New Zealand has new patent legislation (Patents Act 2013; the ‘new law’) which came into effect on 13 September 2014. The previous legislation (Patents Act 1953; the ‘old law’) did not allow for re-examination of accepted patent applications or granted patents. In order to invalidate a granted patent in New Zealand, therefore, expensive revocation proceedings were necessary. Where pharmaceuticals were involved, there was little incentive to litigate as there were no guarantee of sales even if successful due to New Zealand’s unique system of tendering for supply of pharmaceuticals by the Pharmaceutical Management Agency (Pharmac).1
Amongst many other changes, New Zealand’s ‘new law’ has introduced the option for re-examination of accepted patent applications or granted patents. A third party can therefore make a request for re-examination and submit relevant documents to support an allegation for refusal of grant or revocation of a patent, which the examiner will take into consideration whilst re-examining the application/patent. This may provide a more cost-effective and efficient way to challenge an application/patent.
The grounds on which re-examination can be requested prior to grant of the application2 are the same as those for opposition,3 and those requested after grant of the patent4 are the same as those for revocation.5 These pre- and post-grant grounds are essentially the same and include, amongst others, that the invention claimed is not a patentable invention6 (including that the invention is not useful, novel or inventive).7
If the examiner is satisfied, on the balance of probabilities, that any of the relevant grounds have been established, then they must issue a report to the applicant/patentee,8 who then has 3 months (extendable by up to 1 month upon request) to file a response to that report, together with any amendments, if desired.9
The Commissioner may then refuse the application10 or revoke the patent11 if the applicant or patentee (respectively) has been given a reasonable opportunity to amend the specification to remove the ground of objection and has failed to do so.
The person who requested the re-examination does not have any rights to be heard or participate in the re-examination proceeding, nor to appeal the Commissioner’s decision. Furthermore, re-examination cannot proceed if there is an opposition pending (if application accepted) or relevant court proceeding pending (if patent granted).
Although re-examination applies retrospectively so that it can be requested on applications/patents that were examined under the old law, the law under which they were originally examined continues to apply. As inventive step was not a ground of examination prior to issuance of the new Act, it cannot be a ground of re-examination for these applications/patents.
The general procedure for re-examination appears to be closely aligned with Australian practice, however, there are a number of additional grounds of opposition available in New Zealand. A table comparing the two is shown below, with significant changes shown in bold.
Click here to view table