New Zealand’s Patents Bill tabled
New Zealand’s antiquated patent law is finally set to be replaced by new legislation that looks and feels like the law of its Trans-Tasman neighbour Australia, but includes both British and North American flavours. The new law will bring New Zealand into line with international practice by raising the novelty threshold such that publication or use anywhere in the world would be considered noveltydestroying, and by providing an assessment of the inventive step and utility of an invention during the examination procedure.
The new law should be in place sometime in 2009, although a change to Government in the forthcoming general election may result in further delays. The new Patents Bill was tabled in Parliament on 9 July 2008, and will undergo its first reading in the House of Representatives in the coming months. It will then be referred to a Select Committee for public comment before being enacted. Despite the fact that policy advisors released a draft version of the Bill for public comment in 2005, there is no certainty that the new legislation will pass through the approval process unopposed.
The standard of examination required under the existing law, the ”Patents Act 1953“, is relatively low compared with most other countries. At present, patent applications are only examined for adequacy of description and novelty. Under the new law, examination will now include an assessment of whether the claimed invention is obvious in light of the prior art base as it existed at the priority date. This requirement is likely to challenge the already stretched resources of the Intellectual Property Office of New Zealand as it grapples with Examiner retention and a growing back-log of yet-to-be-examined cases, particularly in the life sciences area.
Not surprisingly, the Patents Bill affirms the decision of the New Zealand Court of Appeal in Pfizer by positively excluding from patentability the medical treatment of humans. Also excluded from patentability are methods for diagnosing disease in humans, as well as human beings and biological processes for their generation.
The Patents Bill also abolishes pre-grant opposition proceedings. Pre-grant oppositions were a relatively inexpensive way for competitors to oppose the grant of a patent before the Commissioner of Patents on one or more invalidity grounds. The new Patents Bill replaces pre-grant oppositions with a pre- and post-grant “ex-partes” reexamination procedure. Under the new law, any person may apply to the Commissioner at any time after acceptance of an application requesting him to re-examine an application as to novelty and inventive step.
According to the Patents Bill, Applicants will be required to disclose the results of prior art cited by a foreign Patent Office against the corresponding application elsewhere. This type of disclosure requirement is intended to assist Examiner’s in their assessment of the novelty and inventive step of an invention, but may have little consequence if New Zealand continues to examine well ahead of most other jurisdictions. Interestingly, a similar requirement under the Australian ”Patents Act 1990“ was recently ‘inactivated’ by an amendment to the ”Patents Regulations“ meaning that Applicants there are no longer required to disclose search results. It will be interesting to see what New Zealand does, if anything, in response to this.
Reform to the patent law and practice in New Zealand is long overdue. When the new Patents Bill was tabled in Parliament last month, it marked a significant and much anticipated step towards harmonising New Zealand patent law with the rest of the world.