The New Zealand Patents Act 2013 (‘2013 Act’) will replace the current Patents Act 1953 (‘1953 Act’) on 13 September 2014.
The Patents Act 2013 represents a significant shift for patent law in this country and a major overhaul of the current 1953 Act. This reform follows on from recent reforms of the Australian and US patent laws.
As a result, some patents and applications will be subject to the provisions of the existing Act, while other patents and applications will need to comply with the new Act.
This article is a guide to the changes in the new Act, with relevance to the Life Science technology areas (a traditionally controversial area of patentability).
Exclusions from patentability
The Patents Act 2013 specifically excludes from patentability human beings and biological processes for their generation; methods of medical treatment of humans by surgery or therapy (which are currently not patentable through a morality exclusion); methods of diagnosis of humans; and plant varieties (see S16 of the 2013 Act).
In addition, S15(1) of the 2013 Act provides specific examples of exclusions of subject matter that is contrary to either public order or morality including the cloning of human beings and the commercial use of human embryos.
While the above exclusions put into statue what was previously excluded by the Intellectual Property Office of New Zealand under the 1953 Act morality exclusion, subject to NZ Patent Office interpretation, they will likely represent little change from current IPONZ practice.
Isolated naturally occurring nucleic acid sequences are likely to remain patentable subject matter in New Zealand, in light of the recent confirmation by the Federal Court of Australia in Cancer Voices Australia Pty Ltd v Myriad Genetics Inc  FCA 65.
Second medical uses of a known composition used in therapy to treat humans will still likely be protectable via the use of a Swiss type claim format as will cosmetic methods of treatment of humans.
While plant varieties produced through traditional breeding techniques will now only be protected through a Plant Variety Rights registration, products (such as a genetically modified plant variety) that have a practical application of a trait will still be protectable provided it also satisfies the patentability criteria of novelty, inventive step and industrial usefulness.
In relation to inventions involving the use, modification, or cultivation of micro-organisms, the 2013 Act specifies the need to file a deposit of the micro-organism at a prescribed depositary by the filing date of the complete specification (see s42). This further formality acts as a sufficiency and clarity requirement for a patent application.
This requirement applies if a person skilled in the art could not reasonably perform the invention without a sample of the microorganism; and where the micro-organism is not reasonably available to a person skilled in the art in NZ (even if not in NZ).
The complete specification should state all relevant information on the characteristics of micro-organism; and include name of the prescribed depositary and accession number. This section also specifies the need to ensure samples of the micro-organism are obtainable from the prescribed depositary from the New Zealand filing date.
Although this provision will likely increase the time and cost of the New Zealand patent application process, the need for filing a deposit of the micro-organism is currently needed under the 1953 Act to satisfy the provisions of the Budapest Treaty.
Maori Consultative Committee
Another change of the 2013 Act is the provision of a Maori Consultative Committee to advise the Commissioner on whether commercialisation of a patented invention related to traditional knowledge or indigenous plants or animals would be against Maori interests and values (see S15(3)). Although there is some uncertainty on how this provision would function, such a Committee has been successfully in use to advise the Commissioner in connection with the Trade Marks Act since 2002.
Filing an application into New Zealand
To summarise, the commencement of the New Zealand Patents Act 2013 will create various differences in procedure, options and criteria for New Zealand patent applications depending on their filing date.
For applicants with non-New Zealand priority applications, there may be advantages for filing direct Convention applications or entering national phase in New Zealand by 12 September 2014 to obtain prosecution under the current 1953 Act.