The Patents Bill 2008 was introduced into Parliament on July 9 2008. With an election imminent in November this year, there is some doubt as to the timeframe for enacting the legislation. However, in view of the significant differences that the bill introduces, it is worthwhile briefly summarising the main aspects of the proposed legislation.

Important changes include:

• The introduction of absolute novelty. At the present time, New Zealand still has only a local novelty requirement;
• Examination for inventive step. This will be an important change in Intellectual Property Office practice. At the present time, there is no examination for inventive step (although obviousness is a ground of opposition and revocation). Some intensive training of examiners is likely to be required, and practitioners will be interested to see how the Intellectual Property Office deals with this, particularly in view of the changes to the standard of proof (which is identified immediately below).
• Rather than the current situation where the applicant is given the benefit of the doubt in issues of patentability, the Bill introduces the more common principle of these issues being decided on the "balance of probabilities".
• The Bill includes a requirement to disclose the results of any official searches conducted in the course of examination of corresponding foreign applications.
• The opposition procedure as it presently exists will be removed. Instead, a re-examination procedure will be introduced. Under this, any person may request reexamination by the Patent Office of a patent up to or after grant. A revocation request can be made before the courts.
• Publication will occur at eighteen months after the priority date, rather than immediately after acceptance.
• A Maori Advisory Committee will advise the Intellectual Property Office on whether commercial exploitation of an invention may be contrary to Maori values, amongst other matters.
• Methods for medical treatment of humans by surgery or therapy, and methods of diagnosis practised on human beings are specifically excluded from patentability.

Updates on implementation of the new bill will be reported as further progress occurs.

Wes Jones

Baldwins
Level 14, Baldwins Centre
342 Lambton Quay, Wellington
New Zealand
Tel: +64 4 472 1094
Fax: +64 4 473 6712
enquiries@baldwins.com 
www.baldwins.com