Draft Patents Bill

A draft Patents Bill was released for public consultation on 20 December 2004.  This Bill is intended to replace the current New Zealand Patents Act 1953.

In releasing the Bill, Associate Minister of Commerce, Judith Tizard, stated that the Bill will update New Zealand patent legislation and bring it into line with that of other developed countries.  The Associate Minister noted that the Bill strengthens the criteria for granting patents to ensure that patents are only granted for genuine innovations.  Novelty and obviousness will be measured against all matter made available to the public anywhere in the world by any means - rather than the present outdated “local” novelty test.

Patent term is fixed at 20 years (as now) and there is no provision for extensions of term.  The Bill invokes the full exclusions from patentability provided for in Article 27.3 of TRIPs namely “diagnostic, therapeutic or surgical methods for the treatment of human beings”.  This will now provide a proper statutory basis for excluding methods of medical treatment: see the recent New Zealand Full Court of Appeal decision in Pfizer v Commissioner of Patents (2004) 60 IPR 624.  Human beings and biological processes for their generation are also excluded.

A further major proposed change is the abolition of pre-grant opposition proceedings.  This proposal is controversial and was the result of submissions made during early development of the reform proposals as long ago as 1992.  This proposal would put New Zealand out of step with the Australian practice.  It is expected that this will be the subject of extensive submission during eventual Select Committee hearings on the Bill.

Submissions on the draft Bill can be made up until 11 March 2005 and the Bill is planned to be introduced into Parliament by mid 2005.   The Bill is likely to have a long gestation period as 2005 is an election year and there will be a crowded legislative calendar.  Once the legislation has passed through Select Committee consideration, it will not come into force until new Patent Regulations have been drafted.  The Ministry’s Senior Policy Advisor, Warren Hassett, expects that the new legislation will finally come into force some time in 2007.