Patents Bill - First Reading in Parliament

The Patents Bill received its first reading in Parliament on 5 May 2009 and was referred to the Commerce Select Committee for consideration. The Committee is expected to call for submissions in the next few weeks.

The Patents Bill, which will replace the Patents Act 1953, was introduced to Parliament in July 2008. The standard of patent examination required by the Patents Act 1953 is less strict than that required by most other countries. One consequence of this is that patent rights granted in New Zealand may be broader in scope than rights granted for the same invention in other countries. This has the potential to disadvantage New Zealand businesses and consumers, as technology which may be freely available elsewhere could be covered by a patent in New Zealand. Since much innovation is incremental, building on what already exists, local innovators may be disadvantaged as well.

The Bill strengthens the criteria for granting a patent to ensure that patents are only granted for genuine innovations. To be patentable, an invention must be:

• a “manner of manufacture”; and
• new, involve an inventive step, and useful.

Novelty and inventive step will be measured against all matter made available to the public anywhere in the world, by any means. When deciding whether or not to grant a patent, the Commissioner of Patents will make the decision on the “balance of probabilities”.

Some types of invention are explicitly excluded from patent protection:

• human beings and processes for their generation;
• methods of medical treatment of humans by surgery or therapy and methods of diagnosis practiced on humans;
• inventions whose commercial exploitation would be contrary to morality or public order; and
• plant varieties.

The Bill will simplify the processes for challenging the grant of a patent, including the introduction of a re-examination procedure and an expanded administrative revocation procedure. There will be no provision for pre-grant opposition as provided in the 1953 Act.

A Maori Advisory Committee will be established to advise the Commissioner of Patents on patent applications involving Maori traditional knowledge, and indigenous plants and animals.

The Bill will also update the regulatory regime for patent attorneys.

A copy of the Bill can be viewed at:

http://www.legislation.govt.nz/bill/government/2008/0235-1/latest/versions.aspx