September 2024 marks the tenth anniversary of the commencement of the Patents Act 2013. What changes have shaped New Zealand’s patent landscape over the past decade? Below, we highlight some of the most significant developments.
The 2013 Act repealed and replaced New Zealand’s previous Patents Act 1953 (the 1953 Act). Many of the substantive changes regarding disclosure requirements and claims were based on modern regimes in the United Kingdom and Australia.
The overarching goal of the 2013 Act was to modernise New Zealand’s patent legislation, raising the threshold for examination and patentability to align with the systems of New Zealand’s major trading partners.
Divisional Practice
One of the most controversial changes introduced by the 2013 Act is its treatment of divisional applications.
The Act and its regulations establish a five-year deadline for requesting the examination of an application and any divisional application stemming from it. This deadline is based on the antedated filing date for divisional applications. In practice, this creates a firm deadline for finalising a New Zealand patent family, with no specific exceptions.
The rationale behind this deadline is to provide certainty to the public regarding the scope of any potential patent monopoly resulting from an application. Imposing a time limit on filing divisional applications prevents the indefinite “daisy-chaining” of such applications (up to the 20-year patent term).
However, this deadline has proven controversial, as it often expires before an informed decision can be made about whether a divisional application is necessary. Examination timeframes in New Zealand, especially in certain technology areas, currently range between two and three years. This forces applicants to decide on divisional applications before their original application has been fully examined.
For applications filed before commencement of the 2013 Act, no such time limit exists. Transitional provisions allow pre-commencement applications to continue under the old legislation, which means daisy-chaining of divisional applications can continue—potentially until 2034, when the last of the pre-commencement patents expire.
Inventive Step is Examined
Under the 1953 Act, claims were examined for novelty but not for inventive step. Lack of inventive step was only a ground for opposition or revocation. This allowed for patents to be granted with questionable validity, which required inter-partes proceedings (opposition or revocation) to resolve.
The introduction of a more rigorous examination process under the 2013 Act, including the assessment of inventive step, provides greater certainty that patents will be valid after they are granted.
Exclusion of Computer Programs from Patentability
Over the past decade, courts and legislatures worldwide have grappled with the patentability of computer-implemented inventions.
Under the 1953 Act, the patentability of such inventions was determined using a general test for whether the claimed subject matter met the definition of an “invention,” being a “manner of new manufacture”.
While the 2013 Act retains the “manner of manufacture” requirement, it introduces an explicit exclusion for the patentability of computer programs “as such”. The Act also codifies a set of criteria for determining whether an invention falls within this exclusion, based on considerations developed by UK courts.
As a result, computer-implemented inventions are now subject to greater scrutiny during examination. In most cases, the claimed invention must demonstrate some connection to a real-world effect occurring outside the computer.
Higher Sufficiency Requirements
The 2013 Act significantly raised the level of disclosure required in a patent specification to support the breadth of subject matter claimed.
Under the 1953 Act, claims could generally encompass subject matter beyond what was disclosed in the specification, provided at least one embodiment fell within the scope of the claims (the “fairly based” requirement).
The 2013 Act tightened the disclosure requirement by introducing twin requirements for a specification to provide “clear enough and complete enough disclosure” to allow a skilled person to work the invention across the full scope of the claim, and concomitantly, a claim to be “supported” by the matter disclosed in the specification.
These changes brought New Zealand’s disclosure standards into alignment with those in Australia and the United Kingdom. Indeed, IPONZ examiners and hearings office decisions have generally followed the UK approach to support.
Fewer Oppositions; More Hearings on Examination Objections
Over the past decade, there has been a dramatic drop in the number of opposition decisions issued by the Intellectual Property Office of New Zealand (IPONZ). Conversely, there has been a marked increase in applications appealing examiner objections to the IPONZ hearings office, particularly as a proportion of cases before the office.
Most of the opposition decisions that have been issued pertain to patent applications examined under the 1953 Act.
This rise in hearings on examination objections suggests that IPONZ is taking a stricter approach to patentability.
The decline in opposition decisions may partly be due to IPONZ’s decision to stop issuing public interest opposition decisions when the opponent withdraws from the proceeding. Nevertheless, the trend reflects the higher threshold for allowance under the 2013 Act.
Conclusion
The Patents Act 2013 has reshaped New Zealand’s patent landscape, raising the bar for patentability and bringing New Zealand’s system closer to international standards. The introduction of a more rigorous examination process, particularly regarding inventive step and sufficiency of disclosure, has led to greater scrutiny of applications and fewer opposition decisions. Overall, the reforms have modernised New Zealand’s patent system, ensuring greater certainty and robustness in the granting of patents—a trend likely to continue influencing patent rights in the future.
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