New Zealand Patents Act 2013 – Key steps to prepare

New Zealand Patents Act 2013 – Key steps to prepare

New Zealand Patents Act 2013 – Key steps to prepare

New Zealand IP Expertise

The New Zealand Patents Act 2013 comes into force on 13 September 2014.  It is important to ensure you are ready to deal with the impact of the new law.  In some circumstances, this might mean filing applications early in New Zealand to avoid the new, more onerous requirements.

As a leading provider of IP services in Australia and New Zealand, Davies Collison Cave can assist with the often complex filing and prosecution process for New Zealand patent applications, be it national phase entry of an international application or a direct filing of a complete application.  Davies Collison Cave attorneys practice in both Australia and New Zealand.  The team also includes several New Zealand-trained attorneys with extensive local experience in New Zealand IP law.

To ensure patent applications are subject to the current, more lenient patentability and description requirements, patent applicants with pending PCT applications that designate New Zealand should take steps enter the national phase early in New Zealand by no later than Friday, 12 September 2014.

Davies Collison Cave can attend to early filing of your application prior to introduction of the new law in New Zealand on your behalf.  Using the one firm to service your IP portfolio in Australia and New Zealand saves you time, ensures consistency, and minimises duplication.  Davies Collison Cave also provides substantial discounts for the concurrent filing of National Phase applications in both Australia and New Zealand.

New requirements for patent applications

The Act raises the requirements for patentability and the description requirements for patent specifications for all complete applications (including PCT national phase applications) filed on or after 13 September 2014, and also expands the list of exclusions from patentability.  However, any new divisional applications filed from pending patent applications that are subject to the old Act will still be subject to the patentability and specification requirements of the old law.

The new Act will align New Zealand more closely with Australia and other jurisdictions.  Key changes include more onerous patentability and specification requirements, a broadening of the prior art base to include documents published anywhere in the world, and a requirement that a complete specification disclose the invention in a manner that is clear enough and complete enough for the invention to be performed.  Additionally, the requirement that a claim be “fairly based” on the description has also been replaced with a new “support” requirement.

New exclusions from patentability

The new Act also introduces a number of explicit exclusions to patentability including computer programs as such, inventions that would be contrary to public order or morality, human beings and processes for their generation, methods of treatment and diagnosis of human beings, and plant varieties.

For the new exclusion to computer programs as such, the wording of this section suggests the exclusion is not intended to be an outright ban, but it is uncertain how the section will be interpreted in practice.  Accordingly, patent applicants in this field should enter the National Phase or file complete applications prior to commencement of the new Act to avoid this explicit exclusion.

Changes to renewal payments

Under current New Zealand law, renewal payments are currently due for granted patents on the 4th, 7th, 10th and 13th year anniversaries.  However, with the introduction of the new Act, renewal fees will be payable annually from the 4th anniversary for both pending applications and granted patents.  Additionally, the total cost of renewals over the life of a patent will increase.

It is possible to attend to payment of renewals in advance under the current law.  In view of the proposed increase to official fees, advanced payment of renewals for granted patents prior to introduction of the new law may offer significant savings.  Advanced payment may include a single advance payment or payment of all fees until the end of life of the patent.

Pending applications and patents granted under the old Act will retain the next renewal deadline under the old provisions.  After the next scheduled payment is made, renewals will then be payable on an annual basis in accordance with the new Act.

In view of the potential savings, we recommend patentees consider advanced payment of renewal fees in respect of granted New Zealand patents.  If you would like further information regarding the new fee structure or advanced payment of renewals, please do not hesitate to contact us.

Additional changes

The new Act extends the grounds of examination to include inventive step and utility.  There are also a number of additional changes to the patent system, including changes to examination time frames and standards, new experimental use exceptions for infringement, as well as changes to opposition proceedings and third party observations.

The accompanying Patents Regulations 2014 also introduce new time frames for completion of certain actions.  Significantly, patent applicants will have a shortened 12 month period from the date of the first examination report to place an application in order for acceptance, a request for examination must be filed within two months of the date of a direction from the Commissioner or within five years of the filing date, and renewal fees may only be paid up to three months in advance of the due date.  The Regulations also enable the Commissioner to set a deadline for responding to examination reports.  For example, it is understood that an initial six-month period will be provided to respond to the first examination report.  Alternative time frames will also apply to opposition, re-examination and revocation proceedings before the Office.

See here for summary of the significant changes.  If you wish to discuss any of the upcoming changes in detail, please contact us.

Key steps to take

To ensure that patent applications are subject to the current, more lenient patentability and description requirements, patent applicants should enter the national phase or file a complete patent application by no later than Friday, 12 September 2014.

It is particularly important that applicants in the field of computer programming or related technology enter the National Phase or file complete applications prior to commencement of the new Act to avoid the new patentability exclusions.  Consideration should additionally be given to advanced payment of renewal fees prior to introduction of the new Act for any granted New Zealand patent.

Should you have any questions or wish to discuss any of the upcoming changes, please contact us.