On 13 September the new Patents Act will come into force – whether you’re ready for it or not. So, too, will the Patents Regulations 2014 which were ratified by an Order in Council on 11 August.
Everything, then, is set. This article thus serves as something of a recap on the extent of the changes under the new regime.
Many of the provisions of the new Act are the same as the current Patents Act 1953. There will then be some continuity for patentees and businesses. However, two very significant changes are being implemented which concern how IPONZ examiners consider patent applications and the limits placed on the patentability of software.
IPONZ examiners will shortly have to examine patent applications to determine whether the claims made in respect of, for example, a product involve “an inventive step”. The inclusion of the law of “inventive step” in the new Act represents a higher threshold for hopeful patentees to meet.
In addition to “inventive step”, IPONZ examiners will also have to consider whether an invention is “useful”. An invention, so far as is claimed in a claim, will be deemed useful if it “has a specific, credible, and substantial utility”. It remains to be seen just how this definition will be applied but clearly inventions which do not meet this threshold will not be considered patentable under the Act.
The second of the major changes referred to above should appease many, particularly those in the software industry. Under the 1953 Act businesses have been able to apply to wrap patent rights around software irrespective of whether the software was stand-alone or “embedded”. This has caused much frustration among software developers. Under the new Act only “embedded” software patents will be granted provided the software forms an integral part of a component in which it is sold: for example, a medical device which requires computer software to operate it.
Aside from changes to how patent applications are examined, there are a number of other changes to how patent applications are processed and how rights are maintained in granted patents. Your patent attorney can advise you on these more mechanical changes.
There is also a change to who can be liable for infringing a granted patent. Under the 1953 Act, a person who contributed to another person’s infringing actions could not be found liable under the Act – under the 2013 Act they can be. So if you’re thinking, for example, you can get around infringing a patent by supplying a third party with the means to infringe a patent, and you know that those means are suitable and intended by that third party to infringe a granted patent – and the third party’s invention would ultimately infringe the granted patent - you could find yourself on the receiving end of a letter from me!
Patents Act 2013, in force 13 September 2014…make a note.
This article first appeared in the Waikato Business News