New Zealand’s New Patent Laws

The New Zealand Patents Act 2013 commenced operation on 13 September 2014. 

As I wrote last year, when the New Zealand parliament passed the legislation, the new law replaces the 1953 Act, and brings New Zealand’s patent laws into line with the majority of developed nations.  Among numerous other changes, examiners at the Intellectual Property Office of New Zealand (IPONZ), are now able to reject claims for lack of inventive step, and to base objections on prior disclosures that took place anywhere in the world, and not just in New Zealand.

Other key features of the Patents Act 2013 include:

1. introduction of a new requirement to request examination, either voluntarily or when directed to do so by the Commissioner of Patents (under the 1953 Act examination was automatic);
2. a utility requirement that the claimed inventions have a specific, credible, and substantial use that meets the promise set out in the specification;
3. claims must be supported across their full scope by matter disclosed in specification (in place of the old ‘fair basis’ test);
4. applications opened to public inspection (i.e. published) at 18 months from the earliest priority date (previously, applications were not published until acceptance);
5. introduction of annual maintenance fees payable from the fourth anniversary of filing, whether before or after grant (previously renewal fees were due only after grant, in the 4^th, 7^th, 10^th and 13^th years);
6. patentability is now determined according to the ‘balance of probabilities’ standard (previously, applicants were accorded the benefit of any doubt); and
7. a new exclusion from patent-eligibility in respect of computer programs ‘as such’.

Sources of Information

Currently, there are three main sources of detail regarding the new law and practice:

1. the New Zealand Patents Act 2013 itself;
2. the Patents Regulations 2014; and
3. the (presently somewhat embryonic) IPONZ Patent Examination Manual.

The new laws apply to:

1. all applications filed in New Zealand on or after 13 September 2014; and
2. any application that is the New Zealand national phase of an International Application filed under the Patent Cooperation Treaty (PCT), where the national phase entry date is on or after 13 September 2014.

News on the ‘Software Exclusion’

Perhaps the most keenly-awaited aspect of the new Examination Manual is the guidance on the treatment of claims directed to computer-implemented inventions.  Following an extended period of controversy and debate, the final form of the ‘software’ exclusion is intended to emulate, as closely as possible, the position in the UK.  In particular, the approach required in New Zealand involves the following three steps:

1. properly construe the claim;
2. identify the actual contribution made to the art by the claimed invention; and
3. ask whether the identified contribution relates only to the excluded subject matter, i.e. resides wholly in being a computer program.

At the very least, this approach excludes ‘do it on a computer’ claims, i.e. alleged inventions in which the sole contribution is to take some conventional, or obvious, task and automate it via a computer program.  In such cases, the actual contribution made by the claimed invention is to ‘do it on a computer’.

Beyond this, however, it remains unclear as to which computer-implemented inventions will be patentable in New Zealand, and which will not.  However, the Examination Manual provides some additional guidance, in the form of five ‘signposts’, drawn from the UK case of AT&T Knowledge Ventures v Comptroller General of Patents [2009] EWHC 343 (Pat).  The AT&T signposts may be expressed through the questions:

1. does the computer program, when run, have an effect on a process which is carried on outside the computer?
2. does the program, when run, operate at the level of the architecture of the computer – that is to say, is the effect produced by the program produced irrespective of the data being processed or the applications being run?
3. does the program, when run, result in the computer being made to operate
   in a new way?
4. does the program, when run, make the computer a better computer in the sense of running more efficiently and effectively as a computer?
5. is the perceived problem overcome by the claimed invention, as opposed to merely being circumvented?

While not definitive, if the answer to all five questions is ‘no’, this will be taken as a strong indication that the claim is directed to a computer program ‘as such’, and is therefore ineligible for patent protection.

Conclusion

Overall, the New Zealand Patents Act 2013 represents a long-overdue modernisation of the law.

For the most part, the substantive requirements for patentability (i.e. novelty, inventive step, level and detail of supporting disclosure and utility) have been brought into line with peer nations, including the US, European countries and Australia.

And while the new exclusion of computer programs ‘as such’ is, on the face of it, somewhat different from similar exclusions elsewhere (due to the different statutory context in which it appears), in practice it seems likely that the scope of patent-eligible computer-implemented inventions in New Zealand will closely parallel that in Europe.

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Tags: Law reform, New Zealand, Regulations