Is it possible that a second-tier patent system is on its way in New Zealand? A new Member’s Bill, which will at least have a first reading before Parliament, could introduce such a system.
The Patents (Advancement Patents) Amendment Bill was lodged in late March by Dr Parmjeet Parmar, a National MP and the Opposition’s Spokesperson for Science and Innovation. The Bill was drawn from the ballot on 5 April 2018 and has been introduced to the House. If the House decides that the Bill should progress, it will likely be referred to a Select Committee for public consultation and further consideration.
The Bill seeks to introduce a second-tier patent system for New Zealand, called an Advancement Patent. The Bill’s explanatory note states that the Bill “seeks to enhance New Zealand’s innovative performance” by providing a more accessible, quicker and cost effective second-tier patent system.
This would be achieved by amending the existing Patents Act to introduce the advancement patent option. The key features would be that an advancement patent:
- is easier to obtain and less expensive than a standard patent;
- requires an “advancement” over what is already known rather than an inventive step; and
- has a shorter term than the 20 year term of a standard patent.
For an advancement step to exist the advancement must be “distinctly different” from what is known by a skilled worker in the field and be a “useful improvement to the working” of what is claimed. In addition to having an “advancement step”, the advancement needs to meet the usual patentability requirements – i.e. be a manner of manufacture, novel and not in an area that is excluded from patentability by other provisions of the Act.
The Bill provides both a provisional advancement patent (which proceeds to registration after a formalities check) and an advancement patent (which has been examined). The patent term will be 10 years from the date of the patent. However, if a provisional advancement patent is not examined within three years it will expire. In addition, the term of an advancement patent runs from the date of the corresponding provisional advancement patent.
This may sound familiar. Australia also has a second-tier patent, the innovation patent. This requires an innovative step and has a lower threshold for registration (and shorter period of protection) than a standard patent. However, the innovation patent system is currently being reviewed by the Australian government and although still in existence, it may be phased out at some stage. There has been some criticism that the system is open to abuse in view of the low level of innovation required, some arguing that this has impeded rather than fostered innovation.
We will be following the developments on this closely and the implications it has on New Zealand and overseas entities.