File early in New Zealand to avoid stricter examination regime

When it comes into effect on 13 September 2014, the Patents Act 2013 will usher in broad and significant changes to New Zealand patent law. The raft of changes will largely reconcile New Zealand patent law with Australian patent law, as recently amended by the “Raising the Bar” Act. Of particular importance to potential patent applicants, however, is the significantly heightened threshold for obtaining patent protection in New Zealand that will be introduced by the 2013 Act. Relevant aspects include:

• Patentability standard: When a patent application is being examined by the Intellectual Property Office of New Zealand (IPONZ), and in the case of assessing any opposition raised against the application, the threshold used to test whether the invention is of a type that can be patented under the law will shift to a more stringent ‘balance of probabilities’ standard (meaning that it must be more probable than not that the subject matter of the invention is patentable) rather than the previous standard of giving applicants the benefit of the doubt.
• Novelty: Currently only relative or “local” novelty is assessed when a patent application is examined by IPONZ, meaning only documents publicly available in New Zealand are relevant to deciding whether an idea is new. This standard, however, will be raised to one of absolute novelty, such that any ‘prior art’ document publicly available anywhere in the world may be cited during examination.
• Obviousness: Although previously a ground on which an application could be successfully opposed or revoked under the old 1953 Act, the question of whether a claimed invention is ‘obvious’ or not will now be assessed at the examination stage under the 2013 Act.
• Software related exclusions: A separate general exclusion for computer programs “as such” has been included in the 2013 Act, explicitly ensuring that computer programs in and of themselves will not be patentable.
• Utility: Utility will be considered as a ground of validity during the examination phase, such that an invention must demonstrate a specific, credible and substantial use in order to be patentable, similar to the US utility standard.
• Support: The former “fair basis” test, used to ascertain if the claims travelled beyond the subject matter disclosed in the specification, will be replaced with a more stringent UK style “support” requirement, whereby the scope of the claims must not exceed what is justified by the disclosure. This requirement will also apply in determining the validity of priority claims.
• Description: The written description of a complete patent specification will be required to describe an invention in a manner that is clear enough and complete enough to be performed by a skilled person with the best method for performing the invention known to the applicant required to be disclosed.
• Request for Examination: IPONZ will no longer automatically examine applications. Instead, a formal request for examination and the relevant fee must be filed either voluntarily or in response to a direction from the Commissioner.
• Fees: Yearly annuities commencing on the fourth anniversary of the filing date of the complete application will now be payable to keep a patent application pending or a granted patent alive, as compared to currently requiring payment on the 4^th, 7^th, 10^th and 13^th anniversary of the complete filing date. This includes maintenance fees, which were previously only payable upon grant. In addition to this increased frequency of fees, IPONZ  is considering a more onerous fee structure so as to encourage patent holders to abandon or lapse patents for which they are no longer receiving sufficient benefit.

Importantly, the aforementioned changes will only apply to those complete applications, PCT national phase applications and convention applications filed on or after 13 September 2014. The more lenient provisions of the old 1953 Act will continue to apply to those complete applications, including national phase entries and convention applications, filed before this date, as well as any ante-dated divisional applications derived therefrom.

Accordingly, we strongly recommend patent applicants who are contemplating filing complete, convention or PCT national phase applications in New Zealand to do so before 13 September 2014 to avoid the stricter examination regime, heightened patentability requirements and greater expense for patent applications pursuant to the 2013 Act.