Patents Act 1953

  • repealed
  • Patents Act 1953: repealed, on 24 February 2017, by section 7(1) of the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016 (2016 No 89).

Patents Act 2013

Public Act
 
2013 No 68
Date of assent
 
13 September 2013
Commencement
 
see section 2
1 Title

This Act is the Patents Act 2013.

2 Commencement

(1)

The following provisions of this Act come into force on the day after the date on which this Act receives the Royal assent:

(a)

section 1 and this section:

(b)

Part 1 (which contains the preliminary provisions):

(c)

subpart 3 of Part 5 (which relates to the establishment and operation of the administrative bodies under this Act):

(d)

subpart 5 of Part 5 (which contains the regulation-making powers):

(e)

section 266(1) (which appoints the Commissioner and Assistant Commissioners of Patents under the Patents Act 1953 as the new Commissioner and Assistant Commissioners).

(2)

The rest of this Act comes into force on a date to be appointed by the Governor-General by Order in Council; and 1 or more orders may be made bringing different provisions into force on different dates.

(3)

To the extent that it is not previously brought into force under subsection (1) or (2), the rest of this Act comes into force on the first anniversary of the date on which this Act receives the Royal assent.

Part 1 Preliminary

Purposes and overview

3 Purposes

The purposes of this Act are to—

(a)

provide an efficient and effective patent system that—

(i)

promotes innovation and economic growth while providing an appropriate balance between the interests of inventors and patent owners and the interests of society as a whole; and

(ii)

complies with New Zealand’s international obligations; and

(b)

ensure that a patent is granted for an invention only in appropriate circumstances by—

(i)

establishing appropriate criteria for the granting of a patent; and

(ii)

providing for procedures that allow the validity of a patent to be tested; and

(c)

provide greater certainty for patent owners and the users of patented inventions that patents will be valid after they are granted; and

(d)

address Māori concerns relating to the granting of patents for inventions derived from indigenous plants and animals or from Māori traditional knowledge; and

(e)

ensure that New Zealand’s patent legislation takes account of developments in the patent systems of other countries.

Part 5 Administrative and miscellaneous provisions

Subpart 6—Repeals, amendments, validation, and saving and transitional provisions

Transitional provisions for patents and patent applications

253 Outline of transitional provisions for patents

(1)

The general scheme and effect of the transitional provisions for patents on and from the commencement of Part 3 of this Act (commencement) is as follows:

(a)

this Act applies to patents granted under the Patents Act 1953 (but patents retain their existing key dates, term, and grounds for revocation):

(b)

patent applications made under the Patents Act 1953 continue to be dealt with under that Act unless a complete specification is filed on or after commencement and, in this case, the complete specification may be filed only under this Act and this Act then applies to the patent application:

(c)

Treaty applications—

(i)

continue to be dealt with under the Patents Act 1953 if the applicant has fulfilled the applicant’s obligations under Article 22(1) or 39(1)(a) of the Patent Cooperation Treaty before commencement; and

(ii)

must be dealt with under this Act if the applicant did not fulfil those obligations before that time:

(d)

there are particular transitional provisions for post-dated applications and divisional applications.

(2)

This section is a guide only to the general scheme and effect of the transitional provisions for patents.

254 Transitional provision for patents granted under Patents Act 1953

(1)

This Act applies to a patent granted under the Patents Act 1953 as if it were granted under this Act.

(2)

However,—

(a)

the patent retains its original date of filing of the patent application, patent date (that is the date of filing of the complete specification), priority date or dates, date of the publication of the accepted complete specification, date that the patent was granted, and date that the next renewal fee was due under the Patents Act 1953; and

(b)

the patent retains its existing term; and

(c)

the next renewal fee (after this section comes into force) must be paid when due in accordance with the Patents Act 1953 but, after that due date, renewal fees become due in accordance with this Act; and

(d)

on a re-examination of the patent application and the complete specification under section 95, the grounds that a person may specify in a request for re-examination, and that the Commissioner may consider and report on, are the grounds in section 41(1) of the Patents Act 1953 (rather than the grounds in section 114 of this Act); and

(e)

the Commissioner or the court may revoke the patent under this Act only on the grounds set out in section 41(1) or (3) of the Patents Act 1953, and those grounds are available as grounds of defence in a proceeding for the infringement of the patent (rather than the grounds in section 114 of this Act); and

(f)

section 146 of this Act does not apply; and

(g)

in relation to any existing endorsement of the patent under section 44 of the Patents Act 1953,—

(i)

the repeals in section 247 do not affect the endorsement; and

(ii)

sections 44 and 45 of the Patents Act 1953 continue to apply to the patent for the purposes of the endorsement, as if sections 247 to 249 were not in force (and accordingly, renewal fees remain at one-half of the fees otherwise payable under this Act while the patent is so endorsed).

255 Patent applications made under Patents Act 1953 continue under that Act

(1)

The Patents Act 1953 (and the regulations, orders, directions, and other matters made under it) continues to apply, as if sections 247 to 249 were not in force, for the purposes of—

(a)

a patent application made under that Act before the commencement of Part 3 of this Act:

(b)

the bringing and completion of any application, request, notice, or other proceeding relating to that application (whether commenced before or after the commencement of Part 3 of this Act).

(2)

Any reference in any other enactment to a repealed provision of the Patents Act 1953 (or a revoked provision of any regulations made under it) continues to apply for the purposes of subsection (1) as if the reference had not been repealed or amended by this Act.

(3)

Section 254 applies to any patent granted under the Patents Act 1953 in respect of that application.

(4)

This section is subject to sections 256, 257, and 259.

256 Patents Act 1953 ceases to apply to patent application if complete specification later filed

(1)

Despite section 255,—

(a)

a complete specification may not be filed under the Patents Act 1953 on or after the commencement of Part 3 of this Act (unless section 258 applies to the complete specification); and

(b)

the complete specification must instead comply with, and be filed under, this Act; and

(c)

on and from the date on which the complete specification is filed, this Act applies in respect of the patent application (and any application, request, notice, or other proceeding relating to it) as if it were made under this Act (including as to the priority date).

(2)

Subsection (1) applies whether the complete specification is filed for one of the following reasons or any other reason:

(a)

only a provisional specification was filed before that commencement; or

(b)

the original complete specification was directed (whether before or after that commencement) to be treated as a provisional specification under section 9(4) of the Patents Act 1953.

(3)

If a complete specification is provided for 2 or more patent applications that are cognate or of which one is a modification of another, this section applies to those 2 or more patent applications.

257 This Act applies if patent application under Patents Act 1953 is post-dated

If a patent application made under the Patents Act 1953 is post-dated to a date that is on or after the commencement of Part 3 of this Act, this Act applies to the patent application as if the patent application had been made under this Act.

258 Patents Act 1953 applies to divisional applications dated before commencement

(1)

This section applies to a fresh patent application that is made on or after the commencement of Part 3 of this Act (and any complete specification that is filed at the same time) if—

(a)

the fresh patent application is made for any part of the subject matter of a patent application to which the Patents Act 1953 applies under section 255 or 259; and

(b)

the fresh patent application is given a date before that commencement.

(2)

The fresh patent application must be treated as a patent application made under the Patents Act 1953 (and section 255 applies to it) and the complete specification must be treated as having been filed on the date given to the fresh patent application.

259 Which Act applies to Treaty applications

(1)

The Patents Act 1953 (and the regulations, orders, directions, and other matters made under it) continues to apply, as if sections 247 to 249 were not in force, for the purposes of—

(a)

a Treaty application if the applicant fulfilled the applicant’s obligations under Article 22(1) or 39(1)(a) of the Patent Cooperation Treaty before the commencement of Part 3 of this Act:

(b)

the bringing and completion of any application, request, notice, or other proceeding relating to that application (whether commenced before or after the commencement of Part 3 of this Act).

(2)

Any reference in any other enactment to a repealed provision of the Patents Act 1953 (or a revoked provision of any regulations made under it) continues to apply for the purposes of subsection (1) as if the reference had not been repealed or amended by this Act.

(3)

Section 254 applies to any patent granted under the Patents Act 1953 in respect of that application.

(4)

However, this Act applies to a Treaty application if the applicant did not fulfil those obligations before the commencement of Part 3.

Transitional provisions for other applications, notices, and requests

260 Transitional provision for other applications, notices, or requests

(1)

The Patents Act 1953 (and the regulations, orders, directions, and other matters made under it) continues to apply, as if sections 247 to 249 were not in force, for the purposes of completing any application, notice, or request that was received by the Commissioner or the court, or completing any other proceeding commenced, before the commencement of Part 3 of this Act.

(2)

Subsection (1) does not apply to a patent application, or an application, notice, request, or other proceeding relating to a patent application, to which any of sections 255 to 259 apply.

(3)

If the Patents Act 1953 continues to apply to an application, notice, or request under this section, any reference in any other enactment to a repealed provision of the Patents Act 1953 (or a revoked provision of any regulations made under it) continues to apply for that purpose as if the reference had not been repealed or amended by this Act.

Transitional provision for matters in force on commencement

261 Transitional provision for orders, directions, and other matters in effect on transition to new law

(1)

Any order, direction, or other matter made under a repealed provision of the Patents Act 1953, and that is in effect immediately before its transition takes effect under subsection (3), continues to have effect as if it had been made under the provision of this Act—

(a)

that, with or without modification, replaces, or that corresponds to, the provision of the Patents Act 1953 under which it was made; and

(b)

under which it could be made.

(2)

The order, direction, or other matter may be amended or revoked as if it had been made under the provision of this Act that replaces, or that corresponds to, the provision of the Patents Act 1953 under which it was made.

(3)

The transition of an order, direction, or other matter takes effect for the purposes of this section on the later of the following:

(a)

on the repeal of the provision under which the order, direction, or other matter is made; or

(b)

if this Part provides, or regulations made under section 245 provide, that the order, direction, or other matter continues to apply after the repeal of the provision under which it is made, when it ceases to so continue to apply.

Transitional provision for patents register

262 Transitional provision for patents register

The register of patents kept under section 83 of the Patents Act 1953 continues to have effect as the patents register kept under section 194 of this Act.

Transitional provisions for offences and infringements

263 Transitional provision for offences and infringements

The Patents Act 1953 (and the regulations, orders, directions, and other matters made under it) continues to apply (as if sections 247 to 249 were not in force) for the purpose of—

(a)

investigating any offence or infringement committed before the commencement of this section:

(b)

commencing or completing any proceeding for any offence or infringement committed before the commencement of this section:

(c)

imposing a penalty or granting any relief or other remedy for any offence or infringement committed before the commencement of this section.

Transitional provisions as to statutory references

264 Transitional provision as to statutory references to corresponding matters

If provided by the regulations, a specified reference to this Act (or to a defined term or other matter in this Act) includes a reference to the Patents Act 1953 (or to a corresponding or replaced specified term or matter under the Patents Act 1953) (for example, the regulations may specify that the reference in section 8(2) to another patent application includes, for the purpose of determining the prior art base under that section, a patent application made under the Patents Act 1953).

265 Transitional provision as to repealed references to Commissioner, journal, or Patent Office

Any reference to the Commissioner, the Journal, or the Patent Office in a provision that is repealed or revoked but continues to apply to any matter under this subpart must be read as a reference to the Commissioner or journal under this Act or to IPONZ (as the case may be).

Transitional provisions for Commissioner and Assistant Commissioners

266 Transitional appointment of Commissioner and Assistant Commissioners

(1)

The persons holding office as the Commissioner and Assistant Commissioners under the Patents Act 1953 are treated as having been appointed as the Commissioner and Assistant Commissioners under this Act on the commencement of this subsection (and may hold both offices concurrently).

(2)

The persons holding office as the Commissioner and Assistant Commissioners under the Designs Act 1953 continue to hold those offices despite the repeal and substitution of sections 3 and 4 of that Act.

267 Transitional power for Commissioner

(1)

The Commissioner may, for the purpose of facilitating the transition from the Patents Act 1953 to this Act, do any of the following in connection with a patent application, other application, notice, or request originally made under the Patents Act 1953 and to which this Act now applies:

(a)

exempt a person (on the terms and conditions (if any) that the Commissioner thinks fit) from any statutory requirement that applied or now applies to the application, notice, or request:

(b)

give a person additional time to comply with a statutory requirement in respect of the application, notice, or request that previously did not apply.

(2)

In this section, statutory requirement means a requirement under the Patents Act 1953 or this Act, or under any regulations, orders, directions, or other matters made under either Act.

(3)

This section expires on close of the day that is 3 years after the commencement of this section.