Doppelgangers – local versus absolute novelty under New Zealand Practice

The more things change, the more they stay the same.  New Zealand’s new Patents Act 2013 commenced on 13 September 2014 – and with it, the much-heralded shift from the local novelty standard employed under the Patents Act 1953 to absolute, or worldwide novelty. In this article, we consider what effect this shift is likely to have had in real terms.  That is, whether, during the examination of a New Zealand patent application, a patentee’s novelty assessment when considered under the provisions of the new Act legislation is likely to be significantly different from that provided under the old Act.

Introduction

New Zealand’s new Patents Act 2013 (“the new Act”) took effect from 13 September 2014.  It replaced, for non-divisional applications filed after the date of commencement, the long-since-obsolete Patents Act 1953 (“the old Act”).  The new Act has been heralded not only as the dawn of a new era for New Zealand patents, but also a general strengthening of New Zealand’s various patentability criteria.

In this article, we focus specifically on the novelty standard – world-over, generally considered the principal criterion for patentability.  We pose the question – by necessity somewhat academically, whether absolute (or worldwide) novelty, as prescribed under the new Act will be construed any differently to local novelty as it existed under the old Act.

What was “local novelty”, conceptually?

New Zealand was one of the only developed countries that retained (at least for applications filed prior to commencement of the new Act) a local novelty provision in its patents legislation.  When assessing the patentability of an application, local novelty disregards any publication or use outside that particular jurisdiction.  This, in theory, allowed patent applicants to file in New Zealand, validly, after overseas publication, use or sale.

One of the headline features in the move from the old Act to the new Act was that New Zealand patent law was shifting to an absolute novelty standard.  Of course, all this ever stood to do was to conform New Zealand’s novelty standard to that of its major trading partners.  It was a catch-up rather than a leap ahead.  Semantics aside, it is worth considering what difference this shift is likely to have made in real terms.

Local novelty is such an antiquated notion that most countries dispensed with it long ago.  Indeed, the outgoing Patents Act 1953 was based upon the UK’s Patents Act 1949 (which was itself replaced nearly four decades ago).  In such times, in order to import a new technology, one literally had to board a ship, sail a considerable distance, collect the new technology, sail home, offload it – and then try to sell it.  Local novelty “worked” in such an age because it provided an incentive to bring technology, be it new or known elsewhere, to a developing country such as New Zealand was at the time.  Not only this, but given New Zealand’s geographic isolation, there was also a sound argument that anyone prepared to go to these lengths in order to import a new technology may be deserving of a monopoly right upon it.

Is the concept still relevant?

It goes without saying that the world has changed somewhat over the past six decades.  Nowadays, developments in telecommunications – and to a lesser extent planes, trains and automobiles render local novelty largely conceptual and largely impossible to achieve in practice.  To all intents and purposes, local novelty’s death knell was the dawn of the internet age; any such notion is largely untenable where a new technology can be transmitted across the globe via the internet in a matter of milliseconds.

The issue of local novelty versus the internet has been considered at Patent Office level.  At issue before the Intellectual Property Office of New Zealand (IPONZ) in Molecular Plant Breeding’s Application [P25/2005] was the accession date of an internet-based document that was considered relevant to the novelty of the application, i.e., whether a website accessible through the internet constitutes “local publication” until such time as it exists physically (e.g., is printed) in New Zealand.  In this decision, the Delegate accepted that a document available via the internet indeed met the statutory definition of “published”:

..it is no longer necessary for a hard copy of a document to be available to comply with the requirements of section 2. The internet, by 1999, was widely available to New Zealanders and, in fact, a search of the “web”, by that date, would have been considered virtually essential for any scientist engaged in a survey of literature relevant to his field. There is no doubt in my mind that in the present case the document concerned had been “made available to the public”. It could be inspected “as of right” by the public at any place where a computer with access to the internet was available, free of charge..”.

Whilst it has not been contested formally, the legitimacy of this finding has nonetheless been widely assumed in the interim.  A litigant contesting an old Act case and staking its claim on reversing this finding would require a paradigm shift in the accepted meaning of the term.

Accordingly, “local novelty by publication” was effectively rendered extinct under New Zealand practice as far back as 1999.  This left only “local novelty by use”, which was always rather limited, almost to the point of irrelevance.  Therefore, to all intents and purposes, New Zealand patent law, as prescribed under the old Act, already appeared to operate on a de facto absolute novelty basis.

So why are New Zealand patents more difficult to obtain under the Patents Act 2013?

As mentioned, popular opinion is that the Patents Act 2013 has raised the bar on New Zealand patents, making them more difficult to obtain and possibly more limited in scope.  If true, this could be something of a double-edged sword.  On the one hand, those wishing to innovate in New Zealand are less likely to be encumbered by thickets of overly-broad, possibly invalid patents.  The economic rationale for the Government wanting to achieve this position is clear – as a small economy, New Zealand should, it is argued, do all it can to encourage foreign innovation and investment.  However, on the other hand, the fear is that a stricter patents regime may in turn make New Zealand less attractive to patent applicants on a cost-versus-scope-versus-population basis.

As the principal criterion for patentability, we can reasonably expect absolute novelty under the new Act to be, at most, very negligibly different from that as assessed under the local novelty provisions of the old Act (at least, post-internet age).  If anything is really going to make New Zealand patents more difficult to obtain, it is most likely to be extending examination to include an assessment of inventive step; under the old Act, inventive step was not examined in IPONZ (although it was always a ground for both opposition and revocation) and the raising of the “support” requirement within the written description.

As such, if New Zealand patents are indeed more difficult to obtain under the provisions of the new Act – and we’ve now had a four-year sample suggesting that this is indeed the case, then this is most likely attributable to the incoming inventive step and support requirements (and the stringency with which these are being maintained during examination) rather than the shift from local to absolute novelty.

Conflicting applications – the shift from prior claiming to whole of contents

It is worth mentioning at this point that another novelty-based  provision of the new Act is the shift from “prior claiming” (i.e., double patenting), as prescribed under section 14 of the old Act to a whole of contents novelty approach for conflicting applications.  If anything, it is this shift that is likely to tangibly affect the novelty-based assessment of a new Act application as opposed to that of an old Act case.  Whereas section 14 of the old Act required not only the same claim, but also, for the prior application to have been filed in New Zealand, the new Act requires only that the claimed invention is disclosed in an earlier application, filed anywhere.  Although this new provision broadens the prohibition on conflicting applications, this needs to be considered against the somewhat rare occasions that any such provision will be invoked; our Australian experience based on a similar provision and a far higher volume of applications teaches us this much.

With the above points in mind, we remain to be convinced that a New Zealand patent will become significantly harder to obtain and/or appreciably narrower in scope under the novelty provisions as prescribed by the new Act.

Whole of contents + single priority date = poisonous priority

In combination with the fact that a New Zealand patent claim is afforded a single priority date only, the move to whole of contents novelty for conflicting applications potentially gives rise to a perfect storm of self-colliding (or “poisonous”) divisional applications.  However, this is probably challenging the limits of this article.

Local novelty and third party challenges

There is, perhaps, one final point to note in relation to the shift from local to absolute novelty.  When contesting new Act cases at an opposition or revocation/court level, the opponent will no longer need to go through the rather laborious task of proving the New Zealand accession date of foreign documents (e.g., the issue at hand in Molecular Plant Breeding, referred to above).  For example – selecting a prior art patent document completely at random, United States patent number 5,582,869 has a publication date of 10 December 1996.  However, upon interrogating the relevant databases (which its itself a somewhat labour-intensive task), its New Zealand accession date was not until 28 January 1997.  Although this is a relatively small difference (around six weeks), one will appreciate that this can be potentially significant (especially for closely-filed applications in a highly competitive field) – and, as mentioned, is somewhat labour and cost-intensive to have to prove.

Summary

As we have mentioned in previous articles, patent applicants could avail of the old Act patentability criteria by filing their complete application in New Zealand prior to the commencement of the new laws.  This would have ensured that such an application was subject to the old Act throughout its lifecycle – and, as mentioned also, renders the above article somewhat academic.

However, in cases where the 13 September 2014 deadline was missed – be it inadvertently, strategically or of necessity, New Zealand patents continue to provide good bang for your buck, with the new Act serving to increase certainty, both for a patentee and for their competitors.  As noted, the one exception to this deadline came by way of divisional applications – a divisional filed from an old Act case is itself, an old Act case (irrespective of when it is filed, and subject to a few potential restrictions).

Hopefully also, increased certainty begets increased attractiveness.  Local novelty – although generally recognised as a lower novelty standard was also somewhat idiosyncratic.  Removing a layer of idiosyncrasy can only be a good thing as far as the attractiveness of New Zealand’s patent system is concerned.

Shelston IP’s New Zealand practice

All of Shelston IP’s patent attorneys are dual-registered to practise in both Australia and New Zealand.  Our New Zealand patent practice thereby leverages significantly from our Australian operation – and our closeness in respect of law, economics, culture and physical distance means that there are compelling drivers for clients to look to us for assistance with their Australasian IP matters.