In an article posted by David Macaskill, Associate, James & Wells Intellectual Property on the 29th of August this year, it was posited that the new Patents Bill which has recently been passed into law is the biggest shake-up in New Zealand’s Intellectual Property landscape in over 50 years. This new law brings New Zealand’s patent regime into line with many overseas countries, which is great news for New Zealand innovators as it will provide credible protection for their inventions in New Zealand. In addition it will assist New Zealand businesses to secure patent protection overseas, as the New Zealand process will more closely mirror the processes encountered overseas.
As David goes on to explain, the new patent law will implement some significant changes and gives a snapshot of several of those changes, how they may affect patentees and how to prepare for the new law. On the subject of publication of applications, New Zealand public patent applications will now be published 18 months after filing. This is consistent with many of New Zealand’s major trading partners such as Australia and the United States.
Regarding examination for an inventive step, IPONZ will now be able to examine patent applications to determine whether the claims involve an inventive step over the existing products and documents. This makes it less likely that patent applications will be granted for inventions of dubious inventiveness. This change is a benefit to both patentees and businesses. The new Patents Act also introduces an ‘absolute novelty’ standard, bringing New Zealand law into line with that in many of our major trading partners.
With a bow to the ‘computer age’, the new Patents Act includes preclusions to the patentability of computer software and it is advised that those operating in embedded software technology space should pay attention to the regulations as they are prepared.
Third parties will now be able to request re-examination of a patent application or granted patent, providing a cost effective way to challenge the claims of an accepted application or granted patent. Also, applicants must now actively request examination of their patent applications. The new act raises the bar on the standard to secure a grant of a patent. The new standard is ‘balance of probabilities’ whereas in the past it was required that the ‘benefit of the doubt’ be provided to the patentee.
Finally, patent applications filed under the old act will continue to be examined under that law, with a number of notable exceptions. For more information on these and on James & Wells Intellectual Property please visit their website at http://www.jaws.co.nz.