Spending time and money on searching existing publications and
patent registers, can avoid costly mistakes when acquiring or
licensing technology from a third party. The same applies before
undertaking a significant R&D program or an extensive patent
If the technology in question is anticipated by these earlier
publications, then the value of the transaction or the merit of the
R&D program or patent filings may be critically reduced.
Valid patents can only be obtained for subject matter which is
industrially useful, novel and involves an inventive step. This
later criteria can be defined as a non-obvious improvement which
provides an advantage over known (published or used)
Currently New Zealand has a "local novelty" standard
which means that the novelty of an invention is determined by what
is known in New Zealand prior to the priority date of a patent
application. Availability on the internet in New Zealand is also
considered a form of publication in this country.
In addition, examination of a patent in New Zealand currently
involves a consideration of novelty but not usefulness or inventive
step. However, the claims of an accepted patent must include
subject matter which is industrially useful and inventive for the
patent to be valid. Whereas novelty is determined by whether the
proposed invention has at least one new feature over similar
technology. Inventive step is assessed on whether the proposed
invention is an obvious modification of known technology, even if
Changes to patent laws
The need to conduct thorough prior art searching will become
more critical in the future because of changes to patent laws. The
changes will take effect once the new Patents Bill is enacted in
early-mid 2011. The Bill will make significant changes designed to
provide greater conformity with aspects of the Australian and
United Kingdom patents legislation.
The standard of "local novelty" in determining what
is relevant prior art for assessing patentability will be replaced
with an "absolute novelty" standard
The novelty threshold will be widened to what is known as
worldwide prior to the priority date
The examination of a patent application will include a
consideration of inventive step and usefulness, as well as novelty.
This higher inventive step threshold will make examination more
rigorous and therefore place greater emphasis on carrying out due
diligence prior to filing a patent application
Preliminary searching conducted in-house, using one or more of
the online patent office databases is strongly recommended. This
should be done before committing to more exhaustive commercial
searching conducted by a patent attorney.
Understanding the prior art may prevent you from conducting
redundant R&D and/or proceeding with patent filings where
protection will not be obtained, or the protection obtained is weak
or unenforceable. It would therefore be of little commercial
In addition, the searching may reveal any likely infringement
issues in relation to existing patents by use of the technology in
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
James and Wells is the 2009 New Zealand Law Awards winner of
the Intellectual Property Law Award for excellence in client
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