The Bill, introduced by a member of the opposition government, is a bolt out of the blue, with no mention of this proposed law change being made during the 2017 election.<\/p>\n
The Patents (Advancement Patents) Amendment Bill 2018 proposes to amend the New Zealand Patents Act 2013 to introduce a \u2018second tier\u2019 patent called the Advancement Patent, to sit alongside and be available as an alternative to the existing \u2018standard\u2019 patent.<\/p>\n
The Bill states its purpose is to encourage technological development and advancement by providing for the grant of advancement patents and provisional advancement patents that \u2013<\/p>\n
are easier and less costly to obtain than other patents (i.e. standard patents),
\nrequire a lesser degree of advancement than the inventive step requirement for other types of patents, and
\nprovide a lesser term of protection than other patents.<\/p>\n
Under the present Patents Act, for an invention to be patentable it must be novel and have an inventive step.\u00a0 For an advancement patent to be granted, an invention must be novel and have an advancement step.\u00a0 An advancement step involves a lesser advancement than an inventive step, meaning an advancement patent will be easier to obtain than a standard patent.\u00a0 An advancement step is an advancement that is distinctly different from existing technology and which makes a useful improvement.<\/p>\n
The proposed definition for advancement step is based on the requirements for a utility model under Danish law. A utility model is much like a patent in terms of application procedure and enforcement and is sometimes referred to as a \u2018small patent\u2019, having a lower standard for patentability than a standard patent.\u00a0 To be registered as a utility model, a creation must be new and differ distinctly from what was already known.\u00a0 Thus, Danish law relating to utility models may be useful for understanding the patentability threshold to be applied to the proposed advancement patent, although there is no Danish Supreme Court decision that defines what \u2018differs distinctly\u2019 really means.<\/p>\n
One possible issue with having more than one standard for \u2018inventiveness\u2019 is that it indicates a spectrum of inventiveness.\u00a0 One may argue that there is no spectrum; a new thing is either inventive or it is not, rather than being more inventive than something else.\u00a0 An advancement step must fall somewhere between being obvious (not inventive) and being inventive.\u00a0 This may be difficult to define without presenting a very low threshold for \u2018distinctly different\u2019, i.e. something that is novel and useful may be close to the patentability standard to be applied to advancement patents.\u00a0 An alternative may be to have a different prior art base against which advancement patents and standard patents are examined.\u00a0 Presently we do not know what \u2018distinctly different\u2019 really means.<\/p>\n
An application for a provisional advancement patent will only undergo a formalities check upon filing and will be granted without examination for novelty and advancement step.\u00a0 The patentee or any other person can file a request to have a granted provisional advancement patent examined for novelty and advancement step.\u00a0 If the examination requirements are satisfied, a certificate of examination is issued and the provisional granted advancement patent becomes an advancement patent.<\/p>\n
A provisional advancement patent (e.g. an unexamined advancement patent) has a maximum term of 3-years from the filing date of the provisional advancement patent, and an advancement patent has a maximum term of 10 years from the filing date of the provisional advancement patent.<\/p>\n
Interestingly, a granted provisional advancement patent is enforceable.\u00a0 This means an owner of a provisional advancement patent will be able to take action against a third party based on patent claims that have not been examined.\u00a0 From a practical point of view, a patent owner would be ill-advised to take action against another party on the basis of unexamined claims.\u00a0 However, this provision of the proposed second-tier patent system does allow a patent owner to send an infringer of unexamined patent claims threats of legal action.\u00a0 An individual or SME without a budget to deal with such threats may decide to comply with a patent owner\u2019s demands, even though the patent claims are without merit.\u00a0 Such a provision therefore risks stifling innovation, not promoting it.<\/p>\n
It is worth noting that utility models in other countries such as in Denmark and Germany are enforceable once registered following a formalities check and without substantive examination.\u00a0 However, what we have seen in these countries is that utility models are not only filed by small enterprises, but are often filed by large enterprises together with standard patent applications as a precautionary measure should an invention fall below the inventive step threshold, or to obtain granted claims targeted at a competitor\u2019s product.<\/p>\n
Other countries allow for a strategic use of utility models together with patents since their laws allow claims of a utility model to also be pursued in a patent application.\u00a0 The proposed advancement patent system will not allow for this kind of double protection since the provisions of the Bill prevent claims in a standard patent being the same as claims in an advancement patent.<\/p>\n
Regardless, a provision allowing for the enforcement of unexamined patent claims is more likely to favour large enterprises, rather than individuals or SMEs, which defeats the low-cost purpose of a second-tier patent system.<\/p>\n