New Zealand's new Patents Act 2013 came into force on 13 September 2014. The changes in the new Act were intended to align New Zealand's patent laws more closely with those of other countries including major trading partners.
The Patent Act 2013 is the first major overhaul of New Zealand's patent system in 60 years. As the majority of applications filed at the Intellectual Property Office of New Zealand (IPONZ) are national phase entries into New Zealand, some of the changes will cause difficulties for applicants, but they are long used to stricter requirements in other jurisdictions.
A list of significant changes
The most significant changes include tougher examination of patent applications, stricter deadlines, subject matter exclusions, more challenge options, and annual renewal fees.
- Applications will be published 18 months from the earliest priority date, rather than on acceptance as under the 1953 Act.
- Examination is no longer automatic. You must request examination within five years of filing or two months of receiving a direction, whichever is earlier, and pay an examination fee.
- Applications will now be examined for inventive step, not just novelty. The prior art base, against which both novelty and inventive step will be tested, encompasses all matter and information available anywhere before the priority date.
- Applications must be in order for acceptance within one year of a first examination report issuing. The applicant must respond to the examination report within six months, and to any further exam reports within three months, all subject to the one year prosecution deadline.
- Divisional applications can only be filed within five years of the filing date of the application to which they are antedated. Examination must also be requested within this period.
- Conflicting applications are considered using the 'whole contents' approach, replacing the more limited 'prior claiming' standard.
- The new Act will prevent or make it more difficult for software inventions to be patented. Methods of treatment and diagnostic methods are also not patentable.
- As well as retaining pre-grant opposition and post-grant revocation, the new Act introduces new ways to challenge patents and applications in the form of pre-acceptance third-party observations and pre and post-grant re-examination.
- Annual renewal fees will be due to keep an application pending or a granted patent in force under the new Act, compared to four payments under the old Act. A pre-grant maintenance fee is also payable, beginning on the fourth anniversary of the filing date.
The changes brought in by the new Act have necessitated a complete overhaul of IPONZ's electronic filing and file management system which may take some time to bed down.
IPONZ has indicated that applications will be examined within about three months of a request for examination being made. Unless you wish to be one of the first to 'road test' the new legislation, we suggest you wait for a direction to issue before requesting examination.
An edited version of this article appeared in the October issue of Managing IP magazine.