Patents Amendment Bill

Patents Amendment Bill EXPLANATORY NOTE GENERAL POLICY STATEMENT The key purpose of this Bill is to amend the Patents Act 2013 (the 2013 Act ) to apply stricter criteria for the grant of divisional applications filed under the Patents Act 1953 (the 1953 Act ). Currently, applications that were filed before the 2013 Act came into force, and any subsequent applications relating to them (known as divisional applications), fall to be considered under the 1953 Act. This is an issue because the 1953 Act criteria for examining patent applications is of a lower standard than the 2013 Act and can result in unmeritorious inventions being patented. Third parties (such as other businesses) can later oppose the grant of these patents through a review process or apply to have the patents revoked. However, this is costly and time-consuming for businesses, with no guarantee of success. The Bill will adjust the 2013 Act so that 1953 Act applications will be examined in broadly the same way as 2013 Act applications. This will avoid the likelihood of a third party having to oppose the grant of a patent. This will only apply to 1953 Act divisional applications that are filed after the Bill comes into force. The Bill achieves this by providing that these 1953 Act divisional applications are only accepted for grant if the Commissioner of Patents is satisfied on the balance of probabilities that the invention claimed in the application meets the novelty, inventive step, and support requirements of the 2013 Act. The above criteria will also apply to any opposition, revocation, and re-examination proceedings concerning these 1953 Act divisional applications. DEPARTMENTAL DISCLOSURE STATEMENT The Ministry of Business, Innovation, and Employment is required to prepare a disclosure statement to assist with the scrutiny of this Bill. The disclosure statement provides access to information about the policy development of the Bill and identifies any significant or unusual legislative features of the Bill. A copy of the statement can be found at http://legislation.govt.nz/disclosure.aspx?type=bill&subtype=government&year=2025&no=154 REGULATORY IMPACT STATEMENT The Ministry of Business, Innovation, and Employment produced a regulatory impact statement on 14 February 2020 to help inform the main policy decisions taken by the Government relating to the contents of this Bill. A copy of this regulatory impact statement can be found at— https://www.mbie.govt.nz/dmsdocument/30694-impact-summary-intellectual-property-laws-amendment-bill https://www.regulation.govt.nz/our-work/regulatory-impact-statements/ CLAUSE BY CLAUSE ANALYSIS Clause 1 states the Title of the Bill. Clause 2 states that the Bill comes into force on the day after Royal assent. Clause 3 states that the Bill amends the 2013 Act. The amendments relate to transitional provisions for divisional applications. Under both the 1953 Act and the 2013 Act, at any time before a patent application is accepted or refused, the applicant can create a divisional application. This is done by dividing the original application into 1 or more further applications seeking patent protection for any invention described in the original application. The original application is referred to as the parent application. Each subsequent application is known as a divisional application. The transitional provisions under the 2013 Act allow a divisional application under the 1953 Act to be kept pending for up to 20 years after the 2013 Act entered into force. The criteria for granting a patent under the 1953 Act are less strict than the criteria required by the 2013 Act. This means that patents may be granted under the 1953 Act for inventions that are merely obvious variations on what already exists. AMENDMENTS TO EXISTING PROVISIONS Clause 4 amends section 146, which sets out a defence to a patent infringement claim, relating to prior use of the invention. Section 146 only applies to a patent if the application was made on or after 13 September 2014 and it was not a divisional application treated as made under the 1953 Act. The amendment adds a reference to new section 258A , which also describes a type of divisional application treated as made under the 1953 Act. The amendment means that section 146 will continue to not apply to any patent resulting from a divisional application treated as made under the 1953 Act. Clause 5 amends section 254, which contains the transitional provisions for patents granted under the 1953 Act. The amendments enable some grounds for re-examination or revocation of a patent granted under the 2013 Act to also apply to a patent granted under the 1953 Act in respect of a divisional application, if that application is filed on or after the date on which this Bill comes into force and is given a date before 13 September 2014. Those grounds align with the new requirements in new section 258A that relate, in respect of such a divisional application, to the acceptance of the complete specification and the grounds on which a person may oppose the grant of a patent. Clause 6 amends section 258, which contains the transitional provisions for divisional applications made on or after 13 September 2014 but dated earlier. Section 258 provides that these divisional applications are treated as patent applications made under the 1953 Act and section 255 applies to them. The amendments restrict this treatment to divisional applications that are filed before the date on which this Bill comes into force. New section 258A deals with the treatment of divisional applications filed on or after that date. NEW TRANSITIONAL PROVISIONS FOR DIVISIONAL APPLICATIONS FILED AFTER COMMENCEMENT Clause 7 inserts new section 258A , which contains new transitional provisions for certain divisional applications made in respect of a parent application to which the 1953 Act applies. The new transitional provisions apply to divisional applications filed on or after the date on which this Bill comes into force but dated before 13 September 2014. These divisional applications continue to be treated as patent applications made under the 1953 Act with some exceptions related to the acceptance of a complete specification, the grounds for opposing the grant of a patent, and the procedure the Commissioner must follow if a grant is opposed. The criteria for acceptance of a complete specification and the grounds for opposing the grant of a patent will include whether— the invention, so far as claimed in a claim, is novel; and the invention, so far as claimed in a claim, involves an inventive step; and any claim of the complete specification is supported by the matter disclosed in the complete specification. If a person opposes the grant of a patent, the procedure will be that the Commissioner— must give the applicant and opponent an opportunity to be heard; and must consider whether any grounds relied on by the opponent are established on the balance of probabilities; and may consider whether the invention is novel, even if that ground is not relied on by the opponent; and must decide and deal with the case in the prescribed manner. The Parliament of New Zealand enacts as follows: 1 Title This Act is the Patents Amendment Act 2025 . 2 Commencement This Act comes into force on the day after Royal assent. 3 Principal Act This Act amends the Patents Act 2013. 4 Section 146 amended (No infringement for prior use of invention) In section 146(5)(a), replace section 258 with sections 258 and 258A . 5 Section 254 amended (Transitional provision for patents granted under Patents Act 1953) In section 254(2)(d), after (rather than the grounds in section 114 of this Act) , insert unless subsection (4) applies . In section 254(2)(e), after (rather than the grounds in section 114 of this Act) , insert unless subsection (5) applies . After section 254(2), insert: 3 Subsections (4) and (5) apply to a patent granted in respect of a fresh patent application to which section 258A applies. 4 On a re-examination of the patent application and the complete specification under section 95, the grounds that a person may specify in a request for re-examination, and that the Commissioner may consider and report on, are 1 or more of the following grounds: a a ground in section 41(1)(b) to (d), (g), (h), or (j) to (m) of the Patents Act 1953: b that the invention, so far as claimed in a claim, when compared with the prior art base is not novel: c that the invention, so far as claimed in a claim, when compared with the prior art base does not involve an inventive step: d that the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of the complete specification is not supported by the matter disclosed in the specification. 5 The Commissioner or the court may revoke the patent under this Act only on 1 or more of the following grounds, and those grounds are available as grounds of defence in a proceeding for the infringement of the patent: a a ground in section 41(1)(b) to (d), (g), (h), (j) to (m), or (3) of the Patents Act 1953: b that the invention, so far as claimed in a claim, when compared with the prior art base is not novel: c that the invention, so far as claimed in a claim, when compared with the prior art base does not involve an inventive step: d that the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of the complete specification is not supported by the matter disclosed in the specification. 6 In subsections (4) and (5) , novel , inventive step , and prior art base have the meanings set out in sections 6 to 8 of this Act. 6 Section 258 amended (Patents Act 1953 applies to divisional applications dated before commencement) In the heading to section 258, replace divisional applications with certain divisional applications . Replace section 258(1) with: 1 This section applies to a fresh patent application (and any complete specification that is filed at the same time) if— a the fresh patent application is made for any part of the subject matter of a patent application to which the Patents Act 1953 applies under section 255 or 259; and b the fresh patent application is made on or after 13 September 2014; and c the date on which the fresh patent application is actually filed is before the date on which the Patents Amendment Act 2025 comes into force; and d the fresh patent application is given a date before 13 September 2014. 7 New section 258A inserted (Transitional provisions for divisional applications filed after Patents Amendment Act 2025 comes into force) After section 258, insert: 258A Transitional provisions for divisional applications filed after Patents Amendment Act 2025 comes into force 1 This section applies to a fresh patent application (and any complete specification that is filed at the same time) if— a the fresh patent application is made for any part of the subject matter of a patent application to which the Patents Act 1953 applies under section 255 or 259; and b the date on which the fresh patent application is actually filed is on or after the date on which the Patents Amendment Act 2025 comes into force; and c the fresh patent application is given a date before 13 September 2014. 2 The fresh patent application must be treated as a patent application made under the Patents Act 1953 (and section 255 applies to it) and the complete specification must be treated as having been filed on the date given to the fresh patent application. 3 However,— a before accepting a complete specification under section 20 of the Patents Act 1953, the Commissioner must be satisfied, on the balance of probabilities, that— i the invention, so far as claimed in a claim, when compared with the prior art base is novel; and ii the invention, so far as claimed in a claim, when compared with the prior art base involves an inventive step; and iii the claim or claims of the complete specification are supported by the matter disclosed in the specification (rather than being fairly based on the matter disclosed in the specification as required by section 10(4) of the Patents Act 1953); and b sections 13 and 14 of the Patents Act 1953 do not apply; and c a person may oppose the grant of a patent by a notice given under section 21 of the Patents Act 1953, but only on 1 or more of the following grounds: i a ground specified in section 21(1)(a), or (f) to (k) of the Patents Act 1953: ii that the invention, so far as claimed in a claim, when compared with the prior art base is not novel (rather than the grounds in section 21(1)(b) and (c) of the Patents Act 1953): iii that the invention, so far as claimed in a claim, when compared with the prior art base does not involve an inventive step (rather than the ground in section 21(1)(e) of the Patents Act 1953): iv that the claim or claims of the complete specification are not supported by the matter disclosed in the specification; and d if a person gives a notice under section 21 of the Patents Act 1953, the following apply (rather than section 21(3) of the Patents Act 1953): i the Commissioner must give the applicant and the opponent a reasonable opportunity to be heard before deciding the case; and ii the Commissioner must consider whether any ground set out in paragraph (c) that is relied upon by the opponent is established on the balance of probabilities; and iii the Commissioner may also consider whether the ground set out in paragraph (c)(ii) is established on the balance of probabilities, even if it is not relied upon by the opponent; and iv the Commissioner must otherwise decide and deal with the case in the prescribed manner. 4 In this section, novel , inventive step , and prior art base have the meanings set out in sections 6 to 8 of this Act.