Archive for July, 2009|Monthly archive page

The most significant changes to New Zealand’s patent law in more than 50 years

In Uncategorized on July 29, 2009 at 2:51 am

The long-awaited legislation to replace the Patents Act 1953 (the 1953 Act) had its first reading in Parliament on 5 May 2009. The announced intention of the Patents Bill (Bill) is to raise the standard of patents granted in New Zealand. Many of the changes proposed in the Bill will bring New Zealand’s patent law into line with other countries.

The 1953 Act is based closely on the repealed UK Patents Act 1949. It requires only that inventions be novel in New Zealand, and does not allow the Commissioner of Patents (Commissioner) to examine patent applications for obviousness or usefulness.

The Bill requires an invention to be novel in light of material made available anywhere in the world, whether by publication or by any other means. The Bill allows the Commissioner to refuse a patent application if the claimed invention is considered to be obvious.  The Bill also allows the Commissioner to refuse a patent application on the ground that the claimed invention is not useful.

The Bill proposes to exclude the following subject matter from being a patentable invention:

  • Human beings and biological processes for their generation;
  • A method of treatment of human beings by surgery or therapy;
  • A method of diagnosis practised on human beings; and
  • A plant variety (protectable under the Plant Variety Rights Act 1987).

The Bill will also exclude an invention from being patented if the commercial exploitation of the invention is contrary to public order or morality.

Importantly, the Bill attempts to deal with the concerns of Maori (New Zealand’s indigenous people), and provides for a Maori Advisory Committee to advise the Commissioner on whether a claimed invention is derived from Maori traditional knowledge or from indigenous plants or animals and, if so, whether the commercial exploitation of that invention is likely to be contrary to Maori values.

One area of controversy is the proposed removal of the ability of an interested party to oppose the grant of a patent at a hearing before the Commissioner. Replacing oppositions, the Bill proposes a limited re-examination process. Re-examination has been unpopular in other countries, largely due to the exclusion of the objector from the process after a re-examination has been initiated.

The Bill sets the maximum term of a patent at 20 years from the filing date. For many inventions, this is an adequate period of time for the patentee to recover the costs incurred in developing the invention. However, in the case of inventions that require regulatory approval before they can be sold to the public, such as pharmaceuticals, a significant portion of the 20-year term can be spent performing the testing necessary to obtain regulatory approval. This effectively reduces the term of the patent for these types of inventions.

The Bill has been referred to Parliament’s Commerce Committee to consider public submissions on the Bill with these submissions being presented this week.  The Committee must report back to Parliament by 5 November 2009.

Thanks to my patent  colleagues for this summary – for more detailed information see: www.henryhughes.co.nz.


Hello world!

In Uncategorized on July 29, 2009 at 2:28 am

Hello from New Zealand.

I am a Patent and trademark attorney and plan to use this space to tell you about interesting developments in intellectual property law in New Zealand – and beyond as I come across things that take my fancy.