The retrospective tweak

The New Zealand Patents Bill underwent a Second Reading on 12 September and is now awaiting consideration by the Committee of the whole House. The Government has recently proposed a Supplementary Order Paper (SOP 126) to better align the legislation with the intention of the Commerce Select Committee.

I cover the main features of earlier SOP 120 released on 28 August in my post A makeover for the Patents Bill. I cover SOP 123 and SOP 124 in my post Patent party in the House.

SOP 126 released on 18 September is a Government SOP intended to better align legislative wording with legislative intent. In this sense it is the same as SOP 120 I discussed earlier.

It is not uncommon for New Zealand resident patent applicants to file their first patent application in New Zealand. Subsequent patent applications are then filed offshore claiming priority from the New Zealand application. Many New Zealanders, for example, file an international PCT application claiming priority from their New Zealand patent application.

The problem arises when the applicant enters national phase in New Zealand (called a Treaty application) from the PCT application.

Due to an oversight in a Convention Order, New Zealand is not listed as one of the countries from which priority may be claimed. This means that every New Zealand patent issued from a Treaty application claiming a New Zealand priority date may not be entitled to the priority date the owner thinks it is.

The Patents Bill includes a retrospective fix for the situation in which some New Zealand patentees find themselves. SOP 126 proposes to amend Clause 298A inserted by the Commerce Select Committee to read:

298A Validation of priority date for Treaty applications(1) This section applies to a Treaty application made under the Patents Act 1953 that claims the priority, under Article 8 of the Patent Cooperation Treaty, of an earlier application made in New Zealand.
(2) The claim to priority by the application is validated and must be taken to be, and always to have been, lawful to the extent that it would have been valid under the Patents Act 1953 if New Zealand had been a convention country for the purposes of that Act.
(3) Nothing in subsection (2) affects a claim to priority by an application that is the subject of a proceeding commenced in a court before 30 March 2010.

SOP 126 inserts subsection (3) to reflect the fact that a retrospective validation should not override any court proceedings on particular Treaty applications brought before the date on which the Commerce Select Committee reported the Bill back to the House. Any court proceedings already commenced before that date may be completed on the basis of the former law.

This is a good example of 20:20 hindsight being a useful tool with which to align legislative wording with legislative intent.

Photo courtesy of author kenteegardin under Creative Commons licence.