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.

Read More ›

Madderns Launches New Brand

/ Craig Vinall / Important Updates

If you are familiar with our firm, then you will know that we have recently upgraded our website and updated our logo and branding as well.

We are very pleased with the new look and have already received many kind comments about the new branding.

At Madderns, we have a clear understanding of the importance of brands or trade marks. It is after all one of the areas where we have some expert knowledge.

So it is not surprising that we would treat our own brand with care. The reputation of the Madderns brand is very important to us and we work hard to ensure that it continues to embody the values that are important to us as professional advisors in the field of Intellectual Property.

Madderns looks after a large number of trade mark registrations for many clients. We understand the importance of creating strong brands and maintaining their reputation.

Strong brands convey to a consumer the reputation of our products and of our services. Strong brands are a consumer’s aid memoir to their relationship with our products or services. Brands at once cause a consumer to recall the reputation, the relationship, the expectations, the promise associated with the owner of that brand.

Obviously, changing a brand is something that needs to be done with care. It is not something that is done lightly or frequently. But also, brands do need to move with the times. They need to reflect and keep up with change particularly in a service industry.

So the time has come where we needed to make a change. Our firm has grown significantly over the last decade. The nature of our profession is also changing and we at Madderns are keeping pace with that change. We live in an ever changing world and I think it will always be so.

So we think that the new Madderns’ brand reflects who we are now and demonstrates that we are keeping up with change while maintaining our links to the past.

The new logo and rendering of Madderns presents a strong graphic image that embodies some of the core values of our firm such as enthusiasm, creativity, expertise and excellence … all of the things that we believe will provide a competitive advantage for our clients.

Read More ›

IP Australia Announces New Fourth Year Patent Renewal

/ Bill McFarlane / Important Updates

As part of the 2012 Federal Budget, the Australian Government has approved changes to IP Australia’s fees, including standard patent renewal fees. The new fee structure will apply from 1 July 2012.

Prior to the changes, annual renewal or maintenance fees for standard patents and pending applications were not payable until after the 5th anniversary of the filing date.

From 1 July 2012, renewals will become payable on standard patents and applications from the 4th anniversary of filing. The official government fee for the 4th year renewal will begin at AU$300. Our usual renewal service charge will apply. You will be receiving renewal reminder letters in due course with total renewal costs.

The new renewal fee will only apply to standard patents and applications having an effective filing date on or after 1 July 2008. As this is a significant change to IP Australia’s practice regarding renewals, we are providing this notice to you in advance of this new fee being introduced.

If you would like to know about any of IP Australia’s other proposed fee increases please contact us for further information.

Read More ›

Intellectual Property Laws Amendment (Raising the Bar) Act 2012: changes to the Trade Marks Act

/ Madderns / Important Updates

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 was passed into law by the Australian Parliament on 15 April 2012. The provisions of the new laws will come into force on 15 April 2013. Changes to the Trade Marks Act primarily involve the opposition and customs seizure provisions of the Act, as outlined below.

Opposition Period

The opposition period is to be shortened from 3 months to 2 months.

Notice of Opposition

The Notice of Opposition will merely need to be filed with the Trade Marks Office and it is likely to be a simple form stating that a party opposes registration of a trade mark.

Statement of Grounds and Particulars

One month after filing the Notice of Opposition, the Opponent must lodge a statement of grounds and particulars detailing each ground of opposition and the particulars on which the Opponent intends to rely.

Notice of Intention to Defend

Within one month of the statement of grounds and particulars, an Applicant will need to file a Notice of Intention to Defend the opposition. Failure to file the Notice will result in the trade mark application lapsing in opposition proceedings.

Periods for lodging evidence

The time frames for the parties to prepare and serve their evidence are expected to be reduced.

Customs seizure provisions

A trade mark owner will have the ability to access multiple samples of seized goods, to remove such goods for inspection and the importer must make a claim for return in order to have the seized goods returned.

Damages

The Trade Marks Act will include provisions for additional damages in infringement proceedings, bringing the Trade Marks Act into line with the Copyright Act.

Presumption of registrability

Section 41 will be repealed and replaced to clarify that the presumption of registrability, as provided for under Section 33, does apply to section 41.

Read More ›

Intellectual Property Laws Amendment (Raising the Bar) Act 2012: changes to the Patents Act

/ Madderns / Important Updates

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 was passed into law by the Australian Parliament on 15 April 2012. Some of the provisions of the new laws came into force on 15 April 2012 and the remainder will come into force on 15 April 2013.

The following infringement exemptions came into force on 15 April 2012.

Experimental use

An act done for experimental purposes relating to the subject matter of the invention will not be considered as an infringement of a patent. Examples of such acts include determining the properties of the invention, determining the scope of a claim relating to the invention, improving or modifying the invention, determining the validity of the patent, and determining whether the patent for the invention has been infringed.

Regulatory approval

The current infringement exemptions will be extended to non-pharmaceuticals, so that acts in obtaining regulatory approval for such subject matter in Australia or under the law of another territory will not be considered to constitute patent infringement.

The following changes aimed to increasing the threshold for patent validity will come into force on 15 April 2013. Under the transitional provisions, if a Request for Examination is filed prior to 15 April 2013 the application will not be subject to these new requirements.

Inventive and innovative step

The test for inventive step and innovative step will be expanded to include common general knowl- edge anywhere in the world. Furthermore, for inventive step considerations prior art information will no longer need to have been ‘ascertained, understood and regarded as relevant’ by the skilled person.

Utility

A specification will need to disclose a ‘specific, substantial and credible use for the invention’.

Fair Basis

Fair basis will be replaced with a requirement that the claims be ‘supported by matter disclosed in the specification’ which is expected to result in the scope of patent rights being narrower than has previously been the case.

Sufficiency

Specifications for both provisional and complete patent applications will need to be ‘clear enough and complete enough’ for a skilled person to perform the invention. This is a higher disclosure level for provisional patent specifications than the previous requirement that the application describe the invention in general.

Revocation of acceptance

The Commissioner may revoke acceptance of an application.

Amendments

The current relatively liberal amendment provisions will be tightened to prevent applicants adding subject matter that was not disclosed in the specification as filed, except when the amendment is to correct an obvious mistake or clerical error.

Modified examination

The option of modified examination, based on a corresponding patent granted in a foreign country, will no longer be available.

Omnibus claims

Unless absolutely necessary to define the invention, omnibus claims will not be allowed.

Privilege

The privilege provisions of the Patents Act have been extended to specifically include communica- tions with foreign patent attorneys.

Read More ›