Patents Bill 2008

For those who have following the snail-like progress of the New Zealand Patents Bill, 9 July 2008, was the date for near incredulity when the Patents Bill was tabled in Parliament. This Bill was first mooted in 1990. An exposure draft was produced and made public in December 2004 for comment by professionals. However, at that stage, submissions were limited to matters of technical drafting. The Ministry of Economic Development was unwilling to deal with issues of policy, preferring to leave these to Select Committee study.

Thereafter the Bill disappeared from sight and on 9 July 2008, with very little fanfare, was tabled in Parliament. Before there is any premature celebration, it must be remembered that New Zealand will be holding a General Election not later than November 2008. After the election, the new Parliament will need to vote to continue the Bill, otherwise the Bill will lapse. Given that this is technical legislation, it is certain that the Bill will be continued and likely that Select Committee Hearings  will then take place in the second quarter of 2009. Present indications are that, if all goes as intended, the Bill will have its final reading in late 2009.

Once the Bill passes through Parliament, it will only come into force when new Patents Regulations have also been enacted. This means that mid 2010 is the most realistic date for the Bill to be finally and fully implemented.

A copy of the Bill is available at http://www.legislation.govt.nz. 

The Bill will bring about thoroughly needed reform. In particular, local novelty - which is a fragile and unrealistic concept given the pervasive use of the Internet - will now give way to an absolute novelty standard. When it comes to examination, patent applications will be examined for both inventiveness and utility in addition to novelty. Again this will be in line with most other countries.

At present applicants for patents are given the benefit of the doubt when the Commissioner decides whether to grant the application. This will be replaced by a balance of probabilities approach. Patent applications will now be automatically published 18 months after their earliest priority date.

At long last, there is a definition in the Act of the exclusive right (clause 17) and what amounts to infringement (clause 133).

Several controversial areas that will likely be tested and further argued before the Select Committee are:

• The removal of pre-grant opposition. (The Bill provides that the application (once accepted) is made open to public inspection. Any person may within the prescribed period, assert to the Commissioner that the invention is not patentable because it is either not novel or does not involve an inventive step. The Commissioner must then consider the assertions. Clause 88 also provides that if requested, the Commissioner must re-examine a complete specification on or after the date of publication if the patent has not been granted. At that point, the Commissioner can refuse to grant the application.)
  
• The exclusion from patentability of diagnostic therapeutic and surgical methods. While this exclusion is consistent with New Zealand’s right to do so, under Article 27 of the TRIPs Agreement, it does place New Zealand out of step with its nearest neighbour Australia which has long allowed for the patenting of methods of medical treatment.