Patents Act 2013

Public Act2013 No 68
Date of assent13 September 2013
Commencementsee section 2

Contents

1 Title

2 Commencement

Part 1
Preliminary

Purposes and overview

3 Purposes

4 Overview

Interpretation

5 Interpretation

6 Meaning of novel

7 Meaning of inventive step

8 Meaning of prior art base

9 Disclosure to be disregarded in certain circumstances

10 Meaning of useful

11 Computer programs

Act binds the Crown

12 Act binds the Crown

Part 2
Patentable inventions and patent rights

Subpart 1Patentable inventions

General rules concerning what is patentable

13 Patent may be granted for patentable inventions only

14 Patentable inventions

Exclusions from patentability

15 Inventions contrary to public order or morality not patentable inventions

16 Other exclusions

Subpart 2Patent rights

17 Nature of patent

18 Exclusive rights given by patent

19 Extent, effect, and form of patent

20 Term of patent

21 Extension of period for paying renewal fees

Subpart 3Patent ownership

Who may be granted patent

22 Who may be granted patent

Power of patentee to deal with patent

23 Power of patentee to deal with patent

Co-owners of patent

24 Co-ownership of patent

25 Rights of buyers from co-owners of patent

26 Power of Commissioner to give directions to co-owners

27 Miscellaneous provisions concerning directions

Disputes as to inventions made by employees

28 Disputes as to inventions made by employees

29 Employment Relations Authority or Commissioner may apportion benefit of invention and of patent

30 Review of Commissioner’s decision

Part 3
Process for obtaining grant of patent and other matters

Subpart 1Patent applications

31 Right to apply for patent

32 Application requirements

33 Commissioner may post-date application or specification

34 Divisional applications

35 Applicant must pay maintenance fee

Subpart 2Specifications

36 Complete and provisional specifications

37 Filing of complete specification after provisional specification has been filed

38 Contents of provisional specification

39 Contents of complete specification

40 Amendment of complete specification before acceptance

41 Supply of drawings

42 Specifications for micro-organisms

43 Deposit requirements for micro-organisms

44 Deposit requirements treated as satisfied in certain circumstances

45 Micro-organism ceasing to be reasonably available

Subpart 3Treaty applications

46 Treaty application treated as application accompanied by complete specification

47 Description, claims, and drawings

48 International filing date

49 Commissioner must provide international filing date in certain circumstances

50 Amendments to documents forming part of complete specification

51 Treaty application void

52 Requirements for examination of Treaty application

Subpart 4Convention applications

53 Convention applicants may make convention applications

54 How convention applications are made and dealt with

55 Withdrawn, abandoned, or refused basic applications

56 Basic applications for 2 or more cognate inventions

Subpart 5Priority dates

57 Priority date of claims of complete specification

58 Priority date if complete specification filed for single application

59 Priority date if complete specification filed for 2 or more applications

60 Priority date for convention applications

61 Priority date for Treaty applications that claim priority of earlier applications

62 Rules that apply if 2 or more priority dates apply or other rules do not apply

63 Priority date in case of lack of entitlement in respect of another patent application

Subpart 6Examination

64 Request for examination

65 Examination

66 Commissioner may refuse to proceed with application or require application or specification to be amended

67 Applicants must act by deadline if deadline set by Commissioner

68 Application treated as abandoned if applicant fails to act within set deadline

69 Commissioner must examine amended specification

70 Duty to inform Commissioner of search results

Subpart 7Acceptance and publication

Time for putting application in order for acceptance

71 Time for putting application in order for acceptance

72 Time may be extended if appeal pending or possible

73 Notice of entitlement must be filed before acceptance

Acceptance

74 Acceptance of complete specification

75 Applicant may request Commissioner to postpone acceptance

Publication

76 Publication in case of applications other than Treaty applications

77 Publication in case of divisional applications made as provided for in section 34

78 Documents open to public inspection

79 Publication of Treaty applications

80 Certain documents not to be published

81 Effect of publication of complete specification

82 Court must consider whether it would be reasonable to expect that patent would be granted

Subpart 8Amendment of specifications after acceptance

83 General rules concerning amendments of specifications after acceptance

84 Amendment must be published in journal

85 Amendment of specification with leave of Commissioner

86 Request for leave to amend must be published in journal

87 Opposition to proposed amendment

88 Provisions concerning amendments with leave of Commissioner do not apply in certain circumstances

89 Amendment of specification with leave of court

Subpart 9Assertions by third parties, opposition, and re-examinations

Assertions by third parties within prescribed period

90 Assertions by third parties on novelty and inventive step

91 Commissioner must consider and deal with notice in prescribed manner

Opposition to grant of patent

92 Opposition to grant of patent

93 Hearing and decision by Commissioner

Re-examination after acceptance

94 Re-examination before patent is granted

95 Re-examination after patent is granted

96 Relationship between re-examination and other proceedings

97 Report on re-examination

98 Refusal to grant patent: re-examination before grant

99 Revocation of patent: re-examination after grant

100 Person who requests re-examination has no right to participate further in re-examination proceeding

Subpart 10Grant of patent

General rules

101 When patent must be granted

102 Validity of patent not guaranteed

103 Patent date

104 Patent granted for one invention only

105 Amendment of patent granted to deceased person or to body corporate that has been liquidated or wound up

Patents of addition

106 Patents of addition

107 Commissioner may revoke patent for improvement or modification and grant patent of addition

108 Restrictions on granting of patents of addition

109 Term of patent of addition

110 Renewal fees for patents of addition

111 Provisions concerning inventive step requirement and validity in connection with patents of addition

Subpart 11Revocation and surrender of patents

112 Revocation of patent

113 Provisions concerning applications for revocation made to Commissioner

114 Grounds for revoking patent

115 Court may also revoke patent if patentee, without reasonable cause, refuses request of government department to exploit invention

116 Surrender of patent

Subpart 12Restoration of lapsed patents and restoration of patent applications

Restoration of lapsed patents

117 Restoration of lapsed patents

118 Request must describe circumstances that led to failure to pay renewal fee

119 Persons who may make request for restoration of patent

120 When request for restoration of patent may be made

121 Commissioner must give person who made request reasonable opportunity to be heard if not satisfied that prima facie case has been made out for restoration

122 Commissioner to publish request in journal

123 Notice of opposition and reasonable opportunity to be heard

124 Order to be made on payment of unpaid fees

Restoration of patent applications

125 Request for restoration of void or abandoned patent applications

126 When request for restoration of application may be made

127 Notice of opposition

128 Commissioner to determine matter

Subpart 13Miscellaneous provisions

Substitution of applicants

129 Persons claiming under assignment or agreement or by operation of law

130 Death of applicant

131 Disputes between interested parties

Provisions for secrecy of certain inventions

132 Directions in relation to inventions concerning defence

133 Commissioner must give notice to Minister of Defence

134 Minister of Defence must consider whether publication would be prejudicial to defence of New Zealand

135 Commissioner must revoke directions on receipt of notice from Minister of Defence

136 Acceptance of complete specification while directions in force

137 Maintenance fees and renewal fees not payable while directions in force

138 Offence to fail to comply with directions

139 Liability of directors and managers if body corporate commits offence

Part 4
Infringement, other patent proceedings, and matters affecting patent ownership

Subpart 1Infringement proceedings

What constitutes infringement

140 Infringement by doing anything patentee has exclusive right to do

141 Infringement by supplying means to infringe to another person

142 Presumption that product produced by infringing process

What does not constitute infringement

143 No infringement for experimental use

144 No infringement by use in or from foreign vessels, aircraft, or vehicles

145 No infringement for use to produce information required by law

146 No infringement for prior use of invention

Counterclaim for revocation of patent

147 Defendant may counterclaim for revocation of patent

Bringing infringement proceeding in court

148 Who may bring infringement proceeding

149 When proceeding may be brought

150 Right to bring infringement proceeding if registrable assignment or licence has occurred

151 Proceeding brought by exclusive licensee

Relief for infringement

152 Types of relief available for infringement

153 Court must not award damages or account of profits if innocent infringement

154 Court must refuse damages or account of profits for infringement before amendment to accepted specification

155 Court may refuse damages or account of profits if renewal fees not paid

156 Limits on damages and accounts of profits do not affect power to grant injunction

157 Court may grant relief for partially valid patent

158 Court may grant costs for subsequent proceeding if validity of specifications contested

Subpart 2Declarations of non-infringement

159 Application for declaration of non-infringement

160 Proceeding for declaration of non-infringement

161 Costs in declaration of non-infringement

162 Validity of patent not at issue in proceeding for, and not affected by, declaration of non-infringement

Subpart 3Standing of Attorney-General

163 Attorney-General may appear in patent proceeding

164 Parties must give notice to Solicitor-General if questioning patent validity

Subpart 4Patent dealings, patent licences, and transmission of interests in patents

Registration of assignments, licences, and other interests in patents

165 Application for registration of assignments, licences, and other interests in patents

166 Registration of assignments, licences, and other interests in patents

Vesting of patents and patent applications without probate or letters of administration

167 Commissioner may vest patent or patent application without probate or letters of administration

Termination of sales, leases, and licences of patented products and processes if patent no longer in force

168 Termination of sales, leases, and licences of patented products and processes if patent no longer in force

Subpart 5Compulsory licences

Compulsory licences for supply of patented inventions predominantly in New Zealand

169 Application for compulsory licence where market is not being supplied, or is not being supplied on reasonable terms, in New Zealand

170 Court may order grant of licence

Compulsory licences for export of pharmaceutical products

171 Court may order grant of licence for export of pharmaceutical products to certain countries

172 Secretary of Foreign Affairs and Trade may publish notices that specify eligible countries

173 Terms of licence

174 Copy of order must be sent to Commissioner and Secretary of Foreign Affairs and Trade

General provisions relating to compulsory licences

175 Remuneration payable to patentee

176 Person applying for licence must have made efforts to obtain licence from patentee on reasonable commercial terms and conditions

177 Exercise of powers on applications under section 169, 171, or 175

178 Order for grant of licence has effect as deed

Subpart 6Crown use of inventions

179 Crown use of inventions

180 Order in Council may declare use to be Crown use

181 Protection of buyers

182 Rights of third parties in respect of Crown use

183 Reference of disputes concerning Crown use

184 Court may refer matter to special or official referee or arbitrator

185 Special provisions as to Crown use during emergency

186 Nature and scope of rights under section 179

187 Duty to inform nominated person or patentee

188 Nominated person or patentee entitled to remuneration

Subpart 7Mention of inventor in patent, specification, and patents register

189 Mention of inventor in patent, specification, and patents register

190 Request or claim to be mentioned as inventor

191 Request or claim may not be considered in certain circumstances

192 Commissioner must give notice of claim and opportunity to be heard

193 Certificate concerning mention of inventor

Part 5
Administrative and miscellaneous provisions

Subpart 1Patents register and other information on patents and patent applications

Patents register

194 Patents register

195 Purpose of patents register

196 Form of patents register

197 Contents of patents register

Searches of patents register and obtaining patent information

198 Search of patents register

199 Requests for patent information and certified copies

Changes to patents register and other official documents

200 Changes to patents register

201 Commissioner may correct own mistakes in patents register, etc

202 Commissioner may correct other persons’ mistakes in patents register, etc

203 Court may rectify patents register

Evidence

204 Evidence: patents register and patents

205 Evidence: anything done by Commissioner

Journal and other publications

206 Commissioner must publish journal

207 Commissioner may keep or publish indexes, etc

Subpart 2General provisions on proceedings of Commissioner

Hearing before exercise of Commissioner's discretion

208 Hearing before exercise of Commissioner's discretion

Giving evidence to Commissioner

209 How to give evidence to Commissioner in proceedings

210 Commissioner may receive evidence on oath

211 Issuing of summons by Commissioner

Power to award costs

212 Commissioner may award costs

213 Commissioner may require security for costs

Appeals against Commissioner’s decisions

214 Appeals against decisions of Commissioner

215 Appeals against decisions of court on appeal

Costs of Commissioner

216 Costs of Commissioner in proceeding

Subpart 3Establishment and operation of administrative bodies and officers for patents

Commissioner and Assistant Commissioners

217 Commissioner and Assistant Commissioners

218 Functions of Commissioner

219 Powers of Assistant Commissioners of Patents

220 Power of Commissioner to delegate

221 Liability of Commissioner and others

Intellectual Property Office of New Zealand

222 Intellectual Property Office of New Zealand

223 Opening hours of Intellectual Property Office of New Zealand

224 Closing of Intellectual Property Office of New Zealand at short notice

Māori advisory committee

225 Appointment and membership of Māori advisory committee

226 Functions of Māori advisory committee

227 Effect of advice from Māori advisory committee

228 Māori advisory committee may regulate own procedure

Subpart 4Other miscellaneous provisions

Filing and administration of Act

229 Electronic filing and administration of Act

Power to extend time limits

230 Commissioner may extend time limits for delays by Commissioner

231 Commissioner may extend time limits for certain filing requirements or for delivery failures

232 Requirements for applying and granting extensions of time limits under section 231

Serving of other notices

233 Service of notices (other than those given to or by Commissioner)

Requirements for summons

234 Requirements for summons

235 Witnesses’ fees, allowances, and expenses

236 Offence of failing to comply with summons

Fees and other money paid under Act

237 Fees and penalties payable under Act or regulations

238 Payment and application of fees and other money paid under this Act

Miscellaneous

239 Protection of Royal arms, etc

240 Saving for certain Crown rights

241 Act does not apply to Tokelau

242 Application of Personal Property Securities Act 1999

Subpart 5Regulations

243 Regulations

244 Supplementary empowering provision

245 Regulations providing for transitional matters and orderly implementation of Act

246 Orders in Council as to convention countries

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

247 Repeal of Patents Act 1953 and consequential revocations

248 Preservation of patent attorney provisions

249 Consequential amendments to other enactments

250 Preservation of various regulations and orders

251 Validation of fees

252 Validation of priority date for Treaty applications

Transitional provisions for patents and patent applications

253 Outline of transitional provisions for patents

254 Transitional provision for patents granted under Patents Act 1953

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

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

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

258 Patents Act 1953 applies to divisional applications dated before commencement

259 Which Act applies to Treaty applications

Transitional provisions for other applications, notices, and requests

260 Transitional provision for other applications, notices, or requests

Transitional provision for matters in force on commencement

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

Transitional provision for patents register

262 Transitional provision for patents register

Transitional provisions for offences and infringements

263 Transitional provision for offences and infringements

Transitional provisions as to statutory references

264 Transitional provision as to statutory references to corresponding matters

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

Transitional provisions for Commissioner and Assistant Commissioners

266 Transitional appointment of Commissioner and Assistant Commissioners

267 Transitional power for Commissioner

Schedule
Consequential amendments

Legislative history


The Parliament of New Zealand enacts as follows: