Patent harmonization down under

Published on: 16 January 2015
by Mr. Geordie Oldfield, Patent & Trademark Attorney at Dennemeyer & Associates, Australia

A revision of the patent prosecution system in New Zealand and Australia following recent changes in the two countries to modernize and harmonize their IP laws

Patent laws in both Australia and New Zealand have undergone significant changes in recent years. The New Zealand changes are the most significant, with their 60 year-old Act completely replaced. All the regulatory detail has now emerged and attorneys, examiners, hearing officers and Commissioners on both sides of the Tasman Sea are gaining experience under the new regimes. It is therefore timely to briefly reflect on the main changes and their effect on patent prosecution down under.

In general terms, most of the changes aim to modernize and harmonize Australian and New Zealand laws with those of Europe and the United States.

The “Raising the Bar” changes to the Australian Patents Act 1990 and associated regulations generally apply to patent applications in respect of which examination was requested from 15 April 2013. Not surprisingly, the pending changes caused a very significant spike in the number of requests for examination received by the Office in the lead up to this date.

The New Zealand Patents Act 2014 and associated regulations apply to applications filed (or Patent Cooperation Treaty national phases entered) from 13 September 2014. Applications under the new Act are easily identifiable from their application numbers, which start from 700,000. Somewhat unexpectedly, divisional applications filed from old Act applications can be antedated to proceed under the old Act.

Entitlement: Getting entitlement correct remains as important as ever, in both countries. The formality requirements have, however, changed. In Australia, the requirement to file a notice of entitlement has been removed and replaced with a generic entitlement statement that the applicant must confirm when requesting examination. Conversely, the new Act in New Zealand expressly mandates a notice stating the grounds on which the applicant is entitled to be granted the patent, before acceptance.

Subject matter: In both Australia and New Zealand, the invention must be a “manner of manufacture”. Specific subject matter exclusions apply, such as human being and biological processes for their generation. In Australia, argument continues over the boundaries of the manner of manufacture requirement. At the time of writing, practitioners are digesting a recent decision on computer-implemented inventions, and the High Court will consider an application for special leave to appeal from a significant Full Federal Court decision on gene patenting.

In New Zealand, computer software, as such, is no longer patentable. The exclusion is intended to align New Zealand with the United Kingdom and the European Patent Convention.

To read the full article, please view the PDF attached (as published in The Patent Lawyer magazine).