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Patents (Advancement Patents) Members Bill – a proposed second tier patent system in New Zealand

On 5 April 2018, the Patents (Advancement Patents) Members Bill was introduced in New Zealand. The Bill comes as a surprise after recent reform to New Zealand’s patent legislation in 2013, but will no doubt be welcomed by many.

The Bill seeks to amend the New Zealand Patents Act 2013 to introduce a second tier patent, called an Advancement Patent. Second tier patent systems are not uncommon in the patent world.

The Bill aims to encourage technological development by providing an alternative patent system that:

(a)   is easier and cheaper to use than the standard patent system;

(b)   provides protection for advancements that would not otherwise meet the patentability requirements of the standard patent system; and

(c)   provides a lesser term of protection than standard patents.

An application for an Advancement Patent would include a patent specification having no more than five claims relating to a single invention that includes an advancement step.  The advancement step requires the invention to be distinctly different from existing technology and to make a useful improvement to the technology of the invention. An advancement step is therefore a lower level than the inventive step requirement for a standard patent. As a result, if the Bill succeeds, New Zealand would allow protection for a wider range of technological advancements than it does currently.

Similar to Australia’s Innovation Patent, an Advancement Patent Application would be granted as a Provisional Advancement Patent after a simple formalities check. However, this patent would lapse after three years if the patent owner or a third party does not request examination of the patent within that time period.  If the patent progresses through examination successfully, it would then be granted as an Advancement Patent.

Surprisingly though, the Bill sets out that both an unexamined Provisional Advancement Patent and an examined Advancement Patent could be enforced against others.  Although this means that an Advancement Patent provides for quick and enforceable protection, to allow an unexamined patent to be enforced against others risks opening the proposed system to abuse.  A more pragmatic approach would be to require the patent to be examined before it can be enforced.

We will watch the progress of the Bill and its enforcement provisions particularly.

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