1 Title

2 Commencement

3 Purposes

4 Overview

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 Act binds the Crown

12 Patent may be granted for patentable inventions only

13 Patentable inventions

14 Inventions contrary to public order or morality not patentable inventions

15 Other exclusions

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

21 Who may be granted patent

22 Power of patentee to deal with 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

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

30 Right to apply for patent

31 Application requirements

32 Commissioner may post-date application or specification

33 Divisional applications

33 Divisional applications

33A Applicant must pay maintenance fee

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

37A Amendment of complete specification before acceptance

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

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

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52 Withdrawn, abandoned, or refused basic applications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

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

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

59A Priority date in case of lack of entitlement in respect of another patent application

59B Request for 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

67 Time for putting application in order for acceptance

68 Time may be extended if appeal pending or possible

68 Time may be extended if appeal pending or possible

69 Notice of entitlement must be filed before acceptance

70 Acceptance of complete specification

71 Applicant may request Commissioner to postpone acceptance

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

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

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

86 Assertions by third parties on novelty and inventive step

87 Commissioner must consider and deal with notice in prescribed manner

87A Opposition to grant of patent

87B Hearing and decision by Commissioner

88 Re-examination before patent is granted

89 Re-examination after patent is granted

89A Relationship between re-examination and other proceedings

90 Report on re-examination

91 Refusal to grant patent: re-examination before grant

92 Revocation of patent: re-examination after grant

92A Person who requests re-examination has no right to participate further in re-examination proceeding

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 body corporate that has been liquidated or wound up

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

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

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 person who made request 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

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

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

123 Death of applicant

124 Disputes between interested parties

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 Maintenance fees and 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

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

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

138A No infringement for prior use of invention

139 Defendant may counterclaim for revocation of patent

140 Who may bring infringement proceeding

141 When proceeding may be brought

141A Right to bring infringement proceeding if registrable assignment or licence has occurred

142 Proceeding brought by exclusive licensee

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 proceeding if validity of specifications contested

150 Infringement proceedings must be tried before Judge alone

151 Court may make declaration of non-infringement

152 When proceedings for declaration of non-infringement may be brought

151 Application for declaration of non-infringement

152 Proceeding for declaration of non-infringement

153 Costs in declaration of non-infringement

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

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

158 Attorney-General may appear in patent proceeding

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

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

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

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

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

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

165 Court may order grant of licence

165A Court may order grant of licence for export of pharmaceutical products to certain countries

165B Secretary of Foreign Affairs and Trade may publish notices that specify eligible countries

165C Terms of licence

165D Copy of order must be sent to Commissioner and Secretary of Foreign Affairs and Trade

166 Remuneration payable to patentee

167 Licence must not be granted in certain circumstances

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

168 Exercise of powers on applications under section 164, 165A, or 166

169 Order for grant of licence has effect as deed

170 Crown use of inventions

171 Order in Council 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 nominated person or patentee

179 Nominated person or patentee entitled to remuneration

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

181 Request or claim to be mentioned as inventor

181A Request or claim may not be considered in certain circumstances

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

183 Certificate concerning mention of inventor

241 Patents register

242 Purpose of patents register

243 Form of patents register

244 Contents of patents register

245 Search of patents register

246 Requests for patent information

247 Loss or destruction of patent

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

252 Evidence: patents register and patents

253 Evidence: anything done by Commissioner

254 Commissioner must publish journal

255 Commissioner may keep or publish indexes, etc

255A Hearing before exercise of Commissioner's discretion

256 How to give evidence to Commissioner in proceedings

257 Commissioner may receive evidence on oath

258 Issuing of summons by Commissioner

259 Commissioner may award costs

260 Commissioner may require security for costs

261 Appeals against decisions of Commissioner

262 Decisions to have effect pending determination of appeal

263 Procedure on appeal

264 Appeals against decisions of court on appeal

265 Costs of Commissioner in proceeding

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

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

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

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

282 Service of notices

283 Requirements for summons

284 Witnesses’ fees, allowances, and expenses

285 Offence of failing to comply with summons

286 Fees and penalties payable under Act or regulations

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

288 Protection of Royal arms, etc

289 Saving for certain Crown rights

290 Act does not apply to Tokelau

291 Application of Personal Property Securities Act 1999

292 Regulations

293 Supplementary empowering provision

294 Orders in Council as to convention countries

295 Repeal of Patents Act 1953 and consequential revocations

295A Preservation of patent attorney provisions

296 Consequential amendments to other enactments

297 Preservation of various regulations and orders

297 Preservation of various regulations and orders

298 Validation of fees

298A Validation of priority date for Treaty 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

306 Transitional provision for other applications, notices, or requests

307 Transitional provision for orders, directions, and other matters in effect on commencement

308 Transitional provision for patents register

309 Transitional provision for offences and infringements

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

314 Transitional appointment of Commissioner and Assistant Commissioners

315 Transitional power for Commissioner