New Zealand takes significant step towards new Patents Act

New Zealand takes significant step towards new Patents Act

New Zealand takes significant step towards new Patents Act

On 5 May 2009 the New Zealand Patents Bill had its first reading before the New Zealand Parliament. The first reading marks a significant step towards New Zealand enacting new patent legislation that will replace the Patents Act 1953 and Patents Regulations 1954. The reading means that the Bill has now entered a formal legislative process, triggering a sequence of events that should result in new legislation being enacted within the next 1-2 years.

The first reading before Parliament was not the first public exposure of the Bill. The desire to implement new legislation has been in gestation for some ~25 years, culminating in a draft version of the Bill being released for public comment in December 2004.

The public consultation process is a relatively new initiative by the New Zealand Government in an attempt to obtain preliminary feedback on any contentious issues proposed in a Bill, before the Bill enters the formal legislative process.

In 2005, submissions on the draft Bill were made by a number of interested parties. Davies Collison Cave took a proactive role in assisting the Institute of Patent and Trade Mark Attorneys of Australia (IPTA) in making submissions on the content of the draft Bill. IPTA represents over 90% of registered Australian patent attorneys, most of whom are also registered as New Zealand patent attorneys. The submissions made by IPTA urged the New Zealand Government to align New Zealand’s patent laws with those of Australia where possible. Areas where closer alignment would seem to be possible include certain patentability criteria, such as the threshold for inventive step and what information should constitute the prior art base for its assessment, as well as prosecution and divisional application requirements. Unfortunately it is not clear whether the submissions were properly considered because the Bill that was recently read before Parliament is much the same as the draft Bill released in 2004.

In our September 2008 edition of this emagazine, we reported to you some of the most significant changes which the Bill proposes to introduce. Specific proposed changes include:

  • raising the novelty threshold to “absolute novelty” so that prior publication or prior use anywhere in the world will be considered noveltydestroying;
  • examination for inventive step and utility in addition to novelty and adequacy of description;
  • providing specific patentability exclusions on methods of diagnosis and treatment of human beings; and
  • abolishing the current pre-grant opposition process and introducing a pre- and post-grant re-examination procedure.

The existing Patents Act 1953 has often been criticised for providing a patentability threshold in New Zealand that is lower than the patentability thresholds set by its major trading partners. The patent system works by granting an exclusive right to the patent owner in return for public access to new information and technology. If the right balance is not struck it can negatively impact on innovation and technology, particularly in a global economy where innovation is an increasingly internationalised activity. The Bill therefore attempts to address fundamental deficiencies in the existing law by harmonising key aspects of New Zealand’s patent law with the rest of the world.

There is now a further opportunity to make submissions in relation to the Bill. Following its first reading before Parliament, the Bill was referred to a Select Committee as part of the formal public consultation process. Written submissions must be made to the Select Committee before 2 July 2009. Please contact your Davies Collison Cave representative should you wish to discuss any aspect of the New Zealand Patents Bill.

It has been a long road to reach this point, but it is pleasing that the Bill has now reached a formal legislative stage. We will continue to monitor the progress of the Bill and report any significant events to you as they arise.