New Patents Bill introduced

On 9 July 2008 a new Patents Bill was introduced in the House.

The Bill is intended to replace the Patents Act 1953 which has long been considered to be outdated. It is hoped that the Patents Bill will provide a regime that ensures that an appropriate balance is maintained between providing adequate incentives for innovation and protecting the interests of the public.

The Bill will also update the regulatory regime that applies to patent attorneys.

The key features of the Bill are:

• The introduction of an "absolute novelty" standard. Under the Patents Act 1953 novelty is determined with respect to what was known or used in New Zealand prior to the filing date of the patent application. No notice is taken of information available outside New Zealand. The new "absolute novelty" standard will see all information made available to the public in any form anywhere in the world taken into account when assessing the question of novelty. This will assist in reducing the risk that patents are granted in New Zealand for inventions that are otherwise known elsewhere and that would not be eligible for patent protection in other countries.

• Patent applications will now be examined for inventive step and usefulness. These criteria are currently not part of the patent examination process. This change will bring New Zealand into line with most other countries who generally examine for both novelty and inventive step. Many countries also examine for usefulness as well. For an invention to meet the requirement of being useful, the Bill requires that inventions demonstrate specific, substantial and credible utility. In other words, patents will only be granted where the inventor identifies a real world use for the invention. This will be of particular importance to claims involving genetic material where, in the past, there have been instances of patents being granted for material where no specific use has been disclosed.

• The retention of the current definition of patentable subject matter as a "manner of manufacture" and the provision of specific exclusions from patent protection for inventions involving human beings and/or biological processes for their generation, methods of medical treatment of human beings, plant varieties and inventions whose commercial exploitation would be contrary to public order or morality.

• The Bill if enacted will establish a Maori advisory committee to provide advice to the Commissioner of Patents in respect of patent applications for inventions involving indigenous plants and animals.

• It will introduce a specific experimental use exception into New Zealand's patent legislation. Thus in certain circumstances use of a patented invention will not amount to an infringement.

• The proposed Act will provide that disclosures of an invention up to 12 months prior to the filing of an application will not destroy novelty if the disclosure was derived from the inventor and disclosed without the inventor's consent. This is to cover such situations as where an inventor may disclose the nature of their invention to a third party for the purposes of seeking funding and that third party later makes the invention public without the inventor's consent.

• The current pre-grant opposition procedure will be repealed and replaced with new procedures for challenging the grant of a patent. These will include providing for a re-examination that allows third parties to object to the grant of a patent on the grounds that the invention is not novel or lacks an inventive step and providing an administrative revocation procedure where third parties can, at any time during the term of a patent, apply to the Commissioner to revoke the patent on any of the grounds on which grant could be refused. The existing High Court procedure for revoking a patent will also remain available.

• The new Act would update the regulatory regime for patent attorneys by:

• repealing the current age and citizenship requirements for registration as a patent attorney;

• allowing a person's registration as a patent attorney overseas to be recognised for the purposes of registration in New Zealand under specific conditions;

• introducing a good character requirement;

• establishing a patent attorneys' standards board comprising the Commissioner and representatives of the patent attorney profession, with functions including the administration of the qualifications and disciplinary regimes for patent attorneys;

• requiring a code of conduct meeting specified objectives to be developed for and maintained by the patent attorney profession; and

• specifying the grounds on which a complaint about a patent attorney's conduct can be made, the procedure for making a complaint, and the orders following any breach of acceptable standards of service.

The Bill also makes a number of other changes to update and simplify various other aspects of the patents regime.

Need more information?

For more information on patent issues, please call Garry Williams on 64 9 916 8661.