NEWS

1. The current requirement for local novelty will be replaced with absolute (worldwide) novelty. 

2. Examination will now include an evaluation of inventive step as opposed to the current system that tests for novelty only.

3. ‘Whole of contents’ objections based on as yet unpublished applications having earlier priority dates may be made in respect of both novelty and (unlike Australia) inventive step.

4. A claimed invention must also be a ‘manner of manufacture’, within the meaning of s.6 of the Statute of Monopolies, and ‘useful’, inasmuch as it must have “specific, credible, and substantial utility”.

5. A patent may be refused if its “commercial exploitation” (possibly narrower than mere “use”) is contrary to public policy or morality. In borderline-patentable applications, the Commissioner must, on the balance of probabilities, be satisfied that an invention conforms to the requirements of the Act. At present, the applicant is afforded the benefit of any doubt.

6. Inventions derived from Maori (indigenous) traditional knowledge are denied protection, as are those whose exploitation would be considered contrary to Maori values.

7. New duty of disclosure requirements oblige applicants to disclose the results of any documentary search conducted by any foreign patent office in respect of a corresponding application. The sanction for failure to do so is forfeiture of the right to perform post-grant amendment to overcome any prior art so uncovered. The obligation applies until grant and is directly analogous to Australian law in this respect.

8. Methods of diagnosis will be statutorily excluded from patentability, irrespective of whether any such method is part of a surgical procedure. This is likely one of the more contentious provisions and one would anticipate several compelling submissions against this exclusion to be made. Other specific exclusions include human beings, biological processes for their generation, and therapeutic or surgical methods for their treatment. Plant varieties are also excluded. In this context, it is worth noting that no specific exclusion provision is made for either business method or software patents, thus suggesting that they are covered under the existing definition of “invention”.

9. An application will be published 18 months from the priority date and damages are accruable for infringement from this point. Publication of an international PCT application is to be treated as a local publication.

10. Infringement provisions will be expanded to include contributory infringement, rather than the present requirement to show that a supplier is a joint tortfeasor.

11. Between publication and grant, any person may lodge observations as to novelty or inventive step. Such observations will be placed on the public record and the Commissioner must take these into account during examination.

12. Re-examination is provided for both pre- and post-grant, either upon request by a third party or of the Commissioner’s own volition. The Bill does not provide for opposition proceedings and ex parte re-examination appears to be intended as a substitute.

13. The proposed grounds of revocation are broadened due to the expansion of the prior art base, as outlined above. Applications for revocation may be made to the Commissioner (or the Court) at any time, and on any prescribed grounds. Filing for revocation before the Commissioner may become a cost-effective means for challenging a patent’s validity. There appears to be no ground relating to a lack of “fair basis” within the specification for the claimed invention. If not explicitly added prior to passage into New Zealand law, one would nonetheless anticipate such a ground to be implicit within the legislation.

14. A complaint against the conduct of any registered patent attorney will be directed to an independent disciplinary tribunal, thus removing it from the jurisdiction of the New Zealand Institute of Patent Attorneys.

In conclusion, the New Zealand Patents Bill proposes a substantial and long-overdue revamp of New Zealand patent law. The text is available online at http://www.med.govt.nz/buslt/int_prop/patentsreview/draftbill/index.html and the Bill, as revised, is anticipated to be passed as the Patents Act 2004 around mid-2005.