Definition and overview
A patent is a monopoly right granted for a limited period, for a product or process which is novel (new) and inventive (non-obvious). A patent is able to cover the broad concept of an invention, preventing others from exploiting the patented invention, while the patent is in force. In return for the state conferring a monopoly, the patented invention becomes part of the public domain and can be used for all once the term has expired.
The governing statute is the Patents Act 2013, which came into force in September 2014. Under the transitional arrangements, the Patents Act 1953 is still relevant for some purposes.
A patent allows the patentee to make, use, exercise and sell an invention and the products which result from that invention for a period of 20 years, subject to payment of renewal fees at intervals. The remedies available for patent infringement are the same as for other intellectual property rights, namely:
- Permanent injunction;
- Account of profits; and
- An interim injunction to preserve the position through until the full trial.
The development of technology has had a major impact on patent law in recent years, and the area of law is constantly evolving to adapt to the nature of new inventions which parties are seeking to register. For example, US law is in a state of flux regarding the registrability of software and business methods.
Practitioners should be aware that different countries apply different standards to registration of patents. Some countries, for example, do not take a rigorous approach to examining a patent prior to registration on the basis that validity of the patent will be contested if the owner ever seeks to enforce its rights. By contrast, the patent offices in New Zealand, England and Australia tend to take a more rigorous approach to examination. Also of note is the availability of “utility model” rights in some jurisdictions, which have less rigorous standards and so more limited rights associated with them.
The practical point is the clients may require overseas specialist advice in order to determine the value of overseas patents and the extent to which those patents might be enforceable.
Searches and patent applications
Patents may be obtained in New Zealand for “any manner of new manufacture”, a phrase given a very wide interpretation. Anyone wishing to introduce a new product or technology, or to protect an invention by a patent in New Zealand, should have a search conducted at IPONZ to provide an indication of what has been done in the same field previously (referred to as the “prior art”).
A patent search will:
- reveal any existing New Zealand patent which could be infringed if the inventor’s manufacture and marketing proceed; and
- Identify any existing New Zealand patent which, relating to the same or similar invention, may hinder or preclude the inventor from obtaining a New Zealand patent.
If the invention appears to be patentable, a patent application may be filed at IPONZ. This is accompanied by either a provisional or complete specification describing the claimed invention. There are formal requirements for the application document and a filing fee is payable. When the application is filed with a provisional specification, a complete specification must be filed within 12 months.
The invention must be kept strictly confidential prior to the lodging of the application. The invention may be disclosed to partners, consultants and patent attorneys but not to a potential customer, licensee or purchaser of the invention or technology. The courts tend to take a very strict approach to this issue, and even inadvertent non-confidential disclosure can make an invention ineligible for patent protection. Once the application is filed, the invention remains secret for a period but will then be advertised so that other parties can consider whether they wish to oppose the patent being granted.
Once all of the formalities are completed, the complete specification is examined by an IPONZ examiner. The examination will assess whether the invention is novel at the date of priority (earliest date of application), and will also check that the specification meets the conditions for grant of a patent. For example, the complete specification must describe the invention and method by which it is to be performed, disclose the best method for performing the invention known to the applicant and must include a claim or claims defining the scope of the invention.
If the examination by IPONZ confirms that the application appears to be in order, the patent application is published. There is a three month opposition period and, in the absence of an opposition, the patent is granted.
Patent rights are territorial in nature. The need to apply for and maintain patents in multiple jurisdictions has a significant multiplier effect on the cost, and as such patent protection is normally only sought for inventions which are likely to be commercially successful. It is a matter of picking the key markets where a product is likely to be sold rather than trying to obtain a patent monopoly in each country of the world.
International patent applications do not need to be filed simultaneously. The Paris Convention for Protection of Industrial Property (1883) enables a person who has filed a patent application in one convention country to claim priority from that application in a subsequent application for the same invention filed in another convention country, where the subsequent application is filed within 12 months of the first application. New Zealand is a party to the Paris Convention. The priority date is very important because a patent monopoly cannot overlap with another party’s patent or material which is in the public domain. There has been case law where two parties have filed patent applications in respect of the same invention, where they have been independently working in the same field. The priority determines the party who is entitled to the patent monopoly.
New Zealand has also been a member of the Patent Cooperation Treaty (PCT) since 1992. They PCT helps to streamline the patent application procedure where a party seeks protection in more than one country. A single PCT patent application can designate one or more of the large number of contracting states filing a PCT application can defer the major costs of making international applications in particular jurisdictions by up to 2 ½ years from the date when the New Zealand patent application was first filed. This can be very helpful as it allows a client time to start making money from the invention before incurring those costs and the commercial viability (and the amount which the inventor is prepared to spend on patent protection) can also be assessed from a more practical prospective.
The Patents Act provides that only a registered patent attorney may draft and file patent applications as the agent of another. Given this fact, along with the technical and often complex nature of patents, patent issues are usually dealt with by specialist patent attorneys. IPONZ maintains a list of registered patent attorneys, which can be viewed on its website. Patent attorneys also maintain links with overseas patent attorneys to enable advice on registrability and prosecution of patents in other countries where required.
The IPONZ website (www.iponz.govt.nz) is a significant resource. It contains a guide to the application process, detailed guidance in the form of the Office Manual, details of the filing fees relating to patents in New Zealand (but not the professional fees payable), a list of patent agents and search facilities.
The register of patents, including expired patents, is a public database. It is relatively easy to find a registered patent based on its patent number or proprietor, although more in-depth searching such as checking for prior art involves some technical expertise. Best practice is to instruct a patent attorney to assist with undertaking more than a basic search.