New dawn for New Zealand patent landscape

30 Aug 13

Wednesday, August 28 marked the biggest shake up in New Zealand’s Intellectual Property landscape in more than 50 years.

That was the date Parliament passed into law the new Patents Bill.

The new law essentially brings New Zealand’s patent regime into line with many overseas countries, providing credible protection for their inventions here.

More closely mirroring the processes overseas will also help New Zealand businesses to secure patent protection.

Many of the provisions of the new law are the same as the New Zealand Patents Act 1953, so there will be some continuity for patentees and businesses. However, the new patent law also sees some significant changes.

It is a significant improvement to current patent laws, so will significantly benefit patentees and New Zealand businesses.

However, the new Act will require some bedding in and it is anticipated that there will be a period of uncertainty as IPONZ (the Intellectual Property Office of New Zealand) grapples with the new issues that they must consider during examination.

Publication of applications

New Zealand patent applications will now be published 18 months after filing. This is consistent with many of New Zealand’s major trading partners such as Australia and the United States.

An important consequence of the early publication is that it determines the date from which damages for infringement of the eventually granted patent can be calculated.

The consequence of this is that New Zealand businesses need to be aware of published patent applications that their own activities may infringe. Watching of patent publications in relevant technology fields will be particularly important under the new Patents Act.

Examination for inventive step

IPONZ will now be able to examine patent applications to determine whether the claims involve an inventive step over the existing products and documents. It is less likely that patent applications will be granted for inventions of dubious inventiveness. This change is a benefit to both patentees and businesses.

Getting examiners up to speed with this new provision however is likely to take some time. To prepare for this issue applicants should carefully consider the issue of inventive step when preparing a patent specification and claims.

Thorough canvassing of the issue prior to filing a patent application will help to address potential objections prior to examination.

Patentability of software

The new Patents Act significantly restricts what computer software is patentable, although it stopped short of precluding from patentability all computer software. There is still provision for patenting embedded software, which forms an integral part of a component in which it is sold.

The new Patents Act delegates to the Commissioner the responsibility for drafting regulations on the patentability of embedded software.

This will create some uncertainty for patentees, and it is suggested that those operating in this technology space should pay close attention to the Regulations as they are prepared.

Re-examination

Third parties will be able to request re-examination of a patent application or granted patent. This is in-effect requesting IPONZ to reconsider the patentability of the claimed invention at any time during the life of the patent.

The re-examination process will provide a cost effective way to challenge the claims of an accepted application or granted patent. Therefore the re-examination procedures are likely to be of significant value to New Zealand businesses.

Patentability threshold

The new Act raises the bar on the standard to secure a grant of a patent. The new standard is “balance of probabilities”, whereas the old patents Act required that the “benefit of the doubt” be provided to the patentee.

The problem with the new standard is that it is a subjective one. In combination with the new requirement to examine for inventive step, IPONZ examiners will be given significant powers to determine whether an invention qualifies for grant of a patent.

That is a potential point of concern given that those same Examiners have not previously had to consider these issues. As a result, there is likely to be a period of uncertainty and bedding in to this new provision. It is also anticipated that it will be harder to secure grant of a patent in New Zealand.

Transitional provisions

Patent applications filed under the ’53 Act will continue to be examined under that law.

However, there are a number of notable exceptions, being:

• The complete specification is filed in support of the patent application after the commencement date of the new Act
• The application is post-dated to a date after the commencement date of the new Act.

These provisions are important for patentees to consider when deciding how to secure protection for an invention.

Steps should be taken to ensure that any complete specifications are filed before the commencement date of the new Act, so as to avoid the higher standard for patentability and examination for inventive step.

James & Wells

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