The Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill 2015 passed into law by the New Zealand Parliament on 16 November 2016.
The original Bill had been substantially amended following feedback from a range of stakeholders and a review by the New Zealand Parliament’s Commerce Select Committee.
The Patents Amendment Bill 2015 was originally introduced on 3 November 2015 to correct oversights in the Patents Act 2013 which came into force in September 2014 and advance the implementation of a single patent application (SAP) and examination process (SEP) in conjunction with Australia.
Key changes introduced
The key changes to be introduced by the new legislation include:
- Removal of lack of unity as a ground to oppose a patent being granted.
- Establishment of a single trans-Tasman patent attorney regime and register.
Removal of lack of unity as a ground of opposition
Section 39(2)(a) of the Patents Act 2013 presently enables the grant of a patent to be opposed on the basis that it relates to more than one invention; that is, the claims lack of unity. This is inconsistent with the previous provisions of the Patents Act 1953 and patent opposition practice in other jurisdictions, such as Australia.
Following the passing of the Patents Amendment Bill 2015, lack of unity has now been removed as a ground of opposition. This change is intended to apply retrospectively to all patents and applications which are subject to the provisions of the Patents Act 2013.
Single economic market (SEM) patent initiatives shelved
The original Patents Amendment Bill 2015 included provisions for the introduction of a single patent application process (SAP) and single patent examination process (SEP), which would result in streamlining of processes and work-sharing between the Intellectual Property Office of New Zealand (IPONZ) and IP Australia.
Implementation of such processes required legislative changes in both Australia and New Zealand. The Australian Parliament passed legislation in 2015 (IP Laws Amendment Act 2015) to allow for implementation of the SAP and SEP. The Patents (Trans-Tasman Patent Attorneys and Other Matters) Bill was similarly intended to enable implementation of the new SAP and SEP system in New Zealand.
However, the New Zealand Commerce Select Committee reported that the SAP and SEP were unlikely to provide significant benefits to New Zealand in particular or to patent applicants or users of the system more generally. As such, the Patents Amendment Bill 2015 was revised to remove provisions relating to the single economic market (SEM).
IP Australia have since issued a statement indicating that they respect the New Zealand Government’s decision and work on the SAP and SEP initiatives has now ceased. It is unlikely that this initiative will be revisited in the near future.
Single trans-Tasman patent attorney regime and register
The Patents Amendment Bill 2015 also introduces provisions to enable a joint regulatory framework for patent attorneys to register and practise between Australia and New Zealand. Previously, patent attorneys who met the requirements could separately apply to register in both jurisdictions. The new regime seeks to harmonise the registration requirements for patent attorneys in Australia and New Zealand and establish a single trans-Tasman patent attorney register.
Possible changes to divisional application practice
The New Zealand Ministry of Business Innovation and Employment (MBIE) recently conducted a consultation into the divisional patent application practice. Under the current transitional provisions of the Patents Act 2013, divisional patent applications derived from applications which are subject to the more lenient provisions of the Patents Act 1953, will also be subject to those provisions. In the consultation paper, the MBIE flagged concerns about the need to maintain divisional practice under each of the 1953 and 2013 Act, including associated uncertainty for third parties and patent applicants, the additional costs and complexity for IPONZ, and meeting international obligations.
The MBIE proposed three possible alternatives for addressing these concerns:
i. No change in practice (i.e. the status quo); ii. Amending the transitional provisions such that it would not be possible to file new divisional applications from any 1953 Act patent application after a specified date; and iii. Amending the transitional provisions such that new divisional applications filed from a 1953 Act patent application will be examined under and subject to the 2013 Act if filed after a specified date.
Option (i) is evidently fairest to patent applicants but fails to address concerns regarding the additional costs and complexity for IPONZ. Option (ii) fails to meet international obligations. The MBIE preferred option, Option (iii), unfortunately imports significant problems associated with new Act divisional applications which are yet to be addressed, including:
i. The 5 year cap for requesting examination that unduly restricts the genuine practice of patent applicants in pursuing patent protection; ii. Poisonous priority issues (whole of contents novelty self-collision between parent/divisional); and iii. The strict interpretation around double patenting (any overlap in claim scope between parent/divisional) including the possibility for double patenting to exist at the time of filing a divisional application which may present an invalid filing if later challenged by a third party.
The consultation process concluded on 14 October 2016. The MBIE is yet to provide an update. However, it appears likely that there will be some change to divisional practice in New Zealand as a result of the consultation.