The New Zealand Patents Act 2013 (the New Act) received Royal assent on Friday 13 September 2013. Ignoring any negative aspects associated with the date of assent, the new provisions provided by the New Act have been long awaited and herald a change in New Zealand that brings the patent law in line with many other modern patent systems.
The New Act will commence fully on 13 September 2014 (Saturday to be precise). IPONZ has issued proposals for regulations to be made under the New Act in a discussion document1. This discussion document is currently undergoing a period of public consultation, where submissions will close on 24 January 20142.
Although there has been much talk in the IP media and many articles written about the computer software provisions of the New Act, there are also many other new provisions that are being or may be introduced. This article aims to cover some of those new provisions in relation to examination of applications.
Under the New Act, the Commissioner may direct the applicant to ask for examination within a prescribed period3. According to the discussion document mentioned above, it is likely that this provision will be utilised. This provision is likely to implement a similar examination process as required under Australian patent law4. The implementation of this provision would be of no surprise, especially in light of the proposed single trans-Tasman patent application examination process for New Zealand and Australian patent applications5. A third party may request the Commissioner to direct an applicant to ask for examination6.
An examination fee of NZ$500 has been proposed in the discussion document. While the requirement for an examination fee is entirely new for New Zealand, it is on par with practice in Australia.
If a direction to ask for examination has not previously been issued, a proposal has been made in the discussion document that the applicant must request examination within three years of the filing date of the complete specification, which is the international filing date for national phase applications.
Time limits may be set for the applicant to provide substantive responses to exam reports7issued under the New Act. If the applicant fails to provide a response within the set deadline, the application would be treated as having been abandoned8. If the exam response time limit is implemented, it would run alongside the overall acceptance time limit for putting the application in order for acceptance9. However, it is unclear whether this provision will be implemented. In Appendix One of the discussion document, a flow chart has been provided that indicates that a response to the first examination report is due within six months of the issuance of the examination report. This may be a mechanism to avoid the regular occurrence in Australian patent practice where last minute responses are filed just prior to the acceptance period. The regulations should provide further guidance once they have been prepared.
It has been proposed in the discussion document that the acceptance period should be set to twelve months from the date of issuance of the first examination report. This is the same period as provided in the Australian patent regulations10 since the implementation of the Raising the Bar amendments.
As mentioned above, the applicant must make a “substantive response” to the issued report11. A “substantive response” is defined as giving a fair and substantial answer to the issued report12, or giving a fair and substantial answer to the issued report and amending the application or specification to remove one or more grounds of objection raised13, or amending the application or specification to remove all of the grounds of objection raised14.
Prior Art Base
Applications will be examined for inventive step15 under the New Act, unlike under the 1953 Act. Further, the inventive step16 examination, as well as the examination for novelty17, compares the invention to the prior art base18. Previously novelty (or anticipation) investigations were limited only to documents published in New Zealand19. A definition of prior art base has now been provided to include all matter (whether a product, a process, information about a productor process, or anything else) that has at any time before the priority date of that claim been made available to the public (whether in New Zealand or elsewhere) by written or oral description, by use, or in any other way. This brings the New Act up to the same standard as other modern patent laws in regard to novelty and inventive step requirements.
Whole of Contents
“Whole of contents” prior art will be relevant when determining novelty under the New Act. That is, any unpublished New Zealand patent applications that are subsequently published later than a pending application, but have an earlier priority date can be used to destroy the novelty of that pending application20. This provision replaces the prior claiming provisions21 under the 1953 Act.
Applications will be examined for usefulness22 under the New Act. An invention as claimed is defined as useful if the invention has a specific substantial and credible utility23. As explained in the explanatory note24 to the original Patents Bill, this requirement is intended to ensure patents are granted only where the inventor has identified a real world use for the invention, and that that this is particularly relevant for inventions with genetic material.
Balance of probabilities
All applications being examined under the New Act must satisfy the Commissioner on the legal basis of balance of probabilities25, rather than the previous basis of benefit of the doubt as determined by the Courts26.
There are many other changes being introduced not covered by this article. Also, the new regulations will provide some further insight into the workings of this New Act. Look out for further articles in the future covering these issues.
3S.64(2) Patents Act 2013
4S.44(2) Patents Act 1990(Cth)
6S.64(3) Patents Act 2013
7S.67(1) Patents Act 2013
8S.68 Patents Act 2013
9S.71(1) Patents Act 2013
10Reg. 13.4(1)(b) Patents Regulations 1991 (Cth)
11S.67(1) Patents Act 2013
12S.67(6)(a) Patents Act 2013
13S.67(6)(b) Patents Act 2013
14S.67(6)(c) Patents Act 2013
15S.65(1)(a)(iii) and S.14(b)(ii) Patents Act 2013
16S.7 Patents Act 2013
17S.6 Patents Act 2013
18S.8(1) Patents Act 2013
19S.13 Patents Act 1953
20S.8(2) Patents Act 2013
21S.14 Patents Act 1953
22S.65(1)(iii) and S.14(c) Patents Act 2013
23S.10 Patents Act 2013
25S.65(1)(a) Patents Act 2013
26Swift &Co’s Application  RPC 37 at 46