Continuing Progress Toward New Zealand's New Patents Act

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 then survived a general

election in November before having its first Parliamentary reading

on 5 May 2009.

As summarised below, the Bill is essentially a hybrid

of the current Australian and United Kingdom legislation. Most

proposed changes reflect public opinion and global standards

– and will likely be embraced, whereas others may be more

controversial and may slow passage of the Bill through the


The Bill is essentially as per its initial exposure

draft, 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, now

appears to have been consumed within the broader reforms.

A brief synopsis of some of the salient features of the

Bill is summarised as follows:

Replacement of the current local novelty standard with absolute


Examination will be extended to now include an evaluation of

inventive step.

"Whole of contents" objections based unpublished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.

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".

A patent may be refused if its "commercial

exploitation" (possibly narrower than mere "use") is

contrary to public policy or morality.

Inventions derived from Māori traditional knowledge,

or whose exploitation would be considered contrary to

Māori values are denied protection.

New IDS requirements will oblige Applicants to disclose the

results of any documentary search conducted in any foreign Patent

Office in respect of a corresponding application. Sanction for

failure to comply is forfeiture of the right to perform post-grant

amendment to overcome any prior art so uncovered. The obligation

applies until grant and is directly analogous with the recently

repealed Australian law in this respect.

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...

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