The Patents Act 2013 passed into law on 13 September 2013. The new act is not yet in force, but will take effect by September 2014 at the latest. This allows for the development of the patents regulations, which will set out the procedural detail for the new act.
Greater confidence of validity
One of the goals of the new law is for the Intellectual Property Office of New Zealand (IPONZ) to issue better quality patents.
Under the old law, IPONZ examiners were only allowed to raise novelty objections based on material published in New Zealand. Under the new regime, the prior art base for examiners will include matter published or used in New Zealand or elsewhere. Other countries already have this so we are simply bringing our prior art base up to a world standard.
Examiners will now be formally permitted to examine for inventive step. It will no longer be enough for an invention to be new. The new aspect of the invention will also need to be clever enough to qualify for patent protection. Lack of inventive step has always been a ground of third party challenge. Now we are going to see this test being applied a lot earlier in the patent grant process.
Crowd sourcing of prior art searching
One of the problems with the old law is that patent applications were kept secret until they had been approved for grant by IPONZ. This meant that third parties were kept in the dark about the contents of a particular patent application until IPONZ had completed examination.
Under the new law, all patent applications will be published before examination starts. Once a patent application has been published, third parties will be able to assert that it lacks novelty and/or does not involve an inventive step.
Although the patents regulations are still being prepared, I expect that they will set out requirements for notices such as a list of the references, a description of relevance for each reference and English language translations of any non-English language item listed. These references will be available to IPONZ examiners during the examination process when they are most needed.
Some subject areas have prior art references to which an examiner does not have easy access. Computer-implemented inventions fall into this category.
One of the main arguments raised by members of the open source community during the select committee process was that many computer-implemented patents are granted for trivial or existing techniques. I expect that the ability to crowd source prior art searching, when combined with other aspects of the new regime, will address this argument.
Subject matter exclusions
The act excludes from patentability any invention where commercial exploitation of the invention is contrary to ordre public (public order) or morality. The act further excludes human beings, methods of treatment of human beings, methods of diagnosis practiced on human beings, plant varieties and computer programs.
Most of the reporting on the new patent law seems to involve the treatment of computer-implemented inventions. There appear to be more self-appointed industry spokespersons on this issue then there are fingers on a hand. Not all are in agreement about the effect of the new law. Despite conflicting opinions on the issue, New Zealand will continue to grant patents for inventions that make use of or involve a computer program.
IPONZ and the New Zealand courts will adopt tests established by English law when considering patent applications involving computer programs. The United Kingdom courts, for example, have allowed patents for a computer programmed to work better, a better way of designing drill bits, a technique for monitoring the content of electronic communications, and organisation of touch screen devices.
The validity of patents issued under the old act will generally be judged under the old law. Patent applications made before the new act comes into force will generally continue to be dealt with under the old act even after the new act commences.
The general consensus among all stakeholders is that the new law will continue to protect genuine inventions and encourage New Zealand businesses to export and grow. Having said that, we expect teething problems while IPONZ examiners adapt to a new regime. It is likely that we will see a moderate increase in patent applications filed prior to the new legislation coming into effect.An edited version of this article appeared in The National Business Review on Oct 25 2013.