THE NEW PATENTS ACT FOR NEW ZEALAND AND HOW IT WILL AFFECT YOU AND YOUR CLIENTS
The New Zealand Patents Act 2013 comes into force on 13 September 2014. The new Act replaces the Patents Act 1953. A key feature of this new Act is that the patentability standards in New Zealand will be raised significantly to be more closely aligned with the higher thresholds of other jurisdictions. Patent applications filed in New Zealand after 12 September 2014 will be subject to the new patentability standards. In order to take advantage of the current lower patentability standards, patent applications should be filed in New Zealand no later than 12 September 2014. PCT applications must also enter the national phase in New Zealand by that date if they are to benefit from examination under the current, lower standards.
This new Act raises patentability standards and the description requirements for patent specifications filed after 12 September 2014. The following features are particularly noteworthy.
• Absolute novelty will replace the current local novelty standard
• “Whole of contents” provisions will apply to prior filed, unpublished patent specifications instead of the present “prior claiming” provisions
• Grounds of examination will be extended to include consideration of inventive step and utility
• The complete description must be enabled by a disclosure of the invention in a clear and complete manner to be performed by a person skilled in the art
• The complete description must describe the best mode
• The “fair basis” requirement will become a “support” test. The claims must be clear and concise and supported by matter disclosed in the complete specification
• Similarly, the test for priority will become a “support” test rather than a “fair basis test”.
Exclusions to Patentability
The new Act formally introduces the following exclusions to patentability
• Contrary to public order or morality
• Human beings and biological processes for their generation
• Methods of medical treatment of humans and methods of diagnosis practiced on humans
• Computer software per se.
The following changes to the Examination procedure are significant
• A formal request for Examination will now be required
• Examination should be requested within five years of the effective filing date, or within two months of the issue of a direction to request examination
• A formal deadline will be set for responding to each examination report
• A 12 months (non-extendable) deadline will apply to place an application in order for acceptance
• The filing of a Notice of Entitlement required prior to acceptance
• The complete patent specification will publish on or after 18 months of the priority date instead of publication at acceptance
• Divisional applications must be filed before acceptance of the parent application
• Divisional applications will be examined under the provisions of the old Act if they claim rights to a complete application filed before 13 September 2014 (or a PCT national phase entry prior to that date).
Significant changes will apply to the payment of annuities.
• Maintenance fees will be payable annually payable on pending applications
• Maintenance/renewal fees will be payable annually from 4th anniversary, rather than on the previous renewals fees due on the 4th, 7th, 10th, and 13th anniversaries
• A maximum three month period preceding deadline applies to paying renewals in advance.
A comprehensive set of transitional provisions apply to the payment of annuities in respect of applications pending under the old Act or patents granted under the old Act.
If this is relevant to you and you wish to discuss the matter further, please do not hesitate to contact us.