The new Patent Act has arrived

September is an exciting month for those in the IP world as the long awaited new Patents Act comes into force on 13 September and will implement some significant changes to New Zealand’s patent laws. At James & Wells they have embraced the change and have been working overtime to ensure that their clients, and thousands of other innovative people and companies, have the best possible advice through this transition. For those who are in doubt on how the new Act will affect them, there are a couple of articles included in this month’s newsletter on their website.

As James & Wells explain in one of these articles the Patents Regulations 2014 which were ratified by an Order in Council on 11 August will also come into force. They go on to point out that many of the provisions of the new Act are the same as the current Patents Act 1953. However, two very significant changes are being implemented which concern how IPONZ examiners consider patent applications and the limits placed on the patentability of software.

As James & Wells Associate, Ben Cain explains, “’IPONZ examiners will shortly have to examine patent applications to determine whether the claims made in respect of, for example, a product involve “an inventive step”. The inclusion of the law of “inventive step” in the new Act represents a higher threshold for hopeful patentees to meet. In addition to “inventive step”, IPONZ examiners will also have to consider whether an invention is “useful”. An invention, so far as is asserted in a claim, will be deemed useful if it “has a specific, credible, and substantial utility”.  It remains to be seen just how this definition will be applied but clearly inventions which do not meet this threshold will not be considered patentable under the Act.

‘The second of the major changes referred to above should appease many, particularly those in the software industry. Under the 1953 Act businesses have been able to apply to wrap patent rights around software irrespective of whether the software was stand-alone or “embedded”. This has caused much frustration among software developers. Under the new Act only “embedded” software patents will be granted provided the software forms an integral part of a component in which it is sold: for example, a medical device which requires computer software to operate it.’

For anyone wishing to have more information on the new Act, they should visit the website at http://www.jaws.co.nz .