The New Zealand Patent Bill, which is scheduled to replace the Patents Act 1953, is due to be brought into force by 31 December 2012. The new Patent Bill is essentially a hybrid of the current Australian and United Kingdom legislation, and has been designed to being New Zealand patent law more into line with the laws of other jurisdictions, including Australia.
One of the main concerns with the current Patents Act 1953 is the standard of patent examination required in New Zealand which is less strict than that required by most other countries. One consequence of this is that patent rights granted in New Zealand may be broader in scope than rights granted for the same invention in other countries.
Novelty and Inventive Step
To address such concerns, one of the key changes to be enacted by the Patent Bill will be the replacement of local novelty requirements with a worldwide (“absolute”) novelty test. In addition, the whole contents of an unpublished New Zealand complete specification having an earlier priority date will be taken into consideration when determining the novelty of the examined invention. The Patent Bill will also enable a third party to lodge observations as to novelty and/or inventive step between publication and grant of a patent.
Another key change to be enacted by the Patent Bill is the inclusion of the ground of inventive step when examining applications. Novelty and inventive step will therefore be measured against all matter made available to the public anywhere in the world.
Patentable Subject Matter
In relation to methods of diagnosis, patents for such inventions will be statutorily excluded from patentability, irrespective of whether such method is part of a surgical procedure. Other specific exclusions will include human beings, biological processes for their generation, therapeutic, surgical and diagnostic methods for their treatment, and plant varieties. Clients should be aware that protection for plant varieties will still be possible via the Plant Variety Rights Act 1987.
In relation to computer software, the Patent Bill appears to be distancing itself from Australia by statutorily excluding patents for such inventions, thereby aligning itself more with UK law. However, it looks so far that patents for “embedded software” will be allowed subject to guidelines being established once the Bill has been enacted. According to the Patent Bill, embedded software is defined as computer software that plays an integral role in the electronics with which it is supplied.
In relation to business methods, the Patent Bill does not specifically exclude patents for such inventions, so on its face it would appear that business methods can potentially be patented in much the same way as is permitted in the US and Australia; namely method claims which result in an “artificially created state of affairs” and a “physical effect”.
Duty to Disclose
In contrast to Australia, under the Patent Bill, the Applicant will be required to inform the Commissioner of the results of any documentary searches by or on behalf of a foreign patent office, carried out for the purpose of assessing the patentability of an invention disclosed in the complete specification or of an equivalent application outside New Zealand.
Under the Patent Bill, the Applicant will be required to formally request substantive examination of their application, and pay a corresponding fee.
The Patent Bill will replace the pre-grant inter partes opposition procedure currently available under the Patents Act 1953 for challenging the grant of a patent with the introduction of a re-examination procedure. The patent will not be granted while a request for re-examination remains undecided. Re-examination for both pre- and post-grant will be available upon request by a third party or of the Commissioner’s own volition on the ground that the claimed invention is not novel or does not involve an inventive step when compared with documents in the prior art.
Under the current Patents Act 1953, an application for revocation to the Commissioner must be made within 12 months of the sealing date. The Patent Bill extends this so revocation can be pursued at any time following the patent grant. The grounds of revocation are broadened due to the expansion of the prior art base, as outlined above. Therefore, filing for revocation may become a cost-effective means for challenging a patent’s validity.
In relation to infringement, the provisions available under the current Patents Act 1953 will be expanded to include contributory infringement of a patent to tackle the issue of supplying the means to infringe a patent, an issue previously dealt with under common law.