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Applying for a patent

Patentability
What are the criteria for patentability in your jurisdiction?

To meet the requirements for patentability in New Zealand, an invention must:

  • be a manner of manufacture (ie, belong to the useful arts, provide a material advantage and be of value in the field of economic endeavour);
  • be novel, inventive and useful; and
  • not be subject to the specific exclusions set out in the Patents Act. 

What are the limits on patentability?

Inventions that are contrary to public order or morality are not patentable. Specific exclusions include:

  • processes for cloning or modifying human beings;
  • human beings and biological processes for their generation;
  • the commercial or industrial use of human embryos; 
  • the genetic modification of animals in a way that is likely to cause them suffering, without substantial medical benefit to human beings or animals;
  • methods of treatment of human beings by surgery or therapy; and
  • methods of diagnosis practised on human beings.

The commissioner of patents, trademarks and designs may consult the Maori Advisory Committee or any other person considered appropriate in determining what is contrary to public order or morality.

To what extent can inventions covering software be patented?

The Patents Act specifies that a computer program is neither an invention nor a manner of manufacture (ie, belonging to the useful arts, providing a material advantage and of value in the field of economic endeavour).

If the only novel aspect of an invention is the use of a computer program to carry out a process, it is not an invention. However, if a computer program is used to make a known apparatus work in a way that provides a substantially improved result, a claim to the apparatus when used to implement the program may be patentable.

Specific advice should be sought in each case.

To what extent can inventions covering business methods be patented?

No specific exclusion on business methods exist.

In addition to novelty and inventive step, the question of patentability is likely to turn on whether the method is considered to be a manner of manufacture, (ie, whether it belongs to the useful arts, provides a material advantage and is of value in the field of economic endeavour).

Specific advice should be sought in each case.

To what extent can inventions relating to stem cells be patented?

No explicit provisions prohibit the patentability of stem cells and methods of using stem cells. However, insofar as any use of stem cells relates to processes for cloning or modifying human beings or causing animal suffering, such use would fall foul of specific exclusions.

The commissioner of patents, trademarks and designs may determine that inventions are not patentable if they are contrary to public order or morality, so any invention relating to stem cells should be considered on a case-by-case basis.

Are there restrictions on any other kinds of invention?

No other restrictions on inventions exist.  

Grace period
Does your jurisdiction have a grace period? If so, how does it work?

A 12-month grace period exists in the case of prior disclosure by unauthorised persons who have obtained the invention from the inventor or where disclosure was made by the patentee or an authorised person in the course of reasonable trial and experiment. A six-month grace period also exists for disclosure at a recognised exhibition.

Oppositions
What types of patent opposition procedure are available in your jurisdiction?

Patent opposition procedures on substantive grounds can be commenced between acceptance of the application and grant of the patent. Other actions can also be opposed by third parties, such as the allowance of amendments and extensions of time.  

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

At any time, upon request by a third party, the commissioner of patents, trademarks and designs must commence re-examination of an application or granted patent.

How can patent office decisions be appealed in your jurisdiction?

Decisions of the Intellectual Property Office of New Zealand can be appealed to the High Court.

Timescale and costs
How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

The time period and costs for a patent to be granted can vary significantly, depending on the complexity of the prosecution. However, as a general rule, applicants should expect a timeframe of at least 18 months from national phase entry to grant, and budget between US$2,000 and US$5,000.

Enforcement through the courts

Strategy
What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

The most effective method for a patent owner to enforce its rights is through litigation. Alternatively, mediation or arbitration proceedings could be considered as an option. 

What scope is there for forum selection?

No provisions for forum selection exist in New Zealand. All patent matters are heard by the High Court.

Pre-trial
What are the stages in the litigation process leading up to a full trial?

The process begins with the plaintiff filing a statement of claim. The defendant then files a statement of defence. In patent matters, the defendant often also files a cross-claim, in which case the plaintiff may file a defence against the cross-claim.

The parties then exchange lists of relevant documents in their possession and the documents are inspected by the corresponding party. Privileged documents are excluded and in some cases access to sensitive documents may be restricted to legal counsel.

Additional steps are possible at this time which may reduce the issues in dispute, such as further discovery, interrogatories and notices to admit facts.

Written statements of evidence are exchanged – typically, the plaintiff provides written statements of evidence in the first instance, in response to which the defendant provides written statements of evidence. The evidence can be tested during the hearing by cross-examination of the witnesses.

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

While both parties may make submissions to delay trial proceedings, it is difficult for a party to delay these proceedings without offering a good reason to do so, due to the active involvement of the High Court in managing the matter. 

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?

In anticipation of an infringement suit, a party may attempt to invalidate a patent through revocation proceedings in the High Court. These proceedings may consider all grounds of invalidity and all forms of prior art. 

At trial
What level of expertise can a patent owner expect from the courts?

A patent owner can expect a high level of expertise from the High Court, as a number of judges have experience as IP barristers. 

Are cases decided by one judge, a panel of judges or a jury?

First-instance cases are decided by a single judge. Appeals to the Court of Appeal or Supreme Court may be decided by a panel of judges.

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

Jury trials do not exist for IP cases in New Zealand.

What role can and do expert witnesses play in proceedings?

Each party will usually select independent experts to provide written and/or oral evidence to the court. This evidence can include insight as to the common general knowledge in the art and explanations of technical features. The evidence provided by each expert is available for cross-examination and it is common practice for experts to attend the court proceedings.

Where experts offer conflicting views, the court may also engage its own independent expert. 

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

The doctrine of equivalents does not apply in New Zealand.

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

Preliminary injunctions may be granted where a judge is convinced that there is a sufficiently strong prima facie case. The decision to grant an injunction will weigh the balance of convenience between all parties. 

How are issues around infringement and validity treated in your jurisdiction?

Where both infringement and validity proceedings have been commenced in respect of the same patent, the court will normally hear the cases together as part of the same action. 

Will courts consider decisions in cases involving similar issues from other jurisdictions?

The court will consider decisions from foreign jurisdictions. However, these considerations are not binding or indicative of how the New Zealand court will rule.

Damages and remedies
Can the successful party obtain costs from the losing party?

A successful party may obtain recovery of a significant portion of its legal costs from the losing party; however, the quantum of costs awarded is determined by the court on a case-by-case basis.

What are the typical remedies granted to a successful plaintiff?

Typical remedies include injunctions, damages or an account of profits and orders for destruction or delivery up of the infringing goods. 

How are damages awards calculated? Are punitive damages available?

The plaintiff may choose either damages (compensating losses resulting from the infringement) or an account of profits (recovering profits made by the infringing party resulting from the infringement).

Punitive damages are available, but are rarely awarded. Punitive damages have been awarded in certain circumstances for flagrant infringement and conduct. 

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

The court can grant permanent injunctions in favour of the successful applicant. An order permanently restraining the respondent from doing or engaging in the impugned act or acts will be made by the judge if the applicant has established infringement (and any revocation action is unsuccessful). Such order will not be made until after the matter has proceeded to a final hearing or been determined by way of an application for summary judgment.

Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?

Parties can generally expect to wait up to six months following the final hearing before the court will publish its reasons for judgment. Decisions on matters heard on an urgent basis (eg, in applications for urgent interlocutory relief) may be published within a shorter timeframe. However, without compelling reasons being presented to the court, no formal process exists by which parties can expedite the delivery of judgment.

How much should a litigant plan to pay to take a case through to a first-instance decision?

The costs of litigation vary depending on the number of patents in suit and the complexity of the matters raised by the parties. Other factors affecting costs include the selection of counsel (senior counsel, junior counsel or both) and expert witnesses. Therefore, litigants can expect costs to vary widely, from about US$80,000 to in excess of US$1 million.

Appeal
Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?

A party has one appeal to the Appeal Court against a High Court decision. A party can obtain leave to appeal an Appeal Court decision to the Supreme Court if this is necessary in the interests of justice. In patent matters, leave is likely to be available only where important issues of general principle arise.

Appeals to the Appeal Court usually take around 12 to 18 months.

Options away from court
Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

Parties can enter into mediation as an alternative form of resolution, although agreements arising from the private mediation process are not court sanctioned. Any right or power to enforce such an agreement would arise out of the terms of resolution.