New Zealand’s New Patents Act

/ Karen Heilbronn Lee / Important Updates

The New Zealand Patents Act 2013 will shortly replace the out-dated Patents Act 1953, and will raise the thresholds for a valid New Zealand patent.

Additionally, the new Act will substantially align New Zealand and Australian patent law, which will eventually assist the expected introduction of a single Trans-Tasman patent application and examination system.

Synopsis of New Zealand’s New Patents Act

The major changes introduced by the New Act include:

  • Replacement of local novelty with absolute novelty;
  • Replacement of “prior claiming” assessment with “whole-of-contents” assessment for prior art patent documents filed before but published after the filing date of the application of interest;
  • Expansion of examination grounds to include inventive step and utility;
  • Strengthening of support requirements for a complete specification;
  • More stringent requirements for claims;
  • Introduction of specific patentability exclusions;
  • Expansion of options for third party challenges;
  • Expansion of infringement and infringement exemption provisions;
  • Strengthening of the patentability standard to the “balance of probabilities”; and
  • Introduction of additional formality requirements.

The Patents Act 2013 will be applied to all patent applications filed or entering New Zealand on or after 13 September 2014, even if a corresponding basic (provisional) or Patent Treaty Co-operation (PCT) application was filed before the commencement date.

Where possible, we would recommend patent applicants take advantage of the more lenient provisions of the 1953 Act by filing new applications in New Zealand before 13 September 2014

New Zealand’s Patents Act 2013

The New Zealand Patents Act 2013 replaces the out-dated Patents Act 1953, and will raise the thresholds for a valid New Zealand patent.  Additionally, it substantially aligns New Zealand patent law and Australian patent law, following the recent introduction of the Australian “Raising the Bar” reforms. The similarity between the Australian and New Zealand Acts will eventually assist the expected introduction of a single Trans-Tasman patent system.

Commencement

The Patents Act 2013 is due to come into full effect on 13 September 2014. It will be applied to all patent applications filed or entering New Zealand on or after 13 September 2014, even if a corresponding basic (provisional) or Patent Treaty Co-operation (PCT) application was filed before the commencement date. New divisional applications with a parent application filed before the commencement date, however, can be antedated to proceed under the 1953 Act.

Recommendation

Where possible, we would recommend patent applicants take advantage of the more lenient provisions of the 1953 Act by filing new applications in New Zealand before 13 September 2014.

Major Changes Introduced by the New Act

Novelty

Absolute novelty replaces local novelty, expanding the prior art base to include matter available to the public anywhere in the world. Additionally, “whole-of-contents” novelty replaces “prior claiming”, meaning that when a prior art patent document is filed before but published after the priority date of the application of interest, any information in the prior art document can be used to assess for novelty, rather than only the information in the claims.

Inventive Step

Patent applications will now be examined for inventive step, which is expected to raise the standard of granted patents.

Utility

Utility will also be a new ground for examination: an invention must have a specific, credible and substantial use.

Support

The support requirements for a complete specification have been strengthened. Specifications must now include disclosure of a best method and the description of the invention must be “clear enough and complete enough” to allow the invention to be performed by a person skilled in the art, which is likely to narrow the scope of granted claims.

Claims

Under the new Act, the claims must to be “clear and concise” and “supported by the matter disclosed in the specification”.

Patentability Exclusions

The new Act formalises that an invention is not patentable if the subject matter is:

  • Contrary to public order or morality, including commercial exploitation of processes for cloning or  modifying the genetic identity of human beings, the use of human embryos, modifying genetic identity of animals that is likely to cause suffering without substantial benefit;
  • Human beings and biological processes for their generation;
  • A method of treatment of human beings by surgery or therapy;
  • A method of diagnosis practised on human beings;
  • A plant variety; and
  • A computer program as such.

Amendments

Post-acceptance amendments to the specification will now be allowed providing the amendments do not introduce matter that was not in substance disclosed in the specification before the amendment, and that amended claims wholly fall within the scope of the claims before the amendment.

Re-examination

The new Act will introduce re-examination provisions. Any person will be able to request re-examination of an accepted patent application or of a granted patent, and re-examination of a patent can be ordered by the courts. All grounds of opposition are available for pre-grant re-examination, and all grounds for revocation are available for post-grant re-examination.

Opposition

Pre-grant opposition grounds have been expanded to include prior secret use.

Revocation

It will be possible to commence revocation proceedings through the Intellectual Property Office of New Zealand at any time, whereas under the 1953 Act, revocation proceedings commenced after 12 months from grant of the patent must be conducted through the courts.

Infringement & Infringement Exemptions

The infringement provisions have been expanded to include contributory infringement. Exemptions to infringement now comprise acts for experimental use, seeking regulatory approval and prior use.

Restoration

Restoration will be possible under particular conditions.

Priority Claim

The priority date of a claim is the date of filing of the earliest accompanying application (eg a provisional application) that provides support for the claim in the matter disclosed.

Grace Period

The new Act essentially retains the prior grace period provisions, with disclosure of the invention in the one-year period prior to filing of the application disregarded as prior art under particular circumstances, such as unauthorised disclosure, or reasonable trial of the invention; and a 6-month grace period for disclosure of the invention at prescribed exhibitions has been maintained.

Renewal/Maintenance Fees

Maintenance Fees for pending applications will be payable from the fourth anniversary of the filing date of the complete specification (or PCT filing date), and for granted patents, renewal fees are payable on the anniversary of the same date.

Patentability Standard

The previous “benefit of the doubt” standard has now been replaced with a “balance of probabilities” standard.

Māori Advisory Committee

A Māori advisory committee will advise whether the invention is derived from Māori traditional knowledge or indigenous plants or animals; and whether the commercial exploitation of that invention is likely to be contrary to Māori values.

No Pharmaceutical Term Extension

The new Act does not include provisions for extending the term of a patent.

Formalities

The new Act provides that complete specifications will automatically be published 18 months from the earliest priority date; and that a Notice of Entitlement must be filed before the application can be accepted. Additionally, it will be necessary to formally request Examination, which may occur either voluntarily or following direction from the Commissioner. The application must now be accepted by the 12 months from the date of the first examination report.

*Update*

Patents Regulations 2014
The New Zealand Patents Regulations 2014 became publicly available on 15 August 2014.

Due date for Divisional Applications
Notably, the Regulations provide that examination must be requested in connection with any divisional application filed under the new Act within the period of five years from the antedated date of filing of the divisional application. Accordingly, for a divisional application derived from a parent application that is filed under the new Act, the divisional application must be filed and examination must be requested by five years from the date of filing of the parent application (ie, the International filing date for applications derived from PCT applications).

If required, please contact one of our attorneys to discuss your situation.

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Inventive Mobile Phone Applications?

/ Bill McFarlane / Articles

There are a number of questions that arise when considering this issue. Some of them are fundamental issues: whether software related inventions in the mobile phone application space are patentable subject matter; should the patent be directed to a method or a device or a system; what needs to be included in a supporting patent specification; etc.?

First, what is a phone application? Well it can be a number of things but t ypically it is characterized by the existence of software designed to operate on a mobile platform, such as for example, a mobile phone but which also includes phablets, tablets and portable computer devices. The functionality of the software is merely a matter of the imagination of the developer. That functionality may include interaction between the user and the device only, or interaction of the user or the application with a remote server (which may be cloud based) while using or not using features included in the device such as GPS and accelerometer sensors. Easily overlooked is the specific software located at the server designed to do a number of things including interaction with the mobile platform and backend services such as a payment gateway; maintaining one or more databases, serving the user experience, serving data to purchasers of user data, etc.

Clearly, the functionality of the software may be patentable and claims to a method incorporating the minimum essential steps of the functionality may be available. A method claim patent will allow defense of the unauthorized copying of the functionality by an application that replicates that functionality even if there is no copying of the code – copying of the functionality is the key. It is unlikely that the device itself will be patentable as it is a known device. However, it may be that there is a special interaction of the software with one or more of the in-built mobile platform sensors. It may as also be that there is a special interaction of the application with a remote server and the combination of the application and the remote server is special. What is useful to understand, is that to prove infringement readily, every one of the steps of a method claim must be performed by a single entity. Therefore, it is necessary to create claims that represent the steps performed by either the mobile platform and/or the server.

It may be that there is a money making aspect of the application, e.g. the way the user pays for a digitally based service or virtual product. This can best be defined as a business method involving a system, a computer and/or computer software.

In some countries, the examples given above will not be patentable subject matter and in some countries the functionality alone, or a combination of hardware and software may be patentable. However, it is still necessary that the claimed invention is novel and non-obvious to those skilled in the art as is the case with any computer-related invention.

What needs consideration when reviewing the mobile application is an assessment of what is the essential function, that step or those steps, which provide the commercially valuable aspect of the business behind the mobile application. A flow chart of the process steps is useful, as is a critical review of: which steps are important; which are essential; which are not required; and those that provide essential as opposed to desirable functionality. It will also be useful to identify the smaller step elements that make up one or more of the larger steps. The level of abstraction required to describe the steps can be high and the use of concise and accurate language is useful. However, a more detailed description will need to be provided if there is to be a patent applied for. Some of the other readily available information includes user definition, wireframes, flow charts, screen shots, etc.  All this information will assist you and your Madderns attorney to explore the options available.

Of course, a patent is not the only Intellectual Property (IP) to consider, since copyright will automatically subsist in the code (source and machine code), with no formal application required although in the United States registration is possible and recommended. Yet further, if the server performs the commercially valuable functionality, it may be practical to treat that software as commercially confidential and thus a trade secret, since no user or competitor will be able to access that software. For many mobile applications, a unique and memorable trademark is the most important factor in a mobile application’s success. Note that eventually there will be a public release of the patent specification disclosing all of the important details of the invention and how to implement it.

With more than a million applications (apps) out there – is it worthwhile obtaining a patent for a mobile application? How long do you need the advantage of a patent, 6 months, a year or more? Is your idea useful to other mobile applications or mobile phone companies such that you will be able to license it to others? Well that is a commercial decision based on numerous factors. In my experience, the filing of a provisional patent that will last just one year usually provides enough time to make a better decision in light of the market and competition at the time.

As you should now better appreciate, the question of patentability of a mobile application is not unlike the question of whether a computer related invention is patentable.  What functionality is commercially important will determine the starting point of such a determination. You will also be able to consider and investigate whether the idea is already the subject of a patented. Consult with your attorney to discuss your mobile applications’ patentability and its trademark before it is offered on-line or offered in any form to others.

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