From 13 September 2014, New Zealand will have a totally new statutory regime under which patents will be filed, prosecuted, granted, enforced and challenged. In that previous article, major changes affecting examination of patent applications were discussed. In this article, major changes affecting third-party challenges to patent applications and granted patents, including the introduction of pre and post-grant re-examination, and expanded grounds for challenging patent applications and granted patents, will be outlined.
Third party actions under the current New Zealand Patents Act 1953
Under the current patents legislation there is no opportunity for pre-acceptance challenge of patent applications.
However, once a patent application has been accepted, a few options exist for challenging the validity of a patent application or a patent granted on it, including bringing relevant prior art to the attention of the New Zealand Commissioner of Patents1 in what is commonly termed a ‘Section 22 Opposition’, pre-2 and post-3grant opposition, or revocation by a Court4.
Section 22 opposition
A Section 22 opposition may be filed, anonymously, by anyone and at any time between publication of acceptance and grant of a patent. The Commissioner may then re-consider whether the claims lack novelty (only) in view of the submitted prior art (but does not have to). Notably, Section 22 does not formally provide for a third party to file observations or assertions, but merely provides for the Commissioner to re-examine an accepted application if the Commissioner becomes aware of relevant prior art, if the Commissioner considers re-examination appropriate.
A pre-grant opposition may be filed by an interested person within 3 months of the date of advertisement of acceptance of a patent application, or 4 months if an extension of time is requested. The opponent must be a real person/entity who would be affected by grant of a patent (and thus, unlike in Australia, may not be an attorney acting on behalf of an anonymous party).
A post-grant opposition (also known as an action for revocation by the Commissioner) may be filed by an interested person within 12 months of the date of grant of a patent, provided that the person had not previously filed a pre-grant opposition to the application.
Pre-grant and post-grant oppositions are inter-partes proceedings run in the same manner, with the main grounds5 being that:
- One or more of the claims lack novelty (including Prior Claiming) and/or inventive step;
- The invention claimed in one or more of the claims has been used in New Zealand before the priority date of the relevant claim(s);
- One or more of the claims defines subject matter which is not an invention within the meaning of the Act (including method of treatment of humans and that the humans or biological processes for their generation);
- The claims are not fairly based on (ie. supported by) the description, lack clarity and/or are not succinct;
- The specification does not sufficiently and fairly describe the invention claimed or the method by which it is to be performed;
- The Applicant obtained the invention from the Opponent (or a representative thereof) in contravention of the Opponent’s rights; and
- In the case of a convention application, the application was not filed within 12 months of the first application made in a convention country for that invention by the Applicant or person from whom that person derives title.
A few other very limited and specific grounds exist, but are of little if any relevance in current patent practice in New Zealand.
Any interested person can apply to the High Court of New Zealand for revocation of a patent at any time after grant of a patent. Grounds of revocation include those available for opposition to the grant of a patent but also include:
- The invention claimed is not useful (including whether the claims encompass subject matter that does not work as promised);
- The patent was obtained on false suggestion or representation;
- The invention claimed was used secretly in New Zealand before its priority date, provided the use was not
- a trial or experimental use;
- use by a government department (where the invention has been disclosed to them); or
- use by someone who did not have inventor’s consent;
- The patent granted is contrary to law; and
- Non-compliance of the patentee with a request by a government department for exploitation of the invention by the Crown on reasonable terms, without reasonable cause.
There are no other options for challenging the validity of patent applications or patents under the New Zealand Patents Act 1953.
Third party actions under the New Zealand Patents Act 2013
Under the new patent legislation, the number of options available for challenging the validity of patent applications and patents, and the grounds available for doing so, will be expanded.
Third party assertions
Any person will be entitled to file third party assertions as to the novelty and inventive step of any claims in a patent application, and may do so at any time up to advertisement of acceptance of the application6.
Importantly, the Commissioner must notify the Applicant of the third party assertions, and must consider the third party assertions7. Regulations governing the procedure for filing and handling third party assertions have not yet been finalised, although a discussion document issued in December 2013, and the proposed regulations, for the most part, appear to have been looked upon favourably.
Third party assertions comprise an ex-partes procedure, and the third party plays no further role once the assertions (and associated documents) have been filed. However, the third party will be able to follow progress of consideration of the assertions.
Pre-grant oppositions continue to be available for challenging accepted patent applications (but not granted patents) between advertisement of acceptance and three months thereafter. However, under the new Act, any person may file an opposition8.
The grounds for opposition have also been modified somewhat, and expanded9. Effectively, the grounds that can be relied on include those that may be relied on by an Examiner during examination (which now include absolute novelty and inventive step, as well as utility, and the following grounds:
- Lack of entitlement, fraud, false suggestion or misrepresentation
- Secret use
- Contrary to law
These grounds are substantially the same as those under which a patent may be revoked, with one minor exception (see below).
Pre-grant opposition proceedings are inter-partes evidence-based proceedings.
Under the Patents Act 2013, any person may file a request for re-examination at any time between the date of advertisement of acceptance and grant of a patent10 (and the Commissioner may carry out re-examination without being requested to do so if this is considered appropriate).
The grounds available for pre-grant re-examination are the same as those available under opposition. However, re-examination proceedings are ex-partes proceedings, similar to third party assertions, and the requestor plays no further part once the request for re-examination and associated documents are filed. Re-examination was introduced as a means of challenging grant of patents by way of a more straightforward and more affordable mechanism.
Pre grant re-examination is, however, subordinate to opposition proceedings, whether existing, or commenced after re-examination was requested. Furthermore, the Commissioner is not required to conduct a re-examination if the Commissioner considers that all of the issues raised in relation to the request are the same, or substantially the same, as those raised in a previous opposition or re-examination proceeding, and may also refuse to consider any issue that the Commissioner considers is the same, or substantially the same, as an issue raised in a previous opposition or re-examination.
Similar to pre-grant re-examination, any person may file a post-grant request for re-examination of a patent, and the Commissioner may re-examine a patent without being requested to do so11.
The grounds available for post-grant re-examination are the same as those available under revocation (see below). Again re-examination proceedings are ex-partes proceedings, and the requester plays no further part once the request for re-examination and associated documents are filed.
Similar to pre-grant re-examination, post-grant re-examination is subordinate to revocation proceedings, whether existing, or commenced after re-examination was requested. Also, as per pre-grant re-examination, the Commissioner is not required to conduct a re-examination if the Commissioner considers that all of the issues raised in relation to the request are the same, or substantially the same, as those raised in a previous proceeding (re-examination, opposition or revocation), and may also refuse to consider any issue that the Commissioner considers is the same, or substantially the same, as an issue raised in a previous proceeding.
Revocation by Court
As already available under the current, 1953 Act, a patent may be revoked after grant under the Patents Act 201312. However, any person may request revocation of a patent, rather than just an ‘interested’ party, and the Commissioner, as well as the Court may revoke a patent.
The grounds upon which revocation may be requested13 are similar to those already available, and are effectively the same as those available under opposition and pre- or post-grant re-examination (see above), with the added ground14 that a patent may be revoked if the patentee has, without reasonable cause, not complied with a government request to exploit the invention for the services of the crown on reasonable terms.
Patent applications filed in New Zealand before 13 September 2014 (including New Zealand national phase entries effected before that date, and further applications claiming divisional status from a patent/application filed in New Zealand by 13 September 2014) will continue to be dealt with under the Patents Act 1953, which means that Section 22 oppositions and pre-grant oppositions as applicable under the 1953 Act, will remain as the pre-grant challenge options, rather than third party assertions, pre-grant oppositions or re-examination as discussed immediately above15.
On the other hand, the Patents Act 2013 will apply to patents granted under the Patents Act 1953, albeit in a slightly modified form: post-grant re-examination will be available, but the grounds will be limited to essentially those as available for revocation under the Patents Act 1953 (minus the Crown use non-compliance ground), and revocation will be limited to those grounds as available under the Patents Act 195316.
In summary, under the New Zealand Patents Act 2013, a broader range of pre- and post-grant options will be available for challenging patent applications and granted patents. Furthermore, a broader range of grounds will exist for challenging patent applications filed after 13 September 2014, and patents granted thereon.
1 Section 22, Patents Act 1953
2 Section 21, Patents Act 1953
3 Section 42, Patents Act 1953
4 Section 41, Patents Act 1953
5 Section 21, Patents Act 1953
6 Section 90, Patents Act 2013
7 Section 91, Patents Act 2013
8 Section 92, Patents Act 2013
9 Sections 92, 14 and 39, Patents Act 2013
10 Section 94, Patents Act 2013
11 Section 95, Patents Act 2013
12 Section 112, Patents Act 2013
13 Sections 114 and 115, Patents Act 2013
14 Section 115, Patents Act 2013
15 Section 255, Patents Act 2013
16 Section 254, Patents Act 2013