Summary of Patent Law and Practice
New Zealand is a member of the Paris Convention (Stockholm text), the World Intellectual Property Organization (WIPO), the Patent Cooperation Treaty, the Trade-Related Aspects of Intellectual Property Agreement (TRIPs), and the Hague Convention Abolishing the Requirement of Legalization for Foreign Documents.
Minimum Patent Filing Requirements:
For PCT National Phase applications all we need is the PCT number and the name of the applicant for New Zealand.
For Convention applications all we need is a copy of the specification in English and the date and country of the application(s) from which convention priority is claimed along with the name of the applicant for New Zealand.
For non-Convention applications by overseas applicants, the option exists for filing a New Zealand application with a provisional specification (which must be completed by filing a complete-after-provisional specification within 12 months) to take advantage of the two-stage system, or by filing a complete specification in the first instance (a one-step system). If a complete specification is filed in the first instance, an option remains to convert this into a provisional specification and then file a subsequent complete-after-provisional specification, providing all this is done within 12 months of the application having been lodged.
Types of Patents:
The Patents Act does not allow for shorter term Innovation Patents or Utility Models. However Patents of Addition are available for subsequent applications by the same applicant where there is an improvement or modification to an invention which is novel over the original application, but is obvious in light of the original application.
New Zealand practice allows patent applications to be divided into separate applications where more than one invention exists within the claims and/or specification. Divisional applications retain the priority date of the parent application if fairly based on the subject matter disclosed in the parent application. Divisional applications need to be filed within 5-years of the filing of the parent application.
Methods of medical treatment of humans are generally not patentable in New Zealand, but Swiss type claims are allowable. Computer programs “as such” are excluded from patentability on account of not being an invention or a manner of manufacture. Patents can be granted for inventions making use of or comprising a computer program, including an invention involving embedded computer programs. However, this requires that the actual contribution lies outside the computer or, if it affects the computer itself, is not dependent on the type of data being processed or the particular application being used. Please contact us for specific advice as to whether the subject matter of an invention is or is not patentable.
Novelty and Obviousness:
Absolute novelty applies, covering all material publicly available or used worldwide before the priority date. Prior patent applications that are published after the priority date of a subsequent application have their whole specification included within the prior art base for novelty purposes. Furthermore, such prior specifications can have been filed anywhere in the world.
Obviousness or lack of inventive step is considered during examination. Obviousness only takes into account publications available to the public before the priority date of the subject application.
The following grace periods apply for certain types of disclosures made prior to the application filing date:
- 6 months if the disclosure was made at or in consequence of being displayed at an officially recognised exhibition.
- 12 months if the disclosure occurs on account of reasonably necessary public trial.
- 12 months for non-consented disclosure or disclosure of matter obtained unlawfully or in breach of confidence.
- An unspecified grace period applies for disclosure made as a consequence of communication of the inventive subject matter to a government department.
- From 30th December 2018 a 12 month grace period for disclosures made by the patentee or nominee, the person from whom they derive title or consented persons thereof.
Examination needs to be requested by the applicant, either of their own volition within 5 years of the complete specification or PCT international filing date, or within 2 months of being directed to by the Commissioner. Applications need to be placed in order for acceptance within 12 months of the issuance of the first examination report.
Publication and Opposition:
The specification is published 18 months from the priority date. Publication of an international PCT application counts as the publication of any resulting national phase application in New Zealand. Examiner’s reports are publically available after acceptance.
Following publication of acceptance any person can either file a notice of opposition within 3 months or request re-examination. Re-examination is limited to contesting novelty or inventive step and can also be requested after grant. Opposition proceedings take priority over re-examination applications, and re-examination applicants are unable to take any further part in the re-examination proceedings.
Revocation before the Intellectual Property Office is possible for up to 12 months after grant, while revocation before the Court is possible any time after grant. The grounds for revocation before the Commissioner are the same grounds that apply for revocation before the Courts.
The maximum patent term is 20 years from the complete specification or PCT international filing date, with no provision for extending the term of patents that cannot exploit the full patent term due to the process of obtaining approval for use from regulatory bodies.
Annual maintenance or renewal fees are due annually starting from the 4th anniversary of the complete specification or PCT international filing date. Patents granted under the Patents Act 1953 retain the next renewal date that applied before the Patents Act 2013 commenced, but subsequent renewals are due in accordance with the Patents Act 2013. Late renewal and restoration fees apply.
A patent gives the patentee the exclusive rights to exploit the invention and to authorise another person to exploit the invention.
Contributory infringement can occur when a person supplies another person with the means to infringe if there is a reasonable expectation that infringing activity would result.
An experimental use exception to infringement applies. Acts such as determining how the invention works, its scope, or the validity of the claims, or seeking an improvement of the invention do not constitute infringement if the act does not unreasonably conflict with normal exploitation of the invention.
Prior continuous use of the invention by a third party is another exception to infringement.