Introduction of Second Tier Patents Possible for New Zealand
On 5th April 2018 the Member’s Bill Patents (Advancement Patents) Amendment Bill was drawn on its first ballot...
It appears to have only been deposited in the ballot after confirmation that the Australian Government is undertaking further consultation before deciding whether or not to implement the Productivity Commission’s recommendation to abolish their innovation patent system.
If enacted the Bill would allow for advancement patents, which will be easier, cheaper and quicker to obtain than standard patents, although having a shorter duration.
Instead of requiring an inventive step an advancement patent requires an advancement step such that the advancement is distinctly different from what is known by a skilled worker and that is a useful improvement to the working of the claimed subject matter. As with standard patents, advancement patents have to satisfy manner of manufacture and novelty requirements, not be in respect of excluded subject matter and its use must not be contrary to law. In what appears to be an unintentional drafting error it is stated that advancement patents need to involve less advancement than is required for an inventive step. This is at odds with a later provision in the Bill which allows advancement patent applications to be transformed into standard patents (and vice versa). It would also deprive inventions that contain an inventive step from benefiting from the features of the advancement patent system, which benefits would be particularly useful in fields where technology changes quickly.
As with standard patents applicants will be able to either file a provisional specification followed by a complete specification within 12-months or file a complete specification either as a convention application or in the first instance. However, the complete specification can only contain a maximum of 5 claims. Applications accompanied by a complete specification will, after formalities checks, be granted a provisional advancement patent, which will also then be open to public inspection.
If within 3-years of the complete specification filing date the patentee or a third party does not request examination or the Commissioner has not exercised their discretion to initiate examination, then the provisional advancement patent will lapse. In contrast to the standard patent system whereby the Commissioner has the discretion to direct the applicant to request examination, with the advancement system the Commissioner will instead have the discretion to directly examine the patent, in which case the patentee does not pay a requesting examination fee.
In addition to the above noted requirements, advancement patents will also be examined for clarity, sufficiency, unity, the absence of double-patenting and subject matter exclusions for substances capable of being used as food or medicine that are a mere mixture of known ingredients or processes for producing such a substance by mere admixture. If the examination criteria are satisfied, then the patentee will be issued with a certificate of examination which, once registered, represents a deemed grant of the advancement patent. If the examination criteria are not satisfied, then the patentee is given a reasonable opportunity to amend the specification, failing which the provisional advancement patent will be revoked unless the patentee has requested a hearing.
Granted advancement patents can be either opposed or subject to re-examination. In what appears to be another unintentional drafting error, granted advancement patents can be opposed under either section 93A or section 100F, with the former being superfluous as the latter contains its provisions as well as further grounds and associated provisions. The same grounds are available to third-parties for both oppositions and requests for re-examination, although third-parties take no further part in re-examination proceedings. Unlike for oppositions, requests for re-examination can also be initiated by either the patentee or the Commissioner.
Infringements can occur both in respect of advancement patents and provisional advancement patents as there is no requirement for a provisional advancement patent to be substantively examined before it can be enforced. However, the alleged infringer will have the option of requesting examination of the provisional advancement patent or otherwise contesting its validity in Court proceedings.
Annual renewal fees become due from the second anniversary of the complete specification filing date, which if paid allow for a maximum term of 10-years from the complete specification filing date.