Joey Tempest wrote it, Europe sang it, and we’re now on it…The Final Countdown.
On 13 September this year, the journey of the new Patents Act will finally be complete. Introduced into parliament on 9 July 2008, the new Act was six years in the making, receiving Royal Assent on 13 September 2013.
Parts of the Act came into force on 14 September 2013, including the part governing the creation of regulations to implement practical aspects of the Act. Submissions in relation to the draft regulations are currently being reviewed, with the final draft to be submitted to the Cabinet Office by 4 August 2014. The regulations in their final form will come into force on 13 September 2014.
Those of you who have been following the progress of the Patents Act and who by now are familiar with the changes the Act brings have an excuse now to switch off. To those of you that are not so familiar with the new Act and especially the changes I will shortly highlight, I encourage you to read on.
As my colleague David Macaskill wrote in September 2013, the new Act is arguably the biggest shakeup in New Zealand’s intellectual property landscape in over 50 years. The new Act 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 Act are the same as the current Patents Act 1953. There will then be some continuity for patentees and businesses. However, two very significant changes are being implemented which concern how IPONZ examiners consider patent applications and the limits placed on the patentability of software.
IPONZ will soon be able to examine patent applications to determine whether the claims made in respect of, for example, a product involve “an inventive step”. In other words, does the invention take the leap forward claimed over existing products and documents? The inclusion of the law of “inventive step” in the new Act represents a higher threshold for hopeful patentees to meet; inventions of dubious inventiveness are consequently unlikely to succeed. The introduction of “inventive step” also represents a challenge to IPONZ examiners who up until now (and until the Act is in full force) have not had to consider this law.
The second of the changes referred to above should appease many, particularly those in the software industry. Under the 1953 Act businesses have been able to apply to wrap patent rights around software irrespective of whether the software was stand-alone or “embedded”. This has caused much frustration among software developers. Under the new Act only “embedded” software patents will be granted provided the software forms an integral part of a component in which it is sold: for example, a medical device which requires computer software to operate it.
If you have or are working on an invention which may struggle to achieve granted rights under the new Act, I recommend you contact one of our patent attorneys for advice without delay. For you do not want to be left behind when the Patents Act 2013 eventually takes off.
This article first appeared in the Waikato Business News and was written by Ben Cain, Associate, James & Wells Intellectual Property.