New Zealand

Patents Act 2013 (reprint as at 14 September 2017)

 

 

Reprint as at 14 September 2017

Patents Act 2013 Public Act 2013 No 68

Date of assent 13 September 2013 Commencement see section 2

Contents Page

1 Title 13 2 Commencement 14

Part 1 Preliminary

Purposes and overview 3 Purposes 14 4 Overview 15

Interpretation 5 Interpretation 16 6 Meaning of novel 21 7 Meaning of inventive step 21 8 Meaning of prior art base 21 9 Disclosure to be disregarded in certain circumstances 22 10 Meaning of useful 23 11 Computer programs 23

Transitional, savings, and related provisions 11A Transitional, savings, and related provisions 25

Note Changes authorised by subpart 2 of Part 2 of the Legislation Act 2012 have been made in this official reprint.

Note 4 at the end of this reprint provides a list of the amendments incorporated.

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

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Act binds the Crown 12 Act binds the Crown 25

Part 2 Patentable inventions and patent rights

Subpart 1—Patentable inventions General rules concerning what is patentable

13 Patent may be granted for patentable inventions only 25 14 Patentable inventions 25

Exclusions from patentability 15 Inventions contrary to public order or morality not patentable 26

inventions

Subpart 2—Patent rights

Subpart 3—Patent ownership

16 Other exclusions 26

17 Nature of patent 27 18 Exclusive rights given by patent 27 19 Extent, effect, and form of patent 27 20 Term of patent 27 21 Extension of period for paying renewal fees 28

Who may be granted patent 22 Who may be granted patent 28

Power of patentee to deal with patent 23 Power of patentee to deal with patent 28

Co-owners of patent 24 Co-ownership of patent 29 25 Rights of buyers from co-owners of patent 29 26 Power of Commissioner to give directions to co-owners 29 27 Miscellaneous provisions concerning directions 30

Disputes as to inventions made by employees 28 Disputes as to inventions made by employees 30 29 Employment Relations Authority or Commissioner may apportion 31

benefit of invention and of patent 30 Review of Commissioner’s decision 31

Part 3 Process for obtaining grant of patent and other matters

Subpart 1—Patent applications 31 Right to apply for patent 32 32 Application requirements 32

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33 Commissioner may post-date application or specification 32 34 Divisional applications 33 35 Applicant must pay maintenance fee 33

Subpart 2—Specifications 36 Complete and provisional specifications 33 37 Filing of complete specification after provisional specification has 34

been filed 38 Contents of provisional specification 35 39 Contents of complete specification 35 40 Amendment of complete specification before acceptance 35 41 Supply of drawings 36 42 Specifications for micro-organisms 36 43 Deposit requirements for micro-organisms 36 44 Deposit requirements treated as satisfied in certain circumstances 37 45 Micro-organism ceasing to be reasonably available 37

Subpart 3—Treaty applications 46 Treaty application treated as application accompanied by complete 38

specification 47 Description, claims, and drawings 38 48 International filing date 38 49 Commissioner must provide international filing date in certain 38

circumstances 50 Amendments to documents forming part of complete specification 39 51 Treaty application void 40 52 Requirements for examination of Treaty application 40

Subpart 4—Convention applications 53 Convention applicants may make convention applications 41 54 How convention applications are made and dealt with 42 55 Withdrawn, abandoned, or refused basic applications 42 56 Basic applications for 2 or more cognate inventions 42

Subpart 5—Priority dates 57 Priority date of claims of complete specification 43 58 Priority date if complete specification filed for single application 43 59 Priority date if complete specification filed for 2 or more 43

applications 60 Priority date for convention applications 43 61 Priority date for Treaty applications that claim priority of earlier 44

applications 62 Rules that apply if 2 or more priority dates apply or other rules do 45

not apply 63 Priority date in case of lack of entitlement in respect of another 45

patent application

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Subpart 6—Examination 64 Request for examination 46

application or specification to be amended

deadline

Subpart 7—Acceptance and publication

65 Examination 46 66 Commissioner may refuse to proceed with application or require 47

67 Applicants must act by deadline if deadline set by Commissioner 47 68 Application treated as abandoned if applicant fails to act within set 48

69 Commissioner must examine amended specification 48 70 Duty to inform Commissioner of search results 48

Time for putting application in order for acceptance 71 Time for putting application in order for acceptance 49 72 Time may be extended if appeal pending or possible 49 73 Notice of entitlement must be filed before acceptance 50

Acceptance 74 Acceptance of complete specification 50 75 Applicant may request Commissioner to postpone acceptance 51

Publication 76 Publication in case of applications other than Treaty applications 51

patent would be granted Subpart 8—Amendment of specifications after acceptance

acceptance

do not apply in certain circumstances

77 Publication in case of divisional applications made as provided for 52 in section 34

78 Documents open to public inspection 52 79 Publication of Treaty applications 53 80 Certain documents not to be published 53 81 Effect of publication of complete specification 54 82 Court must consider whether it would be reasonable to expect that 54

83 General rules concerning amendments of specifications after 55

84 Amendment must be published in journal 55 85 Amendment of specification with leave of Commissioner 55 86 Request for leave to amend must be published in journal 56 87 Opposition to proposed amendment 56 88 Provisions concerning amendments with leave of Commissioner 56

89 Amendment of specification with leave of court 56

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

Assertions by third parties within prescribed period 90 Assertions by third parties on novelty and inventive step 57 91 Commissioner must consider and deal with notice in prescribed 57

manner Opposition to grant of patent

92 Opposition to grant of patent 57 93 Hearing and decision by Commissioner 58

Re-examination after acceptance 94 Re-examination before patent is granted 59 95 Re-examination after patent is granted 59 96 Relationship between re-examination and other proceedings 59 97 Report on re-examination 60 98 Refusal to grant patent: re-examination before grant 61 99 Revocation of patent: re-examination after grant 61 100 Person who requests re-examination has no right to participate 61

further in re-examination proceeding Subpart 10—Grant of patent

General rules 101 When patent must be granted 62 102 Validity of patent not guaranteed 62 103 Patent date 62 104 Patent granted for one invention only 63 105 Amendment of patent granted to deceased person or to body 63

corporate that has been liquidated or wound up Patents of addition

106 Patents of addition 63 107 Commissioner may revoke patent for improvement or modification 64

and grant patent of addition 108 Restrictions on granting of patents of addition 64 109 Term of patent of addition 64 110 Renewal fees for patents of addition 64 111 Provisions concerning inventive step requirement and validity in 65

connection with patents of addition Subpart 11—Revocation and surrender of patents

112 Revocation of patent 65 113 Provisions concerning applications for revocation made to 65

Commissioner 114 Grounds for revoking patent 66

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115 Court may also revoke patent if patentee, without reasonable 67 cause, refuses request of government department to exploit invention

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

116 Surrender of patent 67

Restoration of lapsed patents 117 Restoration of lapsed patents 68

renewal fee

opportunity to be heard if not satisfied that prima facie case has been made out for restoration

118 Request must describe circumstances that led to failure to pay 68

119 Persons who may make request for restoration of patent 68 120 When request for restoration of patent may be made 68 121 Commissioner must give person who made request reasonable 69

122 Commissioner to publish request in journal 69 123 Notice of opposition and reasonable opportunity to be heard 69 124 Order to be made on payment of unpaid fees 69

Restoration of patent applications 125 Request for restoration of void or abandoned patent applications 70 126 When request for restoration of application may be made 71 127 Notice of opposition 71 128 Commissioner to determine matter 71

Subpart 13—Miscellaneous provisions Substitution of applicants

129 Persons claiming under assignment or agreement or by operation 72 of law

130 Death of applicant 73 131 Disputes between interested parties 73

Provisions for secrecy of certain inventions 132 Directions in relation to inventions concerning defence 73

prejudicial to defence of New Zealand

Minister of Defence

force

offence

133 Commissioner must give notice to Minister of Defence 74 134 Minister of Defence must consider whether publication would be 74

135 Commissioner must revoke directions on receipt of notice from 74

136 Acceptance of complete specification while directions in force 75 137 Maintenance fees and renewal fees not payable while directions in 75

138 Offence to fail to comply with directions 75 139 Liability of directors and managers if body corporate commits 76

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Part 4 Infringement, other patent proceedings, and matters affecting

patent ownership Subpart 1—Infringement proceedings

What constitutes infringement 140 Infringement by doing anything patentee has exclusive right to do 76 141 Infringement by supplying means to infringe to another person 76 142 Presumption that product produced by infringing process 77

What does not constitute infringement 143 No infringement for experimental use 77 144 No infringement by use in or from foreign vessels, aircraft, or 77

vehicles 145 No infringement for use to produce information required by law 78 146 No infringement for prior use of invention 78

Counterclaim for revocation of patent 147 Defendant may counterclaim for revocation of patent 79

Bringing infringement proceeding in court 148 Who may bring infringement proceeding 79 149 When proceeding may be brought 79 150 Right to bring infringement proceeding if registrable assignment or 79

licence has occurred 151 Proceeding brought by exclusive licensee 80

Relief for infringement 152 Types of relief available for infringement 80

infringement

before amendment to accepted specification

paid

grant injunction

specifications contested Subpart 2—Declarations of non-infringement

by, declaration of non-infringement

153 Court must not award damages or account of profits if innocent 80

154 Court must refuse damages or account of profits for infringement 81

155 Court may refuse damages or account of profits if renewal fees not 81

156 Limits on damages and accounts of profits do not affect power to 81

157 Court may grant relief for partially valid patent 81 158 Court may grant costs for subsequent proceeding if validity of 82

159 Application for declaration of non-infringement 82 160 Proceeding for declaration of non-infringement 82 161 Costs in declaration of non-infringement 83 162 Validity of patent not at issue in proceeding for, and not affected 83

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Subpart 3—Standing of Attorney-General

163 Attorney-General may appear in patent proceeding 83

validity Subpart 4—Patent dealings, patent licences, and transmission of

interests in patents

164 Parties must give notice to Solicitor-General if questioning patent 84

Registration of assignments, licences, and other interests in patents 165 Application for registration of assignments, licences, and other 84

interests in patents 166 Registration of assignments, licences, and other interests in patents 84

Vesting of patents and patent applications without probate or letters of administration

167 Commissioner may vest patent or patent application without 85 probate or letters of administration Termination of sales, leases, and licences of patented products and

processes if patent no longer in force 168 Termination of sales, leases, and licences of patented products and 85

processes if patent no longer in force Subpart 5—Compulsory licences

Compulsory licences for supply of patented inventions predominantly in New Zealand

169 Application for compulsory licence where market is not being 86 supplied, or is not being supplied on reasonable terms, in New Zealand

170 Court may order grant of licence 86 Compulsory licences for export of pharmaceutical products

171 Court may order grant of licence for export of pharmaceutical 87 products to certain countries

172 Secretary of Foreign Affairs and Trade may publish notices that 88 specify eligible countries

173 Terms of licence 89 174 Copy of order must be sent to Commissioner and Secretary of 90

Foreign Affairs and Trade General provisions relating to compulsory licences

175 Remuneration payable to patentee 90 176 Person applying for licence must have made efforts to obtain 91

licence from patentee on reasonable commercial terms and conditions

177 Exercise of powers on applications under section 169, 171, or 175 91 178 Order for grant of licence has effect as deed 91

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Subpart 6—Crown use of inventions 179 Crown use of inventions 91 180 Order in Council may declare use to be Crown use 92 181 Protection of buyers 92 182 Rights of third parties in respect of Crown use 92 183 Reference of disputes concerning Crown use 93 184 Court may refer matter to special or official referee or arbitrator 94 185 Special provisions as to Crown use during emergency 94 186 Nature and scope of rights under section 179 94 187 Duty to inform nominated person or patentee 95 188 Nominated person or patentee entitled to remuneration 95

Subpart 7—Mention of inventor in patent, specification, and patents register

189 Mention of inventor in patent, specification, and patents register 95 190 Request or claim to be mentioned as inventor 96 191 Request or claim may not be considered in certain circumstances 96 192 Commissioner must give notice of claim and opportunity to be 96

heard 193 Certificate concerning mention of inventor 97

Part 5 Administrative and miscellaneous provisions

Subpart 1—Patents register and other information on patents and patent applications Patents register

194 Patents register 97 195 Purpose of patents register 97 196 Form of patents register 98 197 Contents of patents register 98

Searches of patents register and obtaining patent information 198 Search of patents register 98 199 Requests for patent information and certified copies 98

Changes to patents register and other official documents 200 Changes to patents register 99 201 Commissioner may correct own mistakes in patents register, etc 99 202 Commissioner may correct other persons’ mistakes in patents 99

register, etc 202A Commissioner may alter certain inconsistent information 100 203 Court may rectify patents register 100

Evidence 204 Evidence: patents register and patents 101 205 Evidence: anything done by Commissioner 101

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Journal and other publications 206 Commissioner must publish journal 101 207 Commissioner may keep or publish indexes, etc 102

Subpart 2—General provisions on proceedings of Commissioner Hearing before exercise of Commissioner’s discretion

208 Hearing before exercise of Commissioner’s discretion 102 Giving evidence to Commissioner

209 How to give evidence to Commissioner in proceedings 102 210 Commissioner may receive evidence on oath 103 211 Issuing of summons by Commissioner 103

Power to award costs 212 Commissioner may award costs 103 213 Commissioner may require security for costs 104

Appeals against Commissioner’s decisions 214 Appeals against decisions of Commissioner 104 215 Appeals against decisions of court on appeal 104

Costs of Commissioner 216 Costs of Commissioner in proceeding 105

Subpart 3—Establishment and operation of administrative bodies and officers for patents

Commissioner and Assistant Commissioners 217 Commissioner and Assistant Commissioners 105 218 Functions of Commissioner 105 219 Powers of Assistant Commissioners of Patents 106 220 Power of Commissioner to delegate 106 221 Liability of Commissioner and others 106

Intellectual Property Office of New Zealand 222 Intellectual Property Office of New Zealand 106 223 Opening hours of Intellectual Property Office of New Zealand 107 224 Closing of Intellectual Property Office of New Zealand at short 107

notice Māori advisory committee

225 Appointment and membership of Māori advisory committee 107 226 Functions of Māori advisory committee 108 227 Effect of advice from Māori advisory committee 108 228 Māori advisory committee may regulate own procedure 108

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Subpart 4—Other miscellaneous provisions Filing and administration of Act

229 Electronic filing and administration of Act 108 Power to extend time limits

230 Commissioner may extend time limits for delays by Commissioner 109 231 Commissioner may extend time limits for certain filing 109

requirements or for delivery failures 232 Requirements for applying and granting extensions of time limits 110

under section 231 Serving of other notices

233 Service of notices (other than those given to or by Commissioner) 110 Requirements for summons

234 Requirements for summons 111 235 Witnesses’ fees, allowances, and expenses 111 236 Offence of failing to comply with summons 112

Fees and other money paid under Act 237 Fees and penalties payable under Act or regulations 112 238 Payment and application of fees and other money paid under this 112

Act Miscellaneous

239 Protection of Royal arms, etc 113 240 Saving for certain Crown rights 113 241 Act does not apply to Tokelau 113 242 Application of Personal Property Securities Act 1999 113

Subpart 5—Regulations 243 Regulations 113 244 Supplementary empowering provision 117 245 Regulations providing for transitional matters and orderly 117

implementation of Act [Repealed] 246 Orders in Council as to convention countries 117

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

247 Repeal of Patents Act 1953 and consequential revocations 118 248 Preservation of patent attorney provisions [Repealed] 118 249 Consequential amendments to other enactments [Repealed] 118 250 Preservation of various regulations and orders 118 251 Validation of fees 118 252 Validation of priority date for Treaty applications 119

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Transitional provisions for patents and patent applications 253 Outline of transitional provisions for patents 119 254 Transitional provision for patents granted under Patents Act 1953 119 255 Patent applications made under Patents Act 1953 continue under 120

that Act 256 Patents Act 1953 ceases to apply to patent application if complete 121

specification later filed

post-dated

commencement

257 This Act applies if patent application under Patents Act 1953 is 121

258 Patents Act 1953 applies to divisional applications dated before 121

259 Which Act applies to Treaty applications 122 Transitional provisions for other applications, notices, and

requests 260 Transitional provision for other applications, notices, or requests 122

Transitional provision for matters in force on commencement 261 Transitional provision for orders, directions, and other matters in 122

effect on transition to new law Transitional provision for patents register

262 Transitional provision for patents register 123 Transitional provisions for offences and infringements

263 Transitional provision for offences and infringements 123 Transitional provisions as to statutory references

264 Transitional provision as to statutory references to corresponding 123 matters

journal, or Patent Office 265 Transitional provision as to repealed references to Commissioner, 124

Transitional provisions for Commissioner and Assistant Commissioners

266 Transitional appointment of Commissioner and Assistant 124 Commissioners

267 Transitional power for Commissioner [Expired] 124 Part 6

Joint registration regime with Australia for patent attorneys Preliminary provisions

268 Purpose of this Part 124 269 Interpretation of this Part 125 270 Meaning of ordinarily resident in New Zealand 127

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Joint registration regime applies in New Zealand 271 Patent attorneys must comply with joint registration regime 127 272 Commissioner must provide information about joint registration 128

regime 273 Interface with Lawyers and Conveyancers Act 2006 128

Offences and penalties 274 Offences: unregistered persons practising, etc, as patent attorneys 129 275 Exceptions for legal representatives and employees 130 276 Incorporated patent attorney must have patent attorney director 131 277 Documents prepared by lawyers 132 278 Documents prepared by member of partnership 132 279 Documents prepared by incorporated patent attorneys and 132

incorporated law firms 280 Attendance at patent attorney’s office 133 281 Time limit for filing charging documents for offences 133

Provisions that apply if Disciplinary Tribunal and Appeals Tribunal sit in Australia

282 Provisions that apply if Tribunals sit in Australia 134 Provisions that apply if Disciplinary Tribunal sits in New Zealand

283 Provisions that apply if Disciplinary Tribunal sits in New Zealand 134 284 Issue of summons by Disciplinary Tribunal 135 285 Failure of witness to comply with summons 135 286 Other provisions about proceedings 136

Miscellaneous provisions 287 Territorial scope and jurisdiction 137

Transitional, savings, and related provisions

Consequential amendments

288 Rights of patent attorney over documents and client property 138 289 Investigations under Australian Acts 138 290 Regulations under this Part 138

Schedule 1AA 139

Schedule 140

The Parliament of New Zealand enacts as follows:

1 Title This Act is the Patents Act 2013.

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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 1 (which contains the preliminary provisions): (c) subpart 3 of Part 5 (which relates to the establishment and operation of

the administrative bodies under this Act): (d) subpart 5 of Part 5 (which contains the regulation-making powers): (e) section 266(1) (which appoints the Commissioner and Assistant Com-

missioners of Patents under the Patents Act 1953 as the new Commis- sioner and Assistant Commissioners).

(2) The rest of this Act comes into force on a date to be appointed by the Governor-General by Order in Council; and 1 or more orders may be made bringing different provisions into force on different dates.

(3) To the extent that it is not previously brought into force under subsection (1) or (2), the rest of this Act comes into force on the first anniversary of the date on which this Act receives the Royal assent.

Part 1 Preliminary

Purposes and overview

3 Purposes The purposes of this Act are to— (a) provide an efficient and effective patent system that—

(i) promotes innovation and economic growth while providing an ap- propriate balance between the interests of inventors and patent owners and the interests of society as a whole; and

(ii) complies with New Zealand’s international obligations; and (b) ensure that a patent is granted for an invention only in appropriate cir-

cumstances by— (i) establishing appropriate criteria for the granting of a patent; and (ii) providing for procedures that allow the validity of a patent to be

tested; and (c) provide greater certainty for patent owners and the users of patented in-

ventions that patents will be valid after they are granted; and

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(d) address Māori concerns relating to the granting of patents for inventions derived from indigenous plants and animals or from Māori traditional knowledge; and

(e) ensure that New Zealand’s patent legislation takes account of develop- ments in the patent systems of other countries; and

(f) regulate the provision of patent attorney services by giving effect to the joint registration regime with Australia.

Section 3(e): amended, on 24 February 2017, by section 8 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

Section 3(f): inserted, on 24 February 2017, by section 8 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

4 Overview (1) In this Act,—

(a) this Part specifies the purposes of this Act and defines terms and expres- sions used in this Act; and

(b) Part 2 contains provisions concerning patentable inventions and patent rights, including provisions relating to what is a patentable invention, ex- clusions from what is patentable, the exclusive rights given by a patent, and who may be granted a patent; and

(c) Part 3 describes the process for obtaining a patent and various other mat- ters, including provisions relating to patent applications, specifications, examinations, acceptance, publication, opposition, and the granting of patents; and

(d) Part 4 contains matters affecting patent ownership, including provisions relating to infringement proceedings and declarations of non-infringe- ment, and provisions on patent dealings and compulsory licences; and

(e) Part 5 contains provisions relating to the patents register, the Commis- sioner, the Māori advisory committee, and other administrative and mis- cellaneous matters; and

(f) Part 6 contains provisions relating to a joint registration regime with Australia for patent attorneys.

(2) Subsection (1) is intended only as a guide to the general scheme and effect of this Act.

(3) [Repealed] Section 4(1)(e): amended, on 24 February 2017, by section 8 of the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016 (2016 No 89).

Section 4(1)(f): inserted, on 24 February 2017, by section 8 of the Patents (Trans-Tasman Patent At- torneys and Other Matters) Amendment Act 2016 (2016 No 89).

Section 4(3): repealed, on 24 February 2017, by section 8 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

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Interpretation

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

applicant— (a) means a person who has applied for a patent for an invention; and (b) includes a person in whose favour a direction has been given under sec-

tion 28(2)(b)(i), 129, or 131(1)(a) and the personal representative of a deceased applicant

assignee includes the personal representative of a deceased assignee; and refer- ences to the assignee of any person include references to the assignee of the personal representative or assignee of that person basic application means an application for protection in respect of an inven- tion, being an application that is made in a convention country (whether before or after it became a convention country) Budapest Treaty— (a) means the Budapest Treaty on the International Recognition of the De-

posit of Microorganisms for the Purposes of Patent Procedure signed at Budapest on 28 April 1977, together with the regulations annexed to that treaty; and

(b) includes any amendments, modifications, and revisions from time to time made to that treaty or those regulations, being amendments, modifi- cations, and revisions to which New Zealand is a party and by which New Zealand is bound

claim means a claim of the complete specification Commissioner— (a) means the Commissioner of Patents appointed under section 217; and (b) includes an Assistant Commissioner of Patents appointed under section

217 convention applicant, in relation to a basic application, means a person who— (a) has made the basic application; or (b) is the assignee of the person who made the basic application; or (c) is the personal representative of a person mentioned in paragraph (a) or

(b); or (d) has the consent of a person mentioned in paragraph (a), (b), or (c) to

make a convention application based on that basic application convention application means a patent application made under section 53(1)

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convention country, in a provision of this Act, means an entity for the time being declared by an order made under section 246 to be a convention country for the purposes of that provision court means the High Court date of the publication of the accepted complete specification has the mean- ing set out in section 74 depositary institution means a body or institution that receives, accepts, and stores micro-organisms and furnishes samples of micro-organisms exclusive licence means a licence from a patentee that gives the licensee (or the licensee and persons authorised by the licensee) any of the patentee’s exclu- sive rights under section 18 to the exclusion of the patentee and all other per- sons exploit has the meaning set out in section 18 file means file with the Commissioner filing date, in relation to a document filed under this Act, means— (a) the date on which the document is filed; or (b) the date on which the document is treated as having been filed (if it is

treated under this Act or the regulations as having been filed on a differ- ent date)

government department means any department or instrument of the Execu- tive Government of New Zealand, or any branch or division of any of those de- partments or instruments integrated circuit means a circuit, in its final or an intermediate form, if— (a) the elements of the circuit and some or all of the interconnections are in-

tegrally formed in or on a piece of material; and (b) at least one of the elements of the circuit is an active element; and (c) the circuit is intended to perform an electronic function interested party, in relation to a patent application, means the applicant or a joint applicant, or a person who claims to be entitled to the grant of a patent on the application, either alone or jointly with another person international application means an application made under the Patent Co- operation Treaty for the protection of an invention International Bureau means the International Bureau of the World Intellectual Property Organization international depositary authority has the same meaning as in the Budapest Treaty international filing date means the international filing date given to an inter- national application under Article 11 or 14(2) of the Patent Cooperation Treaty inventive step has the meaning set out in section 7

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inventor,— (a) in relation to an invention, means the actual deviser of the invention; but (b) in section 9, has the meaning set out in section 9(2) IPONZ means the Intellectual Property Office of New Zealand journal means the journal published under section 206 licence means a licence to do anything that the patentee otherwise has the ex- clusive right to do under section 18 main invention has the meaning set out in section 106 Māori advisory committee means the committee appointed under section 225 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 re- sponsible for the administration of this Act Ministry means the department of State that, with the authority of the Prime Minister, is for the time being responsible for the administration of this Act nominated person, in relation to a patent application, means the person identi- fied as the person to whom the patent is to be granted novel has the meaning set out in section 6 patent means letters patent for an invention patent application means an application for a patent under this Act patent area means— (a) New Zealand; and (b) all waters within the outer limits of the territorial sea of New Zealand (as

defined by section 3 of the Territorial Sea, Contiguous Zone, and Exclu- sive Economic Zone Act 1977); and

(c) the airspace above New Zealand and those waters patent attorney has the same meaning as registered patent attorney in sec- tion 269(1) Patent Cooperation Treaty— (a) means the Patent Cooperation Treaty signed at Washington on 19 June

1970; and (b) includes any amendments, modifications, and revisions from time to

time made to that Treaty, being amendments, modifications, and revi- sions to which New Zealand is a party and by which New Zealand is bound

patent date, in relation to a patent, means the date given to the patent under section 103 patent of addition means a patent granted under sections 106 to 111 patentable invention has the meaning set out in section 14

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patented process means a process for which a patent has been granted and is in force patented product means a product for which a patent has been granted and is in force patentee means the person entered in the patents register as the grantee or owner of a patent at the relevant time patents register means the patents register kept under section 194 personal representative, in relation to a deceased person,— (a) means a person to whom probate of the will of the deceased person, let-

ters of administration of the estate of the deceased person, or any other similar grant, has been granted, whether in New Zealand or anywhere else; but

(b) does not include a person referred to in paragraph (a) if, under the terms of the grant, the person is not entitled to do an act in relation to which the expression is used

prescribed means prescribed by regulations prescribed depositary institution means— (a) an international depositary authority, whether in or outside New Zea-

land; or (b) any other depositary institution in New Zealand that is prescribed for the

purposes of this paragraph prior art base has the meaning set out in section 8, and prior art has a corres- ponding meaning priority date, in relation to a claim, means the priority date given to the claim under subpart 5 of Part 3 publicly notify, in relation to the Commissioner, has the meaning set out in subsection (3) publish, in relation to the Commissioner publishing anything in the journal, has the meaning set out in subsection (4) receiving Office has the same meaning as in Article 2(xv) of the Patent Co- operation Treaty regulations means regulations in force under this Act relevant proceeding, in relation to a patent, means a court proceeding— (a) for infringement of the patent; or (b) for the revocation of the patent; or (c) in which the validity of the patent, or of a claim, is in dispute rules relating to micro-organisms means— (a) the provisions of the Budapest Treaty that are applicable; and

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(b) the provisions of the regulations that relate to micro-organisms Statute of Monopolies means the Act of the 21st year of the reign of King James the First, chapter 3, being an Act concerning monopolies and dispensa- tions with penal laws and the forfeiture thereof Treaty application means an international application— (a) that contains a request specifying New Zealand as a designated State

under Article 4(1)(ii) of the Patent Cooperation Treaty; and (b) that has been given an international filing date Treaty regulations— (a) means the regulations made under the Patent Cooperation Treaty; and (b) includes any amendments from time to time made to those regulations TRIPS agreement means the World Trade Organization Agreement on Trade- Related Aspects of Intellectual Property Rights done at Marrakesh on 15 April 1994 useful has the meaning set out in section 10.

(2) In the case of an entity that is a convention country but is not a State, part of a State, or a territory for whose international relations a State is responsible,— (a) a reference in this Act to an application for protection in a country or an

application for protection in respect of a country must be read as a refer- ence to an application for protection under the rules of the entity; and

(b) a reference in this Act to filing a specification in a convention country must be read as a reference to filing a specification under the rules of the entity; and

(c) a reference in this Act to the law of a convention country must be read as a reference to the rules of the entity; and

(d) a reference in this Act to the Government of a convention country must be read as a reference to the governing body of the entity.

(3) The Commissioner may comply with any requirement in this Act for the Com- missioner 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.

(4) Any requirement in this Act for the Commissioner to publish anything in the journal requires the Commissioner to publish that matter in the journal in the manner required by the regulations (if any).

(5) An example used in this Act has the following status: (a) the example is only illustrative of the provision to which it relates and

does not limit the provision; and

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(b) if the example and the provision to which it relates are inconsistent, the provision prevails.

Compare: 1953 No 64 s 2

Section 5(1) patent attorney: replaced, on 24 February 2017, by section 8 of the Patents (Trans-Tas- man Patent Attorneys and Other Matters) Amendment Act 2016 (2016 No 89).

Section 5(1) register of patent attorneys or patent attorneys register: repealed, on 24 February 2017, by section 8 of the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016 (2016 No 89).

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

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

8 Meaning of prior art base (1) For the purpose of deciding whether or not an invention is novel and for the

purpose of deciding whether or not an invention involves an inventive step, the prior art base, in relation to an invention so far as claimed in a claim, means all matter (whether a product, a process, information about a product or process, or anything else) that has at any time before the priority date of that claim been made available to the public (whether in New Zealand or else- where) by written or oral description, by use, or in any other way.

(2) For the purpose of deciding whether or not an invention is novel, the prior art base, in relation to an invention so far as claimed in a claim, also includes the information contained in a complete specification filed in respect of another patent application if all of the following circumstances apply: (a) if the information is, or were to be, the subject of a claim of that com-

plete specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and

(b) that complete specification became open to public inspection after the priority date of the claim under consideration; and

(c) the information was contained in that complete specification on its filing date and when it became open to public inspection.

Compare: Patents Act 1977 s 2(2) (UK)

21

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Reprinted as at Part 1 s 9 Patents Act 2013 14 September 2017

Disclosure to be disregarded in certain circumstances (1) For the purposes of section 8, the disclosure of matter constituting an invention

must be disregarded if 1 or more of the following applies: (a) that disclosure occurred during the 1-year period immediately preceding

the filing date of the patent application and the disclosure was due to, or made in consequence of, the matter having been obtained unlawfully or in breach of confidence by a person from— (i) the inventor; or (ii) any other person to whom the matter was made available in confi-

dence by the inventor; or (iii) any other person who obtained it from the inventor because the

person or the inventor believed that the person was entitled to ob- tain it; or

(iv) any other person to whom the matter was made available in confi- dence by any person referred to in subparagraphs (i) to (iii) or in this subparagraph; or

(v) any other person who obtained it from any person mentioned in subparagraphs (i) to (iv) because the person or the person from whom the person obtained it believed that the person was entitled to obtain it:

(b) that disclosure occurred during the 1-year period immediately preceding the filing date of the patent application and the disclosure was made in breach of confidence by a person who obtained the matter in confidence from the inventor or from any other person to whom it was made avail- able by, or who obtained it from, the inventor:

(c) that disclosure was due to the communication of the matter to a govern- ment department or to any person authorised by a government depart- ment to investigate the invention or its merits, or to anything done, in consequence of that communication, for the purpose of the investigation:

(d) that disclosure occurred during the 6-month period immediately preced- ing the filing date of the patent application and that disclosure was due to, or made in consequence of,— (i) the display of the invention with the consent of the inventor at a

specified exhibition; or (ii) the use of the invention with the consent of the inventor for the

purposes of a specified exhibition in the place where it is held; or (iii) the publication of any description of the invention in consequence

of its display or use at a specified exhibition as referred to in sub- paragraph (i) or (ii); or

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Reprinted as at 14 September 2017 Patents Act 2013 Part 1 s 11

(iv) the use of the invention, after it has been displayed or used at a specified exhibition as referred to in subparagraphs (i) and (ii) and during the period of the exhibition, by any person without the con- sent of the inventor:

(e) that disclosure was due to, or made in consequence of, the invention be- ing publicly worked, at any time during the 1-year period immediately preceding the filing date of the patent application, by any of the follow- ing persons if the working was effected for the purpose of reasonable tri- al only and if it was reasonably necessary, having regard to the nature of the invention, that the working for that purpose should be effected in public: (i) the patentee or nominated person: (ii) any person from whom the patentee or nominated person derives

title: (iii) any person with the consent of the patentee or nominated person: (iv) any person with the consent of any person from whom the pa-

tentee or nominated person derives title. (2) For the purposes of this section,—

inventor, in relation to an invention,— (a) means the actual deviser of the invention; and (b) includes any owner of the invention at the relevant time specified exhibition means an exhibition (whether held in New Zealand or elsewhere) that is declared to be an international or industrial exhibition by the Commissioner in a notice that is publicly notified. Compare: 1953 No 64 s 60; Patents Act 1977 s 2(4), (5) (UK)

10 Meaning of useful An invention, so far as claimed in a claim, is useful if the invention has a spe- cific, credible, and substantial utility.

11 Computer programs (1) A computer program is not an invention and not a manner of manufacture for

the purposes of this Act. (2) Subsection (1) prevents anything from being an invention or a manner of

manufacture for the purposes of this Act only to the extent that a claim in a patent or an application relates to a computer program as such.

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Reprinted as at Part 1 s 11 Patents Act 2013 14 September 2017

(3) A claim in a patent or an application relates to a computer program as such if the actual contribution made by the alleged invention lies solely in it being a computer program.

Examples A process that may be an invention A claim in an application provides for a better method of washing clothes when using an existing washing machine. That method is implemented through a com- puter program on a computer chip that is inserted into the washing machine. The computer program controls the operation of the washing machine. The washing machine is not materially altered in any way to perform the invention. The Commissioner considers that the actual contribution is a new and improved way of operating a washing machine that gets clothes cleaner and uses less elec- tricity. While the only thing that is different about the washing machine is the computer program, the actual contribution lies in the way in which the washing machine works (rather than in the computer program per se). The computer program is only the way in which that new method, with its resulting contribution, is implemented. The actual contribution does not lie solely in it being a computer program. Accord- ingly, the claim involves an invention that may be patented (namely, the washing machine when using the new method of washing clothes). A process that is not an invention An inventor has developed a process for automatically completing the legal docu- ments necessary to register an entity. The claimed process involves a computer asking questions of a user. The answers are stored in a database and the information is processed using a computer pro- gram to produce the required legal documents, which are then sent to the user. The hardware used is conventional. The only novel aspect is the computer pro- gram. The Commissioner considers that the actual contribution of the claim lies solely in it being a computer program. The mere execution of a method within a computer does not allow the method to be patented. Accordingly, the process is not an in- vention for the purposes of the Act.

(4) The Commissioner or the court (as the case may be) must, in identifying the actual contribution made by the alleged invention, consider the following: (a) the substance of the claim (rather than its form and the contribution al-

leged by the applicant) and the actual contribution it makes: (b) what problem or other issue is to be solved or addressed: (c) how the relevant product or process solves or addresses the problem or

other issue: (d) the advantages or benefits of solving or addressing the problem or other

issue in that manner: (e) any other matters the Commissioner or the court thinks relevant.

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Reprinted as at 14 September 2017 Patents Act 2013 Part 2 s 14

(5) To avoid doubt, a patent must not be granted for anything that is not an inven- tion and not a manner of manufacture under this section.

Transitional, savings, and related provisions Heading: inserted, on 24 February 2017, by section 8 of the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016 (2016 No 89).

11A Transitional, savings, and related provisions Schedule 1AA contains transitional, savings, and related provisions relating to amendments made to this Act. Section 11A: inserted, on 24 February 2017, by section 8 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

Act binds the Crown

12 Act binds the Crown This Act binds the Crown.

Part 2 Patentable inventions and patent rights

Subpart 1—Patentable inventions

General rules concerning what is patentable

13 Patent may be granted for patentable inventions only (1) A patent may be granted for an invention only if it is a patentable invention. (2) This section is subject to section 111 (which relates to patents of addition).

14 Patentable inventions An invention is a patentable invention if the invention, so far as claimed in a claim,— (a) is a manner of manufacture within the meaning of section 6 of the Stat-

ute of Monopolies; and (b) when compared with the prior art base—

(i) is novel; and (ii) involves an inventive step; and

(c) is useful; and (d) is not excluded from being a patentable invention under section 15 or 16. Compare: Patents Act 1990 s 18(1) (Aust)

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Reprinted as at Part 2 s 15 Patents Act 2013 14 September 2017

Exclusions from patentability

15 Inventions contrary to public order or morality not patentable inventions (1) An invention is not a patentable invention if the commercial exploitation of the

invention, so far as claimed in a claim, is contrary to— (a) public order (which in this section has the same meaning as the term or-

dre public as used in Article 27.2 of the TRIPS agreement); or (b) morality.

Examples The commercial exploitation of the following inventions is contrary to public order or morality and, accordingly, those inventions are not patentable: • an invention that is a process for cloning human beings: • an invention that is a process for modifying the germ line genetic identity of

human beings: • an invention that involves the use of human embryos for industrial or com-

mercial purposes: • an invention that is a process for modifying the genetic identity of animals

that is likely to cause them suffering without any substantial medical benefit to human beings or animals, or an invention that is an animal resulting from such a process.

(2) For the purposes of subsection (1), commercial exploitation must not be regar- ded as contrary to public order or morality only because it is prohibited by any law in force in New Zealand.

(3) The Commissioner may, for the purpose of making a decision under this sec- tion, seek advice from the Māori advisory committee or any person that the Commissioner considers appropriate. Compare: Patents Act 1977 s 1(3), (4) (UK)

16 Other exclusions (1) Human beings, and biological processes for their generation, are not patentable

inventions. (2) An invention of a method of treatment of human beings by surgery or therapy

is not a patentable invention. (3) An invention of a method of diagnosis practised on human beings is not a pat-

entable invention. (4) A plant variety is not a patentable invention. (5) For the purposes of subsection (4), plant variety has the same meaning as that

given to the term variety in section 2 of the Plant Variety Rights Act 1987.

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Reprinted as at 14 September 2017 Patents Act 2013 Part 2 s 20

Subpart 2—Patent rights

17 Nature of patent (1) A patent is personal property. (2) Equities in respect of a patent may be enforced in the same way as equities in

respect of any other personal property. Compare: 1953 No 64 s 84(4); 2002 No 49 s 9

18 Exclusive rights given by patent (1) A patent gives the patentee the exclusive rights, during the term of the patent,

to exploit the invention and to authorise another person to exploit the inven- tion.

(2) In this Act, exploit, in relation to an invention, includes,— (a) if the invention is a product, to—

(i) make, hire, sell, or otherwise dispose of the product; or (ii) offer to make, hire, sell, or otherwise dispose of the product; or (iii) use or import the product; or (iv) keep the product for the purpose of doing any of the things re-

ferred to in subparagraphs (i) to (iii); or (b) if the invention is a process, to use the process or to do any act men-

tioned in paragraph (a) in respect of a product resulting from that use. (3) This section is subject to subparts 5 and 6 of Part 4 (which relate to compulsory

licences and the use of patented inventions for services of the Crown). Compare: Patents Act 1990 s 13 (Aust)

19 Extent, effect, and form of patent (1) A patent has effect throughout the patent area. (2) However, a patent may be assigned for any place in, or part of, the patent area

as effectively as if it were granted so as to extend to that place or part only. (3) A patent has the same effect against the Crown as it has against a subject. (4) Subsection (3) is subject to the provisions of this Act and to section 7(3) of the

Crown Proceedings Act 1950. (5) A patent must be in the form approved by the Commissioner (which may be

electronic) and contain the prescribed information. Compare: 1953 No 64 s 29(1)–(3)

20 Term of patent (1) The term of every patent is 20 years from the patent date.

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Reprinted as at Part 2 s 21 Patents Act 2013 14 September 2017

(2) However, a patent ceases to have effect on the expiry of the period prescribed for the payment of any renewal fee if that fee is not paid within that period or within that period as extended under section 21.

(3) Subsection (2) applies despite anything in the patent or any other provision in this Act. Compare: 1953 No 64 s 30(3), (4)

21 Extension of period for paying renewal fees (1) A patentee may request, in the prescribed manner (if any), that the prescribed

period for the payment of a renewal fee be extended to any date that is not more than 6 months after the expiry of the prescribed period.

(2) The Commissioner must extend the prescribed period for the payment of the renewal fee to the date requested under subsection (1) if, before that date,— (a) the request under subsection (1) is made; and (b) the renewal fee is paid; and (c) the prescribed penalty (if any) is paid. Compare: 1953 No 64 s 30(4), (5)

Subpart 3—Patent ownership

Who may be granted patent

22 Who may be granted patent (1) A patent for an invention may only be granted to a person who—

(a) is the inventor; or (b) derives title to the invention from the inventor; or (c) is the personal representative of a deceased person mentioned in para-

graph (a) or (b). (2) A patent may be granted to a person whether or not the person is a New Zea-

land citizen. Compare: Patents Act 1990 s 15 (Aust)

Power of patentee to deal with patent

23 Power of patentee to deal with patent (1) A patentee may (subject to any rights vested in other persons that are entered in

the patents register) deal with the patent as the absolute owner of it and give good discharges for any consideration for that dealing.

(2) This section does not protect a person who deals with a patentee otherwise than as a purchaser in good faith for value and without notice of any fraud on the part of the patentee.

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Reprinted as at 14 September 2017 Patents Act 2013 Part 2 s 26

(3) This section is subject to section 17(2). Compare: Patents Act 1990 s 189(1), (2) (Aust)

Co-owners of patent

24 Co-ownership of patent (1) If a patent is granted to 2 or more persons, each of those persons is entitled to

an equal undivided share in the patent. (2) If 2 or more persons are patentees of the patent, each of those persons is en-

titled to exercise the exclusive rights given by the patent for the person’s own benefit without accounting to the others.

(3) However, a licence under a patent must not be granted, and a share in a patent must not be assigned, except with the consent of all patentees of the patent (other than the licensor or assignor).

(4) Subsections (1) to (3) are subject to any agreement to the contrary between the patentees of the patent.

(5) This section is subject to any direction of the Commissioner under section 26. (6) Nothing in subsection (1) or (2) affects the mutual rights or obligations of

trustees or of the personal representatives of a deceased person, or their rights or obligations as trustees or personal representatives. Compare: 1953 No 64 s 63(1)–(3), (5)

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

26 Power of Commissioner to give directions to co-owners (1) If 2 or more persons are patentees of a patent, the Commissioner may, on the

request of any of them in the prescribed manner, give any directions in accord- ance with the request that the Commissioner thinks fit.

(2) The directions under subsection (1) must relate to— (a) the sale or lease of the patent or any interest in it; or (b) the grant of licences; or (c) the exercise of any right under section 24 in relation to the patent.

(3) If any patentee fails to do anything required to carry out a direction given under subsection (1) within 14 days after being asked in writing to do so by any of the other patentees, the Commissioner may, on the request of any of them in

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Reprinted as at Part 2 s 27 Patents Act 2013 14 September 2017

the prescribed manner, direct a person to do that thing in the name and on be- half of the person in default. Compare: 1953 No 64 s 64(1), (2)

27 Miscellaneous provisions concerning directions (1) Before giving a direction under section 26, the Commissioner must—

(a) give a reasonable opportunity to be heard,— (i) in the case of a request under section 26(1), to the patentees of the

patent; and (ii) in the case of a request under section 26(3), to the person in de-

fault; and (b) have regard to the terms of any agreement between the patentees of the

patent that are brought to the Commissioner’s notice. (2) The Commissioner must not give a direction that—

(a) affects the mutual rights or obligations of trustees or of the personal rep- resentatives of a deceased person, or their rights or obligations as trustees or personal representatives; or

(b) is inconsistent with the terms of an agreement between the patentees of the patent.

Compare: 1953 No 64 s 64(3), (5); Patents Act 1990 s 17(3), (4) (Aust)

Disputes as to inventions made by employees

28 Disputes as to inventions made by employees (1) This section and sections 29 and 30 apply if a dispute arises between an em-

ployer and a person who is, or was at the material time, his, her, or its employee as to the rights of the parties in respect of— (a) an invention made by the employee, either alone or jointly with any

other person; or (b) any patent granted, or to be granted, in respect of an invention referred

to in paragraph (a). (2) The Commissioner may, on a request made to him or her in the prescribed

manner by either of the parties and after giving to each of them a reasonable opportunity to be heard,— (a) determine the matter in dispute; and (b) give any directions that the Commissioner thinks fit—

(i) for enabling a patent application to proceed in the name of 1 or more of the parties alone; or

(ii) for regulating the manner in which it is to proceed; or

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Reprinted as at 14 September 2017 Patents Act 2013 Part 2 s 30

(iii) for both of the purposes referred to in subparagraphs (i) and (ii); and

(c) make any orders for giving effect to his or her decision as he or she con- siders expedient.

(3) However, if it appears to the Commissioner that, in relation to any request under this section, the matter in dispute involves questions that would more properly be determined by the Authority, he or she may decline to deal with the matter.

(4) A decision of the Commissioner under this section or section 29 has the same effect as between the parties and persons claiming under them as a decision of the Authority.

(5) Section 161 of the Employment Relations Act 2000 does not limit this section or section 29 or 30.

(6) The parties to a dispute or review under this section or section 29 or 30 are the employer and employee.

(7) In this section and sections 29 and 30, Authority means the Employment Rela- tions Authority established by section 156 of the Employment Relations Act 2000. Compare: 1953 No 64 s 65(1), (3)

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

(1) In proceedings before the Authority, or on a request made to the Commissioner under section 28, the Authority or Commissioner may make an order specified in subsection (2) (unless satisfied that one or other of the parties is entitled, to the exclusion of the other, to the benefit of an invention made by an employee).

(2) The order referred to in subsection (1) is an order providing for the apportion- ment between the employer and employee of the benefit of the invention, and of any patent granted or to be granted in respect of the invention, in the manner that the Authority or Commissioner considers just. Compare: 1953 No 64 s 65(2)

30 Review of Commissioner’s decision (1) A person who is aggrieved by a decision of the Commissioner under section 28

or 29 may apply to the Authority for a review of the decision. (2) An application for review must be made within—

(a) 20 working days after the date of the decision; or (b) any further time the Authority allows on an application made before or

after that period expires. (3) The Authority—

(a) may confirm, reverse, or modify the decision of the Commissioner; and

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Reprinted as at Part 3 s 31 Patents Act 2013 14 September 2017

(b) may make any other decision that the Commissioner could have made. (4) The Authority must not review any decision made under section 28 or 29, or

part of a decision made under those sections, that is not the subject of an appli- cation under subsection (1).

(5) A decision against which an application is made under subsection (1) continues in force pending the determination of the review unless the Authority orders otherwise. Compare: 1953 No 64 s 65(4)

Part 3 Process for obtaining grant of patent and other matters

Subpart 1—Patent applications

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

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

33 Commissioner may post-date application or specification (1) The Commissioner may, on the request of the applicant in the prescribed man-

ner (if any), direct that a patent application be post-dated to the date that is spe- cified in the request.

(2) The Commissioner must not exercise the power under subsection (1) after the acceptance of the complete specification.

(3) A patent application must not be post-dated under subsection (1) to a date later than 6 months after the date that it was actually made or would, but for subsec- tion (1), be treated as having been made.

(4) A convention application must not be post-dated under subsection (1) to a date later than the last date that, under the provisions of this Act, the application could have been made.

(5) If an application or specification filed under this Act is amended before accept- ance of the complete specification, the Commissioner may direct that the appli- cation or specification be post-dated to the date that the amendment is first filed. Compare: 1953 No 64 s 12(3), (4)

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Reprinted as at 14 September 2017 Patents Act 2013 Part 3 s 36

34 Divisional applications (1) If a patent application has been made (but has not become void or been aban-

doned) (the parent application), the applicant may, in the prescribed manner, make a fresh patent application for any part of the subject matter of the parent application (the divisional application).

(2) A divisional application may only be made— (a) before the acceptance of the complete specification for the parent appli-

cation; and (b) in accordance with any further prescribed requirements relating to the

period within which a divisional application may be made. (3) The Commissioner may direct that a divisional application or a complete speci-

fication for that application (or both) be given an earlier date if— (a) a request to that effect is made in the prescribed manner; and (b) the divisional application is only in respect of subject matter that was in

substance disclosed by the parent application as filed. (4) The earlier date must not be earlier than,—

(a) in the case of the divisional application, the filing date of the parent ap- plication; and

(b) in the case of a complete specification for the divisional application, the filing date of the complete specification for the parent application.

Compare: 1953 No 64 s 12(5)

35 Applicant must pay maintenance fee (1) An applicant must pay a prescribed maintenance fee within the period or

periods that are prescribed for the purposes of this section. (2) A patent application must be treated as having been abandoned if the applicant

does not comply with subsection (1).

Subpart 2—Specifications

36 Complete and provisional specifications (1) Every patent application must—

(a) be accompanied by a complete specification or a provisional specifica- tion unless the application is a convention application; and

(b) be accompanied by a complete specification if the application is a con- vention application.

(2) The Commissioner may direct that a specification that purports to be a com- plete specification be treated as a provisional specification if— (a) the applicant requests, at any time before the acceptance of the specifica-

tion, that the Commissioner make that direction; and

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Reprinted as at Part 3 s 37 Patents Act 2013 14 September 2017

(b) the patent application is not a convention application. (3) A person is not entitled to make a request under subsection (2) if the patent ap-

plication and specification filed in respect of the application have become open to public inspection.

(4) If the Commissioner makes a direction under subsection (2), the complete spe- cification must be treated, for the purposes of this Act, to be, and to have al- ways been, a provisional specification.

(5) The Commissioner may cancel a provisional specification and post-date the patent application to the filing date of a complete specification if— (a) a complete specification has been filed for a patent application that was

accompanied by a provisional specification or by a specification treated as a provisional specification under subsection (2); and

(b) the applicant requests, at any time before the acceptance of the complete specification, that the Commissioner cancel the provisional specification and post-date the application.

(6) A request under subsection (2) or (5) must be made in the prescribed manner (if any). Compare: 1953 No 64 s 9(1), (4), (5); Patents Act 1990 s 37 (Aust)

37 Filing of complete specification after provisional specification has been filed

(1) If a patent application is accompanied by a provisional specification, 1 or more complete specifications must be filed within the period allowable under subsec- tion (2).

(2) The period allowable is— (a) the period within 12 months from the filing date of the patent applica-

tion; or (b) an extended period not exceeding the prescribed period if, on or before

the date on which the complete specification is filed,— (i) a request for an extension of time in which to file the complete

specification is made to the Commissioner in the prescribed man- ner (if any); and

(ii) the prescribed penalty (if any) is paid. (3) A patent application referred to in subsection (1) must be treated as having

been abandoned if a complete specification is not filed within the period allow- able under subsection (2).

(4) If 2 or more patent applications accompanied by provisional specifications have been filed for inventions that are cognate, or of which one is a modifica- tion of another,— (a) a single complete specification may be filed for those applications; or

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Reprinted as at 14 September 2017 Patents Act 2013 Part 3 s 40

(b) if more than 1 complete specification has already been filed, a single complete specification may, with the leave of the Commissioner, be pro- ceeded with in respect of those applications.

(5) Subsection (4) is subject to subsections (1) to (3) and sections 38 to 45. Compare: 1953 No 64 s 9(2), (3)

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

39 Contents of complete specification (1) Every complete specification must—

(a) disclose the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art; and

(b) disclose the best method of performing the invention that is known to the applicant and for which there is an entitlement to claim protection; and

(c) end with a claim or claims defining the scope of the invention claimed; and

(d) include any other prescribed information. (2) The claim or claims must—

(a) relate to one invention only; and (b) be clear and concise; and (c) be supported by the matter disclosed in the complete specification.

(3) A complete specification filed after a provisional specification, or filed with a convention application, may include claims concerning developments of, or additions to, the invention that was described in the provisional specification or the basic application (as the case may be) if those developments or additions are developments or additions for which the nominated person would be en- titled to the grant of a separate patent under this Act.

(4) If a complete specification claims a new substance, the claim must not be con- strued as extending to that substance when found in nature. Compare: 1953 No 64 s 10(1), (3), (4), (6), (7); Patents Act 1977 s 14(3), (5) (UK)

40 Amendment of complete specification before acceptance (1) Before the acceptance of a complete specification, the applicant may, in the

prescribed manner, amend that specification. (2) Subsection (1) is subject to section 33(5).

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Reprinted as at Part 3 s 41 Patents Act 2013 14 September 2017

(3) Subpart 8 applies in respect of amendments to a complete specification after the acceptance of the complete specification.

41 Supply of drawings (1) Drawings may be supplied for the purposes of any specification. (2) Drawings must be supplied for the purposes of a specification if the Commis-

sioner requires drawings to be supplied. (3) Drawings supplied under this section form part of the specification unless the

Commissioner directs otherwise. Compare: 1953 No 64 s 10(2)

42 Specifications for micro-organisms (1) To the extent that an invention is a micro-organism, the complete specification

complies with section 39(1)(a) and (b), so far as those paragraphs require a de- scription of the micro-organism, if, and only if, the deposit requirements speci- fied in section 43 are satisfied in relation to the micro-organism.

(2) Subsection (3) applies if— (a) an invention involves the use, modification, or cultivation of a micro-or-

ganism, other than the micro-organism mentioned in subsection (1); and (b) a person skilled in the relevant art in New Zealand could not reasonably

be expected to perform the invention without having a sample of the mi- cro-organism before starting to perform the invention; and

(c) the micro-organism is not reasonably available to a person skilled in the relevant art in New Zealand.

(3) The complete specification complies with section 39(1)(a) and (b), to the extent that those paragraphs require a description of the micro-organism, if, and only if, the deposit requirements specified in section 43 are satisfied in relation to the micro-organism.

(4) For the purposes of this section and section 45, a micro-organism may be reasonably available to a person even if it is not so available in New Zealand. Compare: Patents Act 1990 s 41 (Aust)

43 Deposit requirements for micro-organisms (1) The deposit requirements are satisfied in relation to a micro-organism to which

a specification relates if, and only if,— (a) the micro-organism was, on or before the filing date of the specification,

deposited with a prescribed depositary institution in accordance with the rules relating to micro-organisms; and

(b) the applicant for the patent provides to the Commissioner, within the prescribed period, a receipt for the deposit from the prescribed deposit- ary institution; and

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(c) the specification includes, at the filing date of the specification, all rele- vant information on the characteristics of the micro-organism that is known to the applicant; and

(d) at all times since the end of the prescribed period, the specification has included— (i) the name of a prescribed depositary institution from which sam-

ples of the micro-organism are obtainable as provided by the rules relating to micro-organisms; and

(ii) the file, accession, or registration number of the deposit given by the institution; and

(e) at all times since the filing date of the specification, samples of the mi- cro-organism have been obtainable from a prescribed depositary institu- tion as provided by those rules.

(2) For the purposes of subsection (1)(b), the receipt for the deposit must be in the prescribed form (if any). Compare: Patents Act 1990 s 6 (Aust)

44 Deposit requirements treated as satisfied in certain circumstances (1) This section applies if—

(a) the requirements specified in section 43(1)(d) or (e) cease to be satisfied in relation to a micro-organism; and

(b) steps are taken at a later time within the prescribed period in accordance with all applicable provisions of the regulations (if any); and

(c) as a result of those steps, if the period during which those requirements are not satisfied is disregarded, those requirements would be satisfied at that later time.

(2) If this section applies,— (a) the requirements specified in section 43(1)(d) and (e) must be treated as

having been satisfied during the period mentioned in subsection (1)(c); and

(b) the provisions that are prescribed have effect for the protection or com- pensation of persons who availed themselves, or took definite steps by way of contract or otherwise to avail themselves, of the invention during that period.

Compare: Patents Act 1990 s 41(4) (Aust)

45 Micro-organism ceasing to be reasonably available (1) A patent may be revoked under section 99 or subpart 11 on the ground referred

to in section 114(1)(c) (which relates to complete specifications that do not comply with this subpart) if—

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(a) the patent was granted for an invention that involves the use, modifica- tion, or cultivation of a micro-organism, other than a micro-organism mentioned in section 42(1); and

(b) the micro-organism was, at the filing date of the complete specification, reasonably available to a person skilled in the relevant art in New Zea- land; and

(c) the micro-organism has ceased to be reasonably available to a person skilled in the relevant art in New Zealand.

(2) This section does not limit section 39(1).

Subpart 3—Treaty applications

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

47 Description, claims, and drawings (1) The description, claims, and drawings (if any) contained in a Treaty application

must be treated as a complete specification. (2) An indication, in relation to a deposited micro-organism given under rule

13bis.4 of the Treaty regulations, in relation to a Treaty application, must be taken to be included in the description contained in the Treaty application even if the indication is contained in another document. Compare: 1953 No 64 s 26B; Patents Act 1990 s 88(5) (Aust)

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

49 Commissioner must provide international filing date in certain circumstances

(1) The Commissioner must give an international application an international fil- ing date if— (a) a request contained in the international application specifies New Zea-

land as a designated State under Article 4(1)(ii) of the Patent Cooper- ation Treaty; and

(b) 1 or more of the following applies:

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(i) the receiving Office has refused to accord the international appli- cation an international filing date under Article 11(1) of the Patent Cooperation Treaty:

(ii) the receiving Office has declared that the international application is considered withdrawn:

(iii) the International Bureau has made a finding under Article 12(3) of the Patent Cooperation Treaty that the international application is considered withdrawn; and

(c) the Commissioner has decided under Article 25(2)(a) of the Patent Co- operation Treaty that the refusal or the declaration or the finding was the result of an error or omission on the part of the receiving Office or the International Bureau.

(2) The date given under subsection (1) must be the date of receipt of the applica- tion by the receiving Office under Article 11(1) of the Patent Cooperation Treaty.

(3) If the date of receipt of the application by the receiving Office cannot be ascer- tained, the Commissioner may give the application an international filing date.

(4) This Act applies to the application in accordance with this section. (5) This section does not apply to an international application that has been filed in

a receiving Office in a language other than English, unless a translation of that application into English that has been verified to the satisfaction of the Com- missioner has been provided to the Commissioner. Compare: 1953 No 64 s 26D

50 Amendments to documents forming part of complete specification (1) Subsection (2) applies if an English translation of a Treaty application—

(a) has been filed with the Commissioner; or (b) has been published under Article 21 of the Patent Cooperation Treaty by

the International Bureau. (2) The description, claims, and any matter associated with the drawings contained

in the Treaty application must be treated for the purposes of this Act as having been amended, on the day the translation was filed, by substituting the transla- ted documents for those originally filed.

(3) The description, claims, and drawings contained in a Treaty application must be treated for the purposes of this Act as having been amended on the day that an amendment was made if— (a) the Treaty application has been amended under Article 19(1) of the

Patent Cooperation Treaty; or (b) the Treaty application has been amended under Article 34 of the Patent

Cooperation Treaty, and New Zealand has been chosen by the applicant

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to be an elected State under Article 31(4)(a) of the Patent Cooperation Treaty within the prescribed time limit.

(4) If a Treaty application has been rectified under rule 91 of the Treaty regula- tions, the description, claims, and drawings contained in that Treaty application must be treated, for the purposes of this Act, as having been amended on the application’s international filing date. Compare: 1953 No 64 s 26E

51 Treaty application void (1) A Treaty application must be treated as void for the purposes of this Act if—

(a) an applicant withdraws the applicant’s international application, or with- draws the application in relation to New Zealand as a designated State; or

(b) an international application is considered to be withdrawn in accordance with Article 12(3), 14(1)(b), 14(3)(a), or 14(4) of the Patent Cooperation Treaty; or

(c) the designation of New Zealand as a designated State is considered to be withdrawn in accordance with Article 14(3)(b) of the Patent Cooperation Treaty; or

(d) the applicant fails to fulfil the applicant’s obligations under Article 22(1) of the Patent Cooperation Treaty within the prescribed time limit; or

(e) the applicant fails to fulfil the applicant’s obligations under Article 39(1)(a) of the Patent Cooperation Treaty within the prescribed time lim- it.

(2) Subsection (1)(b) and (c) are subject to Article 25 of the Patent Cooperation Treaty. Compare: 1953 No 64 s 26F

52 Requirements for examination of Treaty application (1) The Commissioner must not, in relation to a Treaty application, exercise the

Commissioner’s powers under subpart 6 (which relates to examination of patent applications) until— (a) the applicant has fulfilled the applicant’s obligations under Article 22(1)

or 39(1) of the Patent Cooperation Treaty; and (b) the prescribed time limit has expired; and (c) if applicable, a translation of the international application into English

has been filed with the Commissioner and verified to the satisfaction of the Commissioner; and

(d) all prescribed documents have been filed; and (e) all fees required to be paid under this Act and the regulations have been

paid.

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(2) However, the Commissioner may exercise the Commissioner’s powers under subpart 6 at any time before all of the requirements in subsection (1) are satis- fied if— (a) the applicant makes a request under section 64; and (b) the Commissioner considers that it is desirable to exercise those powers

despite the fact that 1 or more of those requirements have not been satis- fied.

(3) Section 65 is subject to this section. Compare: 1953 No 64 s 26G

Subpart 4—Convention applications

53 Convention applicants may make convention applications (1) A convention applicant in relation to a basic application may make a patent ap-

plication, or 2 or more of those convention applicants may make a joint patent application, in respect of the relevant invention within the period of 12 months from the day on which a basic application is first made in a convention country in respect of the invention.

(2) A patent application made under subsection (1) is a convention application. (3) For the purposes of this Act,—

(a) the filing of a complete specification in a convention country after the filing of a provisional specification in relation to an application for pro- tection must be treated as a basic application made in that country; and

(b) a person must be treated as having made a basic application in a conven- tion country in respect of an invention if the person has made an applica- tion for protection in respect of the invention by an application that,— (i) in accordance with the terms of a treaty subsisting between that

convention country and any 1 or more other convention countries, is equivalent to a basic application duly made in any one of those convention countries; or

(ii) in accordance with the law of that convention country, is equiva- lent to a basic application duly made in that convention country; and

(c) a matter must be treated as having been disclosed in a basic application made in a convention country if it was claimed or disclosed (otherwise than by way of disclaimer or acknowledgment of prior art) in that appli- cation or in documents submitted by the person who made the basic ap- plication in support of, and at the same time as, that application.

(4) Despite subsection (3)(c), if the Commissioner has given a written notice to the convention applicant requiring the convention applicant to file a copy of any or all of the documents referred to in that paragraph, account must not be taken of

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any disclosure in the document or those documents unless a copy of the docu- ment or documents is filed within the prescribed period after the Commissioner has given the notice.

54 How convention applications are made and dealt with (1) A convention application must be made and dealt with in the same manner as

any other patent application. (2) However, a patent application that is a convention application must—

(a) include the prescribed information relating to the relevant basic applica- tion; and

(b) be accompanied by a complete specification in accordance with section 36(1); and

(c) be made and dealt with in accordance with any other additional or differ- ent requirements prescribed for convention applications by this Act or regulations.

55 Withdrawn, abandoned, or refused basic applications For the purposes of this Act, if more than 1 basic application has been made for an invention, a previously filed basic application (basic application A) must be disregarded and a subsequently filed basic application (basic application B) must be substituted for basic application A if— (a) basic application A was made in, or in respect of, the same convention

country and by the same applicant as basic application B; and (b) not later than the date of filing of basic application B, basic application

A was unconditionally withdrawn, abandoned, or refused; and (c) basic application A had not been made available to the public in New

Zealand or elsewhere before its unconditional withdrawal, abandonment, or refusal; and

(d) no rights remain outstanding in respect of basic application A; and (e) basic application A has not served to establish a right of priority in rela-

tion to another application in any convention country. Compare: 1953 No 64 s 7(2A)

56 Basic applications for 2 or more cognate inventions (1) If basic applications have been made in 1 or more convention countries for 2 or

more inventions that are cognate or of which one is a modification of another, a single convention application may be made for those inventions at any time within 12 months from the date of the earliest of the basic applications.

(2) Despite subsection (1), the requirements of section 54(2)(a) apply separately to the basic applications for each of the inventions referred to in subsection (1).

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Subpart 5—Priority dates

57 Priority date of claims of complete specification (1) Every claim of a complete specification has effect from the date prescribed by

this subpart as the priority date of that claim. (2) A patent is not invalidated—

(a) by reason only that the invention, so far as claimed in a claim, has been made available to the public (whether in New Zealand or elsewhere) on or after the priority date of the claim by written or oral description, by use, or in any other way; or

(b) by the grant of another patent on a specification claiming the same in- vention in a claim of the same or a later priority date.

Compare: 1953 No 64 s 11(1)

58 Priority date if complete specification filed for single application The priority date of a claim is the filing date of the patent application if— (a) the complete specification is filed for a single application that was ac-

companied by a provisional specification or by a specification that is treated as a provisional specification; and

(b) the claim is supported by the matter disclosed in that provisional specifi- cation.

Compare: 1953 No 64 s 11(2)

59 Priority date if complete specification filed for 2 or more applications (1) This section applies if—

(a) the complete specification is filed or proceeded with in relation to 2 or more patent applications that were accompanied by provisional specifi- cations or by specifications that are treated as provisional specifications; and

(b) the claim is supported by the matter disclosed in at least 1 of those provi- sional specifications.

(2) The priority date of the claim is the filing date of the patent application that is accompanied by the specification that disclosed the matter that supports the claim (or, if there is more than 1 application accompanied by such a specifica- tion, the filing date of the earliest of them). Compare: 1953 No 64 s 11(3)

60 Priority date for convention applications (1) This section applies if the complete specification is filed for a convention ap-

plication and the claim is supported by the matter disclosed— (a) in the basic application; or

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(b) if the convention application is founded on more than 1 basic applica- tion, in at least 1 of those basic applications.

(2) The priority date of the claim is the date of the basic application that disclosed the matter that supports the claim (or, if there is more than 1 such basic applica- tion, the date of the earliest of them). Compare: 1953 No 64 s 11(4)

61 Priority date for Treaty applications that claim priority of earlier applications

(1) This section applies if— (a) the patent application that relates to the complete specification that con-

tains the claim is a Treaty application; and (b) that Treaty application claims the priority of an earlier application under

Article 8 of the Patent Cooperation Treaty; and (c) that earlier application is—

(i) an application made in New Zealand not more than 12 months be- fore the international filing date of the Treaty application; or

(ii) an application made in New Zealand more than 12 months before the international filing date of the Treaty application, for which— (A) a receiving Office has restored priority under rule 26bis.3

of the Treaty regulations; and (B) the restored priority has not been found to be ineffective by

the Commissioner or the court under rule 49ter.1 of the Treaty regulations; or

(iii) a basic application for an invention, made in a convention country not more than 12 months before the international filing date of the Treaty application, that is the first application made in a conven- tion country for the invention; or

(iv) a basic application for an invention made in a convention country more than 12 months before the international filing date of the Treaty application, that is the first application made in a conven- tion country for the invention, for which— (A) a receiving Office has restored priority under rule 26bis.3

of the Treaty regulations; and (B) the restored priority has not been found to be ineffective by

the Commissioner or the court under rule 49ter.1 of the Treaty regulations; or

(v) a basic application for an invention made in a convention country after an application referred to in subparagraph (iii); and

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(d) the claim is supported by the matter disclosed in that earlier application or in a specification filed for that earlier application.

(2) The priority date of the claim is,— (a) if the claim is supported by the matter disclosed in the earlier applica-

tion, the date of filing of that application; or (b) in any other case, the date of filing of the specification for the earlier ap-

plication that disclosed the matter that supports the claim (or, if there is more than 1 such specification, the date of filing of the earliest of them).

(3) For the purposes of subsection (2), date of filing means,— (a) in the case of the earlier application being an application made in New

Zealand, the date that the earlier application or specification for the earlier application (as the case may be) is filed in New Zealand:

(b) in any other case, the date that the earlier application or specification for the earlier application (as the case may be) is filed in the convention country.

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

(1) If, under sections 59 to 61, a claim would, but for this provision, have 2 or more priority dates, the priority date of that claim is the earlier or earliest of those dates.

(2) If sections 58 to 61 do not apply to any case, the priority date of a claim is the filing date of the complete specification. Compare: 1953 No 64 s 11(5), (6)

63 Priority date in case of lack of entitlement in respect of another patent application

(1) This section applies if— (a) a patent application (application A) is made for an invention that has

been claimed in a complete specification filed in relation to another patent application (application B); and

(b) 1 or more of the following applies: (i) the Commissioner has refused to grant a patent in relation to ap-

plication B on the ground specified in section 92(1)(b) (whether in a re-examination or an opposition proceeding under subpart 9):

(ii) the patent granted in relation to application B has been revoked by the court or the Commissioner on the ground specified in section 114(1)(b):

(iii) the complete specification filed in relation to application B has, in a re-examination or an opposition proceeding under subpart 9 or a proceeding under subpart 11, been amended by the exclusion of

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the claim relating to the invention as a result of a finding by the Commissioner that the nominated person or the patentee is not en- titled to the patent.

(2) The Commissioner may direct that application A and any specification filed in relation to it must, for the purposes of this subpart, be treated as having been filed on the date on which the corresponding document was filed, or is treated as having been filed, in relation to application B. Compare: 1953 No 64 s 62

Subpart 6—Examination

64 Request for examination (1) The applicant may, in the prescribed manner, ask for an examination of the

patent application and the complete specification relating to the application. (2) The Commissioner may, on 1 or more of the prescribed grounds and in the pre-

scribed manner, direct the applicant to ask, within the prescribed period, for an examination of the patent application and the complete specification relating to the application.

(3) If the patent application and the complete specification relating to the applica- tion are open to public inspection, any person may, in the prescribed manner, require the Commissioner to give a direction under subsection (2).

(4) However, a person may not act under subsection (3) if the application is a Treaty application and the requirements in section 52(1) have not been satis- fied.

(5) If required under subsection (3), the Commissioner must give a direction ac- cordingly, unless the applicant has already asked, or been directed to ask, for an examination of the patent application and the complete specification relating to the application.

(6) If the Commissioner gives a direction under this section, the patent application must be treated as having been abandoned if the applicant does not ask, within the prescribed period, for an examination of the patent application and the complete specification relating to the application. Compare: Patents Act 1990 s 44 (Aust)

65 Examination (1) The Commissioner must, after being asked to do so under section 64, examine

a patent application and the complete specification relating to the application, and report on— (a) whether the Commissioner is satisfied, on the balance of probabilities,

that— (i) the application and the specification comply with the requirements

of this Act and of the regulations; and

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(ii) the applicant has complied with all requirements imposed on the applicant by or under this Act that are prescribed for the purposes of this subparagraph; and

(iii) the invention, so far as claimed, is a patentable invention under section 14; and

(iv) there is no other lawful ground of objection to the grant of a patent in respect of the application; and

(b) all other matters (if any) that are prescribed. (2) The examination must be carried out in the prescribed manner. (3) The Commissioner must give a copy of the report to the applicant after it is

issued. Compare: Patents Act 1990 s 45 (Aust)

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

(1) This section applies if, after examining under section 65 a patent application and the complete specification relating to the application, the Commissioner re- ports that he or she is not satisfied as to any of the matters specified in section 65(1)(a).

(2) The Commissioner— (a) must state the grounds of objection when reporting on an examination;

and (b) may—

(i) refuse to proceed with the patent application; or (ii) require the applicant to amend the patent application or any speci-

fication before the Commissioner proceeds with the application.

67 Applicants must act by deadline if deadline set by Commissioner (1) If the Commissioner has acted under section 66(2)(b), the applicant must, by

the deadline (if any) set by the Commissioner, make a substantive response to the report.

(2) After each response, the Commissioner may issue a further report under section 65, and, if the Commissioner is still not satisfied as to any of the matters speci- fied in section 65(1)(a), the Commissioner may act under section 66.

(3) If the Commissioner has issued a further report under section 65 and acted under section 66(2)(b), the applicant must, by the deadline (if any) set by the Commissioner, make a substantive response to the report.

(4) The Commissioner must set deadlines (if any) in the prescribed manner. (5) The Commissioner may extend any deadlines in the prescribed manner.

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(6) For the purposes of this section, a substantive response is a response that, in the opinion of the Commissioner,— (a) gives a fair and substantial answer to the report issued by the Commis-

sioner; or (b) gives a fair and substantial answer to the report issued by the Commis-

sioner and amends the application or specification to remove 1 or more of the grounds of objection raised by the Commissioner in the report; or

(c) amends the application or specification to remove all of the grounds of objection raised by the Commissioner in the report.

68 Application treated as abandoned if applicant fails to act within set deadline A patent application must be treated as having been abandoned if the applicant has failed to comply with section 67.

69 Commissioner must examine amended specification (1) The Commissioner must examine an amended complete specification in the

same manner as the original specification if the specification is amended fol- lowing the issue of a report under section 65.

(2) Subsection (1) does not apply after the complete specification is accepted. Compare: 1953 No 64 s 18(2)

70 Duty to inform Commissioner of search results (1) The applicant must, if required by the Commissioner, inform the Commis-

sioner, in the prescribed manner, of the results of any documentary searches by, or on behalf of, a foreign patent office carried out for the purpose of assessing the patentability of an invention disclosed in the complete specification or a corresponding application filed outside New Zealand.

(2) Subsection (1)— (a) does not apply to a search if the search is prescribed as a type of search

to which this section does not apply; and (b) applies only to searches completed before the grant of the patent.

(3) A search is completed on the earliest of— (a) the date, if any, specified in the search report as the date that the report

was issued; and (b) the date, if any, specified in the search report as the date that the search

was completed; and (c) the date that the search results were issued to the applicant or patentee

by the foreign patent office.

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(4) In this section, foreign patent office means an office, organisation, or other body that may grant protection in respect of an invention in a country outside New Zealand. Compare: Patents Act 1990 s 45(3) (Aust)

Subpart 7—Acceptance and publication

Time for putting application in order for acceptance

71 Time for putting application in order for acceptance (1) A patent application is void unless, within the prescribed period, the applicant

ensures that— (a) the application and the complete specification comply with the require-

ments of this Act and of the regulations; and (b) the applicant has complied with all requirements imposed on the appli-

cant by or under this Act that are prescribed for the purposes of this paragraph; and

(c) the invention, so far as claimed, is a patentable invention under section 14; and

(d) there is no other lawful ground of objection to the grant of a patent in respect of the application.

(2) Deadlines, or extensions of deadlines, set by the Commissioner under section 67 cannot extend the prescribed period under subsection (1).

(3) Nothing in this section limits section 68 (which relates to treating an applica- tion as abandoned). Compare: 1953 No 64 s 19(1), (1A)

72 Time may be extended if appeal pending or possible (1) This section applies if, at the expiry of the prescribed period under section

71,— (a) an appeal to the court is pending under section 214 in respect of the

patent application (or, in the case of an application for a patent of add- ition, either in respect of that application or in respect of the patent appli- cation for the main invention); or

(b) the 20-working-day period within which an appeal referred to in para- graph (a) may be brought under section 214(2)(b)(i) has not expired.

(2) The court may extend the period that applies under section 71 until the date that the court thinks fit if an appeal referred to in subsection (1)(a)— (a) is pending; or (b) is brought within the time referred to in subsection (1)(b); or

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(c) is brought before the expiry of any extension of the time for bringing an appeal allowed by the court under section 214(2)(b)(ii),— (i) in the case of a first extension, on an application for an extension

made within the time referred to in subsection (1)(b); or (ii) in the case of a subsequent extension, on an application for an ex-

tension made before the expiry of the last previous extension. (3) If no appeal referred to in subsection (1)(a) is pending or is so brought, the

period that applies under section 71 continues— (a) until the end of the time referred to in subsection (1)(b); or (b) if any extension of the time for bringing an appeal is allowed by the

court as referred to in subsection (2)(c), until the expiry of the extension or last extension that is allowed.

Compare: 1953 No 64 s 19(3)

73 Notice of entitlement must be filed before acceptance (1) The applicant must file, in the prescribed manner, a notice stating the grounds

on which the nominated person is entitled to be granted the patent under sec- tion 22— (a) before the expiry of the prescribed period under section 71; or (b) before the expiry of the extension or last extension under section 72 (if

the prescribed period under section 71 is extended under that section). (2) For the purposes of this Act, the applicant may be taken to be the nominated

person. (3) However, if the applicant is not the nominated person or is not the only nomin-

ated person, the applicant must identify all of the nominated persons in the no- tice referred to in subsection (1).

(4) Subsection (2) does not limit subsection (1). (5) A patent application is void if the applicant does not comply with this section.

Acceptance

74 Acceptance of complete specification (1) The Commissioner must accept the complete specification relating to a patent

application if the Commissioner is satisfied, on the balance of probabilities, that— (a) the application and the specification comply with the requirements of

this Act and of the regulations; and (b) the applicant has complied with all requirements imposed on the appli-

cant by or under this Act that are prescribed for the purposes of this paragraph; and

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(c) the invention, so far as claimed, is a patentable invention under section 14; and

(d) there is no other lawful ground of objection to the grant of a patent in respect of the application.

(2) The Commissioner must, after acceptance of a complete specification,— (a) give notice of the acceptance to the applicant; and (b) publish the acceptance in the journal.

(3) For the purposes of this Act, date of the publication of the accepted com- plete specification means the date of publication of the journal containing the publication under subsection (2)(b).

(4) This section is subject to sections 71, 72, and 75. Compare: 1953 No 64 s 20(1), (2)

75 Applicant may request Commissioner to postpone acceptance (1) The applicant may, in the prescribed manner (if any), give notice to the Com-

missioner requesting the Commissioner to postpone acceptance of the complete specification until a date that is specified in the notice.

(2) The date specified in the notice must not be a date that is after the prescribed period.

(3) The Commissioner may postpone acceptance under section 74 if a notice is given under this section. Compare: 1953 No 64 s 20(1)

Publication

76 Publication in case of applications other than Treaty applications (1) The Commissioner must publish a notice in the journal that a complete specifi-

cation is open to public inspection if— (a) the specification has been filed for a patent application that is not a

Treaty application; and (b) a period of 18 months after the earliest priority date claimed in respect of

the patent application has ended; and (c) the specification is not already open to public inspection.

(2) Subsection (1) does not apply if the patent application is void or has been aban- doned.

(3) If a complete specification filed in respect of a patent application (other than a Treaty application) has not become open to public inspection, the Commis- sioner must, if asked to do so by the applicant, publish, in the prescribed man- ner, a notice in the journal that the complete specification is open to public in- spection.

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(4) If section 42(2) applies to a specification, the applicant may not make a request under subsection (3) in relation to the specification unless the specification in- cludes the particulars mentioned in section 43(1)(d). Compare: Patents Act 1990 s 54(1)–(3) (Aust)

77 Publication in case of divisional applications made as provided for in section 34

(1) The Commissioner must publish a notice in the journal that a complete specifi- cation filed for a divisional application is open to public inspection if— (a) the divisional application is made in respect of a parent application

(whether or not the parent application is a Treaty application); and (b) the complete specification filed for the parent application was open to

public inspection when the divisional application was made. (2) Subsection (3) applies if a divisional application is made in respect of a parent

application that is not a Treaty application and— (a) a notice is published in the journal that the complete specification filed

for the parent application is open to public inspection; or (b) a notice is published in the journal that the complete specification filed

for the divisional application is open to public inspection. (3) The Commissioner must also publish in the journal a notice that,—

(a) if subsection (2)(a) applies, the complete specification filed for the div- isional application is open to public inspection; or

(b) if subsection (2)(b) applies, the complete specification filed for the parent application is open to public inspection.

(4) For the purposes of this section,— divisional application means a divisional application referred to in section 34 parent application means the parent application referred to in section 34. Compare: Patents Act 1990 s 54(4), (5) (Aust)

78 Documents open to public inspection (1) If a notice is published under section 76 or 77, the specification concerned, and

the other documents (if any) that are prescribed, are open to public inspection. (2) If acceptance of a complete specification is published under section 74(2)(b) in

relation to a patent application, the following documents (being documents that have not already become open to public inspection) are open to public inspec- tion: (a) all documents (other than prescribed documents) filed in relation to the

application or the patent, whether before or after the acceptance or grant: (b) all documents (other than prescribed documents) filed, after the patent

ceases, expires, or is revoked, in relation to the former patent:

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(c) copies of all documents relating to the application or patent (other than prescribed documents) given by the Commissioner to the applicant or patentee, or the former applicant or patentee.

(3) A specification, or other document, must be taken to have been made available to the public on the day on which it becomes open to public inspection unless it has been made available to the public (whether in New Zealand or elsewhere) otherwise before that day.

(4) Subsection (3) is subject to section 79. Compare: Patents Act 1990 s 55 (Aust)

79 Publication of Treaty applications (1) A Treaty application must be taken to have become open to public inspection,

and to have been made available to the public, on the date that it is published under Article 21 of the Patent Cooperation Treaty.

(2) On and after the date on which the requirements in section 52 are satisfied in relation to a Treaty application, the documents (if any) that are prescribed are open to public inspection.

80 Certain documents not to be published (1) Except as otherwise provided by or under this Act, documents of the kind men-

tioned in section 78 or 79— (a) must not be published by the Commissioner or be open to public inspec-

tion; and (b) must not be published before the document is open to public inspection

by any person to whom the Commissioner provides the document in the performance of his or her functions; and

(c) are not liable to be inspected or produced before the Commissioner or in a legal proceeding unless the Commissioner, court, or any person having power to order inspection or production, directs that the inspection or production be allowed.

(2) Subsection (1) does not prevent— (a) the Commissioner from publishing the date and number of a patent ap-

plication and any details of the patent application and invention that are required to be given in or with the patent application:

(b) documents of the kind mentioned in section 78 or 79 being published by the Commissioner and becoming open to public inspection with the con- sent of the applicant.

(3) Notice of an application for the production in legal proceedings of a document of the kind mentioned in section 78 or 79 must be given to the Commissioner, who is entitled to be heard on the application.

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(4) A request for information under the Official Information Act 1982 may be re- fused by the Commissioner or the Ministry, as contrary to this Act, if, and to the extent that, it would require documents of the kind mentioned in section 78 or 79, or information in connection with those documents, to be made available before those documents are open to public inspection. Compare: Patents Act 1990 s 56 (Aust)

81 Effect of publication of complete specification (1) After a complete specification relating to a patent application has become open

to public inspection and until a patent is granted on the application, the nomin- ated person has the same privileges and rights as the nominated person would have had if a patent for the invention had been granted on the day when the specification became open to public inspection under sections 76 to 79.

(2) The nominated person is entitled to bring a proceeding by virtue of this section in respect of an act only— (a) after the patent has been granted; and (b) if the act would, if the patent had been granted on the day referred to in

subsection (1), have infringed both— (i) the patent; and (ii) the claims (as interpreted by the description and any drawings that

form part of the complete specification) in the form in which they were contained in the complete specification immediately before it became open to public inspection.

(3) Subpart 1 of Part 4 applies (subject to section 82) to a proceeding under this section with all necessary modifications (including reading references to the patentee as references to the nominated person and construing references to a patent being in force, granted, or valid consistently with this section). Compare: 1953 No 64 s 20(4), (5); Patents Act 1990 s 57(1), (3) (Aust); Patents Act 1977 s 69(2) (UK)

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

(1) In a proceeding under section 81, the court must, in considering the amount of damages or an account of profits for an infringement, consider whether or not it would have been reasonable to expect, from a consideration of the complete specification that became open to public inspection, that a patent would be granted that would confer on the patentee protection from an act of the same description as that found to infringe the rights conferred by that section.

(2) If the court finds that it would not have been reasonable, the court must reduce the damages, or the amount of an account of profits, to an amount that it thinks just.

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(3) Section 154 does not apply to a proceeding under section 81. Compare: Patents Act 1977 s 69(3) (UK)

Subpart 8—Amendment of specifications after acceptance

83 General rules concerning amendments of specifications after acceptance (1) After the acceptance of a complete specification, an amendment to that specifi-

cation is not allowable and must not be made if the effect of the amendment is that— (a) the specification as amended would claim or describe matter that was

not in substance disclosed in the specification before the amendment; or (b) a claim of the specification as amended would not fall wholly within the

scope of a claim of the specification before the amendment. (2) Subsection (1) does not apply to an amendment for the purpose of correcting

an obvious mistake made in, or in relation to, a complete specification. (3) If, after the date of the publication of the accepted complete specification, any

amendment of the specification is allowed by the Commissioner or the court,— (a) the right of the patentee or applicant to make the amendment must not be

called into question except on the ground of fraud; and (b) the amendment must, in all courts and for all purposes, be treated as

forming part of the specification. (4) However, in construing the specification as amended, reference may be made

to the specification as originally published. Compare: 1953 No 64 s 40(1), (2)

84 Amendment must be published in journal If, after the date of the publication of the accepted complete specification, any amendment of the specification is allowed under sections 85 to 89, the fact that the specification has been amended must be published in the journal. Compare: 1953 No 64 s 40(3)

85 Amendment of specification with leave of Commissioner (1) The Commissioner may, on a request made under this section by a patentee, or

by an applicant for a patent at any time after the acceptance of the complete specification, allow the complete specification to be amended subject to any conditions that the Commissioner thinks fit.

(2) However, the Commissioner must not allow a specification to be amended on a request made under this section while any relevant proceeding is pending.

(3) Every request for leave to amend a specification under this section must— (a) state the nature of the proposed amendment; and (b) give full particulars of the reasons for the request; and

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(c) be made in the prescribed manner (if any). (4) This section is subject to section 83 (which contains general rules about

amendments of specifications). Compare: 1953 No 64 s 38(1), (2)

86 Request for leave to amend must be published in journal (1) Every request for leave to amend a specification under section 85, and the

nature of the proposed amendment, must be published in the journal. (2) However, if the request is made before the date of the publication of the accept-

ed complete specification, the Commissioner may, if the Commissioner thinks fit, dispense with publication under subsection (1) or direct that publication be postponed until the date of the publication of the accepted complete specifica- tion. Compare: 1953 No 64 s 38(3)

87 Opposition to proposed amendment (1) Any person may, in the prescribed manner (if any), give notice to the Commis-

sioner of opposition to a proposed amendment within the prescribed period after the publication of a request under section 86.

(2) If a notice is given within the prescribed period, the Commissioner must— (a) notify the person who made the request under section 85; and (b) give that person and the opponent a reasonable opportunity to be heard

before the Commissioner decides the case. Compare: 1953 No 64 s 38(4)

88 Provisions concerning amendments with leave of Commissioner do not apply in certain circumstances Sections 85 to 87 do not apply in relation to any amendment of a specification effected— (a) in a proceeding in opposition to the grant of a patent under sections 92

and 93; or (b) in accordance with any of sections 98(2), 99(2), and 113(6)(b). Compare: 1953 No 64 s 38(6)

89 Amendment of specification with leave of court (1) In any relevant proceeding in relation to a patent, the court may, by order, al-

low the patentee to amend the patentee’s complete specification in the manner and subject to the terms as to costs, publication, or otherwise that the court thinks fit.

(2) If, in any proceeding for the revocation of a patent, the court decides that the patent is invalid, the court may allow the specification to be amended under this section instead of revoking the patent.

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(3) If an application for an order under this section is made to the court,— (a) the applicant for that order must give notice of the application to the

Commissioner; and (b) the Commissioner may appear and be heard on the application; and (c) the Commissioner must appear if he or she is directed by the court to ap-

pear. (4) This section is subject to section 83 (which contains general rules about

amendments of specifications). Compare: 1953 No 64 s 39

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

Assertions by third parties within prescribed period

90 Assertions by third parties on novelty and inventive step (1) Any person may, within the prescribed period after a complete specification be-

comes open to public inspection but before the date of the publication of the accepted complete specification, notify the Commissioner, in the prescribed manner (if any), that the person asserts that the invention, so far as claimed in a claim, is not a patentable invention because it does not comply with section 14(b) (which relates to the requirement for the invention to be novel and in- volve an inventive step).

(2) The notice must state the reasons for the person’s assertion. (3) The notice and any documents accompanying it are open to public inspection.

Compare: Patents Act 1990 s 27(1), (4) (Aust)

91 Commissioner must consider and deal with notice in prescribed manner (1) The Commissioner must inform the applicant in writing of any matter of which

the Commissioner is notified under section 90 and send the applicant a copy of any document accompanying the notice.

(2) The Commissioner must otherwise consider and deal with a notice under sec- tion 90 in the prescribed manner. Compare: Patents Act 1990 s 27(2), (3) (Aust)

Opposition to grant of patent

92 Opposition to grant of patent (1) Any person may, in the prescribed manner, oppose the grant of a patent on 1 or

more of the following grounds: (a) that the invention, so far as claimed in a claim, is not a patentable inven-

tion under section 14: (b) that the nominated person is not entitled to the patent:

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(c) that the complete specification does not comply with any provision of subpart 2 (which relates to specification requirements) other than section 39(2)(a) (which requires claims to relate to 1 invention only):

(d) that the applicant is attempting, or has attempted, to obtain the grant of a patent by fraud, false suggestion, or a misrepresentation:

(e) that the invention, so far as claimed in a claim, was secretly used in New Zealand before the priority date of that claim:

(f) that granting the patent would be contrary to law. (2) For the purposes of subsection (1)(a), account must not be taken of any secret

use of the invention. (3) For the purposes of subsection (1)(e), account must not be taken of any use of

the invention— (a) for the purpose of reasonable trial or experiment only if the trial or ex-

periment is conducted by, on behalf of, or with the consent of the nomin- ated person or any person from whom the nominated person derives title; or

(b) by a government department or any person authorised by a government department, in consequence of the nominated person, or any person from whom the nominated person derives title, communicating or disclosing the invention directly or indirectly to that department or person; or

(c) by any other person, in consequence of the nominated person, or any person from whom the nominated person derives title, communicating or disclosing the invention to that person in confidence if the use of the in- vention is without the consent of the nominated person or of any person from whom the nominated person derives title.

Section 92(1)(c): amended (with effect on 13 September 2014), on 21 November 2016, by section 4 of the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016 (2016 No 89).

93 Hearing and decision by Commissioner If the grant of a patent is opposed, the Commissioner must— (a) give the applicant and the opponent a reasonable opportunity to be heard

before deciding a case; and (b) consider whether any of the following grounds are established on the

balance of probabilities: (i) any ground set out in section 92 that is relied upon by the oppo-

nent: (ii) any other ground set out in section 92 that the Commissioner has

decided to take into account (whether relied upon by the opponent or not); and

(c) otherwise decide and deal with the case in the prescribed manner.

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Re-examination after acceptance

94 Re-examination before patent is granted (1) The Commissioner may, and must if requested to do so by any person, re-

examine a patent application and the complete specification relating to the ap- plication on or after the date of the publication of the accepted complete speci- fication if the patent has not been granted.

(2) A request under subsection (1) must— (a) specify 1 or more of the grounds set out in section 92 that the person

wants the Commissioner to consider; and (b) be made in the prescribed manner (if any).

95 Re-examination after patent is granted (1) If a patent has been granted, the Commissioner may, and must if requested to

do so by any person, re-examine the patent application and the complete speci- fication relating to the application.

(2) A request under subsection (1) must— (a) specify 1 or more of the grounds set out in section 114 that the person

wants the Commissioner to consider; and (b) be made in the prescribed manner (if any).

(3) The Commissioner must re-examine a patent application and the complete spe- cification relating to the application if the validity of a patent is disputed in any proceeding before the court under this Act and the court directs the Commis- sioner to conduct a re-examination. Compare: Patents Act 1990 s 97 (Aust)

96 Relationship between re-examination and other proceedings (1) The Commissioner must not conduct a re-examination under this subpart if,—

(a) in the case of section 94, an opposition proceeding under this subpart in relation to the application is pending:

(b) in the case of section 95(1),— (i) a relevant proceeding in relation to the patent is pending; or (ii) a proceeding before the Commissioner under subpart 11 in rela-

tion to the patent is pending. (2) If a re-examination under this subpart has commenced, the Commissioner must

not continue the re-examination if,— (a) in the case of section 94, an opposition proceeding under this subpart in

relation to the application is commenced: (b) in the case of section 95(1),—

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Reprinted as at Part 3 s 97 Patents Act 2013 14 September 2017

(i) a relevant proceeding in relation to the patent is commenced and the Commissioner has received notification of the commencement of that proceeding; or

(ii) a proceeding before the Commissioner under subpart 11 in rela- tion to the patent is commenced.

(3) If a re-examination has been discontinued under subsection (2), the Commis- sioner may, if he or she thinks fit, continue the re-examination after the oppos- ition proceeding, relevant proceeding, or proceeding under subpart 11 (as the case may be) is completed.

(4) Despite sections 94(1) and 95(1), the Commissioner is not required to conduct a re-examination after receiving a request under either of those subsections if the Commissioner considers that all of the issues raised in relation to the re- quest are the same, or substantially the same, as those raised in a previous op- position or re-examination proceeding under this subpart or a previous pro- ceeding before the Commissioner or the court under subpart 11.

(5) On a re-examination under section 94 or 95(1), the Commissioner may refuse to consider any issue that the Commissioner considers is the same, or substan- tially the same, as an issue raised in a previous opposition or re-examination proceeding under this subpart or a previous proceeding before the Commis- sioner or the court under subpart 11.

(6) Sections 94, 95, and 97 are subject to this section.

97 Report on re-examination (1) On a re-examination under this subpart, the Commissioner must consider and

report on whether the Commissioner is satisfied, on the balance of probabil- ities, that any of the relevant grounds are established.

(2) For the purposes of subsection (1) and sections 98 and 99, relevant grounds means,— (a) in the case of a request under section 94(1), the grounds specified under

section 94(2)(a) and any other grounds set out in section 92 that the Commissioner has decided to consider:

(b) in the case of a re-examination under section 94 that is commenced by the Commissioner, the grounds set out in section 92 that the Commis- sioner has decided to consider:

(c) in the case of a request under section 95(1), the grounds specified under section 95(2)(a) and any other grounds set out in section 114 that the Commissioner has decided to consider:

(d) in the case of a re-examination under section 95 that is commenced by the Commissioner, the grounds set out in section 114 that the Commis- sioner has decided to consider:

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(e) in the case of a re-examination that was directed under section 95(3), the grounds set out in section 114 that the court has asked the Commissioner to consider.

(3) A copy of a report under this section must, if the re-examination was directed under section 95(3), be given by the Commissioner to the court that gave the direction. Compare: Patents Act 1990 ss 98, 100 (Aust)

98 Refusal to grant patent: re-examination before grant (1) If the Commissioner reports on a re-examination under section 94 that he or

she is satisfied, on the balance of probabilities, that any of the relevant grounds are established, the Commissioner may refuse to grant the patent.

(2) The Commissioner must not refuse to grant a patent under this section unless the Commissioner has, if appropriate, given the applicant a reasonable oppor- tunity to amend the relevant specification for the purpose of removing any law- ful ground of objection and the applicant has failed to do so. Compare: Patents Act 1990 s 100A (Aust)

99 Revocation of patent: re-examination after grant (1) If the Commissioner reports on a re-examination under section 95 that he or

she is satisfied, on the balance of probabilities, that any of the relevant grounds are established, the Commissioner may, by notice in writing, revoke the patent, either wholly or in so far as it relates to a particular claim (as the case may be).

(2) The Commissioner must not revoke a patent under this section unless the Com- missioner has, if appropriate, given the patentee a reasonable opportunity to amend the relevant specification for the purpose of removing any lawful ground of objection and the patentee has failed to do so.

(3) The Commissioner must not revoke a patent under this section— (a) while a relevant proceeding in relation to that patent is pending; or (b) before the Commissioner has made a decision on an application for

revocation of the patent made under section 112 (if an application has been made to the Commissioner under that section).

(4) Subpart 11 (which relates to the revocation and surrender of patents) does not limit this section. Compare: Patents Act 1990 s 101 (Aust)

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

(1) A person who has made a request under section 94(1) or 95(1)— (a) does not have a right to be heard in relation to the re-examination; and (b) does not have any other right to participate in the re-examination pro-

ceeding after the request is made; and

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(c) does not have a right to appeal to the court against any decision of the Commissioner under any of sections 94 to 99.

(2) Section 214 (which relates to appeals of decisions of the Commissioner) is sub- ject to this section.

Subpart 10—Grant of patent

General rules

101 When patent must be granted (1) The Commissioner must grant a patent to the nominated person, or to 2 or

more nominated persons jointly, as soon as is reasonably practicable after the date that is 3 months after the date of the publication of the accepted complete specification if— (a) there is no opposition to the grant; or (b) in spite of opposition, the Commissioner’s decision, or the decision on

appeal, is that a patent should be granted. (2) However, if, before the patent is granted, a re-examination proceeding is com-

menced under section 94 (whether as a result of a request or a decision of the Commissioner) and that proceeding has not been discontinued or ended under section 96, the Commissioner— (a) must not act under subsection (1) until after the Commissioner has pre-

pared a report under section 97; and (b) may refuse to grant the patent in accordance with section 98.

(3) The Commissioner may postpone the grant of the patent in the prescribed cir- cumstances.

(4) If a nominated person dies before a patent is granted on the patent application, the patent may be granted to his or her personal representative.

(5) The date that the patent is granted must be entered in the patents register. (6) The Commissioner must, as soon as is reasonably practicable after a patent has

been granted, publish in the journal a notice that it has been granted. Compare: 1953 No 64 s 27(1)

102 Validity of patent not guaranteed Nothing done under this Act guarantees the granting of a patent, or that a patent is valid, in New Zealand or anywhere else. Compare: Patents Act 1990 s 20(1) (Aust)

103 Patent date (1) Every patent must be given a patent date that is—

(a) the filing date of the relevant complete specification; or

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(b) if the regulations provide for the determination of a different date as the patent date, the date determined under the regulations.

(2) However,— (a) a patent is not in force for the purposes of this Act until it is granted; and (b) see section 81, which confers certain pre-grant rights, but only after the

relevant complete specification becomes open to public inspection. (3) The patent date of every patent must be entered in the patents register.

Compare: 1953 No 64 s 30(1), (2); Patents Act 1990 s 65 (Aust)

104 Patent granted for one invention only (1) A patent must be granted for one invention only. (2) However, it is not competent for any person in an action or other proceeding to

take any objection to a patent on the ground that it has been granted for more than 1 invention. Compare: 1953 No 64 s 29(4)

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

(1) This section applies if, at any time after a patent has been granted, the Commis- sioner is satisfied that the person to whom the patent was granted— (a) had died before the patent was granted; or (b) in the case of a body corporate, had ceased to exist before the patent was

granted. (2) The Commissioner may amend the patent by substituting for the name of that

person the name of the person to whom the patent should have been granted. (3) The patent has effect, and is to be treated as always having had effect, in ac-

cordance with that amendment. Compare: 1953 No 64 s 28

Patents of addition

106 Patents of addition (1) This section applies if—

(a) a patent for an invention (the main invention) has been applied for or granted; and

(b) the applicant or patentee (or a person authorised by the applicant or pa- tentee) applies for a further patent for an improvement in, or modifica- tion of, the main invention; and

(c) the application for that further patent is made in the prescribed manner.

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(2) The Commissioner may, on the request of the applicant for the further patent, grant the patent for the improvement or modification as a patent of addition. Compare: 1953 No 64 s 34(1); Patents Act 1990 s 81(1) (Aust)

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

(1) This section applies if— (a) an invention that is an improvement in, or modification of, another in-

vention is the subject of an independent patent; and (b) the patentee of that patent is also the patentee of the patent for the main

invention. (2) The Commissioner may, on the request of the patentee, by order revoke the

patent for the improvement or modification and grant to the patentee a patent of addition for the improvement or modification.

(3) A request under subsection (2) must be made in the prescribed manner (if any). (4) The patent of addition must have the same patent date as the patent date of the

patent that is revoked. Compare: 1953 No 64 s 34(2)

108 Restrictions on granting of patents of addition (1) The Commissioner must not grant a patent as a patent of addition unless the

filing date of the complete specification is the same as, or later than, the filing date of the complete specification for the main invention.

(2) The Commissioner must not grant a patent of addition before the granting of the patent for the main invention. Compare: 1953 No 64 s 34(3), (4)

109 Term of patent of addition (1) A patent of addition—

(a) must be granted for a term equal to that of the patent for the main inven- tion, or as much of the term of the patent for the main invention that is unexpired; and

(b) remains in force during that term or until the earlier of expiry or revoca- tion of the patent for the main invention.

(2) However, if the patent for the main invention is revoked under this Act, the court or the Commissioner (as the case may be) may order that the patent of addition become, and continue in force as, an independent patent for the re- mainder of the term of the patent for the main invention. Compare: 1953 No 64 s 34(5)

110 Renewal fees for patents of addition (1) No renewal fees are payable in respect of a patent of addition.

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(2) However, if any patent of addition becomes an independent patent under sec- tion 109(2), the renewal fees are payable from that time, on the same dates, as if the patent had been originally granted as an independent patent. Compare: 1953 No 64 s 34(6)

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

(1) The grant of a patent of addition must not be refused, and a patent granted as a patent of addition must not be revoked or invalidated, on the ground only that the invention claimed in the complete specification of the patent of addition does not involve any inventive step having regard to any publication or use of— (a) the main invention described in the complete specification for the main

invention; or (b) any improvement in, or modification of, the main invention described in

the complete specification of— (i) a patent of addition to the patent for the main invention; or (ii) an application for a patent of addition to the patent for the main

invention. (2) The validity of a patent of addition must not be questioned on the ground that

the invention should have been the subject of an independent patent. Compare: 1953 No 64 s 34(7)

Subpart 11—Revocation and surrender of patents

112 Revocation of patent (1) The Commissioner or the court may, on an application under this section, re-

voke a patent on any of the grounds set out in section 114. (2) An application under this section may be made by any person. (3) An application to the Commissioner under this section must be made in the

prescribed manner (if any). Compare: 1953 No 64 ss 41(1), (3), 42

113 Provisions concerning applications for revocation made to Commissioner (1) The Commissioner may refuse any application to the Commissioner under sec-

tion 112 if the Commissioner considers that— (a) the application is frivolous or vexatious; or (b) all of the issues raised by the application are the same, or substantially

the same, as the issues raised in a previous opposition or re-examination proceeding under subpart 9 or in a previous proceeding before the Com- missioner or the court under this subpart.

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(2) The Commissioner may, in considering an application under section 112, refuse to consider any issue that the Commissioner considers is the same, or substan- tially the same, as an issue raised in a previous opposition or re-examination proceeding under subpart 9 or in a previous proceeding before the Commis- sioner or the court under this subpart.

(3) If a relevant proceeding in relation to a patent is pending in any court, an appli- cation to the Commissioner under section 112 may be made only with the leave of that court.

(4) If an application is made to the Commissioner under section 112, the Commis- sioner must— (a) notify the patentee; and (b) give to the person who made the application and the patentee a reason-

able opportunity to be heard before deciding the case (unless the applica- tion has been refused under subsection (1)).

(5) The Commissioner may, at any stage of a proceeding relating to an application made to the Commissioner under section 112, refer the application to the court.

(6) If, on an application made to the Commissioner under section 112, the Com- missioner is satisfied, on the balance of probabilities, that any of the grounds set out in section 114 are established, the Commissioner may by order direct that the patent is either— (a) revoked unconditionally; or (b) revoked unless the complete specification is amended to the Commis-

sioner’s satisfaction within the time that is specified in the order. Compare: 1953 No 64 s 42(3)

114 Grounds for revoking patent (1) A patent may be revoked on 1 or more of the following grounds:

(a) that the invention, so far as claimed in a claim, is not a patentable inven- tion under section 14:

(b) that the patentee is not entitled to the patent: (c) that the complete specification does not comply with subpart 2 (which

relates to specification requirements): (d) that the patent was obtained by fraud, false suggestion, or a misrepresen-

tation: (e) that the invention, so far as claimed in a claim, was secretly used in New

Zealand before the priority date of that claim: (f) that the patent has been granted contrary to law.

(2) For the purposes of subsection (1)(a), account must not be taken of any secret use of the invention.

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(3) For the purposes of subsection (1)(e), account must not be taken of any use of the invention— (a) for the purpose of reasonable trial or experiment only if the trial or ex-

periment is conducted by, on behalf of, or with the consent of the nomin- ated person or any person from whom the nominated person derives title; or

(b) by a government department or any person authorised by a government department, in consequence of the nominated person, or any person from whom the nominated person derives title, communicating or disclosing the invention directly or indirectly to that department or person; or

(c) by any other person, in consequence of the nominated person, or any person from whom the nominated person derives title, communicating or disclosing the invention to that person in confidence if the use of the in- vention is without the consent of the nominated person or of any person from whom the nominated person derives title.

(4) Every ground set out in subsection (1) is available as a ground of defence in any proceeding for the infringement of the patent. Compare: 1953 No 64 s 41(1), (2), (4)

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

(1) The court may, on the application of a government department, revoke a patent if the court is satisfied that the patentee has, without reasonable cause, failed to comply with a request of the government department to exploit the patented in- vention for the services of the Crown on reasonable terms.

(2) The ground for revoking a patent set out in subsection (1) is available as a ground of defence in any proceeding for the infringement of the patent. Compare: 1953 No 64 s 41(3)(a)

116 Surrender of patent (1) A patentee may, by notice given to the Commissioner in the prescribed manner

(if any), offer to surrender the patent. (2) The Commissioner must publish the offer in the journal. (3) A person may, within the prescribed period after the publication, give notice to

the Commissioner of opposition to the surrender. (4) The Commissioner must notify the patentee if notice of opposition is given. (5) The Commissioner may accept the offer and by order revoke the patent if—

(a) the Commissioner has given the patentee and the opponent (if any) a reasonable opportunity to be heard; and

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(b) the Commissioner is satisfied that the patent may properly be surren- dered.

Compare: 1953 No 64 s 43

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

Restoration of lapsed patents

117 Restoration of lapsed patents (1) This section applies if a patent has ceased to have effect by reason of a failure

to pay any renewal fee within the prescribed period or within that period as ex- tended under section 21.

(2) The Commissioner may, on a request made in the prescribed manner and in ac- cordance with this subpart, by order restore the patent, and any patent of add- ition specified in the request that has ceased to have effect when the patent ceased to have effect, if the Commissioner is satisfied that the failure to pay the renewal fee was unintentional. Compare: 1953 No 64 s 35(1)

118 Request must describe circumstances that led to failure to pay renewal fee (1) A request for an order under section 117 must contain a statement that fully

sets out the circumstances that led to the failure to pay the renewal fee. (2) The Commissioner may require the person who makes the request to provide

any further evidence that the Commissioner thinks fit. Compare: 1953 No 64 s 35(3)

119 Persons who may make request for restoration of patent (1) A request for an order under section 117 may be made by the person who was

the patentee or, if that person is deceased, by that person’s personal representa- tive.

(2) If the patent was held by 2 or more persons jointly, the request for an order under section 117 may, with the leave of the Commissioner, be made by 1 or more of them without joining the others. Compare: 1953 No 64 s 35(2)

120 When request for restoration of patent may be made (1) A request for an order under section 117 may only be made within the pre-

scribed period. (2) However, the Commissioner may extend the period within which a request may

be made if the Commissioner is satisfied that there was no undue delay in mak- ing the request.

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(3) The person who makes the request must, for the purposes of subsection (2), provide the Commissioner with a statement that fully sets out the circumstan- ces that caused the delay and the reasons why the delay is not undue.

(4) The Commissioner may require that person to provide any further evidence that the Commissioner thinks fit.

121 Commissioner must give person who made request reasonable opportunity to be heard if not satisfied that prima facie case has been made out for restoration The Commissioner must, after considering a request made in accordance with sections 117 to 120, give the person who made the request a reasonable oppor- tunity to be heard if the Commissioner is not satisfied that a prima facie case has been made out for an order under section 117.

122 Commissioner to publish request in journal The Commissioner must publish a request made in accordance with sections 117 to 120 in the journal if the Commissioner is satisfied that a prima facie case has been made out for an order under section 117. Compare: 1953 No 64 s 35(4)

123 Notice of opposition and reasonable opportunity to be heard (1) Any person may, within the prescribed period and in the prescribed manner (if

any), give notice to the Commissioner of opposition to an order being made under section 117 on either or both of the following grounds: (a) that the failure to pay the renewal fee was not unintentional: (b) if the period within which a request for an order under section 117 may

be made is extended under section 120, that the delay in making the re- quest was undue.

(2) The Commissioner must notify the person who made the request if a person has given notice under subsection (1) and provide the person who made the re- quest with a copy of that notice.

(3) The Commissioner must give the person who made the request and the oppo- nent a reasonable opportunity to be heard before the Commissioner decides the case. Compare: 1953 No 64 s 35(4), (5)

124 Order to be made on payment of unpaid fees (1) If the Commissioner has published a request under section 122, he or she must

make an order under section 117 in accordance with the request after the pre- scribed period for giving notice of opposition if— (a) all unpaid renewal fees are paid; and (b) all other prescribed additional penalties (if any) are paid; and

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(c) either— (i) no notice of opposition is given within the prescribed period; or (ii) the decision of the Commissioner is in favour of the person who

made the request (in the case of a notice of opposition having been given within the prescribed period).

(2) An order for the restoration of a patent— (a) may be made subject to a condition requiring the registration of any

matter if the provisions of this Act concerning entries in the patents register have not been complied with; and

(b) must contain, or be subject to, the provisions that are prescribed for the protection or compensation of persons who availed themselves, or took definite steps by way of contract or otherwise to avail themselves, of the invention between the date when the patent ceased to have effect and the date on which the request is published under section 122; and

(c) may be made subject to any other conditions that the Commissioner thinks fit.

(3) If any condition of an order under this section is not complied with by the pa- tentee, the Commissioner may revoke the order and give any directions that are consequential on the revocation that the Commissioner thinks fit.

(4) The Commissioner must, before the Commissioner makes a decision under subsection (3), give the patentee a reasonable opportunity to be heard. Compare: 1953 No 64 s 35(5)–(7)

Restoration of patent applications

125 Request for restoration of void or abandoned patent applications (1) This section applies if—

(a) the patent application is abandoned under section 35, 64, or 68 or is void under section 71 or 73; or

(b) in the case of a Treaty application, the Treaty application is void under section 51(1)(d) or (e).

(2) The applicant may make a request to the Commissioner in the prescribed man- ner for an order to restore the patent application and to extend the period for complying with the requirements imposed on the applicant by or under this Act or the Patent Cooperation Treaty (as the case may be) to a date that is specified in the order.

(3) Every request for an order must contain a statement that fully sets out the cir- cumstances that led to the failure of the applicant to comply with the require- ments imposed on the applicant by or under this Act or the Patent Cooperation Treaty (as the case may be).

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(4) The Commissioner must publish the request in the journal if the Commissioner is satisfied that the failure of the applicant to comply with the requirements im- posed on the applicant by or under this Act or the Patent Cooperation Treaty (as the case may be) within the time allowed by or under this Act was uninten- tional. Compare: 1953 No 64 s 37(1), (2)

126 When request for restoration of application may be made (1) A request under section 125 may only be made within the prescribed period. (2) However, the Commissioner may extend the period within which a request may

be made if the Commissioner is satisfied that there was no undue delay in mak- ing the request.

(3) The applicant must, for the purposes of subsection (2), provide the Commis- sioner with a statement that fully sets out the circumstances that caused the delay and the reasons why the delay is not undue.

(4) The Commissioner may require the applicant to provide any further evidence that the Commissioner thinks fit.

127 Notice of opposition (1) Any person may, within the prescribed period and in the prescribed manner (if

any), give notice to the Commissioner of opposition to an order being made under section 128 on either or both of the following grounds: (a) that any failure of the applicant to comply with the requirements im-

posed on the applicant by or under this Act or the Patent Cooperation Treaty (as the case may be) within the time allowed by or under this Act was not unintentional:

(b) if the period within which a request under section 125 may be made is extended under section 126, that the delay in making the request was un- due.

(2) The Commissioner must notify the applicant if a person has given notice under subsection (1) and provide the applicant with a copy of that notice.

(3) The Commissioner must give the applicant and the opponent a reasonable op- portunity to be heard before the Commissioner decides the case. Compare: 1953 No 64 s 37(3), (4)

128 Commissioner to determine matter (1) The Commissioner must, after the expiry of the prescribed period for giving

notice of opposition under section 127,— (a) by order restore the patent application and extend the period for comply-

ing with the requirements imposed on the applicant by or under this Act or the Patent Cooperation Treaty (as the case may be) to a period that is specified in the order if the Commissioner is satisfied that—

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(i) every failure of the applicant to comply with the requirements im- posed on the applicant by or under this Act or the Patent Cooper- ation Treaty (as the case may be) within the time allowed by or under this Act was unintentional; and

(ii) if the period within which the request for an order under this sec- tion may be made was extended under section 126, there was no undue delay in making the request; or

(b) dismiss the request. (2) An order under this section must contain, or be subject to, the provisions that

are prescribed for the protection or compensation of persons who availed them- selves, or took definite steps by way of contract or otherwise to avail them- selves, of the invention that is the subject of the patent application between the date on which the patent application became void or was abandoned and the date on which the request is published under section 125.

(3) The Commissioner must publish in the journal the making of an order under subsection (1) after that order is made. Compare: 1953 No 64 s 37(5), (6)

Subpart 13—Miscellaneous provisions

Substitution of applicants

129 Persons claiming under assignment or agreement or by operation of law (1) This section applies if, before a patent has been granted, a person would, if the

patent were to be then granted, be entitled under an assignment or agreement, or by operation of law, to— (a) the patent; or (b) an interest in the patent; or (c) an undivided share in the patent or in an interest in the patent.

(2) The Commissioner may, on a request made by the person in the prescribed manner, direct that the patent application proceed in the name of the person, or in the names of the person and the applicant or the other joint applicant or ap- plicants (as the case may require).

(3) If the Commissioner gives a direction, the person must be taken to be— (a) the applicant, or a joint applicant, as the case may require; and (b) the nominated person, or joint nominated person, as the case may re-

quire. Compare: 1953 No 64 s 24(1); Patents Act 1990 s 113 (Aust)

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130 Death of applicant (1) If an applicant dies before a patent is granted on the patent application, his or

her personal representative may proceed with the application. (2) However, the Commissioner may also dispense with probate and letters of ad-

ministration and allow a person to proceed with a deceased applicant’s applica- tion under section 167. Compare: Patents Act 1990 s 215(1) (Aust)

131 Disputes between interested parties (1) If a dispute arises between interested parties in relation to a patent application

concerning whether, or in what manner, the application should proceed, the Commissioner may, on a request made to the Commissioner, give any direc- tions that the Commissioner thinks fit— (a) for enabling the application to proceed in the name of 1 or more of the

parties alone; or (b) for regulating the manner in which it is to proceed; or (c) for both of the purposes referred to in paragraphs (a) and (b).

(2) A request under subsection (1) must be made in the prescribed manner and may be made by any of the parties.

(3) The Commissioner must, before giving a direction, give a reasonable opportun- ity to be heard to any person that the Commissioner considers is interested (whether or not that person is currently an interested party). Compare: 1953 No 64 s 24(5)

Provisions for secrecy of certain inventions

132 Directions in relation to inventions concerning defence (1) The Commissioner may give any of the directions described in subsection (2)

if— (a) a patent application has been made for an invention either before or after

the commencement of this section; and (b) the invention is, in the opinion of the Commissioner,—

(i) one of a class notified to the Commissioner by the Minister of De- fence as relevant for defence purposes; or

(ii) likely to be valuable for defence purposes. (2) The directions are directions—

(a) for prohibiting or restricting the publication of information concerning the invention; or

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Reprinted as at Part 3 s 133 Patents Act 2013 14 September 2017

(b) for prohibiting or restricting the communication of information concern- ing the invention to a person or class of persons specified in the direc- tions.

(3) While the directions are in force,— (a) the patent application may, subject to the directions, proceed up to the

acceptance of the complete specification; and (b) the patent application and the complete specification must not become

open to public inspection; and (c) a patent must not be granted in relation to the patent application. Compare: 1953 No 64 s 25(1)

133 Commissioner must give notice to Minister of Defence If the Commissioner gives directions under section 132, the Commissioner must give notice of the patent application and of the directions to the Minister of Defence. Compare: 1953 No 64 s 25(2)

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

(1) The Minister of Defence must,— (a) on receipt of a notice under section 133, consider whether the publica-

tion of the invention would be prejudicial to the defence of New Zea- land; and

(b) unless a notice under subsection (3) has been given to the Commissioner, reconsider that question before the expiry of 9 months from the filing date of the patent application and at least once in every subsequent year.

(2) For the purposes of subsection (1), the Minister of Defence may, at any time after the complete specification has been accepted or, with the consent of the applicant, at any time before the complete specification has been accepted, in- spect the patent application and any documents provided to the Commissioner in connection with that application.

(3) If, on consideration of the invention at any time, it appears to the Minister of Defence that the publication of the invention would not, or would no longer, be prejudicial to the defence of New Zealand, the Minister of Defence must give notice to the Commissioner to that effect. Compare: 1953 No 64 s 25(2)(a)–(c)

135 Commissioner must revoke directions on receipt of notice from Minister of Defence On receipt of a notice under section 134, the Commissioner— (a) must revoke the directions given under section 132; and

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Reprinted as at 14 September 2017 Patents Act 2013 Part 3 s 138

(b) may, subject to any conditions that the Commissioner thinks fit, extend the time for doing anything required or authorised to be done by or under this Act in connection with the patent application, whether or not that time has previously expired.

Compare: 1953 No 64 s 25(2)(d)

136 Acceptance of complete specification while directions in force (1) This section applies if a complete specification filed for a patent application for

an invention for which directions have been given under section 132 is accept- ed while the directions are in force.

(2) If any use of the invention is made while the directions are in force by, on be- half of, or to the order of a government department, subpart 6 of Part 4 applies to that use as if the patent had been granted for the invention.

(3) If it appears to the Minister of Defence that the applicant for the patent has suf- fered hardship by reason of the directions being in force, the Minister of Fi- nance may pay to the applicant an amount by way of compensation that the Minister of Finance considers is reasonable.

(4) For the purposes of subsection (3), the Minister of Finance must have regard to— (a) the novelty and usefulness of the invention; and (b) the purpose for which the invention is designed; and (c) any other relevant matters. Compare: 1953 No 64 s 25(3)

137 Maintenance fees and renewal fees not payable while directions in force (1) No maintenance fees are payable for any period during which directions that

are given under section 132 are in force. (2) No renewal fees are payable for any period during which directions that are

given under section 132 are in force if a patent is granted for an application for which directions have been given. Compare: 1953 No 64 s 25(4)

138 Offence to fail to comply with directions (1) Every person who fails to comply with a direction given under section 132

commits an offence if, at the time of the failure, the person knew or ought to have known that a direction had been given.

(2) Every person who commits an offence against subsection (1) is liable on con- viction to imprisonment for a term not exceeding 2 years, to a fine not exceed- ing $20,000, or to both. Compare: 1953 No 64 s 25(6)

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Reprinted as at Part 3 s 139 Patents Act 2013 14 September 2017

139 Liability of directors and managers if body corporate commits offence If a body corporate is convicted of an offence against section 138, 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 author-

ity, permission, or consent; and (b) that he or she—

(i) knew, or could reasonably be expected to have known, that the of- fence was to be or was being committed; and

(ii) failed to take all reasonable steps to prevent or stop it. Compare: 1953 No 64 s 108

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

ownership

Subpart 1—Infringement proceedings

What constitutes infringement

140 Infringement by doing anything patentee has exclusive right to do A person infringes a patent if (other than under a licence or with the consent or agreement of the patentee) the person does anything in the patent area, while the patent is in force, that the patentee has the exclusive right to do under sec- tion 18. Compare: Patents Act 1977 s 60(1) (UK)

141 Infringement by supplying means to infringe to another person A person (A) also infringes a patent if (other than under a licence or with the consent or agreement of the patentee)— (a) A supplies, or offers to supply, in the patent area, while the patent is in

force, another person (B) with any of the means, relating to an essential element of the invention, for putting the invention into effect; and

(b) either— (i) A knows, or ought reasonably to know, that the means are suitable

and intended by B for putting the invention into effect; or (ii) if the means is a staple commercial product, A supplies the means,

or offers to supply the means, for the purpose of inducing B to put the invention into effect; and

(c) B would infringe the patent by putting the invention into effect. Compare: Patents Act 1977 s 60(2) (UK)

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Reprinted as at 14 September 2017 Patents Act 2013 Part 4 s 144

142 Presumption that product produced by infringing process (1) If a patented process is a process for obtaining a new product, the same product

produced by a person (other than under a licence or with the consent or agree- ment of the patentee) is presumed in an infringement proceeding to have been obtained by that process.

(2) Subsection (1) applies unless the defendant proves the contrary. (3) In applying subsection (1), the court must not require any person to disclose

any manufacturing or commercial secrets if the court thinks that it would be unreasonable to require that disclosure. Compare: 1953 No 64 s 68A

What does not constitute infringement

143 No infringement for experimental use (1) It is not an infringement of a patent for a person to do an act for experimental

purposes relating to the subject matter of an invention. (2) In this section, act for experimental purposes relating to the subject matter

of an invention includes an act for the purpose of— (a) determining how the invention works: (b) determining the scope of the invention: (c) determining the validity of the claims: (d) seeking an improvement of the invention (for example, determining new

properties, or new uses, of the invention). Compare: Patents Act 1977 s 60(5)(b) (UK)

144 No infringement by use in or from foreign vessels, aircraft, or vehicles (1) It is not an infringement of a patent if—

(a) an invention is used— (i) on board a foreign vessel, in the body of a foreign vessel, or in a

foreign vessel’s machinery, tackle, apparatus, or other accessories, and the invention is used for the vessel’s actual needs only; or

(ii) in the construction or working of a foreign aircraft or foreign land vehicle or of a foreign aircraft’s or foreign land vehicle’s accessor- ies; and

(b) the vessel, aircraft, or land vehicle comes into the patent area accidental- ly or only temporarily.

(2) In this section, foreign means— (a) registered in a convention country, in the case of a vessel or aircraft; or

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(b) owned by a person resident or incorporated in a convention country, in the case of a land vehicle.

Compare: 1953 No 64 s 79

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

146 No infringement for prior use of invention (1) It is not an infringement of a patent for a person to do an act that exploits an

invention, and that would infringe a patent apart from this section, if, immedi- ately before the priority date of the relevant claim, the person— (a) was exploiting the invention in the patent area; or (b) had taken definite steps (contractually or otherwise) to exploit the inven-

tion in the patent area. (2) Subsection (1) does not apply if, before the priority date, the person—

(a) had stopped (except temporarily) exploiting the invention; or (b) had abandoned (except temporarily) the steps to exploit the invention.

(3) Subsection (1) does not apply to an invention the person derived from any of the following persons, unless the person derived the invention from informa- tion that was made publicly available by or with the consent of that person: (a) the patentee or nominated person: (b) any person from whom the patentee or nominated person derives title.

(4) A person (A)— (a) may dispose of the whole of A’s entitlement under subsection (1) to ex-

ploit an invention without infringing a patent to another person (B) (and in this case subsections (1) to (3) apply to B as they applied to the first person who had that entitlement and from whom B’s entitlement was di- rectly or indirectly derived); but

(b) may not license any or all of A’s entitlement under subsection (1) to an- other person.

(5) This section applies in respect of a patent only if— (a) the relevant patent application was made under this Act on or after the

commencement of Part 3 (and section 258 did not apply); or

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(b) this Act applies to the relevant patent application under section 256, 257, or 259(4).

Compare: Patents Act 1990 s 119 (Aust)

Counterclaim for revocation of patent

147 Defendant may counterclaim for revocation of patent (1) A defendant may apply by way of counterclaim in an infringement proceeding

for revocation of the patent on any of the grounds stated in section 114. (2) If the defendant is a government department, it may apply by way of counter-

claim in an infringement proceeding for revocation of the patent on the ground stated in section 115 (whether or not it also applies by way of counterclaim for revocation of the patent on any of the grounds stated in section 114).

Bringing infringement proceeding in court

148 Who may bring infringement proceeding (1) An infringement proceeding may be brought in court by—

(a) the patentee: (b) an exclusive licensee for any infringement that occurs during the term of

the licence. (2) However, section 150 affects the right to bring a proceeding under this section. (3) Nothing in subsection (1), section 81, or section 150 enables a person to obtain

any relief the granting of which is prevented by the Limitation Act 2010.

149 When proceeding may be brought (1) An infringement proceeding may not be brought until the patent is granted. (2) However, section 81 enables an infringement proceeding to relate to infringe-

ments before the patent is granted in the circumstances set out in that section.

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

(1) If a person has the right to bring an infringement proceeding under section 148(1) by virtue of a transaction that must be registered under section 165, that person must not bring the proceeding unless— (a) the person’s title or interest was registered at least 1 month before the

commencement of the proceeding; or (b) the person has—

(i) given at least 1 month’s written notice to the proposed defendant of the intention to bring the proceeding; and

(ii) registered the person’s title or interest before bringing the pro- ceeding.

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(2) However, a person may bring an infringement proceeding in court, despite not having registered the person’s title or interest, if— (a) the person would be entitled to do so under section 148(1) if the title or

interest was registered; and (b) the person has given at least 1 month’s written notice to the proposed de-

fendant of the intention to bring the proceeding and provided an address for service in New Zealand; and

(c) within that notice period, the proposed defendant has not required the proposed plaintiff to register that title or interest.

(3) However, the court may, on application to it, authorise a person to bring an in- fringement proceeding in court without complying with subsection (1) or (2)(b).

151 Proceeding brought by exclusive licensee (1) If an exclusive licensee brings an infringement proceeding, the patentee must

be joined as a defendant (unless joined as a plaintiff). (2) A patentee joined as a defendant is not liable for costs unless the patentee actu-

ally defends the proceeding. Compare: 1953 No 64 s 72

Relief for infringement

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

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

(1) The court must not award damages or an account of profits for infringement of a patent if the defendant proves that at the date of the infringement the defend- ant did not know, and ought not reasonably to have known, that the patent exis- ted or, in the case of a proceeding under section 81, that the complete specifica- tion had become open to public inspection.

(2) It is presumed that a person ought reasonably to have known that a patent exis- ted if— (a) a product is marked so as to indicate it is patented in New Zealand and

with the New Zealand patent number; and (b) the person knew, or ought reasonably to have known, of the product.

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(3) But there is no presumption if the product is marked merely so as to indicate it is patented. Compare: 1953 No 64 s 68(1)

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

(1) If an amendment has been made to an accepted complete specification under this Act, the court must not award damages or an account of profits for an in- fringement that occurs before the date of the decision to allow the amendment.

(2) Subsection (1) does not apply if— (a) the court is satisfied that the specification, as accepted, was framed in

good faith and with reasonable skill and knowledge; or (b) it is only an amendment to correct an obvious mistake. Compare: 1953 No 64 s 68(3)

155 Court may refuse damages or account of profits if renewal fees not paid The court may refuse to award damages or an account of profits for an in- fringement that occurs after a failure to pay any renewal fee for the patent with- in the prescribed period and before any extension of that period. Compare: 1953 No 64 s 68(2)

156 Limits on damages and accounts of profits do not affect power to grant injunction Nothing in sections 153 to 155 affects the court’s power to grant an injunction in an infringement proceeding. Compare: 1953 No 64 s 68(4)

157 Court may grant relief for partially valid patent (1) If it is found in an infringement proceeding that a patent is only partially valid,

the court may grant relief for that part of the patent that is valid and infringed. (2) However, the court may grant damages, an account of profits, or costs for that

part of the patent only if the plaintiff proves that the invalid claim was framed in good faith and with reasonable skill and knowledge.

(3) It is at the court’s discretion whether or not to grant costs and as to the date from which damages or the account of profits should be counted.

(4) The court may, as a condition of the relief, direct that the specification be amended by an application under section 89 (which relates to the amendment of a specification with the leave of the court), and the application may be made even if the other issues in the infringement proceeding have not yet been deter- mined. Compare: 1953 No 64 s 71

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158 Court may grant costs for subsequent proceeding if validity of specifications contested

(1) If the validity of a claim of a specification is contested in a proceeding and the court finds the claim to be valid, the court may certify that the claim’s validity was contested in that proceeding.

(2) A party who is relying on the validity of that claim in any subsequent infringe- ment or revocation proceeding is then entitled to reasonable solicitor-client costs for the certified claim if a final order or judgment is made or given in fa- vour of that party.

(3) This section does not apply to the costs of any appeal in the subsequent pro- ceeding. Compare: 1953 No 64 s 73

Subpart 2—Declarations of non-infringement

159 Application for declaration of non-infringement (1) A person who wishes to exploit an invention may apply to a court for a declar-

ation that the exploitation of the invention would not infringe a claim of a com- plete specification.

(2) An application may be made— (a) at any time after the complete specification has become open to public

inspection; and (b) whether or not the patentee or nominated person has made any assertion

to the effect that the exploitation of the invention would infringe the claim.

(3) The patentee or nominated person must be joined as a respondent in the pro- ceeding. Compare: Patents Act 1990 s 125 (Aust)

160 Proceeding for declaration of non-infringement (1) The court must not make a declaration of non-infringement unless a patent has

been granted in respect of the relevant invention and— (a) the applicant for the declaration—

(i) has asked the nominated person or patentee in writing for a writ- ten admission that the proposed exploitation would not infringe a claim of the complete specification; and

(ii) has given the nominated person or patentee full written particulars of the proposed exploitation; and

(iii) has undertaken to pay a reasonable sum for the nominated per- son’s or patentee’s expenses in obtaining advice about whether the proposed exploitation would infringe the claim; and

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(b) the nominated person or patentee has refused or failed to make the ad- mission; and

(c) the court is satisfied that the proposed exploitation would not infringe a claim of the complete specification.

(2) Nothing in this section limits the court’s jurisdiction to grant a declaration apart from this section. Compare: 1953 No 64 s 75(1); Patents Act 1990 s 126(1) (Aust)

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

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

(1) The validity of a claim of the specification of a patent must not be questioned in a proceeding for a declaration of non-infringement.

(2) Accordingly, whether or not a declaration is made does not affect the validity of the patent. Compare: 1953 No 64 s 75(3)

Subpart 3—Standing of Attorney-General

163 Attorney-General may appear in patent proceeding (1) The Attorney-General may do all or any of the following things if he or she

considers that the public interest is or may be involved: (a) bring a proceeding to test the validity of a patent: (b) apply for the revocation of a patent: (c) appear and be heard in any proceeding before a court or the Commis-

sioner for the grant, amendment, or revocation of a patent, or for a dec- laration of non-infringement, and take any steps he or she considers de- sirable as if he or she were a party to the proceeding:

(d) intervene in, and take over the control and conduct of, any proceeding referred to in paragraph (c) with the consent of a party.

(2) In any proceeding in which the Attorney-General appears, costs may be awar- ded either to or against the Attorney-General. Compare: 1953 No 64 s 76(1), (3)

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164 Parties must give notice to Solicitor-General if questioning patent validity (1) A party to a proceeding before a court or the Commissioner who intends to

question the validity of a patent must give notice of that intention to the Solici- tor-General.

(2) That notice must be given in writing at least 21 days before the hearing. (3) The party must also supply the Solicitor-General with any papers filed in the

proceeding by that or any other party to the proceeding that the Solicitor-Gen- eral requests. Compare: 1953 No 64 s 76(2)

Subpart 4—Patent dealings, patent licences, and transmission of interests in patents

Registration of assignments, licences, and other interests in patents

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

(1) A person who acquires a patent or share in a patent or an interest in a patent (A) must apply to the Commissioner for registration of A’s title or interest.

(2) However, the person who disposes of the patent or share in a patent or who confers the interest may instead apply to register A’s title or interest (and in this case subsection (1) does not apply).

(3) In either case, the application must be made in the prescribed manner. (4) This section applies to acquisitions and disposals by assignment, transmission,

operation of law, mortgage, licence, or by any other means (other than a com- pulsory licence granted under subpart 5). Compare: 1953 No 64 s 84(1), (2), (5)

166 Registration of assignments, licences, and other interests in patents If an application is made under section 165, the Commissioner, on proof satis- factory to the Commissioner of the acquisition by the person (A) of a patent or interest or share in a patent,— (a) must register A’s title or interest; and (b) may issue a replacement patent in the name of the new patentee; and (c) must retain any documents provided with the application under section

165 or a copy of those documents.

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Vesting of patents and patent applications without probate or letters of administration

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

(1) If a patentee, applicant for a patent, or nominated person (A) dies, the Commis- sioner may (without requiring probate or letters of administration) register or substitute a person (B) as the patentee, applicant, or nominated person in place of A if— (a) B proves, to the Commissioner’s satisfaction, that—

(i) B is entitled to obtain probate of A’s will or letters of administra- tion of A’s estate, or is A’s personal representative, in the place where A was living at the time of his or her death; and

(ii) probate or letters of administration have not been made or re- sealed in New Zealand; and

(iii) the interests of A’s creditors, and of all persons beneficially inter- ested under A’s will or on A’s intestacy, will be adequately safe- guarded if this action is taken; and

(b) B applies in the prescribed manner. (2) If B becomes the patentee, applicant, or nominated person under this section, B

holds the patent subject to all existing interests and equities affecting it. (3) This section applies even if A died before the commencement of this section. (4) Nothing in section 70 or 73 of the Administration Act 1969 restricts the oper-

ation of this section. Compare: 1953 No 64 s 86

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

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

(1) This section applies to the following contracts: (a) a contract for the sale or lease of a patented product: (b) a licence to exploit a patented product or process.

(2) A contract that this section applies to may be terminated by either party, on giv- ing 3 months’ written notice to the other party, at any time after the patent, or all the patents, by which the product or process was protected at the time the contract was made, has or have ceased to be in force.

(3) Subsection (2)— (a) applies whether the contract was made before or after the commence-

ment of this section; and

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(b) applies despite anything to the contrary in the contract or in any other contract; and

(c) does not limit any right to terminate a contract exercisable apart from this section.

Compare: 1953 No 64 s 67

Subpart 5—Compulsory licences

Compulsory licences for supply of patented inventions predominantly in New Zealand

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

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

(2) The grounds are that a market for the patented invention— (a) is not being supplied in New Zealand; or (b) is not being supplied on reasonable terms in New Zealand. Compare: 1953 No 64 s 46(1), (2)

170 Court may order grant of licence (1) The court may make an order for the grant of a licence in accordance with an

application under section 169 on any terms that the court thinks fit if the court is satisfied that either of the grounds referred to in section 169(2) is established.

(2) However,— (a) a licence must not be granted under this section for a patent relating to

an integrated circuit: (b) no order may be made under subsection (1) that would be contrary to

any treaty, convention, arrangement, or engagement applying to New Zealand and any convention country.

(3) A licence granted under this section— (a) is not exclusive; and (b) must not be assigned otherwise than in connection with the goodwill of

the business in which the patented invention is used; and (c) is limited to the supply of the patented invention predominantly in New

Zealand; and

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(d) must be recorded in the patents register by the Commissioner as soon as is reasonably practicable after the Commissioner receives a copy of the order made under subsection (1).

(4) Any licence granted under this section may, on the application of an interested person, be terminated by the court if the court is satisfied that the grounds on which the licence was granted have ceased to exist. Compare: 1953 No 64 ss 46(3)–(5), (8), 54(3)

Compulsory licences for export of pharmaceutical products

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

(1) The court may, on an application made by any person, make an order for the grant of a licence under a patent if the court is satisfied that— (a) the patented invention is—

(i) a pharmaceutical product; or (ii) a process for making a pharmaceutical product; and

(b) the pharmaceutical product is needed to address a serious public health problem in 1 or more overseas countries specified in the application (for example, an epidemic, whether actual or imminent, of HIV/AIDS, tuber- culosis, malaria, or other disease); and

(c) each of those overseas countries is either— (i) an eligible importing Member that has made a notification in re-

spect of the product under either paragraph 2(a) of the relevant de- cision or paragraph 2(a) of the Annex to the TRIPS agreement; or

(ii) a country that is currently specified in respect of the product in a notice under section 172; and

(d) all of the pharmaceutical products made under the licence will be expor- ted to those overseas countries.

(2) A licence granted under this section— (a) is not exclusive; and (b) must not be assigned otherwise than in connection with the goodwill of

the business in which the patented invention is used; and (c) must be recorded in the patents register by the Commissioner as soon as

is reasonably practicable after the Commissioner receives a copy of the order made under subsection (1).

(3) Any licence granted under this section may, on the application of an interested person, be terminated by the court if the court is satisfied that the grounds on which the licence was granted have ceased to exist.

(4) For the purposes of this section and sections 172 to 174,—

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eligible importing Member means,— (a) if the amendment to the TRIPS agreement to insert Article 31bis has not

yet taken effect, an eligible importing Member within the meaning of paragraph 1 of the relevant decision:

(b) if the amendment to the TRIPS agreement to insert Article 31bis has taken effect, an eligible importing Member within the meaning of that Article

pharmaceutical product includes a medicine or vaccine, an active ingredient of a medicine or vaccine that is necessary for its manufacture, or a diagnostic kit needed for the use of a medicine or vaccine relevant decision means the decision of the General Council of the World Trade Organization of 30 August 2003 relating to the implementation of para- graph 6 of the Doha Declaration on the TRIPS agreement and public health.

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

(1) This section applies if— (a) the government of a country that is not a member of the World Trade Or-

ganization has sent to the Government of New Zealand a request for the country to be specified under this section for the purposes of section 171(1)(c)(ii) in respect of a particular pharmaceutical product; and

(b) the request sets out information relating to why the government of that country considers that either— (i) the country has no manufacturing capacity in its pharmaceutical

sector for the pharmaceutical product; or (ii) the country’s manufacturing capacity in its pharmaceutical sector

for the pharmaceutical product (excluding any capacity owned or controlled by the patentee) is currently insufficient for the pur- poses of meeting its need for the product; and

(c) the request specifies the expected quantity of the pharmaceutical product that is needed by the country.

(2) The Secretary of Foreign Affairs and Trade (the Secretary) may, after a request from a country has been received under subsection (1), by notice in the Gaz- ette, specify the country for the purposes of section 171(1)(c)(ii) in respect of the relevant pharmaceutical product if he or she is satisfied that either— (a) the country has no manufacturing capacity in its pharmaceutical sector

for the product; or (b) the country’s manufacturing capacity in its pharmaceutical sector for the

product (excluding any capacity owned or controlled by the patentee) is currently insufficient for the purposes of meeting its need for the prod- uct.

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(3) The notice under subsection (2) must— (a) specify the country and pharmaceutical product; and (b) specify the expected quantity of the pharmaceutical product that is nee-

ded by the country (as notified to the Government of New Zealand under subsection (1)); and

(c) state that the Secretary is satisfied of the matters specified in subsection (2) and his or her reasons for being so satisfied.

(4) The Secretary may, by notice in the Gazette,— (a) amend or revoke a notice under subsection (2): (b) revoke a notice under subsection (2) and replace it with another.

(5) The Secretary must publish a copy of a notice under subsection (2) on an Inter- net site maintained by, or on behalf of, the Ministry of Foreign Affairs and Trade.

(6) To avoid doubt, a notice under subsection (2) is neither a legislative instrument nor a disallowable instrument for the purposes of the Legislation Act 2012 and does not have to be presented to the House of Representatives under section 41 of that Act.

173 Terms of licence (1) An order under section 171 must specify terms of the licence relating to the fol-

lowing matters: (a) the name and address of the licensee: (b) the name of the patented invention for which the licence has been gran-

ted: (c) the name of the country or countries to which the pharmaceutical prod-

ucts made under the licence must be exported: (d) the maximum quantity of pharmaceutical products that may be exported

to each of those countries (which must be no more than the court con- siders is necessary to meet the needs of the country):

(e) the duration of the licence: (f) the address of the licensee’s Internet site for the purposes of subsection

(2)(e). (2) A licence granted under section 171 is subject to the following terms:

(a) all pharmaceutical products made under the licence must be clearly iden- tified, through specific labelling or marking, as having been made under a compulsory licensing scheme for the export of the product:

(b) all pharmaceutical products made under the licence must have particular distinguishing features (for example, special packaging or special col- ouring or shaping of the products) if including those features is feasible and does not have a significant impact on price:

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(c) all pharmaceutical products made under the licence must be exported to the country or countries specified under subsection (1)(c):

(d) the licensee must, before exporting the pharmaceutical products to a country specified under subsection (1)(c), supply to the Council for Trade-Related Aspects of Intellectual Property Rights of the World Trade Organization a statement containing the following information for the purpose of the information being published on the WTO Internet site: (i) the quantities of the pharmaceutical product to be exported to the

country: (ii) the specific labelling or marking referred to in paragraph (a) and

any distinguishing features of the pharmaceutical products re- ferred to in paragraph (b):

(e) the licensee must, before exporting the pharmaceutical products to a country specified under subsection (1)(c), publish the information speci- fied in paragraph (d) on the licensee’s Internet site.

(3) A licence granted under section 171 may be subject to any other terms that the court thinks fit.

(4) For the purposes of this section,— licensee’s Internet site means an Internet site maintained by, or on behalf of, the licensee WTO Internet site means an Internet site maintained by, or on behalf of, the World Trade Organization.

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

(1) The Registrar of the court must, as soon as is reasonably practicable after an order is made under section 171, send a copy of the order to the Commissioner and the Secretary.

(2) The Secretary must, as soon as is reasonably practicable after receiving a copy of the order, publish a copy of the order on an Internet site maintained by, or on behalf of, the Ministry of Foreign Affairs and Trade.

General provisions relating to compulsory licences

175 Remuneration payable to patentee If a licence is granted under this subpart to a person, that person must pay to the patentee the remuneration— (a) that is agreed between that person and the patentee; or (b) that is determined by a method agreed between that person and the pa-

tentee; or

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Reprinted as at 14 September 2017 Patents Act 2013 Part 4 s 179

(c) that is determined by the court on the application of that person or the patentee in default of agreement.

Compare: 1953 No 64 s 46(6)

176 Person applying for licence must have made efforts to obtain licence from patentee on reasonable commercial terms and conditions A licence must not be granted under this subpart unless the person applying for the licence, having made efforts to obtain a licence from the patentee on reasonable commercial terms and conditions, has been unable to obtain a licence, or to obtain a licence on reasonable commercial terms and conditions, from the patentee within a reasonable period of time. Compare: 1953 No 64 s 46(7)

177 Exercise of powers on applications under section 169, 171, or 175 (1) The powers of the court on an application under section 169, 171, or 175 must

be exercised with a view to ensuring that the inventor or other person benefi- cially entitled to a patent receives adequate remuneration having regard to the nature of the invention.

(2) For the purposes of subsection (1), the court must, in the case of a licence under section 171, have regard to the economic value of the products made under the licence to the country to which the products will be exported under the licence. Compare: 1953 No 64 s 48

178 Order for grant of licence has effect as deed (1) Any order under this subpart for the grant of a licence has effect as if it were a

deed, executed by the patentee and all other necessary parties, granting a licence in accordance with the order.

(2) Subsection (1) does not limit any other method of enforcement. Compare: 1953 No 64 s 54(1)

Subpart 6—Crown use of inventions

179 Crown use of inventions (1) Any government department, and any person authorised in writing by a gov-

ernment department, may exploit any invention for the services of the Crown at any time after the complete specification relating to an application for a patent for the invention has become open to public inspection.

(2) The exploitation of an invention under subsection (1) is not an infringement,— (a) if the application for a patent is pending, of the nominated person’s

rights in the invention; or (b) if a patent has been granted for the invention, of the patent.

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(3) Subsection (1)— (a) is subject to sections 186 to 188; but (b) applies despite any other provision of this Act.

(4) For the purposes of this subpart,— (a) any use of an invention for the supply to the government of any country

outside New Zealand of products required for the defence of that country must be treated as exploitation of the invention for the services of the Crown if that supply is made in accordance with any agreement or ar- rangement between the Government of New Zealand and the govern- ment of that country:

(b) the power of a government department or a person authorised by a gov- ernment department under this section to exploit an invention includes the power to sell to any person any products made in the exercise of the powers conferred by this section that are no longer required for the pur- pose for which they were made:

(c) the power of a government department or a person authorised by a gov- ernment department under this section to sell an invention does not, in the case of an application for a patent or a patent relating to an integrated circuit, extend to the sale of the invention to the public.

Compare: 1953 No 64 s 55(1), (2); Patents Act 1990 s 163 (Aust)

180 Order in Council may declare use to be Crown use Any use of an invention must, for the purposes of this subpart, be treated as a use for the services of the Crown if the Governor-General, by Order in Council, declares that the use of the invention by a person, or by any class of persons, engaged in a particular industry is necessary or desirable to enable full benefit to be derived by the members of the public in New Zealand of any enterprise or undertaking in which the Crown or any government department has a complete or an almost complete monopoly. Compare: 1953 No 64 s 55(3)

181 Protection of buyers The buyer of any products sold in the exercise of powers conferred by section 179, and any person claiming through the buyer, has the power to deal with them in the same manner as if the patent were held on behalf of the Crown. Compare: 1953 No 64 s 55(4)

182 Rights of third parties in respect of Crown use (1) This section applies in relation to any use of a patented invention, or of an in-

vention for which a patent application is pending, made for the services of the Crown—

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(a) by a government department or a person authorised by a government de- partment under section 179; or

(b) by the patentee, nominated person, or applicant for the patent to the order of a government department.

(2) The provisions of any licence, assignment, or agreement made between the pa- tentee, nominated person, or applicant for the patent, or any person who de- rives title from that person or from whom that person derives title, and any per- son other than a government department is of no effect to the extent that those provisions— (a) restrict or regulate the use of the invention referred to in subsection (1);

or (b) restrict or regulate the use of any model, document, or information relat-

ing to the invention in relation to the use of the invention referred to in subsection (1); or

(c) provide for the making of payments for any of those uses or calculated by reference to any of those uses.

(3) The reproduction or publication of any model or document in connection with a use referred to in subsection (1) is not an infringement of any copyright sub- sisting in the model or document.

(4) Subsection (2)— (a) applies whether the licence, assignment, or agreement is made before or

after the commencement of this section; and (b) is subject to sections 186 and 188. Compare: 1953 No 64 s 56

183 Reference of disputes concerning Crown use (1) The following disputes may be referred to the court by either party to the dis-

pute in the manner that is prescribed by rules of the court: (a) any dispute concerning the exercise by a government department or a

person authorised by a government department of the powers conferred by section 179:

(b) any dispute concerning the terms for the use of an invention for the ser- vices of the Crown under that section.

(2) In any proceeding under this section, the government department may,— (a) if the patentee is a party to the proceeding, apply for the revocation of

the patent on any ground on which a patent may be revoked under sub- part 11 of Part 3; and

(b) in any case, put in issue the validity of the patent without applying for its revocation.

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(3) In determining any dispute referred to the court under this section, the court must have regard to— (a) any benefit or compensation that the nominated person or patentee may

have received, or may be entitled to receive, directly or indirectly from any government department or person authorised by a government de- partment in respect of the invention; and

(b) the need to ensure that the nominated person or patentee receives ad- equate remuneration having regard to the nature of the invention.

Compare: 1953 No 64 s 57(1)–(3)

184 Court may refer matter to special or official referee or arbitrator (1) In any proceeding under section 183, the court may order the whole proceeding

or any question or issue of fact arising in the proceeding to be referred to a spe- cial or official referee or an arbitrator on any terms that the court thinks fit.

(2) References to the court in section 183 must be construed as including a refer- ence to the special or official referee or arbitrator. Compare: 1953 No 64 s 57(4)

185 Special provisions as to Crown use during emergency (1) The powers exercisable in relation to an invention by a government department

or a person authorised by a government department under section 179 include the power to exploit the invention for any purpose that appears to the govern- ment department necessary or desirable— (a) to avoid prejudice to the security or defence of New Zealand; or (b) to assist in the exercise of powers and the implementation of civil de-

fence emergency management during a state of emergency declared under the Civil Defence Emergency Management Act 2002.

(2) This section is subject to sections 186 to 188. Compare: 1953 No 64 s 58

186 Nature and scope of rights under section 179 (1) The right to use an invention under section 179—

(a) is not exclusive; and (b) must not be assigned otherwise than in connection with the goodwill of

the business in which the invention is used; and (c) is, despite section 179(4)(a), limited to the supply of the invention pre-

dominantly in New Zealand by a government department or a person authorised by a government department under that section.

(2) The right to use an invention under section 179 may, on the application of any interested person, be terminated by the court if the court is satisfied that the cir-

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cumstances that gave rise to the right to use the invention have ceased to exist and are unlikely to recur.

(3) The right to use an invention under section 179 is, except in a case to which section 185 applies, subject to the government department or person authorised by a government department under section 179 having first made efforts to ob- tain the consent of the nominated person or the patentee for the use of the in- vention on reasonable commercial terms and conditions, and having failed to obtain that consent, or to obtain that consent on reasonable commercial terms and conditions, within a reasonable period of time. Compare: 1953 No 64 s 58A

187 Duty to inform nominated person or patentee (1) If any use of an invention is made by or with the authority of a government

department under section 179, the government department must, as soon as practicable after the use of the invention has begun, notify and provide the nominated person or patentee with any information concerning the extent of the use as the nominated person or patentee may from time to time require.

(2) Subsection (1) does not require the government department to notify or dis- close information to the nominated person or patentee if to do so would, or might reasonably be expected to, prejudice the security or defence of New Zea- land. Compare: 1953 No 64 s 58B

188 Nominated person or patentee entitled to remuneration The Crown must, if an act is done under section 179, pay to the nominated per- son or patentee the remuneration— (a) that is agreed between the nominated person or patentee and the Crown;

or (b) that is determined by a method agreed between the nominated person or

patentee and the Crown; or (c) that is determined by the court under section 183 in default of agree-

ment. Compare: 1953 No 64 s 58C

Subpart 7—Mention of inventor in patent, specification, and patents register

189 Mention of inventor in patent, specification, and patents register (1) This section applies if the Commissioner is satisfied, on a request or claim

made under section 190,— (a) that the person in respect of whom, or by whom, the request or claim is

made is the inventor of—

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(i) an invention for which a patent application has been made; or (ii) a substantial part of an invention for which a patent application

has been made; and (b) that the patent application is a direct result of that person being the in-

ventor. (2) The Commissioner must cause the person to be mentioned as inventor in—

(a) any patent granted in relation to the patent application; and (b) the complete specification; and (c) the patents register.

(3) The mention of a person as inventor under this section does not confer or dero- gate from any rights under the patent. Compare: 1953 No 64 s 23(1)

190 Request or claim to be mentioned as inventor (1) A request or claim made for the purposes of section 189 must be made in the

prescribed manner (if any). (2) A request or claim under this section must be made—

(a) before the date that is 2 months after the complete specification becomes open to public inspection; or

(b) within a further period (not exceeding 1 month) that the Commissioner may allow.

(3) The Commissioner may only extend the period under subsection (2)(b) on a re- quest to that effect made to the Commissioner before the expiry of the 2 month period referred to in subsection (2)(a). Compare: 1953 No 64 s 23(3)–(5)

191 Request or claim may not be considered in certain circumstances No request or claim under section 190 may be considered by the Commissioner if the Commissioner considers that the request or claim is based on facts that, if proved in the case of an opposition under section 92(1)(b) by the person in re- spect of or by whom the request or claim is made, would have entitled the per- son to relief under subpart 9 of Part 3. Compare: 1953 No 64 s 23(6)

192 Commissioner must give notice of claim and opportunity to be heard (1) If a claim is made under section 190, the Commissioner must give notice of the

claim to every applicant for the patent (not being the claimant) and to any other person that the Commissioner considers is interested.

(2) The Commissioner must, before deciding on any request or claim made under section 190, give a reasonable opportunity to be heard to any of the following persons:

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Reprinted as at 14 September 2017 Patents Act 2013 Part 5 s 195

(a) the person in respect of whom, or by whom, the request or claim is made:

(b) any person to whom notice of the claim has been given under this sec- tion.

Compare: 1953 No 64 s 23(7)

193 Certificate concerning mention of inventor (1) A person who alleges that another person should not have been mentioned as

inventor under sections 189 to 192 may, in the prescribed manner (if any), apply to the Commissioner for a certificate to that effect.

(2) The Commissioner may issue a certificate that specifies that a person should not have been mentioned as inventor under those sections.

(3) If the Commissioner issues a certificate, the Commissioner must rectify the specification and the patents register accordingly.

(4) The Commissioner must, before deciding to issue a certificate, give a reason- able opportunity to be heard to any person that the Commissioner considers is interested. Compare: 1953 No 64 s 23(8)

Part 5 Administrative and miscellaneous provisions

Subpart 1—Patents register and other information on patents and patent applications

Patents register

194 Patents register (1) The Commissioner must keep a register of patents in New Zealand in accord-

ance with this Act and the regulations. (2) Sections 204 and 205 provide for evidence relating to the patents register.

195 Purpose of patents register The purpose of the patents register is to— (a) enable members of the public to—

(i) know what patents are in force and the key dates for those patents (for example, the date of filing of the patent application); and

(ii) know who is the patentee and who has other interests in a patent (for example, under a mortgage or licence) and the addresses for service of those persons; and

(iii) find out about the scope of a claim; and

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Reprinted as at Part 5 s 196 Patents Act 2013 14 September 2017

(iv) find out other matters affecting the validity and ownership of the patent and of any licences of the patent; and

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

196 Form of patents register The patents register may be— (a) an electronic register; or (b) kept in any other manner that the Commissioner thinks fit.

197 Contents of patents register (1) The patents register must contain the following information for patents in force

in New Zealand: (a) the names, addresses, nationality or principal place of business (as ap-

propriate), and addresses for service of patentees: (b) the date of filing of the patent application, the patent date, the priority

date or dates, the date of the publication of the accepted complete speci- fication, the date the complete specification became open to public in- spection, the date that the patent is granted, and the date the next renewal fee is due:

(c) titles of the complete specifications: (d) details of assignments and transmissions: (e) the names, addresses, and addresses for service of licensees and other

persons with interests in patents: (f) any other matters required by or under this Act to be entered in the pat-

ents register. (2) The patents register may also contain any other information that the Commis-

sioner considers necessary or desirable. (3) No notice of any trust may be entered in the patents register, and the Commis-

sioner is not affected by any notice of that kind. Compare: 1953 No 64, s 83(1), (4)

Searches of patents register and obtaining patent information

198 Search of patents register A person may search the patents register in accordance with this Act or the regulations.

199 Requests for patent information and certified copies The Commissioner must, if a person requests it in the prescribed manner, give the person—

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(a) a copy of, or extract from, a patent or any registered document that is certified by the Commissioner as a true copy or extract of the original for the purposes of section 204:

(b) a certificate as to any of the matters stated in section 205: (c) any prescribed information concerning a patent or patent application. Compare: 1953 No 64 s 90

Changes to patents register and other official documents

200 Changes to patents register The Commissioner may make changes to the patents register in accordance with this Act or the regulations.

201 Commissioner may correct own mistakes in patents register, etc (1) The Commissioner may correct an error or omission that the Commissioner is

satisfied has been made by the Commissioner in— (a) the patents register; or (b) any patent; or (c) any other document issued under this Act.

(2) The Commissioner must, before making the correction,— (a) give notice that the Commissioner proposes to make the correction to

persons that the Commissioner thinks have an interest in it; and (b) give those persons a reasonable opportunity to be heard.

(3) The Commissioner may require production of the patent or other document to make the correction. Compare: 1953 No 64 s 88(1), (2)

202 Commissioner may correct other persons’ mistakes in patents register, etc (1) The Commissioner may (on application by any person or on the Commission-

er’s own initiative) correct an error or omission that the Commissioner is satis- fied has been made by any person in— (a) the patents register; or (b) any patent; or (c) any patent application; or (d) any documents filed in connection with a patent application or filed in

proceedings before the Commissioner in connection with a patent or patent application.

(2) Any person (whether or not that person made the error or omission) may apply for a correction under this section in the prescribed manner.

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(3) The Commissioner must, before making the correction, publish in the journal the nature of the proposed correction if the Commissioner thinks that— (a) the correction would materially alter the meaning or scope of the docu-

ment to be corrected; and (b) it ought not be made without notice to persons who have an interest in it.

(4) If a person gives notice within the prescribed time to the Commissioner of op- position to the application for the proposed correction, the Commissioner must, before deciding the matter,— (a) give notice of the opposition to the applicant (if any); and (b) give the applicant (if any) and opponent a reasonable opportunity to be

heard. (5) This section does not apply to an error or omission by persons referred to in

section 201(1) or to an error or omission in a complete specification (see sec- tion 40 and subpart 8 of Part 3 for amendments to complete specifications). Compare: 1953 No 64 s 88(3), (4)

202A Commissioner may alter certain inconsistent information (1) This section applies if information in the patents register relating to a person is

inconsistent with primary business data of that person in the New Zealand Business Number Register.

(2) If this section applies, the Commissioner may, in the prescribed manner (if any), alter the information in the patents register so that it is consistent with the primary business data in the New Zealand Business Number Register.

(3) In this section, primary business data has the same meaning as in section 20(2) of the New Zealand Business Number Act 2016. Section 202A: inserted, on 13 May 2016, by section 41 of the New Zealand Business Number Act 2016 (2016 No 16).

203 Court may rectify patents register (1) The court may, on application of any person aggrieved, order the patents regis-

ter to be rectified by making an entry, or varying or deleting an entry, in it. (2) In a proceeding under this section, the court may determine any question that it

is necessary or expedient to decide in connection with the rectification of the patents register.

(3) The applicant for rectification must give notice of the application in the pre- scribed manner to the Commissioner.

(4) The Commissioner is entitled to appear and be heard on the application, and must appear if so directed by the court.

(5) Any order by the court under this section must direct that notice of the order must be served on the Commissioner in the prescribed manner.

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(6) The Commissioner must, on receipt of notice of an order, rectify the patents register accordingly. Compare: 1953 No 64 s 87

Evidence

204 Evidence: patents register and patents (1) The patents register is prima facie evidence of any matters required or author-

ised by or under this Act to be entered in it. (2) A copy of, or extract from, a patent or registered document that purports to be

certified as a true copy or extract by the Commissioner is admissible in evi- dence in legal proceedings as if it were the original. Compare: 1953 No 64 ss 83(3), 89(2)

205 Evidence: anything done by Commissioner (1) A certificate purporting to be signed by the Commissioner in relation to the

matters referred to in subsection (2) is for all purposes prima facie evidence of those matters specified in the certificate.

(2) The matters are— (a) that anything that he or she is authorised to do by or under this Act, or

any other enactment in relation to patents or patent applications (includ- ing entries in the patents register) has or has not been done; or

(b) that anything that he or she is authorised or required to do by or under this Act, or any other enactment in relation to patents or patent applica- tions, has been lawfully done; or

(c) that any entry in the patents register is as stated in the certificate. Compare: 1953 No 64 s 89(1)

Journal and other publications

206 Commissioner must publish journal (1) The Commissioner must periodically publish a journal containing—

(a) prescribed details concerning patents and patent applications (for ex- ample, the names and patentees of patents granted and brief descriptions of the inventions); and

(b) any other matter required by this Act, the regulations, or any other law to be published in it; and

(c) other information concerning patents or patent applications that the Commissioner thinks is useful or desirable for patentees, patent appli- cants, licensees, or the public to know.

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(2) The journal may be published electronically or in any other manner that the Commissioner thinks fit. Compare: 1953 No 64 s 112(1)

207 Commissioner may keep or publish indexes, etc (1) The Commissioner may publish indexes, specifications, abridgments of specifi-

cations, catalogues, and other works relating to inventions, patents, and patent applications that he or she thinks fit.

(2) The Commissioner may keep a classification by subject matter of— (a) specifications filed in New Zealand and open to public inspection; and (b) printed publications relating to patents published in New Zealand that

are necessary or useful for the purpose of determining with readiness and accuracy the patentability of inventions.

(3) Those indexes and other documents may be published or kept electronically or in any other manner that the Commissioner thinks fit. Compare: 1953 No 64 s 112(2), (3)

Subpart 2—General provisions on proceedings of Commissioner

Hearing before exercise of Commissioner’s discretion

208 Hearing before exercise of Commissioner’s discretion (1) The Commissioner must not exercise any of the Commissioner’s discretionary

powers under this Act or any regulations adversely to any applicant or other party to a proceeding before the Commissioner without giving the person a reasonable opportunity of being heard in the prescribed manner.

(2) Subsection (1) does not apply to— (a) the Commissioner’s power to direct an applicant to request an examin-

ation under section 64: (b) a person to whom section 100 applies. Compare: 1953 No 64 s 94

Giving evidence to Commissioner

209 How to give evidence to Commissioner in proceedings (1) Evidence must be given by affidavit or statutory declaration (unless the Com-

missioner directs otherwise under subsection (2)) in proceedings before the Commissioner under this Act.

(2) However, the Commissioner may— (a) take oral evidence instead of, or as well as, the affidavit or declaration;

and

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(b) allow a witness to be cross-examined on the witness’s affidavit, declar- ation, or oral evidence.

(3) The statutory declaration may be used before a court in any appeal instead of evidence by affidavit and, if used in this way, has all the same incidents and consequences as evidence by affidavit.

(4) Section 111 of the Crimes Act 1961 (which relates to false statements or dec- larations) applies to every affidavit and statutory declaration made for the pur- poses of this Act. Compare: 1953 No 64 s 96(1), (4)

210 Commissioner may receive evidence on oath (1) The Commissioner may also administer oaths to any witness in proceedings

before him or her. (2) Evidence given on oath before the Commissioner is given in judicial proceed-

ings for the purposes of sections 108 and 109 of the Crimes Act 1961 (which relate to perjury). Compare: 1953 No 64 s 96(2), (3)

211 Issuing of summons by Commissioner (1) The Commissioner may issue a summons to a person requiring that person to

attend a hearing before the Commissioner 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 hearing.

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

(3) Sections 234 to 236 contain requirements for the summons and offences for failing to comply with the summons.

Power to award costs

212 Commissioner may award costs (1) The Commissioner may, in any proceedings before him or her under this

Act,— (a) by order, award to a party costs of an amount that the Commissioner

thinks appropriate (which, without limitation, may be on an indemnity basis); and

(b) direct how and by what parties they are to be paid.

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(2) The order may be entered as a judgment of the court and may be enforced ac- cordingly. Compare: 1953 No 64 s 95(1)

213 Commissioner may require security for costs (1) The Commissioner may require a party to proceedings to give security for the

costs of the proceedings if the Commissioner is satisfied that— (a) the party does not reside, and does not carry on business, in New Zea-

land; or (b) there is reason to believe that the party will be unable to pay the costs of

the other party if unsuccessful in the proceedings. (2) If the party does not give the security required, the Commissioner may treat the

proceedings as abandoned by the party and determine the matter accordingly. Compare: 1953 No 64 s 95(2)

Appeals against Commissioner’s decisions

214 Appeals against decisions of Commissioner (1) A person who is aggrieved by a decision of the Commissioner under this Act

may appeal to the court. (2) An appeal must be brought—

(a) in accordance with the rules of court; and (b) within—

(i) 20 working days after the date of the decision; or (ii) any further time the court allows on application made before or

after that period expires. (3) This section does not allow an appeal to be made to the court from a decision

of the Commissioner under section 28 or 29 (see section 30 for reviews of those decisions).

215 Appeals against decisions of court on appeal (1) A decision of the court on an appeal against a decision of the Commissioner

may be appealed to the Court of Appeal if— (a) the decision was made under section 26 (which relates to the Commis-

sioner’s power to give directions to co-owners); or (b) the decision was made under section 99 or 112 (which relates to the

revocation of a patent by the Commissioner) and the effect of the deci- sion is the revocation of a patent; or

(c) the court or Court of Appeal gives leave. (2) All other decisions of the court on an appeal against a decision of the Commis-

sioner are final.

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(3) However, this section does not limit the rights of appeal under sections 68 and 69 of the Senior Courts Act 2016. Compare: 1953 No 64 ss 97(4), 98

Section 215(3): amended, on 1 March 2017, by section 183(b) of the Senior Courts Act 2016 (2016 No 48).

Costs of Commissioner

216 Costs of Commissioner in proceeding In any proceeding before a court under this Act, the costs of the Commissioner are at the discretion of the court. Compare: 1953 No 64 s 99

Subpart 3—Establishment and operation of administrative bodies and officers for patents

Commissioner and Assistant Commissioners

217 Commissioner and Assistant Commissioners (1) The chief executive of the Ministry must appoint, under the State Sector Act

1988,— (a) the Commissioner of Patents; and (b) as many Assistant Commissioners of Patents as may be necessary for the

purposes of this Act. (2) These persons are employees of the Ministry, and those appointments may be

held separately or in conjunction with any other office in the Ministry. Compare: 1953 No 64 ss 3, 4

218 Functions of Commissioner The functions of the Commissioner are, in accordance with this Act and the regulations, to— (a) examine patent applications and specifications, grant patents, revoke pat-

ents, and accept surrenders of patents, and make other decisions relating to patent applications and patent grants:

(b) maintain the patents register and carry out other functions relating to the patents register:

(c) maintain and supply information on patents and patent applications, in- cluding by publishing a journal:

(d) [Repealed] (e) carry out other functions, duties, and powers conferred on him or her by

this Act and the regulations.

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Section 218(d): repealed, on 24 February 2017, by section 8 of the Patents (Trans-Tasman Patent At- torneys and Other Matters) Amendment Act 2016 (2016 No 89).

219 Powers of Assistant Commissioners of Patents (1) An Assistant Commissioner of Patents has the functions, duties, and powers of

the Commissioner under this Act (other than the power to delegate under sec- tion 220), but is subject to the control of the Commissioner.

(2) The fact that an Assistant Commissioner exercises those functions, duties, and powers is conclusive evidence of the authority to do so. Compare: 1953 No 64 s 4(2), (3)

220 Power of Commissioner to delegate (1) The Commissioner may delegate to any person, either generally or particularly,

any of the Commissioner’s functions, duties, and powers (except this power of delegation).

(2) A delegation— (a) must be in writing; and (b) may be made subject to any restrictions and conditions that the Commis-

sioner thinks fit; and (c) is revocable at any time, in writing; and (d) does not prevent the performance or exercise of a function, duty, or

power by the Commissioner. (3) A person to whom any functions, duties, or powers are delegated may perform

and exercise them in the same manner and with the same effect as if they had been conferred directly by this Act and not by delegation.

(4) A person who appears to act under a delegation is presumed to be acting in ac- cordance with its terms in the absence of evidence to the contrary.

(5) Any reference in this Act or the regulations to the Commissioner includes a reference to the delegate in respect of anything delegated to that person.

221 Liability of Commissioner and others The Commissioner, an Assistant Commissioner, or any other person acting on behalf of the Commissioner is not personally liable for any act or omission done in good faith in the performance or intended performance of the Commis- sioner’s functions, duties, or powers.

Intellectual Property Office of New Zealand

222 Intellectual Property Office of New Zealand (1) The Minister may, by notice in the Gazette,—

(a) appoint a place where there is an office situated for the purpose of com- munications to and from the public on matters arising under this Act, the

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Trade Marks Act 2002, the Designs Act 1953, and any other intellectual property statutes that the Minister thinks fit; and

(b) change that place; and (c) name that office; and (d) change the name of that office.

(2) On the commencement of this section (to avoid the need for a notice, but with- out preventing future changes by notice),— (a) the place used as the Patent Office immediately before the commence-

ment of this section is appointed as the place for that office; and (b) the name of that office is the Intellectual Property Office of New Zea-

land. (3) The Governor-General may, by Order in Council, amend this Act and any other

enactment by omitting the name of that office and substituting another name to reflect a name change of that office.

223 Opening hours of Intellectual Property Office of New Zealand (1) The Commissioner may—

(a) fix the opening hours for IPONZ; and (b) declare IPONZ closed on any day.

(2) The Commissioner must publicly notify those opening hours and (before clos- ing IPONZ) must publicly notify any closure.

(3) A thing that must or may be done on a particular day or within a limited period of time may, if that day or the last day of that period is not an opening day of IPONZ, be done on the next opening day (and is then still in time).

224 Closing of Intellectual Property Office of New Zealand at short notice (1) The Commissioner may declare IPONZ closed without giving publication of

the closure under section 223 if— (a) he or she thinks it necessary or desirable because of an emergency or

other temporary circumstances; and (b) it is not practicable to make that prior publication.

(2) The Commissioner must, as soon as practicable after closing IPONZ, publicly notify the closure.

Māori advisory committee

225 Appointment and membership of Māori advisory committee (1) The Commissioner must appoint a committee called the Māori advisory com-

mittee. (2) The Commissioner may, at any time,—

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(a) appoint a person to the committee: (b) remove a member from the committee and, if the Commissioner thinks

fit, appoint another member in that member’s place. (3) A person must not be appointed as a member of the committee unless, in the

opinion of the Commissioner, the person is qualified for appointment, having regard to that person’s knowledge of mātauranga Māori (Māori traditional knowledge) and tikanga Māori (Māori protocol and culture).

(4) A member of the committee may resign office by notice in writing to the Com- missioner.

226 Functions of Māori advisory committee The function of the Māori advisory committee is to advise the Commissioner (on request) on whether— (a) an invention claimed in a patent application is derived from Māori trad-

itional knowledge or from indigenous plants or animals; and (b) if so, whether the commercial exploitation of that invention is likely to

be contrary to Māori values.

227 Effect of advice from Māori advisory committee The Commissioner must consider, but is not bound by, the advice given by the Māori advisory committee.

228 Māori advisory committee may regulate own procedure The Māori advisory committee may regulate its own procedure, subject to any direction given by the Commissioner.

Subpart 4—Other miscellaneous provisions

Filing and administration of Act

229 Electronic filing and administration of Act (1) This section applies to a requirement under this Act or the regulations for—

(a) a person to file information or a document with, or serve or give infor- mation or a document to, the Commissioner; and

(b) the Commissioner to serve or give information or a document to any per- son.

(2) The requirement referred to in subsection (1)(a) must be met using a prescribed electronic delivery method (or another delivery method permitted by the regu- lations) in the prescribed manner.

(3) The requirement referred to in subsection (1)(b) may be met— (a) by using a prescribed electronic delivery method (or another delivery

method permitted by the regulations) in the prescribed manner; or

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(b) by other means that are reasonable in the circumstances. (4) Anything that is filed, served, or given using a prescribed electronic or other

delivery method must be treated as received for the purposes of that require- ment when specified by the regulations.

(5) However, this section does not apply to a requirement— (a) to file, serve, or give information or documents in any proceeding in a

court; or (b) for which a particular or different delivery method is specified in this

Act or the regulations (for example, a summons under section 234). (6) In this section, information or a document includes any notice, application,

request, certificate, correspondence, or other type of information or document referred to in or under this Act.

Power to extend time limits

230 Commissioner may extend time limits for delays by Commissioner (1) The Commissioner may extend the time within which anything must be done

under this Act or the regulations if that thing is not or will not be done in time because of a delay by the Commissioner.

(2) The Commissioner may grant the extension even if the time has expired for do- ing the thing. Compare: 1953 No 64 s 93(1), (5)

231 Commissioner may extend time limits for certain filing requirements or for delivery failures

(1) The Commissioner may, on application by any person under section 232 or at the Commissioner’s own discretion, extend— (a) the time limit under section 37(2)(a) or (b) (which relates to the time

limit for the filing of a complete specification) or section 53 (which re- lates to the filing of a convention application); or

(b) the time within which anything must be done under this Act or the regu- lations if that thing is not or will not be done in time because of a failure or delay of the delivery method.

(2) The Commissioner may grant the extension even if the time has expired for do- ing the thing.

(3) However, the Commissioner must refuse to grant the extension if in his or her opinion— (a) the applicant or the applicant’s agent has not allowed a reasonable mar-

gin of time for the delivery of any documents or information relating to the matter for which the application for the extension is made; or

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(b) the applicant or the applicant’s agent has in any other way failed to act with due diligence and prudence on the matter; or

(c) there has been undue delay in applying for the extension of time or in prosecuting the application.

(4) The Commissioner may grant the extension on any terms or conditions he or she thinks fit. Compare: 1953 No 64 s 93A(1), (2), (3)

232 Requirements for applying and granting extensions of time limits under section 231

(1) A person must apply for an extension of a time limit under section 231 in the prescribed manner.

(2) The Commissioner must publish every extension granted in the journal. Compare: 1953 No 64 s 93A(4)

Serving of other notices

233 Service of notices (other than those given to or by Commissioner) (1) Any notice or any other document required to be served on, or given to, any

person under this Act or the regulations is sufficiently served or given if the notice or document is— (a) delivered personally or posted to the person at the person’s address for

service or last known place of residence or business; or (b) sent by fax or electronic communication to the person’s last known fax

number or electronic address; or (c) made available to the person in accordance with a prescribed electronic

delivery method (if permitted under the regulations). (2) A notice or document that is sent to a person at a fax number or an electronic

address must be treated as received by that person not later than 2 days after the date on which it is sent.

(3) A notice or document that is posted to a person must be treated as received by that person not later than 7 days after the date on which it is posted.

(4) However, a notice or document must not be treated as received if the person to whom it is posted or sent proves that it was not received, otherwise than through fault on the person’s part.

(5) A notice or document that is made available to a person using the prescribed electronic delivery method must be treated as received by that person when specified by the regulations.

(6) This section does not— (a) apply to any requirement to which section 229 applies:

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(b) apply to notices or other documents served, given, or filed in any pro- ceeding in a court or to the extent that a different or particular delivery method is specified by this Act or the regulations.

Requirements for summons

234 Requirements for summons (1) A summons issued by the Commissioner under section 211 must be in writing,

be signed by the Commissioner, 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 Commissioner; 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 resi-

dence or address for service; or (c) sending it by electronic communication to the person’s electronic ad-

dress for service if the person has provided an electronic address for ser- vice.

(3) A summons must,— (a) if it is to be served by personal delivery, be served at least 48 hours be-

fore the attendance of the witness is required: (b) if it is to be served by post, be served at least 10 days before the attend-

ance of the witness is required: (c) if it is to be served by electronic communication, be served at least 48

hours before the attendance of the witness 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. (5) A summons that is sent by electronic communication is treated as having been

served not later than 2 days after the date on which it is sent.

235 Witnesses’ fees, allowances, and expenses (1) A witness appearing before the Commissioner under a summons is entitled to

be paid witnesses’ fees, allowances, and expenses in accordance with the scales prescribed by regulations under the Criminal Procedure Act 2011.

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

236 Offence of failing to comply with summons (1) A person summoned to attend before the Commissioner 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 Commis-

sioner; or (e) does not provide any documents, things, or information that the sum-

mons requires the person to provide. (2) A person who commits an offence against this section is liable on 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 235 have not been paid or tendered to him or her.

Fees and other money paid under Act

237 Fees and penalties payable under Act or regulations (1) Fees and penalties must be paid for any matter arising under this Act if re-

quired by this Act or by the regulations. (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) Fees for international applications may, in accordance with New Zealand’s ob- ligations under the Patent Cooperation Treaty, be collected by the Commis- sioner on behalf of— (a) the International Bureau; or (b) any international searching authority that has been approved, for the pur-

poses of this subsection, by the Minister as an appropriate authority on whose behalf the Commissioner may collect those fees.

Compare: 1953 No 64 s 115(1), (3)

238 Payment and application of fees and other money paid under this Act (1) All fees and other money required to be paid by this Act or the regulations

must be paid to the Commissioner (unless this Act or the regulations require otherwise).

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

(3) 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 Commis- sioner, and all money so refunded may be paid out of public money without further appropriation than this Act.

(4) Any amount of a 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.

(5) 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)

Miscellaneous

239 Protection of Royal arms, etc The grant of a patent does not in itself authorise the patentee to use or place on a patented product any representation specified in sections 12 to 15 of the Flags, Emblems, and Names Protection Act 1981 (which relate to the use of Royal, vice-regal, State, and heraldic emblems and names). Compare: 1953 No 64, s 107

240 Saving for certain Crown rights Nothing in this Act affects the right of the Crown or any person deriving title directly or indirectly from the Crown to sell or use articles forfeited under laws relating to customs or excise. Compare: 1953 No 64 s 117

241 Act does not apply to Tokelau This Act does not apply to Tokelau.

242 Application of Personal Property Securities Act 1999 Nothing in sections 17(2), 23, 150, 165, 166, and 194 to 204 affects the oper- ation of the Personal Property Securities Act 1999. Compare: 1953 No 64 s 85A

Subpart 5—Regulations

243 Regulations (1) The Governor-General may, by Order in Council, make regulations for all or

any of the following purposes:

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Patent applications and the granting of patents (a) prescribing procedures, requirements, and other matters, not inconsistent

with this Act, in respect of patent applications and the granting of pat- ents under this Act, including— (i) requiring patent applications, specifications, and any other docu-

ments relating to patent applications or specifications to be filed, made, or otherwise provided to the Commissioner in a prescribed manner:

(ii) requiring those patent applications, specifications, and documents to be dealt or proceeded with in a prescribed manner:

(iii) providing for further information or documents to be filed or otherwise provided to the Commissioner in the prescribed manner, in relation to any of those patent applications, specifications, or documents:

(iv) providing for the procedure to be followed in connection with the division of a patent application, specification, or other document into 2 or more applications, specifications, or documents:

(v) providing for the procedure to be followed in connection with the merging of separate patent applications, specifications, or docu- ments:

(vi) providing for the Commissioner to direct that patent applications, specifications, or documents filed under this Act be treated as having been filed on a different date from the date on which those patent applications, specifications, or other documents were actu- ally filed:

Applications, requests, notices, and proceedings (b) requiring any applications, requests, or notices under this Act to be made

or given in a prescribed manner: (c) providing for the procedure to be followed in connection with any appli-

cation, request, or notice under this Act, or in connection with any op- position, re-examination, revocation, or other proceeding before the Commissioner, and for authorising the rectification of irregularities of procedure:

(d) regulating the making of applications, requests, or notices under this Act by agents, and prescribing classes of persons whom the Commissioner may refuse to recognise as agents: Declarations as to inventor

(e) requiring a declaration concerning the inventor of an invention to be pro- vided in prescribed cases with the complete specification or within the prescribed period after the filing of the complete specification:

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Matters under Commissioner’s direction or control (f) providing for all matters placed under the direction or control of the

Commissioner by this Act or the regulations, including— (i) providing for the Commissioner to extend time limits under the

regulations or waive requirements of the regulations: (ii) regulating applications for, oppositions to, and the granting of ex-

tensions of time limits by the Commissioner under this Act, in- cluding providing for the protection of persons who have in good faith begun to exploit an invention for which an application for an extension is made:

(iii) providing for the manner in which a reasonable opportunity to be heard must be given to persons:

(iv) providing for how statutory declarations for proceedings before the Commissioner must be made and given:

(v) providing for the Commissioner to destroy documents and infor- mation provided to him or her in connection with any application, request, or notice that is abandoned, void, or otherwise inactive for the prescribed period:

Micro-organisms (g) providing for the procedure to be followed in connection with the depos-

it for the purposes of this Act of micro-organisms with prescribed depos- itary institutions, the furnishing of samples of micro-organisms by those institutions, and requests for those samples:

(h) prescribing matters for the purposes of sections 42 to 44: Patent Cooperation Treaty

(i) carrying out, or giving effect to, New Zealand’s obligations under the Patent Cooperation Treaty:

(j) setting out the English text of the Patent Cooperation Treaty or the Treaty regulations as in force for New Zealand: Budapest Treaty

(k) carrying out, or giving effect to, New Zealand’s obligations under the Budapest Treaty:

(l) setting out the English text of the Budapest Treaty as in force for New Zealand: Patents register

(m) prescribing procedures, requirements, and other matters, not inconsistent with this Act, for the patents register, including matters relating to— (i) the operation of the register: (ii) access to and search of the register:

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(iii) the location of, and hours of access to, the register: (ma) regulating the manner in which the Commissioner may alter information

in the patents register under section 202A, including prescribing proced- ures, requirements, and other matters in respect of an alteration: Journal

(n) prescribing the manner in which something must be published in the journal: Fees and penalties

(o) 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 or any provisions of the Patents Act 1953 or Patents Regulations 1954 that are preserved by section 247(2) or 248:

(p) prescribing the period for the payment of a renewal fee or maintenance fee:

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

(r) providing for the filing, serving, or giving of notices or other documents, or classes of notices or other documents, by an electronic method or any other method (including by making those notices or documents available to a person on an Internet site and for the person to be directly alerted to them by means of a notice to the person’s last known electronic address or any other specified means), when notices or documents are treated as received under that method, and any other related matters:

(s) providing that specified references to this Act (or to specified terms or matters) must be read as including references to the Patents Act 1953 (or to corresponding specified terms or matters under the Patents Act 1953) for the purposes of section 264:

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

(2) The structure of the fee system under this Act prescribed by regulations under subsection (1) may be such that the renewal and maintenance fees— (a) recover a share of the costs incurred by the Commissioner in performing

his or her functions under this Act or the Patents Act 1953; and (b) recover those costs at a level that provides an appropriate incentive (hav-

ing regard to the purpose of this Act set out in section 3(a)) for appli- cants to let patent applications become void or abandoned and patentees to let patents lapse if they do not receive, or will not receive, sufficient benefit from having the patent.

Compare: 1953 No 64, ss 93A(7), 96(5), 114

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Reprinted as at 14 September 2017 Patents Act 2013 Part 5 s 246

Section 243(1)(ma): inserted, on 13 May 2016, by section 41 of the New Zealand Business Number Act 2016 (2016 No 16).

244 Supplementary empowering provision (1) For the purposes of this Act, the power to make regulations under section 243

or 245 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 docu-

ments 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) prescribe the electronic or other delivery method that must be used in

connection with the thing: (f) provide for the Commissioner to determine any of the matters in para-

graphs (a) to (d): (g) prescribe that fees must be paid in connection with doing the thing.

(2) Any regulations made under section 243, this section, or section 245 may pre- scribe, or provide for the Commissioner to determine, different or additional procedures, requirements, or matters in relation to different classes of applica- tions, requests, notices, or other matters.

245 Regulations providing for transitional matters and orderly implementation of Act [Repealed] Section 245: repealed, on the close of 13 September 2017, by section 245(2).

246 Orders in Council as to convention countries For the purpose of giving effect to any international agreement or arrangement to which New Zealand is a party or that applies to New Zealand, the Governor- General may, by Order in Council, declare that any entity specified in the order that is a party to the agreement or arrangement or to which the agreement or arrangement applies (whether a State, part of a State, a territory for whose international relations a State is responsible, a political union, an international organisation, or any other entity) is, for the purposes of all or any of the provi- sions of this Act, a convention country.

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Reprinted as at Part 5 s 247 Patents Act 2013 14 September 2017

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

247 Repeal of Patents Act 1953 and consequential revocations (1) All of the provisions of the Patents Act 1953 are repealed. (2) However, the Patents Regulations 1954 are not consequentially revoked (and

may continue to be amended or revoked under section 114 of the Patents Act 1953).

(3) The Patents (Patent Cooperation Treaty) Regulations 1992 (SR 1992/316) are consequentially revoked. Section 247(1): amended, on 24 February 2017, by section 8 of the Patents (Trans-Tasman Patent At- torneys and Other Matters) Amendment Act 2016 (2016 No 89).

248 Preservation of patent attorney provisions [Repealed] Section 248: repealed, on 24 February 2017, by section 8 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

249 Consequential amendments to other enactments [Repealed] Section 249: repealed, on 24 February 2017, by section 8 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

250 Preservation of various regulations and orders (1) An Order in Council made under section 77 of the Patents Act 1953 that is in

force immediately before the commencement of this section— (a) continues in force, despite section 247, as if made under this Act: (b) may be amended or revoked as if made under this Act.

(2) The Patents (United States of America) Regulations 1956 (SR 1956/159)— (a) continue in force, despite section 247, as if made under this Act (but

with the amendments made by section 249): (b) apply despite any inconsistency with the provisions of this Act: (c) may be amended or revoked as if section 81 of the Patents Act 1953

were still in force.

251 Validation of fees (1) All fees prescribed under the Patents Act 1953 that relate to the registration of

patent attorneys or prescribed examinations under that Act must be taken to be and always to have been lawfully imposed.

(2) All money received by the Commissioner from the fees referred to in subsec- tion (1) must be taken to be and always to have been lawfully collected.

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Reprinted as at 14 September 2017 Patents Act 2013 Part 5 s 254

252 Validation of priority date for Treaty applications (1) This section applies to a Treaty application to which the Patents Act 1953 ap-

plies or applied that claims the priority, under Article 8 of the Patent Cooper- ation Treaty, of an earlier application made in New Zealand.

(2) The claim to priority by the application is validated and must be taken to be, and always to have been, lawful to the extent that it would have been valid under the Patents Act 1953 if New Zealand had been a convention country for the purposes of that Act.

(3) Nothing in subsection (2) affects a claim to priority by an application that is the subject of a proceeding commenced in a court before 30 March 2010.

Transitional provisions for patents and patent applications

253 Outline of transitional provisions for patents (1) The general scheme and effect of the transitional provisions for patents on and

from the commencement of Part 3 of this Act (commencement) is as follows: (a) this Act applies to patents granted under the Patents Act 1953 (but pat-

ents retain their existing key dates, term, and grounds for revocation): (b) patent applications made under the Patents Act 1953 continue to be dealt

with under that Act unless a complete specification is filed on or after commencement and, in this case, the complete specification may be filed only under this Act and this Act then applies to the patent application:

(c) Treaty applications— (i) continue to be dealt with under the Patents Act 1953 if the appli-

cant has fulfilled the applicant’s obligations under Article 22(1) or 39(1)(a) of the Patent Cooperation Treaty before commencement; and

(ii) must be dealt with under this Act if the applicant did not fulfil those obligations before that time:

(d) there are particular transitional provisions for post-dated applications and divisional applications.

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

254 Transitional provision for patents granted under Patents Act 1953 (1) This Act applies to a patent granted under the Patents Act 1953 as if it were

granted under this Act. (2) However,—

(a) the patent retains its original date of filing of the patent application, patent date (that is the date of filing of the complete specification), prior- ity date or dates, date of the publication of the accepted complete speci-

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Reprinted as at Part 5 s 255 Patents Act 2013 14 September 2017

fication, date that the patent was granted, and date that the next renewal fee was due under the Patents Act 1953; and

(b) the patent retains its existing term; and (c) the next renewal fee (after this section comes into force) must be paid

when due in accordance with the Patents Act 1953 but, after that due date, renewal fees become due in accordance with this Act; and

(d) on a re-examination of the patent application and the complete specifica- tion under section 95, the grounds that a person may specify in a request for re-examination, and that the Commissioner may consider and report on, are the grounds in section 41(1) of the Patents Act 1953 (rather than the grounds in section 114 of this Act); and

(e) the Commissioner or the court may revoke the patent under this Act only on the grounds set out in section 41(1) or (3) of the Patents Act 1953, and those grounds are available as grounds of defence in a proceeding for the infringement of the patent (rather than the grounds in section 114 of this Act); and

(f) section 146 of this Act does not apply; and (g) in relation to any existing endorsement of the patent under section 44 of

the Patents Act 1953,— (i) the repeals in section 247 do not affect the endorsement; and (ii) sections 44 and 45 of the Patents Act 1953 continue to apply to

the patent for the purposes of the endorsement, as if sections 247 to 249 were not in force (and accordingly, renewal fees remain at one-half of the fees otherwise payable under this Act while the patent is so endorsed).

255 Patent applications made under Patents Act 1953 continue under that Act (1) The Patents Act 1953 (and the regulations, orders, directions, and other matters

made under it) continues to apply, as if sections 247 to 249 were not in force, for the purposes of— (a) a patent application made under that Act before the commencement of

Part 3 of this Act: (b) the bringing and completion of any application, request, notice, or other

proceeding relating to that application (whether commenced before or after the commencement of Part 3 of this Act).

(2) Any reference in any other enactment to a repealed provision of the Patents Act 1953 (or a revoked provision of any regulations made under it) continues to apply for the purposes of subsection (1) as if the reference had not been re- pealed or amended by this Act.

(3) Section 254 applies to any patent granted under the Patents Act 1953 in respect of that application.

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Reprinted as at 14 September 2017 Patents Act 2013 Part 5 s 258

(4) This section is subject to sections 256, 257, and 259.

256 Patents Act 1953 ceases to apply to patent application if complete specification later filed

(1) Despite section 255,— (a) a complete specification may not be filed under the Patents Act 1953 on

or after the commencement of Part 3 of this Act (unless section 258 ap- plies to the complete specification); and

(b) the complete specification must instead comply with, and be filed under, this Act; and

(c) on and from the date on which the complete specification is filed, this Act applies in respect of the patent application (and any application, re- quest, notice, or other proceeding relating to it) as if it were made under this Act (including as to the priority date).

(2) Subsection (1) applies whether the complete specification is filed for one of the following reasons or any other reason: (a) only a provisional specification was filed before that commencement; or (b) the original complete specification was directed (whether before or after

that commencement) to be treated as a provisional specification under section 9(4) of the Patents Act 1953.

(3) If a complete specification is provided for 2 or more patent applications that are cognate or of which one is a modification of another, this section applies to those 2 or more patent applications.

257 This Act applies if patent application under Patents Act 1953 is post-dated If a patent application made under the Patents Act 1953 is post-dated to a date that is on or after the commencement of Part 3 of this Act, this Act applies to the patent application as if the patent application had been made under this Act.

258 Patents Act 1953 applies to divisional applications dated before commencement

(1) This section applies to a fresh patent application that is made on or after the commencement of Part 3 of this Act (and any complete specification that is filed at the same time) if— (a) the fresh patent application is made for any part of the subject matter of

a patent application to which the Patents Act 1953 applies under section 255 or 259; and

(b) the fresh patent application is given a date before that commencement. (2) The fresh patent application must be treated as a patent application made under

the Patents Act 1953 (and section 255 applies to it) and the complete specifica- tion must be treated as having been filed on the date given to the fresh patent application.

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Reprinted as at Part 5 s 259 Patents Act 2013 14 September 2017

259 Which Act applies to Treaty applications (1) The Patents Act 1953 (and the regulations, orders, directions, and other matters

made under it) continues to apply, as if sections 247 to 249 were not in force, for the purposes of— (a) a Treaty application if the applicant fulfilled the applicant’s obligations

under Article 22(1) or 39(1)(a) of the Patent Cooperation Treaty before the commencement of Part 3 of this Act:

(b) the bringing and completion of any application, request, notice, or other proceeding relating to that application (whether commenced before or after the commencement of Part 3 of this Act).

(2) Any reference in any other enactment to a repealed provision of the Patents Act 1953 (or a revoked provision of any regulations made under it) continues to apply for the purposes of subsection (1) as if the reference had not been re- pealed or amended by this Act.

(3) Section 254 applies to any patent granted under the Patents Act 1953 in respect of that application.

(4) However, this Act applies to a Treaty application if the applicant did not fulfil those obligations before the commencement of Part 3.

Transitional provisions for other applications, notices, and requests

260 Transitional provision for other applications, notices, or requests (1) The Patents Act 1953 (and the regulations, orders, directions, and other matters

made under it) continues to apply, as if sections 247 to 249 were not in force, for the purposes of completing any application, notice, or request that was re- ceived by the Commissioner or the court, or completing any other proceeding commenced, before the commencement of Part 3 of this Act.

(2) Subsection (1) does not apply to a patent application, or an application, notice, request, or other proceeding relating to a patent application, to which any of sections 255 to 259 apply.

(3) If the Patents Act 1953 continues to apply to an application, notice, or request under this section, any reference in any other enactment to a repealed provision of the Patents Act 1953 (or a revoked provision of any regulations made under it) continues to apply for that purpose as if the reference had not been repealed or amended by this Act.

Transitional provision for matters in force on commencement

261 Transitional provision for orders, directions, and other matters in effect on transition to new law

(1) Any order, direction, or other matter made under a repealed provision of the Patents Act 1953, and that is in effect immediately before its transition takes

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Reprinted as at 14 September 2017 Patents Act 2013 Part 5 s 264

effect under subsection (3), continues to have effect as if it had been made under the provision of this Act— (a) that, with or without modification, replaces, or that corresponds to, the

provision of the Patents Act 1953 under which it was made; and (b) under which it could be made.

(2) The order, direction, or other matter may be amended or revoked as if it had been made under the provision of this Act that replaces, or that corresponds to, the provision of the Patents Act 1953 under which it was made.

(3) The transition of an order, direction, or other matter takes effect for the pur- poses of this section on the later of the following: (a) on the repeal of the provision under which the order, direction, or other

matter is made; or (b) if this Part provides, or regulations made under section 245 provide, that

the order, direction, or other matter continues to apply after the repeal of the provision under which it is made, when it ceases to so continue to apply.

Transitional provision for patents register

262 Transitional provision for patents register The register of patents kept under section 83 of the Patents Act 1953 continues to have effect as the patents register kept under section 194 of this Act.

Transitional provisions for offences and infringements

263 Transitional provision for offences and infringements The Patents Act 1953 (and the regulations, orders, directions, and other matters made under it) continues to apply (as if sections 247 to 249 were not in force) for the purpose of— (a) investigating any offence or infringement committed before the com-

mencement of this section: (b) commencing or completing any proceeding for any offence or infringe-

ment committed before the commencement of this section: (c) imposing a penalty or granting any relief or other remedy for any of-

fence or infringement committed before the commencement of this sec- tion.

Transitional provisions as to statutory references

264 Transitional provision as to statutory references to corresponding matters If provided by the regulations, a specified reference to this Act (or to a defined term or other matter in this Act) includes a reference to the Patents Act 1953

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Reprinted as at Part 5 s 265 Patents Act 2013 14 September 2017

(or to a corresponding or replaced specified term or matter under the Patents Act 1953) (for example, the regulations may specify that the reference in sec- tion 8(2) to another patent application includes, for the purpose of determining the prior art base under that section, a patent application made under the Pat- ents Act 1953).

265 Transitional provision as to repealed references to Commissioner, journal, or Patent Office Any reference to the Commissioner, the Journal, or the Patent Office in a pro- vision that is repealed or revoked but continues to apply to any matter under this subpart must be read as a reference to the Commissioner or journal under this Act or to IPONZ (as the case may be).

Transitional provisions for Commissioner and Assistant Commissioners

266 Transitional appointment of Commissioner and Assistant Commissioners (1) The persons holding office as the Commissioner and Assistant Commissioners

under the Patents Act 1953 are treated as having been appointed as the Com- missioner and Assistant Commissioners under this Act on the commencement of this subsection (and may hold both offices concurrently).

(2) The persons holding office as the Commissioner and Assistant Commissioners under the Designs Act 1953 continue to hold those offices despite the repeal and substitution of sections 3 and 4 of that Act.

267 Transitional power for Commissioner [Expired] Section 267: expired, on 14 September 2017, by section 267(3).

Part 6 Joint registration regime with Australia for patent attorneys Part 6: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016 (2016 No 89).

Preliminary provisions Heading: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016 (2016 No 89).

268 Purpose of this Part The purpose of this Part is to regulate the provision of patent attorney services by giving effect to the joint registration regime in accordance with the Arrange- ment. Section 268: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

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Reprinted as at 14 September 2017 Patents Act 2013 Part 6 s 269

269 Interpretation of this Part (1) In this Part, unless the context otherwise requires,—

Appeals Tribunal means the Administrative Appeals Tribunal established by section 5 of the Administrative Appeals Tribunal Act 1975 (Aust) Arrangement means the arrangement entitled the Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys signed in March 2013, as pub- lished by the Commissioner under section 272(2) Australian Patents Act means the Patents Act 1990 (Aust) (as amended by Schedule 4 of the Intellectual Property Laws Amendment Act 2015 (Aust)) Board means the body continued in existence as the Trans-Tasman IP Attor- neys Board by section 227A of the Australian Patents Act Code of Conduct means— (a) the code known as the Code of Conduct for Patent and Trade Marks At-

torneys 2013 made under the Australian Patents Act and the Trade Marks Act 1995 (Aust) by the Professional Standards Board for Patent and Trade Marks Attorneys (Aust); or

(b) the replacement for that code, or any subsequent code, that is issued by the Board under the joint registration regime

company means a company within the meaning of the Companies Act 1993 designated manager has the same meaning as in section 200A of the Austral- ian Patents Act Disciplinary Tribunal means the tribunal established by regulation 20.61 of the Patents Regulations 1991 (Aust) and to be known as the Trans-Tasman IP Attorneys Disciplinary Tribunal incorporated law firm has the same meaning as in section 6 of the Lawyers and Conveyancers Act 2006 incorporated patent attorney means a company that is registered as a patent attorney joint registration regime means the joint regime for patent attorneys to regis- ter and practise in Australia and New Zealand as constituted by— (a) Part 1 of Chapter 20 of the Australian Patents Act and any regulations

made for the purposes of that Part; and (b) this Part; and (c) any other Acts of the Parliament of Australia or New Zealand, and any

regulations made under them, that give effect to the Arrangement; and (d) the Arrangement lawyer has the same meaning as in section 6 of the Lawyers and Conveyancers Act 2006

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Reprinted as at Part 6 s 269 Patents Act 2013 14 September 2017

limited partnership means a limited partnership that is registered under sec- tion 51 of the Limited Partnerships Act 2008 ordinarily resident in New Zealand has the meaning given in section 270 patent attorney or attorney means an individual or a company that— (a) carries on business in New Zealand or Australia or both; and (b) undertakes patent attorney services patent attorney director, in respect of an incorporated patent attorney, means an individual who is both a registered patent attorney and a director of the com- pany patent attorney services means the undertaking of any of the following ser- vices in Australia or New Zealand, or both, for gain: (a) applying for or obtaining a patent in Australia or New Zealand or else-

where on behalf of another person; and (b) preparing or amending specifications or other documents for the pur-

poses of the patent law of Australia, New Zealand, or any other country on behalf of another person; and

(c) giving advice (other than of a scientific or technical nature) as to the val- idity of patents or their infringement—

and providing patent attorney services has a corresponding meaning professional misconduct means— (a) unsatisfactory professional conduct that involves a substantial or consis-

tent failure to reach reasonable standards of competence and diligence; or

(b) any other conduct, whether occurring in connection with practice as an attorney or otherwise, that shows that the attorney is not of good fame, integrity, and character; or

(c) any contravention of a law that is declared by the joint registration re- gime to be professional misconduct

registered patent attorney means an individual or a company that is regis- tered as a patent attorney under the joint registration regime unsatisfactory professional conduct includes conduct, in connection with practice as a registered patent attorney, that falls short of the standard of com- petence, diligence, and behaviour that a member of the public is entitled to ex- pect of an attorney.

(2) Any terms that are used but not defined in this Part, but defined in the joint registration regime, have the meanings given in that regime.

(3) A reference in, or in any regulations made under, this Part to a repealed Aus- tralian enactment is a reference to an Australian enactment that, with or with-

126

Reprinted as at 14 September 2017 Patents Act 2013 Part 6 s 271

out modification, replaces, or corresponds to, the Australian enactment re- pealed.

(4) Subsection (3) does not limit section 22 of the Interpretation Act 1999. Compare: 2010 No 108 s 5; Patents Act 1990 s 198, Schedule 1 (Aust); Patents Regulations 1990 (Aust); Arrangement between the Government of Australia and the Government of New Zealand Re- lating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 1

Section 269: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

270 Meaning of ordinarily resident in New Zealand (1) For the purposes of this Part, an individual is taken to be ordinarily resident

in New Zealand if— (a) the individual has his or her home in New Zealand; or (b) New Zealand is the country of his or her permanent abode even though

he or she is temporarily absent from New Zealand. (2) However, the individual is taken not to be ordinarily resident in New Zealand if

he or she resides in New Zealand for a special or temporary purpose only. Section 270: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

Joint registration regime applies in New Zealand Heading: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016 (2016 No 89).

271 Patent attorneys must comply with joint registration regime (1) A person providing patent attorney services must be registered under, and com-

ply with, the joint registration regime. (2) Without limiting subsection (1), the following apply to a person who is ordinar-

ily resident in New Zealand: (a) no person may provide patent attorney services unless the person is a

registered patent attorney; and (b) a company may provide patent attorney services as long as the company

is an incorporated patent attorney; and (c) a partnership other than a limited partnership may provide patent attor-

ney services as long as at least 1 member of the partnership is a regis- tered patent attorney; and

(d) a limited partnership may not provide patent attorney services; and (e) the joint registration regime applies to the person and the person may be

registered as a patent attorney under the regime; and (f) a registered patent attorney must co-operate with a request for informa-

tion from the Board if the Board is investigating whether or not to com- mence proceedings against a registered patent attorney; and

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Reprinted as at Part 6 s 272 Patents Act 2013 14 September 2017

(g) acts or omissions in New Zealand of the person have the same effect for the purposes of the joint registration regime as if they were acts or omis- sions in Australia; and

(h) if the person’s registration as a patent attorney is suspended or cancelled under the Australian Patents Act, the person’s registration is suspended or cancelled (as the case may be) for the purposes of this Part; and

(i) the person must pay the fees to the designated manager that are pre- scribed under the joint registration regime.

Compare: 1953 No 64 s 103(1); 1997 No 60 s 17; Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 3.3

Section 271: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

272 Commissioner must provide information about joint registration regime (1) The Commissioner must provide information about the joint registration re-

gime on an Internet site maintained by or on behalf of the Commissioner, in- cluding information about— (a) the role of the designated manager (including registration requirements

and processes): (b) the role of the Board (including the Code of Conduct): (c) the consequences of professional misconduct and unsatisfactory profes-

sional conduct: (d) how a person in New Zealand may make a complaint to the Board about

a registered patent attorney in New Zealand: (e) the role and decisions of the Disciplinary Tribunal: (f) how the Trans-Tasman Proceedings Act 2010, the Evidence Act 2006,

and the Trans-Tasman Proceedings Act 2010 (Aust) apply to the joint registration regime:

(g) the role of the Appeals Tribunal: (h) the application of the Administrative Decisions (Judicial Review) Act

1977 (Aust). (2) The Commissioner must publish, on an Internet site maintained by or on behalf

of the Commissioner, a copy of the Arrangement and Internet links to the Acts and regulations that comprise the joint registration regime. Section 272: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

273 Interface with Lawyers and Conveyancers Act 2006 (1) Section 271 does not prohibit lawyers—

(a) from providing legal services; or

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Reprinted as at 14 September 2017 Patents Act 2013 Part 6 s 274

(b) from taking part in proceedings under the Patents Act 2013 to the extent that they were entitled to do so before the commencement of this Part.

(2) However, this section does not limit sections 277(1) and 279. Compare: 1953 No 64 ss 101, 103(5)

Section 273: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

Offences and penalties Heading: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016 (2016 No 89).

274 Offences: unregistered persons practising, etc, as patent attorneys Individuals

(1) An individual commits an offence, and is liable on conviction to a fine not ex- ceeding $6,000, if— (a) the individual carries on business, practises, or acts as a patent attorney;

and (b) the individual is not a registered patent attorney or a lawyer.

(2) An individual commits an offence, and is liable on conviction to a fine not ex- ceeding $6,000, if— (a) the individual describes himself or herself, or holds himself or herself

out, or permits himself or herself to be described or held out, as a patent attorney or an agent for obtaining patents; and

(b) the individual is not a registered patent attorney. Companies

(3) A company commits an offence, and is liable on conviction to a fine not ex- ceeding $30,000, if— (a) the company carries on business, practises, or acts as a patent attorney;

and (b) the company is not a registered patent attorney or an incorporated law

firm. (4) A company commits an offence, and is liable on conviction to a fine not ex-

ceeding $30,000, if— (a) the company describes itself, or holds itself out, or permits itself to be

described or held out, as a patent attorney or an agent for obtaining pat- ents; and

(b) the company is not a registered patent attorney. Partnerships other than limited partnerships

(5) A partner in a partnership commits an offence, and is liable on conviction to a fine not exceeding $6,000, if—

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Reprinted as at Part 6 s 275 Patents Act 2013 14 September 2017

(a) the partner carries on business, practises, or acts as a patent attorney; and (b) none of the partners in the partnership is a registered patent attorney or a

lawyer. (6) A partner in a partnership commits an offence, and is liable on conviction to a

fine not exceeding $6,000, if— (a) the partner describes the partnership, or holds the partnership out, or per-

mits the partnership to be described or held out, as a patent attorney or an agent for obtaining patents; and

(b) none of the partners in the partnership is a registered patent attorney or a lawyer.

Limited partnerships (7) A limited partnership commits an offence, and is liable on conviction to a fine

not exceeding $30,000, if the limited partnership carries on business, practises, or acts as a patent attorney.

(8) A limited partnership commits an offence, and is liable on conviction to a fine not exceeding $30,000, if the limited partnership describes itself, or holds itself out, or permits itself to be described or held out, as a patent attorney or an agent for obtaining patents. Interpretation

(9) For the purposes of this Part, a person is taken to carry on business, practise, or act as a patent attorney if, and only if, the person does, or undertakes to do, pat- ents work in New Zealand.

(10) In this Part, patents work means 1 or more of the following done, on behalf of someone else, for gain: (a) applying for or obtaining patents in New Zealand or anywhere else: (b) preparing specifications or other documents for the purposes of this Act

or the patent law of another country: (c) giving advice (other than advice of a scientific or technical nature) about

the validity, or infringement, of patents. Compare: Patents Act 1990 ss 201, 201A (Aust); Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 3.3(e)

Section 274: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

275 Exceptions for legal representatives and employees Exception: legal representatives of deceased patent attorneys

(1) Section 274(1), (3), and (5) does not apply in relation to the business of a regis- tered patent attorney who is deceased if the business—

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Reprinted as at 14 September 2017 Patents Act 2013 Part 6 s 276

(a) is carried on, within 3 years after the death of the patent attorney or any further time allowed by a court, by the legal representative of the de- ceased registered patent attorney; and

(b) is managed by a registered patent attorney on behalf of the legal repre- sentative.

Exception: employees (2) Section 274(1) and (2) does not apply in relation to anything done by a person,

as an employee,— (a) for his or her employer; or (b) if the person’s employer is a member of a related company group, for an-

other member of the group. (3) Section 274(3) and (4) does not apply in relation to anything done by a member

of a related company group for another member of the group. Evidential burden

(4) The defendant must adduce or point to evidence that suggests a reasonable pos- sibility that a matter in this section exists or does not exist, in order to rely on this section. Whether company is related to another company

(5) In this section, related company group means a group of companies that com- prises a company and its related companies within the meaning of section 2(3) of the Companies Act 1993. Compare: Patents Act 1990 s 201 (Aust)

Section 275: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

276 Incorporated patent attorney must have patent attorney director Offence: failing to notify lack of patent attorney director

(1) An incorporated patent attorney commits an offence, and is liable on convic- tion to a fine not exceeding $30,000, if the incorporated patent attorney— (a) does not have a patent attorney director; and (b) does not notify the designated manager of that within 7 days. Offence: acting after 7 days without patent attorney director

(2) An incorporated patent attorney commits an offence, and is liable on convic- tion to a fine not exceeding $30,000, if the incorporated patent attorney— (a) does not have a patent attorney director; and (b) has not had a patent attorney director during the previous 7 days; and (c) carries on business, practises, or acts as a patent attorney. Compare: Patents Act 1990 s 201B (Aust); Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 3.3(e)

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Reprinted as at Part 6 s 277 Patents Act 2013 14 September 2017

Section 276: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

277 Documents prepared by lawyers (1) No lawyer may prepare a specification or a document relating to an amendment

of a specification (or make a representation, or permit another person to repre- sent, that the lawyer is entitled to do so) unless the lawyer is— (a) also a registered patent attorney; or (b) acting under the instructions of a registered patent attorney; 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 conviction to a fine not exceeding $6,000. Compare: Patents Act 1990 s 202 (Aust); Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 3.3(e)

Section 277: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

278 Documents prepared by member of partnership (1) A partner in a partnership (other than a limited partnership) who is not a regis-

tered patent attorney must not prepare a specification, or a document relating to an amendment of a specification, unless— (a) the person is acting under the instructions or supervision of a registered

patent attorney; or (b) the amendment has been directed by an order under section 89.

(2) A partner in a limited partnership who is not a registered patent attorney must not prepare a specification or a document relating to an amendment of a speci- fication.

(3) A person who contravenes subsection (1) or (2) commits an offence and is liable on conviction to a fine not exceeding $6,000. Compare: Patents Act 1990 s 202A (Aust); Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 3.3(e)

Section 278: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

279 Documents prepared by incorporated patent attorneys and incorporated law firms An incorporated patent attorney or an incorporated law firm commits an of- fence, and is liable on conviction to a fine not exceeding $30,000, if— (a) an employee or a member of the incorporated patent attorney or incorp-

orated law firm prepares a specification or a document relating to an amendment of a specification; and

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Reprinted as at 14 September 2017 Patents Act 2013 Part 6 s 281

(b) the employee or member is not a registered patent attorney; and (c) the specification or document is not prepared—

(i) under the instructions or supervision of an individual who is a registered patent attorney; or

(ii) as directed by an order under section 89. Compare: Patents Act 1990 s 202B (Aust); Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 3.3(e)

Section 279: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

280 Attendance at patent attorney’s office A registered patent attorney commits an offence, and is liable on conviction to a fine not exceeding $6,000, if— (a) the registered patent attorney practises, acts, or holds himself, herself, or

itself out as practising or acting, as a patent attorney, at an office or place of business where specifications or other documents are prepared for the purposes of this Act; and

(b) there is not an individual who is a registered patent attorney— (i) in regular attendance at that office or place; and (ii) in continuous charge of the patents work done at that office or

place. Compare: Patents Act 1990 s 203 (Aust); Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 3.3(e)

Section 280: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

281 Time limit for filing charging documents for offences Despite anything to the contrary in section 25 of the Criminal Procedure Act 2011, the limitation period in respect of an offence under this Part ends on the date that is 5 years after the date on which the offence was committed. Compare: Patents Act 1990 s 204 (Aust)

Section 281: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

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Reprinted as at Part 6 s 282 Patents Act 2013 14 September 2017

Provisions that apply if Disciplinary Tribunal and Appeals Tribunal sit in Australia

Heading: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016 (2016 No 89).

282 Provisions that apply if Tribunals sit in Australia (1) The purpose of this section is to give the Disciplinary Tribunal and the Appeals

Tribunal powers in respect of a person or persons that ordinarily reside in New Zealand to enable proceedings to be conducted in Australia.

(2) For that purpose, the Disciplinary Tribunal is deemed to have been declared by the Minister of Justice to be an Australian court under section 152 of the Evi- dence Act 2006.

Examples Disciplinary Tribunal subpoenas may be served in New Zealand. The Disciplinary Tribunal may take evidence, and receive related examination and submissions, by audio link or audiovisual link from New Zealand.

(3) The Disciplinary Tribunal and the Appeals Tribunal are declared to be tribunals to which subpart 5 of Part 2 of the Trans-Tasman Proceedings Act 2010 ap- plies, and all decisions of those Tribunals that are made in connection with pro- ceedings to review decisions made under the joint registration regime are de- clared to be orders to which that subpart applies.

Example Certain Tribunal orders may be recognised and enforced in New Zealand.

Compare: Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 3.3(c)

Section 282: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

Provisions that apply if Disciplinary Tribunal sits in New Zealand Heading: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016 (2016 No 89).

283 Provisions that apply if Disciplinary Tribunal sits in New Zealand (1) The Disciplinary Tribunal may, at a sitting of that Tribunal in New Zealand that

involves a patent attorney that is ordinarily resident in New Zealand, exercise all the powers of that Tribunal as if it were a sitting in Australia.

(2) Without limiting subsection (1), the Patents Regulations 1991 (Aust) that are applicable in relation to proceedings in Australia apply to the practice and pro- cedure of the Disciplinary Tribunal at any sitting of that Tribunal in New Zea- land.

(3) Without limiting subsection (1), the Disciplinary Tribunal may, at any sitting of the Tribunal in New Zealand,—

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Reprinted as at 14 September 2017 Patents Act 2013 Part 6 s 285

(a) direct that the hearing or any part of the hearing be held in private: (b) require any person to leave the Tribunal: (c) prohibit or restrict the publication of evidence or the name of any party

or any witness. (4) Nothing in subsection (2) or (3) applies in relation to—

(a) the prosecution of any person for an offence committed as a witness; or (b) the enforcement or execution of any judgment, order, injunction, writ, or

declaration given, made, or granted by the Disciplinary Tribunal. (5) A decision made under subsection (3) may be enforced by a Judge of the High

Court of New Zealand who, for that purpose, has and may exercise the powers, including the power to punish for contempt, that would be available to enforce the decision if it were an order that had been made by a Judge of the High Court in New Zealand. Compare: 1908 No 89 s 56J; Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 3.3(c)

Section 283: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

284 Issue of summons by Disciplinary Tribunal (1) This section applies if the Disciplinary Tribunal, by instrument in writing

signed by the President of the Disciplinary Tribunal, issues a summons that re- quires a person in New Zealand to appear before the Tribunal to give evidence and to produce documents or articles for the purposes of a sitting of the Tribu- nal in New Zealand.

(2) The summons may be served on a person in New Zealand by leaving a copy of the summons with that person personally, together with a statement setting out the rights and obligations of that person, including information as to the man- ner in which application may be made to that Tribunal to have the summons set aside.

(3) A person who has been served with the summons under subsection (1) may not be compelled to comply with the summons unless, at the time of service of the summons or at some other reasonable time before the hearing, allowances and travelling expenses or vouchers sufficient to enable that person to comply with the summons are tendered or paid to that person. Compare: 1908 No 89 s 56K

Section 284: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

285 Failure of witness to comply with summons (1) This section applies if the Disciplinary Tribunal, by instrument in writing

signed by the President of the Disciplinary Tribunal, issues a certificate stating

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Reprinted as at Part 6 s 286 Patents Act 2013 14 September 2017

that a person named in the certificate has failed to comply with a summons re- ferred to in section 284(1).

(2) The High Court may issue a warrant requiring any constable to arrest that per- son and bring that person before the court.

(3) The High Court may, on the appearance of that person before the court, impose a fine not exceeding $1,000 unless the court is satisfied that the failure to com- ply with the summons, the onus of proof of which lies with that person, should be excused.

(4) In determining whether the failure to comply with the summons should be ex- cused, the High Court may have regard to— (a) any matters that were not brought to the attention of the Disciplinary Tri-

bunal, if the High Court is satisfied that— (i) the Disciplinary Tribunal would have been likely to have set aside

the summons if those matters had been brought to the attention of that Tribunal; and

(ii) the failure to bring those matters to the attention of the Disciplin- ary Tribunal was not due to any fault on the part of the person al- leged to have failed to comply with the summons or was because of an omission by that person that should be excused; and

(b) any matters to which the High Court would have regard if the summons had been issued by the High Court.

(5) For the purposes of this section, but subject to subsection (4), a certificate from the Disciplinary Tribunal stating any of the following matters is conclusive evi- dence of the matters stated in it: (a) that the summons was issued by that Tribunal: (b) that the witness failed to comply with the summons: (c) the decision of that Tribunal, or any orders or findings of fact made by

that Tribunal, in relation to any application made to that Tribunal to have the summons set aside.

(6) Subject to subsection (4), no findings of fact made by the Disciplinary Tribunal on an application to that Tribunal to have the summons set aside may be chal- lenged by any person alleged to have failed to comply with the summons un- less the Tribunal was deliberately misled in making those findings of fact. Compare: 1908 No 89 s 56L

Section 285: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

286 Other provisions about proceedings (1) The provisions in subsection (2) apply with the following modifications if the

Disciplinary Tribunal sits in New Zealand:

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Reprinted as at 14 September 2017 Patents Act 2013 Part 6 s 287

(a) references to the Federal Court of Australia must be treated as references to the Disciplinary Tribunal:

(b) references to the court must be treated as references to the Disciplinary Tribunal:

(c) references to a Judge of the court must be treated as references to a member of the Disciplinary Tribunal:

(d) references to an Australian proceeding must be treated as references to a proceeding before the Disciplinary Tribunal in New Zealand.

(2) The provisions are the following provisions of the Judicature Act 1908: (a) section 56M(1)(a) and (2) (power to administer oaths in New Zealand): (b) section 56N (orders not subject to review): (c) section 56O (contempt): (d) section 56Q(1), (2)(a), (3)(a), and (4)(a) (privileges and immunities of

Judges, counsel, and witnesses). Section 286: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

Miscellaneous provisions Heading: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016 (2016 No 89).

287 Territorial scope and jurisdiction (1) A registered patent attorney who is ordinarily resident in New Zealand is with-

in the jurisdiction of the Disciplinary Tribunal and the Appeals Tribunal and must co-operate with an investigation by either Tribunal into his or her con- duct.

(2) This Part does not apply to a person or company that is part of the patent attor- ney profession of a country outside New Zealand if— (a) the person or company—

(i) is resident or incorporated in a country other than Australia or New Zealand; or

(ii) has a principal place of business for undertaking patent attorney services in a country other than Australia or New Zealand; and

(b) the patent attorney services provided by the person or company are in re- spect of the patent law of a country other than New Zealand or Australia.

Compare: 1961 No 43 s 7; Therapeutic Products and Medicines Bill 2006 cl 29; Arrangement be- tween the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 3.3(d)

Section 287: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

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Reprinted as at Part 6 s 288 Patents Act 2013 14 September 2017

288 Rights of patent attorney over documents and client property A registered patent attorney has the same right of lien over documents and property of a client as a lawyer or incorporated law firm, as the case may be, has. Compare: Patents Regulations 1991 (Aust) r 20.53

Section 288: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

289 Investigations under Australian Acts A member of the Disciplinary Tribunal who is ordinarily resident in New Zea- land must co-operate with an investigation that is undertaken under the Free- dom of Information Act 1982 (Aust) or the Privacy Act 1988 (Aust). Section 289: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

290 Regulations under this Part The Governor-General may, by Order in Council, make regulations for all or any of the following purposes: (a) prescribing matters that are necessary or desirable for the implementa-

tion of the Arrangement: (b) increasing or decreasing the fines for an offence under this Part to an

amount that is consistent with the fines that apply under the joint regis- tration regime after any alteration of the amount of penalty units under section 4AA of the Crimes Act 1914 (Aust):

(c) prescribing any other matters that are required or permitted by the joint registration regime to be prescribed:

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

Compare: Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 3.3(e), (f)

Section 290: inserted, on 24 February 2017, by section 5 of the Patents (Trans-Tasman Patent Attor- neys and Other Matters) Amendment Act 2016 (2016 No 89).

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Reprinted as at 14 September 2017 Patents Act 2013 Schedule 1AA

Schedule 1AA Transitional, savings, and related provisions

s 11A

Schedule 1AA: inserted, on 24 February 2017, by section 6 of the Patents (Trans-Tasman Patent At- torneys and Other Matters) Amendment Act 2016 (2016 No 89).

Part 1 Transitional and savings provisions arising from Patents (Trans-

Tasman Patent Attorneys and Other Matters) Amendment Act 2016

1 Existing patent attorneys (1) Subclause (2) applies to every person who, immediately before the commence-

ment of Part 6, is registered as a patent attorney under the Patents Act 1953. (2) The person is, immediately after the commencement of Part 6, a registered

patent attorney under the joint registration regime. Compare: Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 9.1

2 Existing training and minimum knowledge requirements Clause 9.2 to 9.7 of the Arrangement applies to persons in New Zealand. Compare: Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 9.2–9.7

3 Existing disciplinary proceedings (1) Despite section 8 of the Patents (Trans-Tasman Patent Attorneys and Other

Matters) Amendment Act 2016, the disciplinary regime under section 102 of the Patents Act 1953 continues to apply after the commencement of Part 6 for actions and behaviours of patent attorneys in New Zealand before the com- mencement of Part 6.

(2) The Commissioner must advise the designated manager if a New Zealand court determines that a person should not practise as a patent attorney in New Zea- land. Compare: Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 9.12

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Schedule Consequential amendments

s 249

Part 1 Amendments to other Acts

Administration Act 1969 (1969 No 52) Section 67(1): omit “section 86 of the Patents Act 1953” and substitute “section 167 of the Patents Act 2013”.

Commerce Act 1986 (1986 No 5) Section 45(2)(a): repeal and substitute:

(a) the Patents Act 2013; or Section 45(3)(a): omit “Patents Act 1953” and substitute “Patents Act 2013”.

Copyright Act 1994 (1994 No 143) Section 74(1): repeal and substitute: (1) The making of any object in 3 dimensions (including, subject to subsection (2),

a copy in 2 dimensions reasonably required for the making of the object) does not infringe copyright in a literary or artistic work, if the work or a copy of it forms part of— (a) a patent specification that—

(i) is open to public inspection in the Intellectual Property Office of New Zealand in respect of a New Zealand patent that, for any rea- son, has ceased to have effect; and

(ii) is used for the purpose of making the object; or (b) a representation or specimen of a design that—

(i) is open to public inspection in the Intellectual Property Office of New Zealand in respect of a design for which registered protec- tion in New Zealand has ceased; and

(ii) is used for the purpose of making the object. Section 74(3): repeal and substitute: (3) If a patent that has ceased to have effect is restored by an order made under

subpart 12 of Part 3 of the Patents Act 2013, nothing done under subsection (1) in the period beginning with the day on which the patent ceased to have effect and ending with the close of the day on which the order is made constitutes an infringement of copyright in any literary or artistic work or copy of the work forming part of the patent specification.

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Reprinted as at 14 September 2017 Patents Act 2013 Schedule

Crown Proceedings Act 1950 (1950 No 54) Section 7(1): omit “Patents Act 1953” and substitute “Patents Act 2013”. Section 7(2): repeal and substitute: (2) Nothing in subsection (1) or in any other provision of this Act affects the rights

of any Government Department under subpart 6 of Part 4 of the Patents Act 2013 or sections 16 to 18 of the Designs Act 1953.

Dairy Industry Restructuring Act 2001 (2001 No 51) Section 108(5): omit “Patents Act 1953” and substitute “Patents Act 2013”.

Designs Act 1953 (1953 No 65) Definition of Journal in section 2(1): repeal and substitute:

Journal means the journal published under section 206 of the Patents Act 2013 Section 2(1): insert in its appropriate alphabetical order:

Ministry means the department of State that, with the authority of the Prime Minister, is for the time being responsible for the administration of this Act

Sections 3 and 4: repeal and substitute:

3 Commissioner and Assistant Commissioners of Designs (1) The chief executive of the Ministry must appoint, under the State Sector Act

1988,— (a) the Commissioner of Designs; and (b) as many Assistant Commissioners of Designs as may be necessary for

the purposes of this Act. (2) These persons are employees of the Ministry, and those appointments may be

held separately or in conjunction with any other office in the Ministry.

4 Powers of Assistant Commissioners of Designs (1) An Assistant Commissioner of Designs has the functions, duties, and powers of

the Commissioner under this Act (other than the power to delegate under sec- tion 4A), but is subject to the control of the Commissioner.

(2) The fact that an Assistant Commissioner exercises those functions, duties, and powers is conclusive evidence of the authority to do so.

4A Power of Commissioner to delegate (1) The Commissioner may delegate to any person, either generally or particularly,

any of the Commissioner’s functions, duties, and powers (except this power of delegation).

(2) A delegation— (a) must be in writing; and

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Designs Act 1953 (1953 No 65)—continued (b) may be made subject to any restrictions and conditions that the Commis-

sioner thinks fit; and (c) is revocable at any time, in writing; and (d) does not prevent the performance or exercise of a function, duty, or

power by the Commissioner. (3) A person to whom any functions, duties, or powers are delegated may perform

and exercise them in the same manner and with the same effect as if they had been conferred directly by this Act and not by delegation.

(4) A person who appears to act under a delegation is presumed to be acting in ac- cordance with its terms in the absence of evidence to the contrary.

(5) Any reference in this Act or the regulations made under this Act to the Com- missioner includes a reference to the delegate in respect of anything delegated to that person.

4B Liability of Commissioner and others The Commissioner, an Assistant Commissioner, or any other person acting on behalf of the Commissioner is not personally liable for any act or omission done in good faith in the performance or intended performance of the Commis- sioner’s functions, duties, or powers.

Section 7(1): omit “at the Patent Office” and substitute “with the Commissioner”. Section 9(2): omit “at the Patent Office” and substitute “by the public”. Section 25(1): omit “at the Patent Office”. Section 25(2): omit “sealed with the seal of the Patent Office”. Section 29(1): omit “the Patent Office” and substitute “the Commissioner”. Section 30(1), (2), and (4): omit “at the Patent Office” and substitute in each case “by the public”. Section 32(2): repeal and substitute: (2) A copy of, or an extract from, any entry in the register of designs or of any

document that is registered or otherwise kept by the Commissioner that pur- ports to be certified as a true copy or extract by the Commissioner is admissible in evidence in legal proceedings as if it were the original.

Section 37(1): omit “in the Patent Office” and substitute “by the Commissioner”. Section 37A(2)(a): omit “to the Patent Office, by post or otherwise,”. Section 39(2): omit “Patents Act 1953” and substitute “Patents Act 2013”. Sections 45 and 45A: repeal and substitute:

45 Opening hours of Intellectual Property Office of New Zealand (1) The Commissioner may—

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Reprinted as at 14 September 2017 Patents Act 2013 Schedule

Designs Act 1953 (1953 No 65)—continued (a) fix the opening hours for the Intellectual Property Office of New Zea-

land; and (b) declare the Intellectual Property Office of New Zealand closed on any

day. (2) The Commissioner must publicly notify those opening hours, and (before clos-

ing the Intellectual Property Office of New Zealand) any closure, in accordance with section 5(3) of the Patents Act 2013.

(3) A thing that must or may be done on a particular day or within a limited period of time may, if that day or the last day of that period is not an opening day of the Intellectual Property Office of New Zealand, be done on the next opening day (and is then still in time).

45A Closing of Intellectual Property Office of New Zealand at short notice (1) The Commissioner may declare the Intellectual Property Office of New Zea-

land closed without giving publication of the closure under section 45 if— (a) he or she thinks it necessary or desirable because of an emergency or

other temporary circumstances; and (b) it is not practicable to make that prior publication.

(2) The Commissioner must, as soon as practicable after closing the Intellectual Property Office of New Zealand, publicly notify the closure in accordance with section 5(3) of the Patents Act 2013.

Section 46(2)(a) and (f): omit “Patent Office” and substitute “Intellectual Property Office of New Zealand”. Section 46(2)(c): omit “at the Patent Office” and substitute “with the Commissioner”. Section 46(2)(h): omit “Patent Office Journal” and substitute “Journal”. Section 46: add as subsection (3): (3) The structure of the fee system under this Act prescribed by regulations under

this section may be such that any fees for an extension of the period of copy- right in a registered design under section 12(2)— (a) recover a share of the costs incurred by the Commissioner in performing

his or her functions under this Act; and (b) recover those costs at a level that provides an appropriate incentive for

persons to not extend that period of copyright if they do not receive suf- ficient benefit from having the copyright in the registered design.

Section 49: repeal.

Disputes Tribunals Act 1988 (1988 No 110) Definition of intellectual property in section 2: omit “Patents Act 1953” and substi- tute “Patents Act 2013”.

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Employment Relations Act 2000 (2000 No 24) Section 161(1): insert after paragraph (q):

(qa) disputes about an invention made by an employee (either alone or jointly with any other person) or any patent granted, or to be granted, in respect of that invention:

(qb) reviews under section 30 of the Patents Act 2013:

Flags, Emblems, and Names Protection Act 1981 (1981 No 47) Paragraph (f) of the definition of registering authority in section 2: omit “Patents Act 1953” and substitute “Patents Act 2013”.

Limitation Act 2010 (2010 No 110) Section 5(1): insert after paragraph (b):

(ba) a claim in respect of an infringement after the complete specification be- comes open to public inspection and before the patent is granted under the Patents Act 2013—the date on which the patent was granted; and

Patents Act 1953 (1953 No 64) Section 2(1): insert in its appropriate alphabetical order:

IPONZ means the Intellectual Property Office of New Zealand Section 2(1): repeal the definition of Journal and substitute:

journal means the journal published under section 206 of the Patents Act 2013 New section 2A: insert the following section after section 2:

2A Act preserved for patent attorney provisions (1) This Act continues to govern patent attorneys and their registration. (2) The Patents Act 2013 governs patents and patent applications (but see subpart

6 of Part 5 of that Act as to the continued application of repealed provisions of this Act for transitional purposes).

(3) This section is intended only as a guide to the general scheme and effect of these Acts.

Section 89(1): omit “sealed with the seal of the Patent Office and”. Section 89(2): omit “in the Patent Office or of any patent, or an extract from any such register or document, sealed with the seal of the Patent Office, and” and substitute “by IPONZ, or an extract from that register or document,”. Section 89(3): omit “Journal” and substitute “journal”. Section 100(1): omit “the Patent Office” and substitute “IPONZ”. Section 101(1)(a): insert “the Patents Act 2013 and” after “the purposes of”. Section 102(1): omit “the Patent Office” and substitute “IPONZ”.

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Reprinted as at 14 September 2017 Patents Act 2013 Schedule

Patents Act 1953 (1953 No 64)—continued Section 103(3)(b): omit “this Act or of” and substitute “the Patents Act 2013, this Act, or”. Section 103(5): insert “the Patents Act 2013 or” after “proceedings under”.

Privacy Act 1993 (1993 No 28) Part 1 of Schedule 2: omit the item relating to the Patents Act and substitute: Patents Act 1953 section 100 Patents Act 2013 section 194

Public Works Act 1981 (1981 No 35) Definition of intellectual property in section 2: omit “Patents Act 1953” and substi- tute “Patents Act 2013”.

Summary Proceedings Act 1957 (1957 No 87) Item relating to the Patents Act 1953 in Part 2 of Schedule 1: omit the items relating to sections 25(6) and 26(8). Part 2 of Schedule 1: insert the following item after the item relating to the Patents Act 1953: Patents Act 2013 138 Breach of secrecy as to certain

inventions

Trade Marks Act 2002 (2002 No 49) Section 56: repeal and substitute:

56 Approved regulations must be deposited at Intellectual Property Office of New Zealand After the Commissioner has approved the draft regulations, the approved regu- lations that govern the use of the registered certification trade mark must be de- posited at the Intellectual Property Office of New Zealand for inspection. Compare: 1953 No 66 s 48

Section 159(2)(a)(iii): omit “Patent Office” and substitute “Intellectual Property Office of New Zealand”. New section 175D: insert before section 176:

175D Liability of Commissioner and others The Commissioner, an Assistant Commissioner, or any other person acting on behalf of the Commissioner is not personally liable for any act or omission done in good faith in the performance or intended performance of the Commis- sioner’s functions, duties, or powers.

Section 184(2): omit “, sealed with the seal of the Patent Office,”.

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Trade Marks Act 2002 (2002 No 49)—continued Sections 188 and 189 and the heading above section 188: repeal and substitute:

Intellectual Property Office of New Zealand

188 Opening hours of Intellectual Property Office of New Zealand (1) The Commissioner may—

(a) fix the opening hours for the Intellectual Property Office of New Zea- land; and

(b) declare the Intellectual Property Office of New Zealand closed on any day.

(2) The Commissioner must publicly notify those opening hours, and (before clos- ing the Intellectual Property Office of New Zealand) any closure, in accordance with section 5(3) of the Patents Act 2013.

(3) A thing that must or may be done on a particular day or within a limited period of time may, if that day or the last day of that period is not an opening day of the Intellectual Property Office of New Zealand, be done on the next opening day (and is then still in time).

189 Closing of Intellectual Property Office of New Zealand at short notice (1) The Commissioner may declare the Intellectual Property Office of New Zea-

land closed without giving publication of the closure under section 188 if— (a) he or she thinks it necessary or desirable because of an emergency or

other temporary circumstances; and (b) it is not practicable to make that prior publication.

(2) The Commissioner must, as soon as practicable after closing the Intellectual Property Office of New Zealand, publicly notify the closure in accordance with section 5(3) of the Patents Act 2013.

Section 198: repeal. The heading above section 199(l): repeal and substitute: “Intellectual Property Office of New Zealand”. Section 199(l): omit “Patent Office” and substitute “Intellectual Property Office of New Zealand”. Section 199: add as subsection (2): (2) The structure of the fee system under this Act prescribed by regulations under

subsection (1) may be such that any renewal fees— (a) recover a share of the costs incurred by the Commissioner in performing

his or her functions under this Act; and

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Reprinted as at 14 September 2017 Patents Act 2013 Schedule

Trade Marks Act 2002 (2002 No 49)—continued (b) recover those costs at a level that provides an appropriate incentive for

persons to let registrations of trade marks lapse if they do not receive sufficient benefit from having the registration.

Section 199A(a): omit “Patent Office” and substitute “Intellectual Property Office of New Zealand”. Section 199A(c): omit “Patent Office” and substitute “Intellectual Property Office of New Zealand”.

Trans-Tasman Mutual Recognition Act 1997 (1997 No 60) Schedule 1: omit “Patents Act 1953” and substitute “Patents Act 2013”.

Part 2 Regulations amended

Defence Regulations 1990 (SR 1990/78) Regulation 24(1): omit “in the New Zealand Patent Office” and substitute “with the Commissioner of Patents”. Regulation 24(1): omit “at the Patent Office” and substitute “with the Commissioner of Patents”. Regulation 26: omit “in the Patent Office” and substitute “with the Commissioner of Patents”. Schedule 2: omit “to the Patent Office” and substitute “to the Commissioner of Pat- ents”. Schedule 2, clause (b): omit “at the Patent Office” and substitute “with the Commis- sioner of Patents”.

Designs Regulations 1954 (SR 1954/224) Regulation 4: omit “to the Patent Office” and substitute “under regulation 3”. Regulation 6: omit “the Patent Office” and substitute “the Commissioner”. Schedule 2: omit “Patent Office” in each place where it appears and substitute in each case “Intellectual Property Office of New Zealand”.

Patents, Designs, and Trade Marks Convention Order 2012 (SR 2012/189) Clause 3: omit “Patents Act 1953” and substitute “Patents Act 2013”.

Patents (United States of America) Regulations 1956 (SR 1956/159) Regulation 3: omit “Patents Act 1953 or the Patents Regulations 1954” and substitute “Patents Act 2013 or regulations made under that Act”. Regulation 4: omit “section 11 of the Patents Act 1953” and substitute “section 5 of the Patents Act 2013”.

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Reprinted as at Schedule Patents Act 2013 14 September 2017

Patents (United States of America) Regulations 1956 (SR 1956/159)—continued Regulation 4: omit “Patents Act 1953 or the Patents Regulations 1954” and substitute “Patents Act 2013 or regulations made under that Act”.

Trade Marks Regulations 2003 (SR 2003/187) Definition of filing date in regulation 3: omit “Patent Office” and substitute “Intellec- tual Property Office of New Zealand”. Regulation 23(a) and (b): revoke and substitute:

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

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Reprinted as at 14 September 2017 Patents Act 2013 Notes

Reprints notes

1 General This is a reprint of the Patents Act 2013 that incorporates all the amendments to that Act as at the date of the last amendment to it.

2 Legal status Reprints are presumed to correctly state, as at the date of the reprint, the law enacted by the principal enactment and by any amendments to that enactment. Section 18 of the Legislation Act 2012 provides that this reprint, published in electronic form, has the status of an official version under section 17 of that Act. A printed version of the reprint produced directly from this official elec- tronic version also has official status.

3 Editorial and format changes Editorial and format changes to reprints are made using the powers under sec- tions 24 to 26 of the Legislation Act 2012. See also http://www.pco.parlia- ment.govt.nz/editorial-conventions/.

4 Amendments incorporated in this reprint Senior Courts Act 2016 (2016 No 48): section 183(b)

Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016 (2016 No 89)

New Zealand Business Number Act 2016 (2016 No 16): section 41

Patents Act 2013 (2013 No 68): sections 245(2), 267

Wellington, New Zealand:

Published under the authority of the New Zealand Government—2017

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