Patents Act 2013 gets the Nod

Following its introduction over 5-years ago the Patents Bill 2008 received Royal Assent on 13th September 2013. Some administrative provisions of the new Act have commenced, but the majority of the Patents Act 2013 will come into force by way of Order(s) in Council once the regulations have been drafted and at the latest by 13th September 2014.

The Patents Act 2013 will apply to applications filed after the 2013 Act comes into force. Once in force, the infringement provisions of the Patents Act 2013 will apply to all patents, although the prior use defence will be determined under the Patents Act 1953 for relevant proceedings.

If it is considered that achieving patent grant is more likely under the Patents Act 1953, then complete after provisional, convention or PCT National Phase applications should be filed before the Patents Act 2013 comes into force. Divisional applications can be an exception to this rule. If the parent application was filed under the Patents Act 1953, then the divisional application will also be subject to the Patents Act 1953.

The Patents Act 2013 will bring New Zealand’s patents legislation closer into alignment with judicially influential countries and regions such as Australia, United Kingdom, Europe and the United States of America. As a net importer of technology, it is important that New Zealand does not apply a lower criterion for inventiveness than its trading partners do as this may hinder or create extra costs for access to some technology.

The following are the key differences between the 1953 and 2013 Patents Acts:

• Under the Patents Act 1953 novelty is determined by what has been used or published in New Zealand before the priority date, although this has been broadened to include publications on the internet that are accessible from New Zealand. The Patents Act 2013 will instead apply absolute novelty, covering all material publicly available or used worldwide before the priority date.
• The relevance of prior patent applications that are published after the priority date of a subsequent application is broadened by including the whole specification within the prior art base for novelty purposes, rather than just the claims as is the case under the Patents Act 1953.
• While obviousness or lack of inventive step has long been a ground of opposition and revocation, under the new Act it will also be considered ‘up front’ during examination. Obviousness only takes into account publications made before the priority date of the subject application, and so does not consider prior patent applications published after the priority date.
• Examination will also evaluate whether the proposed invention has specific, credible and substantial utility. This will also become a ground of opposition in addition to being a ground of revocation.
• The 1953 Act allowed a patent to be refused if its “use” is contrary to morality. The 2013 Act instead requires that the “commercial exploitation” of the invention is contrary to public order or morality.
• A point of difference with many other jurisdictions is the attempt to address concerns regarding the use of indigenous traditional knowledge in patent applications. Inventions derived from Māori traditional knowledge, or whose exploitation would be considered contrary to Māori values can be refused protection under the 2013 Act. Upon invitation a Maori Advisory Committee will provide non-binding advice to the Commissioner on these considerations.
• Human beings, and biological processes for their generation, methods of diagnosis and methods of treatment of humans by surgery or therapy are excluded from patentability. This statutorily applies the exclusions that had been judicially applied under the 1953 Act.
• Plant varieties are also excluded from patentability, although they continue to be protectable under the Plant Varieties Act 1987.
• 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. When determining the actual contribution made the Commissioner or Court must consider:
  (a) the substance of the claim (rather than its form and the contribution alleged by the applicant) and the actual contribution it makes:
  (b) what problem or other issue is to be solved or addressed:
  (c) how the relevant product or process solves or addresses the problem or other issue:
  (d) the advantages or benefits of solving or addressing the problem or other issue in that manner:
  (e) any other matters the Commissioner or the court thinks relevant.
• If a non-consented disclosure occurs prior to filing, then a grace period of 12-months from the date of the non-consented disclosure will apply for the filing of an application. This replaces the Commissioner having discretion in allowing a grace period. The other grace periods remain the same.
• Local inventors will no longer have to obtain the Commissioner’s permission to file a foreign application without first filing a New Zealand application.
• Publication only after acceptance is replaced by the specification being published 18-months from the priority date. It will be important to decide early whether to abandon the application so as to avoid its publication at 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 become publically available after acceptance.
• Following publication at 18-months third parties can make assertions to the Commissioner that the invention is not novel or involve an inventive step.
• Instead of being taken up automatically, examination will need to be requested by the applicant, either of their own volition or after being directed to by the Commissioner. The period within which examination must be requested will be set by the regulations.
• Pre-grant oppositions are retained and an alternative option of re-examination is introduced, both options being available to any person. Re-examination is limited to contesting novelty or inventive step and can also be requested from acceptance and after grant. Opposition proceedings take priority over re-examination applications.
• The Commissioner has been given the same grounds for revocation as are available for revocation before the Courts.
• Maintenance fees are introduced to maintain an application during prosecution. The term and start date will be set by the regulations. However, maintenance fees are likely to be due annually starting on either the second or third anniversary of the filing date.
• Renewal fees are also likely to be due annually. Patents granted under the Patents Act 1953 will keep their next renewal date, but subsequent renewals will be due in accordance with the Patents Act 2013.
• When determining if patentability has been established a balance of probabilities test replaces the benefit of the doubt test. Consequently, examination, opposition and revocation before the Commissioner will use the same test as is applied in revocation before the Court.
• Contributory infringement is given a statutory basis, although it has been judicially recognised under the 1953 Act. The new statutory test appears to apply to a wider set of actions than the Courts have been willing to apply.
• An experimental use exception to infringement has been introduced. 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 also introduced as an exception to infringement.
• Court’s have been given the power to grant compulsory licences to enable the production of pharmaceuticals for exporting to specified eligible developing countries.
• PCT applications can be based on applications outside of the 12-month priority window provided the right to priority was restored in line with the recent changes to the PCT allowing for such restoration of the right to priority.
• The electronic filing of all requests, applications, and other documents with and by the Commissioner is mandated under the 2013 Act. However, there is an exception for the filing, serving or giving of information or documents in relation to related Court proceedings.