New Zealand’s current patent legislation, The Patents Act 1953, is modelled on the long-repealed United Kingdom Patents Act 1949. The 1953 Act, with its low threshold for patentability compared with most other countries, including Australia, is well past its use by date! It is high-time New Zealand had a modern patent law compatible with its major foreign trading partners. It now looks like this is finally about to happen.
Way back in August 2000 the New Zealand government agreed to review the 1953 Act to take account of the social and technological changes since its enactment. After extensive consultation with stakeholders, the new Patents Bill was introduced to the New Zealand Parliament in July 2008.
The principal aims of the Bill were to strengthen the criteria for granting a patent, and to otherwise generally reform and modernise New Zealand patent law. The low standards set under the 1953 Act were recognised in the explanatory note introducing the Bill. As explained by the Hon Judith Tizzard, then Associate Minister of Commerce: ‘patent rights granted in New Zealand can be broader than patent rights granted in other countries for the same invention. This has the potential to disadvantage New Zealand businesses and consumers, as technology that may be freely available elsewhere could be covered by patents in New Zealand.’
The Bill was given its first reading in May 2009. It was then referred to the Commerce Select Committee, which recommended the Bill be passed, subject to some amendments. The most controversial amendment was the addition of a new exclusion, stating that a computer program was not to be a patentable invention in New Zealand!
Not unpredictably, the newly introduced, apparently outright, ban on software patents was applauded by free and open source software advocates, but opposed by many in the commercial software and technology industries. This controversy has undoubtedly delayed passage of the Bill.
A number of attempts to resolve the impasse over software patents were unsuccessful. However, the New Zealand Government proposed an amendment to the Bill on 9 May 2013, which has finally received broad-based support.1
The proposal clarifies that a computer program is not a patentable invention only to the extent that a patent or an application relates to a computer program as such. The amendment also states that a patent or application relates to a computer program as such if the actual contribution made by the alleged invention lies solely in it being a computer program.
This approach is considered to be consistent with New Zealand’s obligations under TRIPS, and allows New Zealand to draw on UK precedent.
Summarising some of the key provisions of the Patents Bill:
- The prior art base for assessment of novelty and inventive step will include information made publicly available anywhere in the word, and not only in New Zealand, as is presently the case.
- Examination of New Zealand applications will be expanded to include assessment of inventive step.
- Patentable inventions will need to be ‘useful’ – defined as having a specific, credible, and substantial utility.
- Applicants will no longer be given the ‘benefit of the doubt’, and a patent will only be granted if it is found to be valid on the ‘balance of probabilities’.
- Limited grace periods will be introduced to protect inventors against unauthorised disclosures, to allow for reasonable trials, for disclosures to government, and for disclosure at specified exhibitions.
- Exclusions from patentability will include: human beings and biological processes for their generation; inventions contrary to public order or morality; methods of treatment of human beings by surgery or therapy; methods of diagnosis practised on human being; plant varieties; organisms; and computer programs ‘as such’.
- Maori traditional knowledge will be recognised, and its patenting and exploitation regulated, through a Maori Advisory Committee appointed to provide advice to the Commissioner of Patents on request.
- Infringement will be defined as the unauthorised doing of anything the patentee has the exclusive right to do and will be expanded to include contributory infringement.
- Experimental use of a patented invention will be protected by a new defence to infringement.
- Patent applications will be published 18 months from the earliest priority date.
The Patents Bill also retains the current pregrant opposition system, while New Zealand remains steadfast in its policy of not providing term extensions for pharmaceutical patents as compensation for delays in regulatory approval.
The Bill is expected to pass within the next few months, and to come into force some time in 2014.
Watermark’s patent attorneys are registered to practise in New Zealand and have a depth of experience in working before the New Zealand Patent Office. Watch the Fresh News section of our website for updates on further developments in the passage of the new patents legislation through the New Zealand parliament.