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The new Patents Bill has been through its first reading in Parliament and has now passed into the Select Committee stage.  The Commerce Select Committee has heard submissions on the Patents Bill and is preparing a report which may propose changes to the Bill.  This report is due to be presented to Parliament at the end of March.  After the Select Committee reports back, the Patents Bill will proceed through its second and third readings in Parliament and be passed into law.  We can expect a new Patents Act to be in existence (and maybe even in force) by early 2011.


What does the Patents Bill propose we do?

The new Patents Bill proposes changes to the existing Patents Act to keep up with the current changes in technology and also to align the New Zealand patent system more closely with patent systems in other countries around the world.  As the Patents Bill has not yet passed through its second reading in Parliament, amendments can still be made to the Bill and are likely.  The following discussion is based on what we know from the draft Patents Bill.


Publication at 18 months

When a patent application is filed with the Intellectual Property Office of New Zealand (IPONZ), the details of the invention (the patent specification filed with the application) remain unpublished until a patent is granted.  Under the new Patents Bill, the patent specification will be made open for public inspection 18 months after the earliest application date.  It is unclear what making a patent specification open for public inspection will mean, but it is likely the patent specification will be published on the IPONZ website: www.iponz.govt.nz.  While publication at 18 months is new for New Zealand, it is common in many other countries, including Australia, the United States, the United Kingdom and under the Patent Cooperation Treaty.


Change to what can be considered as a ‘publication’

Under the current Act, a patent can be granted for any invention that has not been published in New Zealand, or used in New Zealand, before the earliest filing date of the patent application.  In 1953, when the current Patents Act was written, limiting publication in this way in New Zealand made sense.  Information took a long time to make its way to New Zealand.  These days, the internet allows almost instant access to information.  An idea now travels the globe at the speed of an electron.  The patent office at IPONZ has struggled with the current definition of ‘publication’ in the Patents Act and the internet for years, gradually arguing that a document available on the internet is published in New Zealand.  This approach has been upheld by the commissioner of Patents.

The draft Patents Bill defines an invention as novel if it does not form part of the ‘prior art’ base.  The prior art base is then defined as all matter, which has at any time before the earliest application date, been made available to the public by written or oral description, by use or in any other way.  So now, publication or use of an invention in deepest darkest Africa, before the earliest patent application was filed, could render the application invalid.


Examination for obviousness

Currently in New Zealand, patent specifications are examined for newness (novelty), but not for obviousness.  Examination occurs after a patent application is filed with a complete specification.  For a patent to be granted, the patent applicant must overcome all objections raised by the examiner before the examination period ends.  If the patent applicant overcomes all the objections then the patent is accepted.   After a patent has been accepted, it can be challenged on the grounds that is it obvious in view of what was known or used in New Zealand before the patent application was filed.  In contrast, most countries examine patent specifications for obviousness.

For example, if I invent a remote controlled water pistol and file a patent application the examiner cannot refuse to grant me a patent on the grounds that my remote controlled water pistol is obvious.  However, my patent can be challenged by third parties after acceptance on the grounds that a remote controlled water pistol is obvious.

Under the new Patents Bill, patent specifications will now be examined for obviousness as well as newness.  Now the examiner will be able to object that my remote controlled water pistol is obvious. 

Examination for newness is generally straightforward, either something has been described or done before, or it hasn’t.  Examination for obviousness is much more subjective.  What may appear to be obvious to one person may not appear to be obvious to another person.  Also, examiners must be wary of looking back with hindsight.  Obviousness has to be judged at the time the first application was filed.  The time the first application was filed may be years before the specification filed with the patent application is examined.  What may look like an obvious invention now may have been revolutionary when the patent application was filed.

The change in examination rules to include examination for obviousness may increase the time and effort required to get a patent application through the examination phase and to acceptance.  However, there may be a pay-off if the patent is ever challenged.  If a person applying for a patent has already argued that the patent is not obvious (in view of a certain other publication) it will be easier to argue this again if challenged after acceptance.


Pre-grant opposition versus re-examination

Under the current Act, once a patent application has been accepted, it is published and advertised in the patent office journal.  This begins a three month period in which interested third parties can oppose grant of the patent.  If no one opposes the patent by the end of the three month period, the patent is granted.  If another person does oppose grant of the patent then the opposition is heard by the commissioner or an assistant commissioner.  In the opposition, both parties (the patent applicant and the person who filed the opposition) present their cases and have the opportunity to be heard by the commissioner.  The commissioner then decides whether the patent should be granted or not, and if the patent needs to be amended before being granted.  An opposition can also be filed within a year after a patent is granted.  After this time, if a patent is to be challenged, it must be challenged in court at much greater expense.

Back to my example; under the current Patents Act, say I have now had my patent application for my remote controlled water pistol accepted.  It is published in the journal and Joe Blogs, a maker of water pistols, sees the publication.  Joe decides that my patent shouldn’t be granted and wants to stop it.  He can file an opposition and argue his case before the commissioner.  Joe’s case might include that he built a remote control water pistol for his son Jimmy and they have used it in public.

The new Patents Bill removes the current opposition procedure and replaces it with a re-examination procedure.  Under the re-examination procedure, any person can file a request for re-examination of a patent application that has not been granted.  The commissioner will consider any request for re-examination and issue a report.  Re-examination can be requested before a patent application is accepted.  The commissioner will only consider newness and inventiveness in the re-examination.  The commissioner will not consider whether the invention has been used or not.

Under the proposed new system, when Joe Blogs sees that my patent application has been published, he cannot file an opposition to my patent.  He can file for re-examination and submit any documents about remote controlled water pistols to the commissioner.  The commissioner will consider the documents filed by Joe.  Joe cannot include any information about the water pistol he made for Jimmy unless it is available to the public.  The use of Jimmy’s water pistol can’t be considered yet.  If Joe wants to challenge my patent on the basis of use of Jimmy’s water pistol, he must do it through the courts after my patent is granted.

The change from opposition to re-examination is a significant one.  The current opposition procedure allows a person opposing a patent being granted a range of grounds on which to oppose.  Under re-examination these grounds are limited to newness and obviousness.  The opposition procedure also allowed the person opposing grant of the patent to present their case.  Under the re-examination procedure the person requesting re-examination has no further say once they have requested re-examination.  However, requesting re-examination will cost less than filing an opposition.

Many submitters presented arguments to the Commerce Select Committee for the retention of the opposition procedure.  It is possible the Select Committee report will recommend its retention.


2010—an interesting year for New Zealand’s patent system

I have only touched on just a few of the changes proposed in the Patents Bill.  The next few months will be interesting as the Select Committee reports back to Parliament and the Patents Bill has its second and third readings.  Only then will  we know the full details of the changes to New Zealand’s patent system.

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  Liz Nock

  Associate