I continue my series of articles on the topic of New Zealand Patent Oppositions. My earlier articles as listed at the bottom of this article, describe the opposition regime under the existing legislation, the Patents Act 1953 (the ‘Old Act’).
Under the new Patents Act 2013 (the ‘New Act’), two new options become available for third parties to assert prior art to the New Zealand Patent Office. These include re-examination and third party assertions during examination. Both pre-grant and post grant opposition will be retained, albeit in a modified form much more generous to opponents.
New Zealand Patents Act 2013
The relevant provisions of the New Zealand Patents Act 2013 come into effect on 13 September 2014.
The Old Act continues to apply to all complete applications, national phase entries and convention applications filed before 13 September 2014, including applications divided therefrom.
The New Act will apply to all complete applications, national phase entries and convention applications filed on or after 13 September 2014, with the exception of applications divided from an Old Act case, which remain under the Old Act.
Oppositions under the New Act
The New Act retains both pre-grant opposition and post-grant revocation. The grounds for both are the same and are broadened in scope in comparison to those available under the Old Act, particularly with respect to assessment of prior art. The prior art base is expanded to include published documents and use anywhere in the world (absolute novelty). New Act opposition also allows the New Zealand Patent Office to make a full assessment as to whether the inventions is obvious, instead of only empowering the New Zealand Patent Office to refuse or revoke a case which the evidence proved to be clearly obvious. A ‘whole of contents’ novelty assessment is also available under the New Act.
Under the New Act, any person may oppose. Under the Old Act, only an ‘interested person’ could oppose which placed an additional burden on potential opponents to ensure they had the necessary interest and to provide evidence in certain cases.
Formerly, post-grant revocation was limited to 12 months from grant. Although I have not yet seen the implementing regulations, it is understood that post-grant revocation will no longer be so time constrained.
These changes mean a greater chance of success for potential opponents making the opposition process more attractive to potential opponents.
Under the New Act, any person may request re-examination of an accepted (allowed) or granted patent. For New Act cases, the grounds are the same as for opposition.
There is a substantial difference between opposition and re-examination. In re-examination, only the applicant/patentee is a party to the proceeding. The ‘opponent’ under re-examination does not become party to the proceeding and thus is only able to fire a single shot in attacking the patent.
Re-examination can be filed at any time (except if court proceedings or an opposition is underway). Thus, the opponent has an unlimited amount of time to prepare and perfect its case before firing its single shot.
Because there are various different actions which can be brought before the Patent Office, the Patent Office is not required to reconsider any issues which have been previously raised. Thus, the Patent Office may refuse to re-examine or to entertain a post-grant revocation action on issues which have already been raised during earlier proceedings such as a pre-grant opposition or an earlier re-examination. Thus, the opponent cannot have multiple bites at the same cherry. (However, this bar may not apply if the earlier proceeding occurred under the Old Act.)
For this reason, an opponent who delays in launching its action (whether by pre-grant opposition, post-grant revocation or re-examination) might be precluded from arguing its best case if another opponent has unsuccessfully raised the same issue before them.
Re-examination or post-grant revocation cannot delay court proceedings in respect of the patent.
Third Party Assertions
During pendency of the application, any person may lodge assertions and prior art at the Patent Office relating to the grounds of novelty and inventive step.
A third party assertion may be useful in a case where the prior art is a clear knock-out or the asserter has limited funds. The downside of making a third party assertion is that it warns the applicant of another party’s interest in the application. The applicant can then file a divisional application, keeping their options open for claim broadening or claiming of a different invention.
What about Old Act Cases?
For cases filed under the Old Act, the available options are a hybrid of both the good and bad features of the new and old regimes.