Member of Parliament not patentable in New Zealand under new Patents Act

Wednesday 4th September 2013
Article written by: Chris Way

New Zealand’s patent legislation was updated last week in the most sweeping changes for 60 years.

The Patents Act 2013 has been more than 10 years in the making and has been on the Parliamentary Order Paper for five years.

The Act had overwhelming cross party support and passed the third reading with a vote of 117 for and only 4 against.

A last minute amendment tabled by the Green Party that sought to exclude patents for organisms and traits in organisms was voted down. Baldwins’ client LanzaTech was mentioned during the debate as an example of why it is essential that New Zealand companies retain the ability to patent novel microorganisms.

The debate provided some humorous moments particularly when Chris Hipkins suggested that “We should patent Mr Henare and then make sure that there is a clear restriction that no more are to be produced.”

This was quickly followed up by Hon Trevor Mallard who noted “Tau Henare is not patentable, because to be patentable you have got to be useful.”

Trevor Mallard’s comment does highlight one of the important changes the Bill introduces. To be patentable, an invention must have a specific, credible and substantial utility.

Additional key changes

In addition to the utility requirement, the Act seeks to increase the threshold for granting a patent in New Zealand by introducing examination for inventive step which does not occur under the current law.  The Act also requires that inventions are novel in light of any information made publically available anywhere in the world rather than only information available in New Zealand. Patent applicants will also have to meet the higher threshold of showing that the claimed invention is patentable on the “balance of probabilities”, rather than the current requirement of being given the “benefit of the doubt” as to patentability.

A number of specific exclusions to patentability have also been introduced into the legislation. Plant varieties, human beings and biological processes for the generation of human beings have been specifically excluded. Also included in the new law are exclusions from patentability for methods of treatment of human beings by surgery or therapy, and diagnostic methods practised on human beings. These exclusions reflect current practice in New Zealand.

One of the more controversial aspects of the Act excludes computer programs “as such” from patentability. This amendment brings New Zealand into line with the position in Europe. While this is not a ban of software related technology, it will likely mean that computer programs are not patentable, but that embedded computer programs that improve or change the way a machine works are patentable.

What the changes mean

The changes bring New Zealand into line with most overseas jurisdictions and mean that examination by the Intellectual Property Office of New Zealand will become more rigorous.  It will become harder to obtain a granted patent in New Zealand and this should result in patent monopolies only being granted for genuine innovations. 

The changes also mean that granted patents are more likely to be valid and enforceable which will provide increased business certainty in relation to patent rights for patent applicants and competitors. 

What happens next?

Some small parts of the Act are already in force. These relate to definitions and introductory matters, Commissioners of Patents, IPONZ and the Maori Advisory Committee.

The remainder of the Act will come into force by 13 September 2014 at the latest.  Regulations need to be prepared and approved. It is possible that parts of the Act may come into force at different times during that period, once regulations are ready.  At present officials consider that the regulations will take about nine months to prepare.

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