The Ministry of Business Innovation & Employment (MBIE) is proposing changes to New Zealand’s patent laws that would, if implemented, impact companies in the process of applying for NZ patents and companies that exploit technology in NZ.

The proposals are explained in a consultation document released by MBIE on Friday 23 September 2016. They concern the provisions governing divisional patent applications that stem from applications filed under the Patents Act 1953.

Current Law on Divisional Applications in NZ

A new Patents Act (the Patents Act 2013) became law in NZ in 2014. That Act has no bearing on the ability to file divisional applications from applications filed under the old law (1953 Act). So, for divisional applications from patent applications filed under the 1953 Act, there is no limit on the number of divisional applications that can be filed (other than the 20-year patent term limit).

Reasons for Proposing Changes

The consultation document sets out alleged problems with this situation. One of the problems is said to be the cost of the Intellectual Property Office of New Zealand (IPONZ) continuing to examine applications filed under the 1953 Act.

Another issue is that applications filed under the 1953 Act are not examined for obviousness and this leads to patents being granted that are potentially invalid. The consultation document refers to one New Zealand technology company (Fisher & Paykel Healthcare Limited) that considers this to be a particular problem.

Proposed Options

There are three options proposed in the consultation document:

  1. No change;
  2. Amend the law so that, after a date to be specified, no further divisional patent applications from a 1953 Act application can be filed; or
  3. Amend the law so that, after a date to be specified, divisional patent applications filed from a 1953 Act application can continue to be filed but would be examined under the criteria of the 2013 Act (which are tougher than under the 1953 Act as explained in our article 'New dawn for the New Zealand Patent landscape - the New Patents Act').

The consultation document states that option 3 is MBIE’s preferred option.

Counter Arguments

The consultation document touches briefly on reasons why any changes to the current provisions on divisional applications would not be desirable. It points out that applicants who filed their application under the 1953 Act might have limited options to pursue independent protection for multiple concepts described in a single patent application.

Another issue is that the criteria for examining patent applications under the 2013 Act are tougher than those under the 1953 Act and, in some cases, this can affect how a patent application has been prepared. Some applicants who have prepared a patent application to be examined under the 1953 Act could be disadvantaged if that application is examined under the 2013 Act.

Some will consider the argument concerning the supposed higher cost of IPONZ examining 1953 Act applications difficult to sustain because the less strict requirements under the 1953 Act mean applications are less costly to examine under this Act and this is something IPONZ is already equipped to do.

Those that consider that IPONZ’s role is to administer NZ’s patent laws as set by Parliament, and that the laws should not be decided based on what is easiest to administer, will see the cost argument as irrelevant.

Who Does This Effect?

The proposals will be of most interest to:

  • Patent applicants that have applications pending that were filed under the 1953 Act; and
  • Companies exploiting technology in New Zealand that may be at risk of infringing such applications.

Option 1 is most favourable to a company that falls into the first category while option 3 is most favourable to a company that falls into the second category. Consequently, the submissions in response to the consultation document are likely to be mixed.

Contact Us to Have Your Say

There is a deadline of 14 October 2016 to file written submissions responding to the proposals in the consultation document.