Important New Zealand Patents Act changes: Micro-Organisms

There appears to be some confusion about whether, under the new New Zealand patent laws, a microorganism deposit receipt needs to be filed within three months from the date of the deposit.  Under the new laws, a microorganism deposit receipt will need to be filed within three months of the date of filing an application in New Zealand.

Section 43 of the new law states:

43           Deposit requirements for micro-organisms

(1)    The deposit requirements are satisfied in relation to a micro-organism to which a specification relates if, and only if,—

(a) the micro-organism was, on or before the filing date of the specification, deposited with a prescribed depositary institution in accordance with the rules relating to micro-organisms; and

(b) the applicant for the patent provides to the Commissioner, within the prescribed period, a receipt for the deposit from the prescribed depositary institution; and

(c) the specification includes, at the filing date of the specification, all relevant information on the characteristics of the micro-organism that is known to the applicant; and

(d) at all times since the end of the prescribed period, the specification has included—

(i) the name of a prescribed depositary institution from which samples of the micro-organism are obtainable as provided by the rules relating to micro-organisms; and

(ii) the file, accession, or registration number of the deposit given by the institution; and

(e) at all times since the filing date of the specification, samples of the micro-organism have been obtainable from a prescribed depositary institution as provided by those rules.

(2) For the purposes of subsection (1)(b), the receipt for the deposit must be in the prescribed form (if any).

Compare: Patents Act 1990 s 6 (Aust)

On 11 August 2014 the Regulations were released, and these set out the prescribed period:

59              Deposit requirements for micro-organisms

(1) The prescribed period for the purposes of section 43(1)(b) of the Act is 3 months after the date that the micro-organism is deposited with the prescribed depositary institution.

(2) The prescribed form of receipt for the purposes of section 43(2) of the Act is a copy of a receipt issued by a prescribed depositary institution under rule 7 of the Budapest Regulations, and, if that receipt is not in English, the applicant must provide a verified translation of the receipt.

(3) In this regulation, Budapest Regulations

(a) means the regulations made under the Budapest Treaty; and

(b) includes any amendments from time to time made to those regulations.

Compare: Patents Regulations 1991 r 3.23(2) (Aust)

A literal interpretation of the regulations appears to set a date of 3 months from the date of deposit. However, in practice this date will of course likely be well before an applicant has made a decision to file in New Zealand.

The Intellectual Property Office of New Zealand (IPONZ) has confirmed that the literal interpretation does not reflect the legislative intent of the regulations and may end up in an absurd result for applicants.

IPONZ has indicated that the regulations are intended to only apply once an application is filed in New Zealand, and therefore a deposit receipt need be only filed within the prescribed period when filing in New Zealand (e.g. at the filing date or within three months of the filing date).  In practice, because the deposit receipts are typically available at the New Zealand national phase entry/convention filing date, the deposit receipts can easily be filed when filing.

IPONZ will issue an explicit clarification shortly, and the Regulations will also be amended in due course.

BSc(Hons) MCommrclLaw PhD FIPTA GAICD

Mark’s work focuses on the preparation and prosecution of patent applications in Australia and internationally, due diligence, freedom to operate and invalidity advice for the pharmaceutical, biotechnology, health and medical device industries.