Changes to New Zealand's patent legislation, which come into effect on 13 September 2014, will align it more closely to Australia's patent law. Partners Chris Bird and Trevor Davies advise on the importance of acting quickly before the stricter standards of New Zealand's new patent regime apply.
As we have reported in the past the New Zealand Patents Act 2013 (which will replace the current 1953 Act) will introduce some significant changes to the New Zealand patent law and practice. Broadly, the new provisions will bring New Zealand patent law closely in line with Australian patent law (as amended by the 'Raising the Bar' Act of 2012). This represents a step toward establishing a single Trans-Tasman patent system.
Of particular relevance to patent applicants, the changes will significantly raise the threshold for obtaining patent protection in New Zealand. The new Act comes into effect on 13 September 2014, and we urge all of our clients to consider bringing forward your patent applications in New Zealand in order to take advantage of the existing, less stringent patentability standards.
The changes introduced by the Patents Act 2013 are substantial, but many of these changes bring New Zealand patent law into conformity with other major patent jurisdictions, including Australia. The most significant changes include:
The current standard gives applicants the 'benefit of the doubt'. This will be replaced by the more stringent ‘balance of probabilities’ test.
The current local novelty standard will be replaced by the absolute novelty standard, which will bring New Zealand into alignment with major jurisdictions around the world.
Under the current provisions, inventive step (obviousness) was not considered during examination (although it was a ground for opposition or revocation). The new Act expands examination to include inventive step. This change will therefore raise the patentability threshold, and will bring greater consistency between patentability standards and the grounds of invalidity.
Like obviousness, utility will now be included as a requirement for patentability during examination. The invention must demonstrate a specific, credible and substantial use.
The current 'fair basis' test (to evaluate whether the claims travel beyond the subject matter disclosed in the specification) will be replaced by a 'support' requirement. The same requirement will apply in determining the validity of priority claims.
A sufficiency requirement will be introduced, strengthening the requirements for the written description. The new Act will require the invention to be described in a manner clear enough and complete enough to be performed by a skilled person, including the best method for performing the invention known to the applicant.
The new Act introduces a general exclusion for computer programs 'as such'. This change, one of the more controversial of the new provisions, is intended to ensure that computer programs per se will not be patentable.
Request for examination
Examination will no longer occur automatically, but a formal request for examination will now be required (either voluntarily or in response to a direction from the Intellectual Property Office of New Zealand [IPONZ]), with an examination fee payable.
Before acceptance of an application, it will now be necessary to file a Notice of Entitlement, setting out how the applicant is entitled to grant of the patent.
Currently, renewal fees only are payable after grant, on the 4th, 7th, 10th and 13th anniversary of the complete filing date. The new Act introduces annual renewals commencing on the fourth anniversary of the complete filing date, and these new fees will also apply to pending applications as well as granted patents, including applications filed and granted under the current Act.
The Regulations relating to the new Act are not expected until around mid-August, so some of the practical details relating to the changes is not yet known.
File applications before 13 September 2014
The patentability changes discussed above will only apply to complete applications (whether PCT national phase applications or convention applications) filed on or after 13 September 2014. For new divisional applications where the parent has a filing date prior to commencement of the new Act, the new application will proceed under the current Act, but only if the divisional application is filed with a request for antedating to the parent filing date.
We strongly recommend patent applicants who are contemplating filing complete, convention or PCT national phase applications in New Zealand do so before 13 September 2014 to take advantage of the more lenient provisions of the current Act and the lower fee structure.
Early payment of renewal fees can reduce costs
The change to annual renewal fees will generally mean higher costs to applicants and patentees. Under the new Act, renewal fees can be paid up to three months in advance of the due date. Accordingly, for any renewal fees due in the period 13 September to 13 December 2014, we recommend attending to the fee payment prior to 13 September 2014. Additionally, under the current Act it is possible to pay any future renewals of granted patents at current fee levels, including fees covering the full term of the patent. This will no longer be possible under the new Act, and you may wish to consider paying all future patent renewal fees prior to 13 September 2014.