Appendix 2: Questions Asked in the Discussion Paper

Summary of Submissions Received on the Patents Act Review Discussion Paper

Regulatory and Competition Policy Branch

[ Last Updated 26 October 2005 ]

Definition of Invention

Which of these options identified below should be adopted? Why?
1. no change to the current definition;
2. retain the current definition, with specific exclusions from patentability;
3. no formal definition of invention, with patentability based on the criteria of novelty, inventiveness and usefulness, with or without specific exclusions;
4. retain the current definition, with the additional criteria of novelty, inventiveness and usefulness, with or without specific exclusions; or
5. repeal the current definition, replace it with an alternative definition, with or without specific exclusions.
Should there be any specific exclusions from patentability? If not, why not?
If there were to be specific exclusions, what should they be? Why?
Should the power currently given to the Commissioner of Patents to refuse to grant patents for inventions whose use would be "contrary to morality" be retained? If not, why not?

Should applicants for patents be required to provide evidence of the source of any genetic material? If so, what sort of evidence would be required?
Where inventions are based on traditional knowledge, should applicants be required to provide evidence of the prior informed consent of the holders of that knowledge. If so, what form should that evidence take? What process would be required?
How might patent examiners be made aware that patent applications are based on Māori traditional knowledge or indigenous flora and fauna?
Should there be specific consultation with Māori during the patent examination process?
If so, what sorts of applications should Māori be consulted about? Applications based on Māori traditional knowledge and indigenous flora and fauna? Anything else? Why?
What should the role of the Māori consultative committee be? How would it be constituted? Should applicants be required to consult with Māori, or should the onus be on the Crown, or a combination of both?
How else might Māori interests be taken into account in the patent process?

Should New Zealand's patent legislation exclude plants or animals from patentability? If so, why?
Should some biotechnological inventions be excluded from patentability. If so, which ones? Why? What benefits or costs could there be to New Zealand in providing such exclusions?
Should New Zealand's patent legislation contain an explicit requirement that an invention be "useful" before it can be granted a patent?

Is it appropriate that plant breeders should be able to gain both patent protection and plant variety rights protection for the same genus or species? If so, why?
If only one form of protection for plant varieties is provided, what should this be? Why?
If plant breeders can obtain only one form of protection for their new plant varieties, should plant breeders be able to decide which form of protection should be applied to a particular variety, or should this be specified in legislation?

Business methods and computer software are currently patentable in New Zealand. Should they continue to be patentable? Why?
If business methods and/or computer software should continue to be patentable in New Zealand, are the criteria for granting a patent adequate? If not, what should they be?
Should there be an explicit requirement for business methods and computer software to possess "technical character" in order to be patentable?
What resources might IPONZ require to ensure that it is able to adequately examine patent applications involving business methods and computer software?
If business methods were to be excluded from patent protection, should some other form of protection be given to them? If so, what should this be?
Should schemes or plans, mathematical algorithms and other abstract concepts remain unpatentable? If not, why not?
If mathematical algorithms, schemes and plans, and other abstract concepts were to remain unpatentable, should they be the subject of specific exclusions in the Patents Act?

Should methods of medical treatment of humans remain unpatentable in New Zealand? If not, why not?
If methods of medical treatment were to become patentable in New Zealand, what benefits would there be for New Zealand? What would be the costs?
If methods of medical treatment were to become patentable in New Zealand, should such patents be enforceable against medical practitioners?
If methods of medical treatment of humans were to remain unpatentable, should they be the subject of a specific exclusion the Patents Act? If not, why not?
If the Patents Act were to contain a specific exclusion for methods of medical treatment of humans, what treatments should be excluded? Should there be a definition of "medical treatment of humans" in the Patents Act, or should the interpretation of this term be left to the courts?
The TRIPS agreement also allows for methods of medical treatment of animals to be excluded from patentability. These methods are currently patentable in New Zealand. Should such methods be excluded from patentability? If so, why?

Is the stringency test for granting a patent in New Zealand too liberal? If so, why? If not, why not?
If the test is too liberal, what test should be adopted?
If a more restrictive test were to be adopted, would there be any advantages or disadvantages other than those identified above?

Printed: 25/11/2009