A new Patents Act 2013 will take effect on 13 September 2013 and provide a major update and modernisation of the previous Patents Act 1953. The new Patents Act 2013 significantly raises the threshold for patentability in New Zealand. Key provisions of the New Zealand Patents Act 2013 are discussed below.

Filing Applications
In order to take advantage of the current patentability threshold, all patent applications must be filed in New Zealand by 12 September 2014 and all PCT applications must enter the New Zealand national phase by that date.

Changes and Key Provisions
The following summary of changes and key provisions in the New Zealand Patents Act 2013 will take effect from 13 September 2014 and will significantly increase the patentability requirements to essentially align with higher thresholds recently adopted in Australia:

Examination

  • absolute novelty (previously local novelty) including “whole of contents” for prior filed patent specifications
  • examination on all grounds (previously inventive step not examined) with higher standard of ‘balance of probabilities’ (previously ‘benefit of doubt’)
  • an invention must have “a specific, substantial and credible utility” (US style utility)
  • complete specifications must disclose “best method” and invention in a “clear and complete enough manner” to be performed by person skilled in the art (EP style enablement)
  • 12-month final acceptance deadline for addressing examination reports (no extensions and in line with Australia)
  • claims to be “clear and concise” and “supported by matter” disclosed in the complete specification
  • exclusion from patentability
    • contrary to public order or morality (e.g. cloning of human beings, commercial use of human embryos, modifying germ line genetic identity of animals likely to cause suffering without substantial medical benefit)
    • human beings and biological processes for their generation
    • methods of medical treatment of humans by surgery or therapy
    • methods of diagnosis practiced on humans
    • “computer software as such” (in line with UK Aerotel decision essentially still allowing for patenting of embedded software)

General

  • 18 month publication of patent specifications
  • online availability and publication of Examiner’s reports and communications
  • no extensions of patent term
  • restorations available based on unintentional lapse providing no undue delay in requesting restoration once unintentional lapse discovered
  • exclusions to infringement provided for spring-boarding (regulatory approval), prior use and experimental research
  • contributory infringement provisions provided
  • entitlement to apply at grant (previously at filing)

Divisional Applications

  • divisional applications must be filed before acceptance
  • divisional applications filed after 13 September 2014 will still be examined and granted under the lower 1953 Act provisions providing they claim rights to a complete application filed before 13 September 2014 (for PCT applications this requires a national phase filing before 13 September 2014 on which a divisional application is claiming rights)

Third Party Actions

  • Third Party Submissions - available after 18 month publication and before acceptance as ex parte action against novelty and inventive step grounds only
  • Re-examinations - available following acceptance pre-grant and at any time after grant on all grounds as ex parte action including patents granted under the old Patents Act 1953 (previously not available)
  • Oppositions - post-acceptance/pre-grant opposition available on all grounds (previously limited grounds for oppositions with a higher threshold applying for inventive step of “clearly obvious”)
  • Revocation - granted patents available before Patent Office or Court on all grounds including patents granted under the old Patents Act 1953 (previously not available as an action via the Patent Office)

Renewals

  • Annuities to apply from 4th year after filing of a complete application
  • Current renewals for 1953 Act patents will continue for the next renewal only (4th, 7th, 10th or 13th year), and then 2013 Act yearly renewals will apply