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The most significant ambiguity cited was in respect of inventorship, namely, the phrase “true and first inventor”. With origins stemming from “local novelty” as it occurs in the present 1953 Act, it was submitted that in the context of its inclusion in the new Act the phrase would, in effect, allow “invention by importation” – which is incompatible with New Zealand’s impending switch to “absolute novelty” criteria. Furthermore, it was submitted that the phrase may give rise to an impression that New Zealand patent law operates on a US-style “first-to-invent” basis, when New Zealand patent law is, of course, based on a “first to file” system. In the face of these criticisms, it is likely that the phrase will be replaced with “inventor” and/or that an appropriate statutory definition, such as “the real devisor of the invention” will be incorporated within the new Act.
Notwithstanding the fact that the draft Bill was released in order to obtain feedback on its drafting, as opposed to revisiting the policy decisions incorporated within it, many submissions nonetheless raised or revisited a number of policy issues. These issues will receive due consideration before a Parliamentary Select Committee and include:
1. proposed exclusion from patentability of methods of medical treatment of human beings (note: Swiss-style claims are presently allowable and will likely continue to be so);
2. proposed allowability of computer software and business method patents;
3. continuing absence of an extension of patent term for pharmaceuticals (which is the subject of a separate review);
4. proposed abolition of pre-grant opposition;
5. proposed changes to examination, including an assessment of inventive step, and a new Australian-style duty of disclosure for search results;
6. clarification of the employee/employer relationship and derivation of title; and
7. statutory basis upon which an employee may seek compensation for a commercially successful invention (cf. ss.40-42 of the UK Patents Act 1977 and problems associated therewith).
The next stage is consideration of appropriate amendments by the Parliamentary Counsel Office. The Bill will then pass to a Parliamentary Select Committee, at which stage the policy decisions may be revisited, if appropriate, prior to it being passed before Parliament.
Our initial forecast that the new Act would be in operation by now appears to have been “optimistic”. Progress stalled during the recent General Election, and we now expect the bill to pass into New Zealand law early next year, as the Patents Act 2006.
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