Recent articles in this series have reported on the passage of
New Zealand's new Patents Act 2013 – and some of
its content. We did, however, note that the final step in the
legislative process was for the new Act to receive Royal Assent;
this duly happened on 13 September 2013.
The net result is that the Patents Act 2013 will now
enter into force no later than Monday, 14 September 2014.
The new Act can be considered an opportunity and a
threat in equal measure – it requires patent applicants to
make some decisions. According to the transitional provisions, any
complete application filed in New Zealand (e.g., as a PCT national
phase entry) prior to commencement of the new legislation will be
examined under the "old Act" provisions and will
be subject to the 1953 Act throughout its lifecycle.
Conversely, a patent application filed in New Zealand after
commencement of the new Act will be subject to the
provisions of the 2013 Act.
Therefore, those with patent applications "in the
pipeline" – and for which New Zealand is a target market
may wish to consider bringing forward their New Zealand filings so
as to ensure that their application is governed by the present
(softer) criteria. Of course, patent applicants now have the best
part of a year before any "early" filings would need to
be effected. In the interim, it may be reassuring to know that: 1)
we can file unpublished PCT applications in New Zealand; and 2) by
taking advantage of the existing processes we can ensure that any
such applications will not be published until after the PCT (or
foreign Patent Office) publication is first made. Aside from
bringing costs forward, we believe there should be no negative
consequences in filing early in New Zealand so as to take advantage
of the current legislation.
In conclusion, the passing of the new Act can be viewed
as something of a double-edged sword. On the one hand, it is
reassuring to have some certainty as to the provisions of New
Zealand patent law (even if the ongoing TPP negotiations may dilute
this impression somewhat). On the other hand, as with any changes,
there will be winners and losers – and in the present
instance, it appears that software patentees stand to lose more
than most - at least until such time as the scope of the "as
such" exclusion is established.
We will, of course, keep readers promptly informed of further
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 has been awarded the MIP Global Award for
Australian IP Firm of the Year 2013.
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