New Zealand: New Zealand's Patents Act 2013 – Local novelty is out (but was it ever really in?)

Last Updated: 6 September 2016
Article by Gareth Dixon

The more things change, the more they stay the same. New Zealand's new Patents Act 2013 commenced on 13 September 2014 – and with it, the much-heralded shift from the local novelty standard employed under the Patents Act 1953 to absolute, or worldwide novelty. In this article, we consider what effect this shift is likely to have had in real terms. That is, whether, during the examination of a New Zealand patent application, a patentee's novelty assessment when considered under the provisions of the new (2013) legislation is likely to be significantly different from that provided under the 1953 Act.


New Zealand's new Patents Act 2013 ("the new Act") took effect from 13 September 2014. It replaced, for non-divisional applications filed after the date of commencement, the long-since-obsolete Patents Act 1953 ("the old Act"). The new Act has been heralded not only as the dawn of a new era for New Zealand patents, but also a general strengthening of New Zealand's various patentability criteria.

In this article, we focus specifically on the novelty standard – world-over, generally considered the principal criterion for patentability. We pose the question – by necessity somewhat academically, whether absolute (or worldwide) novelty, as prescribed under the new Act will be construed any differently to local novelty as it existed under the old Act.

What is "local novelty", conceptually?

New Zealand is one of the few developed countries that retained (at least for applications filed prior to the commencement of the new Act) a local novelty provision in its patents legislation. When assessing the patentability of an application, local novelty disregards any publication or use outside that particular jurisdiction. This, in theory, allowed patent applicants to file in New Zealand, validly, after overseas publication, use or sale.

One of the headline features in the move from the old Act to the new Act was that New Zealand patent law was shifting to an absolute novelty standard. Of course, all this ever stood to do was to conform New Zealand's novelty standard to that of her major trading partners. It was a catch-up rather than a leap ahead. Semantics aside, it is worth considering what difference this shift is likely to have made in real terms.

Local novelty is such an antiquated notion that most countries dispensed with it long ago. Indeed, the outgoing Patents Act 1953 is based upon the UK's Patents Act 1949 (which was itself replaced nearly four decades ago). In such times, in order to import a new technology, one literally had to board a ship, sail a considerable distance, collect the new technology, sail home, offload it – and then try to sell it. Local novelty "worked" in such an age because it provided an incentive to bring technology, be it new or known elsewhere, to a developing country such as New Zealand was at the time. Not only this, but given New Zealand's geographic isolation, there was also a sound argument that anyone prepared to go to these lengths in order to import a new technology may be deserving of a monopoly right upon it.

Is the concept still relevant?

It goes without saying that the world has changed somewhat over the past six decades. Nowadays, developments in telecommunications – and to a lesser extent planes, trains and automobiles render local novelty largely conceptual and largely impossible to achieve in practice. To all intents and purposes, local novelty's death knell was the dawn of the internet age; any such notion is largely untenable where a new technology can be transmitted across the globe via the internet in a matter of milliseconds.

The issue of local novelty versus the internet has been considered at Patent Office level. At issue before the Intellectual Property Office of New Zealand (IPONZ) in Molecular Plant Breeding's Application [P25/2005] was the accession date of an internet-based document that was considered relevant to the novelty of the application, i.e., whether a website accessible through the internet constitutes "local publication" until such time as it exists physically (e.g., is printed) in New Zealand. In this decision, the Delegate accepted that a document available via the internet indeed met the statutory definition of "published":

" is no longer necessary for a hard copy of a document to be available to comply with the requirements of section 2. The internet, by 1999, was widely available to New Zealanders and, in fact, a search of the "web", by that date, would have been considered virtually essential for any scientist engaged in a survey of literature relevant to his field. There is no doubt in my mind that in the present case the document concerned had been "made available to the public". It could be inspected "as of right" by the public at any place where a computer with access to the internet was available, free of charge..".

Whilst it has not been contested formally, this finding has nonetheless been widely assumed in the interim. A litigant contesting an old Act case and staking their claim on reversing this finding would require a paradigm shift in the accepted meaning of the term.

Accordingly, "local novelty by publication" was effectively rendered extinct under New Zealand practice as far back as 1999. This left only "local novelty by use", which was always rather limited, almost to the point of irrelevance. Therefore, to all intents and purposes, New Zealand patent law, as prescribed under the old Act, already appeared to operate on a de facto absolute novelty basis.

Will New Zealand patents be more difficult to obtain under the Patents Act 2013?

As mentioned, popular opinion is that the Patents Act 2013 has raised the bar on New Zealand patents, making them more difficult to obtain and possibly more limited in scope. If true, this could be something of a double-edged sword. On the one hand, those wishing to innovate in New Zealand are less likely to be encumbered by thickets of overly-broad, possibly invalid patents. The economic rationale for the Government wanting to achieve this position is clear – as a small economy, New Zealand should, it is argued, do all it can to encourage foreign innovation and investment. However, on the other hand, the fear is that a stricter patents regime may in turn make New Zealand less attractive to patent applicants on a cost-versus-scope-versus-population basis.

As the principal criterion for patentability, we can reasonably expect absolute novelty under the new Act to be, at most, very negligibly different from that as assessed under the local novelty provisions of the old Act (at least, post-internet age). If anything is really going to make New Zealand patents more difficult to obtain, it is most likely to be extending examination to include an assessment of inventive step; under the old Act, inventive step was not examined in IPONZ (although it was always a ground for both opposition and revocation) and the raising of the "support" requirement within the written description.

As such, if New Zealand patents are indeed found more difficult to obtain under the provisions of the new Act – and we've now had a two year sample suggesting that this is indeed the case, then this is most likely attributable to the incoming inventive step and support requirements, rather than the shift from local to absolute novelty.

Conflicting applications – the shift from prior claiming to whole of contents

It is worth mentioning at this point that another novelty-based provision of the new Act is the shift from "prior claiming" (i.e., double patenting), as prescribed under section 14 of the old Act to a whole of contents novelty approach for conflicting applications. If anything, it is this shift that is likely to tangibly affect the novelty-based assessment of a new Act application as opposed to that of an old Act case. Whereas section 14 of the old Act required not only the same claim, but also, for the prior application to have been filed in New Zealand, the new Act requires only that the claimed invention is disclosed in an earlier application, filed anywhere. Although this new provision broadens the prohibition on conflicting applications, this needs to be considered against the somewhat rare occasions that any such provision will be invoked; our Australian experience based on a similar provision teaches us this much.

With the above points in mind, we remain to be convinced that a New Zealand patent will become significantly harder to obtain and/or appreciably narrower in scope under the novelty provisions as prescribed by the new Act.

Local novelty and third party challenges

There is, perhaps, one final point to note in relation to the shift from local to absolute novelty. When contesting new Act cases at an opposition or revocation/court level, the opponent will no longer need to go through the rather laborious task of proving the New Zealand accession date of foreign documents (e.g., the issue at hand in Molecular Plant Breeding, referred to above). For example – selecting a prior art patent document completely at random, United States patent number 5,582,869 has a publication date of 10 December 1996. However, upon interrogating the relevant databases, its New Zealand accession date was not until 28 January 1997. Although this is a relatively small difference (around six weeks), one will appreciate that this can be potentially significant (especially for closely-filed applications in a highly competitive field) – and, as mentioned, is somewhat labour and cost-intensive to have to prove.


As we have mentioned in previous articles, patent applicants could avail of the old Act patentability criteria by filing their complete application in New Zealand prior to the commencement of the new laws. This would have ensured that such an application was subject to the old Act throughout its lifecycle – and, as mentioned also, renders the above article somewhat academic.

However, in cases where the 13 September 2014 deadline was missed – be it inadvertently, strategically or of necessity, we believe that New Zealand patents will continue to provide excellent value for money, with the new Act serving to increase certainty, both for a patentee and for their competitors.

Hopefully also, increased certainty begets increased attractiveness. Local novelty – although generally recognised as a lower novelty standard was also somewhat idiosyncratic. Removing a layer of idiosyncrasy can only be a good thing as far as the attractiveness of New Zealand's patent system is concerned.

Shelston IP's New Zealand practice

All of Shelston IP's Australian-registered patent attorneys are also dual-registered to practise in New Zealand. Our New Zealand patent practice thereby leverages significantly from our Australian operation – and our closeness in respect of law, economics, culture and physical distance means that there are compelling drivers for clients to avail of Shelston IP for their Australasian IP matters.

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.

Shelston IP ranked one of Australia's leading Intellectual Property firms in 2015.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions