Patents Bill

Government Bill

235—2

As reported from the Commerce Committee

Commentary

Recommendation

The Commerce Committee has examined the Patents Bill and recommends that it be passed with the amendments shown.

Introduction

This bill seeks to repeal and replace the Patents Act 1953. The Patents Act is modelled on the now repealed United Kingdom Patents Act 1949, and has a low threshold for patentability compared with most other countries. This low threshold can lead to broader patent rights being granted in New Zealand than in other countries, which can disadvantage New Zealand businesses and consumers, as technology that may be freely available in other countries can be covered by patents in New Zealand. This can discourage innovation and inhibit growth in productivity and exports.

The proposed patents regime would align the criteria for granting a patent with international practice. The new regime would strengthen the criteria for granting a patent by introducing an “absolute novelty” standard, and examine patent applications for usefulness and the presence of an “inventive step” (that is, something not obvious to a person skilled in the art).¹

Strengthening the standards would require the Intellectual Property Office of New Zealand to increase the number of patent examiners and increase the resources available for patent examination. The office operates on a cost-recovery basis. Therefore, extra costs would be recovered by increasing the fees to applicants at no additional cost to the Government.

The bill seeks to simplify the procedures for granting a patent, streamline the procedures for challenging a patent, and expand revocation procedures to allow any person, at any time, to apply to the Commissioner of Patents for a grant of patent to be revoked. This would replace the existing 12-month-after-grant limit, and is expected to be simpler and cheaper than applying to the High Court for the grant of a patent to be revoked. The ability to apply to the High Court for a revocation would, however, be retained.

The bill contains provision for patents to be re-examined by the Intellectual Property Office of New Zealand. This process could be invoked at any time after a patent application is accepted. Grounds for re-examination would be an assertion that the invention was not new or did not involve an inventive step.

Exclusions to patentability

It is not uncommon to exclude for policy reasons some inventions that would otherwise meet patent requirements. This bill would exclude the following:

methods of medical treatment of human beings
human beings, and biological processes for their generation
plant varieties
inventions whose commercial exploitation would be contrary to public order or morality.

These exclusions would reaffirm that methods of medical treatment are not patentable in New Zealand, support the Royal Commission on Genetic Modification’s recommendation to exclude human beings, and incorporate the provisions of Article 27.2 of the World Trade Organisation Agreement on Trade Related Aspects of Intellectual Property Rights.

Article 27.2 requires that it is the commercial exploitation of the invention, rather than the nature of the invention itself, that must be objectionable for this exclusion to be invoked. It is intended that this exclusion would be used infrequently, in relation to inventions where commercial exploitation was likely to be offensive to any significant section of the community, including Māori.

Plant varieties would be excluded as they are protected under the Plant Variety Rights Act 1987.

Interests of Māori

This bill seeks to provide adequate incentives for innovation and technology transfer while ensuring that the interests of Māori in their traditional knowledge and indigenous plants and animals are protected. The bill would establish a Māori Advisory Committee to advise the Commissioner (on request) whether an invention described in a patent application was derived from Māori traditional knowledge or from indigenous plants and animals. The advisory committee would advise on whether commercial exploitation of such inventions could be contrary to Māori values. The Commissioner would be required to consider the advice of the committee, but would not be bound by it.

A number of submitters referred to the Waitangi Tribunal inquiry into indigenous flora and fauna and cultural intellectual property (WAI 262), and suggested that reform of intellectual property and patent development activity should be deferred until the Tribunal released its report. We were advised that enactment of this bill would not preclude amendments as part of the Government response to the Tribunal’s report on WAI 262.

Dividing the Patent Bill

Part 5 of the bill as introduced seeks to update and modernise registration requirements, and align New Zealand’s regime with that of Australia. It does not provide for a single trans-Tasman framework for regulating patent attorneys, although such a development was signalled by the Governments of New Zealand and Australia in August 2009.

We received advice that substantial amendments to the provisions in Part 5 of the bill would be needed in order to implement a trans-Tasman framework. The timeframe for developing and implementing a single regulatory framework has yet to be agreed upon and we consider it unnecessary to delay the enactment of the rest of the Patents Bill meanwhile.

After due consideration, and in accordance with Standing Order 285, we resolved to transfer the provisions concerning the regulation of patent attorneys to a separate bill. This bill, which is designed to promote quality, expertise, and integrity in the profession of patent attorneys, has been renamed the Patent Attorneys Bill.

This commentary covers the key amendments that we recommend to the bill. It does not cover minor or technical amendments.

Part 1—Preliminary

Commencement

Clause 2(2) provides for substantial parts of the bill to be brought into force by the Governor-General by one or more Orders in Council. This provision was intended to allow time for regulations to be made to give effect to some parts of the bill. In 1996 the Regulations Review Committee recommended that commencement of legislation by Order in Council be used in “rare and exceptional circumstances” only, as it transfers a critical power from Parliament to the Executive Council.² In the light of this, we recommend inserting new clause 2(3) so that the parts of the Act not covered by clauses 2(1) and 2(2) would come into force on 31 December 2012.

Purposes

We recommend including in clause 3 the Statement of Public Policy Objective from the explanatory note of the bill. This is an important policy objective, which should be included to clarify the intention of the legislation.

Prior art base

Clause 8, subsection 3 is an anti-self collision provision intended to deal with situations where two patent applications are filed naming the same inventor, the persons entitled to be granted the patent are the same, the second of the two applications is filed before the first is published, and the second application claims patent rights over matter described (but not claimed) in the first. Few countries have anti-self collision provisions and internationally there is little support for them. We therefore recommend deleting subsection 3.

Part 2—Patentable inventions and patent rights

Exclusions from patentability

To provide some guidance as to when commercial exploitation of an invention could be considered contrary to public order or morality, we recommend amending clause 14 by inserting a non-exhaustive list of inventions, based on Article 6 of the European Biotechnology Directive, by way of example. We would support the development of guidelines by the Intellectual Property Office of New Zealand for applying clause 14.

Patentable inventions

We recommend amending clause 15 to include computer programs among inventions that may not be patented. We received many submissions concerning the patentability of computer programs. Under the Patents Act 1953 computer programs can be patented in New Zealand provided they produce a commercially useful effect.³ Open source, or free, software has grown in popularity since the 1980s. Protecting software by patenting is inconsistent with the open source model, and its proponents oppose it. A number of submitters argued that there is no “inventive step” in software development, as “new” software invariably builds on existing software. They felt that computer software should be excluded from patent protection as software patents can stifle innovation and competition, and can be granted for trivial or existing techniques. In general we accept this position.

While the bill would provide adequate incentives for innovation, however, we are aware of New Zealand companies who have invested in a significant number of software-related inventions, involving embedded software.⁴ We sought advice on the approach taken in other jurisdictions such as the United Kingdom and the United States, and whether legislation that would enable “embedded software” to be patentable might be practicable. After careful consideration we concluded that developing a clear and definitive distinction between embedded and other types of software is not a simple matter; and that, for the sake of clarity, a simple approach would be best. We received advice that our recommendation to include computer programs among the inventions that may not be patented would be unlikely to prevent the granting of patents for inventions involving embedded software.

We recommend that the Intellectual Property Office of New Zealand develop guidelines for inventions containing embedded software.

Part 3—Process for obtaining grant of patent and other matters

Subpart 1—Patent applications

Clause 33 concerns divisional applications, which are patent applications containing matter from previously filed applications. We are aware of concern that the lack of time limits might allow applicants to maintain pending applications for long periods, and a view that the practice of ante-dating set out in subsections 2 and 3 would be inappropriate if new matters were added. We consider that current practice addresses these concerns adequately, and therefore recommend amending clause 33 (Divisional applications) in order to codify what is already happening. We also recommend adding a requirement to comply with any further timing requirements prescribed in the regulations.

Maintenance fees

We recommend inserting new clause 33A to require an applicant to pay a maintenance fee. Failure to do so would result in the patent application lapsing. Combined with clause 292(2), this would act as a disincentive to maintain applications for inventions people are no longer actively interested in.

We considered whether any incentives should be provided to encourage the challenging of the grant of patents, through either a higher scale of costs or a period of exclusivity (regarding use of the invention) for any person who succeeded in overturning a patent. This is a significant matter, and after due consideration, we have concluded that it should be dealt with separately as a policy issue.

Subpart 2—Specifications

Clause 37 would require every complete specification to “particularly describe the invention and the method by which it is to be performed”. This provision is carried over from the Patents Act 1953, and was copied from the (now repealed) United Kingdom Patents Act 1949. No other major jurisdictions use this standard. Therefore, we recommend amending clause 37 (Contents of complete specification) by replacing “particularly describe the invention and the method by which it is to be performed” with the stricter requirement to “disclose the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art”.

We also recommend amending clause 37 to require that claims for an invention be “supported” by the description, replacing the current “fair basis” requirement. These proposed amendments are based on the wording of sections 14(3) and 14(5) of the United Kingdom Patents Act 1977.

Subpart 4—Convention applications

We also recommend amending clause 50(3) so that convention applicants would be required to file certain documents only at the request of the Commissioner.

Subpart 5—Priority dates

For the sake of consistency, we recommend amending clauses 57 and 58 by replacing reference to an “application for protection” with reference to a “basic application” as defined in clause 5; and replacing the term “fairly based” with “supported”, which we also recommend be done in clause 37. We further recommend amending clause 58 to make it clear that the filing date may be the filing date in New Zealand or a convention country.

We recommend inserting new clause 59A to allow the Commissioner to direct that a patent application or specification be treated as having been filed on the same date as a corresponding document for another application. This would replace clause 107, and would also cover opposition and re-examination proceedings where it was found that the nominated person or patentee in respect of the other application was not entitled to the patent.

Subpart 6—Examination

The bill as introduced would require all patent applications to be examined, including those that applicants no longer wished to pursue. Allowing the Commissioner to examine an application only when requested to do so by the applicant would serve the bill’s purpose of updating and simplifying the administrative aspects of the patent regime. We therefore recommend inserting new clause 59B (Request for examination). To facilitate the efficient management of patent examiners’ workloads, we also recommend empowering the Commissioner to direct applicants to request an examination.⁵

We recommend amending clause 60 by replacing “to the best of the Commissioner’s knowledge” with “on the balance of probabilities”. This would be consistent with clause 70 (Acceptance of complete specification). For the sake of consistency, we also recommend that the matters upon which the Commissioner must report under clause 60 be consistent with clause 70.

We recommend amending clause 62 (Applicants must act by deadline if deadline set by Commissioner) to ensure that applicants “must” make a substantive response, rather than take “reasonable steps to ensure that the response is a substantive response”, which is vague and unclear.

We recommend amending clause 65 (Duty to inform Commissioner of search results) so that the submission of search reports would not be compulsory, but at the request of the Commissioner. This would further simplify the administration of the patent regime.

Subpart 7—Acceptance and publication

The purpose of clause 67 is to allow applications to lapse if certain requirements are not complied with or satisfied within a prescribed period. For example, an applicant might fail to respond to a request from the Commissioner to submit a search result. We recommend amending clause 67 to clarify this purpose by inserting new subsection 1(ab) and deleting clause 66 which would no longer be necessary.

Clause 68 is intended to allow the Courts to extend the prescribed period for putting a patent application in order for acceptance if an appeal is pending. We recommend clarifying the intent of clause 68, and its relationship with clause 261 (Appeals of decisions of Commissioner).

We recommend deleting reference to a form in clause 76(2). Patents can be filed electronically and a “form”, in the conventional sense of paper copy, may not exist.

We recommend inserting new paragraph 76(1)(ab) to allow the confidentiality obligations incumbent on the Commissioner to be imposed on every person who is provided with documents by the Commissioner.

We recommend amending clause 77 (Effect of publication of complete specification) to clarify that proceedings may only be brought when all elements have been met, including the requirement that an alleged infringing act would infringe both the patent as granted and a claim of the complete specification in the form that it was immediately before it became open to public inspection.

Subpart 9—Assertions by third parties and re-examinations

The Patents Act 1953 allows third parties to oppose the grant of a patent, in what is known as pre-grant opposition, in the three-month period between acceptance of a patent application and the grant of the patent. The bill as introduced does not make provision for pre-grant opposition. Instead, it proposes strengthening the standards of the patents regime, and would provide for a re-examination process that could be invoked at any time after a patent application had been accepted.

Many submitters favoured pre-grant opposition, and argued that it allows New Zealand businesses to limit the scope of troublesome international applications; and that an opposition mechanism allows overly broad patent claims to be narrowed, preventing patent owners from wrongfully asserting invalid rights, and thus reducing costs and disruption to businesses.

We consider that there is merit in maintaining a modified form of pre-grant opposition, and recommend amending subpart 9 by inserting new clauses that would enable third parties to oppose a patent before it was granted. Amending subpart 9 thus would require a number of consequential amendments, including inserting new clause 89A (Relationship between re-examination and other proceedings), amending clause 93 (When patent must be granted), and inserting new clause 181A (Request or claim may not be considered in certain circumstances). We recommend that these, and other, amendments be made where necessary.

We think that the grounds on which third parties can oppose a patent being granted, request that a grant of patent be re-examined, or request that a patent be revoked should be consistent, and recommend amending the appropriate clauses of this bill to achieve this. It would also be necessary for the Intellectual Property Office of New Zealand to develop re-examination guidelines.

Subpart 10—Grant of patent

If an invention is improved or modified, it is possible to apply for a patent of addition. This provides protection for improvements or modifications which, relative to publication or use of the previous invention, may be deemed to lack an inventive step. We recommend amending clause 98 (Patents of addition) to allow such an application to be made by a person authorised by the applicant or patentee of the main invention. This would be consistent with the move from a “right to apply” approach to a “right to grant” approach.

We recommend amending clause 101 to make it clear that a patent of addition would also lapse if the patent for the main invention lapsed through non-payment of a renewal fee.

Subpart 11—Revocation and surrender of patents

The bill would allow three processes for challenging a patent application or patent: opposition (pre-grant opposition), re-examination, and revocation. This might lead to people re-litigating issues previously dealt with in other proceedings. To prevent this, we recommend inserting new clause 89A subsections (4) and (5), and amending clause 105 to allow the Commissioner to refuse to consider an application for revocation or re-examination, if the issues raised are the same (or substantially the same) as those argued before the Commissioner or the Court in previous opposition, re-examination, or revocation proceedings. We received advice that this would not prevent an application for revocation being brought before the Court.

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

Subpart 1—Infringement proceedings

Prior use rights provide protection for people or companies who wish to protect their inventions as trade secrets. We recommend inserting new clause 138A (No infringement for prior use of invention) which would allow them to continue using an invention, even if another person or company obtained a patent for the invention, without being subject to infringement action. Prior use rights would only apply to patents if the relevant patent applications were made after the commencement of the bill or subject to the bill under the transitional provisions.

Subpart 2—Declarations of non-infringement

We recommend amending clauses 151 and 152 to clarify who may apply for a declaration, and what conditions must be satisfied before a declaration can be made. This would enable people considering, or already exploiting, an invention to take pre-emptive action to avoid future patent infringement action.

Subpart 3

We recommend deleting clauses 155 to 157 and replacing them with new clause 141A (Right to bring infringement proceeding if registrable assignment or licence has occurred). This would protect infringement actions from being too easily defeated by a technicality, while ensuring that there were appropriate incentives for people to register assignments and licences.

Subpart 5—Compulsory licenses

We recommend amending subpart 5 to allow New Zealand to accept the Protocol Amending the TRIPS Agreement, to Implement the Doha Declaration on the TRIPS Agreement and Public Health. Acceptance of the protocol would allow a person to export patented pharmaceuticals under a compulsory license in line with the protocol. The protocol seeks to assist countries, particularly developing countries, which are facing serious public health problems and have little or no capacity to manufacture pharmaceuticals.

Subpart 6—Crown use of inventions

We recommend amending, where appropriate, subpart 6 to make inventions whose patent applications are pending available for Crown use. This would bring New Zealand’s patent legislation into line with that of Australia.

Part 6—Administrative and miscellaneous provisions

Subpart 2—General provisions on proceedings of Commissioner

We recommend inserting new clause 255A, which would give people adversely affected the right to be heard before the Commissioner makes a final decision. There would be two exceptions to its application: the power to direct applicants to request an examination under new clause 59B (Request for examination), and a person to whom new clause 92A applies (A person who requests re-examination has no right to participate further in re-examination proceedings).

To achieve consistency with High Court rules, we recommend amending clause 259 to allow the Commissioner to award indemnity costs. For this reason, we also recommend amending clause 260, which relates to the Commissioner’s ability to require security for costs if he or she considers that a party would be unable to meet the costs of another party if required to; and, where appropriate, amending clauses 261 to 264, which relate to appeals against the Commissioner’s decisions.

Subpart 3—Establishment and operation of administrative bodies for patents

Clause 270 would require the Commissioner to submit an annual report to the Minister no later than 30 September of each year, and the Minister to present the annual report to the House within six sitting days of receiving it. Section 44(1) of the Public Finance Act 1989 supersedes these reporting requirements.⁶ We therefore recommend deleting this clause and equivalent provisions in the Designs Act 1953 and the Trade Marks Act 2002.

Subpart 4—Other miscellaneous provisions

Clause 281(2) would allow the Commissioner to require an individual to confirm whether an agent is authorised to apply, on their behalf, for an extension of a time limit for certain filing requirements or for delivery failures. We received advice that the purpose of this clause, which has been carried over from the Patents Act 1953, is unknown, and therefore recommend deleting it.

Subpart 5—Regulations

We recommend amending clause 292 to allow provision for maintenance and renewal fees. This would allow the Crown to recover a share of the overall costs incurred by the Commissioner in performing his or her duties. Such fees would also encourage applicants who had lost interest to let their applications lapse, and encourage patent owners to not renew patents they were no longer exploiting or deriving any benefit from.

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

We recommend amending clause 297 to clarify that the Patents (United States of America) Regulations 1956 would continue to apply despite any inconsistency with the provisions of the bill.

Appendix

Committee process

The Patents Bill was introduced during the 48th Parliament on 9 July 2008, and was reinstated in the 49th Parliament on 9 December 2008. It was referred to the committee on 5 May 2009. The closing date for submissions was 2 July 2009. We received and considered 67 submissions from interested groups and individuals. We heard 36 submissions. On 18 February 2010 the committee decided to divide the bill.

We received advice from the Ministry of Economic Development. The Regulations Review Committee reported to the committee on the powers contained in clause 2(2).

Committee membership

Hon Lianne Dalziel (Chairperson)

John Boscawen

Charles Chauvel (until 14 October 2009); (from 18 November 2009)

David Clendon (from 25 November 2009)

Clare Curran

Te Ururoa Flavell

Jo Goodhew (until 24 June 2009)

Raymond Huo (from 14 October 2009 until 18 November 2009)

Melissa Lee

Peseta Sam Lotu-Iiga

Katrina Shanks

Jonathan Young (from 24 June 2009)

Key to symbols used

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Hon Simon Power

Patents Bill

Government Bill

235—2

1 Title

2 Commencement

Part 1
Preliminary

Purposes and overview

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 2
Patentable 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 3
Process 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~~

33 Divisional applications

33A Applicant must pay maintenance fee

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

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

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~~

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

Subpart 6—Examination

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~~

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~~

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~~

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

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, opposition, 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

Opposition to grant of patent

87A Opposition to grant of patent

87B Hearing and decision by Commissioner

Re-examination after acceptance

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

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 body corporate 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 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

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 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

Part 4
Infringement, 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

138A No infringement for prior use of invention

Counterclaim for revocation of patent

139 Defendant may counterclaim for revocation of patent

Bringing infringement proceeding in court

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

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 proceeding 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~~

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

Subpart 3—Standing of Attorney-General

~~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~~

158 Attorney-General may appear in patent proceeding

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

Compulsory licences for supply of patented inventions predominantly in New Zealand

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

Compulsory licences for export of pharmaceutical products

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

General provisions relating to compulsory licences

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

Subpart 6—Crown use of inventions

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

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

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

·····

Part 6
Administrative 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

Hearing before exercise of Commissioner's discretion

255A Hearing before exercise of Commissioner's discretion

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 may require security for costs

Appeals against Commissioner’s decisions

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

Costs of Commissioner

265 Costs of Commissioner in proceeding

Subpart 3—Establishment and operation of administrative bodies and officers 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 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

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

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

308 Transitional provision for patents register

Transitional provisions for offences and infringements

309 Transitional provision for 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 2
Consequential amendments

The Parliament of New Zealand enacts as follows:

1 Title

This Act is the Patents Act 2008.

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:
- (ab) Part 1 (which contains the preliminary provisions):
- ~~(b) section 194 (which relates to the setting of qualification requirements for patent attorney applications):~~
- ~~(c) sections 201 to 207 (which relate to the code of conduct for patent attorneys and patent attorney companies):~~
- ~~(d) subpart 6 of Part 5 and Schedule 1 (which relate to the Board and its membership):~~
- (e) subpart 3 of Part 6 (which relates to the establishment and operation of the administrative bodies under this Act):
- (f) subpart 5 of Part 6 (which contains the regulation-making powers):
- (g) section 314(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 31 December 2012.

Part 1
Preliminary

Purposes and overview

3 Purposes

The purposes of this Act are to—
- (aa) 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
- (a) 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
- (b) provide greater certainty for patent owners and the users of patented inventions that patents will be valid after they are granted; and
- (c) address Māori concerns relating to the granting of patents for inventions derived from indigenous plants and animals or from Māori traditional knowledge; and
- ~~(d) promote quality, expertise, and integrity in the profession of patent attorneys; and~~
- ~~(e) ensure that New Zealand’s patent regime takes account of international developments.~~
- (e) ensure that New Zealand’s patent legislation takes account of developments in the patent systems of other countries.

4 Overview

(1) In this Act,—
- (a) this Part specifies the purposes of this Act and defines terms and expressions used in this Act; and
- (b) Part 2 contains provisions concerning patentable inventions and patent rights, including provisions relating to what is a patentable invention, exclusions from what is patentable, the exclusive rights given by a patent, and who may be granted a patent; and
- (c) Part 3 describes the process for obtaining a patent and various other matters, including provisions relating to patent applications, specifications, examinations, acceptance, publication, opposition, and the granting of patents; and
- (d) Part 4 contains matters affecting patent ownership, including provisions relating to infringement proceedings, and declarations of non-infringement, ~~and other proceedings relating to patents,~~ and provisions on patent dealings and compulsory licences; and
- (e) Part 5 contains provisions relating to patent attorneys, patent attorney companies, and patent attorney partnerships, including a registration system for patent attorneys, a code of conduct for patent attorneys and patent attorney companies, a complaints and disciplinary regime, and provisions dealing with the Patent Attorneys’ Standards Board of New Zealand; and
- (f) Part 6 contains provisions relating to the patents register, the Commissioner, the Māori advisory committee, and other administrative and miscellaneous matters.
(2) This section is intended only as a guide to the general scheme and effect of this Act.

Interpretation

5 Interpretation

(1) In this Act, unless the context otherwise requires,—
~~acquirer has, in sections 160 and 161, the meaning set out in section 160(1)~~
applicant—
- (a) means a person who has applied for a patent for an invention; and
- (b) includes a person in whose favour a direction has been given under section 27(2)(ab)(i), 122, or 124(1)(a) and the personal representative of a deceased applicant
assignee includes the personal representative of a deceased assignee; and references to the assignee of any person include references to the assignee of the personal representative or assignee of that person
basic application means an application for protection in respect of an invention, being an application that is made in a convention country (whether before or after it became a convention country)
~~Board means the Patent Attorneys’ Standards Board of New Zealand established under section 237~~
Budapest Treaty—
- (a) means the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure signed at Budapest on 28 April 1977, together with the regulations annexed to that treaty; and
- (b) includes any amendments, modifications, and revisions from time to time made to that treaty or those regulations, being amendments, modifications, and revisions to which New Zealand is a party and by which New Zealand is bound
claim means a claim of the complete specification
~~code of conduct means the applicable code of conduct for patent attorneys and patent attorney companies under section 201~~
Commissioner—
- (a) means the Commissioner of Patents appointed under section 266; and
- (b) includes an Assistant Commissioner of Patents appointed under section 266
convention applicant, in relation to a basic application, means a person who—
- (a) has made the basic application; or
- (b) is the assignee of the person who made the basic application; or
- (c) is the personal representative of a person mentioned in paragraph (a) or (b); or
- (d) has the consent of a person mentioned in paragraph (a), (b), or (c) to make a convention application based on that basic application
convention application means a patent application made under ~~subpart 4 of Part 3~~ section 50(1)
convention country, in a provision of this Act, means an entity for the time being declared by an order made under section 294 to be a convention country for the purposes of that provision
court means the High Court
date of the publication of the accepted complete specification has the meaning set out in section 70
depositary institution means a body or institution that receives, accepts, and stores micro-organisms and furnishes samples of micro-organisms
~~disciplinary matter means a complaint about, or inquiry into, the conduct of a patent attorney or patent attorney company or a decision on that inquiry or complaint~~
exclusive licence means a licence from a patentee that gives the licensee (or the licensee and persons authorised by the licensee) any of the patentee’s exclusive rights under section 17 to the exclusion of the patentee and all other persons
exploit has the meaning set out in section 17
file means file with IPONZ
filing date, in relation to a document filed under this Act, means—
- (a) the date on which the document is filed; or
- (b) the date on which the document is treated as having been filed (if it is treated under this Act or the regulations as having been filed on a different date)
government department means any department or instrument of the Executive Government of New Zealand, or any branch or division of any of those departments or instruments
~~incorporated law firm has the meaning set out in section 6 of the Lawyers and Conveyancers Act 2006~~
~~Institute means the New Zealand Institute of Patent Attorneys (Incorporated)~~
integrated circuit means a circuit, in its final or an intermediate form, if—
- (a) the elements of the circuit and some or all of the interconnections are integrally formed in or on a piece of material; and
- (b) at least one of the elements of the circuit is an active element; and
- (c) the circuit is intended to perform an electronic function
interested party, in relation to a patent application, means the applicant or a joint applicant, or a person who claims to be entitled to the grant of a patent on the application, either alone or jointly with another person
international application means an application made under the Patent Cooperation Treaty for the protection of an invention
International Bureau means the International Bureau of the World Intellectual Property Organization
international depositary authority has the same meaning as in the Budapest Treaty
international filing date means the international filing date given to an international application under Article 11 or 14(2) of the Patent Cooperation Treaty
~~invention includes an alleged invention~~
inventive step has the meaning set out in section 7
inventor,—
- (a) in relation to an invention, means the actual deviser of the invention; but
- (b) in section 9, has the meaning set out in section 9(2)
IPONZ means the Intellectual Property Office of New Zealand
journal means the journal published under section 254
~~lawyer has the meaning set out in section 6 of the Lawyers and Conveyancers Act 2006~~
licence means a licence to do anything that the patentee otherwise has the exclusive right to do under section 17
main invention has the meaning set out in section 98
Māori advisory committee means the committee appointed under section 275
Minister means the Minister of the Crown who, under the authority of any warrant or with the authority of the Prime Minister, is for the time being responsible for the administration of this Act
Ministry means the department of State that, with the authority of the Prime Minister, is for the time being responsible for the administration of this Act
nominated person, in relation to a patent application, means the person identified as the person to whom the patent is to be granted
novel has the meaning set out in section 6
patent means letters patent for an invention
patent application means an application for a patent under this Act
patent area means—
- (a) New Zealand; and
- (b) all waters within the outer limits of the territorial sea of New Zealand (as defined by section 3 of the Territorial Sea, Contiguous Zone, and Exclusive Economic Zone Act 1977); and
- (c) the airspace above New Zealand and those waters
patent attorney means a ~~registered~~ patent attorney registered under section 100 of the Patents Act 1953
~~patent attorney company has the meaning set out in section 185~~
~~patent attorney partnership has the meaning set out in section 186~~
Patent Cooperation Treaty—
- (a) means the Patent Cooperation Treaty signed at Washington on 19 June 1970; and
- (b) includes any amendments, modifications, and revisions from time to time made to that Treaty, being amendments, modifications, and revisions to which New Zealand is a party and by which New Zealand is bound
patent date, in relation to a patent, means the date given to the patent under section 95
patent of addition means a patent granted under sections 98 to 103
patentable invention has the meaning set out in section 13
patented process means a process for which a patent has been granted and is in force
patented product means a product for which a patent has been granted and is in force
patentee means the person entered in the patents register as the grantee or owner of a patent at the relevant time
patents register means the patents register kept under section 241
personal representative, in relation to a deceased person,—
- (a) means a person to whom probate of the will of the deceased person, letters of administration of the estate of the deceased person, or any other similar grant, has been granted, whether in New Zealand or anywhere else; but
- (b) does not include a person referred to in paragraph (a) if, under the terms of the grant, the person is not entitled to do an act in relation to which the expression is used
prescribed means prescribed by regulations
prescribed depositary institution means—
- (a) an international depositary authority, whether in or outside New Zealand; or
- (b) any other depositary institution in New Zealand that is prescribed for the purposes of this paragraph
prior art base has the meaning set out in section 8, and prior art has a corresponding meaning
priority date, in relation to a claim, means the priority date given to the claim under subpart 5 of Part 3
publicly notify, in relation to the Commissioner, has the meaning set out in subsection (3)
publish, in relation to the Commissioner publishing anything in the journal, has the meaning set out in subsection (4)
receiving Office has the same meaning as in Article 2(xv) of the Patent Cooperation Treaty
register of patent attorneys or patent attorneys register means the register kept under ~~section 230~~ the Patents Act 1953
~~registered, in relation to a patent attorney, means registered as a patent attorney under Part 5~~
~~registration certificate means a registration certificate that is issued under Part 5~~
regulations means regulations in force under this Act
relevant proceeding, in relation to a patent, means a court proceeding—
- (a) for infringement of the patent; or
- (b) for the revocation of the patent; or
- (c) in which the validity of the patent, or of a claim, is in dispute
rules relating to micro-organisms means—
- (a) the provisions of the Budapest Treaty that are applicable; and
- (b) the provisions of the regulations that relate to micro-organisms
Statute of Monopolies means the Act of the 21st year of the reign of King James the First, chapter 3, being an Act concerning monopolies and dispensations with penal laws and the forfeiture thereof
Treaty application means an international application—
- (a) that contains a request specifying New Zealand as a designated State under Article 4(1)(ii) of the Patent Cooperation Treaty; and
- (b) that has been given an international filing date
Treaty regulations—
- (a) means the regulations made under the Patent Cooperation Treaty; and
- (b) includes any amendments from time to time made to those regulations
TRIPS agreement means the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights done at Marrakesh on 15 April 1994
useful has the meaning set out in section 10.
(2) In the case of an entity that is a convention country but is not a State, part of a State, or a territory for whose international relations a State is responsible,—
- (a) a reference in this Act to an application for protection in a country or an application for protection in respect of a country must be read as a reference to an application for protection under the rules of the entity; and
- (b) a reference in this Act to filing a specification in a convention country must be read as a reference to filing a specification under the rules of the entity; and
- (c) a reference in this Act to the law of a convention country must be read as a reference to the rules of the entity; and
- (d) a reference in this Act to the Government of a convention country must be read as a reference to the governing body of the entity.
(3) The Commissioner may comply with any requirement in this Act for the Commissioner to publicly notify anything by—
- (a) publishing it on ~~a website~~ an Internet site maintained for IPONZ’s purposes; and
- (b) if the Commissioner thinks fit, also publishing it by any other means that the Commissioner considers appropriate to make it known to persons that are likely to have an interest in the matter.
(4) Any requirement in this Act for the Commissioner to publish anything in the journal requires the Commissioner to publish that matter in the journal in the manner required by the regulations (if any).
(5) An example used in this Act has the following status:
- (a) the example is only illustrative of the provision to which it relates and does not limit the provision; and
- (b) if the example and the provision to which it relates are inconsistent, the provision prevails.
Compare: 1953 No 64 s 2

6 Meaning of novel

An invention, so far as claimed in a claim, is novel if it does not form part of the prior art base.
Compare: Patents Act 1977 s 2(1) (UK)

7 Meaning of inventive step

An invention, so far as claimed in a claim, involves an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the prior art base.
Compare: Patents Act 1977 s 3 (UK)

8 Meaning of prior art base

(1) For the purpose of deciding whether or not an invention is novel and for the purpose of deciding whether or not an invention involves an inventive step, the prior art base, in relation to an invention so far as claimed in a claim, means all matter (whether a product, a process, information about a product or process, or anything else) that has at any time before the priority date of that claim been made available to the public (whether in New Zealand or elsewhere) by written or oral description, by use, or in any other way.
(2) For the purpose of deciding whether or not an invention is novel, the prior art base, in relation to an invention so far as claimed in a claim, also includes the information contained in a complete specification filed in respect of another patent application if all of the following circumstances apply:
- (a) if the information is, or were to be, the subject of a claim of that complete specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
- (b) that complete specification became open to public inspection after the priority date of the claim under consideration; and
- (c) the information was contained in that complete specification on its filing date and when it became open to public inspection.
~~(3) However, subsection (2) does not apply if—~~
- ~~(a) either or both of the following apply:~~
  - (i) all of the nominated persons under the patent application are the same as the nominated persons under the other patent application at the filing date of the patent application under consideration:
  - (ii) all of the inventors identified in the patent application are the same as the inventors identified in the other patent application at the filing date of the patent application under consideration; and
- ~~(b) neither of the complete specifications filed for the patent applications contains a claim for matter claimed in the other.~~
Compare: Patents Act 1977 s 2(2) (UK)

9 Disclosure to be disregarded in certain circumstances

(1) For the purposes of section 8, the disclosure of matter constituting an invention must be disregarded if 1 or more of the following applies:
- (a) that disclosure occurred during the 1-year period immediately preceding the filing date of the patent application and the disclosure was due to, or made in consequence of, the matter having been obtained unlawfully or in breach of confidence by a person from—
  - (i) the inventor; or
  - (ii) any other person to whom the matter was made available in confidence by the inventor; or
  - (iii) any other person who obtained it from the inventor because the person or the inventor believed that the person was entitled to obtain it; or
  - (iv) any other person to whom the matter was made available in confidence by any person referred to in subparagraphs (i) to (iii) or in this subparagraph; or
  - (v) any other person who obtained it from any person mentioned in subparagraphs (i) to (iv) because the person or the person from whom the person obtained it believed that the person was entitled to obtain it:
- (b) that disclosure occurred during the 1-year period immediately preceding the filing date of the patent application and the disclosure was made in breach of confidence by a person who obtained the matter in confidence from the inventor or from any other person to whom it was made available by, or who obtained it from, the inventor:
- (c) that disclosure was due to the communication of the matter to a government department or to any person authorised by a government department to investigate the invention or its merits, or to anything done, in consequence of that communication, for the purpose of the investigation:
- (d) that disclosure occurred during the 6-month period immediately preceding the filing date of the patent application and that disclosure was due to, or made in consequence of,—
  - (i) the display of the invention with the consent of the inventor at a specified exhibition; or
  - (ii) the use of the invention with the consent of the inventor for the purposes of a specified exhibition in the place where it is held; or
  - (iii) the publication of any description of the invention in consequence of its display or use at a specified exhibition as referred to in subparagraph (i) or (ii); or
  - (iv) the use of the invention, after it has been displayed or used at a specified exhibition as referred to in subparagraphs (i) and (ii) and during the period of the exhibition, by any person without the consent of the inventor:
  - ~~(v) a description of the invention in a paper being read by the inventor before a learned society or published with the inventor’s consent in the transactions of a learned society:~~
- (e) that disclosure was due to, or made in consequence of, the invention being publicly worked, at any time during the 1-year period immediately preceding the filing date of the patent application, by any of the following persons if the working was effected for the purpose of reasonable trial only and if it was reasonably necessary, having regard to the nature of the invention, that the working for that purpose should be effected in public:
  - (i) the patentee or ~~applicant~~ nominated person:
  - (ii) any person from whom the patentee or ~~applicant~~ nominated person derives title:
  - (iii) any person with the consent of the patentee or ~~applicant~~ nominated person:
  - (iv) any person with the consent of any person from whom the patentee or ~~applicant~~ nominated person derives title.
(2) For the purposes of this section,—
inventor, in relation to an invention,—
- (a) means the actual deviser of the invention; and
- (b) includes any owner of the invention at the relevant time
specified exhibition means an exhibition (whether held in New Zealand or elsewhere) that is declared to be an international or industrial exhibition by the Commissioner in a notice that is publicly notified.
Compare: 1953 No 64 s 60; Patents Act 1977 s 2(4), (5) (UK)

10 Meaning of useful

An invention, so far as claimed in a claim, is useful if the invention has a specific, credible, and substantial utility.

Act binds the Crown

11 Act binds the Crown

This Act binds the Crown.

Part 2
Patentable inventions and patent rights

Subpart 1—Patentable inventions

General rules concerning what is patentable

12 Patent may be granted for patentable inventions only

(1) A patent may be granted for an invention only if it is a patentable invention.
(2) This section is subject to section 103 (which relates to patents of addition).

13 Patentable inventions

An invention is a patentable invention if the invention, so far as claimed in a claim,—
- (a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
- (b) when compared with the prior art base—
  - (i) is novel; and
  - (ii) involves an inventive step; and
- (c) is useful; and
- (d) is not excluded from being a patentable invention under section 14 or 15.
Compare: Patents Act 1990 s 18(1) (Aust)

Exclusions from patentability

14 Inventions contrary to public order or morality not patentable inventions

(1) An invention is not a patentable invention if the commercial exploitation of the invention, so far as claimed in a claim, is contrary to—
- (a) public order (which in this section has the same meaning as the term ordre public as used in Article 27.2 of the TRIPS agreement); or
- (b) morality.
Examples
The commercial exploitation of the following inventions is contrary to public order or morality and, accordingly, those inventions are not patentable:
- an invention that is a process for cloning human beings:
- an invention that is a process for modifying the germ line genetic identity of human beings:
- an invention that involves the use of human embryos for industrial or commercial purposes:
- an invention that is a process for modifying the genetic identity of animals that is likely to cause them suffering without any substantial medical benefit to human beings or animals, or an invention that is an animal resulting from such a process.
(2) For the purposes of subsection (1), commercial exploitation must not be regarded as contrary to public order or morality only because it is prohibited by any law in force in New Zealand.
(3) The Commissioner may, for the purpose of making a decision under this section, seek advice from the Māori advisory committee or any person that the Commissioner considers appropriate.
~~(4) For the purposes of this section, TRIPS agreement means the World Trade Organization Agreement on the Trade Related Aspects of Intellectual Property Rights done at Marrakesh on 15 April 1994.~~
Compare: Patents Act 1977 s 1(3), (4) (UK)

15 Other exclusions

(1) Human beings, and biological processes for their generation, are not patentable inventions.
(2) An invention of a method of treatment of human beings by surgery or therapy is not a patentable invention.
(3) An invention of a method of diagnosis practised on human beings is not a patentable invention.
(3A) A computer program is not a patentable invention.
(4) A plant variety is not a patentable invention.
(5) For the purposes of subsection (4), plant variety has the same meaning as that given to the term variety in section 2 of the Plant Variety Rights Act 1987.

Subpart 2—Patent rights

16 Nature of patent

(1) A patent is personal property.
~~(2) The rules of law that apply to the ownership and devolution of personal property generally apply to patents as they apply in relation to other choses in action.~~
(3) Equities in respect of a patent may be enforced in the same way as equities in respect of any other personal property.
Compare: 1953 No 64 ~~ss 63(5),~~ s 84(4); 2002 No 49 s 9

17 Exclusive rights given by patent

(1) A patent gives the patentee the exclusive rights, during the term of the patent, to exploit the invention and to authorise another person to exploit the invention.
(2) In this Act, exploit, in relation to an invention, includes,—
- (a) if the invention is a product, to—
  - (i) make, hire, sell, or otherwise dispose of the product; or
  - (ii) offer to make, hire, sell, or otherwise dispose of the product; or
  - (iii) use or import the product; or
  - (iv) keep the product for the purpose of doing any of the things referred to in subparagraphs (i) to (iii); or
- (b) if the invention is a process, to use the process or to do any act mentioned in paragraph (a) in respect of a product resulting from that use.
(3) This section is subject to subparts 5 and 6 of Part 4 (which relate to compulsory licences and the use of patented inventions for services of the Crown).
Compare: Patents Act 1990 s 13 (Aust)

18 Extent, effect, and form of patent

(1) A patent has effect throughout the patent area.
(2) However, a patent may be assigned for any place in, or part of, the patent area as effectively as if it were granted so as to extend to that place or part only.
(3) A patent has the same effect against the Crown as it has against ~~any other person~~ a subject.
(4) Subsection (3) is subject to the provisions of this Act and to section 7(3) of the Crown Proceedings Act 1950.
(5) A patent must be in the prescribed form.
Compare: 1953 No 64 s 29(1)–(3)

19 Term of patent

(1) The term of every patent is 20 years from the patent date.
(2) However, a patent ceases to have effect on the expiry of the period prescribed for the payment of any renewal fee if that fee is not paid within that period or within that period as extended under section 20.
(3) Subsection (2) applies despite anything in the patent or any other provision in this Act.
Compare: 1953 No 64 s 30(3), (4)

20 Extension of period for paying renewal fees

(1) If the prescribed period for the payment of a renewal fee expires before the date that is 4 months after the date of the grant of the patent, the period for payment of the renewal fee is extended to the date that is 4 months after the date of the grant of the patent.
(2) A patentee may request, in the prescribed manner (if any), that the prescribed period for the payment of a renewal fee ~~(including any extension of the period under subsection (1))~~ be extended to any date that is not more than 6 months after the expiry of the prescribed period.
(3) The Commissioner must extend the prescribed period for the payment of the renewal fee to the date requested under subsection (2) if, before that date,—
- (a) the request under subsection (2) is made; and
- (b) the renewal fee is paid; and
- (c) the prescribed penalty (if any) is paid.
Compare: 1953 No 64 s 30(4), (5)

Subpart 3—Patent ownership

Who may be granted patent

21 Who may be granted patent

(1) A patent for an invention may only be granted to a person who—
- (a) is the inventor; or
- (b) derives title to the invention from the inventor; or
- (c) is the personal representative of a deceased person mentioned in paragraph (a) or (b).
(2) A patent may be granted to a person whether or not the person is a New Zealand citizen.
Compare: Patents Act 1990 s 15 (Aust)

Power of patentee to deal with patent

22 Power of patentee to deal with patent

(1) A patentee may (subject to any rights vested in other persons that are entered in the patents register) deal with the patent as the absolute owner of it and give good discharges for any consideration for that dealing.
(2) This section does not protect a person who deals with a patentee otherwise than as a purchaser in good faith for value and without notice of any fraud on the part of the patentee.
(3) This section is subject to section 16(3).
Compare: Patents Act 1990 s 189(1), (2) (Aust)

Co-owners of patent

23 Co-ownership of patent

(1) If a patent is granted to 2 or more persons, each of those persons is entitled to an equal undivided share in the patent.
(2) If 2 or more persons are patentees of the patent, each of those persons is entitled to exercise the exclusive rights given by the patent for the person’s own benefit without accounting to the others.
(3) However, a licence under a patent must not be granted, and a share in a patent must not be assigned, except with the consent of all patentees of the patent (other than the licensor or assignor).
(4) Subsections (1) to (3) are subject to any agreement to the contrary between the patentees of the patent.
(5) This section is subject to any direction of the Commissioner under section 25.
(6) Nothing in subsection (1) or (2) affects the mutual rights or obligations of trustees or of the personal representatives of a deceased person, or their rights or obligations as trustees or personal representatives.
Compare: 1953 No 64 s 63(1)–(3), (5)

24 Rights of buyers from co-owners of patent

If a patented product, or a product of a patented process, is sold by any of 2 or more persons who are patentees of a patent, the buyer, and a person claiming through the buyer, may deal with the product as if the product had been sold by all of the patentees.
Compare: 1953 No 64 s 63(4); Patents Act 1990 s 16(2) (Aust)

25 Power of Commissioner to give directions to co-owners

(1) If 2 or more persons are patentees of a patent, the Commissioner may, on the request of any of them in the prescribed manner, give any directions in accordance with the request that the Commissioner thinks fit.
(2) The directions under subsection (1) must relate to—
- (a) the sale or lease of the patent or any interest in it; or
- (b) the grant of licences; or
- (c) the exercise of any right under section 23 in relation to the patent.
(3) If any patentee fails to do anything required to carry out a direction given under subsection (1) within 14 days after being asked in writing to do so by any of the other patentees, the Commissioner may, on the request of any of them in the prescribed manner, direct a person to do that thing in the name and on behalf of the person in default.
Compare: 1953 No 64 s 64(1), (2)

26 Miscellaneous provisions concerning directions

(1) Before giving a direction under section 25, the Commissioner must—
- (a) give a reasonable opportunity to be heard,—
  - (i) in the case of a request under section 25(1), to the patentees of the patent; and
  - (ii) in the case of a request under section 25(3), to the person in default; and
- (b) have regard to the terms of any agreement between the patentees of the patent that are brought to the Commissioner’s notice.
(2) The Commissioner must not give a direction that—
- ~~(a) affects the rights or obligations of a trustee or of the personal representative of a deceased person, or rights or obligations arising out of either of those relationships; or~~
- (a) affects the mutual rights or obligations of trustees or of the personal representatives of a deceased person, or their rights or obligations as trustees or personal representatives; or
- (b) is inconsistent with the terms of an agreement between the patentees of the patent.
Compare: 1953 No 64 s 64(3), (5); Patents Act 1990 s 17(3), (4) (Aust)

Disputes as to inventions made by employees

27 Disputes as to inventions made by employees

(1) This section and sections 28 and 29 apply if a dispute arises between an employer and a person who is, or was at the material time, his, her, or its employee as to the rights of the parties in respect of—
- (a) an invention made by the employee, either alone or jointly with any other person; or
- (b) any patent granted, or to be granted, in respect of an invention referred to in paragraph (a).
(2) The Commissioner may, on a request made to him or her in the prescribed manner by either of the parties and after giving to each of them a reasonable opportunity to be heard,—
- (a) determine the matter in dispute; and
- (ab) give any directions that the Commissioner thinks fit—
  - (i) for enabling a patent application to proceed in the name of 1 or more of the parties alone; or
  - (ii) for regulating the manner in which it is to proceed; or
  - (iii) for both of the purposes referred to in subparagraphs (i) and (ii); and
- (b) make any orders for giving effect to his or her decision as he or she considers expedient.
(3) However, if it appears to the Commissioner that, in relation to any request under this section, the matter in dispute involves questions that would more properly be determined by the Authority, he or she may decline to deal with the matter.
(4) A decision of the Commissioner under this section or section 28 has the same effect as between the parties and persons claiming under them as a decision of the Authority.
(5) Section 161 of the Employment Relations Act 2000 does not limit this section or section 28 or 29.
(6) The parties to a dispute or review under this section or section 28 or 29 are the employer and employee.
(7) In this section and sections 28 and 29, Authority means the Employment Relations Authority established by section 156 of the Employment Relations Act 2000.
Compare: 1953 No 64 s 65(1), (3)

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

(1) In proceedings before the Authority, or on a request made to the Commissioner under section 27, the Authority or Commissioner may make an order specified in subsection (2) (unless satisfied that one or other of the parties is entitled, to the exclusion of the other, to the benefit of an invention made by an employee).
(2) The order referred to in subsection (1) is an order providing for the apportionment between the employer and employee of the benefit of the invention, and of any patent granted or to be granted in respect of the invention, in the manner that the Authority or Commissioner considers just.
Compare: 1953 No 64 s 65(2)

29 Review of Commissioner’s decision

(1) A person who is aggrieved by a decision of the Commissioner under section 27 or 28 may apply to the Authority for a review of the decision.
(2) An application for review must be made within—
- (a) 20 working days after the date of the decision; or
- (b) any further time the Authority allows on an application made before or after that period expires.
(3) The Authority—
- (a) may confirm, reverse, or modify the decision of the Commissioner; and
- (b) may make any other decision that the Commissioner could have made.
(4) The Authority must not review any decision made under section 27 or 28, or part of a decision made under those sections, that is not the subject of an application under subsection (1).
(5) A decision against which an application is made under subsection (1) continues in force pending the determination of the review unless the Authority orders otherwise.
Compare: 1953 No 64 s 65(4)

Part 3
Process for obtaining grant of patent and other matters

Subpart 1—Patent applications

30 Right to apply for patent

Any person may apply for a patent either alone or jointly with another person.
Compare: Patents Act 1977 s 7(1) (UK)

31 Application requirements

Every patent application must be made in accordance with this Act and the manner prescribed by the regulations.

32 Commissioner may post-date application or specification

(1) The Commissioner may, on the request of the applicant in the prescribed manner (if any), direct that a patent application be post-dated to the date that is specified in the request.
(2) The Commissioner must not exercise the power under subsection (1) after the acceptance of the complete specification.
(3) A patent application must not be post-dated under subsection (1) to a date later than 6 months after the date that it was actually made or would, but for subsection (1), be treated as having been made.
(4) A convention application must not be post-dated under subsection (1) to a date later than the last date that, under the provisions of this Act, the application could have been made.
(5) If an application or specification filed under this Act is amended before acceptance of the complete specification, the Commissioner may direct that the application or specification be post-dated to the date that the amendment is first filed.
Compare: 1953 No 64 s 12(3), (4)

33 Divisional applications

(1) If a patent application has been made (but has not become void or been abandoned), the applicant may, before the acceptance of the complete specification and in the prescribed manner, make a fresh patent application for any part of the subject matter of the original application.
~~(2) The Commissioner may direct that the fresh patent application be given an earlier date if a request to that effect is made in the prescribed manner.~~
~~(3) The earlier date must not be earlier than the filing date of the original patent application.~~
~~Compare: 1953 No 64 s 12(5)~~

33 Divisional applications

(1) If a patent application has been made (but has not become void or been abandoned) (the parent application), the applicant may, in the prescribed manner, make a fresh patent application for any part of the subject matter of the parent application (the divisional application).
(2) A divisional application may only be made—
- (a) before the acceptance of the complete specification for the parent application; and
- (b) in accordance with any further prescribed requirements relating to the period within which a divisional application may be made.
(3) The Commissioner may direct that a divisional application or a complete specification for that application (or both) be given an earlier date if—
- (a) a request to that effect is made in the prescribed manner; and
- (b) the divisional application is only in respect of subject matter that was in substance disclosed by the parent application as filed.
(4) The earlier date must not be earlier than,—
- (a) in the case of the divisional application, the filing date of the parent application; and
- (b) in the case of a complete specification for the divisional application, the filing date of the complete specification for the parent application.
Compare: 1953 No 64 s 12(5)

33A Applicant must pay maintenance fee

(1) An applicant must pay a prescribed maintenance fee within the period or periods that are prescribed for the purposes of this section.
(2) A patent application must be treated as having been abandoned if the applicant does not comply with subsection (1).

Subpart 2—Specifications

34 Complete and provisional specifications

(1) Every patent application must—
- (a) be accompanied by a complete specification or a provisional specification unless the application is a convention application; and
- (b) be accompanied by a complete specification if the application is a convention application.
(2) The Commissioner may direct that a specification that purports to be a complete specification be treated as a provisional specification if—
- (a) the applicant requests, at any time before the acceptance of the specification, that the Commissioner make that direction; and
- (b) the patent application is not a convention application.
(3) A person is not entitled to make a request under subsection (2) if the patent application and specification filed in respect of the application have become open to public inspection.
(4) If the Commissioner makes a direction under subsection (2), the complete specification must be treated, for the purposes of this Act, to be, and to have always been, a provisional specification.
(5) The Commissioner may cancel a provisional specification and post-date the patent application to the filing date of a complete specification if—
- (a) a complete specification has been filed for a patent application that was accompanied by a provisional specification or by a specification treated as a provisional specification under subsection (2); and
- (b) the applicant requests, at any time before the acceptance of the complete specification, that the Commissioner cancel the provisional specification and post-date the application.
Compare: 1953 No 64 s 9(1), (4), (5); Patents Act 1990 s 37 (Aust)

35 Filing of complete specification after provisional specification has been filed

(1) If a patent application is accompanied by a provisional specification, 1 or more complete specifications must be filed within the period allowable under subsection (2).
(2) The period allowable is—
- (a) the period within 12 months from the filing date of the patent application; or
- (b) an extended period not exceeding the prescribed period if, on or before the date on which the complete specification is filed,—
  - (i) a request ~~to that effect~~ for an extension of time in which to file the complete specification is made to the Commissioner in the prescribed manner (if any); and
  - (ii) the prescribed penalty (if any) is paid.
(3) A patent application referred to in subsection (1) must be treated as having been abandoned if a complete specification is not filed within the period allowable under subsection (2).
(4) If 2 or more patent applications accompanied by provisional specifications have been filed for inventions that are cognate, or of which one is a modification of another,—
- (a) a single complete specification may be filed for those applications; or
- (b) more than 1 complete specification may be filed for those applications with the leave of the Commissioner.
(5) Subsection (4) is subject to subsections (1) to (3) and sections 36 to 42.
Compare: 1953 No 64 s 9(2), (3)~~; Patents Act 1990 s 37 (Aust)~~

36 Contents of provisional specification

Every provisional specification must—
- (a) describe the invention; and
- (b) include any other prescribed information.
Compare: 1953 No 64 s 10(1)

37 Contents of complete specification

(1) Every complete specification must—
- ~~(a) particularly describe the invention and the method by which it is to be performed; and~~
- (a) disclose the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art; and
- (b) disclose the best method of performing the invention that is known to the applicant and for which there is an entitlement to claim protection; and
- (c) end with a claim or claims defining the scope of the invention claimed; and
- (d) include any other prescribed information.
(2) The claim or claims must—
- (a) relate to one invention only; and
- ~~(b) be clear, succinct, and fairly based on the matter disclosed in the specification.~~
- (b) be clear and concise; and
- (c) be supported by the matter disclosed in the complete specification.
(3) A complete specification filed after a provisional specification, or filed with a convention application, may include claims concerning developments of, or additions to, the invention that was described in the provisional specification or the ~~invention for which the application for protection was made in a convention country~~ basic application (as the case may be) if those developments or additions are developments or additions for which the ~~applicant would be entitled to make a separate patent application under subpart 1~~ nominated person would be entitled to the grant of a separate patent under this Act.
(4) If a complete specification claims a new substance, the claim must not be construed as extending to that substance when found in nature.
Compare: 1953 No 64 s 10(1), (3), (4), (6), (7); Patents Act 1977 s 14(3), (5) (UK)

37A Amendment of complete specification before acceptance

(1) Before the acceptance of a complete specification, the applicant may, in the prescribed manner, amend that specification.
(2) Subsection (1) is subject to section 32(5).
(3) Subpart 8 applies in respect of amendments to a complete specification after the acceptance of the complete specification.

38 Supply of drawings

(1) Drawings may be supplied for the purposes of any specification.
(2) Drawings must be supplied for the purposes of a specification if the Commissioner requires drawings to be supplied.
(3) Drawings supplied under this section form part of the specification unless the Commissioner directs otherwise.
Compare: 1953 No 64 s 10(2)

39 Specifications for micro-organisms

(1) To the extent that an invention is a micro-organism, the complete specification complies with section 37(1)(a) and (b), so far as those paragraphs require a description of the micro-organism, if, and only if, the deposit requirements specified in section 40 are satisfied in relation to the micro-organism.
(2) Subsection (3) applies if—
- (a) an invention involves the use, modification, or cultivation of a micro-organism, other than the micro-organism mentioned in subsection (1); and
- (b) a person skilled in the relevant art in New Zealand could not reasonably be expected to perform the invention without having a sample of the micro-organism before starting to perform the invention; and
- (c) the micro-organism is not reasonably available to a person skilled in the relevant art in New Zealand.
(3) The complete specification complies with section 37(1)(a) and (b), to the extent that those paragraphs require a description of the micro-organism, if, and only if, the deposit requirements specified in section 40 are satisfied in relation to the micro-organism.
(4) For the purposes of this section and section 42, a micro-organism may be reasonably available to a person even if it is not so available in New Zealand.
Compare: Patents Act 1990 s 41 (Aust)

40 Deposit requirements for micro-organisms

(1) The deposit requirements are satisfied in relation to a micro-organism to which a specification relates if, and only if,—
- (a) the micro-organism was, on or before the filing date of the specification, deposited with a prescribed depositary institution in accordance with the rules relating to micro-organisms; and
- (b) the applicant for the patent provides to the Commissioner, within the prescribed period, a receipt for the deposit from the prescribed depositary institution; and
- (c) the specification includes, at the filing date of the specification, all relevant information on the characteristics of the micro-organism that is known to the applicant; and
- (d) at all times since the end of the prescribed period, the specification has included—
  - (i) the name of a prescribed depositary institution from which samples of the micro-organism are obtainable as provided by the rules relating to micro-organisms; and
  - (ii) the file, accession, or registration number of the deposit given by the institution; and
- (e) at all times since the filing date of the specification, samples of the micro-organism have been obtainable from a prescribed depositary institution as provided by those rules.
(2) For the purposes of subsection (1)(b), the receipt for the deposit must be in the prescribed form (if any).
Compare: Patents Act 1990 s 6 (Aust)

41 Deposit requirements treated as satisfied in certain circumstances

(1) This section applies if—
- (a) the requirements specified in section 40(1)(d) or (e) cease to be satisfied in relation to a micro-organism; and
- (b) steps are taken at a later time within the prescribed period in accordance with all applicable provisions of the regulations (if any); and
- (c) as a result of those steps, if the period during which those requirements are not satisfied is disregarded, those requirements would be satisfied at that later time.
(2) If this section applies,—
- (a) the requirements specified in section 40(1)(d) and (e) must be treated as having been satisfied during the period mentioned in subsection (1)(c); and
- (b) the provisions that are prescribed have effect for the protection or compensation of persons who availed themselves, or took definite steps by way of contract or otherwise to avail themselves, of the invention during that period.
Compare: Patents Act 1990 s 41(4) (Aust)

42 Micro-organism ceasing to be reasonably available

(1) A patent may be revoked under section 92 or subpart 11 on the ground referred to in section 106(1)(c) (which relates to complete specifications that do not comply with ~~section 37(1)~~ this subpart) if—
- (a) the patent was granted for an invention that involves the use, modification, or cultivation of a micro-organism, other than a micro-organism mentioned in section 39(1); and
- (b) the micro-organism was, at the filing date of the complete specification, reasonably available to a person skilled in the relevant art in New Zealand; and
- (c) the micro-organism has ceased to be reasonably available to a person skilled in the relevant art in New Zealand.
(2) This section does not limit section 37(1).

Subpart 3—Treaty applications

43 Treaty application treated as application accompanied by complete specification

For the purposes of this Act, a Treaty application must be treated as a patent application accompanied by a complete specification.
Compare: 1953 No 64 s 26A

44 Description, claims, and drawings

(1) The description, claims, and drawings (if any) contained in a Treaty application must be treated as a complete specification.
(2) An indication, in relation to a deposited micro-organism given under rule ~~13bis.4~~ 13bis.4 of the Treaty regulations, in relation to a Treaty application, must be taken to be included in the description contained in the Treaty application even if the indication is contained in another document.
Compare: 1953 No 64 s 26B; Patents Act 1990 s 88(5) (Aust)

45 International filing date

A Treaty application must be treated as having been filed in New Zealand on its international filing date.
Compare: 1953 No 64 s 26C

46 Commissioner must provide international filing date in certain circumstances

(1) The Commissioner must give an international application an international filing date if—
- (a) a request contained in the international application specifies New Zealand as a designated State under Article 4(1)(ii) of the Patent Cooperation Treaty; and
- (b) 1 or more of the following applies:
  - (i) the receiving Office has refused to accord the international application an international filing date under Article 11(1) of the Patent Cooperation Treaty:
  - (ii) the receiving Office has declared that the international application is considered withdrawn:
  - (iii) the International Bureau has made a finding under Article 12(3) of the Patent Cooperation Treaty that the international application is considered withdrawn; and
- (c) the Commissioner has decided under Article 25(2)(a) of the Patent Cooperation Treaty that the refusal or the declaration or the finding was the result of a mistake on the part of the receiving Office or the International Bureau.
(2) The date given under subsection (1) must be the date of receipt of the application by the receiving Office under Article 11(1) of the Patent Cooperation Treaty.
(3) If the date of receipt of the application by the receiving Office cannot be ascertained, the Commissioner may give the application an international filing date.
(4) This Act applies to the application in accordance with this section.
(5) This section does not apply to an international application that has been filed in a receiving Office in a language other than English, unless a translation of that application into English that has been verified to the satisfaction of the Commissioner has been provided to the Commissioner.
Compare: 1953 No 64 s 26D

47 Amendments to documents forming part of complete specification

(1) Subsection (2) applies if an English translation of a Treaty application—
- (a) has been filed with the Commissioner; or
- (b) has been published under Article 21 of the Patent Cooperation Treaty by the International Bureau.
(2) The description, claims, and any matter associated with the drawings contained in the Treaty application must be treated for the purposes of this Act as having been amended, on the day the translation was filed, by substituting the translated documents for those originally filed.
(3) The description, claims, and drawings contained in a Treaty application must be treated for the purposes of this Act as having been amended on the day that an amendment was made if—
- (a) the Treaty application has been amended under Article 19(1) of the Patent Cooperation Treaty; or
- (b) the Treaty application has been amended under Article 34 of the Patent Cooperation Treaty, and New Zealand has been chosen by the applicant to be an elected State under Article 31(4)(a) of the Patent Cooperation Treaty within the prescribed time limit.
(4) If a Treaty application has been rectified under rule 91 of the Treaty regulations, the description, claims, and drawings contained in that Treaty application must be treated, for the purposes of this Act, as having been amended on the application’s international filing date.
Compare: 1953 No 64 s 26E

48 Treaty application void

(1) A Treaty application must be treated as void for the purposes of this Act if—
- (a) an applicant withdraws the applicant’s international application, or withdraws the application in relation to New Zealand as a designated State; or
- (b) an international application is considered to be withdrawn in accordance with Article 12(3), 14(1)(b), 14(3)(a), or 14(4) of the Patent Cooperation Treaty; or
- (c) the designation of New Zealand as a designated State is considered to be withdrawn in accordance with Article 14(3)(b) of the Patent Cooperation Treaty; or
- (d) the applicant fails to fulfil the applicant’s obligations under Article 22(1) of the Patent Cooperation Treaty within the prescribed time limit; or
- (e) the applicant fails to fulfil the applicant’s obligations under Article 39(1)(a) of the Patent Cooperation Treaty within the prescribed time limit.
(2) Subsection (1)(b) and (c) are subject to Article 25 of the Patent Cooperation Treaty.
Compare: 1953 No 64 s 26F

49 Requirements for examination of Treaty application

(1) The Commissioner must not, in relation to a Treaty application, exercise the Commissioner’s powers under subpart 6 (which relates to examination of patent applications) until—
- (a) the applicant has fulfilled the applicant’s obligations under Article 22(1) or 39(1) of the Patent Cooperation Treaty; and
- (b) the prescribed time limit has expired; and
- (c) if applicable, a translation of the international application into English has been filed with the Commissioner and verified to the satisfaction of the Commissioner; and
- ~~(d) all documents required to be filed under this Act and the regulations have been filed; and~~
- (d) all prescribed documents have been filed; and
- (e) all fees required to be paid under this Act and the regulations have been paid.
~~(2) However, the Commissioner may, on the express request of the applicant, exercise the Commissioner’s powers under subpart 6 at any time.~~
(2) However, the Commissioner may exercise the Commissioner’s powers under subpart 6 at any time before all of the requirements in subsection (1) are satisfied if—
- (a) the applicant makes a request under section 59B; and
- (b) the Commissioner considers that it is desirable to exercise those powers despite the fact that 1 or more of those requirements have not been satisfied.
(3) Section 60 is subject to this section.
Compare: 1953 No 64 s 26G

Subpart 4—Convention applications

50 Convention applicants may make convention applications

(1) A convention applicant in relation to a basic application may make a convention application, or 2 or more of those convention applicants may make a joint convention application, within the period of 12 months from the day on which a basic application is first made in a convention country in respect of the invention.
(1) A convention applicant in relation to a basic application may make a patent application, or 2 or more of those convention applicants may make a joint patent application, in respect of the relevant invention within the period of 12 months from the day on which a basic application is first made in a convention country in respect of the invention.
(1A) A patent application made under subsection (1) is a convention application.
(2) For the purposes of this Act,—
- (a) the filing of a complete specification in a convention country after the filing of a provisional specification in relation to an application for protection must be treated as a basic application made in that country; and
- (b) a person must be treated as having made a basic application in a convention country in respect of an invention if the person has made an application for protection in respect of the invention by an application that,—
  - (i) in accordance with the terms of a treaty subsisting between that convention country and any 1 or more other convention countries, is equivalent to a basic application duly made in any one of those convention countries; or
  - (ii) in accordance with the law of that convention country, is equivalent to a basic application duly made in that convention country; and
- (c) a matter must be treated as having been disclosed in a basic application made in a convention country if it was claimed or disclosed (otherwise than by way of disclaimer or acknowledgment of prior art) in that application or in documents submitted by the ~~convention applicant~~ person who made the basic application in support of, and at the same time as, that application.
(3) Despite subsection (2)(c), no account may be taken of any disclosure effected by any of the documents referred to in that paragraph unless a copy of the document is filed with the convention application or within the period as may be prescribed after the filing of that application.
(3) Despite subsection (2)(c), if the Commissioner has given a written notice to the convention applicant requiring the convention applicant to file a copy of any or all of the documents referred to in that paragraph, account must not be taken of any disclosure in the document or those documents unless a copy of the document or documents is filed within the prescribed period after the Commissioner has given the notice.

51 How convention applications are made and dealt with

(1) A convention application must be made and dealt with in the same manner as any other patent application.
(2) However, a patent application that is a convention application must—
- (a) include the prescribed information relating to the relevant basic application; and
- (b) be accompanied by a complete specification in accordance with section 34(1); and
- (c) be made and dealt with in accordance with any other additional or different requirements prescribed for convention applications by this Act or regulations.

52 Withdrawn, abandoned, or refused basic applications

For the purposes of this Act, if more than 1 basic application has been made for an invention, a previously filed basic application (basic application A) must be disregarded and a subsequently filed basic application (basic application B) must be substituted for basic application A if—
- (a) basic application A was made in, or in respect of, the same convention country and by the same applicant as basic application B; and
- (b) not later than the ~~filing~~ date of filing of basic application B, basic application A was unconditionally withdrawn, abandoned, or refused; and
- (c) basic application A had not been made available to the public in New Zealand or elsewhere before its unconditional withdrawal, abandonment, or refusal; and
- (d) no rights remain outstanding in respect of basic application A; and
- (e) basic application A has not served to establish a right of priority in relation to another application in any convention country.
Compare: 1953 No 64 s 7(2A)

53 Basic applications for 2 or more cognate inventions

(1) If basic applications have been made in 1 or more convention countries for 2 or more inventions that are cognate or of which one is a modification of another, a single convention application may be made for those inventions at any time within 12 months from the date of the earliest of the basic applications.
(2) Despite subsection (1), the requirements of section 51(2)(a) apply separately to the basic applications for each of the inventions referred to in subsection (1).

Subpart 5—Priority dates

54 Priority date of claims of complete specification

(1) Every claim of a complete specification has effect from the date prescribed by this subpart as the priority date of that claim.
(2) A patent is not invalidated—
- (a) by reason only that the invention, so far as claimed in a claim, has been made available to the public (whether in New Zealand or elsewhere) on or after the priority date of the claim by written or oral description, by use, or in any other way; or
- (b) by the grant of another patent on a specification claiming the same invention in a claim of the same or a later priority date.
Compare: 1953 No 64 s 11(1)

55 Priority date if complete specification filed for single application

The priority date of a claim is the filing date of the patent application if—
- (a) the complete specification is filed for a single application that was accompanied by a provisional specification or by a specification that is treated as a provisional specification; and
- (b) the claim is ~~fairly based on~~ supported by the matter disclosed in that provisional specification.
Compare: 1953 No 64 s 11(2)

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

(1) This section applies if—
- (a) the complete specification is filed or proceeded with in relation to 2 or more patent applications that were accompanied by provisional specifications or by specifications that are treated as provisional specifications; and
- (b) the claim is ~~fairly based on~~ supported by the matter disclosed in at least 1 of those provisional specifications.
(2) The priority date of the claim is the filing date of the patent application that is accompanied by the specification that ~~first disclosed the matter on which the claim is fairly based~~ disclosed the matter that supports the claim (or, if there is more than 1 application accompanied by such a specification, the filing date of the earliest of them).
Compare: 1953 No 64 s 11(3)

57 Priority date for convention applications

~~(1) This section applies if the complete specification is filed for a convention application and the claim is fairly based on the matter disclosed—~~
- ~~(a) in the application for protection in a convention country; or~~
- ~~(b) if the convention application is founded on more than 1 application for protection in a convention country, in at least 1 of those applications for protection.~~
~~(2) The priority date of the claim is the date of the relevant application for protection that first disclosed the matter on which the claim is fairly based.~~
~~Compare: 1953 No 64 s 11(4)~~

57 Priority date for convention applications

(1) This section applies if the complete specification is filed for a convention application and the claim is supported by the matter disclosed—
- (a) in the basic application; or
- (b) if the convention application is founded on more than 1 basic application, in at least 1 of those basic applications.
(2) The priority date of the claim is the date of the basic application that disclosed the matter that supports the claim (or, if there is more than 1 such basic application, the date of the earliest of them).
Compare: 1953 No 64 s 11(4)

58 Priority date for Treaty applications

(1) This section applies if—
- (a) the patent application that relates to the complete specification that contains the claim is a Treaty application; and
- (b) that Treaty application claims the priority of an earlier application under Article 8 of the Patent Cooperation Treaty; and
- (c) that earlier application is—
  - (i) an application made in New Zealand not more than 12 months before the international filing date of the Treaty application; or
  - (ii) ~~an application for protection~~ a basic application for an invention, made in a convention country not more than 12 months before the international filing date of the Treaty application, that is the first application made in a convention country for the invention; or
  - (iii) ~~an application for protection~~ a basic application for an invention made in a convention country after an application referred to in subparagraph (ii); and
- (d) the claim is ~~fairly based on~~ supported by the matter disclosed in that earlier application or in a specification filed for that earlier application.
~~(2) The priority date of the claim is,—~~
- ~~(a) if the claim is fairly based on the matter disclosed in that earlier application, the filing date of that application; or~~
- ~~(b) in any other case, the filing date of the specification for the earlier application that first disclosed the matter on which the claim is fairly based.~~
(2) The priority date of the claim is,—
- (a) if the claim is supported by the matter disclosed in the earlier application, the date of filing of that application; or
- (b) in any other case, the date of filing of the specification for the earlier application that disclosed the matter that supports the claim (or, if there is more than 1 such specification, the date of filing of the earliest of them).
(3) For the purposes of subsection (2), date of filing means,—
- (a) in the case of the earlier application being an application made in New Zealand, the date that the earlier application or specification for the earlier application (as the case may be) is filed in New Zealand:
- (b) in any other case, the date that the earlier application or specification for the earlier application (as the case may be) is filed in the convention country.

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

(1) If, under sections 56 to 58, a claim would, but for this provision, have 2 or more priority dates, the priority date of that claim is the earlier or earliest of those dates.
(2) If sections 55 to 58 do not apply to any case, the priority date of a claim is the filing date of the complete specification.
Compare: 1953 No 64 s 11(5), (6)

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

(1) This section applies if—
- (a) a patent application (application A) is made for an invention that has been claimed in a complete specification filed in relation to another patent application (application B); and
- (b) 1 or more of the following applies:
  - (i) the Commissioner has refused to grant a patent in relation to application B on the ground specified in section 87A(1)(b) (whether in a re-examination or an opposition proceeding under subpart 9):
  - (ii) the patent granted in relation to application B has been revoked by the court or the Commissioner on the ground specified in section 106(1)(b):
  - (iii) the complete specification filed in relation to application B has, in a re-examination or an opposition proceeding under subpart 9 or a proceeding under subpart 11, been amended by the exclusion of the claim relating to the invention as a result of a finding by the Commissioner that the nominated person or the patentee is not entitled to the patent.
(2) The Commissioner may direct that application A and any specification filed in relation to it must, for the purposes of this subpart, be treated as having been filed on the date on which the corresponding document was filed, or is treated as having been filed, in relation to application B.
Compare: 1953 No 64 s 62

Subpart 6—Examination

59B Request for examination

(1) The applicant may, in the prescribed manner, ask for an examination of the patent application and the complete specification relating to the application.
(2) The Commissioner may, on 1 or more of the prescribed grounds and in the prescribed manner, direct the applicant to ask, within the prescribed period, for an examination of the patent application and the complete specification relating to the application.
(3) If the patent application and the complete specification relating to the application are open to public inspection, any person may, in the prescribed manner, require the Commissioner to give a direction under subsection (2).
(4) However, a person may not act under subsection (3) if the application is a Treaty application and the requirements in section 49(1) have not been satisfied.
(5) If required under subsection (3), the Commissioner must give a direction accordingly, unless the applicant has already asked, or been directed to ask, for an examination of the patent application and the complete specification relating to the application.
(6) If the Commissioner gives a direction under this section, the patent application must be treated as having been abandoned if the applicant does not ask, within the prescribed period, for an examination of the patent application and the complete specification relating to the application.
Compare: Patents Act 1990 s 44 (Aust)

60 Examination

~~(1) The Commissioner must examine a patent application and the complete specification relating to the application and report on—~~
- ~~(a) whether the specification complies with subpart 2 (which relates to specification requirements); and~~
- ~~(b) whether, to the best of the Commissioner’s knowledge, the invention, so far as claimed, is a patentable invention under section 13; and~~
- ~~(c) all other matters (if any) that are prescribed.~~
(1) The Commissioner must, after being asked to do so under section 59B, examine a patent application and the complete specification relating to the application, and report on—
- (a) whether the Commissioner is satisfied, on the balance of probabilities, that—
  - (i) the application and the specification comply with the requirements of this Act and of the regulations; and
  - (ii) the applicant has complied with all requirements imposed on the applicant by or under this Act that are prescribed for the purposes of this subparagraph; and
  - (iii) the invention, so far as claimed, is a patentable invention under section 13; and
  - (iv) there is no other lawful ground of objection to the grant of a patent in respect of the application; and
- (b) all other matters (if any) that are prescribed.
(2) The examination must be carried out in the prescribed manner.
(3) The Commissioner must give a copy of the report to the applicant after it is issued.
Compare: Patents Act 1990 s 45 (Aust)

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

~~(1) This section applies if, after examining under section 60 a patent application and any specification filed in relation to the application, the Commissioner reports that—~~
- ~~(a) the application or any of those specifications do not comply with the requirements of this Act or of the regulations; or~~
- ~~(b) the invention, so far as claimed, is not a patentable invention under section 13; or~~
- ~~(c) there is any other lawful ground of objection to the grant of a patent in respect of the application.~~
(1) This section applies if, after examining under section 60 a patent application and the complete specification relating to the application, the Commissioner reports that he or she is not satisfied as to any of the matters specified in section 60(1)(a).
(2) The Commissioner—
- (a) must state the grounds of objection when reporting on an examination; and
- (b) may—
  - (i) refuse to proceed with the patent application; or
  - (ii) require the applicant to amend the patent application or any specification before the Commissioner proceeds with the application.

62 Applicants must act by deadline if deadline set by Commissioner

~~(1) If the Commissioner has acted under section 61(2)(b)(ii), the applicant must, by the deadline set by the Commissioner (if any),—~~
- ~~(a) respond to the report; and~~
- ~~(b) take reasonable steps to ensure that the response is a substantive response.~~
(2) After each response, the Commissioner may issue a further report under section 60, and, if the Commissioner still believes that 1 or more of the following applies, the Commissioner may act under section 61:
- ~~(a) the patent application or any specification filed in relation to the application does not comply with the requirements of this Act or of the regulations:~~
- ~~(b) the invention, so far as claimed, is not a patentable invention under section 13:~~
- ~~(c) there is any other lawful ground of objection to the grant of a patent in respect of the application.~~
~~(3) If the Commissioner has issued a further report under section 60 and acted under section 61, the applicant must, by the deadline set by the Commissioner (if any),—~~
- ~~(a) respond to the report; and~~
- ~~(b) take reasonable steps to ensure that the response is a substantive response.~~
(1) If the Commissioner has acted under section 61(2)(b), the applicant must, by the deadline (if any) set by the Commissioner, make a substantive response to the report.
(2) After each response, the Commissioner may issue a further report under section 60, and, if the Commissioner is still not satisfied as to any of the matters specified in section 60(1)(a), the Commissioner may act under section 61.
(3) If the Commissioner has issued a further report under section 60 and acted under section 61(2)(b), the applicant must, by the deadline (if any) set by the Commissioner, make a substantive response to the report.
(4) The Commissioner must set deadlines (if any) in the prescribed manner.
(4A) The Commissioner may extend any deadlines in the prescribed manner.
(5) For the purposes of this section, a substantive response is a response that, in the opinion of the Commissioner,—
- (a) gives a fair and substantial answer to the report issued by the Commissioner; or
- (b) gives a fair and substantial answer to the report issued by the Commissioner and amends the application or specification to remove 1 or more of the grounds of objection raised by the Commissioner in the report; or
- (c) amends the application or specification to remove all of the grounds of objection raised by the Commissioner in the report.

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

A patent application must be treated as having been abandoned if ~~the Commissioner is satisfied that~~ the applicant has failed to comply with section 62.

64 Commissioner must examine amended specification

(1) The Commissioner must examine an amended complete specification in the same manner as the original specification if the specification is amended following the issue of a report under section 60.
(2) Subsection (1) does not apply after the complete specification is accepted.
Compare: 1953 No 64 s 18(2)

65 Duty to inform Commissioner of search results

(1) The applicant must, ~~in the prescribed manner, inform the Commissioner~~ if required by the Commissioner, inform the Commissioner, in the prescribed manner, of the results of any documentary searches by, or on behalf of, a foreign patent office carried out for the purpose of assessing the patentability of an invention disclosed in the complete specification or a corresponding application filed outside New Zealand.
(2) Subsection (1)—
- (a) does not apply to a search if the search is prescribed as a type of search to which this section does not apply; and
- (b) applies only to searches completed before the grant of the patent.
(3) A search is completed on the earliest of—
- (a) the date, if any, specified in the search report as the date that the report was issued; and
- (b) the date, if any, specified in the search report as the date that the search was completed; and
- (c) the date that the search results were issued to the applicant or patentee by the foreign patent office.
(4) In this section, foreign patent office means an office, organisation, or other body that may grant protection in respect of an invention in a country outside New Zealand.
Compare: Patents Act 1990 s 45(3) (Aust)

66 Consequences of breach of duty

~~An amendment of a complete specification relating to a patent is not allowable and must not be made if—~~
- ~~(a) the patentee or the patentee’s predecessor in title breaches or breached section 65 in relation to the patent; and~~
- (b) the effect of the proposed amendment would be to remove a lawful ground of objection in relation to section 13(b) to the specification arising from the existence of some or all of the information not provided under section 65.

Subpart 7—Acceptance and publication

Time for putting application in order for acceptance

67 Time for putting application in order for acceptance

(1) A patent application is void unless, within the prescribed period, the applicant ensures that—
- (a) the application and the complete specification comply with the requirements of this Act and of the regulations; and
- (ab) the applicant has complied with all requirements imposed on the applicant by or under this Act that are prescribed for the purposes of this paragraph; and
- (b) the invention, so far as claimed, is a patentable invention under section 13; and
- (c) there is no other lawful ground of objection to the grant of a patent in respect of the application.
(2) Deadlines, or extensions of deadlines, set by the Commissioner under section 62 cannot extend the prescribed period under subsection (1).
(3) Nothing in this section limits ~~the power of the Commissioner to treat a patent application as having been abandoned under~~ section 63 (which relates to treating an application as abandoned).
Compare: 1953 No 64 s 19(1), (1A)

68 Time may be extended if appeal pending or possible

~~(1) This section applies if, at the expiry of the prescribed period under section 67,—~~
- ~~(a) an appeal to the court is pending under any of the provisions of this Act in respect of the patent application; or~~
- (b) an appeal to the court is pending under any of the provisions of this Act, in the case of an application for a patent of addition, in respect of either that application or the patent application for the main invention; or
- ~~(c) the time within which an appeal referred to in paragraph (a) or (b) may be brought under section 261(2)(b)(i) has not expired.~~
(2) The court may extend the period that applies under section 67 if an appeal referred to in subsection (1)(a) or (b) is pending or is brought within the time referred to in subsection (1)(c) or before the expiry of any extension of that time granted (in the case of a first extension) on an application made within that time or (in the case of a subsequent extension) on an application made before the expiry of the last previous extension.
(3) If no appeal referred to in subsection (1)(a) or (b) is pending or is so brought, the period that applies under section 67 continues until the end of the time referred to in subsection (1)(c), or, if any extension of that time is granted, until the expiry of the extension or last extension so granted.
~~Compare: 1953 No 64 s 19(3)~~

68 Time may be extended if appeal pending or possible

(1) This section applies if, at the expiry of the prescribed period under section 67,—
- (a) an appeal to the court is pending under section 261 in respect of the patent application (or, in the case of an application for a patent of addition, either in respect of that application or in respect of the patent application for the main invention); or
- (b) the 20-working-day period within which an appeal referred to in paragraph (a) may be brought under section 261(2)(b)(i) has not expired.
(2) The court may extend the period that applies under section 67 until the date that the court thinks fit if an appeal referred to in subsection (1)(a)—
- (a) is pending; or
- (b) is brought within the time referred to in subsection (1)(b); or
- (c) is brought before the expiry of any extension of the time for bringing an appeal allowed by the court under section 261(2)(b)(ii),—
  - (i) in the case of a first extension, on an application for an extension made within the time referred to in subsection (1)(b); or
  - (ii) in the case of a subsequent extension, on an application for an extension made before the expiry of the last previous extension.
(3) If no appeal referred to in subsection (1)(a) is pending or is so brought, the period that applies under section 67 continues—
- (a) until the end of the time referred to in subsection (1)(b); or
- (b) if any extension of the time for bringing an appeal is allowed by the court as referred to in subsection (2)(c), until the expiry of the extension or last extension that is allowed.
Compare: 1953 No 64 s 19(3)

69 Notice of entitlement must be filed before acceptance

(1) The applicant must file, in the prescribed manner, a notice stating the grounds on which the nominated person is entitled to be granted the patent under section 21—
- (a) before the expiry of the prescribed period under section 67; or
- (b) before the expiry of the extension or last extension under section 68 (if the prescribed period under section 67 is extended under that section).
(2) For the purposes of this Act, the applicant may be taken to be the nominated person.
(3) However, if the applicant is not the nominated person or is not the only nominated person, the applicant must identify all of the nominated persons in the notice referred to in subsection (1).
(4) Subsection (2) does not limit subsection (1).
(5) A patent application is void if the applicant does not comply with this section.

Acceptance

70 Acceptance of complete specification

(1) The Commissioner must, after the applicant has complied with the requirements referred to in sections 67(1) and 69, accept the complete specification relating to a patent application if the Commissioner is satisfied, on the balance of probabilities, that—
- (a) the application and the specification comply with the requirements of this Act and of the regulations; and
- (ab) the applicant has complied with all requirements imposed on the applicant by or under this Act that are prescribed for the purposes of this paragraph; and
- (b) the invention, so far as claimed, is a patentable invention under section 13; and
- (c) there is no other lawful ground of objection to the grant of a patent in respect of the application.
(2) The Commissioner must, after acceptance of a complete specification,—
- (a) give notice of the acceptance to the applicant; and
- (b) publish the acceptance in the journal.
(3) For the purposes of this Act, date of the publication of the accepted complete specification means the date of publication of the journal containing the publication under subsection (2)(b).
(4) This section is subject to sections 67, 68, and 71.
Compare: 1953 No 64 s 20(1), (2)

71 Applicant may request Commissioner to postpone acceptance

(1) The applicant may give notice to the Commissioner requesting the Commissioner to postpone acceptance of the complete specification until a date that is specified in the notice.
(2) The date specified in the notice must not be a date that is after the prescribed period.
(3) The Commissioner may postpone acceptance under section 70 if a notice is given under this section.
Compare: 1953 No 64 s 20(1)

Publication

72 Publication

(1) The Commissioner must publish a notice in the journal that a complete specification is open to public inspection if—
- (a) the specification has been filed for a patent application that is not a Treaty application; and
- (b) a period of 18 months after the earliest priority date claimed in respect of the patent application has ended; and
- (c) the specification is not already open to public inspection.
(2) Subsection (1) does not apply if the patent application is void or has been abandoned.
(3) If a complete specification filed in respect of a patent application (other than a Treaty application) has not become open to public inspection, the Commissioner must, if asked to do so by the applicant, publish, in the prescribed manner, a notice in the journal that the complete specification is open to public inspection.
(4) If section 39(2) applies to a specification, the applicant may not make a request under subsection (3) in relation to the specification unless the specification includes the particulars mentioned in section 40(1)(d).
Compare: Patents Act 1990 s 54(1)–(3) (Aust)

73 Publication in case of divisional applications made as provided for in section 33

(1) The Commissioner must publish a notice in the journal that a complete specification filed for a ~~fresh~~ divisional application is open to public inspection if—
- (a) the ~~fresh~~ divisional application ~~is not a Treaty application and~~ is made in respect of ~~an original~~ a parent application (whether or not the ~~original~~ parent application is a Treaty application); and
- (b) the complete specification filed for the ~~original~~ parent application was open to public inspection when the ~~fresh~~ divisional application was made.
(2) Subsection (3) applies if a ~~fresh~~ divisional application ~~(other than a Treaty application)~~ is made in respect of ~~an original~~ a parent application that is not a Treaty application and—
- (a) a notice is published in the journal that the complete specification filed for the ~~original~~ parent application is open to public inspection; or
- (b) a notice is published in the journal that the complete specification filed for the ~~fresh~~ divisional application is open to public inspection.
(3) The Commissioner must also publish in the journal a notice that,—
- (a) if subsection (2)(a) applies, the complete specification filed for the ~~fresh~~ divisional application is open to public inspection; or
- (b) if subsection (2)(b) applies, the complete specification filed for the ~~original~~ parent application is open to public inspection.
~~(4) The Commissioner must also publish in the journal a notice that the complete specification filed for a fresh application is open to public inspection if—~~
- ~~(a) the fresh application is an application other than a Treaty application and is made in respect of an original application that is a Treaty application; and~~
- ~~(b) a notice is published in the journal that the complete specification filed for the original application is open to public inspection.~~
(5) For the purposes of this section,—
~~fresh~~ divisional application means a ~~fresh patent~~ divisional application referred to in section 33
~~original~~ parent application means the ~~original patent~~ parent application referred to in section 33.
Compare: Patents Act 1990 s 54(4)~~–(6)~~, (5) (Aust)

74 Documents open to public inspection

(1) If a notice is published under section 72 or 73, the specification concerned, and the other documents (if any) that are prescribed, are open to public inspection.
(2) If acceptance of a complete specification is published under section 70(2)(b) in relation to a patent application, the following documents (being documents that have not already become open to public inspection) are open to public inspection:
- (a) all documents (other than prescribed documents) filed in relation to the application or the patent, whether before or after the acceptance or grant:
- (b) all documents (other than prescribed documents) filed, after the patent ceases, expires, or is revoked, in relation to the former patent:
- (c) copies of all documents relating to the application or patent (other than prescribed documents) given by the Commissioner to the applicant or patentee, or the former applicant or patentee.
(3) A specification, or other document, must be taken to have been made available to the public on the day on which it becomes open to public inspection unless it has been made available to the public (whether in New Zealand or elsewhere) otherwise before that day.
(4) Subsection (3) is subject to section 75.
Compare: Patents Act 1990 s 55 (Aust)

75 Publication of Treaty applications

(1) A Treaty application must be taken to have become open to public inspection, and to have been made available to the public, on the date that it is published under Article 21 of the Patent Cooperation Treaty.
(2) On and after the date on which the requirements in section 49 are satisfied in relation to a Treaty application, the documents (if any) that are prescribed are open to public inspection.

76 Certain documents not to be published

(1) Except as otherwise provided by or under this Act, documents of the kind mentioned in section 74 or 75—
- (a) must not be published by the Commissioner or be open to public inspection; and
- (ab) must not be published before the document is open to public inspection by any person to whom the Commissioner provides the document in the performance of his or her functions; and
- (b) are not liable to be inspected or produced before the Commissioner or in a legal proceeding unless the Commissioner, court, or any person having power to order inspection or production, directs that the inspection or production be allowed.
(2) Subsection (1) does not prevent—
- (a) the Commissioner from publishing the date and number of a patent application and any details of the patent application and invention that are required to be given in or with the patent application ~~form~~:
- (b) documents of the kind mentioned in section 74 or 75 being published by the Commissioner and becoming open to public inspection with the consent of the applicant.
(3) Notice of an application for the production in legal proceedings of a document of the kind mentioned in section 74 or 75 must be given to the Commissioner, who is entitled to be heard on the application.
~~(4) The reports of the Commissioner on the examination of a patent application or specification must not, before the acceptance of the complete specification,—~~
- ~~(a) be published by the Commissioner or be open to public inspection; or~~
- (b) be inspected or produced in any legal proceeding unless the court, or any person having power to order inspection or production in the proceeding, certifies that it is desirable that the production or inspection be allowed in the interests of justice.
(5) A request for information under the Official Information Act 1982 may be refused by the Commissioner or the Ministry, as contrary to this Act, if, and to the extent that, it would require documents of the kind mentioned in ~~subsection (1) or (4)~~ section 74 or 75, or information in connection with those documents, to be made available before those documents are open to public inspection.
Compare: ~~1953 No 64 s 91(2);~~ Patents Act 1990 s 56 (Aust)

77 Effect of publication of complete specification

(1) After a complete specification relating to a patent application has become open to public inspection and until a patent is granted on the application, the nominated person has the same privileges and rights as the nominated person would have had if a patent for the invention had been granted on the day when the specification became open to public inspection under sections 72 to 75.
~~(2) Subsection (1) does not give the nominated person the right to commence proceedings in respect of any act unless—~~
- ~~(a) a patent is granted on the patent application; and~~
- ~~(b) the act would, if done after the grant of the patent, have constituted an infringement of a claim of the specification.~~
(2) The nominated person is entitled to bring a proceeding by virtue of this section in respect of an act only—
- (a) after the patent has been granted; and
- (b) if the act would, if the patent had been granted on the day referred to in subsection (1), have infringed both—
  - (i) the patent; and
  - (ii) the claims (as interpreted by the description and any drawings that form part of the complete specification) in the form in which they were contained in the complete specification immediately before it became open to public inspection.
(3) If it is alleged that an infringement has occurred in the period commencing with the date on which the complete specification became open to public inspection and ending with the date that the patent is granted, the period of limitation for taking an action for that infringement is the later of—
- (a) 6 years from the date of the alleged infringement; or
- (b) 3 years from the date of the grant of the patent.
(4) Subsection (3) applies despite anything to the contrary in the Limitation Act 1950.
Compare: 1953 No 64 s 20(4), (5); Patents Act 1990 s 57(1), (3) (Aust); Patents Act 1977 s 69(2) (UK)

78 Defence for period between complete specification becoming open to public inspection and acceptance

(1) It is a defence to proceedings under section 77(1) in respect of an act done during the specified period if the defendant proves that a patent could not validly have been granted in respect of the claims (as framed when the act was done) that are alleged to have been infringed by the doing of the act.
~~(2) An act is done during the specified period if it is done—~~
- ~~(a) after the complete specification referred to in section 77(1) became open to public inspection; and~~
- ~~(b) before that complete specification was accepted.~~
~~Compare: Patents Act 1990 s 57(4) (Aust)~~

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

(1) In a proceeding under section 77, the court must, in considering the amount of damages or an account of profits for an infringement, consider whether or not it would have been reasonable to expect, from a consideration of the complete specification that became open to public inspection, that a patent would be granted that would confer on the patentee protection from an act of the same description as that found to infringe the rights conferred by that section.
(2) If the court finds that it would not have been reasonable, the court must reduce the damages, or the amount of an account of profits, to an amount that it thinks just.
Compare: Patents Act 1977 s 69(3) (UK)

Subpart 8—Amendment of specifications after acceptance

79 General rules concerning amendments of specifications after acceptance

(1) After the acceptance of a complete specification, an amendment to that specification is not allowable and must not be made~~, except for the purpose of correcting an obvious mistake,~~ if the effect of the amendment is that—
- (a) the specification as amended would claim or describe matter that was not in substance disclosed in the specification before the amendment; or
- (b) a claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.
(1A) Subsection (1) does not apply to an amendment for the purpose of correcting an obvious mistake made in, or in relation to, a complete specification.
(2) If, after the date of the publication of the accepted complete specification, any amendment of the specification is allowed by the Commissioner or the court,—
- (a) the right of the patentee or applicant to make the amendment must not be called into question except on the ground of fraud; and
- (b) the amendment must, in all courts and for all purposes, be treated as forming part of the specification.
(3) However, in construing the specification as amended, reference may be made to the specification as originally published.
Compare: 1953 No 64 s 40(1), (2)

80 Amendment must be published in journal

If, after the date of the publication of the accepted complete specification, any amendment of the specification is allowed under sections 81 to 85, the fact that the specification has been amended must be published in the journal.
Compare: 1953 No 64 s 40(3)

81 Amendment of specification with leave of Commissioner

(1) The Commissioner may, on a request made under this section by a patentee, or by an applicant for a patent at any time after the acceptance of the complete specification, allow the complete specification to be amended subject to any conditions that the Commissioner thinks fit.
(2) However, the Commissioner must not allow a specification to be amended on a request made under this section while any relevant proceeding is pending.
(3) Every request for leave to amend a specification under this section must—
- (a) state the nature of the proposed amendment; and
- (b) give full particulars of the reasons for the request; and
- (c) be made in the prescribed manner (if any).
(4) This section is subject to section 79 (which contains general rules about amendments of specifications).
Compare: 1953 No 64 s 38(1), (2)

82 Request for leave to amend must be published in journal

(1) Every request for leave to amend a specification under section 81, and the nature of the proposed amendment, must be published in the journal.
(2) However, if the request is made before the date of the publication of the accepted complete specification, the Commissioner may, if the Commissioner thinks fit, dispense with publication under subsection (1) or direct that publication be postponed until the date of the publication of the accepted complete specification.
Compare: 1953 No 64 s 38(3)

83 Opposition to proposed amendment

(1) Any person may give notice to the Commissioner of opposition to a proposed amendment within the prescribed period after the publication of a request under section 82.
(2) If a notice is given within the prescribed period, the Commissioner must—
- (a) notify the person who made the request under section 81; and
- (b) give that person and the opponent a reasonable opportunity to be heard before the Commissioner decides the case.
Compare: 1953 No 64 s 38(4)

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

Sections 81 to 83 do not apply in relation to any amendment of a specification effected—
- (a) on a reference to the Commissioner of a dispute as to the infringement or validity of a claim; or
- (b) in accordance with any provision of this Act that authorises the Commissioner to revoke a patent, or to refuse to grant a patent, unless the specification is amended to the Commissioner’s satisfaction.
- (b) in accordance with any of sections 91(2), 92(2), and 105(4)(b).
Compare: 1953 No 64 s 38(6)

85 Amendment of specification with leave of court

(1) In any relevant proceeding in relation to a patent, the court may, by order, allow the patentee to amend the patentee’s complete specification in the manner and subject to the terms as to costs, publication, or otherwise that the court thinks fit.
(2) If, in any proceedings for the revocation of a patent, the court decides that the patent is invalid, the court may allow the specification to be amended under this section instead of revoking the patent.
(3) If an application for an order under this section is made to the court,—
- (a) the applicant for that order must give notice of the application to the Commissioner; and
- (b) the Commissioner may appear and be heard on the application; and
- (c) the Commissioner must appear if he or she is directed by the court to appear.
(4) This section is subject to section 79 (which contains general rules about amendments of specifications).
Compare: 1953 No 64 s 39

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

Assertions by third parties within prescribed period

86 Assertions by third parties on novelty and inventive step

(1) AAny person may, within the prescribed period after a complete specification becomes open to public inspection but before the date of the publication of the accepted complete specification, notify the Commissioner, in the prescribed manner (if any), that the person asserts that the invention, so far as claimed in a claim, is not a patentable invention because it does not comply with section 13(b) (which relates to the requirement for the invention to be novel and involve an inventive step).
(2) The notice must state the reasons for the person’s assertion.
(3) The notice and any documents accompanying it are open to public inspection.
Compare: Patents Act 1990 s 27(1), (4) (Aust)

87 Commissioner must consider and deal with notice in prescribed manner

(1) The Commissioner must inform the applicant in writing of any matter of which the Commissioner is notified under section 86 and send the applicant a copy of any document accompanying the notice.
(2) The Commissioner must otherwise consider and deal with a notice under section 86 in the prescribed manner.
Compare: Patents Act 1990 s 27(2), (3) (Aust)

Opposition to grant of patent

87A Opposition to grant of patent

(1) Any person may, in the prescribed manner, oppose the grant of a patent on 1 or more of the following grounds:
- (a) that the invention, so far as claimed in a claim, is not a patentable invention under section 13:
- (b) that the nominated person is not entitled to the patent:
- (c) that the complete specification does not comply with subpart 2 (which relates to specification requirements):
- (d) that the applicant is attempting, or has attempted, to obtain the grant of a patent by fraud, false suggestion, or a misrepresentation:
- (e) that the invention, so far as claimed in a claim, was secretly used in New Zealand before the priority date of that claim:
- (f) that granting the patent would be contrary to law.
(2) For the purposes of subsection (1)(a), account must not be taken of any secret use of the invention.
(3) For the purposes of subsection (1)(e), account must not be taken of any use of the invention—
- (a) for the purpose of reasonable trial or experiment only if the trial or experiment is conducted by, on behalf of, or with the consent of the nominated person or any person from whom the nominated person derives title; or
- (b) by a government department or any person authorised by a government department, in consequence of the nominated person, or any person from whom the nominated person derives title, communicating or disclosing the invention directly or indirectly to that department or person; or
- (c) by any other person, in consequence of the nominated person, or any person from whom the nominated person derives title, communicating or disclosing the invention to that person in confidence if the use of the invention is without the consent of the nominated person or of any person from whom the nominated person derives title.

87B Hearing and decision by Commissioner

If the grant of a patent is opposed, the Commissioner must—
- (a) give the applicant and the opponent a reasonable opportunity to be heard before deciding a case; and
- (b) consider whether any of the following grounds are established on the balance of probabilities:
  - (i) any ground set out in section 87A that is relied upon by the opponent:
  - (ii) any other ground set out in section 87A that the Commissioner has decided to take into account (whether relied upon by the opponent or not); and
- (c) otherwise decide and deal with the case in the prescribed manner.

Re-examination after acceptance

88 Re-examination of complete specification before patent is granted

(1) The Commissioner may, and must if requested to do so by any person, re-examine a ~~complete specification~~ patent application and the complete specification relating to the application on or after the date of the publication of the accepted complete specification if the patent has not been granted.
~~(2) A request under subsection (1) must be made in the prescribed manner (if any).~~
(2) A request under subsection (1) must—
- (a) specify 1 or more of the grounds set out in section 87A that the person wants the Commissioner to consider; and
- (b) be made in the prescribed manner (if any).

89 Re-examination of complete specification after patent is granted

(1) If a patent has been granted, the Commissioner may, and must if requested to do so by any person, re-examine the ~~complete specification~~ patent application and the complete specification relating to the application.
(2) A request under subsection (1) must—
- (a) specify 1 or more of the grounds set out in section 106 that the person wants the Commissioner to consider; and
- (b) be made in the prescribed manner (if any).
~~(2) Subsection (1) does not apply if—~~
- ~~(a) a relevant proceeding in relation to the patent is pending; or~~
- ~~(b) an application for the revocation of the patent has been made to the Commissioner under section 104 and the Commissioner has not yet made a decision on that application.~~
~~(3) A request under subsection (1) must be made in the prescribed manner (if any).~~
~~(4) If the Commissioner has started to re-examine a complete specification relating to a patent under subsection (1), the Commissioner must not continue the re-examination if—~~
- ~~(a) a relevant proceeding in relation to the patent is commenced and the Commissioner has received notification of the commencement of that proceeding; or~~
- ~~(b) an application for the revocation of the patent has been made to the Commissioner under section 104 and the Commissioner has not yet made a decision on that application.~~
(5) The Commissioner must re-examine ~~the complete specification~~ a patent application and the complete specification relating to the application if the validity of a patent is disputed in any proceedings before the court under this Act and the court directs the Commissioner to ~~re-examine the complete specification~~ conduct a re-examination.
Compare: Patents Act 1990 s 97 (Aust)

89A Relationship between re-examination and other proceedings

(1) The Commissioner must not conduct a re-examination under this subpart if,—
- (a) in the case of section 88, an opposition proceeding under this subpart in relation to the application is pending:
- (b) in the case of section 89(1),—
  - (i) a relevant proceeding in relation to the patent is pending; or
  - (ii) a proceeding before the Commissioner under subpart 11 in relation to the patent is pending.
(2) If a re-examination under this subpart has commenced, the Commissioner must not continue the re-examination if,—
- (a) in the case of section 88, an opposition proceeding under this subpart in relation to the application is commenced:
- (b) in the case of section 89(1),—
  - (i) a relevant proceeding in relation to the patent is commenced and the Commissioner has received notification of the commencement of that proceeding; or
  - (ii) a proceeding before the Commissioner under subpart 11 in relation to the patent is commenced.
(3) If a re-examination has been discontinued under subsection (2), the Commissioner may, if he or she thinks fit, continue the re-examination after the opposition proceeding, relevant proceeding, or proceeding under subpart 11 (as the case may be) is completed.
(4) Despite sections 88(1) and 89(1), the Commissioner is not required to conduct a re-examination after receiving a request under either of those subsections if the Commissioner considers that all of the issues raised in relation to the request are the same, or substantially the same, as those raised in a previous opposition or re-examination proceeding under this subpart or a previous proceeding before the Commissioner or the court under subpart 11.
(5) On a re-examination under section 88 or 89(1), the Commissioner may refuse to consider any issue that the Commissioner considers is the same, or substantially the same, as an issue raised in a previous opposition or re-examination proceeding under this subpart or a previous proceeding before the Commissioner or the court under subpart 11.
(6) Sections 88, 89, and 90 are subject to this section.

90 Report on re-examination

(1) On re-examining a complete specification under this subpart, the Commissioner must consider and report on whether, to the best of the Commissioner’s knowledge, the invention, so far as claimed in a claim, when compared with the prior art base,—
- ~~(a) is novel; and~~
- ~~(b) involves an inventive step.~~
(2) For the purposes of subsection (1), in considering the prior art base, account must not be taken of information that is made publicly available only through the doing of an act (whether in or out of New Zealand).
(1) On a re-examination under this subpart, the Commissioner must consider and report on whether the Commissioner is satisfied, on the balance of probabilities, that any of the relevant grounds are established.
(2) For the purposes of subsection (1) and sections 91 and 92, relevant grounds means,—
- (a) in the case of a request under section 88(1), the grounds specified under section 88(2)(a) and any other grounds set out in section 87A that the Commissioner has decided to consider:
- (b) in the case of a re-examination under section 88 that is commenced by the Commissioner, the grounds set out in section 87A that the Commissioner has decided to consider:
- (c) in the case of a request under section 89(1), the grounds specified under section 89(2)(a) and any other grounds set out in section 106 that the Commissioner has decided to consider:
- (d) in the case of a re-examination under section 89 that is commenced by the Commissioner, the grounds set out in section 106 that the Commissioner has decided to consider:
- (e) in the case of a re-examination that was directed under section 89(5), the grounds set out in section 106 that the court has asked the Commissioner to consider.
(3) A copy of a report under this section must, if the re-examination was directed under section 89(5), be given by the Commissioner to the court that gave the direction.
Compare: Patents Act 1990 ss 98, 100 (Aust)

91 Refusal to grant patent: re-examination before grant

~~(1) If the Commissioner makes an adverse report on a re-examination under section 88, the Commissioner may refuse to grant the patent.~~
(1) If the Commissioner reports on a re-examination under section 88 that he or she is satisfied, on the balance of probabilities, that any of the relevant grounds are established, the Commissioner may refuse to grant the patent.
(2) The Commissioner must not refuse to grant a patent under this section unless the Commissioner has, if appropriate, given the applicant a reasonable opportunity to amend the relevant specification for the purpose of removing any lawful ground of objection ~~in relation to section 13(b) (which relates to the requirement for the invention to be novel and involve an inventive step)~~ and the applicant has failed to do so.
Compare: Patents Act 1990 s 100A (Aust)

92 Revocation of patent: re-examination after grant

(1) If the Commissioner makes an adverse report on a re-examination under section 89, the Commissioner may, by notice in writing, revoke the patent, either wholly or in so far as it relates to a particular claim (as the case may be).
(1) If the Commissioner reports on a re-examination under section 89 that he or she is satisfied, on the balance of probabilities, that any of the relevant grounds are established, the Commissioner may, by notice in writing, revoke the patent, either wholly or in so far as it relates to a particular claim (as the case may be).
(2) The Commissioner must not revoke a patent under this section unless the Commissioner has, if appropriate, given the patentee a reasonable opportunity to amend the relevant specification for the purpose of removing any lawful ground of objection ~~in relation to section 13(b) (which relates to the requirement for the invention to be novel and involve an inventive step)~~ and the patentee has failed to do so.
(3) The Commissioner must not revoke a patent under this section—
- (a) while a relevant proceeding in relation to that patent is pending; or
- (b) before the Commissioner has made a decision on an application for revocation of the patent made under section 104 (if an application has been made to the Commissioner under that section).
(4) Subpart 11 (which relates to the revocation and surrender of patents) does not limit this section.
Compare: Patents Act 1990 s 101 (Aust)

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

(1) A person who has made a request under section 88(1) or 89(1)—
- (a) does not have a right to be heard in relation to the re-examination; and
- (b) does not have any other right to participate in the re-examination proceeding after the request is made; and
- (c) does not have a right to appeal to the court against any decision of the Commissioner under any of sections 88 to 92.
(2) Section 261 (which relates to appeals of decisions of the Commissioner) is subject to this section.

Subpart 10—Grant of patent

General rules

93 When patent must be granted

(1) The Commissioner must grant a patent to the nominated person, or to 2 or more nominated persons jointly, as soon as is reasonably practicable after the date that is 3 months after the date of the publication of the accepted complete specification if either—
- (a) a request to re-examine the complete specification has not been made in accordance with section 88 and the Commissioner decides that he or she will not re-examine the complete specification under that section; or
- ~~(b) the Commissioner decides, following all re-examinations of the complete specification relating to the patent application under section 88, that the patent should be granted.~~
(1) The Commissioner must grant a patent to the nominated person, or to 2 or more nominated persons jointly, as soon as is reasonably practicable after the date that is 3 months after the date of the publication of the accepted complete specification if—
- (a) there is no opposition to the grant; or
- (b) in spite of opposition, the Commissioner's decision, or the decision on appeal, is that a patent should be granted.
(1A) However, if, before the patent is granted, a re-examination proceeding is commenced under section 88 (whether as a result of a request or a decision of the Commissioner) and that proceeding has not been discontinued or ended under section 89A, the Commissioner—
- (a) must not act under subsection (1) until after the Commissioner has prepared a report under section 90; and
- (b) may refuse to grant the patent in accordance with section 91.
(1B) The Commissioner may postpone the grant of the patent in the prescribed circumstances.
(2) If a nominated person dies before a patent is granted on the patent application, the patent may be granted to his or her personal representative.
(3) The date that the patent is granted must be entered in the patents register.
(4) The Commissioner must, as soon as is reasonably practicable after a patent has been granted, publish in the journal a notice that it has been granted.
~~(5) This section does not limit the Commissioner’s power to refuse to grant a patent under section 91.~~
Compare: 1953 No 64 s 27(1)

94 Validity of patent not guaranteed

Nothing done under this Act guarantees the granting of a patent, or that a patent is valid, in New Zealand or anywhere else.
Compare: Patents Act 1990 s 20(1) (Aust)

95 Patent date

(1) Every patent must be given a patent date that is—
- (a) the filing date of the relevant complete specification; or
- (b) if the regulations provide for the determination of a different date as the patent date, the date determined under the regulations.
(2) However, no proceeding may be taken for an infringement committed before the date on which the relevant complete specification became open to public inspection.
(3) The patent date of every patent must be entered in the patents register.
Compare: 1953 No 64 s 30(1), (2); Patents Act 1990 s 65 (Aust)

96 Patent granted for one invention only

(1) A patent ~~may~~ must be granted for one invention only.
(2) However, it is not competent for any person in an action or other proceeding to take any objection to a patent on the ground that it has been granted for more than 1 invention.
Compare: 1953 No 64 s 29(4)

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

(1) This section applies if, at any time after a patent has been granted, the Commissioner is satisfied that the person to whom the patent was granted—
- (a) had died before the patent was granted; or
- (b) in the case of a body corporate, had ceased to exist before the patent was granted.
(2) The Commissioner may amend the patent by substituting for the name of that person the name of the person to whom the patent should have been granted.
(3) The patent has effect, and is to be treated as always having had effect, in accordance with that amendment.
Compare: 1953 No 64 s 28

Patents of addition

98 Patents of addition

~~(1) This section applies if—~~
- ~~(a) a patent application is made in respect of any improvement in, or modification of, an invention (the main invention); and~~
- ~~(b) the applicant also applies, or has applied, for a patent for that invention or is the patentee of that invention.~~
(1) This section applies if—
- (a) a patent for an invention (the main invention) has been applied for or granted; and
- (b) the applicant or patentee (or a person authorised by the applicant or patentee) applies for a further patent for an improvement in, or modification of, the main invention; and
- (c) the application for that further patent is made in the prescribed manner.
(2) The Commissioner may, on the request of the applicant for the further patent, grant the patent for the improvement or modification as a patent of addition.
Compare: 1953 No 64 s 34(1); Patents Act 1990 s 81(1) (Aust)

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

(1) This section applies if—
- (a) an invention that is an improvement in, or modification of, another invention is the subject of an independent patent; and
- (b) the patentee of that patent is also the patentee of the patent for the main invention.
(2) The Commissioner may, on the request of the patentee, by order revoke the patent for the improvement or modification and grant to the patentee a patent of addition for the improvement or modification.
(3) The patent of addition must have the same patent date as the patent date of the patent that is revoked.
Compare: 1953 No 64 s 34(2)

100 Restrictions on granting of patents of addition

(1) The Commissioner must not grant a patent as a patent of addition unless the filing date of the complete specification is the same as, or later than, the filing date of the complete specification for the main invention.
(2) The Commissioner must not grant a patent of addition before the granting of the patent for the main invention.
Compare: 1953 No 64 s 34(3), (4)

101 Term of patent of addition

(1) A patent of addition—
- (a) must be granted for a term equal to that of the patent for the main invention, or as much of the term of the patent for the main invention that is unexpired; and
- ~~(b) remains in force—~~
  - ~~(i) during that term; or~~
  - ~~(ii) until the expiry of the term of the patent for the main invention (if the term of the patent for the main invention expires before the expiry of that term).~~
- (b) remains in force during that term or until the earlier of expiry or revocation of the patent for the main invention.
(2) However, if the patent for the main invention is revoked under this Act, the court or the Commissioner (as the case may be) may order that the patent of addition become, and continue in force as, an independent patent for the remainder of the term of the patent for the main invention.
Compare: 1953 No 64 s 34(5)

102 Renewal fees for patents of addition

(1) No renewal fees are payable in respect of a patent of addition.
(2) However, if any patent of addition becomes an independent patent under section 101(2), the renewal fees are payable from that time, on the same dates, as if the patent had been originally granted as an independent patent.
Compare: 1953 No 64 s 34(6)

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

(1) The grant of a patent of addition must not be refused, and a patent granted as a patent of addition must not be revoked or invalidated, on the ground only that the invention claimed in the complete specification of the patent of addition does not involve any inventive step having regard to any publication or use of—
- (a) the main invention described in the complete specification for the main invention; or
- (b) any improvement in, or modification of, the main invention described in the complete specification of—
  - (i) a patent of addition to the patent for the main invention; or
  - (ii) an application for a patent of addition to the patent for the main invention.
(2) The validity of a patent of addition must not be questioned on the ground that the invention should have been the subject of an independent patent.
Compare: 1953 No 64 s 34(7)

Subpart 11—Revocation and surrender of patents

104 Revocation of patent

(1) The Commissioner or the court may, on an application under this section, revoke a patent on any of the grounds set out in section 106.
(2) An application under this section may be made by any person.
Compare: 1953 No 64 ss 41(1), (3), 42

105 Provisions concerning applications for revocation made to Commissioner

~~(1) The Commissioner may refuse any application to the Commissioner under section 104 that is frivolous or vexatious.~~
(1) The Commissioner may refuse any application to the Commissioner under section 104 if the Commissioner considers that—
- (a) the application is frivolous or vexatious; or
- (b) all of the issues raised by the application are the same, or substantially the same, as the issues raised in a previous opposition or re-examination proceeding under subpart 9 or in a previous proceeding before the Commissioner or the court under this subpart.
(1A) The Commissioner may, in considering an application under section 104, refuse to consider any issue that the Commissioner considers is the same, or substantially the same, as an issue raised in a previous opposition or re-examination proceeding under subpart 9 or in a previous proceeding before the Commissioner or the court under this subpart.
(2) If a relevant proceeding in relation to a patent is pending in any court, an application to the Commissioner under section 104 may be made only with the leave of that court.
(3) If an application is made to the Commissioner under section 104, the Commissioner must—
- (a) notify the patentee; and
- (b) give to the person who made the application and the patentee a reasonable opportunity to be heard before deciding the case (unless the application has been refused under subsection (1)).
(3A) The Commissioner may, at any stage of a proceeding relating to an application made to the Commissioner under section 104, refer the application to the court.
(4) If, on an application made to the Commissioner under section 104, the Commissioner is satisfied, on the balance of probabilities, that any of the grounds set out in section 106 are established, the Commissioner may by order direct that the patent is either—
- (a) revoked unconditionally; or
- (b) revoked unless the complete specification is amended to the Commissioner’s satisfaction within the time that is specified in the order.
Compare: 1953 No 64 s 42(3)

106 Grounds for revoking patent

(1) A patent may be revoked on 1 or more of the following grounds:
- (a) that the invention, so far as claimed in a claim, is not a patentable invention under section 13:
- (b) that the patentee is not entitled to the patent:
- ~~(c) that the complete specification does not comply with section 37(1) (which requires descriptions of the invention, method of performance, and claims):~~
- ~~(d) that the scope of a claim is not sufficiently and clearly defined or that a claim is not fairly based on the matter disclosed in the complete specification:~~
- (c) that the complete specification does not comply with subpart 2 (which relates to specification requirements):
- (e) that the patent was obtained by fraud, false suggestion, or a misrepresentation:
- (f) that the invention, so far as claimed in a claim, was secretly used in New Zealand before the priority date of that claim:
- (g) that the patent has been granted contrary to law.
(2) For the purposes of subsection (1)(a), account must not be taken of any secret use of the invention.
(3) For the purposes of subsection (1)(f), account must not be taken of any use of the invention—
- (a) for the purpose of reasonable trial or experiment only if the trial or experiment is conducted by, on behalf of, or with the consent of the nominated person or any person from whom the nominated person derives title; or
- (b) by a government department or any person authorised by a government department ~~if the nominated person, or any person from whom the nominated person derives title, has communicated or disclosed~~, in consequence of the nominated person, or any person from whom the nominated person derives title, communicating or disclosing the invention directly or indirectly to that department or person; or
- (c) by any other person, in consequence of the nominated person, or any person from whom the nominated person derives title, communicating or disclosing the invention to that person in confidence if the use of the invention is without the consent of the nominated person or of any person from whom the nominated person derives title.
(4) Every ground set out in subsection (1) is available as a ground of defence in any proceeding for the infringement of the patent.
Compare: 1953 No 64 s 41(1), (2), (4)

107 Priority date in case of obtaining

~~(1) This section applies if—~~
- ~~(a) a patent application (application A) is made for an invention that has been claimed in a complete specification filed in relation to another patent application (application B); and~~
- ~~(b) the patent granted in relation to application B has been revoked by the court or the Commissioner on the ground specified in section 106(1)(b).~~
(2) The Commissioner may direct that application A and any specification filed in relation to it must, for the purposes of subpart 5, be treated as having been filed on the date on which the corresponding document was filed, or is treated as having been filed, in relation to application B if the Commissioner is satisfied that the patent granted in relation to application B was obtained in breach of the rights of the person who is, or may be, granted a patent in relation to application A or any person under or through whom that person claims.
~~Compare: 1953 No 64 s 62(b)~~

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

(1) The court may, on the application of a government department, revoke a patent if the court is satisfied that the patentee has, without reasonable cause, failed to comply with a request of the government department to exploit the patented invention for the services of the Crown on reasonable terms ~~under section 170~~.
(2) The ground for revoking a patent set out in subsection (1) is available as a ground of defence in any proceeding for the infringement of the patent.
Compare: 1953 No 64 s 41(3)(a)

109 Surrender of patent

(1) A patentee may, by notice given to the Commissioner, offer to surrender the patent.
(2) The Commissioner must publish the offer in the journal.
(3) A person may, within the prescribed period after the publication, give notice to the Commissioner of opposition to the surrender.
(4) The Commissioner must notify the patentee if notice of opposition is given.
(5) The Commissioner may accept the offer and by order revoke the patent if—
- (a) the Commissioner has given the patentee and the opponent a reasonable opportunity to be heard; and
- (b) the Commissioner is satisfied that the patent may properly be surrendered.
Compare: 1953 No 64 s 43

Subpart 12—Restoration of lapsed patents and restoration of patent applications

Restoration of lapsed patents

110 Restoration of lapsed patents

(1) This section applies if a patent has ceased to have effect by reason of a failure to pay any renewal fee within the prescribed period or within that period as extended under section 20.
(2) The Commissioner may, on a request made in the prescribed manner and in accordance with this subpart, by order restore the patent, and any patent of addition specified in the request that has ceased to have effect when the patent ceased to have effect, if the Commissioner is satisfied that the failure to pay the renewal fee was unintentional.
Compare: 1953 No 64 s 35(1)

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

(1) A request for an order under section 110 must contain a statement that fully sets out the circumstances that led to the failure to pay the renewal fee.
(2) The Commissioner may require the person who makes the request to provide any further evidence that the Commissioner thinks fit.
Compare: 1953 No 64 s 35(3)

112 Persons who may make request for restoration of patent

(1) A request for an order under section 110 may be made by the person who was the patentee or, if that person is deceased, by that person’s personal representative.
(2) If the patent was held by 2 or more persons jointly, the request for an order under section 110 may, with the leave of the Commissioner, be made by 1 or more of them without joining the others.
Compare: 1953 No 64 s 35(2)

113 When request for restoration of patent may be made

(1) A request for an order under section 110 may only be made within the prescribed period.
(2) However, the Commissioner may extend the period within which a request may be made if the Commissioner is satisfied that there was no undue delay in making the request.
(3) The person who makes the request must, for the purposes of subsection (2), provide the Commissioner with a statement that fully sets out the circumstances that caused the delay and the reasons why the delay is not undue.
(4) The Commissioner may require that person to provide any further evidence that the Commissioner thinks fit.

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

The Commissioner must, after considering a request made in accordance with sections 110 to 113, give the person who made the request a reasonable opportunity to be heard if the Commissioner is not satisfied that a prima facie case has been made out for an order under section 110.

115 Commissioner to publish request in journal

The Commissioner must publish a request made in accordance with sections 110 to 113 in the journal if the Commissioner is satisfied that a prima facie case has been made out for an order under section 110.
Compare: 1953 No 64 s 35(4)

116 Notice of opposition and reasonable opportunity to be heard

(1) Any person may, within the prescribed period, give notice to the Commissioner of opposition to an order being made under section 110 on either or both of the following grounds:
- (a) that the failure to pay the renewal fee was not unintentional:
- (b) if the period within which a request for an order under section 110 may be made is extended under section 113, that the delay in making the request was undue.
(2) The Commissioner must notify the person who made the request if a person has given notice under subsection (1) and provide the person who made the request with a copy of that notice.
(3) The Commissioner must give the person who made the request and the opponent a reasonable opportunity to be heard before the Commissioner decides the case.
Compare: 1953 No 64 s 35(4), (5)

117 Order to be made on payment of unpaid fees

(1) If the Commissioner has published a request under section 115, he or she must make an order under section 110 in accordance with the request after the prescribed period for giving notice of opposition if—
- (a) all unpaid renewal fees are paid; and
- (b) all other prescribed additional penalties (if any) are paid; and
- (c) either—
  - (i) no notice of opposition is given within the prescribed period; or
  - (ii) the decision of the Commissioner is in favour of the person who made the request (in the case of a notice of opposition having been given within the prescribed period).
(2) An order for the restoration of a patent—
- (a) may be made subject to a condition requiring the registration of any matter if the provisions of this Act concerning entries in the patents register have not been complied with; and
- (b) must contain, or be subject to, the provisions that are prescribed for the protection or compensation of persons who availed themselves, or took definite steps by way of contract or otherwise to avail themselves, of the invention between the date when the patent ceased to have effect and the date on which the request is published under section 115; and
- (c) may be made subject to any other conditions that the Commissioner thinks fit.
(3) If any condition of an order under this section is not complied with by the patentee, the Commissioner may revoke the order and give any directions that are consequential on the revocation that the Commissioner thinks fit.
(4) The Commissioner must, before the Commissioner makes a decision under subsection (3), give the patentee a reasonable opportunity to be heard.
Compare: 1953 No 64 s 35(5)–(7)

Restoration of patent applications

118 Request for restoration of void or abandoned patent applications

(1) This section applies if—
- (a) the patent application is abandoned under section 33A, 59B, or 63 or is void under section 67 or 69; or
- (b) in the case of a Treaty application, the Treaty application is void under section 48(1)(d) or (e).
(2) The applicant may make a request to the Commissioner in the prescribed manner for an order to restore the patent application and to extend the period for complying with the requirements imposed on the applicant by or under this Act or the Patent Cooperation Treaty (as the case may be) to a date that is specified in the order.
(3) Every request for an order must contain a statement that fully sets out the circumstances that led to the failure of the applicant to comply with the requirements imposed on the applicant by or under this Act ~~within the time allowed by or under this Act~~ or the Patent Cooperation Treaty (as the case may be).
(4) The Commissioner must publish the request in the journal if the Commissioner is satisfied that the failure of the applicant to comply with the requirements imposed on the applicant by or under this Act or the Patent Cooperation Treaty (as the case may be) within the time allowed by or under this Act was unintentional.
Compare: 1953 No 64 s 37(1), (2)

119 When request for restoration of application may be made

(1) A request under section 118 may only be made within the prescribed period.
(2) However, the Commissioner may extend the period within which a request may be made if the Commissioner is satisfied that there was no undue delay in making the request.
(3) The applicant must, for the purposes of subsection (2), provide the Commissioner with a statement that fully sets out the circumstances that caused the delay and the reasons why the delay is not undue.
(4) The Commissioner may require the applicant to provide any further evidence that the Commissioner thinks fit.

120 Notice of opposition

(1) Any person may, within the prescribed period, give notice to the Commissioner of opposition to an order being made under section 121 on either or both of the following grounds:
- (a) that any failure of the applicant to comply with the requirements imposed on the applicant by or under this Act or the Patent Cooperation Treaty (as the case may be) within the time allowed by or under this Act was not unintentional:
- (b) if the period within which a request under section 118 may be made is extended under section 119, that the delay in making the request was undue.
(2) The Commissioner must notify the applicant if a person has given notice under subsection (1) and provide the applicant with a copy of that notice.
(3) The Commissioner must give the applicant and the opponent a reasonable opportunity to be heard before the Commissioner decides the case.
Compare: 1953 No 64 s 37(3), (4)

121 Commissioner to determine matter

(1) The Commissioner must, after the expiry of the prescribed period for giving notice of opposition under section 120,—
- (a) by order restore the patent application and extend the period for complying with the requirements imposed on the applicant by or under this Act or the Patent Cooperation Treaty (as the case may be) to a period that is specified in the order if the Commissioner is satisfied that—
  - (i) every failure of the applicant to comply with the requirements imposed on the applicant by or under this Act or the Patent Cooperation Treaty (as the case may be) within the time allowed by or under this Act was unintentional; and
  - (ii) if the period within which the request for an order under this section may be made was extended under section 119, there was no undue delay in making the request; or
- (b) dismiss the request.
(2) An order under this section must contain, or be subject to, the provisions that are prescribed for the protection or compensation of persons who availed themselves, or took definite steps by way of contract or otherwise to avail themselves, of the invention that is the subject of the patent application between the ~~specified date~~ date on which the patent application became void or was abandoned and the date on which the request is published under section 118.
~~(3) For the purposes of subsection (2), the specified date means,—~~
- ~~(a) in the case of a patent application that is a Treaty application that is void under section 48, the date on which the application became void; and~~
- ~~(b) in any other case, the date when the patent application became void or abandoned.~~
(4) The Commissioner must publish in the journal the making of an order under subsection (1) after that order is made.
Compare: 1953 No 64 s 37(5), (6)

Subpart 13—Miscellaneous provisions

Substitution of applicants

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

(1) This section applies if, before a patent has been granted, a person would, if the patent were to be then granted, be entitled under an assignment or agreement, or by operation of law, to—
- (a) the patent; or
- (b) an interest in the patent; or
- (c) an undivided share in the patent or in an interest in the patent.
(2) The Commissioner may, on a request made by the person in the prescribed manner, direct that the patent application proceed in the name of the person, or in the names of the person and the applicant or the other joint applicant or applicants (as the case may require).
~~(3) If the Commissioner gives a direction,—~~
- ~~(a) the person must be taken to be the applicant, or a joint applicant, as the case may require; and~~
- ~~(b) the patent application must be taken to have been amended so as to request the grant of a patent to the person, either alone or as a joint patentee, as the case may require.~~
(3) If the Commissioner gives a direction, the person must be taken to be—
- (a) the applicant, or a joint applicant, as the case may require; and
- (b) the nominated person, or joint nominated person, as the case may require.
Compare: 1953 No 64 s 24(1); Patents Act 1990 s 113 (Aust)

123 Death of applicant

(1) If an applicant dies before a patent is granted on the patent application, his or her personal representative may proceed with the application.
(2) However, the Commissioner may also dispense with probate and letters of administration and allow a person to proceed with a deceased applicant’s application under section 162.
Compare: Patents Act 1990 s 215(1) (Aust)

124 Disputes between interested parties

(1) If a dispute arises between interested parties in relation to a patent application concerning whether, or in what manner, the application should proceed, the Commissioner may, on a request made to the Commissioner, give any directions that the Commissioner thinks fit—
- (a) for enabling the application to proceed in the name of 1 or more of the parties alone; or
- (b) for regulating the manner in which it is to proceed; or
- (c) for both of the purposes referred to in paragraphs (a) and (b).
(2) A request under subsection (1) must be made in the prescribed manner and may be made by any of the parties.
(3) The Commissioner must, before giving a direction, give a reasonable opportunity to be heard to any person that the Commissioner considers is interested (whether or not that person is currently an interested party).
Compare: 1953 No 64 s 24(5)

Provisions for secrecy of certain inventions

125 Directions in relation to inventions concerning defence

(1) The Commissioner may give any of the directions described in subsection (2) if—
- (a) a patent application has been made for an invention either before or after the commencement of this section; and
- (b) the invention is, in the opinion of the Commissioner,—
  - (i) one of a class notified to the Commissioner by the Minister of Defence as relevant for defence purposes; or
  - (ii) likely to be valuable for defence purposes.
(2) The directions are directions—
- (a) for prohibiting or restricting the publication of information concerning the invention; or
- (b) for prohibiting or restricting the communication of information concerning the invention to a person or class of persons specified in the directions.
(3) While the directions are in force,—
- (a) the patent application may, subject to the directions, proceed up to the acceptance of the complete specification; and
- (b) the patent application and the complete specification must not become open to public inspection; and
- (c) a patent must not be granted in relation to the patent application.
Compare: 1953 No 64 s 25(1)

126 Commissioner must give notice to Minister of Defence

If the Commissioner gives directions under section 125, the Commissioner must give notice of the patent application and of the directions to the Minister of Defence.
Compare: 1953 No 64 s 25(2)

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

(1) The Minister of Defence must,—
- (a) on receipt of a notice under section 126, consider whether the publication of the invention would be prejudicial to the defence of New Zealand; and
- (b) unless a notice under subsection (3) has been given to the Commissioner, reconsider that question before the expiry of 9 months from the filing date of the patent application and at least once in every subsequent year.
(2) For the purposes of subsection (1), the Minister of Defence may, at any time after the complete specification has been accepted or, with the consent of the applicant, at any time before the complete specification has been accepted, inspect the patent application and any documents provided to the Commissioner in connection with that application.
(3) If, on consideration of the invention at any time, it appears to the Minister of Defence that the publication of the invention would not, or would no longer, be prejudicial to the defence of New Zealand, the Minister of Defence must give notice to the Commissioner to that effect.
Compare: 1953 No 64 s 25(2)(a)–(c)

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

On receipt of a notice under section 127, the Commissioner—
- (a) must revoke the directions given under section 125; and
- (b) may, subject to any conditions that the Commissioner thinks fit, extend the time for doing anything required or authorised to be done by or under this Act in connection with the patent application, whether or not that time has previously expired.
Compare: 1953 No 64 s 25(2)(d)

129 Acceptance of complete specification while directions in force

(1) This section applies if a complete specification filed for a patent application for an invention for which directions have been given under section 125 is accepted while the directions are in force.
(2) If any use of the invention is made while the directions are in force by, on behalf of, or to the order of a government department, subpart 6 of Part 4 applies to that use as if the patent had been granted for the invention.
(3) If it appears to the Minister of Defence that the applicant for the patent has suffered hardship by reason of the directions being in force, the Minister of Finance may pay to the applicant an amount by way of compensation that the Minister of Finance considers is reasonable.
(4) For the purposes of subsection (3), the Minister of Finance must have regard to—
- (a) the novelty and usefulness of the invention; and
- (b) the purpose for which the invention is designed; and
- (c) any other relevant matters.
Compare: 1953 No 64 s 25(3)

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

No maintenance fees and no renewal fees are payable for any period during which directions that are given under section 125 are in force if a patent is granted for an application for which directions have been given.
Compare: 1953 No 64 s 25(4)

131 Offence to fail to comply with directions

(1) Every person who fails to comply with a direction given under section 125 commits an offence if, at the time of the failure, the person knew or ought to have known that a direction had been given.
(2) Every person who commits an offence against subsection (1) is liable on conviction on indictment to imprisonment for a term not exceeding 2 years, to a fine not exceeding $20,000, or to both.
Compare: 1953 No 64 s 25(6)

132 Liability of directors and managers if body corporate commits offence

If a body corporate is convicted of an offence against section 131, every director and every person concerned in the management of the body corporate is guilty of the offence if it is proved—
- (a) that the act that constituted the offence took place with his or her authority, permission, or consent; and
- (b) that he or she—
  - (i) knew, or could reasonably be expected to have known, that the offence was to be or was being committed; and
  - (ii) failed to take all reasonable steps to prevent or stop it.
Compare: 1953 No 64 s 108

Part 4
Infringement, 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

A person infringes a patent if (other than under a licence or with the consent or agreement of the patentee) the person does anything in the patent area that the patentee has the exclusive right to do under section 17.

134 Infringement by supplying means to infringe to another person

(1) A person (A) also infringes a patent if (other than under a licence or with the consent or agreement of the patentee)—
- (a) A supplies, or offers to supply, in the patent area another person (B) with any of the means, relating to an essential element of the invention, for putting the invention into effect; and
- ~~(b) A knows, or ought reasonably to know, that the means are suitable and intended by B for putting the invention into effect; and~~
- (b) either—
  - (i) A knows, or ought reasonably to know, that the means are suitable and intended by B for putting the invention into effect; or
  - (ii) if the means is a staple commercial product, A supplies the means, or offers to supply the means, for the purpose of inducing B to put the invention into effect; and
- (c) B would infringe the patent by putting the invention into effect.
(2) However, it is not an infringement to supply or offer to supply a staple commercial product unless the supply or offer is made for the purpose of inducing B to do anything that would infringe the patent under section 133.

135 Presumption that product produced by infringing process

(1) If a patented process is a process for obtaining a new product, the same product produced by a person (other than under a licence or with the consent or agreement of the patentee) is presumed in an infringement proceedings to have been obtained by that process.
(2) Subsection (1) applies unless the defendant proves the contrary.
(3) In applying subsection (1), the court must not require any person to disclose any manufacturing or commercial secrets if the court thinks that it would be unreasonable to require that disclosure.
Compare: 1953 No 64 s 68A

What does not constitute infringement

136 No infringement for experimental use

(1) It is not an infringement of a patent for a person to do an act for experimental purposes relating to the subject matter of an invention ~~if the act does not unreasonably conflict with the normal exploitation of the invention~~.
(2) In this section, act for experimental purposes relating to the subject matter of an invention includes an act for the purpose of—
- (a) determining how the invention works:
- (b) determining the scope of the invention:
- (c) determining the validity of the claims:
- (d) seeking an improvement of the invention (for example, determining new properties, or new uses, of the invention).

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

(1) It is not an infringement of a patent if—
- (a) an invention is used—
  - (i) on board a foreign vessel, in the body of a foreign vessel, or in a foreign vessel’s machinery, tackle, apparatus, or other accessories, and the invention is used for the vessel’s actual needs only; or
  - (ii) in the construction or working of a foreign aircraft or foreign land vehicle or of a foreign aircraft’s or foreign land vehicle’s accessories; and
- (b) the vessel, aircraft, or land vehicle comes into the patent area accidentally or only temporarily.
(2) In this section, foreign means—
- (a) registered in a convention country, in the case of a vessel or aircraft; or
- (b) owned by a person resident or incorporated in a convention country, in the case of a land vehicle.
Compare: 1953 No 64 s 79

138 No infringement for use to produce information required by law

It is not an infringement of a patent for a person to make, use, import, sell, hire, or otherwise dispose of the invention solely for uses reasonably related to the development and submission of information required under ~~New Zealand law, or the law of any other country,~~ any law that regulates the manufacture, construction, use, importation, sale, hire, or disposal of any product (whether in New Zealand or elsewhere).
Compare: 1953 No 64 s 68B

138A No infringement for prior use of invention

(1) It is not an infringement of a patent for a person to do an act that exploits an invention, and that would infringe a patent apart from this section, if, immediately before the priority date of the relevant claim, the person—
- (a) was exploiting the invention in the patent area; or
- (b) had taken definite steps (contractually or otherwise) to exploit the invention in the patent area.
(2) Subsection (1) does not apply if, before the priority date, the person—
- (a) had stopped (except temporarily) exploiting the invention; or
- (b) had abandoned (except temporarily) the steps to exploit the invention.
(3) Subsection (1) does not apply to an invention the person derived from any of the following persons, unless the person derived the invention from information that was made publicly available by or with the consent of that person:
- (a) the patentee or nominated person:
- (b) any person from whom the patentee or nominated person derives title.
(4) A person (A) may—
- (a) dispose of the whole of A's entitlement under subsection (1) to exploit an invention without infringing a patent to another person (B) (and in this case subsections (1) to (3) apply to B as they applied to the first person who had that entitlement and from whom B's entitlement was directly or indirectly derived); but
- (b) may not grant a licence to another person to exploit the invention.
(5) This section applies in respect of a patent only if—
- (a) the relevant patent application was made under this Act on or after the commencement of Part 3 (and section 304 did not apply); or
- (b) this Act applies to the relevant patent application under section 302, 303, or 305(3).
Compare: Patents Act 1990 s 119 (Aust)

Counterclaim for revocation of patent

139 Defendant may counterclaim for revocation of patent

(1) A defendant may apply by way of counterclaim in ~~infringement proceedings~~ an infringement proceeding for revocation of the patent on any of the grounds stated in section 106.
(2) If the defendant is a government department, it may apply by way of counterclaim in ~~infringement proceedings~~ an infringement proceeding for revocation of the patent on the ground stated in section 108 (whether or not it also applies by way of counterclaim for revocation of the patent on any of the grounds stated in section 106).

Bringing infringement proceedings in court

140 Who may bring infringement proceedings

(1) ~~Infringement proceedings~~ An infringement proceeding may be brought in court by—
- (a) the patentee:
- (b) an exclusive licensee for any infringement that occurs during the term of the licence.
(2) However, section 141A affects the right to bring a proceeding under this section.
(3) Neither subsection (1) nor section 141A enables a person to bring any proceeding that is barred under the Limitation Act 1950.

141 When and how proceedings may be brought

(1) ~~Infringement proceedings~~ An infringement proceeding may not be brought until the patent is granted.
(2) However, section 77 enables an infringement proceedings to relate to infringements before the patent is granted in the circumstances set out in that section ~~(and subject to the defence in section 78)~~.
~~(3) Sections 155 to 157 contain notice and registration requirements for civil proceedings (including infringement proceedings) relating to interests in patents.~~

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

(1) If a person has the right to bring an infringement proceeding under section 140(1) by virtue of a transaction that must be registered under section 160, that person must not bring the proceeding unless—
- (a) the person's title or interest was registered at least 1 month before the commencement of the proceeding; or
- (b) the person has—
  - (i) given at least 1 month's written notice to the proposed defendant of the intention to bring the proceeding; and
  - (ii) registered the person's title or interest before bringing the proceeding.
(2) However, a person may bring an infringement proceeding in court, despite not having registered the person's title or interest, if—
- (a) the person would be entitled to do so under section 140(1) if the title or interest was registered; and
- (b) the person has given at least 1 month's written notice to the proposed defendant of the intention to bring the proceeding and provided an address for service in New Zealand; and
- (c) within that notice period, the proposed defendant has not required the proposed plaintiff to register that title or interest.
(3) However, the court may, on application to it, authorise a person to bring an infringement proceeding in court without complying with subsection (1) or (2)(b).

142 Proceedings brought by exclusive licensee

~~(1) If an exclusive licensee brings infringement proceedings,—~~
- ~~(a) the patentee must be added as a defendant unless joined as a plaintiff; and~~
- ~~(b) the court must, in awarding damages or any other relief, take into account, to the extent the infringement is of the exclusive licensee’s rights,—~~
  - ~~(i) the loss suffered, or likely to be suffered, by the exclusive licensee as a result of the infringement; or~~
  - ~~(ii) the profits earned as a result of the infringement.~~
(1) If an exclusive licensee brings an infringement proceeding, the patentee must be joined as a defendant (unless joined as a plaintiff).
(2) A patentee ~~added~~ joined as a defendant is not liable for costs unless the patentee actually defends the proceedings.
Compare: 1953 No 64 s 72

Relief for infringement

143 Types of relief available for infringement

The relief that the court may grant for an infringement of a patent includes—
- (a) an injunction; and
- (b) at the option of the plaintiff, damages or an account of profits.
Compare: 1953 No 64 s 69

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

(1) The court must not award damages or an account of profits for infringement of a patent if the defendant proves that at the date of the infringement the defendant did not know, and ought not reasonably to have known, that the patent existed or, in the case of a proceeding under section 77, that the complete specification had become open to public inspection.
(2) It is presumed that a person ought reasonably to have known that a patent existed if—
- (a) a product is marked so as to indicate it is patented in New Zealand and with the New Zealand patent number; and
- (b) the person knew, or ought reasonably to have known, of the product.
(3) But there is no presumption if the product is marked merely so as to indicate it is patented.
Compare: 1953 No 64 s 68(1)

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

(1) If an amendment has been made to an accepted complete specification under this Act, the court must not award damages or an account of profits for an infringement that occurs before the date of the decision to allow the amendment.
(2) Subsection (1) does not apply if—
- (a) the court is satisfied that the specification, as accepted, was framed in good faith and with reasonable skill and knowledge; or
- (b) it is only an amendment to correct an obvious mistake.
Compare: 1953 No 64 s 68(3)

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

The court may refuse to award damages or an account of profits for an infringement that occurs after a failure to pay any renewal fee for the patent within the prescribed period and before any extension of that period.
Compare: 1953 No 64 s 68(2)

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

Nothing in sections 144 to 146 affects the court’s power to grant an injunction in an infringement proceedings.
Compare: 1953 No 64 s 68(4)

148 Court may grant relief for partially valid patent

(1) If it is found in ~~infringement proceedings~~ an infringement proceeding that a patent is only partially valid, the court may grant relief for that part of the patent that is valid and infringed.
(2) However, the court may grant damages, an account of profits, or costs for that part of the patent only if the plaintiff proves that the invalid claim was framed in good faith and with reasonable skill and knowledge.
(3) It is at the court’s discretion whether or not to grant costs and as to the date from which damages or the account of profits should be counted.
(4) The court may, as a condition of the relief, direct that the specification be amended by an application under section 85 (which relates to the amendment of a specification with the leave of the court), and the application may be made even if the other issues in the infringement proceedings have not yet been determined.
Compare: 1953 No 64 s 71

149 Court may grant costs for subsequent proceedings if validity of specifications contested

(1) If the validity of a claim of a specification is contested in ~~proceedings~~ a proceeding and the court finds the claim to be valid, the court may certify that the claim’s validity was contested in ~~those proceedings~~ that proceeding.
(2) A party who is relying on the validity of that claim in any subsequent infringement or revocation proceedings is then entitled to reasonable solicitor-client costs for the certified claim if a final order or judgment is made or given in favour of that party.
(3) This section does not apply to the costs of any appeal in ~~those subsequent proceedings~~ the subsequent proceeding.
Compare: 1953 No 64 s 73

150 Infringement proceedings must be tried before Judge alone

~~Infringement proceedings must be tried before a Judge alone, unless the court otherwise directs.~~
~~Compare: 1953 No 64 s 113(3)~~

Subpart 2—Declarations of non-infringement

151 Court may make declaration of non-infringement

(1) The court may declare in proceedings between a person (A) and a patentee or exclusive licensee (B) that the exploitation by A of any product or process does not or would not infringe the patent if A proves that—
- ~~(a) A has applied in writing to B for a written acknowledgement to that effect and has given B full written particulars of the relevant product or process; and~~
- ~~(b) A has undertaken to pay a reasonable sum for B’s expenses in obtaining advice on whether or not the proposed exploitation would infringe the patent; and~~
- ~~(c) B has not given that acknowledgement.~~
~~(2) It does not matter that B has not asserted anything to the contrary.~~
~~Compare: 1953 No 64 s 75(1)~~

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

~~(1) Proceedings for a declaration of non-infringement may be brought at any time after the date of the publication of the accepted complete specification.~~
~~(2) If proceedings are brought before the grant of the patent under subsection (1), references to the patentee and B in section 151 must be read as references to the nominated person.~~
~~Compare: 1953 No 64 s 75(4)~~

151 Application for declaration of non-infringement

(1) A person who wishes to exploit an invention may apply to a court for a declaration that the exploitation of the invention would not infringe a claim of a complete specification.
(2) An application may be made—
- (a) at any time after the complete specification has become open to public inspection; and
- (b) whether or not the patentee or nominated person has made any assertion to the effect that the exploitation of the invention would infringe the claim.
(3) The patentee or nominated person must be joined as a respondent in the proceeding.
Compare: Patents Act 1990 s 125 (Aust)

152 Proceeding for declaration of non-infringement

(1) The court must not make a declaration of non-infringement unless a patent has been granted in respect of the relevant invention and—
- (a) the applicant for the declaration—
  - (i) has asked the nominated person or patentee in writing for a written admission that the proposed exploitation would not infringe a claim of the complete specification; and
  - (ii) has given the nominated person or patentee full written particulars of the proposed exploitation; and
  - (iii) has undertaken to pay a reasonable sum for the nominated person's or patentee's expenses in obtaining advice about whether the proposed exploitation would infringe the claim; and
- (b) the nominated person or patentee has refused or failed to make the admission; and
- (c) the court is satisfied that the proposed exploitation would not infringe a claim of the complete specification.
(2) Nothing in this section limits the court's jurisdiction to grant a declaration apart from this section.
Compare: 1953 No 64 s 75(1); Patents Act 1990 s 126(1) (Aust)

153 Costs in declaration of non-infringement

The costs of the parties in a proceedings for a declaration of non-infringement are at the discretion of the court.
Compare: 1953 No 64 s 75(2)

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

(1) The validity of a claim of the specification of a patent must not be questioned in a proceedings for a declaration of non-infringement.
(2) Accordingly, whether or not a declaration is made does not affect the validity of the patent.
Compare: 1953 No 64 s 75(3)

Subpart 3—Other provisions for proceedings relating to patentsStanding of Attorney-General

Notice and registration requirements for proceedings on interests in patents

155 Notice must be given before bringing civil proceedings on unregistered interests in patents

(1) A person (A) must not bring civil proceedings in respect of any interest in a patent that is not registered under this Act unless A has first given at least 1 month’s written notice to the proposed defendant (B) of—
- ~~(a) A’s intention to bring proceedings; and~~
- ~~(b) A’s address for service.~~
(2) If the interest is capable of being registered under this Act, B may require A to register A’s interest in the patent by giving written notice to A within 1 month of receiving A’s notice of intention to bring proceedings.
~~(3) If B gives A written notice of that requirement, A must not bring civil proceedings in respect of that interest against B unless A registers the interest—~~
- ~~(a) within 6 months of B giving that notice; and~~
- ~~(b) at least 1 month before A commences proceedings.~~
~~(4) However, the court may, on application in that behalf, authorise A to bring civil proceedings without complying with either or both of subsections (1) and (3).~~
~~(5) In this section and section 156, interest in a patent means an interest to which a person may be entitled as owner, mortgagee, licensee, or otherwise in a patent.~~
~~Compare: 1953 No 64 s 85(1)(a), (1)(c), (2)~~

156 Interests must be registered at least 1 month before bringing civil proceedings

~~(1) A person (A) must not bring civil proceedings in respect of any interest in a patent (as defined in section 155(5)) that is registered under this Act unless that interest was registered,—~~
- ~~(a) if section 155(3) applies, within the time limits required by that subsection; and~~
- ~~(b) in any other case, at least 1 month before the person commences the proceedings.~~
~~(2) However, the court may, on application in that behalf, authorise A to bring civil proceedings without complying with subsection (1).~~
~~Compare: 1953 No 64 s 85(1)(b)~~

157 Application of Limitation Act 1950

~~(1) Nothing in section 155 or 156 enables persons to bring proceedings that are barred under the Limitation Act 1950.~~
~~(2) Nothing in section 33 of the Limitation Act 1950 excludes the operation of that Act when proceedings are barred by section 155 or 156.~~
~~Compare: 1953 No 64 s 85(3)~~

Standing for Attorney-General

158 Attorney-General may appear in patent proceedings

(1) The Attorney-General may do all or any of the following things if he or she considers that the public interest is or may be involved:
- (a) bring a proceedings to test the validity of a patent:
- (b) apply for the revocation of a patent:
- (c) appear and be heard in any proceedings before a court or the Commissioner for the grant, amendment, or revocation of a patent, or for a declaration of non-infringement, and take any steps he or she considers desirable as if he or she were a party to the proceedings:
- (d) intervene in, and take over the control and conduct of, any proceedings referred to in paragraph (c) with the consent of a party.
(2) In any ~~of those proceedings~~ proceeding in which the Attorney-General appears, costs may be awarded either to or against the Attorney-General.
Compare: 1953 No 64 s 76(1), (3)

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

(1) A party to a proceedings before a court or the Commissioner who intends to question the validity of a patent must give notice of that intention to the Solicitor-General.
(2) That notice must be given in writing at least 21 days before the hearing.
(3) The party must also supply the Solicitor-General with any papers filed in the proceedings by that or any other party to the proceedings that the Solicitor-General requests.
Compare: 1953 No 64 s 76(2)

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

(1) A person who acquires a patent or share in a patent or an interest in a patent (~~the acquirer~~A) must apply to the Commissioner for registration of ~~the acquirer’s title or of the acquirer’s interest~~ A's title or interest.
(2) However, the person who disposes of the patent or share in a patent or who confers the interest may instead apply to register ~~the acquirer’s~~ A's title or interest (and in this case subsection (1) does not apply).
(3) In either case, the application must be made~~, and any prescribed documents must also be provided to the Commissioner,~~ in the prescribed manner.
(4) This section applies to acquisitions and disposals by assignment, transmission, operation of law, mortgage, licence, or by any other means (other than a compulsory licence granted under subpart 5).
Compare: 1953 No 64 s 84(1), (2), (5)

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

If an application is made under section 160, the Commissioner, on proof ~~of the acquirer’s title or interest~~ satisfactory to the Commissioner of the acquisition by the person (A) of a patent or interest or share in a patent,—
- (a) must register ~~the acquirer’s~~ A's title or interest; and
- (b) may issue a replacement copy of the patent in the name of the new patentee; and
- (c) must retain the documents provided with the application under section 160~~(3)~~ or a copy of those documents.

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

(1) If a patentee, applicant for a patent, or nominated person (A) dies, the Commissioner may (without requiring probate or letters of administration) register or substitute a person (B) as the patentee, applicant, or nominated person in place of A if—
- (a) B proves, to the Commissioner’s satisfaction, that—
  - (i) B is entitled to obtain probate of A’s will or letters of administration of A’s estate, or is A’s personal representative, in the place where A was living at the time of his or her death; and
  - (ii) probate or letters of administration have not been made or resealed in New Zealand; and
  - (iii) the interests of A’s creditors, and of all persons beneficially interested under A’s will or on A’s intestacy, will be adequately safeguarded if this action is taken; and
- (b) B applies in the prescribed manner.
(2) If B becomes the patentee, applicant, or nominated person under this section, B holds the patent subject to all existing interests and equities affecting it.
(3) This section applies even if A died before the commencement of this section.
(4) Nothing in section 70 or 73 of the Administration Act 1969 restricts the operation of this section.
Compare: 1953 No 64 s 86

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

(1) This section applies to the following contracts:
- (a) a contract for the sale or lease of a patented product:
- (b) a licence to exploit a patented product or process.
(2) A contract that this section applies to may be terminated by either party, on giving 3 months’ written notice to the other party, at any time after the patent, or all the patents, by which the product or process was protected at the time the contract was made, has or have ceased to be in force.
(3) Subsection (2)—
- (a) applies whether the contract was made before or after the commencement of this section; and
- (b) applies despite anything to the contrary in the contract or in any other contract; and
- (c) does not limit any right to terminate a contract exercisable apart from this section.
Compare: 1953 No 64 s 67

Subpart 5—Compulsory licences

Compulsory licences for supply of patented inventions predominantly in New Zealand

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

(1) Any ~~interested~~ person may apply to the court for the grant of a licence under a patent on either of the grounds specified in subsection (2) at any time after the later of—
- (a) the expiry of 3 years from the date that the patent is granted; or
- (b) the expiry of 4 years from the patent date.

New Zealand Legislation: Bills

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Patents Bill 235-2 (2008), Government Bill

Patents Bill

Commentary

Recommendation

Introduction

Exclusions to patentability

Interests of Māori

Dividing the Patent Bill

Part 1—Preliminary

Commencement

Purposes

Prior art base

Part 2—Patentable inventions and patent rights

Exclusions from patentability

Patentable inventions

Part 3—Process for obtaining grant of patent and other matters

Subpart 1—Patent applications

Maintenance fees

Subpart 2—Specifications

Subpart 4—Convention applications

Subpart 5—Priority dates

Subpart 6—Examination

Subpart 7—Acceptance and publication

Subpart 9—Assertions by third parties and re-examinations

Subpart 10—Grant of patent

Subpart 11—Revocation and surrender of patents

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

Subpart 1—Infringement proceedings

Subpart 2—Declarations of non-infringement

Subpart 3

Subpart 5—Compulsory licenses

Subpart 6—Crown use of inventions

Part 6—Administrative and miscellaneous provisions

Subpart 2—General provisions on proceedings of Commissioner

Subpart 3—Establishment and operation of administrative bodies for patents

Subpart 4—Other miscellaneous provisions

Subpart 5—Regulations

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

Appendix

Committee process

Committee membership

Key to symbols used

Patents Bill

Contents

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

Examples

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

Part 1
Preliminary

Part 2
Patentable inventions and patent rights

Part 3
Process for obtaining grant of patent and other matters