World Intellectual Property Organization

New Zealand

Patents Act 1953 (reprinted as at 1 January 2011)

 

 


Reprint as at 1 January 2011

Patents Act 1953

Public Act 1953 No 64 Date of assent 26 November 1953

Contents

Page Title 5 1 Short Title and commencement 5 2 Interpretation 6 3 Commissioner of Patents 10 4 Assistant Commissioners of Patents and other officers 10 5 Patent Office 11 5A Closing of Patent Office at short notice 11 6 Officers and employees of Patent Office not to acquire 12 interest in any patent or prepare specifications

Application, investigation, opposition, etc 7 Persons entitled to make application 13 8 Application 14 9 Complete and provisional specifications 15 10 Contents of specification 16 11 Priority date of claims of complete specification 17

Note

Changes authorised by section 17C of the Acts and Regulations Publication Act 1989 have been made in this eprint.

Ageneraloutlineofthesechangesissetoutinthenotesattheendofthiseprint,togetherwith other explanatory material about this eprint.

This Act is administered by the Ministry of Commerce

12 Examination of application 18 13 Search for anticipation by previous publication 20 14 Search for anticipation by prior claim 21 15 Commissioner may require information as to 22

corresponding applications overseas 16 Reference in case of potential infringement 23 17 Refusal of application in certain cases 24 18 Supplementary provisions as to examination, etc 24 19 Time for putting application in order for acceptance 24 20 Acceptance and publication of complete specification 26 21 Opposition to grant of patent 27 22 Refusal of patent without opposition 29 23 Mention of inventor as such in patent 29 24 Substitution of applicants, etc 31 25 Provisions for secrecy of certain inventions 32 26 Inventions relating to atomic energy 35

Treaty application 26A Treaty application deemed to be application accompanied 37

by complete specification 26B Description, claims, and drawings 37 26C International filing date 38 26D Commissioner to provide international filing date 38 26E Amendments to documents forming part of complete 39

specification 26F Treaty application void 40 26G Requirements for examination of Treaty application 40 26H Publication of Treaty applications 41

Grant, effect, and term of patent 27 Grant and sealing of patent 41 28 Amendment of patent granted to deceased applicant 43 29 Extent, effect, and form of patent 43 30 Date and term of patent 44 34 Patents of addition 45

Restoration of lapsed patentsand patent applications 35 Restoration of lapsed patents 47 36 Restoration of applications where patent not sealed 49 37 Restoration of application where complete specification 50

not accepted

Amendment of specifications 38 Amendment of specification with leave of Commissioner 51 39 Amendment of specification with leave of Court 52

2

40 Supplementary provisions as to amendment of 52 specification

Revocation and surrender of patents 41 Revocation of patent by Court 53 42 Revocation of patent by Commissioner 55 43 Surrender of patent 56

Voluntary endorsement of patent 44 Endorsementofpatent licencesofright 56 45 Cancellation of endorsement under section 44 58

Compulsory licences, etc 46 Compulsory licence 60 48 Exercise of powers on applications under section 46 61 54 Supplementary provisions 62

Use of patented inventions for services of the Crown 55 Use of patented inventions for services of the Crown 63 56 Rights of third parties in respect of Crown use 64 57 Reference of disputes as to Crown use 65 58 Special provisions as to Crown use during emergency 66 58A Nature and scope of rights under section 55 66 58B Duty to inform owner 67 58C Patentee entitled to remuneration 67

Anticipation, etc 59 Previous publication 68 60 Previous communication, display, or working 69 61 Use and publication after provisional specification or 71

foreign application 62 Priority date in case of obtaining 71

Miscellaneous provisions as to rights in inventions 63 Co-ownership of patents 72 64 Power of Commissioner to give directions to co-owners 73 65 Disputes as to inventions made by employees 74 66 Avoidance of certain restrictive conditions 75 67 Determination of certain contracts 76

Proceedings for infringement, etc 68 Restrictions on recovery of damages for infringement 77 68A Burden of proof for infringement of process patent 78 68B Regulatory review exception 78 69 Order for account in action for infringement 78 70 Counterclaim for revocation in action for infringement 78

3

71 Relief for infringement of partially valid specification 79 72 Proceedings for infringement by exclusive licensee 79 73 Certificate of contested validity of specification 80 74 Remedy for groundless threats of infringement 80

proceedings 75 PowerofCourttomakedeclarationastonon-infringement 81 76 Attorney-General may appear in patent proceedings 82

International agreements, etc 77 Orders in Council as to convention countries 83 78 Supplementary provisions as to convention applications 83 79 Specialprovisionsastovessels,aircraft,andlandvehicles 84 80 Extension of time for certain convention applications 84 81 Protectionofinventionscommunicatedunderinternational 85

agreements 82 Regulations under section 80 or section 81 87

Register of patents, etc. 83 Register of patents 87 84 Registration of assignments, etc 88 85 Limitation of proceedings 89 85A Application of Personal Property Securities Act 1999 90 86 Commissioner may dispense with production of probate 90

or letters of administration in certain cases 87 Rectification of register of patents by Court 92 88 Correction of errors 92 89 Evidence of entries, documents, etc 93 90 Requestsforinformationastopatentorpatentapplication 94 91 Restriction upon publication of specifications, etc 94 92 Loss or destruction of patent 95 93 Commissioner may grant extension of time 95 93A Additional provisions for extending time limits 96

Proceedings before Commissioner 94 Exercise of discretionary powers of Commissioner 98 95 Costs and security for costs 98 96 Evidence before Commissioner 98

Appeals 97 Appeals to High Court 100 98 Appeals to Court of Appeal 100 99 Costs of Commissioner in proceedings before Court 101

Patent attorneys

100 Registration of patent attorneys 101

4

101 Powers of patent attorneys 101 102 Cancellation of registration of patent attorneys 102 103 Restrictions on practice as patent attorney 102 104 Recovery of patent attorney’s charges 104

Offences 105 Falsification of register, etc 104 106 Unauthorised claim of patent rights 104 107 Protection of Royal Arms, etc 105 108 Offences by companies 106

Miscellaneous 110 Service of notices, etc, by post 106 111 Declaration by person under disability 106 112 Journal, indexes, etc 107 113 Rules of Court 108 114 Regulations 108 115 Fees 109 116 Annual report of Commissioner 110 117 Saving for Royal prerogative, etc 111 118 Application of Act to Tokelau 111 119 Repeals and savings 111

Schedule 1 112 Enactments repealed

Schedule 2 113 Regulations revoked

Schedule 3 113 Transitional provisions

An Act to consolidate and amend certain enactments relating to patents

1 Short Title and commencement

(1) This Act may be cited as the Patents Act 1953.

(2) ThisActshallcomeintoforceonadaytobeappointedforthe commencementthereofbytheGovernor-GeneralbyProclamation.

Interpretation

(1) In this Act, unless the context otherwise requires,Applicant includes a person in whose favour a direction has been given under section 24 of this Act and the personal rep resentative of a deceased applicant Articleincludesanysubstanceormaterial,andanyplant,machinery, or apparatus, whether affixed to land or not Assignee includes the personal representative of a deceased assignee;andreferencestotheassigneeofanypersoninclude

referencestotheassigneeofthepersonalrepresentativeorassignee of that person Commissioner means the Commissioner of Patents Commonwealth[Repealed]

Commonwealth: this definition was repealed, as from 2 September 1996, by section 2 Patents Amendment Act 1996 (1996 No 139).

[Repealed]

Convention application has the meaning assigned to it by

subsection (4) of section 7 of this Act Convention country, in any provision of this Act, means an entityforthetimebeingdeclaredbyanorderundersection 77 to be a convention country for the purposes of that provision Convention country: this definition was substituted, as from 14 October 1999,

by section 3(2) Patents Amendment Act 1999 (1999 No 119).

Court means the High Court Dateoffiling,inrelationtoanydocumentfiledunderthisAct, means the date on which the document is filed or, where it is deemed by virtue of any provision of this Act or of regula

tionsmadethereundertohavebeenfiledonanydifferentdate, means the date on which it is deemed to be filed Exclusivelicencemeansalicencefromapatenteewhichcon

fersonthelicensee,or on the licensee andpersons authorised by him, to the exclusion of all other persons (including the patentee), any right in respect of the patented invention; and exclusive licensee shall be construed accordingly

Government Department means any Department or instru

ment of the Executive Government of New Zealand Integratedcircuitmeansacircuit,initsfinaloranintermediate form, in which the elements, at least one of which is an activeelement,andsomeoralloftheinterconnections arein

tegrallyformedinoronapieceofmaterialandthatisintended

to perform an electronic function

Integrated circuit: this definition wasinserted, as from1January1995, by section 2 Patents AmendmentAct 1994(1994No 122). Seesections17and 18 of that Act as to the transitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

International application means an application made under the Patent Cooperation Treaty for the protection of an invention International application: this definition was inserted, as from 1 December

1992, by section 2 Patents Amendment Act 1992 (1992 No 81).

International Bureau means the International Bureau of the World Intellectual Property Organization International Bureau: this definition was inserted, as from 1 December 1992,

by section 2 Patents Amendment Act 1992 (1992 No 81).

International filing date means the international filing date giventoaninternationalapplicationunderArticle11orArticle 14(2) of the Patent Cooperation Treaty Internationalfilingdate: thisdefinitionwasinserted,asfrom1December1992,

by section 2 Patents Amendment Act 1992 (1992 No 81).

Invention meansanymannerof newmanufacturethesubject of letters patent and grant of privilege within section 6 of the StatuteofMonopoliesandanynewmethodorprocessoftesting applicable to the improvement or control of manufacture; and includes an alleged invention

JournalmeansthePatentOfficeJournalpublishedundersub

section (1) of section 112 of this Act Minister means the Minister of Commerce Minister: substituted, as from 1 December 1988, by section 4(1) Trade and

Industry Act Repeal Act 1988 (1988 No 156).

Patent means letters patent for an invention Patent Cooperation Treaty

(a)
Means the Patent Cooperation Treaty, signed at Washington on the 19th day of June 1970, the text of which, as amendedon the 2nd day ofOctober 1979 andmodifiedonthe3rddayofFebruary1984,issetoutinSched ule 1 to the Patents Amendment Act 1992; and
(b)
Includesanyamendments,modifications,andrevisions from time to time made to the Treaty, being amend

ments, modifications, and revisions to which New ZealandisapartyandbywhichNewZealandisbound: Patent Cooperation Treaty: this definition was inserted, as from 1 December 1992, by section 2 Patents Amendment Act 1992 (1992 No 81).

Patentofadditionmeansapatentgrantedinaccordancewith

section 34 of this Act PatentAttorney meansaperson carryingonfor gaininNew Zealand the business of acting as agent for other persons for the purpose of applying for or obtaining patents in New Zealand or elsewhere

Patentee, in relation to any patent, means the person or persons for the time being entered on the register of patents as grantee or proprietor of the patent

Prescribed means prescribed by this Act or by regulations

made under this Act Priority date has the meaning assigned to it by section 11 of this Act

Published, except in relation to a complete specification, means made available to the public; and without prejudice to the generality of the foregoing provision a document shall be deemed for the purposes of this Act to be published

(a)
If it can be inspected as of right at any place in New Zealand by members of the public whether upon payment of a fee or otherwise; or
(b)
If it can be inspected in a library of a Government Departmentorofanyinstitutionorpublicauthorityandthe libraryisonewhichisopengenerallytomembersofthe public who are interested in mattersto which thedocument relates and is a library in which members of the public in search ofinformation related to the subjectof thedocumentwouldordinarilyseekanddoinfactseek the information:

ReceivingOffice hasthesame meaningas inArticle 2(xv) of the Patent Cooperation Treaty Receiving Office: this definition was inserted, as from 1 December 1992, by

section 2 Patents Amendment Act 1992 (1992 No 81).

TheStatuteofMonopolies meanstheActofthe21styearof thereignofKingJamestheFirst,chapter3,intituled“AnAct

concerningmonopoliesanddispensationswithpenallawsand the forfeiture thereof”. Treaty application means an international application

(a)
Which contains a request specifying New Zealand as a designated State under Article 4(1)(ii) of the Patent Cooperation Treaty; and
(b)
Which has been given an international filing date:

Treaty application: this definition was inserted, as from 1 December 1992, by section 2 Patents Amendment Act 1992 (1992 No 81).

Treaty regulations

(a)
Means the regulations made under the Patent Cooper ation Treaty and set out in Schedule 2 to the Patents Amendment Act 1992; and
(b)
Includes any amendments from time to time made to those regulations.

Treaty regulations: this definition was inserted, as from 1 December 1992, by section 2 Patents Amendment Act 1992 (1992 No 81).

(2)
For the purposes of subsection (3) of section 7 of this Act, so far as it relates to a convention application, and for the pur poses of section 81 of this Act, the expression personal representative,inrelationtoadeceasedperson,includesthelegal representative of the deceased appointed in any country outside New Zealand.
(3)
In the case of an entity that is a convention country but is not a state, part of a state, or a territory for whose international relations a state is responsible,

(a) A reference in this Act to

(i)
Application for protection in a country; or
(ii)
Application for protection in respect of a coun

try,mustbereadasareferencetoapplicationforprotection under the rules of the entity:

(b)
AreferenceinthisActtofilingaspecificationinaconvention country must be read as a reference to filing a specification under the rules of the entity:
(c)
AreferenceinthisActtothelawofaconventioncountrymustbereadasareferencetotherulesoftheentity:
s 3 Patents Act 1953 Reprinted as at1 January 2011
(d) A reference in this Act to the Government of a conventioncountrymustbereadasareferencetothegoverning body of the entity. Compare: Patents Act 1949, s 101 (UK); 1921-22 No 18 s 2 Subsection (3) was inserted, as from 14 October 1999, by section 3(3) Patents Amendment Act 1999 (1999 No 119).
3 Commissioner of Patents (1) There may from time to time be appointed under the State Sector Act 1988 some fit person to be the Commissioner of Patents. (2) The person who at the commencement of this Act holds the office of Commissioner of Patents, Designs, and Trade Marks under the Patents, Designs, and Trade Marks Act 1921-22 shall be deemed to have been appointed as Commissioner of Patents under this Act. Compare: 1921-22 No 18 s 113 A reference to the State Services Act 1962 in subsection (1) was substituted, as from1January1963, forareferencetothePublicServiceAct1912pursuant to section 77(1) State Services Act 1962 (1962 No 132). This was in turn substituted, as from 1 April 1988, by a reference to the State Sector Act 1988 pursuant to section 88(2) State Sector Act 1988 (1988 No 20).
4 Assistant Commissioners of Patents and other officers (1) There may from time to time be appointed under the State Sector Act 1988(a) One or more fit persons to be Assistant Commissioners of Patents: (b) Such other officers and employees as may be necessary for carrying out the provisions of this Act. (2) Every Assistant Commissioner of Patents so appointed, while he remains in office, shall have and may exercise, subject to the control and direction of the Commissioner, all the powers, duties, and functions of the Commissioner, and all references in this or any other Act to the Commissioner shall, so far as maybenecessaryforthepurposeofgivingeffecttotheprovisionsofthissection,bedeemedtoincludeareferencetoevery Assistant Commissioner of Patents. (3) The person who at the commencement of this Act holds the office of Deputy Commissioner of Patents, Designs, and

TradeMarksunderthePatents,Designs,andTradeMarksAct 1921-22shall be deemed to havebeenappointedan Assistant Commissioner of Patents under this Act. Compare: 1921-22 No 18 ss 114, 115

AreferencetotheStateServicesAct1962insubsection(1)wassubstituted,as from1January1963,forareferencetothePublicServiceAct1912pursuant to section 77(1) State Services Act 1962 (1962 No 132). This was in turn substituted, as from 1 April 1988, by a reference to the State Sector Act 1988 pursuant to section 88(2) State Sector Act 1988 (1988 No 20).

5 Patent Office

(1)
The Minister may from time to time, by notice in the Journal, appoint a place to be the Patent Office. The place at the commencement of this Act used as the Patent Office shall be deemed to have been appointed to be the Patent Office under this Act.
(2)
TheCommissioner,fromtimetotimebynoticeintheJournal, mayfixthehoursduringwhichthePatentOfficeshallbeopen for the transaction of public business under this Act, and may declare the Patent Office closed for the transaction of public business on any day.
(3)
WherethetimeprescribedfordoinganyactortakinganyproceedingexpiresonadayonwhichthePatentOfficeisnotopen andbyreasonthereoftheactor proceedingcannot bedoneor taken on that day,the act or proceeding shall bedeemed to be in time if done or taken on the next day on which the Patent Office is open.

(4) There shall be a seal of the Patent Office and impressions thereof shall be judicially noticed. Compare: Patents Act 1949, s 98 (UK); 1921-22 No 18 ss 113, 116, 133 Subsection (2) was substituted, as from 9 December 1976, by section 2(1) Patents Amendment Act 1976 (1976 No 112).

5A Closing of Patent Office at short notice

(1)
Notwithstandingsubsection (2) ofsection5ofthisAct,where, because of an emergency or other temporary circumstances, the Commissioner is satisfied that it is or will be necessary or desirable to close the Patent Office on any day and it is not practicable to give notice of the closure in the Journal as requiredbythatsubsection,theCommissionermay,withoutgiv
(4)
Nothinginsubsections (1) and (2) ofthissectionshallprevent any former officer or employee of the Patent Office who is practisingasasolicitororpatentattorneyfromlawfullycarrying out, within the period of one year specified in those sub-sections,anyfunctionthatismerelyincidentaltothatpractice. Compare: 1947 No 37 s 4

11

s 6 Patents Act 1953 Reprinted as at1 January 2011
ing that notice, declare the Patent Office closed for the trans
action of public business on that day in accordance with the
provisions of this section.
(2) In every case where the Commissioner proposes to declare or
has declared the Patent Office closed under subsection (1) of
this section he shall, if practicable, display a public notice of
that fact in or on the building in which the Patent Office is
situated.
(3) As soon as practicable thereafter the Commissioner shall also
cause a copy of the public notice, or (if no such notice was
displayed) a notice of the exercise of his powers under this
section, to be published in the Journal.
This section was inserted, as from 9 December 1976, by section 2(2) Patents Amendment Act 1976 (1976 No 112).
6 Officers and employees of Patent Office not to acquire
interest in any patent or prepare specifications
(1) Every officer and employee of the Patent Office shall be inca
pable, during the period for which he holds his appointment
and for one year thereafter, of applying in New Zealand for a
patentorofacquiringdirectlyorindirectly,exceptunderawill
or on an intestacy, any right or interest in any patent granted
or to be granted in New Zealand.
(2) Every officer and employee of the Patent Office commits an
offence, and shall be liable on summary conviction to a fine
not exceeding $100, if, during the period for which he holds
his appointment and for one year thereafter, he applies in any
country other than New Zealand for a patent or acquires di
rectly or indirectly, except under a will or on an intestacy, any
right or interest in any patent granted or to be granted in any
country other than New Zealand.
(3) Every officer and employee of the Patent Office commits an
offence, and shall be liable on summary conviction to a fine
not exceeding $40, if, outside the scope of his official duties,
he drafts or prepares a specification or drawing or any part of
a specification or drawing or makes a search of the records of
thePatentOfficefortheuseorinformationofanyapplicantor
intending applicant for a patent under this Act.

Application, investigation, opposition, etc 7 Persons entitled to make application

(1) An application for a patent for an invention may be made by any of the following persons, that is to say:

(a)
Byanypersonclaimingtobethetrueandfirstinventor of the invention:
(b)
Byanypersonbeingtheassigneeofthepersonclaiming tobethetrueandfirstinventorinrespectoftherightto make such an application,

and may be made by that person either alone or jointly with any other person.

(2) Without prejudice to the foregoing provisions of this section, an application for a patent for an invention in respect of whichprotectionhasbeenappliedforinaconventioncountry (whether before or after it became a convention country) may be made by the person by whom the application for protectionwasmadeorbytheassigneeofthatperson;andfor the purposes of this Act the filing in any convention country of a complete specification after the filing of a provisional specification or provisional specifications in respect of any such application shall be deemed to be an application for protection in that country: Provided that no application shall be made by virtue of this subsection after the expiration of 12 months from the date of the application for protection in a convention country or, wheremore than onesuch application for protection hasbeen made, from the date of the first application.

(2A) For the purposes of this section, where more than one application for protection in a convention country has been made, the first application may be disregarded and the second application shall be substituted for the first application where

(a)
The first application was made in or in respect of the same convention country and by the same applicant as the second application; and
(b)
Not later than the date of filing of the second application, the first application was unconditionally withdrawn, abandoned, or refused; and
(i)
Thefirstapplicationhadnotbeenmadeavailable tothepublicinNewZealandorelsewherebefore its unconditional withdrawal, abandonment, or refusal; and
(ii)
No rights remain outstanding in respect of the first application; and

(iii) Thefirstapplicationhasnotservedtoestablisha priority date (as defined in section 2 of this Act) in relation to another application in any country.

(3) Anapplicationforapatentmaybemadeundersubsection(1) orsubsection (2) ofthissectionbythepersonalrepresentative orthe assignee of thepersonalrepresentativeofany deceased personwho,immediatelybeforehisdeathwasentitledtomake such an application.

(4) Anapplicationforapatentmadebyvirtueofsubsection (2) of this section is in this Act referred to as a convention application. Compare: Patents Act 1949, s 1 (UK); 1921-22 No 18 ss 3, 48 Subsection(2)wasamended,asfrom14October1999,bysection 2(1) Patents Amendment Act 1999 (1999 No 119) by inserting the words (whether before or after it became a convention country). Section 2(2) of that Act states that this amendment is for the avoidance of doubt.

Subsection (2A) was inserted, as from 18 August 1992, by section 3 Patents Amendment Act 1992 (1992 No 81).

8 Application

(1)
Every application for a patent shall be made in the prescribed form and shall be filed at the Patent Office in the prescribed manner.
(2)
Every application (other than a convention application) shall state that the applicant is in possession of the invention and shallnamethepersonclaimingtobethetrueandfirstinventor; andwherethepersonsoclaimingisnottheapplicantoroneof
the applicants, the application shall contain a declaration that the applicant believes him to be the true and first inventor.
(3)
Every convention application shall specify the date on which and the convention country in which the application for protection,orthefirstsuchapplication,wasmade,andshallstate that no application for protection in respect of the invention hadbeenmadeinaconventioncountrybeforethatdatebythe applicant or any person from whom he derives title.
(4)
Where applications for protection have been made in one or more convention countries in respect of 2 or more inventions whicharecognateorofwhichoneisamodificationofanother, asingle convention application may, subject tothe provisions ofsection 10 ofthisAct,bemadeinrespectofthoseinventions at any time within 12 months from the date of the earliest of the said applications for protection: Provided that the fee payable on the making of any such applicationshallbethesameasifseparateapplicationshadbeen madeinrespectofeachofthesaidinventions;andtherequire ments of subsection (3) of this sectionshall in thecase of any such application apply separately to the applications for protection in respect of each of the said inventions. Compare: Patents Act 1949, s 2 (UK); 1921-22 No 18 s 3

9 Complete and provisional specifications

(1)
Every application for a patent (other than a convention application) shall be accompanied by either a complete specification or a provisional specification; and every convention application shall be accompanied by a complete specification.
(2)
Where an application for a patent is accompanied by a provisional specification, a complete specification shall be filed within 12 months from the date of filing of the application, andifthecompletespecificationisnotsofiledtheapplication shall be deemed to be abandoned: Provided that the complete specification may be filed at any timeafter12monthsbutwithin15monthsfromthedateaforesaidifarequesttothateffectismadetotheCommissionerand theprescribedfeepaidonorbeforethedateonwhichthespecification is filed.
(3)
Where 2 or more applications accompanied by provisional specifications have been filed in respect of inventions which are cognate or of which one is a modification of another, a singlecompletespecificationmay,subjecttotheprovisionsof thissectionandofsection 10 ofthisAct,befiledinpursuance ofthoseapplications, or,if morethanonecompletespecification has been filed, may with the leave of the Commissioner be proceeded with in respect of those applications.
(4)
Whereanapplicationforapatent(notbeingaconventionapplication) is accompanied by a specification purporting to be a complete specification, the Commissioner may, if the applicant so requests at any time before the acceptance of the specification,directthatitshallbetreatedforthepurposesofthis Actasaprovisionalspecification,andproceedwiththeapplication accordingly.
(5)
Whereacompletespecificationhasbeenfiledinpursuanceof an application for a patent accompanied by a provisional specification or by a specification treated by virtue of a direction undersubsectio n (4) of thissectionasaprovisionalspecifica tion,theCommissionermay,iftheapplicantsorequestsatany timebeforetheacceptanceofthecompletespecification,cancel the provisional specification and post-date the application to the date of filing of the complete specification. Compare: Patents Act 1949, s 3 (UK); 1921-22 No 18 ss 4, 7, 18; 1939 No 26

s 73

10 Contents of specification

(1)
Everyspecification,whethercompleteorprovisional,shalldescribetheinvention,andshallbeginwithatitleindicatingthe subject to which the invention relates.
(2)
SubjecttoanyregulationsmadeunderthisAct,drawingsmay, and shall if the Commissioner so requires, be supplied for the purposes of any specification, whether complete or provisional; andanydrawingssosuppliedshall,unlesstheCommissionerotherwisedirects,bedeemedtoformpartofthespecification,andreferencesinthisActtoaspecificationshallbe construed accordingly.
(3)
Every complete specification
(a)
Shallparticularlydescribetheinventionandthemethod by which it is to be performed; and
(b)
Shalldisclosethebestmethodofperformingtheinvention which is known to the applicant and for which he is entitled to claim protection; and
(c)
Shall end with a claim or claims defining the scope of the invention claimed.
(4)
Theclaimorclaimsofacompletespecificationmustrelateto a single invention, must be clear and succinct, and must be fairly based on the matter disclosed in the specification.
(5)
RegulationsmadeunderthisActmayrequirethatinsuchcases as may be prescribed by the regulations a declaration as to the inventorship of the invention, in such form as may be so prescribed, shall be furnished with the complete specification or within such period as may be so prescribed after the filing of that specification.
(6)
Subject to the foregoing provisions of this section, a complete specification filed after a provisional specification, or filed with a convention application, may include claims in respect of developments of or additions to the invention which was described in the provisional specification or, as the case may be, the invention in respect of which the application for protection was made in a convention country, being developments or additionsinrespect of which the applicantwould be entitled under the provisions of section 7 of this Act to make a separate application for a patent.
(7)
Where a complete specification claims a new substance, the claim shall be construed as not extending to that substance when found in nature. Compare: Patents Act 1949, s 4 (UK); 1921-22 No 18 ss 3, 4

16

11 Priority date of claims of complete specification

(1)
Everyclaimofacompletespecificationshallhaveeffectfrom the date prescribed by this section in relation to that claim (in this Act referred to as the priority date); and a patent shall not be invalidated by reason only of the publication or use of the invention, so far as claimed in any claim of the complete specification, on or after the priority date of that claim, or by
the grant of another patent upon a specification claiming the same invention in a claim of the same or later priority date.
(2)
Where the complete specification is filed in pursuance of a single applicationaccompanied by a provisional specification or by a specification which is treated by virtue of a direction under subsection (4) of section 9 of this Act as a provisional specification, and the claim is fairly based on the matter disclosedinthatspecification,theprioritydateofthatclaimshall be the date of filing of the application.
(3)
Wherethecompletespecificationisfiledorproceededwithin pursuanceof2ormoreapplicationsaccompaniedbysuchspe cifications as are mentioned in subsection (2) of this section, and the claim is fairly based on the matter disclosed in one of thosespecifications,theprioritydateofthatclaimshallbethe date of filing of the application accompanied by that specification.
(4)
Where the complete specification is filed in pursuance of a convention application and the claim is fairly based on the matter disclosed inthe applicationforprotection in aconvention country or, where the convention application is founded upon more than one such application for protection, in one of those applications, the priority date of that claim shall be the date of the relevant application for protection.
(5)
Where, under the foregoing provisions of this section, any claim of a complete specification would, but for this provision, have 2 or more priority dates, the priority date of that claim shall be the earlier or earliest of those dates.
(6)
In any case to which subsections (2) to (5) of this section do notapply,theprioritydateofaclaimshallbethedateoffiling of the complete specification. Compare: Patents Act 1949, s 5 (UK); 1921-22 No 18 s 8

12 Examination of application

(1)
Subjecttosection26G ofthisAct,whenthecompletespecification has been filed in respect of an application for a patent, the application and specification or specifications shall be referred by the Commissioner to an examiner.
(2)
Iftheexaminerreportsthattheapplicationoranyspecification filed in pursuance thereof does not comply with the requirements of this Act or of any regulations made thereunder, or thatthereislawfulgroundofobjectiontothegrantofapatent in pursuance of the application, the Commisioner sic: Commissioner may either
(a)
Refuse to proceed with the application; or
(b)
Require the application or any such specification as aforesaid to be amended before he proceeds with the application.
(3)
At any time after an application has been filed under this Act andbeforeacceptanceofthecompletespecification,theCommissioner may, at the request of the applicant and upon payment of the prescribed fee, direct that the application shall be post-dated to such date as may be specified in the request: Provided that
(a)
Noapplicationshallbepost-datedunderthissubsection to a date later than 6 months from the date on which it wasactuallymadeorwould, butfor thissubsection, be deemed to have been made; and
(b)
A convention application shall not be post-dated under thissubsectiontoadatelaterthanthelastdateonwhich, under the foregoing provisions of this Act, the application could have been made.
(4)
Where an application or specification filed under this Act is amended before acceptance of the complete specification, the Commissioner may directthattheapplication or specification shallbepost-datedtothedateonwhichtheamendmentisfirst filed.
(5)
Regulations made under this Act may make provision for securing that where, at any time after an application or specification has been filed under this Act and before acceptance of the complete specification a fresh application or specification is filed in respect of any part of the subject-matter of the first-mentionedapplicationorspecification,theCommissioner mayonrequestdirectthatthefreshapplicationorspecification shallbeantedatedtoadatenotearlierthanthedateoffilingof the first-mentioned application or specification.

(6) AnappealtotheCourtshallliefromanydecisionoftheCom missioner under subsection (2) or subsection (4) of this sec tion. Compare: Patents Act 1949, s 6 (UK); 1921-22 No 18 s 5 Subsection (1) was amended, as from 1 December 1992, by section 4 Patents AmendmentAct1992(1992No81)byinsertingthewords Subjecttosection 26G of this Act,.

13 Search for anticipation by previous publication

(1)
Subject to the provisions of section 12 of this Act, the exam iner to whom an application for a patent is referred under this Act shall make investigation for the purpose of ascertaining whether the invention, so far as claimed in any claim of the complete specification, has been published before the date of filing of the applicant’s complete specification in any specificationfiledinpursuanceofanapplicationforapatentmadein New Zealand and dated within 50 years next before that date.
(2)
The examiner shall, in addition, make such investigation as the Commissioner may direct for the purpose of ascertaining whether the invention, so far as claimed in any claim of the complete specification, has been published in New Zealand before the date of filing of the applicant’s complete specificationinanyotherdocument(notbeingadocumentofanyclass described in subsection (1) of section 59 of this Act).
(3)
If it appears to the Commissioner that the invention, so far as claimed in any claim of the complete specification, has been published as aforesaid, he may refuse to accept the specification unless the applicant either
(a)
Shows to the satisfaction of the Commissioner that the prioritydateoftheclaimofhiscompletespecificationis not later than the date on which the relevant document was published; or
(b)
Amendshiscompletespecificationtothesatisfactionof the Commissioner.
(4)
AnappealtotheCourtshallliefromanydecisionoftheCommissioner under this section. Compare: Patents Act 1949, s 7 (UK); 1921-22 No 18 s 10

14 Search for anticipation by prior claim

(1)
In addition to the investigation required by section 13 of this Act, the examiner shall make investigation for the purpose of ascertaining whether the invention, so far as claimed in any claim of the complete specification, is claimed in any claim of any other complete specification published on or after the date of filing of the applicant’s complete specification, being a specification filed
(a)
InpursuanceofanapplicationforapatentmadeinNew Zealand and dated before that date; or
(b)
Inpursuanceofaconventionapplicationfoundedupon an application for protection made in a convention country before that date.
(2)
If it appears to the Commissioner that the said invention is claimedinaclaimofanysuchotherspecificationasaforesaid, he may, subject to the provisions of this section, direct that a reference to that other specification shall be inserted by way ofnoticetothepublicintheapplicant’scompletespecification unless within such time as may be prescribed either
(a)
TheapplicantshowstothesatisfactionoftheCommissionerthattheprioritydateofhisclaimisnotlaterthan theprioritydateoftheclaimofthesaidotherspecification; or
(b)
The complete specification is amended to the satisfaction of the Commissioner.
(3)
Ifinconsequenceoftheinvestigationundersection13 ofthis Act or otherwise it appears to the Commissioner
(a)
Thattheinvention,sofarasclaimedinanyclaimofthe applicant’s complete specification, has been claimed in anysuchspecificationasismentionedinsubsection (1) of that section; and
(b)
That the other specification was published on or after

the priority date of the applicant’s claim,then, unless it has been shown to the satisfaction of the Commissionerunderthatsectionthattheprioritydateoftheapplicant’s claim is not later than the priority date of claim of that otherspecification,theprovisionsofsubsection (2) ofthissectionshallapplyastheyapplyinrelationtoaspecificationpublished onorafterthe dateoffilingofthe applicant’scomplete specification.

(4)
The powers of the Commissioner under this section to direct the insertion of a reference to another specification may be exercisedeitherbeforeorafterapatenthasbeengrantedforthe inventionclaimedinthatotherspecification,butanydirections given before the grant of such a patent shall be of no effect unless and until such a patent is granted.
(5)
AnappealtotheCourtshallliefromanydecisionoftheCommissioner under this section. Compare: Patents Act 1949 s 8 (UK); 1921-22 No 18 s 10

15 Commissioner may require information as to corresponding applications overseas

(1)
Subject to subsection (2) of this section, for the purposes of the investigation required under this Act an applicant, if so required by the Commissioner shall,
(a)
State whether a corresponding or substantially correspondingapplicationhasbeenfiledinanyofthefollowing countries, namely,
(i)
The United Kingdom, Canada, Australia, or the United States of America; or
(ii)
Anyothercountryforthetimebeingdeclaredby Order in Council to be a country to which this paragraph applies:
(b)
With respect to any such application in any such country, furnish (so far as it is reasonably available to the applicant) the following information:
(i)
The number and filing date of the application; and
(ii)
Particularssufficienttoidentifythepriorartcited against the application; and
(iii) The number allotted to the patent when granted on the application and the form of the claims allowed; and (iv) Particularsofanyotherapplicationorpatentwith which the corresponding application is or has been involved in opposition, conflict, interference, or similar proceedings.
(2)
This section shall not apply to Treaty applications.

Subsection(1)wasamended,asfrom1December1992,bysection 5(1) Patents AmendmentAct1992(1992No81)byinsertingthewords Subjecttosubsection (2) of this section,.

Subsection(2)wasinserted,asfrom1December1992, bysection5(2)Patents Amendment Act 1992 (1992 No 81).

16 Reference in case of potential infringement

(1)
If, in consequence of the investigations required by the foregoing provisions of this Act or of proceedings under section 21 or section 42 of this Act, it appears to the Commissioner that an invention in respect of which application for a patent has been made cannot be performed without substantial risk of infringement of a claim of any other patent, he may direct thatareferencetothatotherpatentshallbeinsertedintheapplicant’scompletespecificationbywayofnoticetothepublic unless within such time as may be prescribed either
(a)
TheapplicantshowstothesatisfactionoftheCommissioner that there are reasonable grounds for contesting the validity of the said claim of the other patent; or
(b)
The complete specification is amended to the satisfaction of the Commissioner.
(2)
Where,afterareferencetoanotherpatenthasbeeninsertedin a complete specification in pursuance of a direction under the foregoing subsection
(a)
That other patent is revoked or otherwise ceases to be in force; or
(b)
Thespecificationofthatotherpatentisamendedbythe deletion of the relevant claim; or
(c)
Itisfound,inproceedingsbeforetheCourtortheCommissioner, thatthe relevant claim of that other patent is invalid or is not infringed by any working of the applicant’s invention,

the Commissioner may, on the application of the applicant, delete the reference to that other patent.

(3) AnappealtotheCourtshallliefromanydecisionordirection of the Commissioner under this section. Compare: Patents Act 1949, s 9 (UK)

17 Refusal of application in certain cases

(1) IfitappearstotheCommissionerinthecaseofanyapplication forapatentthattheuseoftheinventioninrespectofwhichthe application is made would be contrary to morality, the Commissioner may refuse the application.

(2) AnappealtotheCourtshallliefromanydecisionoftheCommissioner under this section. Compare: Patents Act 1949, s 10 (UK); 1939 No 26 s 71 This section was substituted, as from 1 January 1995, by section 3 Patents Amendment Act 1994 (1994 No 122). See sections 17 and 18 of that Act as to the transitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

18 Supplementary provisions as to examination, etc

(1)
The powers of the Commissioner under section 14 or section 16 ofthisActmaybeexercisedeitherbeforeorafterthecomplete specification has been accepted or a patent granted to the applicant and references in those sections to the applicant shall accordingly be construed as including references to the patentee.
(2)
Where a complete specification is amended under the foregoing provisions of this Act before it has been accepted, the amended specification shall be examined and investigated in like manner as the original specification.
(3)
Theexaminationandinvestigationsrequiredbytheforegoing provisions of this Act shall not be deemed to warrant the validity of any patent, and no liability shall be incurred by the PatentOffice or anyofficerthereof by reasonoforin connection with any such examination or investigation or any report or other proceedings consequent thereon. Compare: Patents Act 1949, s 11 (UK); 1921-22 No 18 s 10

19 Time for putting application in order for acceptance

(1) Subject to subsection (1A) of this section, an application for a patent shall be void unless within 15 months from the date of filing of the complete specification, or within such longer period as may be allowed under the following provisions of this section, the applicant has complied with all requirements imposed on him by or under this Act, whether in connection with the complete specification or otherwise in relation to the application.

(1A) The time period allowed in subsection (1) of this section, in relation to a Treaty application, shall commence on the day onwhichtheapplicantfulfilstheapplicant’sobligationsunder Article22(1)orArticle39(1)ofthePatentCooperationTreaty, as the case may require.

(2)
The period allowed by subsection (1) of this section shall be extended to such period, not exceeding 18 months from the date of filing of the complete specification, as may be specifiedinanoticegivenbytheapplicant totheCommissioner,if the notice is given and the prescribed fee paid before the expiration of the period so specified.
(3)
If at the expiration of the period allowed under the foregoing provisions of this section an appeal to the Court is pending underanyoftheprovisions of thisActin respect of the application(or,inthecaseofanapplicationforapatentofaddition, either in respect of that applicatio