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Protecting your inventions: a summary of how NZ’s patent law has changed

Once upon a time, about the time when Hillary first climbed Everest, a new Patents Act was adopted. The Act included anachronisms harking back many centuries to when adventurers were encouraged to steal innovation from overseas in return for a limited monopoly from the Crown. This was thought appropriate for a wee country situated on the edge of the world.

By Kate Wilson, James & Wells' Managing Partner and IP strategist

Time moved on, technology evolved at a rapidly increasing pace, and so did patent legislation around the world – changing to accommodate patent applications for such wondrous technologies as software, genetic modification, new micro-organisms, medical advances, electronic media and the cloud.

So what effect will any changes have on Kiwi businesses?

First it should be appreciated that many Kiwi businesses are exporters and therefore their patent specifications are drafted by New Zealand patent attorneys to international patent law standards. Thus with the new Act nicely aligned with many of our major trading partners, these businesses will not be affected as much by the changes.

Like most of our international peers, to be patented, inventions must be:

  1. new having regard to what’s out there in the wide world, and
  2. inventive. What is inventive can be subjective, although there is good NZ case law on the topic.

This is great as it means NZ patents will now be better recognised on the world stage.

One controversial change is limiting the patentability of software to embedded uses or control applications.

Creative patent drafting and arguments will be required to try and get the protection needed. For more information see my article 'No, NZ has not abolished software patents (external link) '.

Overall, the new Act has changes which compel patentees to take greater control of their applications/patents and to have better internal/external systems to manage them. While this may cost more initially in time and money, it is not necessarily a bad thing. Patent portfolios are most valuable when regularly reviewed against business strategy.

For example, examination now has to be requested (similar to Australia), rather than just wait for an examination report to issue. Thus, applications only proceed through the system if they are actively wanted. In line with many other countries, patent specifications will be published 18 months after being filed. This can enable NZ businesses to see earlier if their activities are likely to infringe someone else’s rights.

Damages for patent infringement may also start earlier.

However, early publication does require careful management if a business wants to buy time by withdrawing and refiling for patent rights.

At the least exciting end of the scale, but still financially important, is the timing of payment of renewal fees.

Previously the fees were paid 4, 7, 10 and 13 years after filing the complete specification. Now they are to be paid annually. Again, this requires good systems to avoid inadvertent lapsing of rights. But having to scrutinise what you are doing with your rights on an annual basis can be healthy.

Further, on the plus side, there is greater certainty to ‘potential infringers’ as to whether someone would be prepared to enforce their rights. As in, patentees have the option to lapse their rights on an annual basis.

There are many other changes in the new Patents Act which could affect New Zealand businesses. Fortunately the patent attorney industry have been thinking and writing about these changes (external link) for some time.

So use this time as a prompt to re-connect with the guardian of your most valuable assets.

Plus, rejoice that we’ve finally caught up with the rest of the world!

About this article

This article is by one of business.govt.nz's private sector partners — we work with subject matter experts in the public and private sectors to get best practice advice for small businesses.

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