What Does "Local Novelty" Really Mean?
29 October 2012
New Zealand is one of the few developed countries that retains a “local novelty” provision in its patents legislation. When assessing the patentability of an application, local novelty disregards any publication or use outside that particular jurisdiction.
This, in theory, allows patent applicants to file in New Zealand after overseas publication, use, sale, or even the expiry of the 12-month Paris Convention period.
Although the New Zealand Patents Act 1953 is soon to be replaced – and although the Patents Bill 2008 proposes a shift to “absolute novelty” to conform with most of the rest of the world – it is worth considering what difference this shift is likely to make in “real” terms.
Local novelty is such an antiquated notion that most countries dispensed with it long ago. Indeed, the Patents Act 1953 is based upon the UK’s Patents Act 1949, in which days, to import a new technology, one literally had to jump on a ship, sail the seven seas and then offload it.
Local novelty “worked” in such an age because it provided an incentive to bring technology, be it new or known, to a developing country such as New Zealand was at the time.
Nowadays, developments in telecommunications, and to a lesser extent planes, trains and automobiles render local novelty largely conceptual and somewhat difficult to achieve in practice.
To all intents and purposes, local novelty’s death knell was the dawn of the internet age; such a notion is largely untenable where a new technology can be transmitted across the globe in milliseconds. Establishing the accession date of internet-based material without adducing evidence is often impossible.
Whether a website accessible through the internet constitutes “local publication” until such time as it exists physically (i.e., it is printed in New Zealand) was addressed in Molecular Plant Breeding’s Application [IPONZ decision P25/2005].
In this decision, the Assistant Commissioner accepted for the first time that a document available via the internet met the statutory definition of “published.” While this has not been contested formally, this finding has nonetheless been widely assumed in the interim.
Accordingly, “local novelty by publication” is now largely extinct under New Zealand practice. This leaves only “local novelty by use,” which is rather limited, even to the point of irrelevance. Therefore, to all intents and purposes, New Zealand patent law already appears to operate on a de facto “absolute novelty” basis.
Popular opinion is that the new Patents Act will “raise the bar” on New Zealand patents, making them harder to obtain, more limited in scope and thereby less commercially viable.
However, the way the Patents Bill is drafted, Examination will be extended to include an assessment of inventive step, with a patent allowed according to the “balance of probabilities.”
In reality therefore, it is unlikely that many applications will be excluded during Examination on the basis of inventive step alone.
Moreover, inventive step has always been a ground for Opposition and Revocation, meaning that, if anything, the balance of probabilities is likely to be skewed in favour of the Applicant. Other proposed changes merely codify the present judicial exclusions for certain subject matter.
With the above points in mind, we would temper any impression that a New Zealand patent will become significantly harder to obtain under the new legislation.
Local novelty exists in name only and as the “main” criterion for patentability; we do not believe that the scope of New Zealand patents granted under the proposed new Act will be significantly less than those granted under the present legislation. New Zealand patents will continue to provide excellent value for money, with the new legislation serving to increase certainty, both for the patentee and for its competitors.
Shelston IP
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Sydney NSW 2000,
Australia
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E: charlestansey@shelstonip.com
garethdixon@shelstonip.com
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