New Patents Act New Zealand - summary

Author:Mr Gareth Dixon and Jacinta Flattery-O'Brien
Profession:Shelston IP

This article reports continuing progress toward New Zealand's new Patents Act. More correctly, it reports further delays in such progress.

Following its introduction before the House of Representatives on 9 July 2008, the Patents Bill 2008 then survived a general election in November 2008, before having its first Parliamentary reading on 5 May 2009.

The Bill was approved by a clear majority of the House - and then opened to public submissions before being passed to the Commerce Select Committee for consideration. The Select Committee was originally due to report back to Parliament on 5 November 2009. However, due to the number and substance of public submissions received, the report date has been deferred until 30 March 2010.

Most changes proposed in the Bill reflect public opinion and global standards - and appear to have been embraced, whereas others are clearly more controversial. Indeed, most of the submissions made publicly-available relate either to software patents (the Bill proposes to allow these, subject to a "technical effect" criterion) or methods of medical treatment of human beings (the Bill purports to continue the present exclusion of such methods from patentability). We also envisage issues regarding certain parts of the Bill introduced specifically to conform New Zealand law to that of Australia (e.g. the IDS requirements) which may now require substantial amendment given interim changes in this jurisdiction.

As summarised below, the Bill is essentially a hybrid of the current Australian and United Kingdom legislation. The Bill is essentially as per its initial (December 2004) exposure draft, with the significant addition of a statutory Experimental Use Exception to patent infringement. This had been the subject of a separate government review, but given the interim period, now appears to have been consumed within the broader reforms.

A brief synopsis of some of the salient features of the Bill may read:

Replacement of the current local novelty standard with absolute novelty. Examination will be extended to now include an evaluation of inventive step. "Whole of contents" objections based unpublished applications having an earlier priority date may be made in respect of both novelty and (unlike Australia) inventive step. A claimed invention must be a "manner of manufacture", within the meaning of s.6 of the Statute of Monopolies, and "useful", insofar as it must have "specific, credible, and substantial utility". A...

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