The new New Zealand Patents Act and accompanying Regulations came into force on 13 September 2014. The new legislation creates some issues with deposit requirements for patents claiming microorganism inventions (section 43, regulation 59).
In particular, Section 43(1)(b) of the new Act and Regulations requires applicants to provide a deposit receipt for the microorganism to the Intellectual Property Office of New Zealand (IPONZ) within three months of making the deposit. However, microorganism deposits are generally made well in advance of any decision about where subsequent patent applications will be filed. Therefore, the new deposit requirements are clearly unworkable for the majority of applicants filing microorganism patents.
It also appears from a literal reading of the regulations that many patent applications filed under the 2013 Act could be void for failure to meet certain other legislative requirements relating to the third party availability of deposited organisms as stipulated under the Budapest Treaty.
We are aware that some sources of information have stated that applicants must have filed applications for microorganism-based patents in New Zealand before 13 September 2014 or risk losing all patent rights in New Zealand. However, this is not correct.
IPONZ has already issued a practice guideline which outlines how to meet the deposit receipt requirement. We expect that in due course, the Regulations will be amended to address the deposit receipt issue, as well as the other problems alluded to above. We believe amendment of the Act and/or Regulations is important so that an applicant for a microorganism-based invention in New Zealand will feel confident that their patent application is validly granted.
We will continue to work with IPONZ to clarify inconsistencies in the Act and Regulations, highlight any further problems related to the Act and Regulations that come to light, as well as address any other issues that are important to all New Zealand patent applicants.
An edited version of this article first appeared in the December 2014/January 2015 issue of Managing IP.