The new Patents Act New Zealand will apply to all complete applications filed on or after 13 September 2014, including PCT applications that enter the New Zealand national phase on or after this date. New applications will have filing dates starting 15 September 2014. Given the new Act is more onerous for applicants businesses should seriously consider instructing to file any New Zealand applications before the new Act commences.
The main changes to be introduced under the new Act are as follows:
- Request for Examination – under existing laws, patent applications in New Zealand are automatically examined. Under the new Act, a Request for Examination must be filed along with fees for examination to commence. Exam must be requested within two months of being “directed” or within five years of the filing date. Shortened periods for responding to examination will apply.
- Time restriction on divisional applications – presently, a divisional application can be filed at any time until a Notice of Acceptance is received. Under the new Act, the request for examination of divisional applications must be filed within five years from the (international) filing date of the parent application. This creates a five year cut-off for the filing and requesting of examination of any divisional application from its parent. This will only apply to divisional applications of applications filed under the new Act.
- Absolute (worldwide) Novelty prior art base – the new Act will expand the current local novelty test to include material available anywhere in the world.
- Examination for obviousness – under existing laws, examiners were not required to assess the obviousness of an application during the examination stage, although it could be raised as a ground of post-acceptance opposition. The new Act requires that all applications will be examined for obviousness and may be refused acceptance on this ground.
- Examination for usefulness – the new Act will introduce a requirement that a claimed invention will be useful by demonstrating a “specific, credible, and substantial utility”.
- Support requirement – Under the 1953 Act, the claims of a specification must be “fairly based” on matter disclosed in the complete application. The requirement under the new Act is modelled on that in Europe, in that the claims must be “supported” by matter disclosed in the specification.
- Exclusions from patentability – there were previously no specific exclusions from patentability. Under the new Act, the following are not considered to be patentable inventions:
- A computer program as such - Human beings and biological processes for their generation - A method of treatment of human beings by surgery or therapy - A method of diagnosis practiced on human beings - A plant variety (protectable under the Plant Variety Rights Act 1987)
- Post-grant revocation – under existing laws, a patent which had been in force for more than a year could only be revoked on application to the High Court. The new Act has introduced provisions so that actions for post-grant revocation of a patent can be commenced either before the Commissioner of Patents or the High Court.