In the lead up to commencement of the New Zealand Patents Act 2013 on 13 September 2014, it is important to ensure you are ready to deal with the impact of the new law. In some circumstances, this might mean filing your application early in New Zealand to avoid the new, more onerous requirements.
New requirements for patent applications
The Act raises the requirements for patentability and the description requirements for patent specifications for all complete applications (including PCT national phase applications) filed from 13 September 2014. However, any new divisional applications filed from pending patent applications that are subject to the old Act will still be subject to the patentability and specification requirements of the old law.
New Act aligns New Zealand more closely with Europe and other jurisdictions
Under the new Act, the prior art base has been broadened to include documents published anywhere in the world (absolute novelty), and this will bring New Zealand law into line with the laws of major jurisdictions such as Australia, the United Kingdom, Europe and the United States.
Furthermore, in line with the current approach in Europe, the United Kingdom and Australia, the new Act requires that a complete specification disclose the invention in a manner that is "clear enough and complete enough for the invention to be performed". The requirement that a claim be "fairly based" on the description has also been replaced with a new 'support' requirement; that is a claim must be clear, concise, and "supported by" the matter disclosed. The test for priority entitlement has also been changed from a fair basis test to a support test. Accordingly, applications intended for filing after commencement of the new Act should include sufficient description to provide the necessary level of “support” for claims. These stricter standards align New Zealand practice more closely with the standards currently applied in other jurisdictions, such as Europe.
Priority date of claims under the new Act
Additionally, on its face it appears that under the new law a claim may assume a single priority date only under the new Act. As such, for applications claiming priority from two or more basic applications, and where the earlier application fails to disclose the matter that supports a given claim, then it appears that the claim in question will assume the priority date of the later application. It follows then that the earlier application may thus form part of the prior art base for the entirety of the claim. Applicants should take this into account when planning filing strategies for subsequent, related applications with two or more priority claims (including divisional applications), if the new provisions are interpreted to restrict claims to a single priority date.
New grounds of examination introduced
The new Act also extends the grounds of examination to include inventive step and allows examiners to raise objections that relate to the utility of an invention.
Additional changes to the new patent system
There are a number of additional changes to the patent system which will be introduced with the new law, including changes to examination time frames and standards, explicit exclusions from patentability, new experimental use exceptions for infringement, as well as changes to opposition proceedings and third party observations. If you wish to discuss any of the upcoming changes in detail, please contact us.
Preparing for commencement of the New Zealand Patents Act 2013
To ensure that patent applications are subject to the current, more lenient patentability and description requirements, patent applicants should enter the national phase or file a complete patent application by no later than Friday, 12 September 2014.