Considerations in Light of New Patent Laws in New Zealand
The New Zealand Patents Act 2013 will commence fully on 13 September 2014 (although some parts of the Act are already in force).
The key differences between the new Act and the current 1953 Act relate to:
More Stringent Examination
- Change from local novelty (known or used in New Zealand) to absolute novelty (known or used anywhere)
- Patentability threshold changes from ‘benefit of the doubt’ to ‘balance of probabilities’
- Examination will include obviousness rather than just simple novelty
- Subject Matter Exclusions; computer software protection likely to be more limited
Third Party Challenge Options
- Third Party Notifications can be lodged by any interested party challenging the novelty or inventiveness of a published application
- Re-examination of a patent application or granted patent may be requested by any interested party
- Opposition remains with stronger grounds than under the 1953 Act
- Revocation is available throughout life of patent (previously only available for one year after grant)
New Procedures and Fees
- Examination must be requested instead of the old automatic examination system
- Automatic publication of all new Act applications 18 months from filing – no more submarine patents hidden from view
- Annual maintenance fees payable from 4 years from the filing date, then renewal fees annually after grant (currently renewal fees are payable only on granted patents 4, 7, 10 and 13 years from the filing date)
Early Filing of Applications
Because applications filed after the new Act comes into force will be subject to more stringent examination, you may wish to consider bringing forward your New Zealand national phase entry, or wish to file non-PCT applications directly in New Zealand.
Renewal Fee Payments
Furthermore, because renewal fees payable on granted patents are likely to be higher under the new Act than the current Act, you may wish to consider paying some or all of these before the increased fees under the new Act comes into force in September.
In order for us to advise if clients should consider taking advantage of prosecuting a patent application under the current Act, or pay the current renewal fees in advance, we suggest they contact us prior to 8th August 2014 in order for us to give timely advice and be able to instruct foreign associates on your behalf.