Supplementary Order Paper No 120

Explanatory note

This Supplementary Order Paper amends the Patents Bill by—

  • amending clause 2(3), which specifies that if various provisions of the Bill are not earlier brought into force by Order in Council, those provisions come into force on 31 December 2012. This date has been extended to 31 December 2013; and

  • replacing an exclusion in clause 15(3A) (which relates to computer programs) with new clause 10A. Rather than excluding a computer program from being a patentable invention, new clause 10A clarifies that a computer program is not an invention for the purposes of the Bill (and that this prevents anything from being an invention only to the extent that a patent or an application relates to a computer program as such). This approach is considered to be more consistent with New Zealand's international obligations (the TRIPS agreement, in particular, contains restrictions on the ability to exclude inventions from patentability). This approach is also more consistent with overseas precedents and makes it clear that it is only computer programs themselves that are ineligible for patent protection. Under the Bill, a patent may still be granted for an invention that meets all of the criteria for patentability (for example, novelty and an inventive step) despite the fact that the relevant invention involves a computer program in some respect; and

  • clarifying that various requests and applications made under the Bill must be made in the manner prescribed by the regulations. This is consistent with other provisions throughout the Bill; and

  • amending clause 35 (which requires a complete specification to be filed after a provisional specification is filed) to clarify the procedure that applies where 2 or more patent applications accompanied by provisional specifications have been filed for inventions that are cognate or of which one is a modification of another; and

  • amending clause 58 (which relates to the priority date for Treaty applications that claim the priority of an earlier application) to align the provision with changes to the Patent Cooperation Treaty regulations. The amendment also promotes consistency with a similar provision under Australian law; and

  • clarifying that subpart 1 of Part 4 of the Bill (dealing with infringement proceedings) applies (with some minor modifications) to proceedings brought under clause 77 for pre-grant infringements of patents; and

  • amending clause 84 to include a reference to opposition proceedings (as well as re-examination and revocation proceedings). Clause 84 provides that certain procedural requirements do not apply to amendments of complete specifications effected in connection with certain proceedings; and

  • extending the provisions that relate to compulsory licences for export of pharmaceutical products. The extension allows the provisions to apply before Article 31bis of the TRIPS agreement takes effect. This extension is consistent with the decision of the General Council of the World Trade Organization of 30 August 2003 (which related to the implementation of paragraph 6 of the Doha Declaration on the TRIPS agreement and public health); and

  • updating the Bill as a result of the enactment of the Limitation Act 2010 and the Criminal Procedure Act 2011; and

  • inserting new clause 278A and amending the regulation-making powers and other provisions to ensure that a fully electronic patent system can be implemented. Under this clause, the electronic filing of all requests, applications, and other documents with the Commissioner is mandated. It is also anticipated that, under the electronic patent system, patents will be electronic, and the Commissioner of Patents will give notice to an applicant or other person using the person's user-page on the electronic patent system; and

  • empowering transitional regulations to be made that delay or modify the application of provisions in the Bill or the Patents Act 1953, or continue or modify the application of provisions repealed, amended, or revoked by the Bill, for a transitional period of 3 years. These provisions are to enable an orderly implementation of the transition from the Patents Act 1953 to the new Patents Bill given the complex nature of the reform. The regulation-making power is repealed, and any regulations made under it are revoked, at the close of the transitional period; and

  • correcting minor issues with the application and interrelationship of the transitional provisions for patent applications made under the Patents Act 1953, and the preservation of the patent attorney provisions under the Patents Act 1953 (including no longer revoking the Patents Regulations 1954, which will still apply to some patent applications for a transitional period and will continue to deal with patent attorney matters); and

  • clarifying drafting, correcting minor errors, and updating consequential amendments.