The new Patents Bill is almost in effect after reaching the committee of the whole house stage. The bill is now five years old. It's going to cross the finish line with more of a slow limp than a mad dash.
The current New Zealand legislation is 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 create a more productive and competitive economy.
The Patents Bill was introduced to the New Zealand 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 Patents Bill. On 12 September 2012 the bill underwent a second reading. Almost a year later we have now reached the committee of the whole house stage.
The validity of patents issued under the current Patents Act will generally be judged under the existing law. Patent applications made under the current act will generally continue to be dealt with under that act even after the new act commences.
The new act will apply if a complete specification is filed after the act has commenced. Where a divisional application is filed out of a patent application dealt with under the old act, then the divisional application will still be dealt with under the old act.
PCT 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.
Greater Confidence of Validity
Examination under the new regime will be expected to be a lot tougher. Examiners will now be formally permitted to examine for inventive step (obviousness). At the moment 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 several processes for third party challenge to a patent application or patent. These are 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.
Subject matter exclusions
The bill excludes from patentability any invention where commercial exploitation of the invention is contrary to ordre public (public order) or morality.
The bill further excludes human beings, methods of treatment of human beings, methods of diagnosis practiced on human beings, and plant varieties.
The Commerce Select Committee back in March 2010 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 (SOPs). Government SOP 120 introduces a European-style 'as such' exclusion that is considered to be more consistent with New Zealand's international obligations and precedents. More recent SOP 237 introduces several additional new clauses intended to clarify the meaning of the term 'as such'.
There is still the third reading before the provisions of the new Patents Bill will take effect. Once the Bill has passed through a third reading it will receive royal assent from the Queen's representative in New Zealand, the Governor-General.
The general consensus among all parties is that the bill will continue to protect genuine innovations and encourage New Zealand businesses to export and grow.