Key changes under the Patents Act 2013 (the “New Act”)

Effective 13 September 2014

Higher Thresholds

  • Change from local novelty (known or used in New Zealand) to absolute novelty (known or used anywhere).
  • Patentability threshold changes from ‘benefit of the doubt’ to ‘balance of the probabilities’.
  • Examination will include “obviousness” rather than just simple novelty.
  • Computer software protection is likely to be more restricted.

New Procedures

  • Increased filing, examination and maintenance fees – renewal fees will be payable annually from the 4th year of filing.
  • Examination must be requested instead of the old automatic examination system.
  • Automatic publication of all New Act applications 18 months from filing – no more submarine patents hidden from view.

Challenge Options

  • Third Party Notifications can be lodged by any interested party challenging the novelty or inventiveness of a published application and the Commissioner must consider the objection.
  • Re-examination of a patent application or granted patent may be requested by any interested party.
  • Opposition remains with stronger grounds than under the Old Act.
  • Revocation before the Commissioner or the Court is available throughout the life of a patent (previously only available before the Commissioner for one year after grant).

Old Act Cases (Patents Act 1953 continues to apply)

  • “Old Act” cases are those where a “complete specification” is filed before 13 September 2014.
  • Old Act cases will be examined under the provisions of the Old Act (Patents Act 1953).
  • A divisional from an Old Act case will be treated as an Old Act case.
  • A PCT national phase application entering New Zealand before 13 September 2014 will be treated as an Old Act case but a pending PCT application filed before 13 September 2014 that has not entered the national phase in New Zealand will be a New Act case.
  • The validity of Old Act cases will be determined under the Old Act grounds.

Strategic Issues

Filing

Complete specifications filed before 13 September 2014 will enjoy the more lenient provisions of the Old Act. Consideration should be given to:

  1. Completing any provisional application already filed before 13 September 2013.
  2. Filing any new application as a complete in the first instance before 13 September 2014.
  3. Entering the national phase in New Zealand for any pending PCT application before 13 September 2014.

Challenges to Validity

  1. New Act Re-examination will be cheap but an interested party cannot participate further after a request is filed.
  2. New Act Opposition will be a more powerful option with the enhanced grounds of opposition and has the key advantage of suspending grant.
  3. Old Act Oppositions may be refiled as New Act revocation proceedings, gaining the stronger revocation grounds under the Old Act and simple balance of probability applies rather than the benefit of the doubt.
  4. New Act Revocation before the Commissioner offers a more cost effective challenge option for older patents.

Important: This note is intended to provide general information as to changes when the Patents Act 2013 comes into force. Other factors may be relevant in developing a strategy for a particular situation and you should seek our advice before deciding upon a strategy.