After an application for a patent has been accepted by the Intellectual Property Office of New Zealand (IPONZ), there is a three-month period in which a third party can oppose grant of a patent. The rules as to who is entitled to oppose are changing because of the new Patents Act 2013.
Complete patent applications with an effective filing date before 13 September 2014 remain subject to the Patents Act 1953 until grant. This means the old rules continue to apply to third party oppositions to the grant of letters patent for such applications.
Emeny v Quinspread Technologies Ltd  NZIPOPAT 19
One such case was that of Mr Emeny, whose patent application (filed on 27 March 2007) was opposed by Quinspread Technologies Ltd in early 2009.
The opposition progressed, but on 27 June 2013, the opponent was placed into liquidation. Most of the company assets were sold off by January 2014, but the liquidator confirmed the opposition should continue.
However, when the matter proceeded to a substantive hearing in May 2015, counsel for Mr Emeny argued that Quinspread had lost the locus standi it had when the opposition was started back in 2009, and was no longer allowed to be involved.
It was common ground that the relevant s 21(1) of the Patents Act 1953, which allowed opposition only by “any person interested”, required the opponent to satisfy the Court or Commissioner that an opponent has a genuine commercial interest and that there is likelihood that the opponent will suffer real prejudice by the existence of the opposed application.1
Timing is everything
What was not clear was when this requirement for locus standi had to be met. Although it was agreed that Quinspread had locus standi when the opposition was lodged in 2009, did it still have to be able to establish locus standi at the date of the hearing?
With no case law directly on point, Assistant Commissioner Poppelwell reviewed the submissions of the parties, and their supporting authorities. He found2 that that the opponent’s requirement for locus standi is ongoing and must exist at both:
- the date the notice of opposition is filed; and
- the time of the hearing.
It was clear from existing authorities that the onus of establishing locus standi lies on the opponent.3 Quinspread had failed to provide evidence of its ongoing locus standi. It was therefore not entitled to be heard at the substantive hearing into the merits of the opposition.
The Assistant Commissioner also refused to admit the amended pleadings filed by Quinstead well into its liquidation, by which stage it probably no longer had a genuine commercial interest that could be prejudiced by the grant of a patent.
It is an interesting feature of patent oppositions that once an opposition has been lodged, even if the opponent subsequently drops out of the proceedings, the Commissioner is obliged to consider the pleaded grounds in the public interest.
The merits of the opposition to Mr Emeny’s patent application will therefore still be considered in the public interest, with only the applicant, Mr Emeny, allowed to make submissions.
Effect of Patents Act 2013
Complete patent applications with a deemed filing date after 13 September 2014 are governed by the new Patents Act 2013.
The new Act introduces re-examination as an additional new mechanism by which a third party can challenge either a granted patent or a pending application. This is an ex partes procedure in which the third party has no ongoing involvement, and there is no requirement for locus standi.
Following submissions at the Select Committee stage, third party oppositions (originally intended to be abolished) were also retained under the new regime. However, an opposition can now be instigated by “any person”.4
The removal of the word “interested” means a potential opponent no longer has to establish they have locus standi at any time during proceedings, to have the right to oppose a patent.
There will remain a trickle of cases to be decided under the provisions of the Patents Act 1953, for which the additional clarity regarding the timing of when locus standi has to be established will be relevant. However, for most future patent oppositions, locus standi is no longer required.
Emeny v Quinspread Technologies Ltd may therefore be the swan song of patent opposition decisions in which locus standi is an issue.
Virginia Nichols is a senior associate at Saunders & Co, specialising in Intellectual Property law. She has a particular interest in dispute resolution, including oppositions and infringement actions relating to patents and other IP rights.
- Wade’s Application (Commissioner’s Decision No P01/1981, 9/1/81), cited with approval at paragraphs 19-20, Emeny v Quinspread Technologies Ltd  NZIPOPAT 19
- Paragraph 32, Emeny v Quinspread Technologies Ltd  NZIPOPAT 19
- IPONZ P19/2001, BHP (JLA) Pty Limited v Perstorp AB
- Section 92, Patents Act 2013