More than two decades after announcing steps to introduce new Patent law, the long awaited, new and improved New Zealand Patents Act has finally arrived. The Patents Act 2013 received Royal Assent on 13 September 2013, with the new provisions to take effect at least by 13 September 2014.
The changes are extensive, serving to more closely align New Zealand and Australian patent laws. The new Act also represents a step toward establishing a single Trans-Tasman (Australia and New Zealand) patent system.
The most significant aspects of the New Zealand Patents Act 2013 include:
- Absolute novelty will replace the previous local novelty standard
- Grounds for examination have been expanded to include inventive step and utility
- New utility requirement; satisfied where an invention has a specific, credible and substantial use
- 'Whole of contents' novelty will replace 'prior claiming'
- Support requirements strengthened, with previous 'fair basis' test replaced by a 'support' requirement
- Test for a valid priority claim amended to a 'support' requirement
- Written description requirements strengthened, with introduction of a sufficiency requirement
- A 'balance of probabilities' standard will apply to examination, replacing previous 'benefit of the doubt' standard
- Formal request for examination required, either voluntarily or in response to a direction from the Commissioner
- Complete specifications will automatically be published within 18 months of the priority date
- New requirement for a Notice of Entitlement to be filed prior to acceptance
- Amendments after acceptance will be allowable where they relate to matter that is in substance disclosed, or where the amended claim falls wholly within the scope of a claim of the specification before amendment
- New extension of time provisions to restore a lapsed or abandoned application in prescribed circumstances
- New provisions to bring the Act in line with TRIPS protocol
- Exclusions to patentability formally expanded to include inventions that would be contrary to public order or morality, human beings and processes for their generation; methods of treatment and diagnosis of human beings, and plant varieties; as well as a separate general exclusion for computer programs as such
- Options for third-party challenges expanded to include pre- and post-grant re-examination and non-time limited post-grant revocation, in addition to existing pre-grant opposition
- 'Anti-self collision' provisions have been removed
- Prior secret use introduced as a ground of invalidity before the Office
- Exclusive rights afforded to a patentee defined with reference to 'exploiting an invention'
- Exceptions to infringement expanded to include experimental use and prior use exemptions
- Annuities will be payable prior to acceptance of an application
- Existing requirement for divisional applications to be filed prior to acceptance has been retained
- Existing grace period provisions have been retained and exempt prior disclosure in a limited number of prescribed circumstances. No provision for a general grace period
- No patent term extension provisions have been introduced