After five years, negotiations on the Trans-Pacific Partnership (TPP) agreement were finally concluded on 5 October 2015 between 12 countries. An important part of the TPP is the obligations of each member state in relation to intellectual property (IP), including patents.
The full text of the agreement has not been published officially, however on 8 October 2015 the Ministry of Foreign Affairs and Trade (MFAT) published a fact sheet on the IP chapter, and on 9 October 2015 WikiLeaks published what is claimed to be the final text of the IP chapter.
The MFAT factsheet provides some high level information on what changes are in store for the New Zealand patent system. These changes are in line with the text published by WikiLeaks.
From the information available to date, there will not be any drastic changes to the New Zealand patent system as a result of the TPP, which is largely consistent with New Zealand’s current patent law, although the changes that have been made are generally favourable to patent applicants.
One of the more notable changes for New Zealand inventors will be the introduction of a “grace period” of 12 months. This will mean that an applicant’s own public disclosure of the invention will not be held against them if the applicant files their patent application within 12 months of their first public disclosure.
At the moment, an inventor must file a New Zealand patent application before they publish details of the invention or begin commercialising it, otherwise any NZ patent that they eventually obtain will be invalid.
The ability for an inventor to file a patent application up to a year after first publishing details of the invention could make it significantly easier to justify the cost of a patent application because the inventor is likely to have a much better idea of the commercial worth of the invention a year after going public.
That said, it will be more difficult for the public to determine whether a given invention could be subject to patent protection. It may also be more complex for a competitor to assess the validity of a patent which takes advantage of a grace period.
The use of a grace period should always be a last resort, as it would be up to an inventor to prove that any third parties, who have since begun selling a similar invention, obtained the information from the inventor’s own publication.
Australia, the US and Canada each already allow a grace period of 12 months in relation to an applicant’s own disclosure before filing a patent application.
A concern in the tech sector has been the effect of the TPP on the patentability of software. The MFAT fact sheet does not indicate whether there will be any changes to the law on the patentability of software in New Zealand and a Q&A document available on the Beehive website explicitly states that “TPP will not affect current New Zealand law on software patents”.
The text published by WikiLeaks states that “each Party shall make patents available for any invention, whether a product or process, in all fields of technology”, although it also states that some inventions, such as methods of medical treatment of humans, may be excluded from patentability. However there is no mention of whether software or computer programs can be excluded. The wording used in the WikiLeaks text is very similar to the wording in the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), to which New Zealand is already a party and to which NZ’s laws on the patentability of software already comply.
If the wording in the WikiLeaks text is correct, the TPP seems unlikely to affect which computer programs are considered patentable inventions under NZ law. See this article for more information on the patentability of computer programs in New Zealand.
There will be a few other changes to the New Zealand patent system as a result of the TPP, relating to:
Pharmaceutical drugs/biotech – there will be a number of changes in these fields (which will be the subject of a separate article).
Patent term extensions – the Intellectual Property Office of New Zealand (IPONZ) will be obligated to compensate inventors for unreasonable delays in the patent examination process, by extending the term of the patent beyond 20 years. This is unlikely to have a significant effect, given how quickly IPONZ examines patent applications by international standards.
Patent office cooperation – the WikiLeaks text states that each party shall endeavour to share information on search results and quality standards, cooperate to reduce differences in procedure, and streamline their processes for the benefit of all users of the system and the public as a whole. While this occurs already to an extent, the TPP may result in a more formal process of sharing work between patent offices. Aligned examination standards will mean New Zealand patents are stronger and a reduced cost of obtaining overseas patents where a New Zealand patent has already been examined.
We will not know the full effect of the TPP until the relevant New Zealand legislation is published. In general, the TPP is expected to make some small changes to NZ patent law which favour patent applicants. These changes are likely to have been driven by the US position in favour of strong IP rights.