The New Zealand Patents Act will shortly come into effect and will apply to all New Zealand applications (complete, national phase, divisional applications) filed on or after its commencement date. At this stage it is expected that this will not be until mid to late 2014 as the Regulations that give effect to the new Act are still yet to be drafted.
This legislation will replace the Patents Act 1953 and bring New Zealand patent law into line with its major trading partners. The new Act will strengthen the criteria for granting a patent in New Zealand by expanding the current local novelty assessment to absolute (worldwide) novelty, introducing an inventive step and utility test at the examination stage, providing for ‘whole of contents’ considerations as part of the existing novelty test and introducing a new support requirement in place of the existing fair basis test. It will also replace the ‘benefit of the doubt’ test for the right to grant with the civil standard of ‘balance of probabilities’.
The new Act will maintain the existing exclusions to patentability including methods of diagnosis and therapeutic, surgical and diagnostic methods for treatment. However, it will also introduce a new exclusion for computer-implemented inventions from patentability.
This particular exclusion caused a delay in the enactment of this new legislation as, when the Patents Bill was first circulated, the computer-implemented exclusion was very general in nature and provided for a blanket ban on all software from patentability. However, following lengthy debates and after further consultation with relevant stakeholders, it was agreed that a workable compromise could be achieved with the exclusion being tempered to provide for limited protection where the inventive contribution rests somewhere outside a computer program per se.
Under the new Act a computer-implemented invention will not be deemed a patentable invention if the sole inventive feature is that of a computer program. It will, however, be possible to obtain patent protection for a computer program if the inventive contribution lies outside the computer or if it affects the computer itself but is not dependent on the type of data being processed or the particular application being used.
These changes relating to software will now bring the New Zealand patent legislation more closely into line with the approach adopted in Europe, particularly in the United Kingdom. Parties can therefore seek guidance from the relevant case law in the United Kingdom.
Patent applications filed prior to the commencement of the new Act will be considered under the current 1953 Act, which does not explicitly exclude computer-implemented or software patents. It is anticipated that the "complete filing date" allocated to New Zealand applications by the Intellectual Property Office of New Zealand (IPONZ) will determine whether the provisions of the old 1953 Act or the new Act are applicable. Applicants should consider filing for protection for these inventions as soon as possible to establish a ‘complete filing date’ in New Zealand before the new Act’s commencement date. A ‘complete filing date’ can be the date of making a non-provisional application directly at IPONZ or of filing of an international (PCT) application at IPONZ or elsewhere with or without the benefit of an earlier foreign application being filed for which priority can be claimed in each case.