NEWS

Continuing Progress Toward New Zealand's New Patent Act

Charles Tansey and Gareth Dixon January 2007

The New Zealand Draft Patents Bill was released in late 2004. In the interests of both international uniformity and indigenous rights, the Draft Patents Bill proposes several changes to existing New Zealand patent law. It integrates elements of the existing 1953 legislation with various aspects of the current Australian and United Kingdom Acts, and adds some uniquely “kiwi” provisions. Most changes reflect public opinion and will be embraced, whereas others may be more controversial.

Prior to being introduced before NZ Parliament, stakeholders were given the opportunity to comment as to errors in, or unintended consequences of the Draft Bill. It should be emphasised that the Draft Bill was only released under the rationale of obtaining feedback on its drafting, as opposed to revisiting the policy decisions incorporated within it. Accordingly, public submissions on “drafting issues” were intended to highlight instances in which ambiguous wording may not properly give effect to the relevant policy decisions, or could have unintended consequences.

Many submissions nonetheless raised or revisited a number of policy issues, including:

1. the continuing exclusion from patentability of methods of medical treatment of human beings;

2. the proposed allowability of computer software and business method patents;

3. the continuing absence of an extension of patent term for pharmaceuticals (itself, the subject of a separate review), in relation to the proposed retention of “springboarding”, and the imminent launch of the Trans-Tasman Therapeutic Products Agency;

4. the proposed abolition of pre-grant opposition;

5. the proposed changes to examination, including an assessment of inventive step, the definition of “prior art base” and a new Australian-style duty of disclosure that requires an Applicant to provide search results;

6. clarification of the employee/employer relationship and derivation of title; and

7. the statutory basis upon which an employee may seek compensation for a commercially successful invention.

The next stage in passage of the Draft Bill into NZ law is that the Parliamentary Counsel Office will consider any appropriate amendments. The Bill will then pass to a Parliamentary Select Committee, where the policy decisions may be revisited, if appropriate, prior to it being passed before Parliament. Our initial estimate that the new Act would be in operation by now appears to have been “optimistic”, and it now seems that the Bill will pass into NZ law early next year. The complementary Patents Regulations should follow shortly thereafter.