New Zealand is one of the few developed countries that retains 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, allows patent applicants to file in
New Zealand after overseas publication, use, sale, or even the
expiry of the 12-month Paris Convention period.
Although the New Zealand Patents Act 1953 is soon to be
replaced - and although the Patents Bill 2008 proposes a
shift to "absolute novelty" to conform with most of the
rest of the world, it is worth considering what difference this
shift is likely to make in "real" terms.
Local novelty is such an antiquated notion that most countries
dispensed with it long ago. Indeed, the Patents Act 1953
is based upon the UK's Patents Act 1949, in which
days, to import a new technology, one literally had to jump on a
ship, sail the seven seas and then offload it. Local novelty
"worked" in such an age because it provided an incentive
to bring technology, be it new or known, to a developing country
such as New Zealand was.
Nowadays, developments in telecommunications, and to a lesser
extent planes, trains and automobiles render local novelty largely
conceptual and somewhat difficult to achieve in practice. To all
intents and purposes, local novelty's death knell was the dawn
of the internet age; such a notion is largely untenable where a new
technology can be transmitted across the globe in milliseconds.
Establishing the accession date of internet-based material without
adducing evidence is often impossible. Whether a website accessible
through the internet constitutes "local publication"
until such time as it exists physically (e.g. is printed in New
Zealand) was addressed in Molecular Plant Breeding's
Application [P25/2005]. In this decision, the Assistant
Commissioner accepted for the first time that a document available
via the internet met the statutory definition of
"published". Whilst this has not been contested formally,
this finding has nonetheless been widely assumed in the
Accordingly, "local novelty by publication" is now
largely extinct under New Zealand practice. This leaves only
"local novelty by use", which is rather limited, even to
the point of irrelevance. Therefore, to all intents and purposes,
New Zealand patent law already appears to operate on a de
facto "absolute novelty" basis.
Popular opinion is that the new Patents Act will
"raise the bar" on New Zealand patents, making them
harder to obtain, more limited in scope and thereby less
commercially viable. However, the way the Patents Bill is
drafted, Examination will be extended to include an assessment of
inventive step, with a patent allowed according to the
"balance of probabilities". In reality therefore, it is
unlikely that many applications will be excluded during Examination
on the basis of inventive step alone. Moreover, inventive step has
always been a ground for Opposition and Revocation, meaning that if
anything, the balance of probabilities is likely to be skewed in
favour of the Applicant. Other proposed changes merely codify the
present judicial exclusions for certain subject matter.
With the above points in mind, we would temper any impression
that a New Zealand patent will become significantly harder to
obtain under the new legislation. Local novelty exists in name only
and as the "main" criterion for patentability, we do not
believe that the scope of New Zealand patents granted under the
proposed new Act will be significantly less than those granted
under the present legislation. New Zealand patents will continue to
provide excellent value for money, with the new legislation serving
to increase certainty, both for the patentee and for its
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.
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