New Zealand patent law has been overhauled with the passing of the new Patents Act 2013 in August.
The legislation won’t come into force until sometime in 2014 but, when it does, it will be the biggest shakeup in New Zealand’s intellectual property landscape in more than 50 years. Here's how the key changes may affect your business.
Patentability of software
The new Act will change the way that patent applications for inventions involving software will be examined. In some cases, inventions that were patentable under the current laws may be more difficult to patent under the new laws.
In the short term, however, there will be some uncertainty for applicants while the boundaries of patentability are clarified. Any innovator wanting to protect their software-related innovations should get advice as to how the new laws will affect their ability to do so.
At present the Intellectual Property Office of New Zealand (IPONZ) does not examine for an ‘inventive step’ when considering whether to allow a patent. Under the new law, IPONZ will be able to formally examine patent applications to determine whether the claims involve an inventive step over existing products and documents.
Therefore, there will be fewer instances when companies need to go to the expense of opposing patent applications that lack an inventive step. This change is a benefit to both patentees and businesses that are concerned that they may infringe other people’s patents.
The new Patents Act also raises the bar on the standard to secure a grant of a patent. The new standard is whether the ‘balance of probabilities’ is in favour of the applicant, whereas the previous law merely required that the ‘benefit of the doubt’ be provided to the patentee. It’s anticipated that IPONZ will try to use this new standard to justify a rigid interpretation of the inventive step requirement for a claimed invention.
Third parties will be able to request re-examination of a patent application or granted patent. The re-examination process will provide a cost-effective way to challenge an accepted application or granted patent. The re-examination procedures are, therefore, likely to be of significant value to New Zealand businesses.
Applicants will need to actively request examination of a patent application rather than an examination occurring automatically. The deadline by which an examination must be requested after filing an application is yet to be specified. There’s also likely to be an official charge associated with this requirement.
The new law will formally bring New Zealand’s patent legislation into line with many overseas countries. There will be a requirement that an invention is novel when compared with information in the public domain anywhere in the world, rather than merely compared with information in the public domain in New Zealand.
Publication of applications
New Zealand public patent applications will now be published 18 months after filing. Since damages for infringement of a patent may be accrued from the date of publication, New Zealand businesses will need to be aware of published patent applications that their own activities may infringe. As a result, keeping watch on patent publications in relevant technology fields will be increasingly important under the new Act.
Patent applications filed before the law changes will continue to be examined under the current patent laws. There will be, however, some exceptions:
· If a complete specification is filed in support of the patent application after the commencement date of the new Act, and
· If the application is post-dated to a date after the commencement date of the new Act
These provisions are important for patentees to consider when deciding how to secure protection for an invention.
We recommend that applicants file patent applications in New Zealand before the implementation of the new legislation. This will enable applicants to side-step the provisions of the new Act and the uncertainty around examination which we’ve noted above.
New legislation is an improvement
The new Patents Act is a significant improvement to New Zealand’s patent laws and will significantly benefit patentees and New Zealand businesses as a whole.
The new Act will, however, require some bedding in once it comes into force. It’s anticipated that there will be a period of uncertainty for applicants as IPONZ grapples with the new issues that it must consider during examination.
David Macaskill is an associate of James & Wells Intellectual Property. This article was first published in the client newsletter of NZ LAW Limited member firms, Fineprint - Summer 2013. James & Wells Intellectual Property is a member of NZ LAW