Introducing … New Zealand’s Patents Act 2013

by FPA Patent Attorneys
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It has been a long time coming, but New Zealand finally has a new Patents Act. The New Zealand Patents Bill 2008 received its third and final reading in the New Zealand parliament on 28 August 2013 and will soon receive royal assent, becoming law one year later. The new Act will apply to convention applications and PCT national phase applications filed in New Zealand after the commencement date.

Importantly, the key changes will bring the New Zealand patent law in substantial conformity with Australian patent law as amended by the “Raising the Bar” Act earlier this year. Australia and New Zealand are similar countries when it comes to population characteristics, wealth distribution and cultures. Accordingly, a single commercialisation strategy is usually suitable for both markets. Now, with the alignment of the patent law, those commercialisation strategies can be developed on the basis of a more aligned and consistent patent monopoly.

Summary of key changes

A major and very well publicised change is that “computer programs as such” will no longer be patentable in New Zealand. The patentability ban on computer programs will only be a partial one (see our earlier article NZ clarifies proposed ban on software patents). Less well publicised is the fact that the new Act will bar the patenting of plants and plant varieties, although plant varieties may still be protected under the Plant Variety Rights Act. Methods of medical treatment are now explicitly excluded from patentability, but can still be pursued in New Zealand as ‘Swiss form” versions.

Despite these differences in subject matter exclusion, the substantial conformity between New Zealand and Australia will benefit those seeking simultaneous patent protection in both countries. 

(Highlighted cells indicate substantial similarities)

 

New Zealand

Australia

 

Patents Act 1953

Patents Act 2013

Patents Act 1990 (post “Raising the Bar”)

Novelty standards

Local novelty

Absolute novelty

Absolute novelty

Conflicting applications

Prior claiming

‘Whole of contents’

novelty only assessment based on whole of specification

‘Whole of contents’

novelty only assessment based on whole of specification

Grounds of examination

Novelty

Novelty, obviousness, utility

Novelty, obviousness, utility

Examination

Automatic

Must be requested

Must be requested

Patentability threshold

Applicants given benefit of the doubt

Balance of probabilities

Balance of probabilities

Utility requirement

None

Specific, credible, and substantial use

Specific, credible, and substantial use

Support requirements

Fairly based on matter disclosed in specification

Supported by matter disclosed in specification

Supported by matter disclosed in specification

Infringement exemption

None

Experimental use exemption

Experimental use exemption

Exclusion from patentability

Medical treatment methods (via case law)

  • Medical treatment methods (via legislation)
  • Human beings, and biological processes for their generation
  • Plant varieties
  • Computer programs as such

 

Human beings, and biological processes for their generation

Third party challenges before the Commissioner

  • Pre-grant opposition
  • time-limited post-grant revocation

 

  • pre-grant opposition
  • pre and post-grant re-examination,
  • non-time-limited post-grant revocation

 

  • pre-grant opposition
  • pre- and post-grant re-examination

 

Publication of specification

At acceptance

18 months after filing

18 months after filing

Maintenance fee before acceptance

Not required

Required

Required

  • Novelty standards – The relevant prior art base will expand from documents and acts made public within New Zealand to documents and acts made public anywhere in the world1. Practically most documents were accessible in New Zealand via the Internet, so we expect little impact on claim scope for most cases. Where this change will be relevant is in relation to public acts done outside of New Zealand.
  • Inventive step – Inventive step (obviousness) has always been a ground of opposition/revocation, yet was not a ground of examination. For all intents and purposes, most patent applicants sought to align the scope of their claims across jurisdictions, and considered the inventiveness of the claims in light of the risk of an inventive step challenge. So again, we do not see a big impact of this now being assessed at examination. In fact, given the relative speed of the New Zealand patent office, in examining cases, New Zealand may serve as one of the first opinions on inventive step beyond the international examination reports.
  • Conflicting applications - When dealing with conflicting applications, the narrower “prior claiming” consideration will be replaced by the wider consideration of “whole of contents”2. This change expands the prior art base for novelty to the whole contents of earlier-filed but later published New Zealand applications.
  • Utility requirements – Under the new Act, a patentable invention will now be examined for having specific, credible, and substantial utility3. This was also recently introduced to the Australian Patents Act, and is derived from US utility standards. This change is likely to have a greater impact on gene patents and the like, where speculative claiming failed to ascribe a certain use to the gene product. If your patent is drafted to meet US and EP standards however, it should not be problematic to meet this requirement in New Zealand.
  • Support requirements - Claims will no longer be required to be “fairly based”, but to be “supported” by the matter disclosed in the specification, a requirement borrowed from UK patent legislation which requires the scope of claims not to exceed what is justified by the disclosure.  A similar requirement was also recently introduced to the Australian Patents Act. We expect that the new support requirements will result in New Zealand claims being of more restricted scope, whereas previous fair basis requirements saw New Zealand (and Australian) claims being broader than their US and EP counterparts.
  • Patentability exclusion - Case law has established that methods of medical treatment are not a manner of manufacture and hence unpatentable. This patentability exclusion will be codified in the new Act4. Further exclusions added to the new Act include plant varieties5, and computer programs as such6. Human beings and biological processes for their generation7, while previously not being patentable under other grounds, are now explicitly excluded.
  • New examination practice - Examination will no longer be automatic. A separate request for examination is to be filed, either voluntarily by the applicant or when directed by the Commissioner8.
  • Challenging patent grant - In addition to pre-grant opposition, patents can soon be challenged via pre-grant re-examination and post-grant re-examination9. Re-examination is similar to the re-examination process available under Australian law, and offers third parties a cost effective way to challenge the claims of a patent. Patents granted under the 1953 Act can be the subject of re-examination, although only on the grounds on which they were originally able to be examined on. Inventive step for example will not be a ground of re-examination for 1953 Act cases. Inter-partes post-grant revocation before the Commissioner will continue to exist, but the previous 12-month time limit for initiating such an action will be removed.10 This also offers third parties a more cost effective option, as previously, revocation of a patent in force for more than a year could only be revoked by the High Court.
  • Patentability threshold - The standard of proof that an applicant has met the patentability threshold will be shifted from giving the applicants the benefit of the doubt to the Commissioner’s satisfaction “on balance of probabilities”.11 This standard will be applied throughout the life of the patent.
  • Infringement exemption – There will be no infringement for doing an act for experimental purposes such as determining how the invention works, determining the scope of the invention, determining the validity of the claims and seeking an improvement of the invention12.
  • Maintenance fee - Maintenance fees will now be payable to keep a patent application pending13, whereas they were previously only payable upon grant.

The changes to the New Zealand patent law should not result in needing to change drafting and prosecution practices. As New Zealand has sought to align with the new Australian patent law and laws in other key jurisdictions, an application drafted to meet the EP and US requirements should not hit any road blocks in New Zealand.

1 Clause 8(1)

2 Clause 8(2)

3 Clause 10

4 Clauses 15(2) and (3)

5 Clause 15(4) and plant varieties may be protected under the Plant Variety Rights Act

6 Clauses 10A and 15(3A)

7 Clause 15(1)

8 Clause 59B

9 Clauses 88-92

10 Clauses 104 and 105

11 Clause 60(1), 87B, 90(1) and 92

12 Clause 136

13 Clause 33A

 

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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