Hon Judith Tizard
Government Bill
235—1
Explanatory note
1 Title
2 Commencement
Part 1Preliminary
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
Act binds the Crown
11 Act binds the Crown
Part 2Patentable inventions and patent rights
Subpart 1—Patentable inventions
General rules concerning what is patentable
12 Patent may be granted for patentable inventions only
13 Patentable inventions
Exclusions from patentability
14 Inventions contrary to public order or morality not patentable inventions
15 Other exclusions
Subpart 2—Patent rights
16 Nature of patent
17 Exclusive rights given by patent
18 Extent, effect, and form of patent
19 Term of patent
20 Extension of period for paying renewal fees
Subpart 3—Patent ownership
Who may be granted patent
21 Who may be granted patent
Power of patentee to deal with patent
22 Power of patentee to deal with patent
Co-owners of patent
23 Co-ownership of patent
24 Rights of buyers from co-owners of patent
25 Power of Commissioner to give directions to co-owners
26 Miscellaneous provisions concerning directions
Disputes as to inventions made by employees
27 Disputes as to inventions made by employees
28 Employment Relations Authority or Commissioner may apportion benefit of invention and of patent
29 Review of Commissioner’s decision
Part 3Process for obtaining grant of patent and other matters
Subpart 1—Patent applications
30 Right to apply for patent
31 Application requirements
32 Commissioner may post-date application or specification
33 Divisional applications
Subpart 2—Specifications
34 Complete and provisional specifications
35 Filing of complete specification after provisional specification has been filed
36 Contents of provisional specification
37 Contents of complete specification
38 Supply of drawings
39 Specifications for micro-organisms
40 Deposit requirements for micro-organisms
41 Deposit requirements treated as satisfied in certain circumstances
42 Micro-organism ceasing to be reasonably available
Subpart 3—Treaty applications
43 Treaty application treated as application accompanied by complete specification
44 Description, claims, and drawings
45 International filing date
46 Commissioner must provide international filing date in certain circumstances
47 Amendments to documents forming part of complete specification
48 Treaty application void
49 Requirements for examination of Treaty application
Subpart 4—Convention applications
50 Convention applicants may make convention applications
51 How convention applications are made and dealt with
52 Withdrawn, abandoned, or refused basic applications
53 Basic applications for 2 or more cognate inventions
Subpart 5—Priority dates
54 Priority date of claims of complete specification
55 Priority date if complete specification filed for single application
56 Priority date if complete specification filed for 2 or more applications
57 Priority date for convention applications
58 Priority date for Treaty applications
59 Rules that apply if 2 or more priority dates apply or other rules do not apply
Subpart 6—Examination
60 Examination
61 Commissioner may refuse to proceed with application or require application or specification to be amended
62 Applicants must act by deadline if deadline set by Commissioner
63 Application treated as abandoned if applicant fails to act within set deadline
64 Commissioner must examine amended specification
65 Duty to inform Commissioner of search results
66 Consequences of breach of duty
Subpart 7—Acceptance and publication
Time for putting application in order for acceptance
67 Time for putting application in order for acceptance
68 Time may be extended if appeal pending or possible
69 Notice of entitlement must be filed before acceptance
Acceptance
70 Acceptance of complete specification
71 Applicant may request Commissioner to postpone acceptance
Publication
72 Publication
73 Publication in case of divisional applications made as provided for in section 33
74 Documents open to public inspection
75 Publication of Treaty applications
76 Certain documents not to be published
77 Effect of publication of complete specification
78 Defence for period between complete specification becoming open to public inspection and acceptance
Subpart 8—Amendment of specifications after acceptance
79 General rules concerning amendments of specifications after acceptance
80 Amendment must be published in journal
81 Amendment of specification with leave of Commissioner
82 Request for leave to amend must be published in journal
83 Opposition to proposed amendment
84 Provisions concerning amendments with leave of Commissioner do not apply in certain circumstances
85 Amendment of specification with leave of court
Subpart 9—Assertions by third parties and re-examinations
Assertions by third parties within prescribed period
86 Assertions by third parties on novelty and inventive step
87 Commissioner must consider and deal with notice in prescribed manner
Re-examination after acceptance
88 Re-examination of complete specification before patent is granted
89 Re-examination of complete specification after patent is granted
90 Report on re-examination
91 Refusal to grant patent: re-examination before grant
92 Revocation of patent: re-examination after grant
Subpart 10—Grant of patent
General rules
93 When patent must be granted
94 Validity of patent not guaranteed
95 Patent date
96 Patent granted for one invention only
97 Amendment of patent granted to deceased person or to person that has been liquidated or wound up
Patents of addition
98 Patents of addition
99 Commissioner may revoke patent for improvement or modification and grant patent of addition
100 Restrictions on granting of patents of addition
101 Term of patent of addition
102 Renewal fees for patents of addition
103 Provisions concerning inventive step requirement and validity in connection with patents of addition
Subpart 11—Revocation and surrender of patents
104 Revocation of patent
105 Provisions concerning applications for revocation made to Commissioner
106 Grounds for revoking patent
107 Priority date in case of obtaining
108 Court may also revoke patent if patentee, without reasonable cause, refuses request of government department to exploit invention
109 Surrender of patent
Subpart 12—Restoration of lapsed patents and restoration of patent applications
Restoration of lapsed patents
110 Restoration of lapsed patents
111 Request must describe circumstances that led to failure to pay renewal fee
112 Persons who may make request for restoration of patent
113 When request for restoration of patent may be made
114 Commissioner must give applicant reasonable opportunity to be heard if not satisfied that prima facie case has been made out for restoration
115 Commissioner to publish request in journal
116 Notice of opposition and reasonable opportunity to be heard
117 Order to be made on payment of unpaid fees
Restoration of patent applications
118 Request for restoration of void or abandoned patent applications
119 When request for restoration of application may be made
120 Notice of opposition
121 Commissioner to determine matter
Subpart 13—Miscellaneous provisions
Substitution of applicants
122 Persons claiming under assignment or agreement or by operation of law
123 Death of applicant
124 Disputes between interested parties
Provisions for secrecy of certain inventions
125 Directions in relation to inventions concerning defence
126 Commissioner must give notice to Minister of Defence
127 Minister of Defence must consider whether publication would be prejudicial to defence of New Zealand
128 Commissioner must revoke directions on receipt of notice from Minister of Defence
129 Acceptance of complete specification while directions in force
130 Renewal fees not payable while directions in force
131 Offence to fail to comply with directions
132 Liability of directors and managers if body corporate commits offence
Part 4Infringement, other patent proceedings, and matters affecting patent ownership
Subpart 1—Infringement proceedings
What constitutes infringement
133 Infringement by doing anything patentee has exclusive right to do
134 Infringement by supplying means to infringe to another person
135 Presumption that product produced by infringing process
What does not constitute infringement
136 No infringement for experimental use
137 No infringement by use in or from foreign vessels, aircraft, or vehicles
138 No infringement for use to produce information required by law
Counterclaim for revocation of patent
139 Defendant may counterclaim for revocation of patent
Bringing infringement proceedings in court
140 Who may bring infringement proceedings
141 When and how proceedings may be brought
142 Proceedings brought by exclusive licensee
Relief for infringement
143 Types of relief available for infringement
144 Court must not award damages or account of profits if innocent infringement
145 Court must refuse damages or account of profits for infringement before amendment to accepted specification
146 Court may refuse damages or account of profits if renewal fees not paid
147 Limits on damages and accounts of profits do not affect power to grant injunction
148 Court may grant relief for partially valid patent
149 Court may grant costs for subsequent proceedings if validity of specifications contested
150 Infringement proceedings must be tried before Judge alone
Subpart 2—Declarations of non-infringement
151 Court may make declaration of non-infringement
152 When proceedings for declaration of non-infringement may be brought
153 Costs in declaration of non-infringement
154 Validity of patent not at issue in proceedings for, and not affected by, declaration of non-infringement
Subpart 3—Other provisions for proceedings relating to patents
Notice and registration requirements for proceedings on interests in patents
155 Notice must be given before bringing civil proceedings on unregistered interests in patents
156 Interests must be registered at least 1 month before bringing civil proceedings
157 Application of Limitation Act 1950
Standing for Attorney-General
158 Attorney-General may appear in patent proceedings
159 Parties must give notice to Solicitor-General if questioning patent validity
Subpart 4—Patent dealings, patent licences, and transmission of interests in patents
Registration of assignments, licences, and other interests in patents
160 Application for registration of assignments, licences, and other interests in patents
161 Registration of assignments, licences, and other interests in patents
Vesting of patents and patent applications without probate or letters of administration
162 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
163 Termination of sales, leases, and licences of patented products and processes if patent no longer in force
Subpart 5—Compulsory licences
164 Compulsory licences
165 Court may order grant of licence
166 Remuneration payable to patentee
167 Licence must not be granted in certain circumstances
168 Exercise of powers on applications under section 164 or 166
169 Order for grant of licence has effect as deed
Subpart 6—Crown use of patented inventions
170 Crown use of patented inventions
171 Regulations may declare use to be Crown use
172 Protection of buyers
173 Rights of third parties in respect of Crown use
174 Reference of disputes concerning Crown use
175 Court may refer matter to special or official referee or arbitrator
176 Special provisions as to Crown use during emergency
177 Nature and scope of rights under section 170
178 Duty to inform patentee
179 Patentee entitled to remuneration
Subpart 7—Mention of inventor in patent, specification, and patents register
180 Mention of inventor in patent, specification, and patents register
181 Request or claim to be mentioned as inventor
182 Commissioner must give notice of claim and opportunity to be heard
183 Certificate concerning ownership
Part 5Patent attorney profession
Subpart 1—Restrictions on providing patent attorney services
184 Title of patent attorney
185 Title of patent attorney company
186 Title of patent attorney partnership
187 Only patent attorneys, and patent attorney companies and partnerships, may provide patent attorney services
188 False representations
189 Liability of directors and managers if body corporate commits offence
190 Exception for lawyers and incorporated law firms to provide limited patent attorney services
191 Period of grace for personal representatives of patent attorneys
192 Exception for pre-1955 companies
Subpart 2—Registration and certificates
193 Who is qualified to be registered as patent attorney
194 Determining qualification requirements for registration
195 Matters that may be taken into account in determining whether applicant is fit and proper person
196 Registration certificates
197 Failure to pay renewal fee for registration
198 When registration may or must be removed or suspended
199 Effect of suspension
200 Other matters relating to suspension and removal of registration
Subpart 3—Standards of conduct and discipline
Code of conduct
201 Patent attorneys and patent attorney companies subject to code of conduct
202 Purpose and contents of code of conduct
203 Institute must develop code of conduct
204 Board may approve draft code of conduct
205 Publication and application of code of conduct
206 Status of code of conduct
207 Amendments and replacements of code of conduct
Disciplining of patent attorneys and patent attorney companies
208 Who is covered by disciplinary regime
209 Complaints and referrals may be made under disciplinary regime
210 Board may direct parties to explore use of alternative dispute resolution for complaints
211 Board’s powers of investigation
212 Offence of obstruction
213 Evidence
214 Issuing of summons by Board
215 Protection of persons appearing
216 Grounds for discipline of patent attorneys and patent attorney companies
217 Disciplinary penalties
218 Orders for payment of costs
219 Board must notify Commissioner of orders
220 Effect of order to pay money on right to damages
221 Orders enforceable against former patent attorneys
Subpart 4—Appeals under this Part
222 Right of appeal
223 Decisions to have effect pending determination of appeal
224 Procedure on appeal
225 Court’s decision final
226 Court may refer matter back for reconsideration
227 Orders as to costs
228 Orders as to publication of names or particulars
229 Appeal on question of law
Subpart 5—Register of patent attorneys
230 Commissioner to establish and maintain register of patent attorneys
231 Purpose of register of patent attorneys
232 Form of register of patent attorneys
233 Contents of register of patent attorneys
234 Search of register of patent attorneys
235 Obligation to notify Commissioner of changes to details in register of patent attorneys
236 Changes to register of patent attorneys
Subpart 6—Patent Attorneys’ Standards Board
237 Patent Attorneys’ Standards Board of New Zealand
238 Functions of Board
239 Membership of Board
240 Further provisions relating to Board and its members
Part 6Administrative and miscellaneous provisions
Subpart 1—Patents register and other information on patents and patent applications
Patents register
241 Patents register
242 Purpose of patents register
243 Form of patents register
244 Contents of patents register
Searches of patents register and obtaining patent information
245 Search of patents register
246 Requests for patent information
247 Loss or destruction of patent
Changes to patents register and other official documents
248 Changes to patents register
249 Commissioner may correct own mistakes in patents register, etc
250 Commissioner may correct other persons’ mistakes in patents register, etc
251 Court may rectify patents register
Evidence
252 Evidence: patents register and patents
253 Evidence: anything done by Commissioner
Journal and other publications
254 Commissioner must publish journal
255 Commissioner may keep or publish indexes, etc
Subpart 2—General provisions on proceedings of Commissioner
Giving evidence to Commissioner
256 How to give evidence to Commissioner in proceedings
257 Commissioner may receive evidence on oath
258 Issuing of summons by Commissioner
Power to award costs
259 Commissioner may award costs
260 Commissioner or court may require security for costs
Appeals of Commissioner’s decisions
261 Appeals of decisions of Commissioner
262 Decisions to have effect pending determination of appeal
263 Procedure on appeal
264 Appeals of decisions of court on appeal
Costs of Commissioner
265 Costs of Commissioner in proceedings
Subpart 3—Establishment and operation of administrative bodies for patents
Commissioner and Assistant Commissioners
266 Commissioner and Assistant Commissioners
267 Functions of Commissioner
268 Powers of Assistant Commissioners of Patents
269 Power of Commissioner to delegate
270 Annual report of Commissioner
271 Liability of Commissioner and others
Intellectual Property Office of New Zealand
272 Intellectual Property Office of New Zealand
273 Opening hours of Intellectual Property Office of New Zealand
274 Closing of Intellectual Property Office of New Zealand at short notice
Māori advisory committee
275 Appointment and membership of Māori advisory committee
276 Functions of Māori advisory committee
277 Effect of advice from Māori advisory committee
278 Māori advisory committee may regulate own procedure
Subpart 4—Other miscellaneous provisions
Power to extend time limits
279 Commissioner may extend time limits for delays by Commissioner
280 Commissioner may extend time limits for certain filing requirements or for delivery failures
281 Requirements for applying and granting extensions of time limits under section 280
Serving notices
282 Service of notices
Requirements for summons
283 Requirements for summons
284 Witnesses’ fees, allowances, and expenses
285 Offence of failing to comply with summons
Fees and other money paid under Act
286 Fees and penalties payable under Act or regulations
287 Payment and application of fees and other money paid under this Act
Miscellaneous
288 Protection of Royal arms, etc
289 Saving for Royal prerogative and certain Crown rights
290 Act does not apply to Tokelau
291 Application of Personal Property Securities Act 1999
Subpart 5—Regulations
292 Regulations
293 Supplementary empowering provision
294 Orders in Council as to convention countries
Subpart 6—Repeals, amendments, validation, and saving and transitional provisions
295 Repeal of Patents Act 1953 and consequential revocations
296 Consequential amendments to other enactments
297 Preservation of various regulations and orders
298 Validation of fees
Transitional provisions for patents and patent applications
299 Outline of transitional provisions for patents
300 Transitional provision for patents granted under Patents Act 1953
301 Patent applications made under Patents Act 1953 continue under that Act
302 Patents Act 1953 ceases to apply to patent application if complete specification later filed
303 This Act applies if patent application under Patents Act 1953 is post-dated
304 Patents Act 1953 applies to divisional applications dated before commencement
305 Which Act applies to Treaty applications
Transitional provisions for other applications, notices, and requests
306 Transitional provision for other applications, notices, or requests
Transitional provision for matters in force on commencement
307 Transitional provision for orders, directions, and other matters in effect on commencement
Transitional provision for patents register and register of patent attorneys
308 Transitional provision for patents register and register of patent attorneys
Transitional provisions for existing offences and infringements
309 Transitional provision for existing offences and infringements
Transitional provisions for patent attorneys
310 Outline of transitional provisions for patent attorneys
311 Transitional provision for patent attorneys registered under Patents Act 1953
312 Transitional provision for applicants for registration
313 Transitional provision for lawyers
Transitional provisions for Commissioner and Assistant Commissioners
314 Transitional appointment of Commissioner and Assistant Commissioners
315 Transitional power for Commissioner
Schedule 1Further provisions applying to Board and its members
Schedule 2Consequential amendments
The Parliament of New Zealand enacts as follows: