This year will see a change to New Zealand’s patent laws, with the Patents Act 1953 being superseded by the Patents Act 2013 on 13 September 2014.
As a result, some patents and applications will be subject to the provisions of the existing Act, while other patents and applications will need to comply with the new Act.
This article is a guide to the transition process from the existing Act to the new Act, and outlines which laws apply to different patents and applications.
For a detailed summary of the overall law changes, please refer to our article: New Dawn for the New Zealand Patent Landscape - the New Patents Act.
Examination of Patent Applications
- patent applications will be examined for inventive step;
- a higher standard of disclosure in the written description will need to be satisfied;
- some computer-implemented inventions will be excluded from patentability;and
- a request for examination will be required.
These stricter requirements imposed by the new Act will apply to applications:
- Not claiming convention priority for which a complete specification is filed on or after 13 September; or
- Claiming overseas priority that are filed into New Zealand on or after 13 September 2014, regardless of the application's priority date.
This means that to avoid tougher and more expensive examination in the case of applicants who have priority filings in another country, a Convention application or PCT national phase entry must be filed in New Zealand by 12 September 2014.
Applicants who have filed a PCT application before 13 September 2014 but for whom the national phase deadline is some way off should consider filing a New Zealand national phase application early (or, if still within the 12-month Convention period, a direct Convention application in New Zealand) if they want their applications examined under the existing, more lenient, laws.
Divisional applications for which a first application was filed in New Zealand on or before 12 September 2014 will be subject to the more lenient existing laws.
This is relevant to applications containing several inventions, as the time and cost savings likely to be gained by having an application examined under the existing laws would accumulate when prosecuting multiple divisional applications.
Therefore, it may be particularly beneficial to file an application into New Zealand on or before 12 September 2014 if one or more divisional applications are expected to be filed.
If a New Zealand patent application filed on or before 12 September 2014 is post-dated to a date on or after 13 September 2014, the requirements for acceptance of the application will change from those provided by the existing Act to the more stringent requirements of the new Act.
Therefore, when making the decision whether or not to post-date a New Zealand application, it is important to consider whether the benefits of the later filing date justify the potentially more difficult examination process.
This may be a particularly important consideration for applications for software or computer-implemented inventions which may be excluded from patentability or at least subject to tougher examination under the new Act.
Challenging Patents and Applications
However, the grounds of opposition and revocation that are available under the new Act differ from those currently available. In particular, the grounds for opposing a patent application will be more favourable to the opposing party.
Which set of grounds are available will be determined by the filing date of the complete specification, i.e. the grounds set by the Act that the application is examined under.
In addition to opposition and revocation proceedings, the new Patents Act also includes provisions for re-examination of granted patents, a mechanism of challenge which is presently not available.
After 13 September 2014, third parties will be able to request re-examination of any granted patent, including patents granted before 13 September 2014.
The grounds for re-examination of patents which have a complete specification filing date, Convention filing date, or national phase entry date before 13 September 2014 will be the grounds of revocation that are available under the existing Act, otherwise, the grounds for re-examination will be in accordance with the new Act (and will correspond to the tougher examination criteria provided for by the new Act).
A request for re-examination by a third party will involve a submission setting out the grounds that the Commissioner should consider, however the third party will have no right to take any further part in the re-examination nor the right to appeal the Commissioner's decision to the Court.
The new Act has specific provisions defining what constitutes infringing activity that is absent in the existing Act. A transitional provision in the new Patents Act clarifies that the applicability of the new provisions depends on the date that infringement occurred.
Specifically, the old Act will continue to apply in relation to infringement that occurred on or before 12 September 2014, for the purposes of investigating the offence, commencing or completing any relevant proceeding, and imposing a penalty or granting a relief or remedy.
It is therefore the date of the infringing activity that is important, not the date the proceeding is brought.
Filing an Application into New Zealand
To summarise, the commencement of the New Zealand Patents Act 2013 will create various differences in procedure, options and criteria for New Zealand patents and applications depending on their filing date.
For applicants with non-New Zealand priority applications there are significant advantages for filing direct Convention applications or entering national phase in New Zealand by 12 September 2014.