Patent Attorneys Bill

  • discharged on 12 March 2012

Patent Attorneys Bill

Government Bill

235—2A

As reported from the Commerce Committee

Commentary

Recommendation

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

Introduction

The clauses of this bill formerly constituted Part 5 of the Patents Bill, which did 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 the Patents 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 progress of the remainder of the Patents Bill meanwhile. We resolved therefore to divide the Patents Bill, so that Part 5 became a separate bill to be known as the Patent Attorneys Bill.

This bill seeks to promote quality, expertise, and integrity in the profession of patent attorneys. It also seeks to update a regulatory regime that has remained largely unchanged since the Patents Act came into force in 1954, and is out of step with current practice in the regulation of professional groups. The age and citizenship requirements of the Patents Act 1953 are no longer necessary,1 and are inconsistent with the New Zealand Bill of Rights Act 1990 and New Zealand’s international commitments.

To improve the quality and integrity of the profession, and update and modernise registration requirements, the bill proposes establishing the Patent Attorneys’ Standards Board of New Zealand. The functions of the Board would include

  • setting and running examinations for registration candidates

  • assessing the qualifications and experience of candidates

  • certifying whether candidates meet registration requirements

  • hearing and determining complaints from the public regarding the conduct of patent attorneys and patent attorney companies.

The bill would also require patent attorneys to have and adhere to a code of conduct. The code of conduct is intended to set out minimum standards of care, competence, and conduct for patent attorneys. The code would be developed by the New Zealand Institute of Patent Attorneys (Incorporated) and approved by the Patent Attorneys’ Standards Board.

The provisions of the Patents Act 1953 relating to the regulation of patent attorneys will continue to apply until this bill is enacted.

The bill includes a number of consequential changes resulting from the division of the Patents Bill such as new clauses 214A and 214C, and the administrative provisions in Part 5A.

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

Who may provide patent attorney services

This bill would allow any combination of patent attorneys, lawyers, patent attorney companies, and incorporated law firms to be in partnership. The term “patent attorney partnership” is therefore redundant and potentially misleading, so we recommend deleting clause 186 and amending clause 187.

We recommend amending clause 188 to clarify that a person may not misrepresent the qualifications of another. For example, a partner in a patent attorney firm could not imply that another partner (who was only a lawyer) was qualified as a patent attorney.

Clause 190 seeks to limit the scope of patent attorney services that a lawyer may provide. We recommend amending clause 190 to further clarify that a lawyer would be permitted to prepare a specification or document relating to an amendment of a specification when directed to do so by a court outside New Zealand. We also recommend increasing the penalty for contravening clause 190 from $1,000 to $5,000.

We recommend inserting new clause 190A to clarify that patent attorneys or patent attorney companies that share income with a lawyer or incorporated law firm when providing patent attorney services must do so according to the conditions set out in the regulations. Breaching the conditions would be grounds for a disciplinary order. This would be consistent with provisions in the Lawyers and Conveyancers Act 2006.

Standards of conduct and discipline

For a code of conduct to have any effect, it must set out minimum standards. We recommend amending clause 202(2) to make it clear that the code of conduct this bill provides for must include minimum standards of care, competence, and conduct.

We recommend amending clause 216 (Grounds for discipline of patent attorneys and patent attorney companies) to include a patent attorney or patent attorney company acting in a way that would indicate he, she, or it is not a “fit and proper person or is otherwise unsuited” to practice as a patent attorney or patent attorney company.

We recommend amending clause 217 (Disciplinary penalties) to clarify the scope of remedial orders that would be available to the Patent Attorneys’ Standards Board. They would include reduction or cancellation of fees, employing another to rectify any error or omission, and requiring that training be undertaken.

Clause 218(2) would require leave of the Court to be sought before costs of judgment could be enforced. Such a requirement would be unduly onerous and we recommend removing it.

Appeals

We recommend amending clauses 222 to 228 to allow appeals of a decision of the Board or the Commissioner to go to the High Court and not the District Court. It would also be necessary to amend clause 229 so that parties could appeal to the Court of Appeal against any determination of law arising from an appeal to the High Court. We received advice that these amendments would be consistent with provisions in the Lawyers and Conveyancers Act 2006 regarding appeals from decisions of the Disciplinary Tribunal.

Appendix

Committee process

The Patents Bill, from which this bill was divided, 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. On 18 February 2010 the committee decided to divide the Patents Bill into the Patents Bill and the Patent Attorneys Bill. The closing date for submissions on the bill as introduced was 2 July 2009. We received and considered 67 submissions from interested groups and individuals. We heard 36 submissions.

We received advice from the Ministry of Economic Development.

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)


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Hon Simon Power

Patent Attorneys Bill

Government Bill

235—2A

Contents

1 Title

2 Commencement

Part 1A
Preliminary provisions

2A Purpose

2B Overview

2C Interpretation

2D Act binds the Crown

·····

Part 5
Patent attorney profession

Subpart 1Restrictions on providing patent attorney services

184 Title of patent attorney

185 Title of patent attorney company

186 Title of patent attorney partnership

187 Only patent attorneys, and patent attorney companies and partnerships, may provide patent attorney services

187 Who may provide patent attorney services

188 False representations

189 Liability of directors and managers if body corporate commits offence

190 Exception for lawyers and incorporated law firms to provide limited patent attorney services

190 Limits on extent of patent attorney services that lawyers may provide

190A Requirements for patent attorneys sharing income with lawyers

191 Period of grace for personal representatives of patent attorneys

191A Right of lien

192 Exception for pre-1955 companies

192A Liability of directors and managers if body corporate commits offence

Subpart 2Registration and certificates

193 Who is qualified to be registered as patent attorney

194 Determining qualification requirements for registration

195 Matters that may be taken into account in determining whether applicant is fit and proper person

196 Registration certificates

197 Failure to pay renewal fee for registration

198 When registration may or must be removed or suspended

199 Effect of suspension

200 Other matters relating to suspension and removal of registration

Subpart 3Standards of conduct and discipline

Code of conduct

201 Patent attorneys and patent attorney companies subject to code of conduct

202 Purpose and contents of code of conduct

203 Institute must develop code of conduct

204 Board may approve draft code of conduct

205 Publication and application of code of conduct

206 Status of code of conduct

207 Amendments and replacements of code of conduct

Disciplining of patent attorneys and patent attorney companies

208 Who is covered by disciplinary regime

209 Complaints and referrals may be made under disciplinary regime

210 Board may direct parties to explore use of alternative dispute resolution for complaints

211 Board’s powers of investigation

212 Offence of obstruction

213 Evidence

214 Issuing of summons by Board

214A Requirements for summons

214B Witnesses’ fees, allowances, and expenses

214C Offence of failing to comply with summons

215 Protection of persons appearing

216 Grounds for discipline of patent attorneys and patent attorney companies

217 Disciplinary penalties

218 Orders for payment of costs

219 Board must notify Commissioner of orders

220 Effect of order to pay money on right to damages

221 Orders enforceable against former patent attorneys

Subpart 4Appeals under this Part

222 Right of appeal

223 Decisions to have effect pending determination of appeal

224 Procedure on appeal

222 Appeals against decisions of Board or Commissioner

225 Court’s decision final

226 Court may refer matter back for reconsideration

227 Orders as to costs

228 Orders as to publication of names or particulars

229 Appeal on question of law

Subpart 5Register of patent attorneys

230 Commissioner to establish and maintain register of patent attorneys

231 Purpose of register of patent attorneys

232 Form of register of patent attorneys

233 Contents of register of patent attorneys

234 Search of register of patent attorneys

235 Obligation to notify Commissioner of changes to details in register of patent attorneys

236 Changes to register of patent attorneys

Subpart 6Patent Attorneys’ Standards Board

237 Patent Attorneys’ Standards Board of New Zealand

238 Functions of Board

239 Membership of Board

240 Further provisions relating to Board and its members

Part 5A
Administrative and miscellaneous provisions

Commissioner

240A Functions of Commissioner under this Act

240B Provisions of Patents Act 2008 also applicable to Commissioner under this Act

Regulations

240C Regulations

240D Supplementary empowering provision

240E Fees and other money payable under this Act

Repeals and amendments

240F Repeal of patent attorney provisions of Patents Act 1953 and consequential revocations

240G Consequential amendments to other enactments

Transitional provisions

240H Outline of transitional provisions for patent attorneys

240I Transitional provision for patent attorneys registered under Patents Act 1953

240J Transitional provision for applicants for registration

240K Transitional provision for lawyers

240L Transitional provision for register of patent attorneys

·····

Schedule 1
Further provisions applying to Board and its members

Schedule 1A
Consequential amendments

·····


The Parliament of New Zealand enacts as follows:

1 Title
  • This Act is the Patent Attorneys Act 2010.

2 Commencement
  • (1) The following provisions of this Act come into force on the day after the date on which this Act receives the Royal assent:

    • (a) section 1 and this section:

    • (b) Part 1A (which contains the preliminary provisions):

    • (c) section 194 (which relates to the setting of qualification requirements for patent attorney applications):

    • (d) sections 201 to 207 (which relate to the code of conduct for patent attorneys and patent attorney companies):

    • (e) subpart 6 of Part 5 and Schedule 1 (which relate to the Board and its membership):

    • (f) sections 240C and 240D (which contain the regulation-making powers).

    (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 1A
Preliminary provisions

2A Purpose
  • The purpose of this Act is to promote quality, expertise, and integrity in the profession of patent attorneys.

2B Overview
  • In this Act,—

    • (a) this Part states the purpose of this Act and defines terms used in the Act:

    • (b) Part 5 regulates the patent attorney profession as follows:

      • (i) subpart 1 restricts the provision of patent attorney services to registered patent attorneys and patent attorney companies (whose directors and voting shareholders must be registered patent attorneys) and (within limits) lawyers and incorporated law firms:

      • (ii) subpart 2 provides for the registration of patent attorneys and issuing of registration certificates:

      • (iii) subpart 3 enables the code of conduct to be made for patent attorneys and patent attorney companies, and for disciplinary matters:

      • (iv) subpart 4 provides for appeals against decisions of the Board or Commissioner:

      • (v) subpart 5 provides for the register of patent attorneys:

      • (vi) subpart 6 and Schedule 1 establishes the Patent Attorneys' Standards Board of New Zealand:

    • (c) Part 5A contains administrative and miscellaneous matters.

2C Interpretation
  • (1) In this Act, unless the context otherwise requires,—

    Board means the Patent Attorneys' Standards Board of New Zealand established under section 237

    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 the Patents Act 2008; and

    • (b) includes an Assistant Commissioner appointed under that Act

    court means the High Court

    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

    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

    IPONZ means the Intellectual Property Office of New Zealand

    lawyer has the meaning set out in section 6 of the Lawyers and Conveyancers Act 2006

    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

    patent attorney means a registered patent attorney

    patent attorney company means a company in which—

    • (a) all of the directors are registered as patent attorneys; and

    • (b) all of the holders of shares that confer voting rights are registered as patent attorneys, or are permitted to hold the shares under section 191; and

    • (c) all of the holders of shares that do not confer voting rights are either described in paragraph (b) or are any of the following relatives of a person described in paragraph (b):

      • (i) a spouse, civil union partner, or de facto partner of the person:

      • (ii) a parent or grandparent of the person:

      • (iii) a step-parent of the person:

      • (iv) a brother, sister, half-brother, or half-sister of the person:

      • (v) a child of the person:

      • (vi) a stepchild of the person:

      • (vii) a parent of the person's spouse, civil union partner, or de facto partner.

    patent attorney services has the meaning set out in subsection (2)

    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

    publicly notify, in relation to the Commissioner, has the meaning set out in subsection (3)

    register of patent attorneys or patent attorneys register means the register kept under section 230

    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.

    (2) A person provides patent attorney services for the purposes of this Act if, and only if, the person does any of the following in New Zealand on behalf of another person for gain (or undertakes to do so):

    • (a) applies for or obtains patents in New Zealand or elsewhere:

    • (b) prepares or amends specifications or other documents for the purposes of this Act or of the patent law of any country:

    • (c) gives advice other than of a scientific or technical nature as to the validity of patents or their infringement.

    (3) The Commissioner may comply with any requirement in this Act for the Commissioner to publicly notify anything by—

    • (a) publishing it on 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.

2D Act binds the Crown
  • This Act binds the Crown.

·····

Part 5
Patent attorney profession

Subpart 1Restrictions on providing patent attorney services

184 Title of patent attorney
  • A patent attorney is an individual who is registered as a patent attorney.

185 Title of patent attorney company
  • (1) A patent attorney company is a company in which—

    • (a) all of the directors are registered as patent attorneys; and

    • (b) all of the holders of shares that confer voting rights are registered as patent attorneys or permitted to hold the shares under section 191; and

    • (c) all of the holders of shares that do not confer voting rights are—

      • (i) registered as patent attorneys; or

      • (ii) permitted to hold the shares under section 191; or

      • (iii) relatives of persons described in subparagraph (i) or (ii).

    (2) A relative of a person, for the purposes of this section, is any of the following:

    • (a) a spouse, civil union partner, or de facto partner of the person:

    • (b) a parent or grandparent of the person:

    • (c) a step-parent of the person:

    • (d) a brother, sister, half-brother, or half-sister of the person:

    • (e) a child of the person:

    • (f) a stepchild of the person:

    • (g) a parent of the person’s spouse, civil union partner, or de facto partner.

186 Title of patent attorney partnership
  • A patent attorney partnership is a partnership in which all of the partners are registered as patent attorneys.

187 Only patent attorneys, and patent attorney companies and partnerships, may provide patent attorney services
  • (1) No person may provide patent attorney services unless the person is—

    • (a) a patent attorney and has a current registration certificate; or

    • (b) a patent attorney company.

    (2) No person may provide patent attorney services in partnership with another person unless the other person is—

    • (a) registered as a patent attorney; or

    • (b) a patent attorney company.

    (3) A person provides patent attorney services for the purposes of this Act if, and only if, the person does any of the following in New Zealand on behalf of another person for gain (or undertakes to do so):

    • (a) applies for or obtains patents in New Zealand or elsewhere:

    • (b) prepares or amends specifications or other documents for the purposes of this Act or of the patent law of any country:

    • (c) gives advice other than of a scientific or technical nature as to the validity of patents or their infringement.

    (4) Subsection (1) does not permit any individual to provide patent attorney services for a patent attorney company (whether as an employee or otherwise) unless the individual is a patent attorney with a current practising certificate.

    (5) A person who contravenes this section commits an offence and is liable on summary conviction to a fine not exceeding $5,000.

    (6) It is a defence to an offence under subsection (2) if the person proves that the person did not know, and could not reasonably be expected to have known, that the other person was not registered as a patent attorney or a patent attorney company.

    Compare: 1953 No 64 s 103

187 Who may provide patent attorney services
  • (1) No person may provide patent attorney services unless the person is—

    • (a) a patent attorney and has a current registration certificate; or

    • (b) a patent attorney company; or

    • (c) a lawyer (but see section 190); or

    • (d) an incorporated law firm (but see section 190); or

    • (e) entitled to provide patent attorney services under any of paragraphs (a) to (d) and is acting in partnership with another person entitled to provide patent attorney services under any of those paragraphs (but see sections 190 and 190A).

    (2) A person who contravenes this section commits an offence and is liable on summary conviction to a fine not exceeding $5,000.

188 False representations
  • (1) No person (A) may represent himself, herself, or itself, or permit another person to represent him, her, or itA, as—

    • (a) a patent attorney or patent agent unless A is a patent attorney; or

    • (b) a patent attorney company unless A is a patent attorney company; or

    • (c) entitled to provide patent attorney services, unless A is so entitled under section 187.

    (2) No person may represent a partnership, in which he or she is a partner, as a patent attorney partnership, or permit another person to do so, unless that partnership is a patent attorney partnership.

    (2) No person may represent any other person (A), or permit another person to represent A, as—

    • (a) a patent attorney or patent agent unless A is a patent attorney; or

    • (b) a patent attorney company unless A is a patent attorney company; or

    • (c) entitled to provide patent attorney services, unless A is so entitled under section 187.

    (3) A person who contravenes this section commits an offence and is liable on summary conviction to a fine not exceeding $5,000.

    (4) It is a defence to an offence under subsection (2) if the person proves that the person did not know, and could not reasonably be expected to have known, that the partnership was not a patent attorney partnership.

    (4) It is a defence to an offence under subsection (2) if the defendant proves that the defendant believed, on reasonable grounds, that A was a patent attorney, patent attorney company, or entitled to provide patent attorney services under section 187 (as applicable).

    Compare: 1953 No 64 s 103

189 Liability of directors and managers if body corporate commits offence
  • If a body corporate is convicted of an offence against section 187 or 188, 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; or

    • (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

190 Exception for lawyers and incorporated law firms to provide limited patent attorney services
  • (1) A lawyer or incorporated law firm may (despite sections 187 and 188) do either or both of the following:

    • (a) provide patent attorney services (including in partnership with another lawyer or incorporated law firm, despite section 187(2)):

    • (b) make a representation that he, she, or it is entitled to do so.

    (2) However, no lawyer or incorporated law firm may prepare a specification or document relating to an amendment of a specification (or make a representation that he, she, or it is entitled to do so) unless he, she, or it is—

    • (a) also a patent attorney (with a current registration certificate) or a patent attorney company; or

    • (b) acting under the instruction of a patent attorney or patent attorney company; or

    • (c) directed to do so by a court of New Zealand.

    (3) A person who contravenes subsection (2) commits an offence and is liable on summary conviction to a fine not exceeding $1,000.

190 Limits on extent of patent attorney services that lawyers may provide
  • (1) No lawyer or incorporated law firm may prepare a specification, or document relating to an amendment of a specification, (or make a representation, or permit another person to represent, that he, she, or it is entitled to do so) unless he, she, or it is—

    • (a) also a patent attorney (with a current registration certificate) or a patent attorney company; or

    • (b) acting under the instruction of a patent attorney (with a current registration certificate) or patent attorney company; or

    • (c) directed to do so by a court of New Zealand or elsewhere.

    (2) A person who contravenes subsection (1) commits an offence and is liable on summary conviction to a fine not exceeding $5,000.

190A Requirements for patent attorneys sharing income with lawyers
  • (1) A patent attorney or patent attorney company must not share, with a lawyer or an incorporated law firm (whether in partnership or otherwise), income from any business involving the provision of patent attorney services to the public, except in the circumstances, and in accordance with the conditions, set out in the regulations.

    (2) A contravention of this section is grounds for a disciplinary order under section 216.

191 Period of grace for personal representatives of patent attorneys
  • (1) If a patent attorney (A) dies, A’s personal representative (B) may, for up to 3 years from the date of A’s death (or any further period allowed by a court),—

    • (a) carry on A’s business if B—

      • (i) is a patent attorney (with a current registration certificate) or a patent attorney company; or

      • (ii) ensures that a patent attorney or patent attorney company manages the business:

    • (b) hold A’s shares in a patent attorney company (and the company does not cease, merely for that reason, to be a patent attorney company).

    (2) Subsection (1) applies despite sections 187 and 188.

    Compare: 1953 No 64 s 103(6)

191A Right of lien
  • A patent attorney or patent attorney company has the same right of lien over documents and property of a client as a lawyer or incorporated law firm.

192 Exception for pre-1955 companies
  • A company is treated as a patent attorney company (despite not coming within section 185 the definition of section 2C(1)), for the purposes of this Act, if—

    • (a) the company carried on business as a patent attorney immediately before 1 January 1955, and was carrying on business as a patent attorney immediately before the commencement of this section; and

    • (b) at least 1 manager or director of the company is a patent attorney.

192A Liability of directors and managers if body corporate commits offence
  • If a body corporate is convicted of an offence against section 187, 188, or 190, every director, and every person concerned in the management of the body corporate, is guilty of the offence if it is proved that—

    • (a) the act that constituted the offence took place with his or her authority, permission, or consent; or

    • (b) 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

Subpart 2Registration and certificates

193 Who is qualified to be registered as patent attorney
  • (1) An individual is qualified to be registered as a patent attorney if the Commissioner is satisfied that he or she—

    • (a) has passed the examinations or courses required for registration by the Board under section 194, or is certified by the Board as having equivalent, or substantially equivalent, qualifications; and

    • (b) meets the prescribed criteria for experience for registration, or is certified by the Board as having equivalent, or substantially equivalent, experience; and

    • (c) is a fit and proper person to practise as a patent attorney (see section 195); and

    • (d) has applied in the prescribed manner.

    (2) An individual is also qualified to be registered as a patent attorney if he or she is entitled to be registered under the Trans-Tasman Mutual Recognition Act 1997 and gives written notice to the Commissioner under section 19 of that Act.

194 Determining qualification requirements for registration
  • (1) The Board—

    • (a) must keep a list of the examinations or courses required to qualify for registration as a patent attorney (and may amend or replace that list):

    • (b) may determine who is entitled to sit examinations or undertake courses, any rules for the conduct of examinations or courses, and what constitutes a pass in examinations or courses provided by the Board or persons accredited by the Board:

    • (c) may determine the length of time for which a pass in an examination or course remains effective for the purposes of section 193.

    (2) The list of examinations or courses—

    • (a) must include the subject or subject groups for the examination or course and the person providing the examination or course; and

    • (b) may have alternatives, in which case a candidate need have a pass in only 1 of the alternatives listed.

    (3) An examination or course may only be listed if—

    • (a) it is provided to candidates in New Zealand by the Board, by a person that the Board has accredited, or by the Institute and the Commissioner; or

    • (b) it is provided to candidates outside New Zealand by any person and the Board considers that it is an equivalent, or substantially equivalent, qualification to 1 or more of the examinations or courses listed under paragraph (a); or

    • (c) it was previously provided to candidates by the Institute and the Commissioner under the Patents Act 1953.

    (4) The Commissioner must publicly notify the current list and the Board’s determinations under this section.

195 Matters that may be taken into account in determining whether applicant is fit and proper person
  • (1) The Commissioner may take into account any matters he or she considers relevant in determining whether a person is a fit and proper person to provide patent attorney services, including (without limitation)—

    • (a) whether the person is of good character:

    • (b) whether the person has been convicted of an offence in New Zealand or another country and, if so,—

      • (i) the nature of the offence; and

      • (ii) the time that has elapsed since the offence was committed; and

      • (iii) the person’s age when the offence was committed:

    • (c) whether the person is subject to unresolved disciplinary proceedings relating to patent attorneys or legal practice in New Zealand or another country:

    • (d) whether the person’s registration as a patent attorney has been removed and whether he or she is currently barred from applying for re-registration under this Act:

    • (e) whether the person’s right to practise as a patent attorney in another country has been cancelled and not restored or is currently suspended:

    • (f) whether the person’s right to practise as a lawyer, in New Zealand or another country, has been cancelled and not restored or is currently suspended.

    (2) Subsection (1) does not limit the grounds on which a person may be determined not to be a fit and proper person to practise as a patent attorney.

196 Registration certificates
  • (1) An individual is entitled to a registration certificate on registration as a patent attorney under this Part.

    (2) The individual is entitled to a subsequent registration certificate if the Commissioner is satisfied that he or she—

    • (a) is appropriately registered as a patent attorney (and the registration is not suspended); and

    • (b) has paid the renewal fee and has otherwise applied in the prescribed manner.

    (3) A registration certificate must state the date of its expiry.

    (4) A registration certificate is in force until its expiry date or any earlier date on which a person’s registration is removed.

197 Failure to pay renewal fee for registration
  • (1) If a patent attorney does not pay a renewal fee on or before the expiry of his or her registration certificate, the Commissioner may—

    • (a) charge a person a prescribed penalty after the prescribed period; and

    • (b) then suspend the person’s registration if the renewal fee or the penalty has not been paid within the prescribed period; and

    • (c) then remove the suspended person’s registration and bar him or her from applying for re-registration if the renewal fee or the penalty has still not been paid within a further prescribed period.

    (2) The Commissioner may not take action under a paragraph in subsection (1) if, before the expiry of the prescribed period for that action, the person requests that his or her registration be suspended or removed (but any action already validly taken remains effective).

    (3) A suspension or a bar on applying for re-registration under this section remains in force until the person has paid both the renewal fee and the penalty (unless the Commissioner determines otherwise).

198 When registration may or must be removed or suspended
  • (1) The Commissioner may suspend or remove a person’s registration in accordance with section 197 (which relates to not paying the renewal fee for registration).

    (2) The Commissioner must suspend or remove a person’s registration—

    • (a) if the person applies for a suspension or removal in the prescribed manner:

    • (b) in accordance with an order under section 217 (which relates to disciplinary penalties).

    (3) The Commissioner must remove a person’s registration if satisfied that the person has died.

    (4) A voluntary suspension under subsection (2)(a) must be for the period required by the person (subject to any minimum or maximum periods set by regulations).

199 Effect of suspension
  • (1) A person is not a patent attorney for the purposes of this Act for the period for which his or her registration is suspended.

    (2) Despite subsection (1),—

    • (a) a patent attorney partnership does not cease to be a patent attorney partnership by reason only that the registration of a partner in that partnership has been suspended; and

    • (b) a patent attorney company does not cease to be a patent attorney company by reason only that registration of a director or shareholder of the company has been suspended.

    (2) Despite subsection (1), a patent attorney company does not cease to be a patent attorney company by reason only that registration of a director or shareholder of the company has been suspended.

    (3) A person whose registration is suspended is not entitled to be issued a registration certificate under section 196 until the end of the period of suspension.

    (4) At the end of the period of suspension, the person’s registration, and his or her entitlement to a registration certificate, is immediately revived (unless his or her registration has been further suspended or removed under this Part).

200 Other matters relating to suspension and removal of registration
  • (1) The Commissioner must comply with any applicable procedures under regulations for suspending or removing registrations.

    (2) The Commissioner must record the suspension or removal in the register of patent attorneys.

    (3) A person whose registration is suspended or removed is not entitled to a refund of any registration or renewal fees already paid.

Subpart 3Standards of conduct and discipline

Code of conduct

201 Patent attorneys and patent attorney companies subject to code of conduct
  • Every patent attorney and patent attorney company is subject to the code of conduct approved and in force under this subpart.

202 Purpose and contents of code of conduct
  • (1) The purpose of the code of conduct is to provide, consistent with this Act, a standard of acceptable conduct for patent attorneys and patent attorney companies that may be used in the settling of disputes.

    (2) The code of conduct may must contain minimum standards of care, competence, and conduct for patent attorneys and patent attorney companies.

203 Institute must develop code of conduct
  • The Institute must—

    • (a) develop a code of conduct, for approval by the Board under section 204, that is consistent with section 202; and

    • (b) in preparing a draft code of conduct, consult with—

      • (i) persons or groups that the Board directs (if any); and

      • (ii) any other persons that the Institute considers have an interest in its subject matter, including patent attorneys who are not members of the Institute (if any).

204 Board may approve draft code of conduct
  • (1) The Board must, as soon as practicable after receiving a draft code of conduct for approval, either approve or decline to approve the draft code.

    (2) The Board may decline to approve a draft code only if, in the Board’s opinion,—

    • (a) the draft code is inconsistent with section 202; or

    • (b) the Institute has not developed the draft code in accordance with section 203.

205 Publication and application of code of conduct
  • (1) The Board must, after approving a code of conduct, publish in the Gazette a notice stating—

    • (a) the title of the code of conduct; and

    • (b) the date on which the code was approved; and

    • (c) that copies of the code are available for inspection, free of charge, on the Internet; and

    • (d) a place or places at which copies of the code are available for purchase.

    (2) The Board must ensure that copies of the code of conduct are available—

    • (a) for inspection, free of charge, on the Internet; and

    • (b) for purchase at reasonable cost at the place or places specified in the Gazette notice.

    (3) The code approved under section 204 must be presented to the House of Representatives no later than 16 sitting days after the date on which it is approved.

    (4) A code of conduct does not have any force or effect under this Act until 28 days after the date on which its approval is notified in the Gazette or any later date stated in the code.

206 Status of code of conduct
  • The provisions of the code of conduct are regulations for the purposes of the Regulations (Disallowance) Act 1989, but are not regulations for the purposes of the Acts and Regulations Publication Act 1989.

207 Amendments and replacements of code of conduct
  • An amendment to, or revocation and replacement of, a code of conduct must be made in the same way as the code must be made under this subpart, and sections 202 to 206 apply with all necessary modifications.

Disciplining of patent attorneys and patent attorney companies

208 Who is covered by disciplinary regime
  • The disciplinary regime set out in sections 209 to 221 and in the regulations apply applies to—

    • (a) every patent attorney:

    • (b) every patent attorney company:

    • (c) every person who was a patent attorney or patent attorney company at the time of the relevant conduct:

    • (d) every person who is the subject of an order by the Board under the disciplinary regime.

209 Complaints and referrals may be made under disciplinary regime
  • (1) A person may complain in the prescribed manner about the conduct of a person to whom the disciplinary regime applies.

    (2) The complaint must be in writing and contain the complainant’s name and contact details.

    (3) The Board may also refer to the prescribed disciplinary regime any matter that arises out of its own inquiries or from information it receives about the conduct of a person to whom the disciplinary regime applies.

    (4) Under that disciplinary regime, complaints and referrals must—

    • (a) (unless dismissed on preliminary grounds set out in the regulations) be referred to a complaints assessment committee for investigation; and

    • (b) (unless dismissed by the complaints assessment committee) be considered by a separate disciplinary committee; and

    • (c) be otherwise dealt with in accordance with the regulations.

210 Board may direct parties to explore use of alternative dispute resolution for complaints
  • (1) The Board may give, in relation to any complaint, a direction that, within a time fixed by the Board, the parties to the complaint both—

    • (a) explore the possibility of resolving, by negotiation, conciliation, or mediation, the complaint or those issues relating to the complaint specified by the Board; and

    • (b) report to the Board.

    (2) The Board must not give a direction under subsection (1) if it considers that the direction—

    • (a) would not contribute constructively to resolving the complaint; or

    • (b) would not, in all the circumstances, be in the public interest; or

    • (c) would undermine the urgent nature of the complaint.

    (3) If the parties reach an agreed settlement on the complaint or any issue involved in the complaint, the Board—

    • (a) may record the terms of the settlement; and

    • (b) may, by consent of the parties, declare all or some of the terms of the settlement to be all or part of a final determination of the complaint by the Board.

    (4) No evidence of any admission, information, or statement disclosed or made in a negotiation, conciliation, or mediation entered into following a direction under this section is admissible in proceedings before the Board, a Board committee, a court, or a tribunal (but this does not affect evidence that is otherwise discoverable or admissible and existed independently of that negotiation, conciliation, or mediation).

    (5) Any resolution, or part resolution, of a complaint under this section does not preclude the Board from exercising its powers under this Part in relation to the complaint.

211 Board’s powers of investigation
  • (1) The Board, or any person authorised by the Board in writing to do so, may do 1 or more of the following things if the Board considers it reasonably necessary for the purposes of any investigation or inquiry under this subpart:

    • (a) examine any papers, documents, records, or things:

    • (b) require any person to produce for examination any papers, documents, records, or things in that person's possession or under that person’s control, and to allow copies of or extracts from any such papers, documents, or records to be made:

    • (c) require any person to supply, in a form approved by or acceptable to the Board,—

      • (i) any information or particulars that it requires:

      • (ii) any copies of or extracts of from papers, documents, or records supplied or produced to it:

    • (d) require any person to verify any written information or particulars or any copies or extracts supplied or produced to it under this section by statutory declaration or affidavit.

    (2) The Board may on its own initiative, or on application of any party to the proceedings, and subject to any terms it thinks fit, order that any of the following material supplied or produced to it under this section be supplied to any person appearing before the Board:

    • (a) any information or particulars:

    • (b) a copy of the whole or any part of any paper, document, or record.

    (3) Every person has the same privileges as witnesses have in a court in relation to—

    • (a) the giving of information to the Board (or a Board committee) or authorised person:

    • (b) the answering of questions put by the Board (or a Board committee) or authorised person:

    • (c) the production of papers, documents, records, and things to the Board (or a Board committee) or authorised person.

212 Offence of obstruction
  • (1) Every person commits an offence who—

    • (a) wilfully obstructs or hinders the Board, any member of it, a Board committee, or any authorised person in any inspection or examination of papers, documents, records, or things under section 211; or

    • (b) without sufficient cause, fails to comply with any requirement of the Board, a Board committee, or any authorised person made under section 211(1)(b) or (c); or

    • (c) without sufficient cause, acts in contravention of or fails to comply with any order made by the Board or a Board committee under section 211(2) or any term or condition of the order.

    (2) A person who commits an offence against this section is liable on summary conviction to a fine not exceeding $2,000.

213 Evidence
  • (1) The Board may—

    • (a) receive in evidence any statement, document, information, or matter that may, in its opinion, assist it to deal effectively with the matters before it, whether or not the material would be admissible in a court of law; and

    • (b) receive evidence on oath; and

    • (c) permit a person appearing as a witness before it to give evidence by tendering a written statement and verifying that statement by oath, statutory declaration, or otherwise.

    (2) An inquiry before the Board (or a Board committee) is a judicial proceeding for the purposes of sections 108 and 109 of the Crimes Act 1961 (which relate to perjury).

214 Issuing of summons by Board
  • (1) The Board may issue a summons to a person requiring that person to attend a hearing before the Board and to do all or any of the following matters:

    • (a) give evidence:

    • (b) give evidence under oath:

    • (c) produce documents, things, or information, or any specified documents, things, or information, in the possession or control of that person that are relevant to the subject of the inquiry.

    (2) The Board may require that any documents, things, or information produced under this section be verified by oath, statutory declaration, or otherwise.

    (3) Sections 283 to 285 contain requirements for the summons and the offence of failing to comply with the summons.

214A Requirements for summons
  • (1) A summons issued by the Board under section 214 must be in writing, be signed by the Board, and state—

    • (a) the date and time when, and the place where, the person must attend; and

    • (b) the documents, things, or information that the person is required to bring and produce to the Board; and

    • (c) the entitlement to be paid or tendered a sum in respect of witnesses’ fees, allowances, and expenses; and

    • (d) the penalty for failing to attend.

    (2) A summons may be served by—

    • (a) delivering it personally to the person summoned; or

    • (b) posting it to the person summoned at that person’s usual place of residence or address for service.

    (3) A summons must,—

    • (a) if it is to be served by personal delivery, be served at least 48 hours before the attendance of the person is required:

    • (b) if it is to be served by post, be served at least 10 days before the attendance of the person is required.

    (4) A summons that is posted is treated as having been served when it would have been delivered in the ordinary course of post.

214B Witnesses’ fees, allowances, and expenses
  • (1) A witness appearing before the Board under a summons is entitled to be paid witnesses’ fees, allowances, and expenses in accordance with the scales prescribed by regulations under the Summary Proceedings Act 1957.

    (2) The person requiring attendance of the witness must pay or tender to the witness the fees, allowances, and expenses at the time the requirement to attend is served or at some other reasonable time before the hearing.

214C Offence of failing to comply with summons
  • (1) A person summoned to attend before the Board commits an offence if the person, without sufficient cause,—

    • (a) fails to attend in accordance with the summons; or

    • (b) does not give evidence when required to do so; or

    • (c) does not give evidence under oath when required to do so; or

    • (d) does not answer any question that is lawfully asked by the Board; or

    • (e) does not provide any documents, things, or information that the summons requires the person to provide.

    (2) A person who commits an offence against this section is liable on summary conviction to a fine not exceeding $2,000.

    (3) A person must not be convicted of an offence against this section if witnesses’ fees, allowances, and expenses to which the person is entitled under section 214B have not been paid or tendered to him or her.

215 Protection of persons appearing
  • Every witness giving evidence, and every counsel or agent or other person appearing before the Board (or a Board committee), has the same privileges and immunities as witnesses and counsel in a court.

216 Grounds for discipline of patent attorneys and patent attorney companies
  • (1) The Board may (in relation to a matter raised by a complaint or by its own inquiries) make an order under section 217 if it is satisfied that—

    • (a) both of the following apply:

      • (i) a patent attorney has been convicted, whether before or after he or she was registered, by any court in New Zealand or elsewhere of any offence punishable by imprisonment for a term of 6 months or more; and

      • (ii) the commission of the offence reflects adversely on the person’s fitness to practise as a patent attorney; or

    • (ab) a patent attorney or patent attorney company has shared income with a lawyer or incorporated law firm—

      • (i) in circumstances other than those set out in the regulations; or

      • (ii) without complying with the conditions set out in the regulations; or

    • (ac) a patent attorney or patent attorney company has acted in any way that, in the Board's opinion, indicates he, she, or it is not a fit and proper person or is otherwise unsuited to engage in practice as a patent attorney or patent attorney company; or

    • (b) a patent attorney or patent attorney company has breached the code of conduct; or

    • (c) a patent attorney has, for the purpose of obtaining registration or a registration certificate (either for himself or herself or for any other person),—

      • (i) either orally or in writing, made any declaration or representation knowing it to be false or misleading in a material particular; or

      • (ii) produced to the Board or Commissioner or made use of a document knowing it to contain a declaration or representation referred to in subparagraph (i); or

      • (iii) produced to the Board or Commissioner or made use of any document knowing that it was not genuine.

    (2) The Board may make an order whether or not the person is still a patent attorney or patent attorney company.

217 Disciplinary penalties
  • (1) In any case to which section 216 applies, the Board may order—

    • (a) that (in the case of a patent attorney) the person’s registration be removed, and may order either or both of the following:

      • (i) the person may not apply for re-registration before the expiry of a specified period:

      • (ii) the person must sell shares that he or she holds in a patent attorney company within a specified period (and, in this case, the patent attorney company does not cease to be a patent attorney company merely for the reason that the person continues to hold the shares for that period):

    • (b) that (in the case of a patent attorney) the person’s registration be suspended for a period of no more than 12 months or until the person meets specified conditions relating to the registration (but, in any case, not for a period of more than 12 months) (a suspension order):

    • (c) that the person be censured (a censure):

    • (d) that the person must pay a fine to the Commissioner not exceeding $5,000 (a fine):

    • (e) that the person must refund money or return money or property to a person specified in the order (a remedial order):

    • (f) that the person must do, or pay for another person to do, a specified act or acts to remedy the complaint or other matter (a remedial order).

    • (e) that the person do any of the following (in each case, a remedial order):

      • (i) reduce or cancel the fee of, or return the whole or any part of a fee already paid by, a person specified in the order in accordance with the order:

      • (ii) do, or pay for another person to do, a specified act or acts to rectify any error or omission or (if it is not practicable to rectify the error or omission) to provide relief, in whole or in part, from the consequences of the error or omission:

      • (iii) undertake specified training or other education, or otherwise remedy any deficiency in the competence or skills of the person, as specified in the order, within a specified period.

    (2) The Board may make only 1 type of order under subsection (1) in relation to a case, except that it may make—

    • (a) more than 1 remedial order; or

    • (b) an order for a fine in addition to a suspension order or a censure; or

    • (c) a remedial order in addition to a suspension order or a censure.

    (3) No fine may be imposed in relation to an act or omission that constitutes an offence for which the person has been convicted by a court.

218 Orders for payment of costs
  • (1) In any case to which section 217section 216 applies, the Board may order the person to pay to the Commissioner the reasonable costs and expenses of either or both of the following:

    • (a) any investigation or inquiry made, and any hearing conducted, by the Board in connection with that person:

    • (b) administrative support provided by the Commissioner to the Board on the investigation, inquiry, or hearing.

    (1A) In any case to which section 216 applies, the Board may order the person to pay the reasonable costs and expenses of the complainant incurred in respect of the investigation, inquiry, or hearing.

    (2) The order may be entered as a judgment of the court and, with the leave of the court, may be enforced accordingly.

219 Board must notify Commissioner of orders
  • (1) The Board must notify the Commissioner, for recording in the register of patent attorneys,—

    • (a) of any order it makes under section 217; and

    • (b) of any decision of which the Board is notified that is a decision of the District Court or High Court court on an appeal from a decision of the Board.

    (2) If the person does not exercise his or her right of appeal under section 222 or 229 within the applicable time limit or has unsuccessfully exhausted his or her rights of appeal under those sections, the Board may, in addition to notifying the Commissioner under subsection (1), publicly notify an order in any other way it thinks fit.

    (3) The Commissioner, subject to section 233(3), must take any action necessary to give effect to an order of the Board in relation to the registration of a person on the register of patent attorneys.

220 Effect of order to pay money on right to damages
  • A remedial order made under section 217 does not affect any right of the person who is entitled to receive money or property under that order to recover damages in respect of the same loss, but that order must be taken into account in assessing damages.

221 Orders enforceable against former patent attorneys
  • If the Board, acting in accordance with this Act and the regulations in relation to a disciplinary matter, makes an order or otherwise exercises any power in respect of any person who is or was a patent attorney, that order or other exercise of any power has effect whether or not that person remains on the register of patent attorneys as a patent attorney.

Subpart 4Appeals under this Part

222 Right of appeal
  • (1) A person may appeal to a District Court against any decision of the Board or the Commissioner under this Part.

    (2) An appeal—

    • (a) must be brought by way of notice of appeal in accordance with the rules of court; and

    • (b) must be lodged within 20 working days after the date of the decision or within any further time the District Court allows on application made before or after the period expires.

223 Decisions to have effect pending determination of appeal
  • A decision against which an appeal under section 222 is lodged continues in force pending the determination of the appeal unless the District Court orders otherwise.

224 Procedure on appeal
  • (1) An appeal must be heard as soon as is reasonably practicable after it is lodged.

    (2) An appeal is by way of rehearing.

    (3) On hearing the appeal, the District Court—

    • (a) may confirm, reverse, or modify the decision appealed against; and

    • (b) may make any other decision that the Board or Commissioner could have made.

    (4) The District Court must not review—

    • (a) any part of a decision not appealed against; or

    • (b) any decision not appealed against at all.

222 Appeals against decisions of Board or Commissioner
  • (1) A person may appeal to the court against any decision of the Board or of the Commissioner under this Part.

    (2) An appeal must be brought—

    • (a) in accordance with the rules of court; and

    • (b) within 20 working days after the date of the decision, or within any further time the court allows on application made before or after that period expires.

225 Court’s decision final
  • Except as provided in section 229, the decision of the District Court court on an appeal is final.

226 Court may refer matter back for reconsideration
  • (1) Instead of determining an appeal, the District Court may direct the Board or Commissioner to reconsider, either generally or in respect of any specified aspect, the whole or any part of the decision.

    (2) In giving a direction under subsection (1), the court—

    • (a) must state its reasons for the direction; and

    • (b) may give any other directions it thinks just as to the matter referred back for reconsideration.

    (3) The Board or Commissioner, after receiving a direction to reconsider,—

    • (a) must reconsider the matter; and

    • (b) in doing so, must—

      • (i) take the court’s reasons into account; and

      • (ii) give effect to the court’s directions.

227 Orders as to costs
  • On an appeal, the District Court may order any party to the appeal to pay to any other party to the appeal any or all of the reasonable costs incurred by the other party in respect of the appeal.

228 Orders as to publication of names or particulars
  • (1) On any appeal, the District Court court may, if in its opinion it is proper to do so, prohibit the publication of the name or particulars of the affairs of a patent attorney, patent attorney company, or any other person.

    (2) In deciding whether to make an order under subsection (1), the District Court court must have regard to—

    • (a) the interests of any person (including, without limitation, the privacy of any complainant); and

    • (b) the public interest.

229 Appeal on question of law
  • (1) A party to an appeal may appeal to the High Court Court of Appeal against any determination question of law arising in the appeal.

    (2) The appeal must be heard and determined in accordance with the appropriate rules of court.

    (3) Part 4 of the Summary Proceedings Act 1957 (together with the other provisions of that Act that are applied in that Part) applies to the appeal—

    • (a) so far as it is applicable and with all necessary modifications; but

    • (b) only so far as it relates to appeals on questions of law.

    (4) Subsection (3) overrides subsection (2).

Subpart 5Register of patent attorneys

230 Commissioner to establish and maintain register of patent attorneys
  • (1) The Commissioner must keep, in New Zealand, a register of patent attorneys in accordance with this Act and the regulations.

    (2) Section 253 of the Patents Act 2008 provides for the Commissioner’s certificate to be prima facie evidence of matters relating to the register and registration of patent attorneys.

231 Purpose of register of patent attorneys
  • The purpose of the register of patent attorneys is to—

    • (a) enable persons who search the register in accordance with this Act to—

      • (i) know whether a person is registered as a patent attorney, and to know what the status of the person’s registration is and whether he or she has a current registration certificate; and

      • (ii) find out the contact address and address for service of a patent attorney; and

      • (iii) know whether a patent attorney has been disciplined in the last 3 years; and

    • (b) facilitate the functions of the Commissioner and Board under this Act.

232 Form of register of patent attorneys
  • The register of patent attorneys may be—

    • (a) an electronic register; or

    • (b) kept in any other manner that the Commissioner thinks fit.

233 Contents of register of patent attorneys
  • (1) The register of patent attorneys must contain the information referred to in subsection (2), to the extent that it is relevant, for each patent attorney (including those with suspended registrations).

    (2) The information that must be contained in the register is—

    • (a) the full name and contact address of the person; and

    • (b) the New Zealand address for service of the person; and

    • (c) the following matters on the status and history of the person’s registration:

      • (i) the date on which the person was registered; and

      • (ii) the period for which the most recent registration certificate was issued or the date on which it will expire; and

      • (iii) any order made on a disciplinary matter in the last 3 years; and

      • (iv) any other suspension that is current, the ground under this Act for the suspension, its period, and any conditions for its termination; and

    • (d) any information the Commissioner considers necessary or desirable for the purposes of the register.

    (3) The Commissioner may publicly notify in the register an order made on a disciplinary matter only if—

    • (a) the person has not exercised any right of appeal under section 222 within 20 working days after the date of the decision or under section 229 within the applicable time limit; or

    • (b) the person has exhausted a right of appeal that has been exercised under this Part.

234 Search of register of patent attorneys
  • A person may search the register of patent attorneys in accordance with this Act and the regulations.

235 Obligation to notify Commissioner of changes to details in register of patent attorneys
  • A patent attorney must inform the Commissioner of any changes to his or her name, contact address, or address for service within 3 months after that change.

236 Changes to register of patent attorneys
  • (1) The Commissioner may, at any time, make any changes to the register of patent attorneys that are necessary to—

    • (a) reflect any changes to any particulars of a person or the information that must be contained in the register under section 233; or

    • (b) correct an error or omission on the part of the Commissioner or any other person.

    (2) If the Commissioner makes a change to the register of patent attorneys under subsection (1)(b), the Commissioner must send written notification to the affected person before making the change.

Subpart 6Patent Attorneys’ Standards Board

237 Patent Attorneys’ Standards Board of New Zealand
  • The Patent Attorneys’ Standards Board of New Zealand is established.

238 Functions of Board
  • The functions of the Board are—

    • (a) to determine the examinations or courses in the subjects or subject groups that are required to qualify for registration:

    • (b) to conduct examinations for patent attorney candidates, or accredit other persons to provide courses of study or conduct examinations (or both), in those subjects or subject groups:

    • (c) to assess the qualifications and experience held by candidates for registration against the requirements under this Part or the regulations, and certify candidates as meeting those requirements when appropriate:

    • (d) to publish (whether by electronic means or otherwise) information related to the Board’s functions under this Part or the requirements relating to patent attorneys under this Part or the regulations:

    • (e) to review the draft code of conduct and, if it meets the statutory requirements, approve the code of conduct in accordance with this Part:

    • (f) to receive, investigate, and hear complaints about, and to inquire into the conduct of, and to discipline, patent attorneys and patent attorney companies in accordance with this Part:

    • (g) to carry out other functions, duties, and powers conferred on the Board by this Act and the regulations:

    • (h) any functions that are incidental and related to, or consequential on, the other functions set out in this section.

239 Membership of Board
  • The membership of the Board consists of—

    • (a) the Commissioner; and

    • (b) an Assistant Commissioner of Patents who is nominated by the Commissioner; and

    • (c) no fewer than 2 persons to be nominated by the Institute and appointed by the Minister; and

    • (d) at the option of the Minister, 1 person appointed by the Minister.

240 Further provisions relating to Board and its members
  • Schedule 1 applies to the Board and its members.

Part 5A
Administrative and miscellaneous provisions

Commissioner

240A Functions of Commissioner under this Act
  • The functions of the Commissioner under this Act are, in accordance with this Act and the regulations, to—

    • (a) assess candidates for registration, register patent attorneys, and carry out other functions relating to their registration in accordance with Part 5:

    • (b) provide administrative support to the Board:

    • (c) maintain the patent attorneys register and carry out other functions relating to the patent attorneys register:

    • (d) carry out any other functions, duties, and powers conferred on him or her by this Act and the regulations.

240B Provisions of Patents Act 2008 also applicable to Commissioner under this Act
  • The following provisions of the Patents Act 2008 also apply to the Commissioner in carrying out his or her functions and duties and exercising his or her powers under this Act (as if this Act were part of the Patents Act 2008):

    • (a) section 253 (evidence: anything done by Commissioner):

    • (b) section 255A (hearing before exercise of Commissioner's discretion):

    • (c) sections 256 to 258 and 283 to 285 (giving evidence to Commissioner and summons requirements and offence):

    • (d) section 268 (powers of Assistant Commissioners of Patents):

    • (e) section 269 (power of Commissioner to delegate):

    • (f) section 271 (liability of Commissioner and others):

    • (g) sections 279 to 281 (powers to extend time limits).

Regulations

240C Regulations
  • The Governor-General may, by Order in Council, make regulations for all or any of the following purposes:

    • Income sharing with lawyers
    • (a) prescribing the circumstances in which, and the conditions subject to which, patent attorneys and patent attorney companies may share with lawyers and incorporated law firms the income from any business involving the provision of patent attorney services to the public:

    • Patent attorney registration and registration certificates
    • (b) prescribing procedures, requirements, and other matters, not inconsistent with this Act, relating to patent attorney registrations and registration certificates, including—

      • (i) the manner in which persons must apply for registration and registration certificates:

      • (ii) the procedures to be followed in evaluating and deciding on those applications and in implementing those decisions:

      • (iii) the period for which registration certificates are in force:

      • (iv) the subjects or subject groups in which candidates must have passed examinations to have the qualifications required for registration:

      • (v) the criteria for the type of experience required by candidates for registration:

      • (vi) the procedures and requirements that apply to the Board’s assessment and certification of qualifications and experience of candidates for registration against the requirements in Part 5 or the regulations:

      • (vii) the procedures and requirements that apply to a removal or suspension of registration:

      • (viii) any minimum and maximum periods for a voluntary suspension of registration:

    • Examinations and courses of study
    • (c) prescribing procedures, requirements, and other matters, not inconsistent with this Act, relating to examinations conducted by the Board and courses of study and examinations conducted by persons accredited by the Board, including—

      • (i) the manner in which persons must apply to sit those examinations or carry out those courses:

      • (ii) the fees payable to examiners or instructors:

    • Complaints and disciplinary matters relating to patent attorneys and patent attorney companies
    • (d) prescribing procedures, requirements, and other matters, not inconsistent with this Act, relating to complaints about, and disciplining of, patent attorneys and patent attorney companies, including—

      • (i) the manner in which persons must make complaints:

      • (ii) the investigation of and decisions on those complaints, and the implementation of those decisions:

      • (iii) the exercise by the Commissioner and the Board of their functions relating to complaints and disciplinary matters:

      • (iv) the constitution of a complaints assessment committee and disciplinary committee and delegating Board functions and powers to those committees for the purposes of the disciplinary regime:

    • Board functions
    • (e) regulating the manner in which the Board exercises any of its other functions under this Act:

    • Register of patent attorneys
    • (f) prescribing procedures, requirements, and other matters, not inconsistent with this Act, for the register of patent attorneys, including matters relating to—

      • (i) the operation of the register:

      • (ii) access to and search of the register:

      • (iii) the location of, and hours of access to, the register:

    • Fees and penalties
    • (g) prescribing fees and penalties to be paid, or the means by which those fees and penalties may be calculated or ascertained, for any matter under this Act or the regulations:

    • (h) exempting from, or providing for the Commissioner to exempt from, waive, or refund, fees or penalties:

    • Matters under Commissioner's direction or control
    • (i) providing for all matters placed under the direction or control of the Commissioner by this Act or the regulations:

    • General
    • (j) providing for transitional or savings provisions:

    • (k) providing for any other matters contemplated by this Act, necessary for its administration, or necessary for giving it full effect.

    Compare: 1953 No 64 s 114

240D Supplementary empowering provision
  • (1) For the purposes of this Act, the power for regulations made to prescribe the manner in which a thing is done includes the power to—

    • (a) prescribe when, where, and how the thing must be done:

    • (b) prescribe the form that must be used in connection with doing the thing:

    • (c) prescribe what information must be provided or other evidence or documents must be provided in connection with the thing:

    • (d) prescribe requirements with which information, evidence, or documents that are provided in connection with the thing must comply:

    • (e) provide for the Commissioner to determine any of the matters in paragraphs (a) to (d):

    • (f) prescribe that fees must be paid in connection with doing the thing.

    (2) Any regulations made under section 240C or this section may prescribe, or provide for the Commissioner to determine, different or additional procedures, requirements, or matters in relation to different classes of applications, requests, notices, or other matters.

240E Fees and other money payable under this Act
  • (1) All fees and other money required to be paid under this Act or the regulations must be paid to the Commissioner (unless this Act or the regulations require otherwise).

    (2) The Commissioner may (in addition to any other action permitted under this Act) decline to do any act, or to permit any act to be done, or to receive any document, for which a fee or penalty is payable until that fee or penalty is paid.

    (3) The Commissioner must pay all the fees or other money paid to him or her under this Act into a Departmental Bank Account.

    (4) Any fee or penalty paid in connection with registration or renewal of a registration certificate for a patent attorney must be applied for the purposes of section 238 and the Commissioner's functions under this Act.

    (5) Any sum paid to the Commissioner by mistake, or any sum the payment of which is not required by the regulations, may be refunded by the Commissioner, and all money so refunded may be paid out of public money without further appropriation than this Act.

    (6) Any fee or other money required to be paid by this Act or the regulations that is not paid is recoverable in a court of competent jurisdiction as a debt due to the Crown or, if the Act or regulations require it to be paid to a person other than the Commissioner, as a debt due to that person.

    (7) This section applies to fines, disciplinary penalties, and costs orders imposed under this Act other than fines for offences.

    Compare: 1953 No 64 s 115(1), (2)

Repeals and amendments

240F Repeal of patent attorney provisions of Patents Act 1953 and consequential revocations
  • (1) The provisions of the Patents Act 1953 that were preserved by section 295A of the Patents Act 2008 are repealed.

    (2) The provisions of the Patents Regulations 1954 that were preserved by section 295A of the Patents Act 2008 are consequentially revoked.

240G Consequential amendments to other enactments
  • The enactments set out in Schedule 1A are amended in accordance with that schedule.

Transitional provisions

240H Outline of transitional provisions for patent attorneys
  • (1) The general scheme and effect of the commencement and transitional provisions for patent attorneys is as follows:

    • (a) on Royal assent,—

      • (i) the regulation-making powers in the Act and the provisions for making and approving the code of conduct for patent attorneys and patent attorney companies come into force; and

      • (ii) the provisions governing the establishment, operation, powers, and functions of the Board come into force; and

    • (b) between Royal assent and the commencement of subpart 1 of Part 5, the Institute may develop the code of conduct for patent attorneys and patent attorney companies; and

    • (c) on the commencement of subpart 1 of Part 5,—

      • (i) the approved code of conduct may also come into force; and

      • (ii) persons registered as patent attorneys under the Patents Act 1953 are treated as being registered under this Act; and

      • (iii) persons may apply for registration as patent attorneys under this Act, but applications for registration made before the commencement date must continue to be dealt with under the Patents Act 1953.

    (2) This section is a guide only to the general scheme and effect of the commencement and transitional provisions for patent attorneys.

240I Transitional provision for patent attorneys registered under Patents Act 1953
  • (1) A person who was registered as a patent attorney under the Patents Act 1953 immediately before commencement of Part 5 of this Act is treated as a patent attorney registered under this Act on the commencement of Part 5.

    (2) A patent attorney who had paid his or her renewal fee for registration for the calendar year in which Part 5 commences is treated as having a current registration certificate on the commencement of Part 5.

    (3) The registration certificate is treated as expiring on the date on which the person’s next renewal fees were due under the Patents Act 1953.

240J Transitional provision for applicants for registration
  • (1) The Patents Act 1953 (and the regulations, orders, directions, and other matters made under it) continue to apply (as if section 240F were not in force) to an application for registration as a patent attorney made under that Act and not refused, accepted, or withdrawn before the commencement of Part 5 of this Act.

    (2) If a person qualifies for registration as a patent attorney under subsection (1), the person may be registered as a patent attorney and issued with a registration certificate under Part 5.

240K Transitional provision for lawyers
  • Nothing in section 187 or 188 prohibits barristers or solicitors of the High Court of New Zealand from giving professional advice or taking part in any proceedings as permitted by section 103(5) of the Patents Act 1953 in relation to instructions received before the commencement of Part 5 of this Act.

240L Transitional provision for register of patent attorneys
  • The register of patent attorneys kept under section 100 of the Patents Act 1953 continues to have effect as the register of patent attorneys kept under section 230 of this Act.

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Schedule 1
Further provisions applying to Board and its members

s 240

1 Appointment of members
  • (1) A member of the Board is appointed by the Minister by written notice to the member (with a copy to the Board).

    (2) The notice must—

    • (a) state the date on which the appointment takes effect (which must not be earlier than the date on which the notice is received); and

    • (b) state the term of the appointment.

    (3) This section does not apply to the Commissioner or Assistant Commissioner of Patents.

2 Term of appointment
  • (1) A member holds office for 3 years or any shorter period stated in the notice of appointment.

    (2) A member may be reappointed.

    (3) A member continues in office despite the expiry of his or her term of office until—

    • (a) the member is reappointed; or

    • (b) the member’s successor is appointed; or

    • (c) the Minister informs the member by written notice (with a copy to the Board) that the member is not to be reappointed and no successor is to be appointed at that time.

    (4) This section does not apply to the Commissioner or Assistant Commissioner of Patents.

3 Removal of members
  • (1) The Minister may, for incapacity affecting performance of duty, neglect of duty, or misconduct, proved to the satisfaction of the Minister, remove a member from office.

    (2) The removal must be made by written notice to the member (with a copy to the Board).

    (3) The notice must—

    • (a) state the date on which the removal takes effect, which must not be earlier than the date on which the notice is received; and

    • (b) state the reasons for the removal.

    (4) A member also ceases to hold office if he or she is adjudged bankrupt.

    (5) This section does not apply to the Commissioner or Assistant Commissioner of Patents.

4 Resignation of members
  • (1) A member may resign his or her office by written notice to the Minister (with a copy to the Board) signed by the member.

    (2) The resignation is effective on receipt by the Minister of the notice or at any later time specified in the notice.

5 Members who cease to be Commissioner or Assistant Commissioner of Patents cease also to be members
  • A person who ceases to hold the office of Commissioner or Assistant Commissioner of Patents, ceases at the same time to be a member of the Board.

6 Extraordinary vacancies
  • If a person ceases to hold office as a member before the expiry of his or her term,—

    • (a) the vacancy so created must be filled in the manner in which the appointment to the vacant office was originally made; and

    • (b) the person appointed to fill the vacancy must be appointed for the residue of the term for which his or her predecessor was appointed.

7 Appointment of chairperson and deputy chairperson
  • (1) The Minister may appoint 1 of the members as the chairperson, and another member as the deputy chairperson, of the Board by written notice to the member (with a copy to the Board).

    (2) The notice of appointment must state the date on which the appointment takes effect.

    (3) The chairperson and deputy chairperson each hold that office until—

    • (a) he or she resigns from that office; or

    • (b) he or she is removed from it by the Minister; or

    • (c) he or she ceases to hold office as a member; or

    • (d) the term of office that may have been specified on appointment expires, unless the member is reappointed for a further term.

8 Resignation of chairperson and deputy chairperson
  • (1) A chairperson or deputy chairperson may, without resigning as a member, resign from that office by written notice to the Minister (with a copy to the Board).

    (2) The notice of resignation must state the date on which the resignation takes effect.

9 Removal of chairperson
  • (1) The Minister may, after consultation with the person concerned, remove a chairperson or deputy chairperson from that office by written notice to the person (with a copy to the Board).

    (2) The notice of removal must state the date on which the removal takes effect.

10 Exercise of chairperson's functions and powers during vacancy
  • The deputy chairperson has and may exercise all of the functions and powers of the chairperson in relation to a matter if the chairperson is unavailable or is unable to exercise his or her functions and powers for any reason.

11 Quorum
  • (1) A quorum for a meeting of the members is—

    • (a) half the number of members (if the Board has an even number of members) or a majority of the members (if the Board has an odd number of members); but

    • (b) in any case, no less than 3 members.

    (2) No business may be transacted at a meeting of the board if a quorum is not present.

    (3) However, a meeting of the Board may be held by means of audio, audio and visual, or electronic communication by which all members participating and constituting a quorum can simultaneously communicate with each other throughout the meeting.

12 Presiding at meetings
  • (1) At a meeting of the Board, the following person presides:

    • (a) if there is a chairperson and he or she is present, the chairperson; or

    • (b) if there is no chairperson or he or she is not present, the deputy chairperson; or

    • (c) in any other case, a member chosen by the members present to be chairperson of the meeting.

    (2) The elected person may exercise all the powers, duties, and functions of the chairperson for the purposes of the meeting.

13 Voting at meetings
  • (1) Each member has 1 vote.

    (2) A resolution of the Board is passed if it is agreed to by all members present without dissent or if a majority of the votes cast on it are in favour of it.

    (3) A member present at a meeting of the Board is presumed to have agreed to, and to have voted in favour of, a resolution of the board unless he or she expressly dissents from, or votes against, the resolution at the meeting.

14 Unanimous written resolutions
  • (1) A resolution signed or assented to in writing (whether sent by post, delivery, or electronic transmission) by all members is as valid and effectual as if it had been passed at a meeting of the Board duly called and constituted.

    (2) The resolution may consist of several documents containing the same resolution, each signed or assented to in writing by 1 or more members.

15 When interests must be disclosed
  • (1) A person is interested in the Board’s performance of its functions or exercise of its powers (a matter) if he or she—

    • (a) may derive a financial benefit from the matter; or

    • (b) is the spouse, civil union partner, de facto partner, child, or parent of a person who may derive a financial benefit from the matter; or

    • (c) may have a financial interest in a person to whom the matter relates; or

    • (d) is a partner, director, officer, board member, or trustee of a person who may have a financial interest in a person to whom the matter relates; or

    • (e) is otherwise directly or indirectly interested in the matter.

    (2) However, a person is not interested in a matter—

    • (a) only because he or she is a member of the Board; or

    • (b) because he or she receives an indemnity, insurance cover, remuneration, or other benefits authorised under this Act; or

    • (c) if his or her interest is so remote or insignificant that it cannot reasonably be regarded as likely to influence him or her in carrying out his or her responsibilities under this Act.

16 Consequences of having interest
  • (1) A member who is interested in a matter relating to the Board—

    • (a) must disclose the nature and monetary value (or extent, if the monetary value can not be quantified) of the interest to the chairperson as soon as practicable after the member becomes aware that he or she is interested; and

    • (b) must not vote or take part in any discussion or decision of the Board or any committee relating to the matter, or otherwise participate in any activity of the Board that relates to the matter; and

    • (c) must not sign any document relating to the matter; and

    • (d) is to be disregarded for the purpose of forming a quorum for that part of a meeting of the Board or committee during which a discussion or decision relating to the matter occurs or is made.

    (2) A general notice of an interest in a matter under subclause (1)(a) is effective disclosure until the nature of the interest materially alters or the extent of the interest materially increases.

17 Consequences of failing to comply with obligations if interested
  • (1) The Board must notify the Minister of a failure to comply with clause 16, and of the acts affected, as soon as practicable after becoming aware of the failure.

    (2) A failure to comply with clause 16 does not affect the validity of an act or matter.

    (3) However, subclause (2) does not limit the right of any person to apply, in accordance with law, for judicial review.

18 Permission to act despite being interested in matter
  • (1) The Minister or chairperson may, by prior written notice to the Board, permit 1 or more members, or members with a specified class of interest, to do anything otherwise prohibited by clause 16, if satisfied that it is in the public interest to do so.

    (2) The permission may state conditions that the member must comply with.

    (3) The permission may be amended or revoked in the same way as it may be given.

    (4) The Board must disclose an interest to which a permission relates in its annual report, together with a statement of who gave the permission and any conditions or amendments to, or revocation of, the permission.

19 Temporary appointments
  • If a member is interested in any matter before the Board, the Minister may appoint an additional member to the Board (in the manner in which the interested member was appointed).

20 Procedure of Board
  • Subject to this Act and any regulations made under this Act, the Board may regulate its procedure as it thinks fit.

21 Board members not in service of the Crown
  • No person is, by reason only of that person’s appointment as a member of the Board, deemed to be employed in the Government services for the purposes of the Government Superannuation Fund Act 1956 or in the State services for the purposes of the State Sector Act 1988.

22 Board committees
  • (1) The Board may appoint committees, consisting of 2 or more members of the Board and any other persons as the Board thinks fit—

    • (a) to inquire into and report to the Board on matters within the scope of its functions that are referred to them by the Board:

    • (b) to exercise on behalf of the Board any of its functions or powers, and for this purpose the Board may delegate to any committee any of the Board’s functions or powers.

    (2) The regulations may also constitute Board committees, which may consist of the number of Board members and other persons specified by the regulations, and delegate any of the Board’s functions or powers to those committees.

    (3) A Board committee is subject to the control of the Board.

    (4) The Board may—

    • (a) alter the membership of the Board committee at any time (subject to the regulations); and

    • (b) discharge or reconstitute at any time a Board committee appointed by the Board.

    (5) Subject to any general or special directions given or conditions imposed by the Board or regulations, a committee may exercise a function or power delegated to it under this clause in the same manner and with the same effect as if it had been conferred directly by this Act and not by delegation.

    (6) A committee appearing to act under a delegation, in the absence of proof to the contrary, is presumed to be acting in accordance with the delegation.

    (7) A delegation may be revoked at any time by the Board (if given by it) or the regulations (if made by them).

    (8) No delegation prevents the exercise of any function or power by the Board.

23 Protection for Board members
  • No member of the Board, or employee of the Ministry, is personally liable for any act or omission done, in good faith, in the performance or intended performance of the Board’s functions, duties, or powers.

24 Fees and allowances for Board members
  • (1) The Board is a statutory Board within the meaning of the Fees and Travelling Allowances Act 1951.

    (2) Members appointed to the Board under section 239(c) and (d) (unless an employee of the Ministry) are to be paid, out of money appropriated by Parliament for the purpose, remuneration by way of fees, salary, or allowances and travelling allowances and expenses in accordance with the Fees and Travelling Allowances Act 1951, and the provisions of that Act apply accordingly.

25 Annual report
  • As soon as practicable after the end of each financial year, the Board must give the Commissioner a report on the performance of its functions and duties and the exercise of its powers during the year, for the purposes of the Commissioner’s annual report to the Minister.


Schedule 1A
Consequential amendments

s 240G

Part 1
Amendments to other Acts

Lawyers and Conveyancers Act 2006 (2006 No 1)

Definition of patent attorney in section 6: repeal and substitute:

patent attorney means a person who is registered, and holds a current registration certificate, as a patent attorney under the Patent Attorneys Act 2010

patent attorney company means a patent attorney company within the meaning of the Patent Attorneys Act 2010.

Section 36(3): insert or patent attorney company after patent attorney.

Section 47(j): repeal.

Patents Act 2008

Definition of patent attorney in section 5(1): repeal and substitute:

patent attorney means a patent attorney registered under the Patent Attorneys Act 2010.

Definition of register of patent attorneys in section 5(1): repeal and substitute:

register of patent attorneys or patent attorneys register means the register kept under section 230 of the Patent Attorneys Act 2010.

Section 253(2)(a): omit or the Patents Act 1953 and substitute or the Patent Attorneys Act 2010.

Section 253(2)(b): omit or the Patents Act 1953 and substitute or the Patent Attorneys Act 2010.

Section 253(2): insert after paragraph (c):

  • (ca) that any person did or did not hold a registration certificate under the Patent Attorneys Act 2010 at any particular time or during any period specified in the certificate; or.

Section 267(fa): repeal and substitute:

  • (fa) carry out the functions set out in section 230 of the Patent Attorneys Act 2010:.

Section 292(1)(s): omit or any provisions of the Patents Act 1953 or Patents Regulations 1954 that are preserved by section 295A.

Privacy Act 1993 (1993 No 28)

Part 1 of Schedule 2: omit the item relating to the Patents Act 1953 and insert in its appropriate alphabetical order:

Patent Attorneys Act 2010section 230
Securities Act 1978 (1978 No 103)

Clause 13 of Schedule 2: omit Patents Act 1953 and substitute Patent Attorneys Act 2010.

Part 2
Regulations amended

Trade Marks Regulations 2003 (SR 2003/187)

Regulation 23(a) and (b): revoke and substitute:

  • (a) who is suspended from practice before the Intellectual Property Office of New Zealand; or

  • (b) whose name has been removed from the register of patent attorneys under section 198 of the Patent Attorneys Act 2010, and has not been restored to the register; or.


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Legislative history

25 March 2010Divided from Patents Bill (235–2) as Bill 235–2A

  • 1  See Patents Act 1953, section 100(2)(a)–(b).