After a protracted gestation period, the New Zealand’s Patents Act 2013 will take full effect from 13 September 2014. The new Act represents the first major refresh of New Zealand’s patent legislation in 60 years, and brings New Zealand patent law into line with most other countries around the world. The likely effect of the change will be to make it more difficult to obtain patent protection in New Zealand, but patents which are granted will be more robust.
In order to take advantage of the lower examination standards available under the 1953 Act, Applicants will need to file their New Zealand patent applications before 13 September 2014. This means that convention applications (i.e. non-PCT National Phase) and New Zealand National Phase applications must be filed before 13 September 2014.
If an Applicant who is interested in filing in New Zealand is considering filing a PCT application, and the deadline for filing the PCT application is after 13 September 2014, we recommend they file a convention application directly in New Zealand prior to the PCT filing deadline and before 13 September 2014.
Filing before 13 September 2014 may be particularly important for software-based inventions as there is some uncertainty around the patentability of software-based inventions under the new Act.
The benefits of filing applications before 13 September 2014 include:
- During examination, in a dispute as to allowability of an application the benefit of the doubt goes to the Applicant;
- A local novelty standard will be applied;
- Inventive step and utility issues cannot be raised during examination;
- If an Opponent wishes to oppose an application pre-grant on the grounds of inventive step, the Opponent must show that the invention claimed is “clearly obvious”; and
- There is no provision for pre- or post-grant re-examination.
If you are a business and would like more information regarding the new Patents Act and how the changes may affect you, please click here.
If you are an intellectual property professional and would like further details regarding the new Patents Act, please click here.