes to the current legislation.

  • The prior art base for assessment of novelty and inventive step is expanded to include information made publicly available anywhere in the world (ie an "absolute novelty" standard). 
  • Introduction of "whole of contents novelty" where unpublished New Zealand patent applications with an earlier priority date form part of the prior art base for assessing novelty. 
  • Examination will be expanded to include an assessment of inventive step – currently, inventive step is not considered during examination. 
  • Requirement that inventions be "useful", which is defined as possessing "a specific, credible and substantial utility". 
  • Requirement that the claims be "fairly based" on the description will be replaced with the requirement that the claims be "supported by" the description. 
  • Specifications must describe inventions "in a manner that is clear enough and complete enough" for them to be performed by a person skilled in the art. This provision, together with the above noted support requirement, will likely align the scope of protection afforded by a New Zealand patent with that of corresponding patents in Europe, Australia and the U.S., particularly in the chemical and biotechnological fields. 
  • The "benefit of the doubt" approach is replaced with a balance of probabilities standard when deciding whether or not a patent is to be granted. 
  • Patent applications will be published 18 months from the earliest priority date. 
  • Third party observations may be lodged relating to issues of novelty and inventive step at any time between publication and advertisement of acceptance. 
  • Any person may apply to the Patent Office for revocation of a patent at any time throughout the life of the patent via re-examination. Revocation may be sought on all available grounds of invalidity. 
  • Introduction of an exemption from infringement for experimental activities, including determining how the invention works, its scope, or the validity of the claims, or seeking an improvement of the invention.
  • Infringement is defined as the unauthorised doing of anything that the patentee has the exclusive right to do and now includes contributory/induced infringement. 
  • Introduction of a grace period of 12 months where the disclosure was without the consent of the inventor. 
  • The descriptive requirements for a microorganism are able to be met by depositing a specimen in a recognised depositary. 
  • Applicants must now request that examination be performed. Currently, patent applications are examined automatically. 
  • European-style exclusions from patentability which include human beings and biological processes for their generation, inventions contrary to public order or morality, methods of treatment of human beings by surgery or therapy, methods of diagnosis practiced on human beings, plant varieties and computer programs as such.

Many of these provisions will be familiar to foreign applicants because they are intended to align New Zealand patent law with the laws of its major trading partners, such as Australia, the U.S. and Europe.

Exclusion of Computer Programs from Patentability
Undoubtedly, the most controversial provision of the new law relates to the exclusion from patentability of "a computer program as such". A claim will relate to a computer program as such if "the actual contribution made by the alleged invention lies solely in it being a computer program". The practical effect of this exclusion is that computer programs that involve only routine programming steps are unlikely to be considered patentable. Alternatively, a computer program that improves the way a product works should be patentable as a new process, for example, an improved way of operating a washing machine using a computer program embedded in a chip for insertion into the washing machine.

Given that similar provisions are present in the law of the European Patent Convention, it is likely that the New Zealand Patent Office and Courts will draw on European jurisprudence when interpreting the meaning of "a computer program as such".

Preparing for Commencement of the New Law
Applicants wishing to have new applications considered under the current, lower patentability standards, will need to ensure that any such applications are filed before 13 September 2014.

There are circumstances in which the Act or substantive parts thereof may commence prior to 13 September 2014. In addition, further changes to the New Zealand patent system are likely to be the subject of Patent Regulations which are not yet available. We will monitor further developments and keep you promptly informed. K&L Gates is registered to practice before the New Zealand Patent Office. Please contact us if you require specific advice or further information regarding the upcoming changes to New Zealand patent law.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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