New Zealand patent law is about to change significantly with the enactment of the New Zealand Patents Act 2013, which comes into force on 13 September 2014.
Some of the key changes include:
- The prior art base for the assessment of novelty and inventive step will be broader. Under the current Act, novelty and inventive step are assessed against what was published or used in New Zealand, but under the new Act the prior art base will include all matter that has been made publicly available anywhere in the world before the priority date. The prior art base (for novelty but not inventive step) will also include the “whole contents” of New Zealand specifications that have an earlier priority date than the claimed invention but that are published later than the priority date. Under the current Act, earlier unpublished applications are only relevant if they claim the invention claimed in the later invention. These changes will bring New Zealand into line with most other jurisdictions, including Europe.
- Applications will be examined for inventive step and utility, neither of which requirements are currently examined during prosecution. In order to meet the utility requirement, an invention must have a “specific, credible, and substantial utility”.
- A higher standard of disclosure in the description will be required. Under the current Act, claims are required to be “fairly based”, but under the new Act they must be “supported” by the matter disclosed in the complete specification. It is expected that the new support requirements will result in New Zealand claims being more restricted in scope than they are under the current Act.
- The Act has introduced preclusions to the patentability of some computer software, which may make it more difficult to patent computer program based inventions.
- The patentability threshold of a claimed invention will be lifted from one of “benefit of doubt” to “balance of probabilities”.
- Examination must be requested and an examination fee paid under the new Act.
- New re-examination provisions will enable any person to request re-examination of accepted patent applications and granted patents, thereby offering a cost-effective way for third parties to challenge the claims of a patent.
- The new Act introduces the requirement for a “Notice of Entitlement” to be filed before the patent can be granted. The Notice of Entitlement must state the grounds on which the applicant is entitled to be granted a patent (for example, through assignment, or an employment agreement).
- Renewal fees will be payable 4 years from the filing date and annually thereafter, including for pending applications.
What does the new Act mean for you?
- A higher standard for examination and patentability.
- Longer examination.
- Greater procedural burden.
- A greater number of fees/higher fees.
What will the new Act apply to?
- Patent applications filed on or after 13 September 2014, including national phase entries on or after this date.
- The new Act will also apply to all granted patents, but the grounds of revocation from the current Act will continue to apply to those patents granted under that Act.
- The new Act will not apply to divisional applications filed out of a parent application filed before 13 September 2014.
What should you do?
- New applications: If applications are filed in New Zealand, or New Zealand national phase is entered, before 13 September 2014, then the current, more-lenient examination standards and patentability tests will continue to apply. The procedural burden and fees will also be lower for applications filed before 13 September 2014, and applications are likely proceed to acceptance more promptly. You may therefore wish to consider filing New Zealand applications, particularly national phase applications, before the new Act comes into force.
- Renewal fees: Under the current Act, renewal fees are payable on granted New Zealand patents 4, 7, 10 and 13 years from the filing date, whereas under the new Act renewal fees will be payable annually from the 4th year of filing. Because of the increase in the number of renewal fees payable, it is likely to be cheaper to renew your patent under the current Act. It is possible to pay renewal fees in advance under the current Act, so you may wish to consider paying some or all of the remaining renewal fees on your granted patents before the 2013 Act comes into force.