A new way to get faster international grant

IP Australia announces new Global Patent Prosecution Highway pilot

One of the keys to a faster, more efficient and less repetitive international patent system is for various patent offices to better use the work of their peers. The old paradigm is that each patent office is an island, and behaves as if the same invention had never been examined by any other patent office, starting at the beginning and working through to the end,  regardless of the work done elsewhere.

A major change was the first patent prosecution highway (PPH) agreements reached by the USPTO with various patent offices, including IP Australia. In essence, if you had a final decision from IP Australia to allow at least one claim, and the claims in the US matched, you can go to the front of the examination queue. By using this with expedited examination in Australia, we have been able for several clients to achieve grant of a US patent in less than a year from the first Australian filing. While this is not the best strategy for everyone, in the case of a company seeking funding based on its IP, a granted US patent is a lot more valuable than an application.

The new scheme will allow this process to occur with 12 other patent offices, including Japan, Korea, US, Canada, the UK, Spain, Russia, Denmark, Norway, Portugal, Nordic Patent Institute, and Finland. It is likely that other countries and regional offices will join. While at this stage this is a pilot program, it is open to Australian applicants to apply to use the scheme in those patent offices after 6 January 2014.  For countries that are notoriously slow, for example Japan, this could be a very great advantage. This is no guarantee of a patent, or of any preferential treatment in the substantive outcome. However, it is a way to accelerate consideration where that is going to be helpful.

Please contact us for a discussion if you think this program would be of interest.

by Peter Franke

New Zealand Patents Act 2013

It has been a long time coming, but finally New Zealand has a new Patents Act. The Patents Act 2013 received Royal assent on 13 September 2013. While a few administrative provisions took immediate effect, the majority of the provisions are not expected to take effect until 13 September 2014. Patent applications or national phase entries made before the new provisions take effect will remain subject to the current Patents Act.

Supporting Regulations for the new Act are not expected until mid-2014.

There are a lot of changes made by the new Act, some of the more interesting ones are as follows:

- an expansion of the prior art base applicable for assessing novelty and inventive step

- increasing the applicable grounds for examination with a higher standard being on ‘balance of probabilities’ (previously ‘benefit of doubt’)

- an invention must be ‘useful’ by having ‘a specific, substantial and credible utility’

- complete specifications must disclose ‘best method’ and the invention in a ‘clear and complete enough manner’ to be performed by a person skilled in the art

- claims to be ‘clear and concise’ and ‘supported by matter’ disclosed in the complete specification
express exclusions from patentability

• contrary to public order or morality (e.g. cloning of human beings, commercial use of human embryos, modifying germ line genetic identity of animals likely to cause suffering without substantial medical benefit)
• human beings and biological processes for their generation
• methods of medical treatment of humans by surgery or therapy
• methods of diagnosis practiced on humans
• ‘computer programs as such’

- re-examinations available on all grounds between post-acceptance/pre-grant period for patent applications and at any stage after grant for granted patents

- post-acceptance/pre-grant opposition available on all grounds

- revocation of granted patents available before Patent Office or Court

- no extensions of patent term are available

- particular exclusions to infringement provided for seeking regulatory approval, prior use and experimental research


It has to be said that there is significant borrowing and influence from European patent law, particularly in respect to the substantive patentability tests and the use of particular exclusions. The computer programs exclusion was a particular sticking point in the lead up to the new Act and contributed to quite a few years delay. The fact that it is ‘computer programs as such’ smells very strongly of the European influence and it will be interesting to see how this develops given that the European development has not resulted in a blanket ban on software implemented inventions. Similarly, it will be interesting to see if New Zealand examiners adopt a European style approach to assessing inventive step, given that until now inventive step was not an examinable criterion.

The new Patents Act also introduces a Maori advisory committee who will have the power to veto inventions which, if commercially exploited in New Zealand, would be offensive to the indigenous culture. Similar powers have existed under the New Zealand Trade Mark law and appear to have worked very effectively and practically.

All in all, the new Act significantly raises the patentability standard in New Zealand, albeit to a standard more consistent with other countries. Until the new provisions come into force, the lesser standard of the current patent law applies. Hence, to take advantage of the current law, it may be worth considering filing or entering national phase in New Zealand early.



by Simon Ellis