CHANGES AHEAD FOR THE NEW ZEALAND PATENTS ACT

After a year’s wait following an exposure draft, the new Patents Bill was finally introduced to the New Zealand Parliament in July 2008.

Once passed into legislation, which is anticipated to happen in 2009, the Bill will make significant changes to the law reflected in the Patents Act 1953.

The following is a summary of some of those changes:

• The requirement for local novelty will be replaced with an absolute (worldwide) novelty standard. This standard will exclude from patentability an imported invention which has been made publicly available in an overseas country;
• Examination will consider inventive step and usefulness in addition to the novelty requirement. For subject matter to be considered patentable it will need to have a "specific, credible and substantial utility";
• A new duty will be imposed on patent applicants to disclose the results of prior art searches made on corresponding overseas applications relating to the same invention;
• For patent applications which are considered to have borderline patentability during examination, the practice of giving patentees the benefit of the doubt will be replaced with the Australian and United Kingdom stringency test based on a balance of probabilities;
• A Maori Consultative Committee will be introduced to advise the Commissioner whether an invention claimed in a patent application is derived from indigenous traditional knowledge or indigenous plants and animals and if commercial exploitation of the invention would be against Maori interests and values;
• The pre-grant opposition procedure will be replaced with more limited ex parte re-examination proceedings before the Commissioner. Any interested person may initiate re-examination either before acceptance, after acceptance but before grant, or after grant based on the grounds that the invention lacks novelty or inventive step;
• The grounds for post-grant revocation will be expanded to reflect the new requirements for patentability as outlined above. Applications for revocation may be made to the Commissioner or the Court on any of the prescribed grounds at any time during the term of the patent. Revocation will be the first opportunity a third party will have to object to the grant of a patent on grounds other than novelty and inventive step;
• The process of publication after acceptance will be replaced with publication 18 months from the priority date. Damages for patent infringement will accrue from this publication date;
• The definition of "published" will be broadened to include information "made available to the public by written disclosure, oral disclosure or in any other way". This definition will include disclosures made on the internet. Contributory infringement will be included in the definition of infringement which is at present provided for in common law only, and to a more limited extent; and
• An experimental use exemption to patent infringement will be available in certain circumstances which will broaden the specific exception for work done in furtherance of an application for regulatory approval.

These changes will provide greater uniformity with aspects of the Australian and United Kingdom Patents Acts. They will also put in place measures to safeguard the rights and interests of Maori indigenous culture.

(Full text of the Patents Bill can be found online at: http://www.legislation.govt.nz/bill/government/2008/0235-1/latest/DLM1419043.html)

This article was published in Asia Law and NZ Analyst in November 2008.

By Justin Sweetman, Associate, James & Wells Intellectual Property