عن الملكية الفكرية التدريب في مجال الملكية الفكرية إذكاء الاحترام للملكية الفكرية التوعية بالملكية الفكرية الملكية الفكرية لفائدة… الملكية الفكرية و… الملكية الفكرية في… معلومات البراءات والتكنولوجيا معلومات العلامات التجارية معلومات التصاميم الصناعية معلومات المؤشرات الجغرافية معلومات الأصناف النباتية (الأوبوف) القوانين والمعاهدات والأحكام القضائية المتعلقة بالملكية الفكرية مراجع الملكية الفكرية تقارير الملكية الفكرية حماية البراءات حماية العلامات التجارية حماية التصاميم الصناعية حماية المؤشرات الجغرافية حماية الأصناف النباتية (الأوبوف) تسوية المنازعات المتعلقة بالملكية الفكرية حلول الأعمال التجارية لمكاتب الملكية الفكرية دفع ثمن خدمات الملكية الفكرية هيئات صنع القرار والتفاوض التعاون التنموي دعم الابتكار الشراكات بين القطاعين العام والخاص أدوات وخدمات الذكاء الاصطناعي المنظمة العمل مع الويبو المساءلة البراءات العلامات التجارية التصاميم الصناعية المؤشرات الجغرافية حق المؤلف الأسرار التجارية أكاديمية الويبو الندوات وحلقات العمل إنفاذ الملكية الفكرية WIPO ALERT إذكاء الوعي اليوم العالمي للملكية الفكرية مجلة الويبو دراسات حالة وقصص ناجحة في مجال الملكية الفكرية أخبار الملكية الفكرية جوائز الويبو الأعمال الجامعات الشعوب الأصلية الأجهزة القضائية الموارد الوراثية والمعارف التقليدية وأشكال التعبير الثقافي التقليدي الاقتصاد التمويل الأصول غير الملموسة المساواة بين الجنسين الصحة العالمية تغير المناخ سياسة المنافسة أهداف التنمية المستدامة التكنولوجيات الحدودية التطبيقات المحمولة الرياضة السياحة ركن البراءات تحليلات البراءات التصنيف الدولي للبراءات أَردي – البحث لأغراض الابتكار أَردي – البحث لأغراض الابتكار قاعدة البيانات العالمية للعلامات مرصد مدريد قاعدة بيانات المادة 6(ثالثاً) تصنيف نيس تصنيف فيينا قاعدة البيانات العالمية للتصاميم نشرة التصاميم الدولية قاعدة بيانات Hague Express تصنيف لوكارنو قاعدة بيانات Lisbon Express قاعدة البيانات العالمية للعلامات الخاصة بالمؤشرات الجغرافية قاعدة بيانات الأصناف النباتية (PLUTO) قاعدة بيانات الأجناس والأنواع (GENIE) المعاهدات التي تديرها الويبو ويبو لكس - القوانين والمعاهدات والأحكام القضائية المتعلقة بالملكية الفكرية معايير الويبو إحصاءات الملكية الفكرية ويبو بورل (المصطلحات) منشورات الويبو البيانات القطرية الخاصة بالملكية الفكرية مركز الويبو للمعارف الاتجاهات التكنولوجية للويبو مؤشر الابتكار العالمي التقرير العالمي للملكية الفكرية معاهدة التعاون بشأن البراءات – نظام البراءات الدولي ePCT بودابست – نظام الإيداع الدولي للكائنات الدقيقة مدريد – النظام الدولي للعلامات التجارية eMadrid الحماية بموجب المادة 6(ثالثاً) (الشعارات الشرفية، الأعلام، شعارات الدول) لاهاي – النظام الدولي للتصاميم eHague لشبونة – النظام الدولي لتسميات المنشأ والمؤشرات الجغرافية eLisbon UPOV PRISMA UPOV e-PVP Administration UPOV e-PVP DUS Exchange الوساطة التحكيم قرارات الخبراء المنازعات المتعلقة بأسماء الحقول نظام النفاذ المركزي إلى نتائج البحث والفحص (CASE) خدمة النفاذ الرقمي (DAS) WIPO Pay الحساب الجاري لدى الويبو جمعيات الويبو اللجان الدائمة الجدول الزمني للاجتماعات WIPO Webcast وثائق الويبو الرسمية أجندة التنمية المساعدة التقنية مؤسسات التدريب في مجال الملكية الفكرية الدعم المتعلق بكوفيد-19 الاستراتيجيات الوطنية للملكية الفكرية المساعدة في مجالي السياسة والتشريع محور التعاون مراكز دعم التكنولوجيا والابتكار نقل التكنولوجيا برنامج مساعدة المخترعين WIPO GREEN WIPO's PAT-INFORMED اتحاد الكتب الميسّرة اتحاد الويبو للمبدعين WIPO Translate أداة تحويل الكلام إلى نص مساعد التصنيف الدول الأعضاء المراقبون المدير العام الأنشطة بحسب كل وحدة المكاتب الخارجية المناصب الشاغرة المشتريات النتائج والميزانية التقارير المالية الرقابة
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القوانين المعاهدات الأحكام التصفح بحسب الاختصاص القضائي

قانون البراءات لعام 1953 (بطبعته الصادرة في 1 يناير 2011)، نيوزيلندا

عودة للخلف
النص مُستبدل.  انظ النص يحل محله أدناه.
التفاصيل التفاصيل سنة الإصدار 2011 تواريخ بدء النفاذ : 1 يناير 1955 الاعتماد : 26 نوفمبر 1953 نوع النص قوانين الملكية الفكرية الرئيسية الموضوع البراءات، تصاميم الدوائر المتكاملة، حماية الأصناف النباتية، إنفاذ قوانين الملكية الفكرية والقوانين ذات الصلة، الموارد الوراثية، المعارف التقليدية، هيئة تنظيمية للملكية الفكرية

المواد المتاحة

النصوص الرئيسية النصوص ذات الصلة
النصوص الرئيسية النصوص الرئيسية بالإنكليزية Patents Act 1953 (reprint as at 1 January 2011)        
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Reprint as at 1 January 2011

Patents Act 1953

Public Act 1953 No 64 Date of assent 26 November 1953

Contents

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

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

Note

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

Ageneraloutlineofthesechangesissetoutinthenotesattheendofthiseprint,togetherwith other explanatory material about this eprint.

This Act is administered by the Ministry of Commerce

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

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

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

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

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

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

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

not accepted

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

2

40 Supplementary provisions as to amendment of 52 specification

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

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

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

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

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

foreign application 62 Priority date in case of obtaining 71

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

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

3

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

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

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

agreements 82 Regulations under section 80 or section 81 87

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

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

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

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

Patent attorneys

100 Registration of patent attorneys 101

4

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

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

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

Schedule 1 112 Enactments repealed

Schedule 2 113 Regulations revoked

Schedule 3 113 Transitional provisions

An Act to consolidate and amend certain enactments relating to patents

1 Short Title and commencement

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

(2) ThisActshallcomeintoforceonadaytobeappointedforthe commencementthereofbytheGovernor-GeneralbyProclamation.

Interpretation

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

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

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

[Repealed]

Convention application has the meaning assigned to it by

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

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

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

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

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

Government Department means any Department or instru

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

tegrallyformedinoronapieceofmaterialandthatisintended

to perform an electronic function

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

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

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

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

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

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

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

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

JournalmeansthePatentOfficeJournalpublishedundersub

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

Industry Act Repeal Act 1988 (1988 No 156).

Patent means letters patent for an invention Patent Cooperation Treaty

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

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

Patentofadditionmeansapatentgrantedinaccordancewith

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

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

Prescribed means prescribed by this Act or by regulations

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

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

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

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

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

TheStatuteofMonopolies meanstheActofthe21styearof thereignofKingJamestheFirst,chapter3,intituled“AnAct

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

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

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

Treaty regulations

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

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

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

(a) A reference in this Act to

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

try,mustbereadasareferencetoapplicationforprotection under the rules of the entity:

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

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

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

5 Patent Office

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

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

5A Closing of Patent Office at short notice

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

11

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

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

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

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

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

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

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

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

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

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

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

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

8 Application

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

9 Complete and provisional specifications

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

s 73

10 Contents of specification

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

16

11 Priority date of claims of complete specification

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

12 Examination of application

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

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

13 Search for anticipation by previous publication

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

14 Search for anticipation by prior claim

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

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

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

15 Commissioner may require information as to corresponding applications overseas

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

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

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

16 Reference in case of potential infringement

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

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

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

17 Refusal of application in certain cases

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

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

18 Supplementary provisions as to examination, etc

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

19 Time for putting application in order for acceptance

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

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

(2)
The period allowed by subsection (1) of this section shall be extended to such period, not exceeding 18 months from the date of filing of the complete specification, as may be specifiedinanoticegivenbytheapplicant totheCommissioner,if the notice is given and the prescribed fee paid before the expiration of the period so specified.
(3)
If at the expiration of the period allowed under the foregoing provisions of this section an appeal to the Court is pending underanyoftheprovisions of thisActin respect of the application(or,inthecaseofanapplicationforapatentofaddition, either in respect of that application or in respect of the applicationforthepatentforthemaininvention)orthetimewithin whichsuchanappealcouldbebroughtinaccordancewiththe rules of Court (apart from any future extension of time thereunder) has not expired, then
(a)
Where such an appeal is pending or is brought within the time aforesaid or before the expiration of any extensionofthattimegranted(inthecaseofafirstextension) onanapplicationmade withinthattimeor(in the caseofasubsequentextension)onanapplicationmade before the expiration of the last previousextension, the saidperiodshallbeextendeduntilsuchdateastheCourt may determine:
(b)
Where no such appeal is pending or is so brought, the saidperiodshallcontinueuntiltheendofthetimeaforesaid,or,ifanyextensionofthattimeisgrantedasaforesaid, until the expiration of the extension or last extension so granted.

Compare: Patents Act 1949, s 12 (UK);, No 26, s 72

Subsection(1)wasamended,asfrom1December1992,bysection 6(1) Patents AmendmentAct1992(1992No81)byinsertingthewords Subjecttosubsection (1A) of this section,.

Subsection(1A)wasinserted,asfrom1December1992,bysection 6(2) Patents Amendment Act 1992 (1992 No 81).

20 Acceptance and publication of complete specification

(1)
Subjecttotheprovisionsof section19 ofthisAct,thecomplete specification filed in pursuance of an application for a patent may be accepted by the Commissioner at any time after the applicant has complied with the requirements mentioned in subsection(1)ofthatsection,andifnotsoacceptedwithinthe period allowed under that section for compliance with those requirements, shall be accepted as soon as may be thereafter: Provided that the applicant may give notice to the Commissioner requesting him to postpone acceptance until such date, not being later than 18 months from the date of filing of the complete specification, as may be specified in the notice; and if such notice is given and, where the notice requests a postponement to a date later than 15 months from the date aforesaid, the prescribed fee is paid, the Commissioner may postpone acceptance accordingly.
(2)
On the acceptance of a complete specification the Commissionershallgivenoticeto theapplicant, andshalladvertisein the Journal the fact that the specification has been accepted, and thereupon the application and the specification or specifications filed in pursuance thereof shall be open to public inspection.
(3)
Any reference in this Act to the date of the publication of a completespecificationshallbeconstruedasareferencetothe date of issue of the Journal containing the advertisement as aforesaid.
(4)
After the date of the publication of a complete specification anduntilthesealingofapatentinrespectthereof,theapplicant shall have the like privileges and rights as if a patent for the inventionhadbeensealedonthedateofthepublicationofthe complete specification, except that the applicant shall not be entitledtoinstituteanyproceedings forinfringementuntilthe patent has been sealed.

(5) [Repealed]

Compare: Patents Act 1949, s 13 (UK); 1921-22 No 18 ss 11, 12; 1946 No 32 s5 Subsection(4)wassubstituted,andsubsection(5)wasinserted,asfrom2September 1996, by section 3 Patents Amendment Act 1996 (1996 No 139).

Section20(5): repealed,on1January2011,bysection58oftheLimitationAct 2010 (2010 No 110).

21 Opposition to grant of patent

(1) At any time within the period prescribed by subsection (2) of this section any person interested may give notice to the Commissioner of opposition to the grant of the patent on any of the following grounds:

(a)
Thattheapplicantforthepatent,orthepersondescribed intheapplicationasthetrueandfirstinventor,obtained the invention or any part thereof from him, or from a person of whom he is the personal representative:
(b)
That the invention, so far as claimed in any claim of the complete specification, has been published in New Zealand before the priority date of the claim
(i)
In any specification filed in pursuance of an application for a patent made in New Zealand and dated within 50 years next before the date of filing of the applicant’s complete specification:
(ii)
In any other document (not being a document of any class described in subsection (1) of section 59 of this Act):
(c)
That the invention, so far as claimed in any claim of the complete specification, is claimed in any claim of a complete specification published on or after the priority date of the applicant’s claim and filed in pursuance of an application for a patent in New Zealand, being a claim of which the priority date is earlier than that of the applicant’s claim:
(d)
Thattheinvention,sofarasclaimedinanyclaimofthe completespecification,wasusedinNewZealandbefore the priority date of that claim:
(e)
Thattheinvention,sofarasclaimedinanyclaimofthe complete specification, is obvious and clearly does not involveanyinventivestephavingregardtomatterpublishedasmentionedinparagraph (b) ofthissubsection, or having regard to what was used in New Zealand before the priority date of the applicant’s claim:
(f)
Thatthesubjectofanyclaimofthecompletespecification isnot an invention within the meaning ofthis Act:
(g)
Thatthecompletespecificationdoesnotsufficientlyand fairly describe the invention or the method by which it is to be performed:
(h)
That, in the case of a convention application, the application was not made within 12 months from the date of the first application for protection for the invention madeinaconventioncountrybytheapplicantoraperson from whom he derives title:
(i)
That, in the case of an application to which an order under section 37 of this Act applies, the failure of the applicant to comply with the requirements imposed on him by or under this Act within the period prescribed by section 19 of this Act and every extension of that periodgrantedunderthatsectionorundersection 93 of this Act was not unintentional:
(j)
That in the case of an application to which an order under section 37 of this Act applies, there was undue delay in applying for the order:
(k)
That,inthecaseofanapplicationundersection 93A of this Act, an extension of time granted by the Commissioner was unwarranted,

but on no other ground.

(2)
Everysuchnoticeshallbegivenwithin3monthsfromthedate ofthepublicationofthecompletespecificationunderthisAct: Provided that on application made to him in that behalf within the said 3 months the Commissioner may extend the prescribed period to 4 months.
(3)
Where any such notice is given, the Commissioner shall give notice of the opposition to the applicant, and shall give to the applicant and the opponent an opportunity to be heard before he decides on the case.
(4)
The grant of a patent shall not be refused on the ground spe cified in paragraph (c) of subsection (1) of this section if no patent has been granted in pursuance of the application mentionedinthatparagraph;andforthepurposesofparagraph (d) orparagraph (e) of thesaidsubsection(1)noaccountshallbe taken of any secret use.

(5) AnappealtotheCourtshallliefromanydecisionoftheCommissioner under this section. Compare: Patents Act 1949, s 14 (UK); 1939 No 26 s 57 Subsection (1)(k) was inserted, as from 20 October 1972, by section 3 Patents Amendment Act 1972 (1972 No 91).

22 Refusal of patent without opposition

(1) If at any time after the acceptance of the complete specification filed in pursuance of an application for a patent and before the grant of a patent thereon it comes to the notice of the Commissioner,otherwisethaninconsequenceofproceedings in opposition to the grant under section 21 of this Act, that the invention, so far as claimed in any claim of the complete specification, has been published in New Zealand before the priority date of the claim

(a)
Inanyspecificationfiledinpursuanceofanapplication for a patent made in New Zealand and dated within 50 years next before the date of filing of the applicant’s complete specification; or
(b)
In any other document (not being a document of any class described in subsection (1) of section 59 of this Act),

theCommissionermayrefusetograntthepatentunlesswithin such time as may be prescribed the complete specification is amended to his satisfaction.

(2) AnappealtotheCourtshallliefromanydecisionoftheCommissioner under this section. Compare: Patents Act 1949, s 15 (UK)

23 Mention of inventor as such in patent

(1) IftheCommissionerissatisfied,uponarequestorclaimmade in accordance with the provisions of this section,

(a)
That the person in repect of or by whom the request or claim is made is the inventor of an invention in respect ofwhichapplicationforapatenthasbeenmade,orofa substantial part of that invention; and
(b)
That the application for the patent is a direct consequence of his being the inventor,

the Commissioner shall, subject to the provisions of this section, cause him to be mentioned as inventor in any patent grantedinpursuanceoftheapplication,inthecompletespecification, and in the register of patents: Providedthatthementionofanypersonasinventorunderthis section shall not confer or derogate from any rights under the patent.

(2)
Forthepurposesofthissectiontheactualdeviserofaninventionorapartofaninventionshallbedeemedtobetheinventor, notwithstanding that any other person is for any of the other purposes of this Act treated as the true and first inventor; and no person shall be deemed to be the inventor of an invention or a part of an invention by reason only that it was imported by him into New Zealand.
(3)
Arequestthatanypersonshallbementionedasaforesaidmay be made in the prescribed manner by the applicant for the patent or (where the person alleged to be the inventor is not the applicant or one of the applicants) by the applicant and that person.
(4)
If any person (other than a person in respect of whom a request in relation to the application in question has been made under subsection (3) of this section) desires to be mentioned asaforesaid,hemaymakeaclaimintheprescribedmannerin that behalf.
(5)
Arequestorclaimundertheforegoingprovisionsofthissectionmustbemadenotlaterthan2monthsafterthedateofthe publication of the complete specification, or within such further period (not exceeding one month) as the Commissioner may, on an application made to him in that behalf before the expiration of the said period of 2 months and subject to payment of the prescribed fee, allow.
(6)
NorequestorclaimundertheforegoingprovisionsofthissectionshallbeentertainedifitappearstotheCommissionerthat therequestorclaimisbaseduponfactswhich,ifprovedinthe caseofanopposition undertheprovisions ofparagraph(a) of subsection (1) of section 21 of this Act by the person in respectoforbywhomtherequestorclaimismade,wouldhave entitled him to relief under that section.
(7)
Subject to the provisions of subsection (6) of this section, whereaclaimismadeundersubsection(4) ofthissection,the Commissionershallgivenoticeoftheclaimtoeveryapplicant forthepatent(notbeingtheclaimant)andtoanyotherperson whom the Commissioner may consider to be interested; and before deciding upon any request or claim made under subsection (3) orsubsection (4) ofthissection,theCommissioner shall,ifrequired,hearthepersoninrespectoforbywhomthe requestorclaimismade,and,inthecaseofa claimunder the saidsubsection (4) anypersontowhomnoticeoftheclaimhas been given as aforesaid.
(8)
Where any person has been mentioned as inventor in pursuance of this section, any other person who alleges that he ought not have been so mentioned may at any time apply to theCommissionerforacertificatetothateffect,andtheCommissioner may, after hearing (if required) any person whom he may consider to be interested, issue such a certificate, and ifhe doesso,heshallrectify the specification andtheregister accordingly.
(9)
AnappealtotheCourtshallliefromanydecisionoftheCommissioner under this section. Compare: Patents Act 1949, s 16 (UK); 1939 No 26 s 58

24 Substitution of applicants, etc

(1)
If the Commissioner is satisfied, on a claim made in the prescribed manner at any time before a patent has been granted, thatbyvirtueofanyassignmentoragreementmadebytheapplicant or one of the applicants for the patent, or by operation oflaw,theclaimantwould,ifthepatentwerethengranted,be entitledthereto ortotheinterestoftheapplicanttherein, or to an undivided share of the patent or of that interest, the Commissionermay,subjecttotheprovisionsofthissection, direct thattheapplicationshallproceedinthenameoftheclaimantor inthenamesoftheclaimantandtheapplicantortheotherjoint applicant or applicants, according as the case may require.
(2)
No such direction as aforesaid shall be given by virtue of any assignment or agreement made by one of 2 or more joint applicants for a patent except with the consent of the other joint applicant or applicants.
(3)
No such direction as aforesaid shall be given by virtue of any assignment or agreement for the assignment of the benefit of an invention unless either
(a)
The invention is identified therein by reference to the number of the application for the patent; or
(b)
ThereisproducedtotheCommissioneranacknowledgment by the person by whom the assignment or agreementwasmadethattheassignmentoragreementrelates to the invention in respect of which that application is made; or
(c)
The rights of the claimant in respect of the invention havebeenfinallyestablishedbyadecisionofanyCourt or by a determination of the Commissioner under the following provisions of this Act.
(4)
Where one of 2 or more joint applicants for a patent dies at anytimebeforethepatenthasbeengranted,theCommissioner may, upon a request in that behalf made by the survivor or survivors, and with the consent of the personal representative ofthedeceased,directthattheapplicationshallproceedinthe name of the survivor or survivors alone.
(5)
If any dispute arises between joint applicants for a patent whether or in what manner the application should be proceeded with, the Commissioner may, upon application made to him in the prescribed manner by any of the parties, and after giving to all parties concerned an opportunity to be heard, give such directions as he thinks fit for enabling the application to proceed in the name of one or more of the parties alone or for regulating the manner in which it shall be proceeded with, or for both those purposes, according as the case may require. In any such case the Commissioner may authorise the application to proceed in the name of one or more of the parties.
(6)
AnappealtotheCourtshallliefromanydecisionoftheCommissioner under this section. Compare: Patents Act 1949, s 17 (UK)

25 Provisions for secrecy of certain inventions

(1)
Where, either before or after the commencement of this Act, an application for a patent has been made in respect of an in
vention,anditappearstotheCommissionerthattheinvention is one of a class notified to him by the Minister of Defence as relevantfordefencepurposes,orisintheopinionoftheCommissioner likely to be valuable for defence purposes, he may givedirectionsforprohibitingorrestrictingthepublicationof information with respect to the invention, or the communicationofsuchinformationtoanypersonorclassofpersonsspecified in the directions; and while such directions are in force the application may, subject to the directions, proceed up to the acceptance of the complete specification, but the acceptance shall not be advertised nor the specification published, andnopatentshallbegrantedinpursuanceoftheapplication.
(2)
Where the Commissioner gives any such directions as aforesaid, he shall give notice of the application and of the directions to the Minister of Defence, and thereupon the following provisions shall have effect, that is to say:
(a)
The Minister of Defence shall, upon receipt of the notice, consider whether the publication of the invention wouldbeprejudicialtothedefenceofNewZealand,and unless a notice under paragraph (c) of this subsection has previously been given by the Minister of Defence tothe Commissioner,shallreconsider thatquestionbeforetheexpirationof9monthsfromthedateoffilingof the application for the patent and at least once in every subsequent year:
(b)
Forthepurposeaforesaid,theMinisterofDefencemay, atanytimeafterthecompletespecificationhasbeenacceptedor,withtheconsentoftheapplicant,atanytime beforethecompletespecificationhasbeenaccepted,inspect the application and any documents furnished to the Commissioner in connection therewith:
(c)
Ifuponconsiderationoftheinventionatanytimeitappears 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 shall give notice to the Commissioner to that effect:
(d)
On receipt of any such notice the Commissioner shall revoke the directions and may, subject to such condi

tions, if any, as he thinks fit, extend the time for doing anything required or authorised to be done by or under this Act in connection with the application, whether or not that time has previously expired.

(3)
Whereacompletespecificationfiledinpursuanceofanapplication for a patent for an invention in respect of which direc tions have been given under this section or under section 26 of this Act is accepted during the continuance in force of the directions, then
(a)
If any use of the invention is made during the continuance in force of the directions by or on behalf of or to the order of a Government Department, the provisions ofsections 55to58 ofthisActshallapplyinrelationto that use as if the patent had been granted for the invention; and
(b)
IfitappearstotheMinisterofDefencethattheapplicant for the patent has suffered hardship by reason of the continuance in force of the directions, the Minister of Financemaymaketohimsuchpayment(ifany)byway of compensation as appears to him to be reasonable, havingregardtothenoveltyandutilityoftheinvention and the purpose for which it is designed, and to any other relevant circumstances.
(4)
Whereapatentisgrantedinpursuanceofanapplicationinrespectofwhichdirectionshavebeengivenunderthissectionor under section 26 of this Act, no renewal fees shall be payable inrespectofanyperiodduringwhichthosedirectionswerein force.
(5)
NopersonresidentinNewZealandshall,exceptundertheauthorityofawrittenpermitgrantedbyoronbehalfoftheCommissioner, make or cause to be made any application outside NewZealandforthegrantofapatentforaninventionunless
(a)
An application for a patent for the same invention or substantiallythesameinventionhasbeenmadeinNew Zealand not less than 6 weeks before the application outside New Zealand; and
(b)
Either no directions have been given under subsection

(1) of this section or under section 26 of this Act in relation to the application in New Zealand, or all such

directions have been revoked: Provided that this subsection shall not apply in relation to an inventionforwhichanapplicationforprotectionhasfirstbeen filed in a country outside New Zealand by a person resident outside New Zealand.

(6) If any person fails to comply with any direction given under this section or makes or causes to be made an application for the grant of a patent in contravention of this section, he shall be guilty of an offence and shall be liable on conviction on indictment to imprisonment for a term not exceeding 2 years ortoafinenotexceeding$1,000,ortobothsuchimprisonment and such fine. Compare: Patents Act 1949, s 18 (UK); 1921-22 No 18 s 33

26 Inventions relating to atomic energy

(1)
WhereanapplicationhasbeenmadetotheCommissionerfor the grant of a patent, and it appears to the Commissioner that theinventionwhichisthesubject-matteroftheapplicationrelatestotheproductionoruseofenergyderivedfromtheatomic nucleus or research into matters connected therewith he shall serve a notice in writing on the Minister of Defence to that effect, and may, notwithstanding anything in this Act or any otherAct,omitordelaythedoingofanythingwhichhewould otherwise be required to do in relation to the application, and givedirectionsforprohibitingorrestrictingthepublicationof information with respect to the subject-matter of the applicationorthecommunicationofthatinformationtoparticularpersons or classes of persons; and any person who contravenes any such direction commits an offence against this section.
(2)
WheretheMinisterofDefenceisnotifiedasaforesaid,heshall forthwith consider whether the invention which is the subject-matter of the application in question is of importance for purposesofdefence,andmayinspectalldocumentsandinformation furnished to the Commissioner in connection with the application, and if he is satisfied either then or subsequently thattheinventionisnotofimportanceforpurposesofdefence he shall serve a notice in writing on the Commissioner to that effect, and thereupon the Commissioner shall cease to exer

35

cisehispowersundersubsection (1) ofthissectioninrelation to that application and shall forthwith revoke any directions given under those powers in relation thereto.

(3)
Where any notice is given by or to the Commissioner under the foregoing provisions of this section in relation to any application, he shall serve a copy of thenotice on the applicant.
(4)
Where,onanapplicationtotheCommissionerforthegrantof a patent, a notice has been served under subsection (1) of this section and 6 months have elapsed from the date of the service of that notice without the service of a notice under sub section (2) of this section in relation to that application, any person who has, before the date of the application, incurred expenseordoneworkinconnectionwiththediscoveryordevelopment of the invention concerned shall be entitled to be paid such compensation in respect of that expense or work as the Minister of Defence may, with the approval of the Minister of Finance, determine, and the compensation shall not in anycasebelessthantheamountoftheexpensereasonablyso incurred, and the amount of that expense shall, in default of agreement between the Minister of Defence and that person, be settled by arbitration: Providedthat,ifanoticeissubsequentlyservedbytheMinis ter of Defence under subsection (2) of this section in relation totheapplication,thereshallberecoverablebytheMinisterof Defence as a debt due to the Crown such part of the compensation paid to any person under this subsection in connection with the invention concerned as may be reasonable, having regard to the length of the period during which powers were exercisedundersubsection (1) ofthissectioninrelationtothe applicationandalltheothercircumstancesofthecase;andthe amount to be so recovered shall, in default of agreement between the Minister of Defence and the said person, be settled by arbitration.
(5)
WheretheCommissionerintheexerciseofpowersundersubsection (1) ofthissectionomitsordelaysthedoingofanything orgivesdirectionsforprohibitingorrestrictingthepublication orcommunicationofinformation,hemay,subjecttosuchconditions,ifany,ashethinksfittoimpose,extendthetimelimit byorunderthisActfordoinganyactwhereheissatisfiedthat
an extension ought to be granted by reason of the exercise of the powers aforesaid.
(6)
Therightofapersontoapplyfor,orobtain,apatentinrespect of an invention shall not be prejudiced by reason only of the fact that the invention has previously been communicated to the Minister of Defence under this section, and a patent in respectofaninventionshallnotbeheldtobeinvalidbyreason only that the invention has been communicated as aforesaid.
(7)
The power of a Government Department and persons author ised by a Government Department under section 55 of this Act shall include power to make, use, exercise, or vend an invention for such purposes relating to the production or use ofatomicenergyorresearchintomattersconnectedtherewith as the Minister of Defence thinks necessary or expedient, and any reference in that section or in sections 56 and 57 of this Act to the services of the Crown shall be construed as including a reference to those purposes.
(8)
Every person who commits an offence against this section shall be liable on conviction on indictment to imprisonment for a term not exceeding 2 years or to a fine not exceeding $1,000, or to both such imprisonment and such fine. Compare: Patents Act 1949, s 106(3) (UK); 1947 No 37 s 6

Treaty application

Sections 26A to 26H and the preceding heading were inserted, as from 1 De cember 1992, by section 7 Patents Amendment Act 1992 (1992 No 81).

26A Treatyapplicationdeemedtobeapplicationaccompanied by complete specification

For the purposes of this Act, a Treaty application shall be deemed to be an application for a patent for an invention accompanied by a complete specification. Sections 26A to 26H and the preceding heading were inserted, as from 1 De

cember 1992, by section 7 Patents Amendment Act 1992 (1992 No 81).

26B Description, claims, and drawings

(1)
The description, claims, and drawings (if any) contained in a Treatyapplicationshallbedeemedtobeacompletespecification for the purposes of this Act.
(2)
Any indications, being indications referred to in Rule 13bis.3(a) of the Treaty regulations, that are contained in a reference to a deposited micro-organism,
(a)
Shall be deemed to form part of the description contained in an international application; and
(b)
Shallaccordingly,pursuanttosubsection (1) ofthissection, form part of the complete specification, even if such indications are contained in another document.

Sections 26A to 26H and the preceding heading were inserted, as from 1 De cember 1992, by section 7 Patents Amendment Act 1992 (1992 No 81).

26C International filing date

ATreatyapplicationshallbedeemedtohavebeenfiledinNew Zealand on its international filing date. Sections 26A to 26H and the preceding heading were inserted, as from 1 De

cember 1992, by section 7 Patents Amendment Act 1992 (1992 No 81).

26D Commissioner to provide international filing date

(1) Subject to subsections (2) and (3) of this section, where

(a)
Arequestcontainedinaninternationalapplicationspecifies New Zealand as a designated State under Article 4(1)(ii) of the Patent Cooperation Treaty; and
(b)
Either
(i)
The receiving Office has refused to accord the international application an international filing date under Article 11(1) of the Patent CooperationTreatyorhasdeclaredthattheinternational application is considered withdrawn; or
(ii)
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 Cooperation Treaty that the refusal or the declaration or the finding was the result of an error or omissiononthepartofthereceivingOfficeortheInternational Bureau,

the Commissioner shall give the application an international filingdate,whichdateshallbethedateofreceiptoftheapplicationbythereceivingOfficeunderArticle11(1)ofthePatent Cooperation Treaty,and theprovisions of this Actshallapply to the application accordingly.

(2)
Where, for the purposes of subsection (1) of this section, the dateofreceiptoftheapplicationbythereceivingOfficecannot beascertained,theCommissionermaygivetheapplicationan international filing date, and the provisions of this Act shall apply to the application accordingly.
(3)
Thissectionshallnotapplytoaninternationalapplicationthat hasbeenfiledinareceivingOfficeinalanguageotherthanthe English language, unless a translation of that application into the English language, verified in accordance with regulations madeunderthisAct,hasbeenfurnishedtotheCommissioner. Sections 26A to 26H and the preceding heading were inserted, as from 1 De

cember 1992, by section 7 Patents Amendment Act 1992 (1992 No 81).

26E Amendments to documents forming part of complete specification

(1)
WhereanEnglishtranslationofaTreatyapplicationhasbeen filedwiththeCommissioner,orhasbeenpublishedunderArticle 21 of the Patent Cooperation Treaty by the International Bureau, the description, claims, and any matter associated with the drawings, contained in the application, are deemed forthepurposesofthisAct,tohavebeenamended,ontheday the translation was filed, by substituting the translated documents for those originally filed.
(2)
Where
(a)
A Treaty application has been amended under Article 19(1) of the Patent Cooperation Treaty; or
(b)
A Treaty application has been amended under Article 34 of the Patent Cooperation Treaty, and New Zealand has been chosen by the applicant to be an elected State underArticle31(4)(a)ofthePatentCooperationTreaty within the prescribed time limit,

the description,claims,and drawingscontained in that Treaty application shall be deemed, for the purposes of this Act, to have been amended on the day on which the amendment was made.

(3) Where a Treaty application has been rectified under Rule 91 of the Treaty regulations, the description, claims, and drawings contained in that Treaty application shall be deemed, for the purposes of this Act, to have been amended on the application’s international filing date. Sections 26A to 26H and the preceding heading were inserted, as from 1 De

cember 1992, by section 7 Patents Amendment Act 1992 (1992 No 81).

26F Treaty application void A Treaty application shall be deemed to be void for the purposes of this Act where

(a)
An applicant withdraws his or her international application, or withdraws the application in relation to New Zealand as a designated State; or
(b)
Subject to Article 25 of the Patent Cooperation Treaty, an international application is considered to be withdrawn pursuant to Article 12(3) or Article 14(1)(b) or Article 14(3)(a) or Article 14(4) of the Patent Cooperation Treaty; or
(c)
Subject to Article 25 of the Patent Cooperation Treaty, thedesignationofNewZealandasadesignatedStateis consideredtobewithdrawnpursuanttoArticle14(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 underArticle39(1)(a)ofthePatentCooperationTreaty within the prescribed time limit.

Sections 26A to 26H and the preceding heading were inserted, as from 1 De cember 1992, by section 7 Patents Amendment Act 1992 (1992 No 81).

26G Requirements for examination of Treaty application

(1)
Subjecttotheprovisionsofsubsection (2) ofthissection,and notwithstanding section 26A of this Act, the Commissioner shall not exercise his or her powers under section 12 of this Act until
(a)
The applicant has fulfilled the applicant’s obligations under Article 22(1) or Article 39(1) of the Patent Cooperation Treaty; and
(b)
The prescribed time limit has expired; and
(c)
Where applicable, a translation of the international application into the English language has been filed with theCommissionerandverifiedinaccordancewithregulations made under this Act; and
(d)
All documents required to be filed pursuant to this Act and any regulations made under this Act have been filed; and
(e)
AllfeesrequiredtobepaidpursuanttothisActandany regulations made under this Act have been paid.
(2)
Notwithstanding the provisions of subsection (1) of this sec tion,theCommissionermay,ontheexpressrequestoftheapplicant,exercisehisorherpowersundersection 12 ofthisAct at any time. Sections 26A to 26H and the preceding heading were inserted, as from 1 De

cember 1992, by section 7 Patents Amendment Act 1992 (1992 No 81).

26H Publication of Treaty applications

The publication of a Treaty application, pursuant to Article 21 of the Patent Cooperation Treaty, shall confer no rights or privileges on the applicant under this Act, and shall have no effect other than to confer upon the application the status of a publisheddocumentforthepurposeofanyinvestigationunder this Act. Sections 26A to 26H and the preceding heading were inserted, as from 1 De

cember 1992, by section 7 Patents Amendment Act 1992 (1992 No 81).

Grant, effect, and term of patent 27 Grant and sealing of patent

(1)
Subject to the provisions of this Act with respect to opposition,andtoanyotherpoweroftheCommissionertorefusethe grant,apatentsealedwiththesealofthePatentOfficeshall,if the prescribed request is made within the time allowed under this section, be granted to the applicant or applicants within thattimeorassoonasmaybethereafter;andthedateonwhich the patent is sealed shall be entered in the register of patents.
(2)
SubjecttothefollowingprovisionsofthisActwithrespectto patents of addition, a request under this section for the sealing ofapatentshallbemade notlater than the expiration of4 months from the date of the publication of the complete specification: Provided that
(a)
Where at the expiration of the said 4 months any proceeding in relation to the application for the patent is pending in any Court or before the Commissioner, the requestmaybemadewithin theprescribedperiodafter the final determination of that proceeding:
(b)
Where the applicant or one of the applicants have died beforetheexpirationofthetimewithinwhichunderthe provisions of this subsection the request could otherwisebemade,thesaidrequestmaybemadeatanytime within 12 months after the date of the death or at such later time as the Commissioner may allow.
(3)
The period within which under subsection (2) of this section a request for the sealing of a patent may be made may from time to timebeextended by the Commissionertosuch longer period as may be specified in an application made to him in that behalf, if the application is made and the prescribed fee paid within that longer period: Providedthatthefirst-mentionedperiodshallnotbeextended under this subsection by more than 6 months or such shorter period as may be prescribed.
(4)
Whereinanycasethelongestperiodformakingarequestfor the sealing of a patent allowable in that case by or under the foregoingprovisionsofthissectionhasbeenallowed,anditis proved to the satisfaction of the Commissioner that hardship would arise in connection with the prosecution by an applicantofanapplicationforapatentinanycountryoutsideNew Zealandunlessthatperiodisextended,thatperiodmaybeextendedfromtimetotimetosuchlongerperiodasappearstothe Commissionertobenecessaryinordertopreventthathardship arising if an application in that behalf is made to him, and the prescribed fee is paid, within the first-mentioned period, or in thecaseof asecondor subsequentapplicationunder thissub
section, within the period to which that period was extended on the last preceding application thereunder.
(5)
Forthepurposesofthissectionaproceedingshallbedeemed tobependingsolongasthetimeforanyappealtherein(apart from any future extension of that time) has not expired, and a proceedingshallbedeemedtobefinallydeterminedwhenthe timeforanappealtherein(apartfromanysuchextension)has expired without the appeal being brought. Compare: Patents Act 1949, s 19 (UK); 1939 No 26 s 59

28 Amendment of patent granted to deceased applicant Where,atanytimeafterapatenthasbeensealedinpursuance ofanapplicationunderthisAct,theCommissionerissatisfied that the person to whom the patent was granted had died, or (in the case of a body corporate) had ceased to exist, before thepatentwassealed,hemayamendthepatentbysubstituting for the name of that person the name of the person to whom the patent ought to have been granted; and the patent shall have effect, and shall be deemed always to have had effect, accordingly. Compare: Patents Act 1949, s 20 (UK)

29 Extent, effect, and form of patent

(1)
ApatentsealedwiththesealofthePatentOfficeshallhavethe sameeffectas ifit weresealedwiththeSealofNewZealand, and shall have effect throughout New Zealand: Providedthatapatentmaybeassignedforanyplaceinorpart of New Zealand as effectually as if it were granted so as to extend to that place or part only.
(2)
Subject to the provisions of this Act and of subsection (3) of section 7 of the Crown Proceedings Act 1950, a patent shall havethesameeffectagainsttheCrownasithasagainstasubject.
(3)
A patent shall be in such form as may be prescribed.
(4)
Apatentshallbegrantedforoneinventiononly;butitshallnot be competent for any person in an action or other proceeding totakeanyobjectiontoapatentonthegroundthatithasbeen granted for more than one invention. Compare: Patents Act 1949, s 21 (UK); 1921-22 No 18 s 16

Subsection(1)wasamended,asfrom28February1977,bysection 8 oftheSeal of New Zealand Act 1977 (1977 No 1) by omitting the word Public.

30 Date and term of patent

(1)
Every patent shall be dated with the date of filing of the complete specification: Provided that no proceeding shall be taken in respect of an infringement committed before the date of the publication of the complete specification.
(2)
The date of every patent shall be entered in the register of patents.
(3)
Thetermofeverypatentshallbe20yearsfromthedateofthe patent.
(4)
A patent shall cease to have effect, notwithstanding anything thereinorinthisAct,ontheexpirationoftheperiodprescribed forthepaymentofanyrenewalfeeifthatfeeisnotpaidwithin the prescribed period or within that period as extended under this section: Providedthat, wheretheperiodprescribedfor the payment of arenewalfeeexpiresbeforethedate4monthsafterthedateof thesealingofthepatent,theperiodforpaymentoftherenewal feeshallbeextendedtothedate4monthsafterthedateofthe sealing of the patent.
(5)
Theperiodprescribedforthepaymentofanyrenewalfee(in cluding any extension of the period under subsection (4) of this section) shall be extended to such period, not being more than 6 months longer than the prescribed period, as may be specifiedinarequestmadetotheCommissioneriftherequest is made and the renewal fee and the prescribed additional fee are paid before the expiration of the period so specified. Compare: Patents Act 1949, s 22 (UK); 1921-22 No 18 ss 15, 19; 1939 No 26

s 60

Subsection(3)wassubstituted,asfrom1January1995,bysection 4(1) Patents Amendment Act 1994 (1994 No 122). See sections 17 and 18 of that Act as to the transitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

Subsection (5) was amended, as from 1 January 1995, by section 4(2) Patents AmendmentAct1994(1994No122)bysubstitutingtheexpression6monthsfortheexpression3months. Seesections17and18ofthatActastothetransitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

31

Sections 31 to 33 were repealed, as from 1 January 1995, by section 5 Patents Amendment Act 1994 (1994 No 122). See sections 17 and 18 of that Act as to the transitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

32

Sections 31 to 33 were repealed, as from 1 January 1995, by section 5 Patents Amendment Act 1994 (1994 No 122). See sections 17 and 18 of that Act as to the transitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

33

Sections 31 to 33 were repealed, as from 1 January 1995, by section 5 Patents Amendment Act 1994 (1994 No 122). See sections 17 and 18 of that Act as to the transitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

34 Patents of addition

(1)
Subject to the provisions of this section, where application is made for a patent in respect of any improvement in or modification of an invention (in this Act referred to as the main invention) and the applicant also applies or has applied for a patent for that invention or is the patentee in respect thereof, the Commissioner may, if the applicant so requests, grant the patentfortheimprovementormodificationasapatentofaddition.
(2)
Subject to the provisions of this section, where an invention, beinganimprovementinormodificationofanotherinvention, is the subject of an independent patent and the patentee in respectofthatpatentisalsothepatenteeinrespectofthepatent forthemaininvention,theCommissionermay,ifthepatentee sorequests,byorderrevokethepatentfortheimprovementor modification and grant to the patentee a patent of addition in respect thereof bearing the same date as the date of the patent so revoked.
(3)
Apatentshallnotbegrantedasapatentofadditionunlessthe date of filing of the complete specification was the same as or later than the date of filing of the complete specification in respect of the main invention.
(4)
Apatentofadditionshallnotbesealedbeforethesealingofthe patent for the main invention; and if the period within which, but for this provision, a request for the sealing of a patent of addition could be made under section 27 of this Act expires beforetheperiodwithinwhicharequestforthesealingofthe patent for the main invention may be so made, the requestfor the sealing of the patent of addition may be made at any time within the last-mentioned period.
(5)
A patent of addition shall be granted for a term equal to that of the patent for the main invention, or so much thereof as is unexpired, and shall remain in force during that term or until thepreviouscesserofthepatentforthemaininventionandno longer: Provided that
(a)
If the term of the patent for the main invention is extended under the foregoing provisions of this Act, the term of the patentofadditionmayalsobe extendedaccordingly; and
(b)
If the patent for the main invention is revoked under this Act, the Court or Commissioner, as the case may be, may order that the patent of addition shall become an independent patent for the remainder of the term of the patent for the main invention, and thereupon the patent shall continue in force as an independent patent accordingly.
(6)
No renewal fees shall be repayable in respect of a patent of addition; but, if any such patent becomes an independent patent by virtue of an order under subsection (5) of this section, the same fees shall thereafter be payable, upon the same dates, as if the patent had been originally granted as an independent patent.
(7)
The grant of a patent of addition shall not be refused, and a patent granted as a patent of addition shall not be revoked or invalidated, on the ground only that the invention claimed in thecompletespecificationdoesnotinvolveanyinventivestep having regard to any publication or use of
(a)
The main invention described in the complete specification relating thereto; or
(b)
Anyimprovementinormodificationofthemaininvention described in the complete specification of a patent ofadditionto thepatentforthemaininventionorofan application for such a patent of addition,

andthevalidityofapatentofadditionshallnotbequestioned onthegroundthattheinventionoughttohavebeenthesubject of an independent patent.

(8) AnappealtotheCourtshallliefromanydecisionoftheCommissioner under this section. Compare: Patents Act 1949, s 26 (UK); 1921-22 No 18 s 21

Restoration of lapsed patents and patent applications 35 Restoration of lapsed patents

(1)
Whereapatenthasceasedtohaveeffectbyreasonofafailure to pay any renewal fee within the prescribed period or within that period as extended under section 30 of this Act, and the Commissionerissatisfieduponapplicationthatthefailurewas unintentionalandthatnounduedelayhasoccurredinthemakingorprosecutionoftheapplication,heshallbyorderrestore the patent and any patent of addition specified in the application which has ceased to have effect on the cesser of that patent.
(2)
An application under this section may be made by the person who was the patentee or by his personal representative; and where the patent was held by 2 or more persons jointly, the applicationmay,withtheleaveoftheCommissioner,bemade by one or more of them without joining the others.
(3)
Anapplicationunderthissectionshallcontainastatement(to be verified in such manner as may be prescribed) fully setting out the circumstances which led to the failure to pay the renewal fee; and the Commissioner may require from the applicant such further evidence as he may think necessary.
(4)
Ifafterhearingtheapplicant(iftheapplicantsorequiresorthe Commissioner thinks fit) the Commissioner is satisfied that a prima facie case has been made out for an order under this section, he shall advertise the application in the Journal; and withintheprescribedperiodanypersonmaygivenoticetothe

47

Commissioner of opposition thereto on either or both of the following grounds, that is to say,

(a)
Thatthefailuretopaytherenewalfeewasnotunintentional; or
(b)
That there has been undue delay in the making of the application.
(5)
If notice of opposition is given within the period aforesaid, the Commissioner shall notify the applicant, and shall give to him and to the opponent an opportunity to be heard before he decides the case.
(6)
If no notice of opposition is given within the period aforesaid or if, in the case of opposition, the decision of the Commissioner is in favour of the applicant, the Commissioner shall, upon payment of any unpaid renewal fee and such additional fee as may be prescribed, make the order in accordance with the application.
(7)
An order under this section for the restoration of a patent
(a)
May be made subject to such conditions as the Commissioner thinks fit, including in particular a condition requiringtheregistrationintheregisterofpatentsofany matter in respect of which the provisions of this Act as to entries in that register have not been complied with; and
(b)
Shallcontainorbesubjecttosuchprovisionasmaybe prescribed for the protection of persons who may have beguntoavailthemselvesofthepatentedinventionbetweenthedatewhenthepatentceasedtohaveeffectand the date of the application under this section,

andifanyconditionofanorderunderthissectionisnotcomplied with by the patentee, the Commissioner may, after givingtothepatenteeanopportunitytobeheard,revoketheorder andgivesuchdirectionsconsequentialontherevocationashe thinks fit.

(8) AnappealtotheCourtshallliefromanydecisionoftheCommissioner under this section. Compare: Patents Act 1949, s 27 (UK); 1921-22 No 18 s 22

36 Restoration of applications where patent not sealed

(1)
Whereapatenthasnotbeensealedbyreasononlythattheprescribedrequestwasnot made withinthetimeallowed forthat purpose by or under section 27 of this Act, then if the Com missioner is satisfied, upon application made by the applicant for the patent, that the failure to make the request was unintentional and that no undue delay has occurred in making the applicationhemayorderthepatenttobesealednotwithstanding that the prescribed request was not made as aforesaid.
(2)
Anapplicationunderthissectionshallcontainastatement(to beverified insuch mannerasmaybeprescribed)fully setting outthecircumstanceswhichledtothefailuretomaketheprescribed request; and the Commissioner may require from the applicant such further evidence as he may think necessary.
(3)
If the Commissioner (after hearing the applicant, if the applicantsorequiresortheCommissionerthinksfit)issatisfiedthat a prima facie case has been made out for an order under this section, he shall advertise the application in the Journal; and within the prescribed period any person may give notice to theCommissionerofoppositiontheretoonthegroundthatthe failuretomaketheprescribedrequestwasnotunintentionalor that undue delay has occurred in making the application.
(4)
If notice of opposition is given within the period aforesaid, the Commissioner shall notify the applicant and shall give to him and to the opponent an opportunity to be heard before he decides the case.
(5)
Ifnonoticeofoppositionisgivenwithintheperiodaforesaid, or if in the case of opposition the decision of the Commissioner is in favour of the applicant, the Commissioner shall, upon payment of the fee prescribed in respect of the making oftherequestforsealingandofsuchadditionalfeeasmaybe prescribed,maketheorderinaccordancewiththeapplication.
(6)
Anorderunderthissectionforthesealingofapatentshallcontainorbesubjecttosuchprovisionasmaybeprescribedforthe protectionofpersonswhomayhavebeguntoavailthemselves oftheinventionbetweenthedatewhenthetimeallowedbyor undersection 27 ofthisActformakingtheprescribedrequest expired and the date of the application under this section.
(7)
AnappealtotheCourtshallliefromanydecisionoftheCommissioner under this section. Compare: Patents Act 1949, s 28 (UK); 1921-22 No 18 s 22

37 Restoration of application where complete specification not accepted

(1)
Whereanapplicanthasnotcompliedwithalltherequirements imposed on him by or under this Act within the period pre scribed by section 19 of this Act, or within any extension of the period granted by the Commissioner under that section or under section 93 of this Act, and the application has accord ingly become void, the applicant may apply to the Commissioner in the prescribed manner for an order restoring the application and extending the period for complying with the requirements imposed on the applicant by or under this Act to such date as may be specified in that behalf in the order.
(2)
Everysuchapplicationshallcontainastatementofthecircumstanceswhichledtothefailureoftheapplicanttocomplywith the requirements imposed on him by or under this Act.
(3)
Ifitappearsfromthatstatementthatanyomissiononthepart oftheapplicantwasunintentionalandthatnounduedelayhas occurred in the making of the application, the Commissioner shall advertise the application and within such period as may beprescribed any person may give notice of opposition at the Patent Office.
(4)
WhereanysuchnoticeisgiventheCommissionershallnotify the applicant thereof.
(5)
AftertheexpirationoftheprescribedperiodtheCommissioner shall hear the case, and issue an order which shall either
(a)
Restore the application and extend the period for complying with the requirements imposed on the applicant by or under this Act to a period to be specified in that behalf in the order; or
(b)
Dismiss the application.
(6)
Anorderunderthissectionshallcontainorbesubjecttosuch provisions as may be prescribed for the protection of persons whomayhaveavailedthemselvesoftheinventionthesubject oftheapplicationforapatentbetweenthedatewhentheperiod
prescribed by section 19 of this Act, and every extension of that period granted under that section or under section 93 of this Act, for complying with all the requirements imposed on the applicant by or under this Act expired and the date of the application under this section.
(7)
AnappealtotheCourtshallliefromthedecisionoftheCommissioner under this section. Compare: 1924 No 40 s 4

Amendment of specifications 38 Amendment of specification with leave of Commissioner

(1)
Subject to the provisions of section 40 of this Act, the Com missionermay, upon applicationmadeunderthissectionbya patentee, or by an applicant for a patent at any time after the acceptance of the complete specification, allow the complete specificationtobeamendedsubjecttosuchconditions,ifany, as the Commissioner thinks fit: Provided that the Commissioner shall not allow a specification to be amended under this section upon an application made while any action before the Court for infringement of the patent or any proceeding before the Court for the revocation of the patent is pending.
(2)
Everyapplicationforleavetoamendaspecificationunderthis section shall state the nature of the proposed amendment and shallgivefullparticularsofthereasonsforwhichtheapplication is made.
(3)
Any application for leave to amend a specification under this section, and the nature of the proposed amendment, shall be advertised in the prescribed manner: Provided that where the application is made before the publication of the complete specification, the Commissioner may, ifhethinksfit,dispensewithadvertisementunderthissubsection or direct that advertisement shall be postponed until the complete specification is published.
(4)
Withintheprescribedperiodaftertheadvertisementofanapplicationunderthissection,anypersonmaygivenoticetothe Commissioner of opposition thereto; and where such a notice is given within the period aforesaid, the Commissioner shall

51

notify the person by whom the application under this section is made and shall give to that person and to the opponent an opportunity to be heard before he decides the case.

(5)
AnappealtotheCourtshallliefromanydecisionoftheCommissioner under this section.
(6)
Thissectionshallnotapplyinrelationtoanyamendmentofa specificationeffectedinproceedingsinoppositiontothegrant ofapatentoronareferencetotheCommissionerofadispute astotheinfringementorvalidityofaclaim,oreffectedinpursuance of any provision of this Act authorising the Commissionertodirectareferencetoanotherspecificationorpatentto beinserted,ortorefusetograntapatent,ortorevokeapatent, unless the specification is amended to his satisfaction. Compare: Patents Act 1949, s 29 (UK); 1921-22 No 18 s 23

39 Amendment of specification with leave of Court

(1)
In any action for infringement of a patent or any proceeding beforetheCourtfortherevocationofapatent,theCourtmay, subject to the provisions of section 40 of this Act, by order allowthepatenteetoamendhiscompletespecificationinsuch manner and subject to such terms as to costs, advertisements, or otherwise, as the Court may think fit; and if in any such proceedingsforrevocationtheCourtdecidesthatthepatentis invalid, the Court may allow the specification to be amended under this section instead of revoking the patent.
(2)
Where an application for an order under this section is made to the Court, the applicant shall give notice of the application to the Commissioner, and the Commissioner shall be entitled to appear and be heard, and shall appear if so directed by the Court. Compare: Patents Act 1949, s 30 (UK); 1921-22 No 18 s 24

40 Supplementary provisions as to amendment of specification

(1)
After the acceptance of a complete specification, no amendment thereof shall be effected except by way of disclaimer, correction, or explanation, and no amendment thereof shall be allowed, except for the purpose of correcting an obvious mistake, theeffectofwhich wouldbethatthespecificationas
amendedwouldclaimordescribematternotinsubstancedisclosed in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.
(2)
Where, after the date of the publication of a complete specification, any amendment of the specification is allowed or approvedby the Commissioner or the Court, the rightof the patenteeorapplicanttomaketheamendmentshallnotbecalled inquestionexceptonthegroundoffraud;andtheamendment shallinallCourtsandforallpurposesbedeemedtoformpart of the specification: Providedthatinconstruingthespecificationasamendedreferencemaybemadetothespecificationasoriginallypublished.
(3)
Where, after the date of the publication of a complete specification, any amendment of the specification is allowed or approved as aforesaid, the fact that the specification has been amended shall be advertised in the Journal. Compare: Patents Act 1949, s 31 (UK); 1921-22 No 18 ss 23(6), 24(1)

Revocation and surrender of patents 41 Revocation of patent by Court

(1)
Subject to the provisions of this Act, a patent may, on the applicationofanypersoninterested,berevokedbytheCourton any of the following grounds, that is to say,
(a)
Thattheinvention,sofarasclaimedinanyclaimofthe complete specification, was claimed in a valid claim of earlier priority date contained in the complete specification of another patent granted in New Zealand:
(b)
ThatthepatentwasgrantedontheapplicationofapersonnotentitledundertheprovisionsofthisActtoapply therefor:
(c)
That the patent was obtained in contravention of the rights of the person who makes the application to the Court or anypersonunderorthrough whomhe claims:
(d)
Thatthesubjectofanyclaimofthecompletespecification isnot an invention within the meaning ofthis Act:
(e)
That the invention, so far as claimed in any claim of the complete specification, is not new having regard to what was known or used before the priority date of the claim in New Zealand:
(f)
Thattheinvention,sofarasclaimedinanyclaimofthe completespecification,isobviousanddoesnotinvolve any inventive step having regard to what was known or used before the priority date of the claim in New Zealand:
(g)
Thattheinvention,sofarasclaimedinanyclaimofthe complete specification, is not useful:
(h)
Thatthecompletespecificationdoesnotsufficientlyand fairlydescribetheinventionandthemethodbywhichit istobeperformed,ordoesnotdisclosethebestmethod of performing it which was known to the applicant for the patent and for which he was entitled to claim protection:
(i)
That the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of the complete specification is not fairly based on the matter disclosed in the specification:
(j)
That the patent was obtained on a false suggestion or representation:
(k)
(l)
That the invention, so far as claimed in any claim of the complete specification, was secretly used in New Zealand,otherwisethanasmentionedinsubsection (2) of this section, before the priority date of that claim:
(m)
That the patent has been granted contrary to law.
(2)
Forthepurposesofparagraph (n( �/span> ofsubsection(1)ofthissection, no account shall be taken of any use of the invention
(a)
For the purpose of reasonable trial or experiment only; or
(b)
ByaGovernmentDepartmentoranypersonauthorised by a Government Department, in consequence of the applicant for the patent or any person from whom he derives title having communicated or disclosed the invention directly or indirectly to a Government Department or person authorised as aforesaid; or
(c)
By any other person, in consequence of the applicant forthepatentoranypersonfromwhomhederivestitle having communicated or disclosed the invention, and without the consent or acquiescence ofthe applicant or of any person from whom he derives title,

and for the purposes of paragraph (e) or paragraph (f) of the saidsubsection(1)noaccountshallbetakenofanysecretuse.

(3) Without prejudice to the provisions of subsection (1) of this section, a patent may be revoked by the Court,

(a)
On the application of a Government Department, if the Court is satisfied that the patentee has without reasonablecausefailedtocomplywitharequestoftheDepartmenttomake,use,orexercisethepatentedinventionfor the services of the Crown upon reasonable terms; or
(b)
On the application, with the written consent of the Attorney-General, of any person not otherwise entitled to apply under this section.

(4) Everygroundonwhichapatentmayberevokedshallbeavailableasagroundofdefenceinanyproceedingfortheinfringement of the patent. Compare: Patents Act 1949, s 32 (UK);1921-22 No 18s 27;1939No26 s 61 Subsection (1)(k) of the principal Act was repealed, as from 1 January 1995, by section 6 Patents Amendment Act 1994 (1994 No 122). See sections 17 and 18 of that Act as to the transitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

42 Revocation of patent by Commissioner

(1)
At any time within 12 months after the sealing of a patent, any person interested who did not oppose the grant of the patent may apply to the Commissioner for an order revoking the patent on any one or more of the grounds upon which the grant of the patent could have been opposed: Providedthatwhenanactionforinfringement,orproceedings for the revocation, of a patent are pending in any Court, an application to the Commissioner under this section shall not be made except with the leave of the Court.
(2)
Whereanapplicationismadeunderthissection,theCommissioner shall notify the patentee and shall give to the applicant and the patentee an opportunity to be heard before deciding the case.
(3)
If on an application under this section the Commissioner is satisfied that any of the grounds aforesaid are established, he maybyorderdirect thatthepatentshall berevokedeitherunconditionally or unless within such time as may be specified in the order the complete specification is amended to his satisfaction: Provided that the Commissioner shall not make an order for theunconditionalrevocationofapatentunderthissectionunlessthecircumstancesaresuchaswouldhavejustifiedhimin refusingtograntthepatentinproceedingsundersection 21 of this Act.
(4)
AnappealtotheCourtshallliefromanydecisionoftheCommissioner under this section. Compare: Patents Act 1949, s 33 (UK);1921-22 No 18s 28;1939No26 s 62

43 Surrender of patent

(1)
A patentee may at any time by notice given to the Commissioner offer to surrender his patent.
(2)
Where such an offer is made, the Commissioner shall advertise the offer in the prescribed manner; and within the prescribed period after such advertisement any person interested maygivenoticetotheCommissionerofoppositiontothesurrender.
(3)
Where any such notice of opposition is duly given, the Commissioner shall notify the patentee.
(4)
IftheCommissioner(afterhearingthepatenteeandanyopponent,ifdesirousofbeingheard)issatisfiedthatthepatentmay properlybesurrendered,hemayaccepttheofferandbyorder revoke the patent.
(5)
AnappealtotheCourtshallliefromanydecisionoftheCommissioner under this section. Compare: Patents Act 1949, s 34 (UK); 1921-22 No 18 s 28(3)

Voluntary endorsement of patent 44 Endorsement of patent licences of right

(1)
Atanytimeafterthesealingofapatentthepatenteemayapply to the Commissioner for the patent to be endorsed with the words “licences of right”; and where such an application is
made, the Commissioner shall notify the application to any person entered on the register as entitled to an interest in the patent,andifsatisfied,aftergivinganysuchpersonanopportunitytobeheard,thatthepatenteeisnotprecludedbycontract fromgrantinglicencesunderthepatent,causethepatenttobe endorsed accordingly.
(2)
Where a patent is endorsed under this section
(a)
Any person shall, at any time thereafter, be entitled as ofrighttoalicenceunderthepatentuponsuchtermsas may,indefaultofagreement,besettledbytheCommissioner on the application of the patentee or the person requiring the licence:
(b)
TheCommissionermay,ontheapplicationoftheholder of any licence granted under the patent before the endorsement, order the licence to be exchanged for a licence to be granted by virtue of the endorsement upon terms to be settled as aforesaid:
(c)
If in proceedings for infringement of the patent (otherwise than by the importation of goods) the defendant undertakestotakealicenceupontermstobesettledby the Commissioner as aforesaid, no injunction shall be granted against him, and the amount (if any) recoverable against him by way of damages shall not exceed double the amount which would have been payable by him as licensee if such a licence had been granted before the earliest infringement:
(d)
The renewal fees payable in respect of the patent after the date of the endorsement shall be one-half of the renewal fees which would be payable if the patent were not so endorsed.
(3)
The licensee under any licence granted by virtue of the endorsement of a patent under this section shall (unless, in the case of a licence the terms of which are settled by agreement, the licence otherwise expressly provides) be entitled to call uponthepatenteetotakeproceedingstopreventanyinfringementofthepatent;andifthepatenteerefusesorneglectstodo sowithin2monthsafterbeingsocalledupon,thelicenseemay
institute proceedings for the infringement in his own name as if he were patentee, making the patentee a defendant: Provided that a patentee so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.
(4)
Anapplicationfortheendorsementofapatentunderthissectionshallcontainastatement(tobeverifiedinsuchmanneras may be prescribed) that the patentee is not precluded by contractfromgrantinglicencesunderthepatent;andtheCommissionermayrequirefromtheapplicantsuchfurtherevidenceas he may think necessary.
(5)
Anapplicationmadeunderthissectionfortheendorsementof a patent of addition shall be treated as an application for the endorsement of the patent for the main invention also, and an application made under this section for the endorsement of a patentinrespectofwhichapatentofadditionisinforceshall be treated as an application for the endorsement of the patent of addition also; and where a patent of addition is granted in respect of a patent already endorsed under this section, the patent of addition shall also be so endorsed.
(6)
Allendorsementsofpatentsunderthissectionshallbeentered in the register of patents and shall be published in the Journal andinsuchothermannerastheCommissionerthinksdesirable for bringing the endorsement to the notice of manufacturers.
(7)
AnappealtotheCourtshallliefromanydecisionoftheCommissioner under this section. Compare: Patents Act 1949, s 35 (UK); 1921-22 No 18 s 26

45 Cancellation of endorsement under section 44

(1)
Atanytimeafterapatenthasbeenendorsedundersection 44 of this Act, the patentee may apply to the Commissioner for cancellation of the endorsement; and where such an application is made and the balance paid of all renewal fees which would have been payable if the patent has not been endorsed, the Commissioner may, if satisfied that there is no existing licence under the patent or that all licensees under the patent consent to the application, cancel the endorsement accordingly.
(2)
Within the prescribed period after a patent has been endorsed as aforesaid, any person who claims that the patentee is, and wasatthetimeoftheendorsement,precludedbyacontractin which the claimant is interested from granting licences under the patent may apply to the Commissioner for cancellation of the endorsement.
(3)
Where the Commissioner is satisfied, on application made under subsection (2) of this section, that the patentee is and was precluded as aforesaid, he shall cancel the endorsement; and thereupon the patentee shall be liable to pay, within such period as may be prescribed, a sum equal to the balance of all renewal fees which would have been payable if the patent had not been endorsed, and if that sum is not paid within that period the patent shall cease to have effect at the expiration of that period.
(4)
Wheretheendorsementofapatentiscancelledunderthissection,therightsandliabilitiesofthepatenteeshallthereafterbe the same as if the endorsement had not been made.
(5)
The Commissioner shall advertise in the prescribed manner anyapplicationmadetohimunderthissection;andwithinthe prescribed period after such advertisement,
(a)
Inthecaseofanapplicationundersubsection (1) ofthis section, any person interested; and
(b)
Inthecaseofanapplicationundersubsection (2) ofthis

section, the patentee,maygivenoticetotheCommissionerofoppositiontothecancellation.

(6)
Where any such notice of opposition is given, the Commissionershallnotifytheapplicant,andshallgivetotheapplicant and the opponent an opportunity to be heard before deciding the case.
(7)
An application under this section for the cancellation of the endorsement of a patent of addition shall be treated as an applicationfor thecancellationoftheendorsement of thepatent forthemaininventionalso,andanapplicationmadeunderthis section for the cancellation of the endorsement of a patent in respectofwhichapatentofadditionisinforceshallbetreated asanapplicationforthecancellationoftheendorsementofthe patent of addition also.
(8)
AnappealtotheCourtshallliefromanydecisionoftheCommissioner under this section. Compare: Patents Act 1949, s 36 (UK); 1921-22 No 18 s 26(5)

Compulsory licences, etc 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 sectionarethatamarketforthepatentedinventionisnotbeing supplied,orisnotbeingsuppliedonreasonableterms,inNew 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 makeanorderforthegrantofalicenceinaccordancewiththe application upon such terms as the Court thinks fit.
(4)
A licence granted under this section
(a)
Is not exclusive:
(b)
Mustnotbeassignedotherwisethaninconnectionwith the goodwill of the business in which the patented invention is used:
(c)
Is limited to the supply of the patented invention predominantly in New Zealand.
(5)
Anylicencegrantedunderthissectionmay,ontheapplication 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, thatpersonshallpaysuchremunerationtothepatenteeasmay be agreed, or as may be determined by a method agreed, betweenthatpersonandthepatenteeor,indefaultofagreement, asisdeterminedbytheCourtontheapplicationofthatperson or the patentee.
(7)
Nolicenceshallbegrantedunderthissectionunlesstheperson applying for the licence, having taken all reasonable steps to doso,hasbeenunabletoobtainalicence,ortoobtainalicence 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. Compare: Patents Act 1949, s 37 (UK); 1921-22 No 18 s 29; 1939 No 26 s

63(d)

This section was substituted, as from 1 January 1995, by section 7 Patents Amendment Act 1994 (1994 No 122). See sections 17 and 18 of that Act as to the transitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

47

Thissectionwasrepealed,asfrom1January1995,bysection 8 PatentsAmendmentAct1994(1994No122). See sections 17 and 18 ofthatActastothetran sitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

48 Exercise of powers on applications under section 46

The powers of the Court on an application under section 46 of this Act shall be exercised with a view to securing that the inventor or other person beneficially entitled to a patent shall receive reasonable remuneration having regard to the nature of the invention. Compare: Patents Act 1949, s 39 (UK); 1921-22 No 18 s 29(1), (4)

This section was substituted, as from 1 January 1995, by section 9 Patents Amendment Act 1994 (1994 No 122). See sections 17 and 18 of that Act as to the transitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

49

Sections 48 to 50 were repealed, as from 1 January 1995, by section 10(1) Patents Amendment Act 1994 (1994 No 122). See sections 17 and 18 of that Act as to the transitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

50

Sections 48 to 50 were repealed, as from 1 January 1995, by section 10(1) Patents Amendment Act 1994 (1994 No 122). See sections 17 and 18 of that Act as to the transitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

51

This section was repealed, as from 19 August 1992, by section 8(1) Patents Amendment Act 1992 (1992 No 81).

52

Subsection(1)oftheoriginalsection52wasamended,asfrom19August1992, bysection 8(2) PatentsAmendmentAct1992(1992No81)bysubstitutingthe expression 50for the expression 51.

This section was repealed, as from 1 January 1995, by section 10(2) Patents Amendment Act 1994 (1994 No 122). See sections 17 and 18 of that Act as to the transitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

53

Subsection(1)oftheoriginalsection53wasamended,asfrom19August1992, bysection 8(2) PatentsAmendmentAct1992(1992No81)bysubstitutingthe expression 50for the expression 51.

This section was repealed, as from 1 January 1995, by section 10(2) Patents Amendment Act 1994 (1994 No 122). See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

54 Supplementary provisions

(1)
AnyorderunderthisActforthegrantofalicenceshall,withoutprejudicetoanyothermethodofenforcement,haveeffect asifit were a deed,executedbythepatentee andallother necessaryparties,grantingalicenceinaccordancewiththeorder.
(2)
(3)
Noordershallbemadeinpursuanceofanyapplicationunder section 46 of this Act which would be at variance with any treaty, convention, arrangement, or engagement applying to New Zealand and any convention country. Compare: Patents Act 1949, s 45 (UK); 1921-22 No 18 s 30

Subsection (2) was repealed, as from 1 January 1995, by section 11(1) Patents Amendment Act 1994 (1994 No 122). See sections 17 and 18 of that Act as to the transitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

Subsection (3)wasamended,as from 1 January1995,bysection 11(2)Patents Amendment Act 1994 (1994 No 122) by substituting the expression section 46for the expression sections 46 to 50. See sections 17 and 18 of that

62 Act as to the transitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

Use of patented inventions for services of the Crown 55 Use of patented inventions for services of the Crown

(1)
Subject to sections 58A to 58C of this Act, but notwithstand ing any other provision of this Act, any Government Department, and any person authorised 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.
(2)
For the purposes of this section and section 56 of this Act,
(a)
Any use of an invention for the supply to the GovernmentofanycountryoutsideNewZealand,inpursuance of any agreement or arrangement between the GovernmentofNewZealandandtheGovernmentofthatcountry, of articles required for the defence of that country shallbedeemedtobeauseoftheinventionfortheservices of the Crown:
(b)
ThepowerofaGovernmentDepartmentorapersonauthorised 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 authorisedbyaGovernmentDepartmentunderthissectiontovendapatentedinventionshallnot,inthecaseof 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 thattheuseofanypatentedinventionbyanypersonorbyany classofpersonsengagedinaparticularindustryisnecessaryor desirable to enable full benefit to be derived by the members of the public in New Zealand of any enterprise or undertak

ing in which the Crown or any Government Department has acompleteoralmostcompletemonopoly, anysuchuseofthe 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. Compare: Patents Act 1949, s 46 (UK);1921-22 No18 s 32; 1943 No 6 s 4 This section was substituted, as from 1 January 1995, by section 12 Patents Amendment Act 1994 (1994 No 122). See sections 17 and 18 of that Act as to the transitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

56 Rights of third parties in respect of Crown use

(1) In relation to any use of a patented invention, or an invention inrespectofwhichanapplicationforapatentispending,made for the services of the Crown

(a)
ByaGovernmentDepartmentorapersonauthorisedby aGovernmentDepartmentundersection 55 ofthisAct; or
(b)
By the patentee or applicant for the patent to the order

of a Government Department,theprovisionsofanylicence,assignment,oragreementmade, whether before or after the commencement of this Act, between the patentee or applicant for the patent, or any person whoderivestitlefromhimorfromwhomhederivestitle,and anypersonotherthanaGovernmentDepartmentshall,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 model, document, or information, relating thereto, or provideformakingofpaymentsinrespectofanysuchuse,or calculated by reference thereto; and the reproduction or publicationofanymodelordocumentinconnectionwiththesaid useshallnotbedeemedtobeaninfringementofanycopyright subsisting in the model or document.

(2)
(3)

64

(4) Compare: PatentsAct 1949, s 47 (UK); 1921-22 No 18 s 32(1);1943No6s 4 Subsection (1)was amended,asfrom1January 1995,bysection13(1)Patents Amendment Act 1994 (1994 No 122) by inserting the words , subject to sections58Aand58CofthisAct,. See sections 17 and 18 ofthatActastothetran sitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

Subsections (2) to (4) were repealed, as from 1 January 1995, by section 13(2) Patents Amendment Act 1994 (1994 No 122). See sections 17 and 18 of that Act as to the transitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

57 Reference of disputes as to Crown use

(1)
Any dispute as to the exercise by a Government Department or a person authorised by a Government Department of the powers conferred by section 55 of this Act, or as to the terms fortheuseofaninventionfortheservicesoftheCrownthereunder may be referred to the Court by either party to the disputeinsuchmannerasmaybeprescribedbyrulesoftheCourt.
(2)
In any proceedings under this section to which a Government Department is a party, the Department may,
(a)
If the patentee is a party to the proceedings, apply for revocationofthepatentuponanygrounduponwhicha patent may be revoked under section 41 of this Act;
(b)
Inanycase,putinissuethevalidityofthepatentwithout applying for its revocation.
(3)
In determining any dispute referred to the Court under this section, the Court shall have regard to
(a)
Any benefit or compensation that the patentee of the patented invention may have received, or may be entitled to receive, directly or indirectly from any GovernmentDepartmentorpersonauthorisedbyaGovernmentDepartmentinrespectoftheinventioninquestion:
(b)
The need to ensure that the patentee shall receive reasonableremunerationhavingregardtothenatureofthe patented invention.
(4)
In any proceedings under this section, the Court may at any time order the whole proceedings or any question or issue of factarisingthereintobereferredtoaspecialorofficialreferee oranarbitratoronsuchtermsastheCourtmaydirect;andref

erencestotheCourtintheforegoingprovisionsofthissection shall be construed accordingly. Compare: Patents Act 1949, s 48 (UK); 1921-22 No 18 s 32(2); 1943 No 6 s

4(3)

This section was substituted, as from 1 January 1995, by section 14 Patents Amendment Act 1994 (1994 No 122). See sections 17 and 18 of that Act as to the transitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

58 Special provisions as to Crown use during emergency Subjecttosections 58Ato58C ofthisAct,thepowersexercisable in relation to an invention by a Government Department or a person authorised by a Government Department under section 55 ofthisAct,shallincludepowertomake,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 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.

Compare: Patents Act 1949, s 49 (UK); 1943 No 6 s 4

Section 58 was substituted, as from 1 January 1995, by section 15 Patents Amendment Act 1994 (1994 No 122). See sections 17 and 18 of that Act as to the transitional provisions. See clause 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

Paragraph (b) was substituted, as from 1 December 2002, by section 117 Civil Defence Emergency Management Act 2002 (2002 No 33). See sections 118 to 121 of that Act as to the transitional provisions.

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)
Mustnotbeassignedotherwisethaninconnectionwith the goodwill of the business in which the patented invention is used:
(c)
Is, notwithstanding subsection (2)(a) of that section, limitedtothesupplyofthepatentedinventionpredominantly in New Zealand by a Government Department

or a person authorised by a Government Department under that section.

(2)
The right to use a patented invention under section 55 of this Actmay,ontheapplicationofanyinterestedparty,beterminatedbytheCourt,wheretheCourtissatisfiedthatthecircumstancesthatgaverisetotherighttousethepatentedinvention have ceased to exist and are unlikely to recur.
(3)
Except in a case to which section 58 of this Act applies, the righttouseapatentedinventionundersection 55 ofthisActis subjecttotheGovernmentDepartmentorpersonauthorisedby aGovernmentDepartmentundersection 55 ofthisActhaving first taken all reasonable stepstoobtainthe consent ofthepatenteetotheuseofthepatentedinventiononreasonableterms andconditions,andhavingfailedtoobtainsuchconsentwithin a reasonable period of time. Section 58 was substituted, and sections 58A to 58C were inserted, as from 1

January1995,bysection 15 PatentsAmendmentAct1994(1994No122). See sections 17 and 18 of that Act as to the transitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

58B Duty to inform owner

(1)
Where any use of a patented invention is made by or with the authority of a Government Department under section 55 of this Act, the Department shall, as soon as practicable after theuseofthepatentedinventionhasbegun,notifyandfurnish the patentee with such information as to the extent of the use as the patentee may from time to time require.
(2)
Nothing in subsection (1) of this section requires the Govern ment Department to notify or disclose information to the patentee if to do so would, or might reasonably be expected to, prejudice the security or defence of New Zealand. Section 58 was substituted, and sections 58A to 58C were inserted, as from 1

January1995,bysection 15 PatentsAmendmentAct1994(1994No122). See sections 17 and 18 of that Act as to the transitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

58C Patentee entitled to remuneration Where an act is done under section 55 of this Act, the Crown shallpaysuchremunerationtothepatenteeasmaybeagreed, or as may be determined by a method agreed, between the Crown and the patentee or as may, in default of agreement,

be determined by the Court under section 57 of this Act.

Section 58 was substituted, and sections 58A to 58C were inserted, as from 1 January1995,bysection 15 PatentsAmendmentAct1994(1994No122). See sections 17 and 18 of that Act as to the transitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

Anticipation, etc 59 Previous publication

(1)
An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only that the invention was published in New Zealand
(a)
In a specification filed in pursuance of an application for a patent made in New Zealandand dated more than 50 years before the date of filing of the first mentioned specification; or
(b)
In a specification describing the invention for the purposes of an application for protection in any country outside New Zealand made more than 50 years before that date; or
(c)
In any abridgment of or extract from any such specification published under the authority of the CommissioneroroftheGovernmentofanycountryoutsideNew Zealand.
(2)
Subject as hereinafter provided, an invention claimed in a complete specification shall not be deemed to have been anticipated by reason only that the invention was published before the priority date of the relevant claim of the specification, if the patentee or applicant for the patent proves
(a)
That the matter published was obtained from him or (wherehehimselfisnotthetrueandfirstinventor)from any person from whom he derives title, and was published without his consent or the consent of any such person; and
(b)
Where the patentee or applicant for the patent or any person from whom he derives title learned of the publicationbefore thedate of theapplication for thepatent or (in the case of a convention application) before the date of the application for protection in a convention

country,thattheapplicationortheapplicationinaconvention country, as the case may be, was made as soon as reasonably practicable thereafter:

Provided that this subsection shall not apply if the invention wasbeforetheprioritydateoftheclaimcommerciallyworked inNewZealand,otherwise thanfor the purposeofreasonable trial, either by the patentee or applicant for the patent or any personfromwhomhederivestitleorbyanyotherpersonwith the consent of the patentee or applicant for the patent or any person from whom he derives title.

(3)
Whereacompletespecificationisfiledinpursuanceofanapplicationforapatentmadebyapersonbeingthetrueandfirst inventor or deriving title from him, an invention claimed in thatspecificationshallnotbedeemedtohavebeenanticipated by reason only of any other application for a patent in respect of the same invention, made in contravention of the rights of thatperson,orbyreasononlythatafterthedateoffilingofthat otherapplicationtheinventionwasusedorpublished,without the consent of that person, by the applicant in respect of that other application, or by any other person in consequence of any disclosure of the invention by that applicant.
(4)
NotwithstandinganythinginthisAct,theCommissionershall not refuse to accept a complete specification or to grant a patent, and a patent shall not be revoked or invalidated, by reasononlyofanycircumstanceswhich,byvirtueofthissection,donotconstituteananticipationoftheinventionclaimed in the specification. Compare: Patents Act 1949, s 50 (UK); 1921-22 No 18 s 46

60 Previous communication, display, or working

(1)
An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only of the communication of the invention to a Government Department or to any person authorised by a Government Department to investigate the invention or its merits, or of anything done, in consequence of such a communication, for the purpose of the investigation.
(2)
An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only of
(a)
The display of the invention with the consent of the true and first inventor at an international or industrial exhibition declared as such by the Commissioner by notice in the Journal (whether the exhibition is held in NewZealandorelsewhere),ortheusethereofwiththe consentofthetrueandfirstinventorforthepurposesof such an exhibition in the place where it is held; or
(b)
The publication of any description of the invention in consequence of the display or use of the invention at any such exhibition as aforesaid; or
(c)
The use of the invention, after it has been displayed or used at any such exhibition as aforesaid and during the period of the exhibition, by any person without the consent of the true and first inventor; or
(d)
The description of the invention in a paper read by the true and first inventor before a learned society or publishedwith his consent in the transactions of such a society,

if the application for the patent is made by the true and first inventor or a person deriving title from him not later than 6 months after the opening of the exhibition or the reading or publication of the paper, as the case may be.

(3) An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only that, at any time within one year before the priority date of the relevant claim of the specification, the invention was publicly worked in New Zealand

(a)
Bythepatenteeorapplicantforthepatentoranyperson from whom he derives title; or
(b)
Byanyotherpersonwiththeconsentofthepatenteeor applicant for the patent or any person from whom he derives title,

if the working was effected for the purpose of reasonable trial 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.

(4) NotwithstandinganythinginthisAct,theCommissionershall not refuse to accept a complete specification or to grant a patent, and a patent shall not be revoked or invalidated, by reasononlyofanycircumstanceswhich,byvirtueofthissection,donotconstituteananticipationoftheinventionclaimed in the specification. Compare: Patents Act 1949, s 51 (UK); 1921-22 No 18 ss 33(5), 50

Subsection(2)(a)wasamended,asfrom12November1980,section5(3)ofthe ShopTradingHoursAmendmentAct1980(1980No36)byomittingthewordsor at an exhibition authorised by the Governor-General by Order in Council under the Exhibitions Act 1910.

Subsection(2)(a)wasfurtheramended,asfrom2September1996,bysection4 PatentsAmendmentAct1996(1996No139)bysubstitutingthewords CommissionerbynoticeintheJournalforthewordsGovernor-Generalbynotice in the Gazette.

61 Use and publication after provisional specification or foreign application

(1)
Where a complete specification is filed or proceeded with in pursuanceofanapplicationwhichwasaccompaniedbyaprovisionalspecificationorbyaspecificationtreatedbyvirtueofa directionundersubsection (4) ofsection9ofthisActasaprovisional specification, then, notwithstanding anything in this Act,theCommissionershallnotrefusetograntthepatent,and the patent shall not be revoked or invalidated by reason only thatanymatterdescribedintheprovisionalspecificationorin the specification treated as aforesaid as a provisional specificationwasusedorpublishedatanytimeafterthedateoffiling of that specification.
(2)
Where a complete specification is filed in pursuance of a conventionapplication,then,notwithstandinganythinginthis Act,theCommissionershallnotrefusetograntthepatent,and the patent shall not be revoked or invalidated by reason only that any matter disclosed in any application for protection in a convention country upon which the convention application is founded was used or published at any time after the date of that application for protection. Compare: Patents Act 1949, s 52 (UK); 1939 No 26 ss 55(6), 56

62 Priority date in case of obtaining Where an application is made for a patent for an invention which has been claimed in a complete specification filed in pursuance of any other such application, then, if

(a)
TheCommissionerhasrefusedtograntapatentinpursuanceofthatotherapplicationonthegroundspecified in paragraph (a) of subsection (1) of section 21 of this Act; or
(b)
A patent granted in pursuance of that other application has been revoked by the Court or the Commissioner on the ground specified in paragraph (a) of subsection
(1) of section 21 or paragraph (c) of subsection (1) of section 41 of this Act; or
(c)
Thecompletespecificationfiledinpursuanceofthesaid otherapplicationhas,inproceedingsundersection 21 or section 42 ofthisAct,beenamendedbytheexclusionof the claim relating to the said invention in consequence ofafindingbytheCommissionerthattheinventionwas obtained by the applicant or patentee from any other person,

theCommissionermaydirectthatthefirst-mentionedapplication and any specification filed in pursuance thereof shall be deemed, for the purposes of the provisions of this Act relatingtotheprioritydateofclaimsofcompletespecifications,to have been filed on the date onwhich the corresponding documentwasorwasdeemedtohavebeenfiledintheproceedings upon the said other application. Compare: Patents Act 1949, s 53 (UK); 1921-22 No 18 s 17

Miscellaneous provisions as to rights in inventions 63 Co-ownership of patents

(1)
WhereafterthecommencementofthisActapatentisgranted to 2 or more persons, each of those persons shall, unless an agreement to the contrary is in force, be entitled to an equal undivided share in the patent.
(2)
Subject to the provisions of this section and section 64 of this Act,where2ormorepersonsareregisteredasgranteeorproprietor of a patent, then, unless an agreement to the contrary is in force, each of those persons shall be entitled, by himself orhisagents,tomake,use,exercise,andvendthepatentedin
vention for his own benefit without accounting to theotheror others.
(3)
Subject to the provisions of section 64 of this Act, and to any agreementforthetimebeinginforce,alicenceunderapatent shall not be granted, and a share in a patent shall not be assigned, except with the consent of all persons, other than licensororassignor,whoareregisteredasgranteeorproprietor of the patent.
(4)
Whereanarticleissoldbyoneof2ormorepersonsregistered asgranteeorproprietorofapatent,thepurchaserandanypersonclaimingthroughhimshallbeentitledtodealwithitinthe samemannerasifthearticlehasbeensoldbyasolepatentee.
(5)
Subject to the provisions of this section, the rules of law applicabletotheownershipanddevolutionofpersonal property generallyshallapplyinrelationtopatents astheyapplyinre lation to other choses in action; and nothing in subsection (1) or subsection (2) of this section shall affect the mutual rights or obligations of trustees or of the personal representatives of a deceased person, or their rights or obligations as such. Compare: Patents Act 1949, s 54 (UK);1921-22 No 18s 42;1939No26 s 66

64 Power of Commissioner to give directions to co-owners

(1)
Where2ormorepersonsareregisteredasgranteeorproprietor of a patent, the Commissioner may, upon application made to him in the prescribed manner by any of those persons, give such directions in accordance with the application as to the sale or lease of the patent or any interest therein, the grant of licences under the patent, or the exercise of any right under sectio n 63 of this Act in relation thereto, as he thinks fit.
(2)
If any person registered as grantee or proprietor of the patent fails to execute any instrument or to do any other thing required for the carrying out of any direction given under this section within 14 days after being requested in writing so to dobyanyoftheotherpersonssoregistered,theCommissioner may, upon application made to him in the prescribed manner byanysuchotherperson,givedirectionsempoweringanyperson to execute that instrument or to do that thing in the name and on behalf of the person in default.
(3)
Before giving directions in pursuance of an application under thissection,theCommissionershallgiveanopportunitytobe heard,
(a)
In the case of an application under subsection (1) of this section, to the other person or persons registered as grantee or proprietor of the patent:
(b)
Inthecaseofanapplicationundersubsection (2) ofthis section, to the person in default.
(4)
AnappealtotheCourtshallliefromanydecisionordirection of the Commissioner under this section.
(5)
No directions shall be given under this section so as to affect the mutual rights or obligations of trustees or of the personal representativesofa deceasedperson,ortheirrightsorobligations as such. Compare: Patents Act 1949, s 55 (UK);1921-22 No 18s 42;1939No26 s 66

65 Disputes as to inventions made by employees

(1)
Whereadisputearisesbetweenanemployerandapersonwho is or was at the material time his employee as to the rights of the parties in respect of an invention made by the employee either alone or jointly with other employees or in respect of anypatentgrantedortobegrantedinrespectthereof,theCommissionermay,uponapplicationmadetohimintheprescribed mannerbyeitherofthepartiesandaftergivingtoeachofthem an opportunity to be heard, determine the matter in dispute, and may make such orders for giving effect to his decision as he considers expedient: Provided that if it appears to the Commissioner upon any applicationunder thissectionthatthematter indispute involves questions which would more properly be determined by the Court, he may decline to deal therewith.
(2)
In proceedings before the Court between an employer and a person who is or was at the material time his employee, or uponapplicationmadetotheCommissionerundersubsection (1) ofthissection,theCourtorCommissionermay,unlesssatisfiedthatoneorotherofthepartiesisentitled,totheexclusion of the other, to the benefit of an invention made by the employee,byorderprovidefortheapportionment betweenthem of the benefitofthe invention, andofany patent granted or to
be granted in respect thereof, in such manner as the Court or Commissioner considers just.
(3)
A decision of the Commissioner under this section shall have the same effect as between the parties and persons claiming under them as a decision of the Court.
(4)
AnappealtotheCourtshallliefromanydecisionoftheCommissioner under this section. Compare: Patents Act 1949, s 56 (UK)

66 Avoidance of certain restrictive conditions

(1)
Subject to the provisions of this section, any condition of a contractforthesaleorleaseofapatentedarticleorofanarticle made by a patented process or for licence to use or work a patented article or process, or relating to any such sale, lease, or licence, shall be void in so far as it purports
(a)
To require the purchaser, lessee, or licensee to acquire from the vendor, lessor, or licensor, or his nominees, or prohibit him from acquiring from any specified person, or from acquiring except from the vendor, lessor, or licensor, or his nominees, any articles other than the patented article or an article made by the patented process:
(b)
Toprohibitthepurchaser,lessee,orlicenseefromusing articles(whetherpatentedornot)whicharenotsupplied by, or any patented process which does not belong to, the vendor, lessor, or licensor, or his nominees, or to restrict the right of the purchaser, lessee, or licensee to use any such articles or process.
(2)
Inproceedingsagainstanypersonforinfringementofapatent, it shall be a defence to prove that at the time of the infringement there was in force a contract relating to the patent made by or with the consent of the plaintiff and containing a condition void by virtue of this section.
(3)
A condition of a contract shall not be void by virtue of this section if

(a) At the time of the making of the contract the vendor, lessor,orlicensorwaswillingtosellorleasethearticle, orgrantalicencetouseorworkthearticleorprocess,as thecasemaybe,tothepurchaser,lessee,orlicensee,on

75

reasonable terms specified in the contract and without any suchconditionas is mentionedinsubsection (1)of this section; and

(b) The purchaser, lessee, or licensee is entitled under the contracttorelievehimselfofhisliabilitytoobservethe condition upon giving to the other party 3 monthsnotice in writing and subject to payment to him of such compensation (being, in the case of a purchase a lump sum, and in the case of a lease or licence a rent or royalty for the residue of the term of the contract) as may be determined by an arbitrator appointed by the Minister.

(4)
If in any proceeding it is alleged that any condition of a contractisvoidbyvirtueofthissection,itshalllieonthevendor, lessor,orlicensortoprovethematterssetoutinparagraph (a) of subsection (3) of this section.
(5)
A condition of a contract shall not be void by virtue of this sectionbyreasononlythatitprohibitsanypersonfromselling goodsotherthanthosesuppliedbyaspecifiedperson,or,inthe case of a contract for the lease of or licence to use a patented article,thatitreservestothelessororlicensororhisnominees the right to supply such new parts of the patented article as may be required to put or keep it in repair. Compare: Patents Act 1949, s 57 (UK); 1921-22 No 18 s 43

67 Determination of certain contracts

(1)
Any contract for the sale or lease of a patented article or for licence to manufacture, use, or work a patented article or process, or relating to any such sale, lease, or licence, whether made before or after the commencement of this Act, may at any time after the patent or all the patents by which the article or process was protected at the time of the making of the contract has or have ceased to be in force, and notwithstanding anything to the contrary in the contract or in any other contract, be determined by either party on giving 3 monthsnotice in writing to the other party.
(2)
The provisions of this section shall be without prejudice to anyrightofdeterminingacontractexercisableapartfromthis section. Compare: Patents Act 1949, s 58 (UK); 1921-22 No 18 s 43(3)

Proceedings for infringement, etc 68 Restrictions on recovery of damages for infringement

(1)
Inproceedingsfortheinfringementofapatent,damagesoraccount of profits shall not be awarded against a defendant who proves that at the date of the infringement he was not aware, andhadnoreasonablegroundforsupposing,thatthepatentexisted; andapersonshallnotbedeemedtohavebeenawareor to have had reasonable grounds for supposing as aforesaid by reasononlyoftheapplicationtoanarticleoftheword patent, patented, or any word or words expressing or implying that a patent has been obtained for the article, unless the word or words are accompanied by the words “New Zealandor the letters “NZand by the number of the patent.
(2)
InanyproceedingforinfringementofapatenttheCourtmay, if it thinks fit, refuse to award any damages in respect of any infringementcommittedafter a failuretopay anyrenewal fee within the prescribed period and before any extension of that period.
(3)
Whereanamendmentofaspecificationbywayofdisclaimer, correction, or explanation has been allowed under this Act after the publication of the specification, no damages shall be awarded in any proceeding in respect of the use of the invention before the date of the decision allowing the amendment, unlesstheCourtissatisfiedthatthespecificationasoriginally published was framed in good faith and with reasonable skill and knowledge.
(4)
Nothing in this section shall affect the power of the Court to grant an injunction in any proceedings for infringement of a patent. Compare: Patents Act 1949, s 59 (UK); 1921-22 No 18 ss 25, 38

68A Burden of proof for infringement of process patent

(1) If the invention for which a patent is granted is a process for obtaininganewproduct,thesameproductproducedbyaperson other than the patentee or a licensee of the patentee shall, unless the contrary is proved, be taken in any proceedings for infringement of the patent to have been obtained by that process.

(2) In applying subsection (1) of this section, the Court shall not requireanypersontodiscloseanymanufacturingorcommercialsecretsifitappearstotheCourtthatitwouldbeunreasonable to do so. Compare: Patents Act 1977 (UK), s 100 Section 68A was inserted, as from 1 January 1995, by section 16 Patents Amendment Act 1994 (1994 No 122). See sections 17 and 18 of that Act as to the transitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

68B Regulatory review exception It is not an infringement of a patent for a person to make, use, exercise, or vend the invention concerned solely for uses reasonably related to the development and submission of information required under New Zealand law or the law of any other country that regulates the manufacture, construction, use, or sale of any product. Section 68B was inserted, as from 19 December 2002, by section 3 Patents

Amendment Act 2002 (2002 No 72).

69 Order for account in action for infringement In an action for infringement of a patent the plaintiff shall be entitled,at his option,toan accountofprofits insteadofdamages. Compare: Patents Act 1949, s 60 (UK); 1921-22 No 18 s 39

70 Counterclaim for revocation in action for infringement A defendant in an action for infringement of a patent may, without obtaining the consent of the Attorney-General under paragraph (b) ofsubsection(3)ofsection41ofthisAct,apply in accordance with rules of Court by way of counterclaim in the action for revocation of the patent. Compare: Patents Act 1949, s 61 (UK); 1921-22 No 18 s 36; 1939 No 26 s

64(1)

71 Relief for infringement of partially valid specification

(1)
If in proceedings for infringement of a patent it is found that any claim of the specification, being a claim in respect of whichinfringementisalleged,isvalid,butthatanyotherclaim is invalid, the Court may grant relief in respect of any valid claim which is infringed: Provided that the Court shall not grant relief by way of damages,oraccountofprofits,orcostsexceptinthecircumstances mentioned in subsection (2) of this section.
(2)
Wherethepatentisdatedbeforethe1stdayofJanuary1940,or the plaintiff proves that the invalid claim was framed in good faithandwithreasonableskillandknowledge,theCourtshall grant relief in respect of any valid claim which is infringed subject to the discretion of the Court as to costs and as to the date from which damages should be reckoned.
(3)
Asaconditionofreliefundersubsection (1) orsubsection (2) ofthissectiontheCourtmaydirectthatthespecificationshall be amended to its satisfaction upon an application made for thatpurposeundersection 39 ofthisAct,andsuchanapplication may be made accordingly whether or not all other issues in the proceedings have been determined.
(4)
In relation to a patent which is dated before the 1st day of January 1940, the provisions of this section shall have effect notwithstandinganythinginsubsection (3) ofsection68ofthis Act. Compare: Patents Act 1949, s 62 (UK); 1939 No 26 s 64(2), (3)

72 Proceedings for infringement by exclusive licensee

(1) Subject to the provisions of this section and of section 85 of thisAct,theholderofanexclusivelicenceunderapatentshall have the like right as the patentee to take proceedings in respect of any infringement of the patent committed after the date of the licence, and in awarding damages or granting any other relief in any such proceedings, the Court shall take into

79

consideration any loss suffered or likely to be suffered by the exclusive licensee as such or, as the case may be, the profits earnedbymeansoftheinfringementsofarasitconstitutesan infringement of the rights of the exclusive licensee as such.

(2) Inanyproceedingstakenbytheholderofanexclusivelicence byvirtueofthissection,thepatenteeshall,unlessheisjoined as plaintiff in the proceedings, be added as defendant: Provided that a patentee so added as defendant shall not be liable for any costs unless he defends the proceedings. Compare: Patents Act 1949, s 63 (UK)

73 Certificate of contested validity of specification

(1)
IfinanyproceedingsbeforetheCourtthevalidityofanyclaim of a specification is contested, and that claim is found by the Courttobevalid,theCourtmaycertifythatthevalidityofthat claim was contested in those proceedings.
(2)
Where any such certificate has been granted, then, if in any subsequent proceedings before the Court for infringement of thepatentorforrevocationofthepatent,afinalorderorjudgment is made or given in favour of the party relying on the validity of the patent, that party shall, unless the Court otherwise directs, be entitled to his costs as between solicitor and clientsofarasconcernsthe claiminrespectofwhichthe certificate was granted: Providedthatthissubsectionshallnotapplytothecostsofany appeal in any such proceedings as aforesaid. Compare: Patents Act 1949, s 64 (UK); 1921-22 No 18 s 40

74 Remedy for groundless threats of infringement proceedings

(1)
Whereanyperson(whetherentitledtoorinterestedinapatent or an application for a patent or not) by circulars, advertisements, or otherwise threatens any other person with proceedingsforinfringementofapatent,anypersonaggrievedthereby may bring action against him for any such relief as is men tioned in subsection (2) of this section.
(2)
Unless in any action brought by virtue of this section the defendant proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute an in

fringementofapatentorofrightsarisingfromthepublication of a complete specification in respect of a claim of the specification not shown by the plaintiff to be invalid, the plaintiff shall be entitled to the following relief, that is to say:

(a)
A declaration to the effect that the threats are unjustifiable; and
(b)
Aninjunctionagainstthecontinuanceofthethreats;and
(c)
Such damages, if any, as he has sustained thereby.
(3)
For the avoidance of doubt it is hereby declared that a mere notification of the existence of a patent does not constitute a threat of proceedings within the meaning of this section.
(4)
It is hereby declared that a notice given under section 85 of this Act does not constitute a threat of proceedings within the meaning of this section. Compare: Patents Act 1949, s 65 (UK); 1939 No 26 s 65

75 Power of Court to make declaration as to non-infringement

(1)
Adeclarationthattheusebyanypersonofanyprocess,orthe making or use or sale by any person of any article, does not or would not constitute an infringement of a claim of a patent maybemadebytheCourtinproceedingsbetweenthatperson and the patentee or the holder of an exclusive licence under the patent, notwithstanding that no assertion to the contrary has been made by the patentee or licensee, if it is shown
(a)
That the plaintiff has applied in writing to the patentee or licensee for a written acknowledgment to the effect of the declaration claimed, and has furnished him with full particulars in writing of the process or article in question; and
(b)
That the plaintiff has undertaken to pay a reasonable sumforexpensesofthepatenteeorlicenseeinobtaining advice in respect of the declaration sought; and
(c)
Thatthepatenteeorlicenseehasrefusedorneglectedto give such an acknowledgment.
(2)
Thecostsofallpartiesinproceedingsforadeclarationbrought byvirtueofthissectionshallbeinthediscretionoftheCourt.
(3)
Thevalidityofaclaimofthespecificationofapatentshallnot be called in question in proceedings for a declaration brought

81

byvirtueofthissection,andaccordinglythemakingorrefusal ofsuchadeclarationinthecaseofapatentshallnotbedeemed to imply that the patent is valid.

(4) Proceedingsforadeclarationmaybebroughtbyvirtueofthis sectionatanytimeafterthedateofthepublicationofthecomplete specification in pursuanceof an application for apatent, andreferencesinthissectiontothepatenteeshallbeconstrued accordingly. Compare: Patents Act 1949, s 66 (UK)

76 Attorney-General may appear in patent proceedings

(1)
The Attorney-General, if in his opinion the public interest is ormaybeinvolved,maydoalloranyofthefollowingthings:
(a)
Institute proceedings to test the validity of any patent:
(b)
Join the plaintiff in an action brought under section 74 of this Act:
(c)
Apply for the revocation of a patent:
(d)
Appear and be heard in any proceedings before the Court or the Commissioner for the grant, extension, amendment, or revocation of a patent, or where the validity of a patent is in question, or for a licence under a patent, or for the endorsement of a patent with the words “licences of right”, or for a declaration of non-infringement, and take any steps which he considers desirable as if he were a party to the proceedings:
(e)
Intervene in and take over the control and conduct of any proceedings in which he may appear and be heard as aforesaid on behalf and with the consent of a party thereto.
(2)
In any proceedings before the Court or the Commissioner (other than proceedings under section 16 of this Act) any party who intends to question the validity of a patent shall givenoticeofthatintentiontotheSolicitor-Generalatleast21 daysbeforethehearing,andshallsupplytheSolicitor-General withacopyofsuchpapersfiledintheproceedingsbyhimself and by any other party as the Solicitor-General requires.
(3)
In any proceedings in which the Attorney-General appears in accordance with this section, costs may be awarded either to or against the Attorney-General. Compare: 1947 No 37 s 3

International agreements, etc 77 Orders in Council as to convention countries

Forthepurposeofgivingeffecttoanyinternationalagreement orarrangementtowhichNewZealandisapartyorthatapplies toNewZealand,theGovernor-GeneralmaybyOrderinCouncil declare that any entity specified in the order that is a party totheagreementorarrangementortowhichtheagreementor arrangementapplies(whetherastate,partofastate,aterritory for whose international relations a state is responsible, a political union,aninternational organisation,oranyotherentity) is, for the purposes of all or any of the provisions of this Act, a convention country. Section 77 was substituted, as from 14 October 1999, by section 3(1) Patents

Amendment Act 1999 (1999 No 119). See section 3(4) of that Act as to this substitution not affecting any order made under the original section 77.

78 Supplementary provisions as to convention applications

(1) Whereapersonhasappliedforprotectionforaninventionby an application which,

(a)
In accordance with the terms of a treaty subsisting betweenany2ormoreconventioncountries,isequivalent toanapplicationdulymadeinanyoneofthoseconvention countries; or
(b)
In accordance with the law of any convention country, is equivalent to an application duly made in that convention country,

heshallbedeemedforthepurposesofthisActtohaveapplied in that convention country.

(2) For the purpose of this Act, matter shall be deemed to have beendisclosedinanapplicationforprotectioninaconvention country if it wasclaimed or disclosed (otherwise than by way of disclaimer or acknowledgment of prior art) in that applicationorindocumentssubmittedbytheapplicantforprotection in support of and at the same time as that application; but no

83

account shall be taken of any disclosure effected by any such document unless a copy of the document is filed at the Patent Office with the convention application or within such period as may be prescribed after the filing of that application. Compare: Patents Act 1949, s 69 (UK); 1939 No 26 s 55(4), (8)

79 Specialprovisionsastovessels,aircraft,andlandvehicles Where a vessel or aircraft registered in a convention country, oralandvehicleownedbyapersonordinarilyresidentinsuch a country, comes into New Zealand (including the territorial waters thereof) temporarily or accidentally only, the rights conferred by a patent for an invention shall not be deemed to be infringed by the use of the invention

(a)
In the body of the vessel or in the machinery, tackle, apparatus, or other accessories thereof, so far as the invention is used on board the vessel and for its actual needs only; or
(b)
In the construction or working of the aircraft or land

vehicle or of the accessories thereof,as the case may be. Compare: Patents Act 1949, s 70 (UK); 1939 No 26 s 68

80 Extension of time for certain convention applications

(1)
If the Governor-General is satisfied that provision substantially equivalent to the provision to be made by or under this sectionhasbeenorwillbemadeunderthelawofanyconvention country, he may, by Order in Council, make regulations empoweringthe Commissionertoextendthetimeformaking application under subsection (2) of section 7 of this Act for a patentforaninventioninrespectofwhichprotectionhasbeen applied for in that country in any case where the period specifiedintheprovisotothatsubsectionexpiresduringaperiod prescribed by the regulations.
(2)
Regulations made under this section
(a)
May, where any agreement or arrangement has been made between Her Majesty’s Government in New ZealandandtheGovernmentoftheconventioncountry for the supply or mutual exchange of information or articles, provide, either generally or in any class of
case specified in the regulations, that an extension of time shall not be granted under this section unless the invention has been communicated in accordance with the agreement or arrangement:
(b)
May,eithergenerallyorinanyclassofcasespecifiedin the regulations, fixthe maximum extension which may be granted under this section and provide for reducing the term of any patent granted on an application made byvirtueofthissection,and(notwithstandinganything in section 115 of this Act) vary the time for the pay mentofrenewalfeesinrespectofsuchapatentandthe amount of such fees:
(c)
May prescribe or allow any special procedure in connectionwithapplicationsmadebyvirtueofthissection:
(d)
May empower the Commissioner to extend, in relation toanapplicationmadebyvirtueofthissection,thetime limitedbyorundertheforegoingprovisionsofthisAct for doing any act, subject to such conditions, if any, as may be imposed by or under the regulations:
(e)
May provide for securing that the rights conferred by a patent granted on an application made by virtue of this section shall be subject to such restrictions or conditions as may be specified by or under the regulations and in particular to restrictions and conditions for the protection of persons (including persons acting on behalf of Her Majesty) who, otherwise than as the result of a communication made in accordance with such an agreementorarrangementasismentionedinparagraph

(a) of this subsection, and before the date of the application in question or such later date as may be allowed by the regulations, may have made, used, exercised, or vended the invention or may have applied for a patent in respect thereof.

Compare: Patents Act 1949, s 71 (UK); 1943 No 6 s 5; 1946 No 32 s 3

81 Protection of inventions communicated under international agreements

(1) Subject to the provisions of this section, the Governor-General may, by Order in Council, make regulations for securing

85

that, where an invention has been communicated in accordance with an agreement or arrangement made between Her Majesty’s Government in New Zealand and the Government of any other country for the supply or mutual exchange of information or articles,

(a)
An application for a patent made by the person from whomtheinventionwascommunicatedorhispersonal representativeorassigneeshallnotbeprejudiced,anda patentgrantedonsuchanapplicationshallnotbeinvalidated, by reason only that the invention has been communicatedasaforesaidorthatinconsequencethereof
(i)
The invention has been published, made, used, exercised, or vended; or
(ii)
Anapplicationforapatenthasbeenmadebyany otherperson,orapatenthasbeengrantedonsuch an application:
(b)
Any application for a patent made in consequence of such acommunicationasaforesaidmayberefusedand any patent granted on such an application may be revoked.
(2)
Regulations made under subsection (1) of this section may provide that the publication, making, use, exercise, or vending of an invention, or the making of any application for a patentinrespectthereof,shall,insuchcircumstancesandsubject to such conditions or exceptions as may be prescribed by the regulations, be presumed to have been in consequence of such a communication as is mentioned in that subsection.
(3)
ThepowersoftheGovernor-Generalunderthissection,sofar as they are exercisable for the benefit of persons from whom inventionshavebeencommunicatedtoHerMajesty’sGovernment in New Zealand by the Government of any other country, shall only be exercised if and to the extent that the Governor-General is satisfied that substantially equivalent provisions has been or will be made under the law of that country forthebenefitofpersonsforwhominventionshavebeencommunicated by Her Majesty’s Government in New Zealand to the Government of that country.
(4)
References in subsection (3) of this section to the communi cation of an invention to or by Her Majesty’s Government in

NewZealandortheGovernmentofanyothercountryshallbe construedasincludingreferencestothecommunicationofthe invention by or to any person authorised in that behalf by the Government in question. Compare: Patents Act 1949, s 72 (UK); 1946 No 32 s 4

82 Regulations under section 80 or section 81

Any regulations made under section 80 or section 81 of this Act,andanyordermade,directiongiven,orotheractiontaken under the regulations by the Commissioner, may be made, given, or taken so as to have effect as respects things done or omitted to be done on or after such date, whether before or after the commencement of the regulations or of this Act, as may be specified in the regulations. Compare: Patents Act 1949, s 95(2) (UK); 1943 No 6 s 7

Register of patents, etc. 83 Register of patents

(1)
There shall be kept at the Patent Office a register of patents, in which there shall be entered particulars of patents in force, of assignments and transmissions of patents and of licences under patents, and notice of all matters which are required by orunderthisActtobeenteredintheregisterandofsuchother mattersaffectingthevalidityorproprietorshipofpatentsasthe Commissioner thinks fit.
(2)
Subject to the provisions of this Act and to regulations made thereunder, on payment of the prescribed fee the register of patents shall, at all convenient times, be open to inspection by the public; and certified copies, sealed with the seal of the PatentOffice,ofanyentryintheregistershallbegiventoany person requiring them.
(3)
The register of patents shall be prima facie evidence of any matters required or authorised by or under this Act to be entered therein.
(4)
No notice of any trust, whether expressed, implied, or constructive, shall be entered in the register of patents, and the Commissioner shall not be affected by any such notice. Compare: Patents Act 1949, s 73 (UK); 1921-22 No 18 ss 31, 118, 119

84 Registration of assignments, etc

(1)
Where any person becomes entitled by assignment, transmission,oroperationoflawtoapatentortoashareinapatent,or becomes entitled as mortgagee, licensee, or otherwise to any other interest in a patent, he shall apply to the Commissioner intheprescribedmannerfortheregistrationofhistitleasproprietororco-proprietor,or,asthecasemaybe,ofnoticeofhis interest, in the register of patents.
(2)
Without prejudice to the provisions of subsection (1) of this section, an application for the registration of the title of any personbecomingentitled by assignmenttoa patentorashare in a patent, or becoming entitled by virtue of a mortgage, licence,orotherinstrumenttoanyotherinterestinapatent,may bemadeintheprescribedmannerbytheassignor, mortgagor, licensor, or other party to thatinstrument, as the case may be.
(3)
Where application is made under this section for the registration of the title of any person, the Commissioner shall, upon proof of title to his satisfaction,
(a)
Where that person is entitled to a patent or a share in a patent, register him in the register of patents as proprietor or co-proprietor of the patent, and enter in that register particulars of theinstrument or event by which he derives title; or
(b)
Wherethatpersonisentitledtoanyotherinterestinthe patent,enterinthatregisterandonanypatentproduced to the Commissioner notice of his interest.
(4)
Subject to the provisions of this Act relating to co-ownership of patents, and subject also to any rights vested in any other personofwhichnoticeisenteredintheregisterofpatents,the personorpersonsregisteredasgranteeorproprietorofapatent shall have power to assign, grant licences under, or otherwise dealwiththepatent,andtogiveeffectualreceiptsforanyconsideration for any such assignment, licence, or dealing: Provided that any equities in respect of the patent may be enforcedinlikemannerasinrespectofanyotherpersonalproperty.
(5)
RegulationsmadeunderthisActmayrequirethesupplytothe Commissioner for filing at the Patent Office of copies of such deeds, licences, and other documents as may be prescribed. Compare: Patents Act 1949, s 74 (UK); 1921-22 No 18 s 122

85 Limitation of proceedings

(1)
Except where the Court (on application in that behalf) in any case otherwise authorises, no person shall bring any proceedings (other than criminal proceedings) in respect of any interesttowhichhemaybeentitledasowner,mortgagee,licensee, or otherwise in a patent unless
(a)
In the case of an interest which is not registered under this Act at the time of the commencement of the proceedingsandwhichiscapableofbeingsoregistered,
(i)
Hehasbynoticeinwritinggiventotheproposed defendant at least one month before the date of the commencement of the proceedings advised his intention to bring the proceedings and furnished an address for service in New Zealand; and
(ii)
Nonoticeundersubsection (2) ofthissectionrequiringhimtoregistertheinterestunderthisAct has been given to him within one month after he gave notice under subparagraph (i) of this para graph; or
(b)
In the case of an interest which is registered under this Act, the interest was so registered,
(i)
Before the right to commence proceedings was barred under this section; and
(ii)
At least one month before the date of the commencement of the proceedings; or
(c)
In the case of any other interest, he has, by notice in writing given to the proposed defendant at least one monthbeforethedateofthecommencementoftheproceedings,advisedhisintentiontobringtheproceedings.
(2)
Where any person makes any claim, or threatens to bring or gives notice of his intention to bring any proceedings (other thancriminalproceedings),againstanyotherpersoninrespect of any interest as owner, mortgagee, licensee, or otherwise in

89

a patent, being an interest which is not registered under this Act and which is capable of being so registered, that other personmay,atanytimewithinonemonththereafterbynotice inwritinggiventothemakeroftheclaimorthreatorthegiver ofthenoticeofintentiontobringtheproceedings,requirehim to register under this Act the interest in respect of which the claim or threat is made or the notice of intention to bring the proceedings is given, and if he fails to do so within 6 months afterthegivingofthenoticeunderthissubsectionheshallnot thereafterbeentitledtobringanyproceedingsinrespectofthe claim or interest against the person who has given the notice to register.

(3) Nothinginthissectionenablesapersontoobtainanyreliefthe grantingofwhichispreventedbythe LimitationAct2010 ,and nothingin section40 ofthatActexcludestheoperationofthat Act in any case where proceedings may be barred under this section. Section 85(3): substituted, on 1 January 2011, by section 58 of the Limitation

Act 2010 (2010 No 110).

85A Application of Personal Property Securities Act 1999

Nothing in sections 83 to 85 affects the operation of the

Personal Property Securities Act 1999.

Section 85A was inserted, as from 1 May 2002, by section 191(1) Personal Property Securities Act 1999 (1999 No 126). See also Part 12 of that Act for transitional provisions.

86 Commissioner may dispense with production of probate or letters of administration in certain cases

(1) For the purposes of this section, unless the context otherwise

requires,Deceased proprietor means a registered proprietor of any patent who has died, whether before or after the commencement of this Act; and includes any applicant for a patent who has died before it is granted, whether before or after the commencement of this Act; and also includes an inventor of any invention who has died before or after the commencement of this Actwithout making anapplicationforapatentfor theinvention Qualified person, in relation to any deceased proprietor, means a person who satisfies the Commissioner

(a)
That he has obtained or is entitled to obtain probate of thewillofthedeceasedproprietororlettersofadministrationinhisestateintheplacewherethedeceasedproprietorwasdomiciled athisdeath,orthathe is thepersonal representative of the deceased proprietor in that place:
(b)
Thatprobateofthewillofthedeceasedproprietororlettersofadministrationinhisestatehavenotbeengranted or resealed in New Zealand:
(c)
(d)
Thattheinterestsofthecreditorsofthedeceasedproprietor,andofallpersonsbeneficiallyinterestedunderhis will or on his intestacy, will be adequately safeguarded if the Commissioner of Patents registers the qualified person as the proprietor of the patent.

Subsection (1) Qualified person: the words estate dutyin paragraph (c) of this definition were substituted, as from 21 July 1955, for the words death dutypursuant to section 89(7) Estate and Gift Duties Act 1955, in relation to the estates of persons dying after the commencement of that Act.

Subsection(1)qualifiedperson: paragraph(c)ofthisdefinitionwasomitted,as from24 May 1999,by section17 Estate DutyRepeal Act 1999(1999No 64).

(2) Uponapplicationintheprescribedmannerandpaymentofthe prescribed fees, the Commissioner in his discretion and without requiring the production of probate or letters of administration may;

(a)
Where the registered proprietor of any patent has died before or after the commencement of this Act, register any qualified person as the proprietor of the patent:
(b)
Where an applicant for any patent has died before the grant of the patent (whether before or after the commencement of this Act), allow any qualified person to completetheapplicationandmayregisterthatpersonas the proprietor of the patent, or may accept the consent ofthatpersonforthepurposesofsection 24 ofthisAct asifthatpersonwerethepersonalrepresentativeofthe deceased applicant:
(c)
Allow an application under section 9 of this Act to be madebyandmaygrantapatenttoanyqualifiedperson

asifhewerethepersonalrepresentativeofthedeceased inventor.

(3) Every qualified person who is registered under this section as the proprietor of a patent shall hold it subject to all existing interests and equities affecting it.

(4) Nothing in section 70 or in section 73 of the Administration Act 1969 shall be deemed to restrict the operation of this sec tion. Compare: 1947 No 37 s 5 Thereferencetosections 70 and 73 Administration Act 1969weresubstituted, asfrom1January1971,forareferencetosections49and52AdministrationAct 1952(1952No56)pursuanttosection 84(1) AdministrationAct1969(1969No 52).

87 Rectification of register of patents by Court

(1)
The Court may, on the application of any person aggrieved, ordertheregisterofpatentstoberectifiedbythemakingofany entry therein or the variation or deletion of any entry therein.
(2)
InproceedingsunderthissectiontheCourtmaydetermineany question which it may be necessary or expedient to decide in connection with the rectification of the register of patents.
(3)
NoticeofanyapplicationtotheCourtunderthissectionshall be given in the prescribed manner to the Commissioner, who shallbeentitledtoappearandbeheardontheapplication,and shall appear if so directed by the Court.
(4)
Any order made by the Court under this section shall direct that notice of the order shall be served on the Commissioner in the prescribed manner; and the Commissioner shall, on the receiptofthenotice,rectifytheregisterofpatentsaccordingly. Compare: Patents Act 1949, s 75 (UK); 1921-22 No 18 ss 123, 141

88 Correction of errors

(1)
Whereamistakeexistsintheregisterofpatents,inanypatent, orinanyotherdocumentissuedunderthisAct,byreasonofan errororomissiononthepartofthePatentOffice,theCommissioner may, in accordance with the provisions of this section, correct the mistake, and for that purpose may require the production of the patent or other document.
(2)
Where the Commissioner proposes to make any such correction as aforesaid, he shall give notice of the proposal to the persons who appear to him to be concerned, and shall give themanopportunitytobeheardbeforemakingthecorrection.
(3)
Whereamistakeexistsintheregisterofpatents,inanypatent or application for patent or any document filed in pursuance of such an application, or in proceedings in connection with anypatent, byreasonofanerrororanomissiononthepartof the patentee or of the applicant for the patent or of any other person concerned, a correction may be made in accordance with the provisions of this section upon a request in writing by any person interested and payment of the prescribed fee. If it appears to the Commissioner that the correction would materiallyalterthemeaningorscopeofthedocumenttowhich the request relates andoughtnot to bemade withoutnotice to personslikelytobeaffectedthereby,heshallrequirenoticeof the nature of the proposed correction to be advertised in the prescribed manner.
(4)
Within the prescribed time after any such advertisement as aforesaid, any person interested may give notice to the Commissionerofoppositiontotherequest,andwhereanysuchnoticeofoppositionisgiventheCommissionershallgivenotice thereoftothepersonbywhomtherequestwasmade,andshall givetohimandtotheopponentanopportunitytobeheardbefore he decides the case.
(5)
AnappealtotheCourtshallliefromanydecisionoftheCommissioner under this section. Compare: Patents Act 1949, s 76 (UK);1921-22 No 18s 121; 1946 No 32 s 7

89 Evidence of entries, documents, etc

(1)
A certificate sealed with the seal of the Patent Office and purporting to be signed by the Commissioner certifying that any entry which he is authorised by or under this Act to make has or has not been made, or that any other thing which he is so authorisedtodohasorhasnotbeendone,shallbeprimafacie evidence of the matters so certified.
(2)
Acopyofanyentryinanyregisterorofanydocumentkeptin thePatentOfficeorofanypatent,oranextractfromanysuch registerordocument,sealedwiththesealofthePatentOffice,

93

and purporting to be certified by the Commissioner, shall be admitted in evidence without further proof and without production of the original.

(3) WherebythisActorotherwisebylawtheCommissionerisdirected, authorised, or empowered to do, exercise, or perform any act, power, function, or duty, any notification in the Journal of the doing, exercise, or performance of any such act, power, function or duty shall be prima facie evidence that it was lawfully done, exercised, or performed. Compare: Patents Act 1949, s 77 (UK); 1921-22 No 18 ss 130, 131; 1946 No

32 s 6(3)

90 Requests for information as to patent or patent application The Commissioner shall, on request made to him in the prescribed manner by any person and on payment of the prescribed fee, furnish the person making the request with such informationrelatingtoanypatentorapplicationforapatentas may be specified in the request, being information in respect of any such matters as may be prescribed. Compare: Patents Act 1949, s 78 (UK)

91 Restriction upon publication of specifications, etc

(1)
Anapplicationforapatent,andanyspecificationfiledinpursuancethereof,shallnot,exceptwiththeconsentoftheapplicant, be published by the Commissioner or be open to public inspectionatanytimebeforethedateadvertisedintheJournal in pursuance of subsection (2) of section 20 of this Act: Provided that nothing in this subsection shall preclude the Commissionerfrompublishingthedateandnumberofanapplication and such details of the application and invention as are required to be given in the application form.
(2)
ThereportsofexaminersmadeunderthisActshallnotbeopen topublicinspectionorbepublishedbytheCommissioner;and such reports shall not be liable to production or inspection in anylegalproceedingunlesstheCourtorofficerhavingpower to order discovery in the proceeding certifies that the produc

tion or inspection is desirable in the interests of justice, and ought to be allowed: Provided that the Commissioner may, on application made in theprescribedmannerbyanyperson,disclosetheresultofany search made under section 13 or section 14 of this Act or any informationfurnishedundersubparagraph (i) ofparagraph(b) of section 15 of this Act in respect of any application for a patent where the complete specification has been published. Compare: PatentsAct1949,s79(UK);1921-22No18ss11,120;1946No32

s5

92 Loss or destruction of patent Where the Commissioner is satisfied that a patent has been lost or destroyed or cannot be produced, he may at any time, on application made to him in the prescribed manner and on payment of the prescribed fee, cause a further patent to be sealed. Compare: Patents Act 1949, s 80 (UK); 1921-22 No 18 s 49

93 Commissioner may grant extension of time

(1)
Where by this Act anything is required to be done within a prescribed time, and by reason of delay in the Patent Office the thing is not so done, the Commissioner may extend the time for the doing of the thing.
(2)
Where, having regard to the procedure specified and the in formation required under sections 12 to 16 of this Act or any regulationsunderthosesections,theCommissionerissatisfied that the circumstances warrant an extension or extensions of theperiodspecifiedinsubsection (1) ofsection19ofthisAct, the Commissioner may extend the period prescribed therein forcomplyingwithanyrequirementimposedontheapplicant byorunderthisAct;andthesaidsubsectionshallthenberead asiftheperiodsoextendedhadbeensubstitutedfortheperiod of 15 months therein mentioned.
(3)
Whereanextensionofperiodhasbeenallowedundersubsection (2) ofthissection,theperiodsoallowedshallbeextended by the Commissioner to such further period not exceeding 3 months,asmaybespecifiedinanoticegivenbytheapplicant to the Commissioner, if the notice is given and the prescribed

95

feeispaidbeforetheexpirationofthefurtherperiodsospecified.

(4)
No fees shall be payable in respect of any extension of time granted under subsection (1) orsubsection(2) of this section.
(5)
The powers conferred on the Commissioner by this section may be exercised notwithstanding that in any case the time limited may have expired. Compare: 1921-22 No 18 s 125

93A Additional provisions for extending time limits

(1) The Commissioner may extend

(a)
Thetimeprescribedinsubsection (2) ofsection7ofthis Act for the filing of a convention application; or
(b)
Thetimeprescribedinsubsection (2) ofsection9ofthis

Act for the filing of a complete specificationonsuchterms(ifany)ashethinksfitwhereheissatisfiedthat the circumstances warrant the extension.

(2)
Where by this Act any thing is required to be done within a prescribed time, and by reason of failure of or delay in the delivery of mail by any postal official or postal carrier that thing is not done within such time, the Commissioner may extend the time for the doing of the thing on such terms (if any) as he thinks fit.
(3)
Notwithstanding subsection (1) or subsection (2) of this sec tion, the Commissioner shall refuse to grant an extension of time under that subsection if in his opinion
(a)
Theapplicantorhisagenthasnotallowedareasonable margin of time for the delivery to the Patent Office, by postorotherwise,ofanydocumentsrelatingtothematterinrespectofwhichtheapplicationfortheextension of time is made; or
(b)
Theapplicantorhisagenthasinanyotherwayfailedto act with due diligence and prudence in respect of such manner; or
(c)
Therehasbeenunduedelayinbringingtheapplication for the extension of time or in prosecuting the application.
(4)
Every extension of time granted under this section shall be advertised in the Journal in the prescribed manner.
(5)
Where an application is made for an extension of time under this section by an agent on behalf of any applicant, the Commissioner may require as a condition of granting the applicationthatwrittenconfirmationthattheapplicationisauthorised shall be signed or executed by the applicant and lodged with theCommissionerwithinsuchtimeastheCommissionerspecifies.
(6)
Anyextensionoftimeunderthissection,andanyrequirement given or other action taken by the Commissioner under this section,maybegranted,given,ortakensoastohaveeffectin respect of things done or omitted to be done before the commencement of this section, as long as the application for the extensionoftimehasbeenmadebeforeacceptanceofthecomplete specification of the application for a patent in respect of which the application under this section has been made.
(7)
The Governor-General may from time to time, by Order in Council, make regulations for all or any of the following purposes:
(a)
For the protection of persons who at any time in good faith have begun to avail themselves of any invention thatisthesubject-matterofamatterinrespectofwhich any application under this section is made:
(b)
Prescribing the evidence that the Commissioner may accept in support of applications under this section:
(c)
PrescribingthemannerofadvertisingintheJournalextensions of time granted under this section:
(d)
Prescribing the grounds of opposition to applications under this section:
(e)
Regulating the procedure to be followed in relation to applications under this section and opposition to such applications:
(f)
Prescribingthefeestobepaidinrespectofapplications under this section.

This section was inserted, as from 20 October 1972, by section 2 Patents Amendment Act 1972 (1972 No 91).

Proceedings before Commissioner 94 Exercise of discretionary powers of Commissioner

Without prejudice to any provisions of this Act requiring the Commissionertohearanypartytoproceedingsthereunder,or togivetoanysuchpartyanopportunitytobeheard,theCommissionershallgivetoanyapplicantforapatent,orforamendment of a specification, an opportunity to be heard before exercisingadverselytotheapplicantanydiscretionvestedinthe Commissioner by or under this Act. Compare: Patents Act 1949, s 81 (UK); 1921-22 No 18 s 124

95 Costs and security for costs

(1)
TheCommissionermay,inanyproceedingsbeforehimunder thisAct,byorderawardtoanypartysuchcostsashemayconsider reasonable, and direct how and by what parties they are to be paid; and any such order may be entered as a judgment of the Court and with the leave of the Court may be enforced accordingly.
(2)
If any party by whom notice of any opposition is given under thisActorbywhomapplicationismadetotheCommissioner fortherevocationofapatentorforthegrantofalicenceunder apatentorforthedeterminationofadisputeastoaninvention under section 65 of this Act, or by whom notice of appeal is given from any decision of the Commissioner under this Act, neither resides nor carries on business in New Zealand, the Commissioner, or in the case of appeal, the Court, may requirehimtogivesecurityforthecostsoftheproceedingsor appeal, and in default of such security being given may treat the opposition, application, or appeal as abandoned. Compare: Patents Act 1949, s 82 (UK); 1921-22 No 18 ss 45, 127

96 Evidence before Commissioner

(1)
Subject to regulations made under this Act the evidence to be given in any proceedings before the Commissioner under thisActmaybegivenbyaffidavitorstatutorydeclaration;but
the Commissioner may if he thinks fit in any particular case take oral evidence instead of or in addition to such evidence asaforesaid,andmayallowanywitnesstobecross-examined on his affidavit or declaration. Any such statutory declaration may, in the event of an appeal under this Act, be used before the Court instead of evidence by affidavit, and when so used shall have all the incidents and consequences of evidence by affidavit.
(2)
InanyproceedingsunderthisActbeforetheCommissioner,he mayadministeroathstoanywitness,andmayintheprescribed manner require the attendance of any witness and discovery and production of documents.
(3)
AnyevidencegivenonoathbeforetheCommissionershallbe deemed to be given in a judicial proceeding for the purposes of sections 108 and 109 of the Crimes Act 1961.
(4)
Sectio n 111 of the Crimes Act 1961 shall apply to every affi davit and statutory declaration made for the purposes of this Act.
(5)
The Governor-General may from time to time, by Order in Council, make regulations
(a)
Prescribing the manner in which statutory declarations in respect of proceedings under this Act may be made and subscribed:
(b)
Prescribing the manner in which witnesses may be requiredtoattendandtogiveevidenceinanyproceedings before the Commissioner:
(c)
Making provision for the payment of the expenses of witnesses:
(d)
Imposing fines not exceeding $40 for failure or refusal

of any person so to attend and give evidence. Compare: Patents Act 1949, s 83 (UK); 1921-22 No 18 s 129

Thereference to sections 108 and 109 Crimes Act 1961 in subsection (3) were substituted, as from 1 January 1962, for a reference to sections 130 and 131 Crimes Act 1908 pursuant to section 412(2) CrimesAct 1961(1961No 43).

Thereferencetosection111CrimesAct1961insubsection(4)wassubstituted, asfrom1January1962,forareferencetosection133CrimesAct1908pursuant to section 412(2) Crimes Act 1961 (1961 No 43).

Appeals 97 Appeals to High Court

(1)
EveryappealunderthisActagainstadecisionoftheCommissioner shall be to the High Court.
(2)
Notice of every such appeal shall be filed in the Court within 28 days after the day on which the decision appealed against was given.
(3)
In any such appeal the Court shall have and may exercise the samediscretionarypowersasareconferredupontheCommissioner.
(4)
Subjecttotheprovisionsofsection 98 ofthisAct,thedecision of the Court shall be final
(a)
OnanyappealagainstadecisionoftheCommissioner:
(b)
Onanyapplicationundersection 31 orsection 32 ofthis

Act. Compare: 1921-22 No 18 s 140

Subsection (2) was amended, as from 9 December 1976, by section 3 Patents Amendment Act1976 (1976 No 112) by omitting the words and served upon the Commissioner.

98 Appeals to Court of Appeal

An appeal shall lie to the Court of Appeal

(a)
FromanydecisionoftheCourtonanappealundersection 42 orsection 50 ofthisAct,wheretheeffectofthe decision is the revocation of a patent:
(b)
FromanydecisionoftheCourtundersection 64 ofthis Act:
(c)
With the leave of the High Court or of the Court of Appeal, from any decision of the High Court on any appeal against a decision of the Commissioner or on application under section 31 or section 32 of this Act.

Compare: Patents Act 1949, s 87 (UK)

99 Costs of Commissioner in proceedings before Court

Inall proceedingsbeforetheCourtunderthisActthecostsof the Commissioner shall be in the discretion of the Court. Compare: 1921-22 No 18 s 142

Patent attorneys 100 Registration of patent attorneys

(1)
There shall be kept at the Patent Office a register of patent attorneys.
(2)
The Commissioner may register as a patent attorney any person who,
(a)
Is a British subject or a citizen of the Republic of Ireland; and
(b)
Is not less than 21 years of age; and
(c)
Has passed all the subjects of the prescribed examination; and
(d)
If so required by regulations made under this Act, has been employed for the period specified in the regulations in the manner specified in the regulations; and
(e)
Possesses such other qualifications as may be prescribed.
(3)
RegulationsmadeunderthisActmayprovidefortheappointment of a person or persons to conduct the examinations re ferred to in subsection (2) of this section.
(4)
Every person who was registered as a patent agent under the Patent, Designs, and Trade Marks Act 1921-22 immediately before the commencement of this Act shall be deemed to be registered as a patent attorney under this Act. Compare: 1921-22 No 18 s 135

101 Powers of patent attorneys

(1)
A patent attorney
(a)
Shall be entitled to prepare all documents, transact all business, and conduct all proceedings for the purposes of this Act; and
(b)
Shall have such other rights and privileges as may be prescribed.
(2)
Nothing in this section shall authorise a patent attorney to transact business or conduct proceedings in a Court.

(3) A person who is registered under section 100 as a patent at torney is notguiltyof anoffenceagainstsection 32orsection 33 or section 35 of the Lawyers and Conveyancers Act 2006 by reason only of exercising any of the powers conferred on patent attorneys by this section. Compare: Patents Act 1949, s 88(5) (UK) Section 101(3): substituted, on 1 August 2008, by section 348 of the Lawyers and Conveyancers Act 2006 (2006 No 1).

102 Cancellation of registration of patent attorneys

(1)
TheCourt,onapplicationmadebytheCommissionerorbythe New Zealand Institute of Patent Attorneys Incorporated with the leave in writing of the Attorney-General, may order the removal from the register of patent attorneys of the name of anypatentattorneyorthesuspensionfrompracticebeforethe Patent Office of any patent attorney who
(a)
Isconvictedofacrimeinvolvingdishonestywithinthe meaning of section 2 of the Crimes Act 1961; or
(b)
Has been guilty of misconduct in his professional capacityandbyreasonthereofisnotafitandproperperson to practise as a patent attorney; or
(c)
Has otherwise been guilty of grave impropriety or infamous conduct and by reason thereof is not a fit and proper person to practise as a patent attorney.
(2)
The Commissioner and the New Zealand Institute of Patent AttorneysIncorporatedshallbeentitledtoappearandbeheard on any such application.
(3)
No person whose name has been removed from the register

of patent attorneys under this section shall be again entered

thereon except by direction of the Court.

Subsection (1)(a) was amended, as from 1 January 1962, by section 411(1) Crimes Act 1961 (1961 No 43) by substituting the words within the meaning of section 2 of the Crimes Act 1961for the words as defined by section two hundred and thirty-seven of the Crimes Act 1908.

103 Restrictions on practice as patent attorney

(1)
No person either alone or in partnership shall carry on business, practise, act, describe himself or hold himself out, or
permit himself to be described or held out, as a patent attorneyorpatentagentunlessheisregisteredasapatentattorney, or, as the case may be, unless he and all his partners are so registered.
(2)
No company shall carry on business, practise, act, describe itselforholditselfout,orpermititselftobedescribedorheld out, as a patent attorney or patent agent: Providedthatthissubsectionshallnotapplyinthecaseofany company which was immediately before the commencement ofthisActcarryingonbusinessasapatentattorneyduringany period or periods while a manageror director of the company is registered as a patent attorney.
(3)
For the purposes of this section a person who or a company which undertakes for gain in New Zealand
(a)
To apply for or obtain patents in New Zealand or elsewhere; or
(b)
To prepare specifications or other documents for the purposesofthisActorofthepatentlawofanycountry; or
(c)
Togiveadviceotherthanofascientificortechnicialna

tureastothevalidityofpatentsortheirinfringementshall be deemed to carry on business as a patent attorney.

(4)
Any person who or company which fails to comply with or actsincontraventionoftheprovisionsofthissectioncommits anoffence,andshallbeliableonsummaryconvictiontoafine not exceeding $200.
(5)
Nothing in this section shall be construed as prohibiting barristers or solicitors of the High Court of New Zealand from giving professional advice or taking such part in proceedings under this Act as has heretofore been taken by them.
(6)
Nothing in this section shall prevent the personal representative of a deceased patent attorney from carrying on the business or practice of the deceased patent attorney for a period not exceeding 3 years from the date of the death of the patent attorney, or for such further period (if any) as the Court may allow, if the personal representative is himself registered as a patent attorney or employs a person who is registered as a patent attorney to manage the business or practice. Compare: 1921-22 No 18 s 135

104 Recovery of patent attorney’s charges

(1)
Nopatentattorneyshallcommenceormaintainanyactionfor the recovery of any fees, charges, or disbursements paid or incurred or made by him for any business done by him as a patentattorneyuntil theexpirationof7 daysafterabill of the fees,chargesanddisbursements,signedbyhim(or,inthecase of a partnership, by any of the partners with the name of the partnership),orenclosedinoraccompaniedbyalettersigned in like manner referring to the bill, has been delivered to the party chargeable.
(2)
The delivery may be effected either by personal delivery to the party chargeable or by leaving the bill or letter for him at his place of business, or dwellinghouse, or last known place of abode, or by forwarding it to him by post in a registered letteraddressed tohimasaforesaid. Whereitisforwardedby postas aforesaid,it shallbe deemedto have beendelivered at the time at which the letter would have been delivered in the ordinary course of post. Compare: 1921-22 No 18 s 137

Offences 105 Falsification of register, etc

Everypersonwhomakesorcausestobemadeafalseentryin anyregisterkeptunderthisAct,orawritingfalselypurporting to be a copy of an entry in any such register, or produces or tenders or causes to be produced or tendered in evidence any suchwriting,knowingtheentryorwritingtobefalse,commits an offence, and shall be liable on conviction on indictment to imprisonment for any term not exceeding 2 years. Compare: Patents Act 1949, s 90 (UK); 1921-22 No 18 s 143

106 Unauthorised claim of patent rights

(1)
Everypersonwhofalselyrepresentsthatheoranotherperson isthepatenteeofaninventionorthatheoranotherpersonhas applied for a patent for an invention commits an offence and shall be liable on summary conviction to a fine not exceeding $200.
(2)
Everypersonwhofalselyrepresentsthatanarticlesoldbyhim is patented in New Zealand or is the subject of an application for a patent in New Zealand commits an offence and shall be liable on summary conviction to a fine not exceeding $100.
(3)
For the purposes of this section
(a)
A person shall be deemed to represent that an article is patentedin NewZealandifthereisstamped, engraved, or impressed on, or otherwise applied to, the article the word patent or “patented”, the words “provisional patent”,orsomeotherwordorwordsexpressingorimplying that a patent for the article has been obtained in New Zealand; and
(b)
A person shall be deemed to represent that an article is thesubjectofanapplicationforapatentinNewZealand iftherearestamped,engraved,orimpressedonorotherwiseappliedtothearticlethewords“patentappliedforor “patent pendingor some other word or words implyingthatanapplicationforapatentforthearticlehas been made in New Zealand:

Provided that it shall be sufficient defence to any prosecution under this subsection to show that the article was patented or was the subject of an application for a patent at the time when and in the country where the words were stamped, engraved, or impressed on or otherwise applied to it.

(4) Everypersonwhousesonhisplaceofbusinessoronanydocument issued by him or otherwise the words “Patent Office”, or any other words suggesting that his place of business is or is officially connected with the Patent Office, commits an offence and shall be liable on summary conviction to a fine not exceeding $100. Compare: Patents Act 1949, s 91 (UK); 1921-22 No 18 s 143

107 Protection of Royal Arms, etc ThegrantofapatentunderthisActshallnotinitselfauthorise the patentee to use or place on any patented article any representationspecifiedinsections 12to15 ofthe Flags,Emblems, and Names Protection Act 1981.

This section was substituted, as from 1 January 1982, by section 27(1) Flags, Emblems, and Names Protection Act 1981 (1981 No 47).

108 Offences by companies

Where an offence against section 25, section 26, section 103, or section 105 of this Act is committed by a body corporate, everypersonwhoatthetimeofthecommissionoftheoffence is a director, general manager, secretary, or other similar officer of the body corporate, or is purporting to act in any such capacity,shallbedeemedtobeguiltyofthatoffenceunlesshe proves that the offence was committed without his consent or connivanceandthatheexercisedallsuchdiligencetoprevent the commission of the offence as he ought to have exercised havingregardtothenatureofhisfunctionsinthatcapacityand to all the circumstances. Compare: Patents Act 1949, s 93 (UK)

Section 109 was repealed, as from 1 April 1958, by section 214(1) Summary Proceedings Act 1957 (1957 No 87).

Miscellaneous 110 Service of notices, etc, by post

(1)
Anynoticerequiredorauthorisedtobegivenbyorunderthis Act, and any application or other document so authorised or required to be made or filed, may be given, made, or filed by sendingitbypostinaletteraddressedtothepersonconcerned at his usual or last known address.
(2)
Where any notice is sent by the Commissioner to any person by post as aforesaid the notice shall be deemed to have been givenatthetimewhenthelettercontainingitwouldhavebeen delivered in the ordinary course of post. Compare: Patents Act 1949, s 97 (UK); 1921-22 No 18 s 132

111 Declaration by person under disability

(1) Ifanypersonisincapableofmakinganydeclaration,ordoing anything required or permitted by or under this Act because he is not of full age and capacity, the guardian, committee,

106

or statutory administrator (if any) of the person subject to the disability, or (if there is none) any person appointed by any Court possessing jurisdiction in respect of his property, may makethatdeclaration,oradeclarationasnearlycorresponding theretoascircumstancespermit,anddothatthinginthename and on behalf of the person subject to the disability.

(2) An appointment may be made by the Court for the purposes of this section upon the application of any person acting on behalf of the person subject to the disability, or of any other personinterestedinthemakingofthedeclarationorthedoing of the thing. Compare: 1921-22 No 18 s 134

112 Journal, indexes, etc

(1)
The Commissioner shall issue periodically a journal to be calledthePatentOfficeJournal,and,subjecttotheprovisions of subsection (1) of section 91 of this Act, shall publish thereinallsuchparticularsofapplicationsforpatents(whether filed before or after the commencement of this Act) as are prescribed by regulations made under this Act and all such othermattersasaredirectedbythisActorotherwisebylawto be published therein and such other matters and information as may appear to him to be useful or important to proprietors of patents registered or subsisting in New Zealand.
(2)
TheCommissionermayprepareandpublishinsuchformashe deems expedient indexes, specifications, abridgments of specifications, catalogues, and other works relating to inventions and patents as he thinks fit.
(3)
TheCommissionermaymaintainandrevisefromtimetotime aclassificationbysubject-matterofspecificationsfiledinNew Zealandandopentopublicinspectionandofsuchprintedpublicationsrelating topatentspublishedin New Zealand as may be necessary or useful for the purpose of determining with readinessandaccuracythenoveltyofinventionsforwhichapplications for patents are filed. Compare: 1946 No 32 s 6

113 Rules of Court

(1)
Rules regulating the practice and procedure of the Court in proceedings under this Act may be made in accordance with the provisions of section 3 of the Judicature Amendment Act 1930. Subject thereto, such proceedings shall be taken in accordance with the practice and procedure of the Court in like cases.
(2)
Any such rules may make provision for the appointment of scientific advisers to assist the Court in proceedings for infringement of patents and in proceedings under this Act and for regulating the functions and remuneration of those advisers.
(3)
Any action for infringement of a patent shall be tried without a jury, unless the Court otherwise directs. Compare: Patents Act 1949, s 84 (UK); 1921-22 No 18 s 139

114 Regulations

(1)
Subject to the provisions of this Act, the Governor-General may from time to time, by Order in Council, make all such regulations as may in his opinion be necessary or expedient for giving effect to the provisions of this Act and for the due administration thereof.
(2)
Without limiting the general power conferred by subsection
(1)
of this section, it is hereby declared that regulations may bemade underthissectionforalloranyofthefollowingpurposes:
(a)
For regulating the business of the Patent Office in relation to patents:
(b)
For regulating all matters by this Act placed under the direction or control of the Commissioner:
(c)
Forprescribingtheformandmannerofexecutionofapplications for patents and of any specifications, drawings, or other documents which may be filed at the Patent Office, and for requiring copies to be furnished of any such documents:
(d)
For regulating the procedure to be followed in connection with any application or request to the Commissioner or in connection with any proceeding before the
Commissionerandforauthorisingtherectificationofirregularities of procedure:
(e)
For regulating the keeping of the register of patent attorneys:
(f)
For regulating the registration of patent attorneys, and for prescribing the terms and conditions of their registration:
(g)
For regulating the procedure for removing the names ofpatentattorneysfromthe registerofpatentattorneys and for suspending patent attorneys from practice before the Patent Office:
(h)
PrescribingclassesofpersonswhomtheCommissioner mayrefusetorecogniseasagentsinrespectofproceedings under this Act:
(i)
For authorising the preparation, publication, sale, and exchange of copies of specifications, drawings, and other documents in the Patent Office and of indexes to and abridgments of them:
(j)
For prescribing the mode of advertising any matter which by this Act is required to be advertised:
(k)
For prescribing anything authorised or required by this Act to be prescribed by regulations.
(l)
Forthecarryingout,orgivingeffectto,NewZealand’s obligations under the Patent Cooperation Treaty.
(3)

Subsection (2)(l) was inserted, as from 19 August 1992, by section 9 Patents Amendment Act 1992 (1992 No 81).

Subsection (3) was repealed, as from 19 December 1989, by section 11 Regu lations (Disallowance) Act 1989 (1989 No 143).

115 Fees

(1)
Subject to the provisions of this Act, there shall be paid in respect of the grant of patents and applications therefor, and in respect of other matters relating to patents arising under this Act, such fees as may be from time to time prescribed by regulations made under this Act, and all such fees shall be paid into a Departmental Bank Account.
(2)
Any sum paid to the Commissioner by mistake, or any sum the payment of which is not required by the regulations made

109

underthisAct,mayberefundedbytheCommissioner,andall money so refunded shall be paid out of public money without further appropriation than this Act.

(3) Fees in respect of international applications may, in accordancewithNewZealand’sobligationsunderthePatentCooperationTreaty,becollectedbytheCommissioneronbehalfof

(a)
The International Bureau; or
(b)
Any international search authority that has been ap

proved,forthepurposesofthissubsection,bytheMin

ister as an appropriate authority on whose behalf the

Commissioner may collect such fees.

ThewordsConsolidatedRevenueAccountinsubsection(1)weresubstituted for the words Consolidated Fund, as from 1 April 1964, pursuant to section 4(4) Public Revenues Amendment Act 1963 (1963 No 46). Those words were inturnsubstituted,asfrom1April1978,bythewordsConsolidatedAccountpursuant to section 114(6) Public Finance Act 1977 (1977 No 65).

Subsection (1) was amended, as from 1 July 1989, by section 86(1) Public Fi nanceAct1989(1989No44)bysubstitutingthewords aDepartmentalBank Accountfor the words the Public Account to the credit of the Consolidated Account.

ThewordsConsolidatedRevenueAccountinsubsection(2)weresubstituted for the words Consolidated Fund, as from 1 April 1964, pursuant to section 4(4) Public Revenues Amendment Act 1963 (1963 No 46). Those words were inturnsubstituted,asfrom1April1978,bythewordsConsolidatedAccountpursuant to section 114(6) Public Finance Act 1977 (1977 No 65).

Subsection (2) was amended, as from 1 July 1989, by section 86(1) Public Fi nanceAct1989(1989No44)bysubstitutingthewordspublicmoneyforthe wordsthe Consolidated Account.

Subsection (3) was inserted, as from 19 August 1992, by section 10 Patents Amendment Act 1992 (1992 No 81).

116 Annual report of Commissioner

(1)
The Commissioner shall, in July of each year, furnish to the Minister a report on the operation of this Act during the year ended on the immediately preceding 30th day of June.
(2)
The report shall include an account of fees, salaries, allowances, and other money received and paid under this Act during that year.
(3)
TheMinistershalllayacopyofthereportbeforetheHouseof

Representatives within 28 sitting days of receiving it.

Thissectionwas substituted,asfrom19August1991,bysection11(1)Patents Amendment Act1992 (1992 No 81). Section 11(2) states that notwithstanding subsection(1)ofthatsection,thereportthattheCommissionerisrequiredpursuanttothatsubsectiontofurnishtotheMinisterinJuly1992shallrelatetothe periodcommencingon1April1991andendingwiththecloseof30June1992.

117 Saving for Royal prerogative, etc

(1)
Nothing in this Act shall take away, abridge, or prejudicially affect the prerogative of the Crown in relation to the granting of letters patent or to the withholding of a grant thereof.
(2)
NothinginthisActshallaffecttherightoftheCrownorofany person deriving title directly or indirectly from the Crown to sellorusearticlesforfeitedunderthelawsrelatingtoCustoms or excise. Compare: Patents Act 1949, s 102 (UK); 1921-22 No 18 ss 32(4), 145

118 Application of Act to Tokelau

This Act shall be in force in Tokelau.

Theword Tokelauwassubstituted,asfrom9December1976,forthewords Tokelau Islands pursuant to section 2(3) Tokelau Amendment Act 1976 (1976 No 122).

119 Repeals and savings

(1)
TheenactmentsspecifiedinSchedule 1 tothisActarehereby repealed.
(2)
The regulations specified in Schedule 2 to this Act are hereby revoked.
(3)
Without limiting the provisions of the Acts Interpretation Act 1924, it is hereby declared that
(a)
The repeal or revocation of any provision by this Act shall not affect any document made or any thing whatsoeverdoneundertheprovisionsorepealedorrevoked orunderanycorrespondingformerprovision,andevery such document or thing, so far as it is subsisting or in force at the time of the repeal or revocation and could have been made or done under this Act, shall continue andhaveeffectasifithadbeenmadeordoneunderthe corresponding provision of this Act and as if that provision had been in force when the document was made or the thing was done:
(b)
ThetransitionalprovisionssetoutinSchedule 3 tothis Actshallhaveeffectforthepurposesofthetransitionto

111

the provisions of this Act from the law in force before the commencement of this Act.

Compare: Patents Act 1949, s 106 (UK)

Schedule 1 Section 119(1) Enactments repealed

  • 1908, No 140—The Patents, Designs, and Trade Marks Act 1908: Thedefinitionoftheexpression“trueandfirstinventorin section 2.
  • 1921-22,No18—ThePatents,Designs,andTradeMarksAct 1921-22: Part1;andPart4initsapplicationtopatents. (1931 Reprint, Vol VI, p 656.)
  • 1924,No40—ThePatents,Designs,andTradeMarksAmendment Act 1924. (1931 Reprint, Vol VI, p 736.)
  • 1929,No14—ThePatents,Designs,andTradeMarksAmendment Act 1929. (1931 Reprint, Vol VI, p 738.)
  • 1939,No26—ThePatents,Designs,andTradeMarksAmendmentAct1939: Sections53,54,55,and71intheirapplication to patents; and sections 56 to 68 and 72 and 73.
  • 1943,No6.—ThePatents,Designs,andTradeMarksAmendmentAct1943: Sections5and7intheirapplicationtopatents; and sections 2 to 4.
  • 1946,No32—ThePatents,Designs,andTradeMarksAmendment Act 1946: Sections 3, 4, 6, and 7 in their application to patents; and sections 2 and 5.
  • 1947,No37—ThePatents,Designs,andTradeMarksAmendmentAct1947: Section5initsapplicationtopatents;andsections 3, 4, and 6.
  • 1947, No 66—The Emergency Regulations Continuance Act 1947: SomuchofSchedule2asrelatestothePatents,Designs, TradeMarks,andCopyrightEmergencyRegulations1940and Amendment No 1 thereof.
  • 1953, No 54—The Stamp Duties Amendment Act 1953: So much of the Schedule as relates to the Patents, Designs, and Trade Marks Act 1921-22.

Schedule 2 Section 119(2) Regulations revoked

Title Serial Number

The Patents, Designs, Trade Marks, and 1940/60 Copyright Emergency Regulations 1940 AmendmentNo1........................................ 1943/91 AmendmentNo2........................................ 1947/198 AmendmentNo3........................................ 1948/43 AmendmentNo4........................................ 1948/118

Schedule 3 Section 119(3)(b) Transitional provisions

1

SubjecttotheprovisionsofthisSchedule,anyOrderinCoun

cil,regulation,order,requirement,certificate,notice,decision,

direction,authorisation,consent,application,request,orthing

made,issued,given,ordoneunderanyenactmentrepealedby

thisActshall,ifinforceatthecommencementofthisAct,and

sofarasitcouldhavebeenmade,issued,given,ordoneunder

this Act, continue in force and have effect as if made, issued,

given,ordoneunderthecorrespondingenactmentofthisAct.

2

Section 11 of this Act shall apply in relation to a complete

specification filed before the commencement of this Act as it applies to a complete specification filed after the commencement of