The New Zealand Parliament’s Commerce Select Committee has handed down its report in respect of the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill 2015. The Patents Amendment Bill 2015 was originally introduced on 3 November 2015 to correct oversights in the Patents Act 2013 which came into force in September 2014 and advance the implementation of a single patent application (SAP) and examination process (SEP) in conjunction with Australia.
Removal of lack of unity as a ground of opposition
In the July 2016 Report, the Commerce Select Committee has recommended proceeding with amendments to the grounds for opposing the grant of a patent under the 2013 Act. Specifically, Section 39(2)(a) presently enables the grant of a patent to be opposed on the ground that it relates to more than one invention; that is, the claims lack unity. This is inconsistent with the previous provisions of the Patents Act 1953 and patent opposition practice in other jurisdictions, such as Australia. As such, the Commerce Select Committee has recommended removing lack unity as a ground for opposition.
Single Economic Market (SEM) proposals on ice
With regard to the proposed single patent application process (SAP) and single patent examination process (SEP), which would result in streamlining of processes and work-sharing between the Intellectual Property Office of New Zealand (IPONZ) and IP Australia, the Commerce Committee has recommended that New Zealand does not proceed with the necessary amendments to the Act to implement the proposed system.
Implementation of these processes requires legislative changes in both Australia and New Zealand. The Australian Parliament passed legislation in 2015 (IP Laws Amendment Act 2015) to allow for implementation of the SAP and SEP. The Patents (Trans-Tasman Patent Attorneys and Other Matters) Bill was similarly intended to enable implementation of the new SAP and SEP system in New Zealand.
Specifically, the New Zealand Commerce Select Committee considered that the SAP and SEP are unlikely to provide significant benefits to New Zealand in particular or to patent applicants or users of the system more generally. Furthermore, the Commerce Committee is of the view that the cost of establishing the proposed system would be significant and would be likely to result in increased administrative costs for patent applicants. While the Commerce Select Committee acknowledged that IPONZ and IP Australia would benefit from efficiencies from the proposed work-sharing arrangements, such initiatives already form part of the expanding Global Parent Prosecution Highway Program (GPPH), which sees work-sharing arrangements across international patent offices. Furthermore, recent advances in electronic filing systems under the Patent Co-operation Treaty (PCT) would provide similar efficiency outcomes without the added cost of implementing the new SAP system.
While the New Zealand government is yet to consider the recommendations from the Commerce Select Committee, it now appears unlikely that the single patent application process (SAP) and single patent examination process (SEP) with Australia will be implemented. IP Australia is awaiting recommendations from the New Zealand Government on the matter before providing further guidance.
Patents Technical Focus Group (TFG)
The New Zealand Patents Technical Focus Group (TFG) is designed to provide direct feedback to IPONZ on proposed practices and policy changes. At its most recent meeting in February 2016 the TFG considered the Patents (Trans-Tasman Patent Attorneys and Other Matters) Bill 2015, as well as additional amendments to the Patents Act 2013 and Patent Regulations 2014.
Some of the matters under consideration by the TFG include:
i. Introduction of a deadline for filing of divisional applications under the Patents Act 1953
The proposed deadline of 5 years from the commencement date of the Patents Act 2013 for filing of divisional applications under the Patents Act 1953 would eliminate the situation where applications may remain pending for the full patent term through repeated divisional filings.
ii. Amendment to allow claims to have more than one priority date
Under the Patents Act 2013 as enacted, a claim may assume a single priority date only, which is the date of the application that disclosed the subject matter supporting the claim. Amendments have been proposed to enable a claim to assume more than one priority date.
The TFG considered that this would be a “useful” amendment, but noted that the proposal was not intended to address the matter of ‘poisonous priorities’ or ‘poisonous divisionals’.
iii. Amendment of the microorganism deposit requirements
Due to an error in the Patent Regulations 2014, a New Zealand patent application may be void where a claimed invention is, or relies upon, a micro-organism deposited under the Budapest Treaty. Specifically, under the present regulations a copy of the microorganism deposit receipt must be filed at the New Zealand Patent Office within three months of the date of the deposit. In most circumstances, however, it is impossible for applicants to comply with this requirement as the three month period would expire well before the lodgement of a patent application in New Zealand.
IPONZ had previously published a practice note specifying that patent applicants who fail to meet this deadline may apply for an extension of time in order to satisfy this requirement. The current proposed amendments are intended to correct the errors in the Regulations and ensure the relevant timeframe for lodging a microorganism deposit receipt is reasonable.
While the TFG is supportive of the abovementioned amendments, at this stage, the timeframes for implementation remain unclear.