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RAISING THE BAR IN NEW ZEALAND - THE PATENTS ACT 2013
The Patents Act 2013 came into force on 13 September 2014 and is a replacement for the Patents Act 1953. This Act will make it more difficult and more expensive to obtain a valid patent in New Zealand, thus "raises the bar" for patentability in New Zealand. We recommend considering filing or entering national phase in New Zealand prior to 13 September 2014 in order to avoid the more onerous conditions of the Patents Act 2013.
Key Changes
Some of the key substantive changes introduced by the 2013 Act are -
Request for examination
The 2013 Act introduces a requirement to request examination. The cost for requesting examination is likely to be NZ$500 plus service charges. This is an additional fee on top of the filing fee.
Time restriction on divisional applications
The Regulations under the 2013 Act are likely to restrict the filing of divisional applications to five years from the (e.g. the international) filing date of the original parent. This restriction will not apply to a divisional application filed from any application to which the 1953 Act applies, even if the divisional application is filed after 13 September 2014.
Absolute (worldwide) prior art base
Unlike the 1953 Act which required a document to be published in New Zealand in order to be cited for prior art or inventive step purposes, the 2013 Act requires an invention to be novel and inventive in light of material made available anywhere in the world, whether by publication or by any other means.
Whole of contents citations
Under the 2013 Act, the whole contents of a New Zealand complete specification with an earlier priority date published after the priority date of the examined application will be taken into consideration when determining the novelty of the invention. This is a change from the current law relating to prior claiming between New Zealand specifications.
Examination for obviousness
Under the 1953 Act, the Commissioner cannot, in the examination phase, refuse a patent application on the ground that the claimed invention is obvious. The 2013 Act allows the Commissioner to refuse a patent application if the claimed invention is considered, by the examiner, to be obvious.
Examination for usefulness
The 2013 Act also allows the Commissioner to refuse a patent application on the ground that the claimed invention is not useful. In order for an invention to be useful, the invention must demonstrate a "specific, credible, and substantial utility". This brings the New Zealand law on utility more into line with the meaning of 'useful' in United States and Australian patent law.
Balance of probabilities
The standard of proof will change under the 2013 Act to one requiring the Commissioner to be satisfied on the "balance of probabilities" that the claimed invention is patentable and that all the requirements of the legislation have been satisfied. This contrasts to the 1953 Act where the Commissioner must give patent applicants the benefit of any doubt as to the patentability of an invention.
Specific exclusions from patentability
The 1953 Act does not specifically exclude any subject matter from being patented, although a number of exclusions have arisen at common law. The 2013 Act excludes the following subject matter from being a patentable invention: i) a computer program as such; ii) human beings and biological processes for their generation; iii) a method of treatment of human beings by surgery or therapy; iv) a method of diagnosis practised on human beings; and v) a plant variety (protectable under the Plant Variety Rights Act 1987). The exclusion for computer programs 'as such' is modelled on European patent legislation and is intended to exclude alleged inventions where the "actual contribution made by the alleged invention lies solely in it being a computer program".
Public order or morality exclusion
The 2013 Act also excludes inventions from being patented where the commercial exploitation of the invention would be contrary to public order or morality.
Maori Advisory Committee
The 2013 Act introduces a Maori advisory committee in an attempt to deal with the concerns of Maori. The Committee may advise the Commissioner on whether a claimed invention is derived from Maori traditional knowledge or from indigenous plants or animals and, if so, whether the commercial exploitation of that invention is likely to be contrary to Maori values.
Support requirement
The 1953 Act requires that the claims of a complete specification be "fairly based" on matter disclosed in the complete specification and in the priority application. The 2013 Act replaces fair basis with a requirement that the claims be "supported" by matter disclosed in the complete specification and priority application. This change is modelled on European and Australian patent legislation and may result in narrower patent rights than under the 1953 Act unless the scope of protection is supported by an enabling disclosure of the invention.
Third party challenges
The 2013 Act provides three options for a party to challenge a patent application or patent: i) pre-grant opposition before the Commissioner; ii) pre- or post-grant re-examination by the Commissioner; and iii) post-grant revocation by the Commissioner or the High Court. Under the 1953 Act, a patent which has been in force for more than a year can only be revoked by the High Court. The ability to commence a revocation action before the Commissioner rather than the High Court is likely to result in significant cost savings to litigants.
Transitional Provisions
The examination and validity provisions of the Patents Act 1953 will continue to apply to an application accompanied by a complete specification filed in New Zealand, or a PCT application which enters national phase in New Zealand prior to 13 September 2014. Thus in order to ensure an application is governed by the 1953 Act, one of the following actions should be taken:
- Enter national phase prior to 13 September 2013. This could mean requesting entry into national phase in advance of the 31 month deadline.
- File a complete specification claiming priority under the Paris Convention prior to 13 September 2014. This may mean filing the New Zealand application earlier than 12 months from filing date of the foreign specification.
- Filing a complete specification in the first instance, or a complete-after-provisional specification in New Zealand prior to 13 September 2014.
If you require any advice on specific situation, or have any further questions, please do not hesitate to contact us.
David Nowak / Frank Callus - 1 August 2014
