13 March 2014 marked six months before the substantive provisions of the Patents Act 2013 come into force. The Patents Act 2013 will make it significantly more difficult and more expensive to obtain a valid patent in New Zealand. Applicants and potential applicants should now be considering taking certain steps in order to ensure the Patents Act 1953 will apply to their applications.
Official Fees under the Patents Act 2013
The exact procedure and cost for obtaining a patent in New Zealand is yet to be determined. However, from the draft discussions published to date (see our summary here), it seems likely that the official fees for obtaining a granted patent will increase. At the least a new examination fee of approximately NZ $500 will be introduced for applications filed after 13 September. Other fees, including the cost for making a voluntary amendment, are also likely to increase.
Higher Threshold of Patentability under the Patents Act 2013
The substantive changes to the Patents Act 2013 will make it more difficult to obtain a valid patent in New Zealand. A major change is the expansion of the prior art base from anything publicly available in New Zealand to anything disclosed anywhere in the world. Patent applications will also be examined for obviousness and usefulness. Certain subject matter will be excluded from patentability, including computer software “as such”, methods of medical and diagnostic treatment of humans, and inventions the commercial exploitation of which is contrary to public order or morality. A summary of the major substantive changes can be found here.
The Patents Act 1953 will continue to apply to all applications accompanied by a complete specification filed in New Zealand, or all PCT applications entering national phase prior to 13 September 2014. Accordingly we strongly recommend the following actions in order to take advantage of the lower provisions:
- Where an applicant has filed an application accompanied by a provisional specification in New Zealand, they should file a complete specification prior to 13 September 2014.
- Where an applicant wishes to file directly into New Zealand (i.e. not via the PCT), and intends to rely on a foreign specification in order to claim priority under the Paris Convention, the application in New Zealand should be filed prior to 13 September 2014. This may mean filing the New Zealand application earlier than 12 months from filing date of the foreign specification.
- Where an applicant wishes to enter national phase from a PCT application, they should enter national phase prior to 13 September 2014. This could mean requesting entry into national phase in advance of the 31 month deadline.
Please note: The Patents Act 1953 will apply to a divisional application filed from any application to which the 1953 Act applies, even if the divisional application is filed after 13 September 2014.