Competition, Trade and Investment Branch
Ministry of Economic Development
New Zealand
- Section 1 General
- Section 2 Private and/or non-commercial use
- Section 3 Experimental use and/or scientific research
- Section 4 Preparation of medicines
- Section 5 Prior use
- Section 6 Use of articles on foreign vessels, aircrafts and land vehicles
- Section 7 Acts for obtaining regulatory approval from authorities
- Section 8 Exhaustion of patent rights
- Section 9 Compulsory licensing and/or government use
- Section 10 Exceptions and limitations related to farmers' and/or breeders' use of patented inventions
- Section 11 Other exceptions and limitations
Section 1: General
1. As background for the exceptions and limitations to patents investigated in this questionnaire, what is the legal standard used to determine whether an invention is patentable? If the standard for patentability includes provisions that vary according to the technology involved, please include examples of how the standard has been interpreted, if available. Please indicate the source of law (statutory and-or case law) by providing the relevant provisions and/or a brief summary of the relevant decisions.
The relevant legislation is the Patents Act 1953. To be patentable, an invention must be a “manner of manufacture”, and be “new”. There is no examination for obviousness, or utility, although obviousness and lack of utility are grounds for third parties to oppose the grant of a patent, or to apply for the revocation of a granted patent. Text of the act can be found at: http://www.legislation.govt.nz/act/public/1953/0064/latest/DLM280031.html
The term “manner of manufacture” has been interpreted by the New Zealand Courts to exclude such things as “products of nature”, mathematical operations, bare principals, mathematical algorithms, schemes or plans, and methods of medical treatment of humans.
An invention will be considered “new” if a description of the invention has not been published in New Zealand prior to the priority date of the relevant claims (a “local novelty” standard).
There is currently a Patents Bill before the New Zealand Parliament that will replace the Patents Act 1953. Under the provisions of this new Bill, to be patentable, an invention must be a “manner of manufacture”, new, involve an inventive step, be useful, and not be excluded subject matter. All of these criteria must be satisfied before a patent can be granted. Novelty and inventive step will be determined on the basis of matter that has been made available to the public, whether by written or oral description, or by use or in any other way, anywhere in the world prior to the priority date of the relevant claims. The text of the Bill can be found at: http://www.legislation.govt.nz/bill/government/2008/0235/latest/viewpdf.aspx.
Correspondingly, please list exclusions from patentability that exist in your law. Furthermore, please provide the source of those exclusions from patentability if different from the source of the standard of patentability, and provide any available case law or interpretive decisions specific to the exclusions.
Under New Zealand’s current legislation (the Patents Act 1953), there is only one statutory exclusion: grant of a patent may be refused if use of the invention would be contrary to morality. Very few patents have been refused under this provision, and there are no relevant judicial decisions.
The Patents Bill currently before Parliament includes explicit exclusions from patentability. These are:
- Inventions whose commercial exploitation would be contrary to public order or morality;
- Human beings and biological processes for their generation;
- Methods of treatment of human beings by surgery or therapy;
- Methods of diagnosis practiced on human beings;
- Computer programs;
- Plant varieties.
2. As background for the exceptions and limitations to patents investigated in this questionnaire, what exclusive rights are granted with a patent? Please provide the relevant provision in the statutory or case law. In addition, if publication of a patent application accords exclusive rights to the patent applicant, what are those rights?
Under the Patents Act 1953, a patent owner has the exclusive right to “make, use,exercise and vend the invention during the term of the patent, subject to the provisions of any statute or regulation currently in force. (See Patents Form A, Third Schedule, Patents Act 1953).
3. Which exceptions and limitations does the applicable law provide in respect to patent rights (please indicate the applicable exceptions/limitations):
Experimental use and/or scientific research;
Use of articles on foreign vessels, aircrafts and land vehicles;
Acts for obtaining regulatory approval from authorities;
Compulsory licensing and/or government use.
Section 2: Private and/or non-commercial use
4.-10.
[Note from the Secretariat: the applicable law of New Zealand does not provide exceptions related to private and/or non-commercial use.]
Section 3: Experimental use and/or scientific research
11. If the exception is contained in statutory law, please provide the relevant provision(s):
New Zealand’s current patent legislation, the Patents Act 1953, does not contain a statutory experimental use exception. The new Patents Bill, currently before the New Zealand Parliament does contain an experimental use exception.
12. If the exception is provided through case law, please cite the relevant decision(s) and provide its (their) brief summary:
Under the Patents Act 1953, questions of whether or not a particular use is expereimental are determined through case law. The most relevant case-law would appear to be Smith Kline & French Laboratories Ltd vs Attorney General (1991) 4 TCLR 199. In this decision, the Judge stated:
“Doubtless experimentation will usually have an ultimate commercial objective; where it ends and infringement begins must often be a matter of degree. If the person concerned keeps his activities to himself, and does no more than further his own knowledge or skill, even though commercial advantage may be his final goal, he does not infringe. But if he goes beyond that, and uses the invention or makes it available to others, in a way that serves to advance in the actual market place, then he infringes”.
It would appear from this decision that it is the ultimate objective of the research which determines whether or not the use of a patented invention for research or experimental purposes infringes a patent. “Non-commercial” research would not infringe, while “commercial” research would. It is not clear though, just where the boundary between “commercial” and “non-commercial” research lies.
13.(a) What are the public policy objectives for providing the exception?
Question not applicable as the experimental use exception is provided by case law.
(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:
Not applicable (see answere to question 13(a).
14. Does the applicable law make a distinction concerning the nature of the organization conducting the experimentation or research (for example, whether the organization is commercial or a not-for-profit entity)? Please explain:
The relevant case law suggests that the nature of the organization involved is not relevant to whether a use is “experimental”, rather, it is the nature of the use (whether “non-commercial” or “commercial”) that determines whether a particular use is experimental. “Commercial” use, will generally not be considered to be experimental use, but the boundary between “commercial” and “non-commercial” use is unclear.
15. If the applicable law defines the concepts “experimental use” and/or “scientific research”, please provide those definitions by citing legal provision(s) and/or decision(s):
The relevant caselaw does not define these concepts.
16. If the purpose of experimentation and/or research is relevant to the determination of the scope of the exception, please indicate what that purpose is:
Experimentation and/or research should aim to:
[Note from the Secretariat: response was not provided.]
17. If any of the following criteria is relevant to the determination of the scope of the exception, please indicate:
[Note from the Secretariat: response was not provided.]
Please explain by citing legal provision(s) and/or decision(s):
The relevant case law does not deal with these issues.
18. If the commercial intention of the experimentation and/or research is relevant to the determination of the scope of the exception, please indicate whether the exception covers activities relating to:
A non-commercial purpose
19. If the applicable law makes a distinction between “commercial” and “non-commercial” purpose, please explain those terms by providing their definitions, and, if appropriate, examples. Please cite legal provision(s) and/or decision(s):
While the relevant case law makes a distinction between a “commercial” purpose (which is not considered experimental use) and “non-commercial” (which may be considered as “experimental” use, there are no explicit definitions of these terms – the question of whether a particular use or purpose is “commercial” or “non-commercial” is likely to be considered on a case by case basis.
20. If the applicable law provides for other criteria to be applied in determining the scope of the exception, please describe those criteria. Please illustrate your answer by citing legal provision(s) and/or decision(s):
No other criteria are currently applied.
21. Is the applicable legal framework of the exception considered adequate to meet the objectives sought (for example, are there any amendments to the law foreseen)? Please explain:
The current legal framework relating to experimental use of patented inventions is not considered adequate as there is considerable uncertainty as to what does or does not constitute experimental use. The new Patents Bill that is currently before the New Zealand Parliament contains an explicit experimental use exception. The exception (clause 136 of the Bill) provides that 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. Clause 136 also contains a non-exhaustive list of acts which are considered to have an experimental purpose: determining how an invention works, determining the scope of an invention, determining the validity of the claims and seeking to make an improvement to the invention (for example determining new properties, or new uses of the invention).
22. Which challenges, if any, have been encountered in relation to the practical implementation of the exception in your country? Please explain:
[Note from the Secretariat: response was not provided.]
Section 4: Preparation of medicines
23.-30.
[Note from the Secretariat: the applicable law of New Zealand does not provide exceptions related to the preparation of medicines.]
Section 5: Prior use
31. If the exception is contained in statutory law, please provide the relevant provision(s):
There is no prior use exception in New Zealand’s patent legislation, however, secret use of an invention prior to the grant of a patent may be grounds for revocation of the patent. (s41(1)(l) of the Patents Act 1953. That is, while prior secret use is not a defence against infringement, the prior user can initiate proceedings to revoke the patent.
32.-37.
[Note from the Secretariat: response was not provided.]
38. Does this exception apply in situations where a third party has been using the patented invention or has made serious preparations for such use after the invalidation or refusal of the patent, but before the restoration or grant of the patent?
Yes
If yes, please explain the conditions under which such use can continue to apply:
Where a lapsed patent has been restored, the restoration is subject to conditions protecting the interests of third parties who may have used or made preparations to use the the patented invention after the patent lapsed, but before restoration (s35(7) of the Patents Act 1953)
39. If the applicable law provides for other criteria to be applied in determining the scope of the exception, please describe those criteria. Please illustrate your answer by citing legal provision(s) and/or decision(s):
[Note from the Secretariat: response was not provided.]
40. Is the applicable legal framework of the exception considered adequate to meet the objectives sought (for example, are there any amendments to the law foreseen)? Please explain:
The new Patents Bill, currently before Parliament will contain an explicit prior use provision (clause 138A of the Bill).
41. Which challenges, if any, have been encountered in relation to the practical implementation of the exception in your country? Please explain:
[Note from the Secretariat: response was not provided.]
Section 6: Use of articles on foreign vessels, aircrafts and land vehicles
42. If the exception is contained in statutory law, please provide the relevant provision(s):
The exception is provided in section 79 of the Patents Act 1953.
43. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:
[Note from the Secretariat: response was not provided.]
44.(a) What are the public policy objectives for providing the exception? Please explain:
The exception is provided for compliance with Article 5ter of the Paris Convention.
(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:
Not applicable.
45. The exception applies in relation to:
Vessels;
Aircrafts;
Land Vehicles.
46. In determining the scope of the exception, does the applicable law apply such terms as ”temporarily” and/or “accidentally” or any other equivalent term in relation to the entry of foreign transportation means into the national territory? Please provide the definitions of those terms by citing legal provision(s) and/or decision(s):
The applicable law refers to accidental or temporary entry of the foreign transportation means into New Zealand. These terms are not defined in the legislation, and there is no applicable case law.
47. Does the applicable law provide for any restrictions on the use of the patented product on the body of the foreign vessels, aircrafts, land vehicles and spacecraft for the exception to apply (for example, the devices to be used exclusively for the needs of the vessel, aircraft, land vehicle and/or spacecraft)? Please explain your answer by citing legal provision(s) and/or decision(s):
Section 79 of the Patents Act 1953 provides that the patented product must be used on board the transportation means and for its actual needs only.
48.-50.
Not applicable.
Section 7: Acts for obtaining regulatory approval from authorities
51. If the exception is contained in statutory law, please provide the relevant provision(s):
The exception is provided for in section 68B of the Patents Act 1953.
52. If the exception is provided through case law, please cite the relevant decision(s) and provide its (their) brief summary:
Case law does not provide for this type of exception in New Zealand. The New Zealand courts have indicated that any such exception must be provided for through amendment to the legislation.
53.(a) What are the public policy objectives for providing the exception? Please explain:
The reason for providing the exception is to facilitate the entry of generic products onto the New Zealand market when a patent expires. It was also intended to ensure that New Zealand manufacturers of generic products could enter the export market promptly when the relevant New Zealand patent(s) expired.
(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:
The exception (known as the Regulatory Review Exception) was inserted into the Patents Act 1953 by the Patents Amendment Act 2002.
54. Who is entitled to use the exception? Please explain:
Any person may use the exception.
55. The exception covers the regulatory approval of:
any products
56. Please indicate which acts are allowed in relation to the patented invention under the exception?
Making;
Using;
Selling;
Offering for sale;
Import;
Export.
57. If the applicable law provides for other criteria to be applied in determining the scope of the exception, please describe those criteria. Please illustrate your answer by citing legal provision(s) and/or decision(s):
Not applicable.
58. Is the applicable legal framework of the exception considered adequate to meet the objectives sought (for example, are there any amendments to the law foreseen)? Please explain:
No amendments to the law are planned; the exception will be retained in the new Patents Bill.
59. Which challenges, if any, have been encountered in relation to the practical implementation of the exception in your country? Please explain:
Not applicable.
Section 8: Exhaustion of patent rights
60. Please indicate what type of exhaustion doctrine is applicable in your country in relation to patents:
Compulsory licenses
Uncertain, please explain:
The circumstances in which patent rights are exhausted will depend on the conditions under which the patent owner has decided to make the patented product available.
If the exception is contained in statutory law, please provide the relevant provision(s):
[Note from the Secretariat: response was not provided.]
If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:
Exhaustion is determined by case law: Betts V Wilmott (1871) 6 Ch App 240. Whether the rights are exhausted or not is likely to depend on any conditions attached to the initial sale by the patentee.
61-64.
[Note from the Secretariat: response was not provided.]
Section 9: Compulsory licenses and/or government use
Compulsory licenses
65. If the exception is contained in statutory law, please provide the relevant provision(s):
Section 46 of the Patents Act 1953 provides for compulsory licenses.
66. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:
[Note from the Secretariat: response was not provided.]
67. What grounds for the grant of a compulsory license does the applicable law provide in respect to patents (please indicate the applicable grounds):
Refusal to grant licenses on reasonable terms
68.(a) What are the public policy objectives for providing compulsory licenses in your country? Please explain:
To ensure that New Zealand businesses and consumers have reasonable access to patented products at reasonable prices.
(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:
[Note from the Secretariat: response was not provided.]
69.-70.
Not applicable.
71.-72.
[Note from the Secretariat: response was not provided.]
73. If the applicable law provides for the grant of compulsory licenses on the ground of refusal by the patentee to grant licenses on “reasonable terms and conditions” and within a “reasonable period of time”, please provide the definitions given to those terms by citing legal provision(s) and/or decision(s):
There is no definition of these terms in the legislation, and there appear to be no legal decisions by the New Zealand courts defining these terms (although it is likely that decisions made under the UK Patents Act 1949 would be applied by the New Zealand courts if the need arose).
74.-75.
Not applicable
76. Does the applicable law provide a general policy to be followed in relation to the remuneration to be paid by the beneficiary of the compulsory license to the patentee? Please explain:
Section 46(6) of the Patents Act 1953 requires that licensee must pay “such remuneration to the patentee as may be agreed” between the licensee and the patentee. If they cannot agree, the Court will determine the remuneration.
77. If the applicable law provides for the grant of compulsory licenses on the ground of “national emergency” or “circumstances of extreme urgency”, please explain how the applicable law defines those two concepts and their scope of application, and provide examples:
Not applicable
78. Please indicate how many times and in which technological areas compulsory licenses have been issued in your country:
Very few compulsory licenses have been granted in New Zealand, and those that have been issued have related to pharmaceuticals.
79. Is the applicable legal framework for the issuance of compulsory licenses considered adequate to meet the objectives sought (for example, are there any amendments to the law foreseen)? Please explain:
The only amendments contemplated are those necessary to allow New Zealand to become an exporting member under the Protocol to amend the TRIPS Agreement implementing the Doha Declaration on the TRIPS Agreement and public health (see clauses 165A – 165D of the new Patents Bill).
80. Which challenges, if any, have been encountered in relation to the use of the compulsory licensing system provisions in your country? Please explain:
[Note from the Secretariat: response was not provided.]
Government use
81. If the exception is contained in statutory law, please provide the relevant provision(s):
Sections 55 – 58C of the Patents Act 1953 provide for Crown use of patented inventions without the authority of the patentee.
82. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:
[Note from the Secretariat: response was not provided.]
83. What grounds for the grant of government use does the applicable law provide in respect to patents (please indicate the applicable grounds):
National security
National emergency and/or extreme urgency
Other, please specify: While the applicable law refers to matters of national security or national emergency, it does not specifically exclude the other grounds.
84.(a) What are the public policy objectives for providing government use in your country?
The prime public policy objectives relate to ensuring that the public has access to patented products, and it has not been possible to obtain the product from the patentee on reasonable terms and conditions.
(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:
[Note from the Secretariat: response was not provided.]
85. If the applicable law provides for the grant of government use on the ground of “national emergency” or “circumstances of extreme urgency”, please explain how the applicable law defines those two concepts and their scope of application, and provide examples:
The Patents Act 1953 defines national emergency by reference to the Civil Defence Emergency Management Act 2002 (see http://www.legislation.govt.nz/act/public/2002/0033/latest/DLM149789.html) .
86. Please indicate how many times and in which technological areas government use has been issued in your country:
There have been no instances of the Crown use provisions being invoked.
87.-88.
[Note from the Secretariat: response was not provided.]
Section 10: Exceptions and limitations related to farmers' and/or breeders' use of patented inventions
89. -100.
[Note from the Secretariat: the applicable law of New Zealand does not provide exceptions and limitations related to farmers’ and/or breeders' use of patented inventions.]
Section 11: Other exceptions and limitations
101.-103.
[Note from the Secretariat: the applicable law of New Zealand does not provide other exceptions and limitations.]
[End of questionnaire]
September 2011