The Patents Bill recently passed after its third reading. The bill is now five years old. It crossed the finish line in more of a slow limp than a mad dash.
The previous legislation was 60 years old. The new Patents Bill is intended to create a balanced patent system that will protect inventions and encourage innovation. It will align New Zealand's patent laws more closely with international best practice, and will build on initiatives that will help to create a more productive and competitive economy.
The Patents Bill was introduced to Parliament and had a first reading in May 2009. It was then referred to the Parliamentary Commerce Select Committee for public submissions. In March 2010 the committee recommended a revised bill. On September 12 2012 the bill underwent a second reading. Almost a year later, the bill has now had its third reading.
Under the new regime, examination is expected to be much tougher. Examiners will now be formally permitted to examine for inventive step (obviousness). At present, examiners are limited to examination for novelty. The new prior art base for examiners will include matter published or used in New Zealand or elsewhere.
The bill provides the following processes for a third-party challenge to a patent: application or patent:
- opposition before grant;
- re-examination before grant;
- assertion before acceptance;
- revocation before the commissioner or court; and
- re-examination after grant.
It will be a case of assessing which option is best in any given situation.
The bill seeks to ensure that the interests of Maori in their traditional knowledge and indigenous plants and animals are protected.
A Maori advisory committee will advise the commissioner of patents (on request) whether an invention is derived from Maori traditional knowledge or from indigenous plants or animals. If so, the committee will advise whether commercial exploitation is likely to be contrary to Maori values.
The bill excludes from patentability any invention where commercial exploitation of the invention is contrary to public order or morality. The bill further excludes:
- human beings;
- treatment methods for human beings;
- methods of diagnosis practised on human beings; and
- plant varieties.
In March 2010 the Commerce Select Committee added controversial new Clause 15(3A), which states that "a computer program is not a patentable invention". This clause was added in response to submissions received from the open source movement.
The computer program exclusion is the subject of two governmental supplementary order papers. Government Supplementary Order Paper 120 introduces a European-style 'as such' exclusion that is considered to be more consistent with New Zealand's international obligations and precedents. Further, Supplementary Order Paper 237 introduces several additional new clauses intended to clarify the meaning of the term 'as such'.
The validity of patents issued under the existing Patents Act will generally be judged under the existing law. Patent applications made under the existing act will generally continue to be dealt with under that act, even after the new act has entered into force.
The new act will apply if a complete specification is filed after the act has entered into force. Where a divisional application is filed out of a patent application dealt with under the old act, the divisional application will still be dealt with under the old act.
Patent cooperation treaty applications that enter the New Zealand national phase before the new act commences will be dealt with under the old act. Where national phase entry is made after the new act commences, the application will be dealt with under the new act.
The Patents Bill has passed its third reading, and received royal assent from the queen's representative in New Zealand, the governor general, on September 13 2013. The provisions of the new act will take effect at a later date, giving officials time to write the regulations. The act is expected to come into full force by September 13 2014 at the latest.
The general consensus among all parties is that this act will continue to protect genuine innovations and encourage New Zealand businesses to export and grow.
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