On or before 13 September 2014 the New Zealand Patents Act 1953 will, with the exception of transitional provisions, pass into history. This Act together with the Patents Regulations 1954 has governed the granting and enforcement of patents in New Zealand for some 60 years. All practicing patent attorneys in New Zealand have practiced under no other New Zealand patents legislative framework during their career in the profession.
Many countries, like New Zealand basing their patent law on the United Kingdom Act of 1949, adopted pre-grant publication, examination including the ground of obviousness, prior publication based on absolute or world wide novelty, sometimes prior use also based on world-wide novelty, modern definitions of invention, and requests for examination. However, New Zealand continued on with examination for novelty only, publication after acceptance, local novelty both for publication and use, and examination based on an overall time to put the application in order for acceptance rather than prescribing a time for each response.
The development of the Internet in time impinged greatly on the local novelty approach for prior publication as eventually the country accepted that publication on the internet was publication in New Zealand. Furthermore the growth in the ability of humanity, well parts of it anyway, to manipulate genes gave rise to fears among some, including the New Zealand indigenous Maori population, that patents could be granted for human life forms. Clearly the time had come for revision of the Patents Act. Amendment was proposed by the Government and after a long period of waiting the new Patents Act 2013 was eventually passed, receiving the royal assent on 13 September 2013.
One is left with the question of whether the new Act really is an advance on the old. It can be argued that the new Act is simply an attempt by the New Zealand Intellectual Property Office to follow fashion. The 1953 Act has served the country well, patent applications have been filed, been examined, some have been opposed, been granted, and some have provided the basis for infringement actions and a few have been revoked. That applications were not published before acceptance, that the examiners did not examine for obviousness, and local novelty did not cause real problems.
The definition of invention based on the Statute of Monopolies has proved sufficiently resilient to cope with changing technologies. At least section 14 of the 2013 Act preserves the Statute of Monopolies as part of our definition of invention and this should enable some flexibility to cope with technologies undreamt of by ourselves. However, rather than having a flexible definition that can be shaped and moulded by the Courts as new needs emerge, now we have boundaries applied to the flexible definition setting out exclusions to patentability. The risk here is susceptibility to pressure groups. A clear example has been the exclusion of computer programs set out in s. 11 of the 2013 Act. Similarly the exclusions to public order and morality in s. 15 and the exclusions in relation to human beings, and biological processes for their generation, method of treatment of human beings by surgery or therapy and methods of diagnosis practiced on human beings while reflecting current practice are all at risk of modification by reaction to pressure groups.
Accordingly while we have a new Act touted as a modernisation it is a nod to fashion not substance. The new Patents Act reflects only a “me too” approach to patent law reform.
So I say farewell old friend you have served us well.
PIPERS
Colin Woodroffe
