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Preparing for New Zealand’s New Patent Laws

Published on: 02 July 2014
by Mr. Geordie Oldfield, Patent & Trademark Attorney at Dennemeyer & Associates, Australia

New Zealand has new patent laws, enacted under the Patents Act 2013. Most stakeholders have welcomed this new Act as, in many respects, it brings the New Zealand patent system into line with those of its major trading partners. From a patent applicant’s perspective, however, most of the changes will make it more difficult to obtain and defend a granted patent.

There remains a limited window of time within which patent applicants have the ability to file applications in respect of which the old Patents Act 1953 will continue to apply.

Changes

We tabulate below the main differences between the Acts. As well as making the patenting requirements more stringent, the new Act introduces some important administrative changes. For example, applicants will now be required to file a formal request for examination (as in Australia). Although the New Zealand regulations setting out some of the details of the changes have yet to be published in final form, it is likely that applicants will be required to request examination by the earliest of:

  • two months after the Patent Office issues a Direction to Request Examination
  • five years after the filing date of the complete application (which, for national phase entry applications is the international filing date).

Changes to the annuities provisions are also significant and include the introduction of pre-grant “maintenance fees” (again, as in Australia). We will cover annuities in more detail in a separate publication.

Transition

In general terms, the new Act will apply to:

  • national phase entry applications of international (PCT) applications and other complete applications, filed from 13 September 2014
  • patents granted from the above applications
  • patents granted under the old Act, with the exception that the revocation provisions of the old Act will continue to apply.

The old Act will continue to apply to pending complete applications:

  • validly filed before 13 September 2014
  • filed from 13 September 2014 but divided from an application validly filed before that date.

Preparing for the New Act

Clients with patent interests in New Zealand should therefore consider, before 13 September 2014:

  • entering the national phase of any PCT applications (before the 31 month deadline, if necessary) and filing any other complete applications
  • filing any divisional applications from any existing complete applications.

All attorneys in Dennemeyer & Associate’s Australian office are registered to practice in New Zealand. Please contact our office at info-au@dennemeyer-law.com or +613 8658 6090 for tailored advice on maximising your New Zealand patent position through this time of significant change.

+613 8658 6090