Long Awaited Patents Bill has First Reading

MEDIA RELEASE Wednesday 6 May 2009

Long Awaited Patents Bill has First Reading in Parliament

The Bill to replace the Patents Act 1953 had its first reading in Parliament last night and was referred to the Commerce Select Committee for public submissions. The Bill will make the most significant changes to New Zealand’s patent law in more than 50 years and is expected to raise the standard of patents granted in New Zealand.

A patent gives an inventor the exclusive right to profit from their invention for a maximum of 20 years. New Zealand patents are granted after an examination by the Intellectual Property Office of New Zealand (IPONZ), a business unit of the Ministry of Economic Development.

Frank Callus, President of the New Zealand Institute of Patent Attorneys and a principal of patent attorney firm Henry Hughes, said that many of the changes proposed in the Patents Bill will be welcomed by New Zealand businesses for harmonising New Zealand’s patent law with other countries.

“New Zealand is one of the last countries in the world to require only local novelty for patent applications. The availability of information on the internet has not only made the concept of local novelty outdated, but rendered it impossible to administer. The new Patents Act will require an invention to be novel throughout the world and thus better reflects the modern environment.”

“One potential disadvantage of the proposed new law is removal of the ability of an interested party to oppose the grant of a patent at a hearing before the Commissioner of Patents. Under the present Act, oppositions have been a valuable tool used by New Zealand businesses to attack and limit the scope of troublesome, overbroad, patents. Replacing oppositions, the Bill proposes a re-examination process. However, 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 also proposes a number of exclusions from patentability including: 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. Plant varieties are currently able to be protected under both the Patents Act 1953 and the Plant Variety Rights Act 1987.

The Patents Bill will also exclude an invention from being patented if the commercial exploitation of the invention is contrary to public order or morality. In deciding whether to apply this provision, the Commissioner of Patents may seek advice from a Maori advisory committee set up to advise the Commissioner on whether an invention claimed in a patent application 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.

An advisory committee was established under the Trade Marks Act 2002 to advise the Commissioner on whether the proposed registration of a trade mark that is, or appears to be, derivative of a Maori sign, including imagery or text, is offensive to Maori.

The Patents Bill can be viewed at www.legislation.govt.nz.

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