New Zealand Patents Act 2013

It has been a long time coming, but finally New Zealand has a new Patents Act. The Patents Act 2013 received Royal assent on 13 September 2013. While a few administrative provisions took immediate effect, the majority of the provisions are not expected to take effect until 13 September 2014. Patent applications or national phase entries made before the new provisions take effect will remain subject to the current Patents Act.

Supporting Regulations for the new Act are not expected until mid-2014.

There are a lot of changes made by the new Act, some of the more interesting ones are as follows:

– an expansion of the prior art base applicable for assessing novelty and inventive step

– increasing the applicable grounds for examination with a higher standard being on ‘balance of probabilities’ (previously ‘benefit of doubt’)

– an invention must be ‘useful’ by having ‘a specific, substantial and credible utility’

– complete specifications must disclose ‘best method’ and the invention in a ‘clear and complete enough manner’ to be performed by a person skilled in the art

– claims to be ‘clear and concise’ and ‘supported by matter’ disclosed in the complete specification
express exclusions from patentability

  • contrary to public order or morality (e.g. cloning of human beings, commercial use of human embryos, modifying germ line genetic identity of animals likely to cause suffering without substantial medical benefit)
  • human beings and biological processes for their generation
  • methods of medical treatment of humans by surgery or therapy
  • methods of diagnosis practiced on humans
  • ‘computer programs as such’

– re-examinations available on all grounds between post-acceptance/pre-grant period for patent applications and at any stage after grant for granted patents

– post-acceptance/pre-grant opposition available on all grounds

– revocation of granted patents available before Patent Office or Court

– no extensions of patent term are available

– particular exclusions to infringement provided for seeking regulatory approval, prior use and experimental research

It has to be said that there is significant borrowing and influence from European patent law, particularly in respect to the substantive patentability tests and the use of particular exclusions. The computer programs exclusion was a particular sticking point in the lead up to the new Act and contributed to quite a few years delay. The fact that it is ‘computer programs as such’ smells very strongly of the European influence and it will be interesting to see how this develops given that the European development has not resulted in a blanket ban on software implemented inventions. Similarly, it will be interesting to see if New Zealand examiners adopt a European style approach to assessing inventive step, given that until now inventive step was not an examinable criterion.

The new Patents Act also introduces a Maori advisory committee who will have the power to veto inventions which, if commercially exploited in New Zealand, would be offensive to the indigenous culture. Similar powers have existed under the New Zealand Trade Mark law and appear to have worked very effectively and practically.

All in all, the new Act significantly raises the patentability standard in New Zealand, albeit to a standard more consistent with other countries. Until the new provisions come into force, the lesser standard of the current patent law applies. Hence, to take advantage of the current law, it may be worth considering filing or entering national phase in New Zealand early.

by Simon Ellis

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