Three important Kiwi milestones occurred this week: the All Blacks retained the Bledisloe Cup for the eleventh year in a row; Team New Zealand won the Louis Vuitton Cup and the right to challenge for the America’s cup; and the New Zealand Patents Bill (2008) passed through its third reading in the New Zealand’s parliament and will now finally pass into law.

It has been a five year journey for the New Zealand Patents Bill.  The original Patents Bill was drafted in 2008, had its first reading in May 2009, underwent revisions and then significant debate on software patentability, leading to its second reading in September 2012.  The Bill has finally crossed the finishing line, and will come into force at a yet unspecified date once it has received royal assent from the New Zealand Governor-General.

The New Zealand Patents Bill replaces the Patents Act 1953 and will better align New Zealand patent law with Australian Patent law and current international patent practice.  Importantly the Bill:

  • Expands current local (NZ only) novelty to absolute (worldwide) novelty;
  • Introduces inventive step and utility tests at examination;
  • Whole of contents considerations included in novelty test;
  • Support requirement replacing fair basis test (similar to recent Australian Patent Law amendments);
  • Right to grant will now be judged based on a balance of probabilities approach rather than benefit of the doubt;
  • Specific exclusions to patentability will include methods of diagnosis, human beings, biological processes for their generation, therapeutic, surgical and diagnostic methods for their treatment, and plant varieties.  Additionally, new clause 15(3A) states that “a computer program is not a patentable invention”;
  • Introduction of an experimental use exception to infringement;
  • Publication at 18 months, as opposed to current publication at acceptance;
  • Third party challenges via pre-grant opposition, pre or post-grant re-examination before the commissioner; or post-grant revocation by the commissioner or the High Court
  • Introduction of contributory infringement; and
  • Introduction of a Maori advisory committee will advise on cultural considerations of relevant patentable subject matter, for example traditional knowledge and indigenous plants and animals.

The provisions of the Patents Bill will apply to all New Zealand applications (complete, national phase, divisional applications) filed after the commencement date of the new Act.  Applications filed prior to that date will be handled under the 1953 Act.

The commencement date of the new Patents Act has not yet been specified.  However, it is expected that a number of months will pass between royal assent and commencement to allow time for the new regulations to be drafted and finalised.