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Legislative Implementation of Flexibilities - New Zealand

Title:Sections 46, 55-56 and 58-58A of the Patents Act No. 64 of 1953 (as at 01/08/2008)
Field of IP:Patents
Type of flexibility:Compulsory licenses and government use
Summary table:PDF

Provisions of Law

46 Compulsory licence

(1) At any time after the expiration of 3 years from the date of the sealing of a patent or 4 years from the date of the patent, whichever is the later, any person interested may apply to the Court for the grant of a licence under the patent upon any of the grounds specified in subsection (2) of this section.

(2) The grounds upon which a licence may be granted under this section are that a market for the patented invention is not being supplied, or is not being supplied on reasonable terms, in New Zealand.

(3) Subject to subsections (4), (5), (6), and (7) of this section, if the Court is satisfied that either of the grounds referred to in subsection (2) of this section are established, the Court may make an order for the grant of a licence in accordance with the application upon such terms as the Court thinks fit.

(4) A licence granted under this section -

Is not exclusive:

Must not be assigned otherwise than in connection with the goodwill of the business in which the patented invention is used:

Is limited to the supply of the patented invention predominantly in New Zealand.

(5) Any licence granted under this section may, on the application of any interested party, be terminated by the Court, where the Court is satisfied that the grounds on which the licence was granted have ceased to exist.

(6) Where a licence is granted under this section to any person, that person shall pay such remuneration to the patentee as may be agreed, or as may be determined by a method agreed, between that person and the patentee or, in default of agreement, as is determined by the Court on the application of that person or the patentee.

(7) No licence shall be granted under this section unless the person applying for the licence, having taken all reasonable steps to do so, has been unable to obtain a licence, or to obtain a licence on reasonable terms, from the patentee.

(8) No licence shall be granted under this section in respect of a patent relating to an integrated circuit.

55 Use of patented inventions for services of the Crown

Subject to sections 58A to 58C of this Act, but notwithstanding any other provision of this Act, any Government Department, and any person authorized in writing by a Government Department, may make, use, exercise, and vend any patented invention for the services of the Crown and anything done by virtue of this subsection shall not amount to an infringement of the patent concerned.

For the purposes of this section and section 56 of this Act, -

(a) Any use of an invention for the supply to the Government of any country outside New Zealand, in pursuance of any agreement or arrangement between the Government of New Zealand and the Government of that country, of articles required for the defence of that country shall be deemed to be a use of the invention for the services of the Crown:

(b) The power of a Government Department or a person authorized by a Government Department under this section to make, use, exercise, and vend a patented invention shall include power to sell to any person any articles made in the exercise of the powers conferred by this section that are no longer required for the purpose for which they were made:

(c) The power of a Government Department or a person authorized by a Government Department under this section to vend a patented invention shall not, in the case of a patent relating to an integrated circuit, extend to sale of the invention to the public.

(3) Where the Governor-General, by Order in Council, declares that the use of any patented invention by any person or by any class of persons engaged in a particular industry is necessary or desirable enable full benefit to be derived by the members of he public in New Zealand of any enterprise or undertaking in which the Crown or any Government Department has a complete or almost complete monopoly, any such use of the invention or inventions shall for the purposes of this section and sections 56 and 57 of this Act be deemed to be a use for the services of the Crown.

(4) The purchaser of any articles sold in the exercise of powers conferred by this section, and any person claiming through the purchaser, shall have power to deal with them in the same manner as if the patent were held on behalf of the Crown.

56 Rights of third parties in respect of the Crown use

(1) In relation to any use of a patented invention, or an invention in respect of which an application for a patent is pending, made for the services of the Crown -

(a) By a Government Department or a person authorized by a Government Department under section 55 of this Act; or

(b) By the patentee or applicant for the patent to the order of a Government Department, -

the provision of any licence, assignment, or agreement made, whether before or after the commencement of this Act, between the patentee or applicant for the patent, or any person who derives title from him or from whom he derives title, and any person other than a Government Department shall, subject to sections 58A and 58C of this Act, be of no effect so far as those provisions restrict or regulate the use of the invention, or any mode, document, or information, relating thereto, or provide for making of payments in respect of any such use , or calculated by reference thereto; and the reproduction

or publication of any model or document in connection with the said use shall not be deemed to be an infringement of any copyright subsisting in the model or document.

(2) [Repealed]

(3) [Repealed]

(4) [Repealed]

58 Special provisions as to Crown use during emergency

Subject to sections 58A to 58C of this Act, the powers exercisable in relation to an invention by a Government Department or a person authorized by a Government Department under section 55 of this Act, shall include power to make, use, exercise, and vend the patented invention for any purpose which appears to the Department necessary or expedient -

(a) to avoid prejudice to the security or defence of the New Zealand; or

(b) to assist in the exercise of powers and the implementation of civil defence emergency management during a state of emergency declared under the Civil Defence Emergency Management Act 2002.

58A Nature and scope of rights under section 55

(1) The right to use a patented invention under section 55 of this Act -

(a) Is not exclusive:

(b) Must not be assigned otherwise than in connection with the goodwill of the business in which the patented invention is used:

(c) Is, notwithstanding subsection (2)(a) of that section, limited to the supply of the patented invention predominantly in New Zealand by a government Department or a person authorized by a Government Department under that section.

(2) The right to use a patented invention under section 55 of this Act may, on the application of any interested party, be terminated by the Court, where the Court is satisfied that the circumstances that gave rise to the right to use the patented invention have ceased to exist and are unlikely to recur.

(3) Except in a case to which section 58 of this Act applies, the right to use a patented invention under section 55 of this Act is subject to the Government Department or person authorized by a Government Department under section 55 of this Act having first taken all reasonable steps to obtain the consent of the patentee to the use of the patented invention on reasonable terms and conditions, and having failed to obtain such consent within a reasonable period of time.

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