Australia: Further Progress Toward New Zealand's New Patent Act

Last Updated: 8 November 2010
Article by Gareth Dixon and Charles Tansey

This article reports continuing progress toward New Zealand's new Patents Act.

Following its introduction before the House of Representatives on 9 July 2008, the Patents Bill 2008 then survived a general election in November 2008, before having its first Parliamentary reading on 5 May 2009. The Bill was approved by a clear majority of the House – and then in line with New Zealand's legislative process, opened to public submissions before being passed to a Parliamentary Select Committee for further consideration.

The Select Committee has now reported back to Parliament – and has provided two "curveballs" with respect to the expected course of the new legislation. Firstly, in terms of excluded subject matter, the proposal to allow patents to computer software (subject to a "technical effect" criterion) has been reversed. It would appear as if public submissions on issues pertaining to open source and embedded software, in particular, have swayed the Select Committee against recommending that computer software is proper subject matter for letters patent. The other especially controversial exclusion, to methods of medical treatment of human beings, is retained.

The second major deviation has been that "Part 5" of the Patents Bill 2008, relating to the regulation of the patent attorney profession, has been divided out into separate proposed legislation, the Patent Attorneys Bill 2010. The reasons for this division were twofold: firstly, because the Patents Bill 2008 did not provide for a unitary trans-Tasman framework for regulating patent attorneys (such a framework was signalled by the Australian and New Zealand governments in August 2009); and secondly, that establishing such a framework would slow the passage of the remainder of the Bill unnecessarily.

Other changes recommended by the Select Committee include:

1. Abolishing the proposed IDS requirements which would have otherwise obliged Applicants to disclose the results of any documentary search conducted in any foreign Patent Office in respect of a corresponding application. The obligation was directly analogous with the recently repealed Australian law in this respect.

2. Retaining pre-grant Opposition. This was to have been replaced with both pre- and post-grant re-examination.

The remainder of the Select Committee Report has approved, at least in substance, the remainder of the proposed legislative changes. This is not at all surprising given that most changes proposed in the Bill reflected public opinion, global standards and were clearly in accordance with New Zealand's best interests.

As summarised below, the Bill is essentially a hybrid of the current Australian and United Kingdom legislation and is essentially as per its initial exposure draft of December 2004, with the significant addition of a statutory Experimental Use Exception to patent infringement. This had been the subject of a separate government review, but given the interim period, was consumed within the broader reforms.

A brief synopsis of some of the more significant upcoming changes includes:

1. Replacement of the current local novelty standard with absolute novelty.

2. Examination will be extended to now include an evaluation of inventive step.

3. "Whole of contents" objections based unpublished applications having an earlier priority date may be made in respect of both novelty and (unlike Australia) inventive step.

4. A claimed invention must be a "manner of manufacture", within the meaning of s.6 of the Statute of Monopolies, and "useful", insofar as it must have "specific, credible, and substantial utility".

5. A patent may be refused if its "commercial exploitation" (possibly narrower than mere "use") is contrary to public policy or morality.

6. Inventions derived from Māori traditional knowledge, or whose exploitation would be considered contrary to Māori values are denied protection.

7. Methods of diagnosis will be statutorily excluded from patentability, irrespective of whether such method is part of a surgical procedure. Other specific exclusions include human beings, biological processes for their generation, therapeutic, surgical and diagnostic methods for their treatment, and plant varieties. No specific exclusion is provided for either business methods or software.

8. An application will be published 18 months from the priority date and damages are accruable for infringement from this point. Publication of an international PCT application is to be treated as a local publication.

9. Infringement provisions will be expanded to include contributory infringement.

10. Between publication and grant, a third party may lodge observations as to novelty and/or inventive step.

11. The grounds of revocation are broadened due to the expansion of the prior art base, as outlined above. Filing for revocation before the Commissioner may become a cost-effective means for challenging a patent's validity.

12. The continuing absence of an extension of patent term for pharmaceuticals (itself, the subject of a separate review), in relation to the proposed retention of "springboarding", and the launch of the Trans-Tasman Therapeutic Products Agency.

13. Clarification of the employee/employer relationship and derivation of title.

14. The continued absence of a statutory basis upon which an employee may seek compensation for a commercially successful invention.

15. Benefit of the doubt to be replaced by a balance of probabilities approach when deciding whether to grant a patent.

16. Introduction of an Experimental Use Exception: "It is not an infringement to do an act for experimental purposes relating to the subject matter of an invention (which includes determining how the invention works, its scope, or the validity of the claims, or seeking an improvement of the invention) if that act does not unreasonably conflict with normal exploitation of the invention".

17. The disclosure requirements for a micro-organism can be met by depositing a specimen in a recognised depositary.

18. Examiners' Reports are placed open for public inspection once an application has been accepted.

19. Grace period of 12 months where the disclosure was without the Inventor's consent.

20. Removing the current requirement for New Zealand Inventors to seek the Commissioner's permission to file a foreign application if they have not already filed a first/priority application in New Zealand.

21. The new Act will apply to all applications with a complete specification filing date on or after the date of commencement; the Patents Act 1953 will continue to apply to all applications with a complete specification filing date before the date of commencement.

22. Patents granted under the Patents Act 1953 are continued under the Bill, with their existing key dates, term, and grounds for revocation. This is necessary because with the stricter criteria for granting a patent, which means that some patents granted under the current Act would be invalid under the new Act.

We now estimate that the Bill, incorporating at most, only relatively minor changes, will pass into New Zealand law around early 2011. The complementary Patents Regulations should follow shortly thereafter. The proposed date of commencement, however, is 31 December 2012; this will allow the Regulations to give effect to the provisions of the new Act.

Each of Shelston IP's Australian Patent Attorneys is also dual-registered in New Zealand where we practice extensively. We retain an active interest in seeing New Zealand's present, outdated patents legislation modernised appropriately, to the expected benefit of all stakeholders.

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.

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.

Charles Tansey
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”

Mondaq Advice Centre (MACs)
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
Check to state you have read and
agree to our Terms and Conditions

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.

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 by clicking here .

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.


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.