A new patents act has recently been passed in New Zealand. The Patents Act 2013 will come into force on 13th September 2014, although some parts of the Act are already in force.
The current patents legislation in New Zealand is more than 60 years old, so an update is perhaps overdue. One of the aims of the changes is to provide a greater degree of confidence in the validity of patents granted in New Zealand.
The following summarises some of the key changes:
- Examination will be more stringent, including:
- Examination for inventive step. At the moment New Zealand examiners are not permitted to examine for inventive step even though it is a requirement for validity.
- An absolute novelty requirement, rather than the current local novelty requirement
- A tougher patentability threshold
- There will be more options for third party challenges
- There will be some subject matter exclusions
- Timings for examination will change, with deferral of examination possible
- Renewal fees will be payable annually, as will maintenance fees before grant
Many of the changes simply bring New Zealand patent law into line with international patent law and so are unlikely to significantly affect a patent strategy that you have developed for multiple jurisdictions. However, for existing New Zealand patents and existing International applications there are some actions that you might consider
- Early filing – Consider filing National Phase applications early, before September 2014, to take advantage of the less stringent standards of the existing law. There is no need to file divisional applications early.
- Renewal payments – Consider paying some renewal fees early. Under the existing law renewal fees can be paid in advance and in some cases these fees may be less expensive than the fees that will be due under the new law.
For further information, please contact us.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.