Parliament passed into law the new Patents Bill on 28 August 2013. This is the biggest shake up in New Zealand’s Intellectual Property landscape in over 50 years.
The new law brings New Zealand's patent regime into line with many overseas countries. This is great news for New Zealand innovators as it will provide credible protection for their inventions in New Zealand. In addition, it will assist New Zealand businesses to secure patent protection overseas, as the New Zealand process will more closely mirror the processes encountered overseas.
Many of the provisions of the new law are the same as the New Zealand Patents Act 1953 (the '53 Act). Therefore there will be some continuity for patentees and businesses. However, the new patent law will implement some significant changes. Below is a snap shot of several of those changes, how they may affect patentees, and how to prepare for the new law.
Publication of Applications
New Zealand public patent applications will now be published 18 months after filing. This is consistent with many of New Zealand's major trading partners such as Australia and the United States.
An important consequence of the early publication is that it determines the date from which calculation of damages for infringement of the eventually granted patent. Therefore, alleged infringers can be held liable for actions that infringe a claim which is substantially the same as a claim in the application as published.
The consequence of this is that New Zealand businesses need to be aware of published patent applications which their own activities may infringe. As a result, watching of patent publications in relevant technology fields will be important under the new Patents Act.
Examination for Inventive Step
IPONZ will now be able to examine patent applications to determine whether the claims involve an inventive step over the existing products and documents. Therefore, it is less likely that patent applications will be granted for inventions of dubious inventiveness. This change is a benefit to both patentees and businesses.
Implementation of the new provision however is likely to take some time. Examiners will require significant up skilling on the law of inventive step. This is particularly so given that consideration of inventive step is often a subjective issue. The result is that there is likely to be a bedding in period where patent examiners become familiar with the new law and how it should be applied.
To prepare for this issue applicants should carefully consider the issue of inventive step when preparing a patent specification and claims. Thorough canvasing of the issue prior to filing the patent application will help to address potential objections prior to examination commencing.
The '53 Act required "relative novelty" for an invention. That is, to be patentable in New Zealand an invention needed only to be new with regard to what was known in New Zealand prior to the filing date. In-practice relative novelty was a redundant consideration. The rise of the internet, early publication of patent applications in other jurisdictions, and internet websites, all combined to provide an effective absolute novelty standard in New Zealand.
The new Patents Act introduces an absolute novelty standard. This brings New Zealand law into line with that in many of our major trading partners.
Patentability of Software
The new Patents Act includes preclusions to the patentability of computer software. However, the Act stopped short of precluding from patentability all computer software. There is still provision for patenting "embedded software" which forms an integral part of a component in which it is sold. This issue has been widely debated in the media. See our website for a discussion on relevant issues to the patentability of computer software.
The new Patents Act delegates to the Commissioner the responsibility for drafting regulations on the patentability of embedded software. This will create some uncertainty for patentees. It is also expected that IPONZ will take a hard line on the patentability of embedded software, and therefore those operating in this technology space should pay attention to the Regulations as they are prepared.
Third parties will be able to request re-examination of a patent application or granted patent. This is in-effect requesting IPONZ to reconsider the patentability of the claimed invention at any time during the life of the patent.
The re-examination process will provide a cost effective way to challenge the claims of an accepted application or granted patent. Therefore the re-examination procedures are likely to be of significant value to New Zealand businesses.
Importantly, the re-examination procedures will apply to all patents, including those granted under the '53 Act. However, re-examination of granted patents is limited to the grounds of revocation under the '53 Act. The consequence is that patents for computer software inventions granted under the '53 Act cannot be revoked using the exclusions from patentability noted above. This provision is likely to promote early filing of patent applications to sidestep the provisions excluding software from patent protection in the new Act.
Applicants must now actively request examination of their patent applications. This must occur before an as yet to be determined deadline, or before a deadline set by the Commissioner in a directive to request examination. The new Patents Act delegates the responsibility for determining the deadlines to the Commissioner through the role of drafting Regulations for implementing the new Act. Therefore, the process of implementing the new Act will be critical for patentees to follow.
The new Act raises the bar on the standard to secure a grant of a patent. The new standard is "balance of probabilities", whereas the '53 Act required that the "benefit of the doubt" be provided to the patentee".
The problem with the new standard is that it is a subjective one. In combination with the new requirement to examine for inventive step, IPONZ examiners will be given significant powers to determine whether an invention qualifies for grant of a patent. That is a potential point of concern given that those same Examiners have not previously had to consider these issues. As a result, there is likely to be a period of uncertainty and bedding in to this new provision. It is also anticipated that it will be harder to secure grant of a patent in New Zealand.
Patent applications filed under the '53 Act will continue to be examined under that law. However, there are a number of notable exceptions, being:
- The complete specification is filed in support of the patent application after the commencement date of the new Act.
- The application is post-dated to a date after the commencement date of the new Act.
These provisions are important for patentees to consider when deciding how to secure protection for an invention. Steps should be taken to ensure that any complete specifications are filed before the commencement date of the new Act, so as to avoid the higher standard for patentability and examination for inventive step.
The new Act also provides that applications from overseas will be governed according to the law in force when filed in New Zealand. Therefore, any PCT applications entering the national phase before the commencement date of the new Patents Act will be governed by the '53 Act. In contrast, any applications which enter the national phase after the commencement date will be governed by the new Act.
It is likely that applicants will opt to file national phase applications in New Zealand early so as to side step the provisions of the new Act and the uncertainty around examination noted above.
The new Patents Act is a significant improvement to New Zealand's Patent Laws. It will therefore significantly benefit patentees and New Zealand businesses.
However, the new Act will require some bedding in. It is anticipated that there will be a period of uncertainty for patentees as IPONZ grapples with the new issues that they must consider during examination.