Overview of Patent Eligibility, Procedure and Options in New Zealand and Australia

Thinking of patenting in Australasia? This article provides an overview of what constitutes eligibile subject matter and the options for initiating the patenting process. 

Wondering if your latest technical idea could be a patentable invention?
In order for a technical idea to be patentable in New Zealand and Australia it must relate to a manner of manufacture that is new, inventive, useful and not be for excluded subject matter.

The manner of manufacture requirement is similar to the industrially applicable requirement that applies in many other countries, with industry being understood in a very broad sense and so is easily satisfied. However, New Zealand’s patent legislation deems that claims to a computer program as such is not a manner of manufacture, making such claims fall at the first hurdle of patentability. Computer programs can still form part of the subject matter of a patent claim, provided the claim as a whole involves more than just the claim to the computer software.

If the technical idea satisfies the manner of manufacture requirement it can still be excluded from patentability. In New Zealand it may be excluded for the following reasons:

• the commercial exploitation of the invention as claimed would be contrary to public order; or
• it is for a method of treatment of human beings by surgery or therapy; or
• it is for a method of diagnosis practised on human beings; or
• it is for a plant variety – which are instead protected under the Plant Variety Rights legislation.
• it is a mere discovery; or
• it is merely presentation of information with no mechanical purpose, mathematical formulae, mere schemes or plans or business methods with no technical solution or technical advantage, or
• it is only a combination of known things that do not result in synergism or a working interrelationship providing a new and improved result or advantage.

In Australia the following exclusions may apply:

• human beings, and the biological processes for their generation;
• if the use of the invention would be contrary to law;
• food or medicine that is a mere mixture of known ingredients or a process for producing such a substance;
• it is a mere discovery; or
• it is merely presentation of information with no mechanical purpose, mathematical formulae, mere schemes or plans or business methods with no technical solution or technical advantage, or
• it is only a combination of known things that do not result in synergism or a working interrelationship providing a new and improved result or advantage.

There are nuances to these exclusions, so if you think your subject matter may be caught by the exclusions it is recommended that the advice of a patent attorney should be obtained.

Of the other requirements the usefulness requirement is the next easiest to satisfy as it only requires the technical idea to have specific, credible and substantial utility.

The next easiest requirement to satisfy is the newness requirement, although it is important to note that newness is primarily determined by prior public disclosures or uses of the technical idea anywhere in the world, including prior disclosures and uses by the applicant. There are several limited grace periods available for some types of prior disclosures and again it is recommended that the advice of a patent attorney should be obtained. However, as a rule, it is best not to publicly disclose or use the invention prior to filing a patent application, or only to prior disclose the invention where there is a confidentiality and/or non-disclosure agreement in place. Prior filed but later published patent specifications also count against the newness of asserted inventions.

The inventive step requirement is usually the most difficult requirement to satisfy. While a technical idea may satisfy the newness requirement, it does not follow that it thereby involves an inventive step. An idea can be new in the sense that it has not been publicly prior disclosed or used, yet still be found to not involve an inventive step if it would be obvious to a person skilled in the relevant technical field. This is not to imply that the inventive step analysis only applies to new ideas. Sometimes there can be an inventive step in applying a known idea from one technical field to another. While New Zealand’s and, since August 2021, Australia’s patents legislation requires an inventive step, there are numerous jurisdictions that offer shorter term protection for technical ideas that do not satisfy the inventive step criterion. By first filing a provisional patent application in New Zealand or Australia there will then be 12-months to decide whether to seek such protection in other jurisdictions – usually in the form of a utility model, petty patent or short-term patent application.

Is it always advisable to have prior art searching done before filing?
While there are benefits to having prior art searching done before filing, it is not always feasible or best to do so – it is ultimately yet another business decision to make.

Given the newness and inventive step requirements, prior art searching can increase the level of confidence in whether further money and resources should be devoted towards seeking patent protection for a technical idea. Even if the search results show that the idea is not new or unlikely to involve an inventive step, analysis of the search results may inspire a new line of thinking or further refinement of the idea in a way that differentiates it from the prior art.

The newness and inventive step requirements also encourage filing as early as possible. The time taken for prior art searches to be performed, reported and considered may prove crucial in whether earlier priority rights are obtained than those of another party seeking protection for essentially the same technical idea. Searching can also involve extra costs and there is no guarantee that the search results will capture all relevant prior art.

What are the initial filing options for patent applications?
As further elaborated below there are several types of patent applications, some of which can be combined to give different pathways to the granting of patent rights. Namely:

• a patent application accompanied by a provisional specification;
• a patent application accompanied by a complete specification;
• an outgoing convention application accompanied by a complete specification;
• an incoming convention application accompanied by a complete specification;
• a Patent Cooperation Treaty (PCT) International Phase application accompanied by a complete specification;
• a PCT National Phase application;

It is generally best to start the application process with a patent application accompanied by a provisional specification that broadly describes the invention. The filing of a provisional patent specification allows a further 12-months in which to refine the invention before the filing of an application with a complete specification is due, as well as for the filing of any corresponding foreign convention applications or PCT International Phase application. If during that 12-month period improvements are made that are outside the subject matter described in the provisional specification, further provisional specifications can be filed and then combined into the filing of a single complete specification – if there is unity of invention amongst the provisional specifications.

Compared to the provisional specification(s), the complete specification has additional requirements that are crucial to satisfy in order for any subsequent grant of patent rights to be valid. These include having claims that describe the scope of the invention, providing the best method of performing the invention known to the applicant and disclosing the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art. Both New Zealand and Australia try to dissuade applicants from including a large number of claims by charging excess claim fees. However, those fees are not charged at the application stage. In practice, if a large number of claims is considered appropriate at the filing stage the number of claims can be either reduced or budgeted for prior to the issuance of the first examination report, which can occur 2-3 ,year later. 

The inclusion of drawings is usually appropriate for most inventive subject matter. For provisional specifications hand sketches are sufficient, but formal drawings are required for the complete specification.

Whether the application commences with a provisional specification or a complete specification, that first filing will establish a priority date. A complete specification can claim the priority date of its preceding provisional specification if the subject matter claimed in the complete specification is supported by the subject matter disclosed in the provisional specification. If it is found that a complete specification is not supported by subject matter disclosed in a provisional specification filed within the preceding 12-months, then the filing date of the complete specification is its priority date. These priority principles also apply to convention and PCT applications that claim priority from a disclosure in an earlier filing. The priority date determines the date before which newness and inventive step are assessed.

Outgoing and incoming convention applications are applications accompanied by a complete specification that are filed within 12-months of the priority date of the basic application it is based upon respectively into or from a recognised foreign convention country. In addition to the countries that are members of the multilateral Paris Convention agreement, a country can also be recognised as a convention country on the basis of bilateral agreements.

A PCT International Phase application is an application accompanied by a complete specification that is filed with an eligible PCT Receiving Office within 12-months of the priority date of the basic application it is based upon. Compared to a convention application, the filing of a valid PCT International Phase application allows additional time in which to decide which countries to seek protection in, obtain any required translations and to source the funding required. Additionally, the International Search with its preliminary and non-binding opinion on whether the invention appears to meet the patentability criteria provides useful early feedback on whether seeking protection in other countries is worthwhile. Further, if timely amendments are made in light of that initial preliminary opinion it is possible to request a further preliminary opinion. However, while the PCT system now has extensive coverage, a convention application can be filed in more countries than those that are available via the PCT system.

PCT National Phase applications are applications that requests entry into the national phase (or regional phase) for the designated PCT member states of the applicant’s choice. For the vast majority of PCT member states the time limit for making that request is either 30 or 31 months from the priority date. The application and the applicable fees are lodged with the relevant designated offices. If the language in which the international application was filed or published is not a language accepted by a designated office, then a translation of the international application into a language accepted by that office must also be furnished. In general a copy of the international application (and any timely amendments made in light of the initial preliminary opinion) is only required to be furnished if the applicant wants to enter national or regional phase earlier than 28-months from the priority date.

While provisional specifications are not published, it should be borne in mind that the above complete specifications are published at 18-months from their earliest priority date unless they were made void or abandoned before that date.

Authors: Quinn Miller and Tom Robertson

//piperpat.com/news/article/overview-of-patent-eligibility-procedure-and-options-in-new-zealand-and-aus