Patents Act 2013

If you need more information about this Act, please contact the administering agency: Ministry of Business, Innovation, and Employment

Version as at 28 October 2021

Coat of Arms of New Zealand

Patents Act 2013

Public Act
2013 No 68
Date of assent
13 September 2013
see section 2

The Parliamentary Counsel Office has made editorial and format changes to this version using the powers under subpart 2 of Part 3 of the Legislation Act 2019.

Note 4 at the end of this version provides a list of the amendments included in it.

This Act is administered by the Ministry of Business, Innovation, and Employment.


6Meaning of novel
7Meaning of inventive step
8Meaning of prior art base
9Disclosure to be disregarded in certain circumstances
10Meaning of useful
11Computer programs
11ATransitional, savings, and related provisions
12Act binds the Crown
13Patent may be granted for patentable inventions only
14Patentable inventions
15Inventions contrary to public order or morality not patentable inventions
16Other exclusions
17Nature of patent
18Exclusive rights given by patent
19Extent, effect, and form of patent
20Term of patent
21Extension of period for paying renewal fees
22Who may be granted patent
23Power of patentee to deal with patent
24Co-ownership of patent
25Rights of buyers from co-owners of patent
26Power of Commissioner to give directions to co-owners
27Miscellaneous provisions concerning directions
28Disputes as to inventions made by employees
29Employment Relations Authority or Commissioner may apportion benefit of invention and of patent
30Review of Commissioner’s decision
31Right to apply for patent
32Application requirements
33Commissioner may post-date application or specification
34Divisional applications
35Applicant must pay maintenance fee
36Complete and provisional specifications
37Filing of complete specification after provisional specification has been filed
38Contents of provisional specification
39Contents of complete specification
40Amendment of complete specification before acceptance
41Supply of drawings
42Specifications for micro-organisms
43Deposit requirements for micro-organisms
44Deposit requirements treated as satisfied in certain circumstances
45Micro-organism ceasing to be reasonably available
46Treaty application treated as application accompanied by complete specification
47Description, claims, and drawings
48International filing date
49Commissioner must provide international filing date in certain circumstances
50Amendments to documents forming part of complete specification
51Treaty application void
52Requirements for examination of Treaty application
53Convention applicants may make convention applications
54How convention applications are made and dealt with
55Withdrawn, abandoned, or refused basic applications
56Basic applications for 2 or more cognate inventions
57Priority date of claims of complete specification
58Priority date if complete specification filed for single application
59Priority date if complete specification filed for 2 or more applications
60Priority date for convention applications
61Priority date for Treaty applications that claim priority of earlier applications
62Rules that apply if 2 or more priority dates apply or other rules do not apply
63Priority date in case of lack of entitlement in respect of another patent application
64Request for examination
66Commissioner may refuse to proceed with application or require application or specification to be amended
67Applicants must act by deadline if deadline set by Commissioner
68Application treated as abandoned if applicant fails to act within set deadline
69Commissioner must examine amended specification
70Duty to inform Commissioner of search results
71Time for putting application in order for acceptance
72Time may be extended if appeal pending or possible
73Notice of entitlement must be filed before acceptance
74Acceptance of complete specification
75Applicant may request Commissioner to postpone acceptance
76Publication in case of applications other than Treaty applications
77Publication in case of divisional applications made as provided for in section 34
78Documents open to public inspection
79Publication of Treaty applications
80Certain documents not to be published
81Effect of publication of complete specification
82Court must consider whether it would be reasonable to expect that patent would be granted
83General rules concerning amendments of specifications after acceptance
84Amendment must be published in journal
85Amendment of specification with leave of Commissioner
86Request for leave to amend must be published in journal
87Opposition to proposed amendment
88Provisions concerning amendments with leave of Commissioner do not apply in certain circumstances
89Amendment of specification with leave of court
90Assertions by third parties on novelty and inventive step
91Commissioner must consider and deal with notice in prescribed manner
92Opposition to grant of patent
93Hearing and decision by Commissioner
94Re-examination before patent is granted
95Re-examination after patent is granted
96Relationship between re-examination and other proceedings
97Report on re-examination
98Refusal to grant patent: re-examination before grant
99Revocation of patent: re-examination after grant
100Person who requests re-examination has no right to participate further in re-examination proceeding
101When patent must be granted
102Validity of patent not guaranteed
103Patent date
104Patent granted for one invention only
105Amendment of patent granted to deceased person or to body corporate that has been liquidated or wound up
106Patents of addition
107Commissioner may revoke patent for improvement or modification and grant patent of addition
108Restrictions on granting of patents of addition
109Term of patent of addition
110Renewal fees for patents of addition
111Provisions concerning inventive step requirement and validity in connection with patents of addition
112Revocation of patent
113Provisions concerning applications for revocation made to Commissioner
114Grounds for revoking patent
115Court may also revoke patent if patentee, without reasonable cause, refuses request of government department to exploit invention
116Surrender of patent
117Restoration of lapsed patents
118Request must describe circumstances that led to failure to pay renewal fee
119Persons who may make request for restoration of patent
120When request for restoration of patent may be made
121Commissioner must give person who made request reasonable opportunity to be heard if not satisfied that prima facie case has been made out for restoration
122Commissioner to publish request in journal
123Notice of opposition and reasonable opportunity to be heard
124Order to be made on payment of unpaid fees
125Request for restoration of void or abandoned patent applications
126When request for restoration of application may be made
127Notice of opposition
128Commissioner to determine matter
129Persons claiming under assignment or agreement or by operation of law
130Death of applicant
131Disputes between interested parties
132Directions in relation to inventions concerning defence
133Commissioner must give notice to Minister of Defence
134Minister of Defence must consider whether publication would be prejudicial to defence of New Zealand
135Commissioner must revoke directions on receipt of notice from Minister of Defence
136Acceptance of complete specification while directions in force
137Maintenance fees and renewal fees not payable while directions in force
138Offence to fail to comply with directions
139Liability of directors and managers if body corporate commits offence
140Infringement by doing anything patentee has exclusive right to do
141Infringement by supplying means to infringe to another person
142Presumption that product produced by infringing process
143No infringement for experimental use
144No infringement by use in or from foreign vessels, aircraft, or vehicles
145No infringement for use to produce information required by law
146No infringement for prior use of invention
147Defendant may counterclaim for revocation of patent
148Who may bring infringement proceeding
149When proceeding may be brought
150Right to bring infringement proceeding if registrable assignment or licence has occurred
151Proceeding brought by exclusive licensee
152Types of relief available for infringement
153Court must not award damages or account of profits if innocent infringement
154Court must refuse damages or account of profits for infringement before amendment to accepted specification
155Court may refuse damages or account of profits if renewal fees not paid
156Limits on damages and accounts of profits do not affect power to grant injunction
157Court may grant relief for partially valid patent
158Court may grant costs for subsequent proceeding if validity of specifications contested
159Application for declaration of non-infringement
160Proceeding for declaration of non-infringement
161Costs in declaration of non-infringement
162Validity of patent not at issue in proceeding for, and not affected by, declaration of non-infringement
163Attorney-General may appear in patent proceeding
164Parties must give notice to Solicitor-General if questioning patent validity
165Application for registration of assignments, licences, and other interests in patents
166Registration of assignments, licences, and other interests in patents
167Commissioner may vest patent or patent application without probate or letters of administration
168Termination of sales, leases, and licences of patented products and processes if patent no longer in force
169Application for compulsory licence where market is not being supplied, or is not being supplied on reasonable terms, in New Zealand
170Court may order grant of licence
171Court may order grant of licence for export of pharmaceutical products to certain countries
172Secretary of Foreign Affairs and Trade may publish notices that specify eligible countries
173Terms of licence
174Copy of order must be sent to Commissioner and Secretary of Foreign Affairs and Trade
175Remuneration payable to patentee
176Person applying for licence must have made efforts to obtain licence from patentee on reasonable commercial terms and conditions
177Exercise of powers on applications under section 169, 171, or 175
178Order for grant of licence has effect as deed
179Crown use of inventions
180Order in Council may declare use to be Crown use
181Protection of buyers
182Rights of third parties in respect of Crown use
183Reference of disputes concerning Crown use
184Court may refer matter to special or official referee or arbitrator
185Special provisions as to Crown use during emergency
186Nature and scope of rights under section 179
187Duty to inform nominated person or patentee
188Nominated person or patentee entitled to remuneration
189Mention of inventor in patent, specification, and patents register
190Request or claim to be mentioned as inventor
191Request or claim may not be considered in certain circumstances
192Commissioner must give notice of claim and opportunity to be heard
193Certificate concerning mention of inventor
194Patents register
195Purpose of patents register
196Form of patents register
197Contents of patents register
198Search of patents register
199Requests for patent information and certified copies
200Changes to patents register
201Commissioner may correct own mistakes in patents register, etc
202Commissioner may correct other persons’ mistakes in patents register, etc
202ACommissioner may alter certain inconsistent information
203Court may rectify patents register
204Evidence: patents register and patents
205Evidence: anything done by Commissioner
206Commissioner must publish journal
207Commissioner may keep or publish indexes, etc
208Hearing before exercise of Commissioner’s discretion
209How to give evidence to Commissioner in proceedings
210Commissioner may receive evidence on oath
211Issuing of summons by Commissioner
212Commissioner may award costs
213Commissioner may require security for costs
214Appeals against decisions of Commissioner
215Appeals against decisions of court on appeal
216Costs of Commissioner in proceeding
217Commissioner and Assistant Commissioners
218Functions of Commissioner
219Powers of Assistant Commissioners of Patents
220Power of Commissioner to delegate
221Liability of Commissioner and others
222Intellectual Property Office of New Zealand
223Opening hours of Intellectual Property Office of New Zealand
224Closing of Intellectual Property Office of New Zealand at short notice
225Appointment and membership of Māori advisory committee
226Functions of Māori advisory committee
227Effect of advice from Māori advisory committee
228Māori advisory committee may regulate own procedure
229Electronic filing and administration of Act
230Commissioner may extend time limits for delays by Commissioner
231Commissioner may extend time limits for certain filing requirements or for delivery failures
232Requirements for applying and granting extensions of time limits under section 231
233Service of notices (other than those given to or by Commissioner)
234Requirements for summons
235Witnesses’ fees, allowances, and expenses
236Offence of failing to comply with summons
237Fees and penalties payable under Act or regulations
238Payment and application of fees and other money paid under this Act
239Protection of Royal arms, etc
240Saving for certain Crown rights
241Act does not apply to Tokelau
242Application of Personal Property Securities Act 1999
244Supplementary empowering provision
245Regulations providing for transitional matters and orderly implementation of Act [Repealed]
246Orders in Council as to convention countries
247Repeal of Patents Act 1953 and consequential revocations
248Preservation of patent attorney provisions [Repealed]
249Consequential amendments to other enactments [Repealed]
250Preservation of various regulations and orders
251Validation of fees
252Validation of priority date for Treaty applications
253Outline of transitional provisions for patents
254Transitional provision for patents granted under Patents Act 1953
255Patent applications made under Patents Act 1953 continue under that Act
256Patents Act 1953 ceases to apply to patent application if complete specification later filed
257This Act applies if patent application under Patents Act 1953 is post-dated
258Patents Act 1953 applies to divisional applications dated before commencement
259Which Act applies to Treaty applications
260Transitional provision for other applications, notices, or requests
261Transitional provision for orders, directions, and other matters in effect on transition to new law
262Transitional provision for patents register
263Transitional provision for offences and infringements
264Transitional provision as to statutory references to corresponding matters
265Transitional provision as to repealed references to Commissioner, journal, or Patent Office
266Transitional appointment of Commissioner and Assistant Commissioners
267Transitional power for Commissioner [Expired]
268Purpose of this Part
269Interpretation of this Part
270Meaning of ordinarily resident in New Zealand
271Patent attorneys must comply with joint registration regime
272Commissioner must provide information about joint registration regime
273Interface with Lawyers and Conveyancers Act 2006
274Offences: unregistered persons practising, etc, as patent attorneys
275Exceptions for legal representatives and employees
276Incorporated patent attorney must have patent attorney director
277Documents prepared by lawyers
278Documents prepared by member of partnership
279Documents prepared by incorporated patent attorneys and incorporated law firms
280Attendance at patent attorney’s office
281Time limit for filing charging documents for offences
282Provisions that apply if Tribunals sit in Australia
283Provisions that apply if Disciplinary Tribunal sits in New Zealand
284Issue of summons by Disciplinary Tribunal
285Failure of witness to comply with summons
286Other provisions about proceedings
287Territorial scope and jurisdiction
288Rights of patent attorney over documents and client property
289Investigations under Australian Acts
290Regulations under this Part

The Parliament of New Zealand enacts as follows: