New Zealand to refuse ‘obvious’ patents at examination

Saturday 12th October 2013

New Zealand’s Patents Act 2013 received Royal assent last month, and will replace the present 60-year-old legislation as its provisions commence over the next year.  The new Act will align the country with current standards in patent law. 

One major effect is that the Intellectual Property Office of New Zealand (IPONZ) will begin to examine patent applications for obviousness (also known as a lack of inventive step). 

Currently, IPONZ considers whether an invention is novel (but not whether it is obvious), which means that an application will only be refused if a prior art document provides “clear and unmistakeable directions” to perform that invention.[1]  A patent can only be invalidated on the grounds of obviousness once the application has been accepted and published (i.e. through opposition or revocation proceedings). 

In principle, the introduction of obviousness criteria at the examination stage in New Zealand will ensure that only genuine inventions are patented and that protection is not given to trivial or minor alterations to known products and processes. 

Obviousness is determined using a test originally developed by the UK Court of Appeal in Windsurfing International,[2] and as applied by New Zealand courts in Ancare[3] and Peterson[4].  The test asks what differences there are between the invention and what is already disclosed in any prior art document, and whether the new invention is obvious over that prior art document when considered in light of the common general knowledge held by a person skilled in the art.

In practice, applying this test is a notoriously difficult exercise.  Just where the line is drawn between an invention worthy of patent protection and an invention being denied patent protection because it is obvious is considered the “largest single cause of uncertainty about the validity of patents”.[5]  

Coinciding with examination for obviousness is the introduction of an increase in the requisite burden of proof.  At the moment, the standard for acceptance of a patent application is that the benefit of any doubt as to the application’s validity is given to the applicant.[6]  Under the new Act, an application must be patentable on the “balance of probabilities”.[7] 

This combination of changes raises the overall threshold for obtaining an accepted patent application in New Zealand, and is more in line with international requirements. 

Finally, examining a New Zealand patent application is likely to take more time than the present examination timeframes allow.  IPONZ currently prepares examination reports for newly filed (non-PCT) applications within 15 working days and endeavours to respond to submissions made by an applicant during prosecution in the same amount of time.

However, as more time will be required to examine each application, processing timeframes are likely to extend.  The higher examination standard will also certainly be a key driver in any increases in official fees accompanying the shift to the new regime.

[1]The General Tire & Rubber Company v The Firestone Tire and Rubber Company Limited and Others [1972] RPC 457, 485.
[2]Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd [1985] RPC 59.
[3]Ancare New Zealand Ltd v Cyanamid of NZ Ltd [2000] 3 NZLR 299 (CA).
[4]Lucas v Peterson Portable Sawing Systems Ltd [2006] 3 NZLR 721 (SC).
[5] W R Cornish Intellectual Property (3 ed, Sweet & Maxwell, 1996) 163.
[6]Swift’s Application [1962] RPC 37.
[7] Patents Act 2013 s74(1).

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