On 13 September 2014, a new patent law enters into force in New Zealand. This law is tougher on a number of points than its predecessor.
In the new law, novelty is no longer the sole criterion when assessing patent claims; the inventive step and industrial application must also be taken into account. Furthermore, from now on absolute novelty is required, with no geographical limitations. If changes are made to the claims, more rigorous criteria will be applied when determining whether the description provides an adequate basis for this. In addition, the list of exclusions from patentability has been extended, to include things such as computer programmes, plant varieties and medical methods.
Changes have also been made to the application procedure. The request for examination, for instance, is no longer automatic and the period allowed to prepare the application has been reduced from a maximum of eighteen to twelve months. Furthermore, fees now have to be paid annually, both before and after the patent is granted. Third parties have more opportunities to challenge a patent's validity once it has been granted. The more stringent rules on invalidation apply to patents granted after the new law takes effect.
Impact on protection
As regards infringements, it is no longer possible to take action against prior use, which involves a third party making previous use of the invention. An exception is also made for research purposes. Conversely, the protection afforded now also extends to indirect infringements, such as supplying a significant component of the invention.
As a result of the new criteria, the evaluation procedure is now broadly in line with the rules that have applied for some time in the rest of the world, including Europe. As a number of aspects of the procedure will be more complex because of the new rules, when dealing with New Zealand it is just as important from the outset to take care when assembling a patent application and seek professional advice.