The New Zealand Parliament finally passed the much anticipated New Zealand Patents Bill on 28 August 2013, which will henceforth be known as the Patents Act 2013.
As the title of this blog suggests, the current New Zealand patent legislation is over 60 years old, and most readers who are familiar with New Zealand patent law will agree that today the legislation is more than a little outdated. For instance, New Zealand patent applications under the current law are only examined for novelty and not inventive step, meaning that the Intellectual Property Office of New Zealand is obliged to allow applications that are an obvious variation of known technology. Additionally, under the current law the prior art base against which applications are assessed is limited to knowledge, use and publications available within New Zealand, meaning that, in principle, a person could get a patent for something already known and used overseas, i.e., as a first importer rather than a first and true inventor.
In contrast, the Patents Act 2013, when it comes into effect, will bring New Zealand patent law substantially in-line with its major trading partners with at least two notable exceptions a computer program exclusion and no pharmaceutical patent extension of term.
Apart from allowing New Zealand examiners to examine for inventive step, the Patents Act 2013, once in effect, will also expand the prior art base to include matter published or used in New Zealand or elsewhere. The new legislation will also provide several processes for a third party to challenge a patent application or patent, including opposition before grant, re-examination before grant, assertion before acceptance, revocation before the Commissioner or Court, and re-examination post grant.
The new legislation will apply only to applications filed under the new Patents Act 2013, meaning patents and patent applications filed under the current law will continue to be dealt with under the current law even once the new Patents Act 2013 comes into effect. Furthermore, divisional applications filed out of a patent application dealt with under the current law will also be dealt with under the current law, even if the divisional is filed once the new Patents Act 2013 has come into effect. However, international (“PCT”) applications that enter the New Zealand national phase after the new Patents Act 2013 has come into effect will be dealt with under the new act.
In the meantime, the passed New Zealand Patents Bill now awaits royal assent from the Queen’s representative in New Zealand, the Governor General. This will then commence a 12-month period before the new law actually comes into effect, permitting time for the associated Regulations to be drafted.