Recent articles in this series have reported on the passage of New Zealand’s new Patents Act 2013 – and some of its content. We did, however, note that the final step in the legislative process was for the new Act to receive Royal Assent; this duly happened on 13 September 2013.
The net result is that the Patents Act 2013 will now enter into force no later than Monday, 14 September 2014.
The new Act can be considered an opportunity and a threat in equal measure – it requires patent applicants to make some decisions. According to the transitional provisions, any complete application filed in New Zealand (e.g., as a PCT national phase entry) prior to commencement of the new legislation will be examined under the “old Act” provisions and will be subject to the 1953 Act throughout its lifecycle. Conversely, a patent application filed in New Zealand after commencement of the new Act will be subject to the provisions of the 2013 Act.
Therefore, those with patent applications “in the pipeline” – and for which New Zealand is a target market may wish to consider bringing forward their New Zealand filings so as to ensure that their application is governed by the present (softer) criteria. Of course, patent applicants now have the best part of a year before any “early” filings would need to be effected. In the interim, it may be reassuring to know that: 1) we can file unpublished PCT applications in New Zealand; and 2) by taking advantage of the existing processes we can ensure that any such applications will not be published until after the PCT (or foreign Patent Office) publication is first made. Aside from bringing costs forward, we believe there should be no negative consequences in filing early in New Zealand so as to take advantage of the current legislation.
In conclusion, the passing of the new Act can be viewed as something of a double-edged sword. On the one hand, it is reassuring to have some certainty as to the provisions of New Zealand patent law (even if the ongoing TPP negotiations may dilute this impression somewhat). On the other hand, as with any changes, there will be winners and losers – and in the present instance, it appears that software patentees stand to lose more than most - at least until such time as the scope of the "as such" exclusion is established.
We will, of course, keep readers promptly informed of further developments.