New Patents Bill Finally Passed

03 September 2013

Whilst the UK updated its 1949 Act in 1977, New Zealand has taken 60 years to update its legislation in a similar manner. New Zealand finally moves to join the modern world from being an introspective curiosity with "local novelty" and allowing antiquated practices such as "patents by importation" where the act of bringing an invention developed by another into New Zealand was considered an invention.

The Bill's passage is welcomed, as it will bring New Zealand law into conformity with international norms, allow better scrutiny of patent applications during examination, and allow additional cost effective mechanisms to challenge patents and provide clarity.

The Patents Bill is expected to receive Royal assent in the next few days, after which it will become the Patents Act 2013. According to the transitional provisions, the new Act will come into force 12 months after the date on which it receives Royal assent.

Better patents

The new regime will generally bring the criteria for granting a patent into line with international standards. Examiners will be able to look internationally to determine whether or not an invention is "new". Additionally, examiners will have the ability to examine whether there is an "inventive step".

The assessment will also become more balanced with the Commissioner needing to be satisfied on the "balance of probabilities", instead of the current "benefit of any doubt" going to the applicant.

Third parties will also be able to request the re-examination of a patent application or granted patent. This is a practice that currently exists in a number of foreign jurisdictions including Singapore, Australia and the USA. Its introduction to New Zealand will provide a further cost effective mechanism for parties to challenge the claims of a patent application or a granted patent.

Software exclusion

The so called "software exclusion" has been the most hotly contested clause of the Patents Bill. The select committee sought to exclude software apart from "embedded software". This approach contravened a fundamental objective of technology law of technical neutrality.

In order to reach a compromise a somewhat misguided approach was adopted of attempting to develop examination guidelines rather than clear legislative provisions on software patents. This was abandoned after a mountain of criticism. The final clause says that you cannot patent software "as such" - as in Europe. There has been a lot of uninformed commentary as to what this means with many opposing software patents suggesting that this is a total ban.

In fact the Supplementary Order Paper introducing the clause gives examples of what is intended. At one end of the spectrum is software to prepare forms. Being the simple use of a computer in the normal way this would not be protectable. At the other end is software to make a washing machine work better. Because the software makes the machine operate in a new and better way it would be protectable. There will be much debate as to what happens in the middle.

The software exclusion of the new Act does not apply to patents that are granted and patent applications filed before the new Act comes into force. Complete specifications for software related inventions, including national phase filings for PCT applications, should be filed before the new Act commences so as to be examined under the old Act.

Other exclusions

The Act will also specifically exclude the following:

• plant varieties;


• methods of medical treatment of human beings; and


• human beings, and biological processes for their generation.

Plant varieties are protected separately under the Plant Variety Rights Act 1987.

The exclusion relating to methods of medical treatment in New Zealand is an affirmation of the stance taken by the Courts under the Patents Act 1953.

Māori inclusion

Interestingly the new Act will also establish a Māori Advisory Committee akin to the Māori Advisory Committee established under the Trade Marks Act 2002.

The Committee's primary function will be to advise the Commissioner (on request) whether an invention described in a patent application was derived from Māori traditional knowledge or from indigenous plants and animals.

The Committee would also advise on whether commercial exploitation of such inventions could be contrary to Māori values.

Whilst the Commissioner would be required to consider the advice of the committee, he or she would not be bound to follow it.

This is believed to be the first time indigenous knowledge has been incorporated into any patent legislation worldwide.

Please visit www.ellisterry.com for further information on all aspects of intellectual property or email John Terry at john.terry@ellisterry.com if you have any questions about the Patents Bill.

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