Source document: https://docs-lawep.s3.us-east-2.amazonaws.com/1698846262631.pdf (New Zealand)
Patents Bill Government Bill Explanatory note General policy statement A patent is a right granted over an invention.

The grant of a patent gives the patent owner the exclusive right to make, use, and sell a patented invention.

This right lasts for a maximum of 20 years from the date that the application was ﬁled.

Once the patent has expired anyone may use the invention.

In return for the grant of this right, the patent owner must provide a detailed description of the inven­ tion.
Patents in New Zealand are granted under the authority of the Commissioner of Patents (the Commissioner) after an examination process by the Intellectual Property Ofﬁce of New Zealand (IPONZ).

The provision of this exclusive right is intended to provide inventors with an opportunity to make a return on their investment in innova­ tion by preventing others from copying the invention.

This provides an incentive for innovation and its dissemination that might not other­ wise occur.
The grant of patent rights also provides an incentive for foreign innovators to transfer their innovations to New Zealand.

It is the beneﬁts to society of this incentive effect that provide the main justiﬁcation for the patent system.

Because the grant of a patent provides a form of monopoly right, the grant of patents can impose costs on society, particularly as most patents granted in New Zealand are granted to applicants from out­ side New Zealand.
In order to minimise these costs and ensure that 235—1 2 Patents Bill Explanatory note the patent system provides a net beneﬁt to society, patents should only be granted for “genuine innovations”, that is, innovations that are new, involve an inventive step (ie, are non­obvious), and are use­ ful.

New Zealand’s current patent legislation, the Patents Act 1953, is modelled on the long since repealed United Kingdom Patents Act 1949.
The standard of examination required under the Patents Act 1953 is relatively low compared with most other countries.

Patent applications in New Zealand are only examined for adequacy of de­ scription and novelty.

There is no examination for inventive step or usefulness, although lack of inventive step or usefulness are grounds on which third parties can oppose the grant of a patent or apply to revoke a granted patent.
Novelty is determined on the basis of what is known or used in New Zealand—information available overseas, but not in New Zealand, is not considered when determining nov­ elty.

The courts have determined that, in the event of any dispute as to whether a patent should be granted, the Commissioner must give applicants the beneﬁt of the doubt.

Most other countries examine for both novelty and inventive step, and many examine for usefulness as well.
When considering novelty and inventive step, nearly all countries consider information made available anywhere in the world, and applicants are generally not given the beneﬁt of the doubt in any dispute.

A consequence of this is that patent rights granted in New Zealand can be broader than patent rights granted in other countries for the same invention.
This has the potential to disadvantage New Zealand businesses and consumers, as technology that may be freely available elsewhere could be covered by patents in New Zealand.

Since much innovation is incremental, building on what has gone before, local innovators may be disadvantaged as well.
The Patents Bill will replace the Patents Act 1953 and will update New Zealand’s patent regime to ensure that it continues to provide an appropriate balance between providing adequate incentives for innovation and technology transfer while ensuring that the interests of the public and the interests of Māori in their traditional knowledge and indigenous plants and animals are protected.

It also updates the regulatory regime for patent attorneys.
Explanatory note Patents Bill 3 The Bill gives effect to the Government’s decisions to— • strengthen the criteria for granting a patent by introducing an “absolute novelty” standard, examination for inventive step and usefulness, and a “whole of contents” approach to dealing with conﬂicting applications: provide that the current requirement for the Commissioner to give applicants the beneﬁt of the doubt when deciding whether to grant a patent be replaced by a balance of probabilities ap­ proach: retain the current deﬁnition of patentable subject matter as a “manner of manufacture” and provide speciﬁc exclusions from patent protection for human beings and biological pro­ cesses for their generation, methods of medical treatment of human beings, plant varieties, and inventions whose commer­ cial exploitation would be contrary to public order or morality: establish a Māori advisory committee to provide advice to the Commissioner in respect of patent applications for inventions involving indigenous plants and animals: introduce a speciﬁc experimental use exception into New Zealand’s patent legislation: provide for automatic publication of patent applications at 18 months from their earliest priority date: provide that where an invention involves a micro­organism, the requirements for disclosure of the invention can be met by depositing a specimen of the micro­organism in a recognised depositary: provide that all examiners’ reports and communications relat­ ing to a patent application be open to public inspection once the application has been accepted: provide that disclosures of an invention, up to 12 months prior to ﬁling of an application, will not destroy novelty if the dis­ closure was derived from the inventor and disclosed without the inventor’s consent: simplify the procedures for granting a patent by— • replacing the present “right to apply” requirement with a “right to grant” provision; and providing that the Commissioner may set time limits for responses to examination reports.
Failure to meet these • • • • • • • • • • 4 • • Patents Bill Explanatory note • limits will result in the application being deemed to be abandoned; and removing the current requirement for local applicants to seek permission to ﬁle a foreign patent application if they have not ﬁled an application in New Zealand: streamline the procedures for challenging the grant of a patent by— • providing for a re­examination that allows third parties to object to the grant of a patent on the grounds that the invention is not novel or lacks an inventive step: removing the current standing requirements for revo­ cation proceedings, while providing safeguards against frivolous or vexatious proceedings: providing an administrative revocation procedure where third parties can, at any time during the term of a patent, apply to the Commissioner to revoke the patent on any of the grounds on which grant could be refused.
The existing High Court procedure for revoking a patent will remain: repealing the current pre­grant opposition procedure: • update the regulatory regime for patent attorneys by— • repealing the current age and citizenship requirements for registration as a patent attorney; and allowing a person’s registration as a patent attorney overseas to be recognised for the purposes of registra­ tion in New Zealand under speciﬁc conditions; and introducing a good character requirement; and establishing a Patent Attorneys’ Standards Board, comprising the Commissioner and representatives of the patent attorney profession, with functions including the administration of the qualiﬁcations and disciplinary regimes for patent attorneys; and requiring a code of conduct meeting speciﬁed object­ ives to be developed for and maintained by the patent attorney profession; and specifying the grounds on which a complaint about a patent attorney’s conduct can be made, the procedure • • • • • • • Explanatory note Patents Bill 5 for making a complaint, and the orders following any breach of acceptable standards of service.
The Bill also makes a number of other changes to update and simplify the administrative aspects of the patents regime.

is a “manner of manufacture”; and is new; and involves an inventive step; and is useful.

Criteria for granting patent The Bill updates the criteria for granting a patent and more closely aligns them with the criteria applied in most other countries.
A patentable invention is deﬁned in the Bill as an invention that— • • • • The term “manner of manufacture” is carried over from the Patents Act 1953 and has been interpreted by the courts to exclude such things as “products of nature”, mere discoveries, mathematical al­ gorithms, mere schemes or plans, and methods of medical treatment of humans.

The Bill also requires that patent applications be examined for inven­ tive step and usefulness before a patent can be granted.
These criteria are not currently part of the patent examination process.

Under the Patents Act 1953, novelty and inventive step are deter­ mined with respect to what was known or used in New Zealand prior to the ﬁling date of the patent application.

No notice is taken of in­ formation available outside New Zealand.

The Bill deﬁnes a “prior art base”, which is deﬁned to be all information made available to the public in any form anywhere in the world.
Novelty and inventive step are determined with respect to this “prior art base”.

This will assist in reducing the risk that patents are granted in New Zealand for inventions that are otherwise known elsewhere and would not be eligible for patent protection in other countries.

For an invention to meet the requirement to be useful, the Bill re­ quires that inventions demonstrate speciﬁc, substantial, and credible utility.
This requirement is intended to ensure that patents are granted only where the inventor has identiﬁed a real world use for the inven­ tion.

Although all inventions must meet this requirement, it is of particular relevance for inventions involving genetic material where 6 Patents Bill Explanatory note there have been instances of patents being granted for material where no speciﬁc use has been disclosed.
The courts have decided that, under the Patents Act 1953, the Com­ missioner should not refuse to grant a patent unless almost certain that no valid patent could be granted, and that applicants must be given the beneﬁt of any doubt in any dispute.

The beneﬁt of the doubt requirement is stricter than the balance of probabilities ap­ proach taken by the courts.

As a result, the Commissioner may be forced to grant patents that are likely to be held invalid by the courts.
Such patents may give the patent owner rights they are not entitled to.

Given the costs involved in challenging the grant of a patent, such patents may never be challenged.

To deal with this problem, the Bill provides that the Commissioner must use the balance of probabilities approach.

Under the Bill, conﬂicts between applications that disclose similar in­ ventions will be resolved by comparing the “whole contents” of the applications.
This replaces the present, more limited, “prior claim­ ing” approach.

A requirement of the patent system is that a full and complete dis­ closure of the invention be provided, sufﬁcient to allow a suitably skilled person to replicate the invention.

This can be difﬁcult where the invention is, or involves, a micro­organism.

In such cases, the Bill allows the disclosure requirements to be met by lodging a speci­ men of the micro­organism in a recognised depositary.
Disclosure of an invention prior to ﬁling a patent application will de­ stroy the novelty of the invention and prevent grant of a valid patent.

There are occasions where inventors may disclose their inventions to third parties (eg, for the purpose of seeking investment capital) who later make the invention public without the inventor’s consent.

In such circumstances it would be unfair to the inventors to deny them patent protection.
The Bill provides that, in the event of unauthorised disclosure, a valid patent can still be obtained if a patent application is ﬁled within 12 months of the disclosure.

Explanatory note Patents Bill 7 Exclusions to patentability Exclusions are inventions that would otherwise meet the require­ ments of a patent, but which are excluded from patent protection for policy reasons.
The Bill speciﬁcally excludes— • • • • methods of medical treatment of human beings: human beings and biological processes for their generation: plant varieties: inventions whose commercial exploitation would be contrary to public order or morality.

Methods of medical treatment of human beings are currently not patentable in New Zealand as the courts have long held that they are not a “manner of manufacture”.

In more recent times there have been attempts by patent applicants to overturn this ruling.
In order to provide certainty, and to remove any doubts, the Bill speciﬁcally excludes such methods from patent protection.

Most other countries also exclude such methods.

Although it is unlikely that patents including human beings in their scope would be granted under the current legislation, to remove any doubt, the Bill introduces a speciﬁc exclusion for human beings.

This exclusion was recommended by the Royal Commission on Genetic Modiﬁcation.

Plant varieties are also excluded.


Plant varieties can receive protec­ tion under the Plant Variety Rights Act 1987.

The exclusion of inventions whose commercial exploitation would be contrary to public order or morality expands the current “contrary to morality” exclusion.
Article 27.2 of the WTO Agreement on Trade Related Aspects of Intellectual Property Rights (the TRIPS Agree­ ment) requires that it is the commercial exploitation of the invention, rather than the nature of the invention itself, which must be objection­ able.

It is intended that this exclusion would be used infrequently, in relation to inventions where commercial exploitation is likely to be offensive to a signiﬁcant section of the community, including Māori.
Interests of Māori The Bill will establish a Māori advisory committee to advise the Commissioner in relation to patent applications for inventions in­ volving traditional knowledge or indigenous plants and animals.

The committee’s function will be to provide advice that can be used by 8 Patents Bill Explanatory note the Commissioner to determine whether such inventions are novel, or involve an inventive step, or whether the commercial exploitation of such inventions would be contrary to Māori values.
Challenging grant of patent No matter how thorough the patent examination process is, patent examiners may not always be able to locate all information that might have a bearing on the decision to grant a patent.

As a result some patents may be granted that should not have been granted.

Such patents have the potential to impose unnecessary costs on consumers and businesses.

The Bill introduces simpliﬁed procedures that will reduce the cost and complexity involved in challenging these patents.
A re­examination procedure is introduced that can be invoked at any time after a patent application is published.

Any person may request re­examination, on the grounds that the invention concerned is not novel or lacks an inventive step.

The current administrative revocation procedure for revoking a granted patent will be expanded, so that it can be invoked by any person at any time after the grant of a patent (the current procedure is limited to the 12 months after grant).
The application will be made to the Commissioner, who will make a decision after hearing the parties concerned if they so wish.

This procedure is expected to be simpler and cheaper than the current requirement to apply to the High Court.

As is currently the case, applicants for revocation will have the option of applying directly to the High Court.

With the introduction of the procedures described above, the cur­ rent pre­grant opposition procedure will be repealed.
This proced­ ure, which can only be invoked in a narrow 3­month window after acceptance of a patent application, can delay grant of a patent for some years.

This can disadvantage patent owners, as a patent cannot be enforced until it is granted.

Procedural and administrative issues The Bill replaces the current “right to apply” provisions with a “right to grant” regime.

At present, only the inventors or their assignees may apply for a patent.
This can cause problems for overseas appli­ cants when rights to an invention are assigned and the assignment is not completed before the time limit for ﬁling an application in New Explanatory note Patents Bill 9 Zealand has expired.

Due to differing requirements in other coun­ tries, the New Zealand application is often ﬁled in the name of the assignee, who, at the time of ﬁling, may not have the right to apply under New Zealand law.
To overcome this problem, the Bill will pro­ vide that any person may apply for a patent, but only inventors and their assignees have the right to be granted the patent.

Currently, patent applications are published at acceptance, which may be 2 to 4 years after the initial application is made.

The Bill provides that applications will be published at 18 months from their earliest priority date, in line with the policy of nearly all other countries.
This will make little difference in practice, as most of the patent applications ﬁled in New Zealand are also ﬁled in other countries.

This early publication of applications will reduce uncertainty for third parties regarding the scope of patent rights that may be granted.
At present, all communications and other documents produced in connection with a patent application, with the exception of the patent speciﬁcation, are not available for public inspection and are not sub­ ject to the provisions of the Ofﬁcial Information Act 1982.

The Bill provides that, once an application has been accepted, all documents connected with an application will be made public.

This brings New Zealand practice on this issue into line with the practice of most other countries.
Under the Patents Act 1953, applicants resident in New Zealand must seek permission from the Commissioner if they wish to ﬁle a patent application overseas and they have not already ﬁled an application in New Zealand less than 6 weeks earlier.

This provision was intended to allow the Commissioner to check whether such applications dis­ closed material that might be relevant for defence purposes.
This im­ poses unnecessary costs and complexity on applicants, and in recent times permission has never been refused.

Consequently, this provi­ sion is repealed by the Bill.

The Bill will also allow the Commissioner to set time limits for appli­ cants to respond to examination reports issued by the Commissioner.

This will be in addition to the overall time limit for overcoming all objections that currently exist.

Failure to meet the time limits will result in applications being deemed to be abandoned.
This measure is intended to encourage applicants to prosecute their patent applica­ 10 Patents Bill Explanatory note tions promptly, so that third parties who may be affected by the grant of a patent know the fate of patent applications as soon as possible.

The Bill also makes a number of other changes of a minor nature to various procedural and administrative provisions of the Patents Act 1953, with a view to removing or updating obsolete provisions.
This is intended to reduce compliance costs and increase certainty for both applicants and third parties.

Patent attorneys The present regulatory regime for patent attorneys has remained es­ sentially unchanged since 1953 and is now out of step with current practice in the regulation of professional groups.

The Bill updates the regulatory regime.


The present age and citizenship requirements are no longer necessary and are inconsistent with the New Zealand Bill of Rights Act 1990 and New Zealand’s international commitments.

Instead, any person, regardless of their nationality or place of residence, may be registered as a patent attorney in New Zealand if they meet the requirements for registration.

Candidates for registration must be of good character.
A Patent Attorneys’ Standards Board of New Zealand (the Board) is to be established.

This Board will include the Commissioner and at least 2 persons nominated by the New Zealand Institute of Patent Attorneys (Incorporated).

The Board functions will include setting and running examinations for candidates for registration, assessing the qualiﬁcations and experience held by candidates, and certifying whether the candidates meet those requirements where appropriate.
The Board will also be responsible for hearing and determining com­ plaints from the public regarding the conduct of patent attorneys.

The Bill will also require patent attorneys to have and adhere to a code of conduct, which is to be developed by the New Zealand In­ stitute of Patent Attorneys (Incorporated).

The code is to provide minimum standards of care, competence, and conduct for patent at­ torneys and is to be approved by the Board.
Transitional provisions The Bill provides the following transitional provisions: • the new Patents Act will apply to all applications with a com­ plete speciﬁcation ﬁling date or, in the case of Treaty applica­ Explanatory note Patents Bill 11 tions, the date that the applicant fulﬁlled its obligations under Article 22(1) or 39(1)(a) of the Patent Cooperation Treaty, that is, or is deemed to be, on or after the date of commencement: the provisions of the Patents Act 1953 will continue to apply to all applications with a complete speciﬁcation ﬁling date or, in the case of Treaty applications, the date that the applicant fulﬁlled its obligations under Article 22(1) or 39(1)(a) of that Treaty, that is, or is deemed to be, before the date of com­ mencement: patents granted under the Patents Act 1953 are continued under the Bill, but with their existing key dates, term, and grounds for revocation.
• • This will ensure that patent rights already granted or applied for prior to the new Act coming into force are protected.

This is necessary because the new Act will provide for stricter criteria for granting a patent than the current Act, which means that some patents granted under the current Act would be found to be invalid under the new Act.

Clause by clause analysis Clause 1 is the Title clause.

Clause 2 is the commencement clause.


Clause 2 provides that— • certain provisions relating to regulations, qualiﬁcation­setting and the code of conduct for patent attorneys and patent attor­ ney companies, a Māori advisory committee, and the Commis­ sioner come into force on the day after the date on which the Bill receives the Royal assent.
These provisions enable regu­ lations and other preparations to be made to bring the rest of the Bill into force: the rest of the Bill comes into force on a date to be appointed by the Governor­General by Order in Council; and 1 or more orders may be made bringing different provisions into force on different dates.

This will allow time for regulations that give effect to some parts of the Bill to be made.
• 12 Patents Bill Explanatory note Part 1 Preliminary Purposes and overview Clause 3 describes the purposes of this Bill.
The purposes of this Bill are to— • ensure that a patent is granted for an invention only in appro­ priate circumstances by— • establishing appropriate criteria for the granting of a patent; and providing for procedures that allow the validity of a patent to be tested; and • • • provide greater certainty for patent owners and the users of patented inventions that patents will be valid after they are granted; and address Māori concerns relating to the granting of patents for inventions derived from indigenous plants and animals or from Māori traditional knowledge; and promote quality, expertise, and integrity in the profession of patent attorneys; and ensure that New Zealand’s patent regime takes account of international developments.
Clause 4 contains an overview of the Bill.

• • Interpretation Clause 5 deﬁnes a number of terms and expressions used in the Bill.

This includes a deﬁnition of inventor.

Under the Bill, the inventor is the actual deviser of the invention.

The term does not include a person who has merely imported the invention into New Zealand.

Clause 6 deﬁnes the term novel.

This is one of the key terms that is used to determine whether an invention is patentable under the Bill.
An invention, so far as claimed in a claim, is novel if it does not form part of the prior art base.

This is based on a similar test in the Patents Act 1977 of the United Kingdom.

Clause 7 deﬁnes the expression inventive step.

This is another key concept that is used to determine whether an invention is patentable under the Bill.
An invention, so far as claimed in a claim, involves an inventive step if it is not obvious to a person skilled in the art, having Explanatory note Patents Bill 13 regard to any matter which forms part of the prior art base.

This is also based on a similar test in the Patents Act 1977 of the United Kingdom.

Clause 8 deﬁnes the expression prior art base which is used in the deﬁnitions of novel and inventive step.
Basically, the prior art base means all matter (whether a product, a process, information about a product or process, or anything else) that has at any time before the priority date of the relevant claim been made available to the public (whether in New Zealand or elsewhere) by written or oral description, by use, or in any other way.
In relation to the deﬁnition of novel, the deﬁnition of prior art base also includes the information contained in a complete speciﬁcation ﬁled in respect of another patent application in certain circumstances.
Clause 9 provides that a disclosure must be disregarded for the pur­ poses of the deﬁnition of prior art base if— • the disclosure occurred during the 1­year period before the ﬁling date of the patent application and the disclosure was due to information having been obtained unlawfully or in breach of conﬁdence: the disclosure occurred during the 1­year period before the ﬁl­ ing date of the patent application and the disclosure was made in breach of conﬁdence by a person who obtained information in conﬁdence from the inventor: the disclosure was due to the communication of the invention to a government department: the disclosure occurred during the 6­month period before the ﬁling date of the patent application and that disclosure was due to the display of the invention at certain speciﬁed international exhibitions: the disclosure was due to the invention being publicly worked, at any time during the 1­year period before the ﬁling date of the patent application, by certain persons.
• • • • Clause 10 deﬁnes the term useful.

This is the third key concept that is used to determine whether an invention is patentable under the Bill.

An invention is useful if the invention has a speciﬁc, credible, and substantial utility.

14 Patents Bill Explanatory note Clause 11 provides that the Bill binds the Crown.
Act binds the Crown Part 2 Patentable inventions and patent rights Subpart 1—Patentable inventions General rules concerning what is patentable Clause 12 provides that a patent may be granted for patentable in­ ventions only.

Clause 13 sets out when an invention is considered to be a patentable invention.
An invention is a patentable invention if the invention, so far as claimed in a claim,— • is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and when compared with the prior art base— • • is useful; and is not excluded from being a patentable invention under clause 14 or 15. is novel; and involves an inventive step; and • • • This test is very similar to the test that applies under the Patents Act 1990 of the Commonwealth of Australia.
Exclusions from patentability Clauses 14 and 15 contain exclusions from what is patentable.

An in­ vention is not a patentable invention if the commercial exploitation of the invention, so far as claimed in a claim, is contrary to public order or morality.

The wording of this exclusion is intended to be consis­ tent with Article 27.2 of the World Trade Organisation Agreement on Trade Related Aspects of Intellectual Property Rights.
Accordingly, the term public order has the same meaning as the term ordre public as used in that Article.

In addition, the following are not patentable inventions: • • human beings and biological processes for their generation: inventions of methods of treatment of human beings by surgery or therapy: Explanatory note Patents Bill 15 • • inventions of methods of diagnosis practised on human beings: plant varieties.

Subpart 2—Patent rights Clause 16 sets out the nature of a patent.
A patent is personal prop­ erty.

Clause 17 sets out the exclusive rights given by a patent.

Basically, a patent gives the patentee the exclusive rights, during the term of the patent, to exploit the invention and to authorise another person to exploit the invention.

The term exploit includes to make, hire, sell, or otherwise dispose of the relevant product or, if the invention is a process, to use the process or to do any of those acts in respect of a product resulting from that use.
Clause 18 sets out the extent, effect, and form of a patent.

A patent has effect throughout New Zealand.

Clause 19 provides for the term of patents.

The term of every patent is 20 years from the patent date (which is generally the ﬁling date of the complete speciﬁcation).

However, a patent ceases to have effect if any renewal fees have not been paid within the prescribed period.

Clause 20 provides for the extension of the prescribed period for pay­ ing renewal fees.
Generally, the prescribed period can be extended to a date that is not more than 6 months after the expiry of the pre­ scribed period.

Subpart 3—Patent ownership Who may be granted patents Clause 21 sets out who may be granted a patent.

A patent for an invention may only be granted to a person who— • • • is the inventor; or derives title to the invention from the inventor; or is the personal representative of a deceased person mentioned above.
16 Patents Bill Explanatory note Power of patentee to deal with patent Clause 22 provides that a patentee may deal with the patent as the absolute owner of it and give good discharges for any consideration for that dealing.
Co­owners of patents Clause 23 provides that if a patent is granted to 2 or more persons, each of those persons is entitled to an equal undivided share in the patent and each of those persons is entitled to exercise the exclusive rights given by the patent for the person’s own beneﬁt without ac­ counting to the others.

Clause 24 protects the rights of buyers from co­owners of a patent.

Clause 25 gives the Commissioner the power to give directions to co­owners.
The directions must relate to— • • • the sale or lease of the patent or any interest in it; or the grant of licences; or the exercise of any right under clause 23 in relation to the patent.

The clause also empowers the Commissioner to direct a person to carry out directions in the name and on behalf of a patentee who has failed to do anything required to carry out a direction given under the clause.

Clause 26 contains miscellaneous provisions concerning directions.
Disputes as to inventions made by employees Clause 27 allows the Commissioner to determine disputes as to in­ ventions made by employees.

Clause 28 allows the Employment Relations Authority or the Com­ missioner to apportion the beneﬁt of an invention made by an em­ ployee and of a patent relating to that invention.

Clause 29 provides for the review by the Employment Relations Au­ thority of the Commissioner’s decisions under clauses 27 and 28.
Clauses 27 to 29 are based on section 65 of the Patents Act 1953.

However, the role of the High Court is now to be performed by the Employment Relations Authority.

Explanatory note Patents Bill 17 Part 3 Process for obtaining grant of patent and other matters Subpart 1—Patent applications Clause 30 provides that any person may apply for a patent either alone or jointly with another person.

However, under clause 21, a patent may only be granted to the inventor and certain other persons.
Clause 31 provides that every patent application must be made in accordance with this Act and the regulations.

Clause 32 allows the Commissioner to post­date patent applications and speciﬁcations.

Clause 33 provides that if a patent application has been made, the applicant may, before the acceptance of the complete speciﬁcation, make a fresh patent application for any part of the subject matter of the original application.
The clause allows the Commissioner to direct that the fresh patent application be given an earlier date that is not earlier than the ﬁling date of the original patent application.

Subpart 2—Speciﬁcations Clause 34 requires every patent application to be accompanied by— a complete speciﬁcation or a provisional speciﬁcation unless • the application is a convention application; and a complete speciﬁcation if the application is a convention ap­ plication.
• Clause 35 provides that if a patent application is accompanied by a provisional speciﬁcation, 1 or more complete speciﬁcations must be ﬁled within the period allowable by the clause.

The period allowable is— • the period within 12 months from the ﬁling date of the patent application; or an extended period not exceeding the prescribed period.

• A patent application must be treated as having been abandoned if a complete speciﬁcation is not ﬁled within the period allowable under the clause.
Clause 36 provides that every provisional speciﬁcation must describe the invention and include any other prescribed information.
18 Patents Bill Explanatory note • • Clause 37 provides that every complete speciﬁcation must— • particularly describe the invention and the method by which it is to be performed; and disclose the best method of performing the invention that is known to the applicant and for which there is an entitlement to claim protection; and end with a claim or claims deﬁning the scope of the invention claimed; and include any other prescribed information.
• The claim or claims must relate to one invention only and must be clear, succinct, and fairly based on the matter disclosed in the speci­ ﬁcation.

Clause 38 provides for the supply of drawings.

Clauses 39 to 42 contain provisions relating to speciﬁcations for mi­ cro­organisms.

These provisions are similar to equivalent provisions in the Patents Act 1990 of the Commonwealth of Australia.
In ef­ fect, a complete speciﬁcation relating to micro­organisms will com­ ply with clause 37(1)(a) and (b) if, and only if, the deposit require­ ments speciﬁed in clause 40 are satisﬁed in relation to the micro­or­ ganism.
The deposit requirements are satisﬁed in relation to a mi­ cro­organism if, and only if,— • the micro­organism was, on or before the ﬁling date of the spe­ ciﬁcation, deposited with a prescribed depositary institution in accordance with the rules relating to micro­organisms; and the applicant provides to the Commissioner a receipt for the deposit; and the speciﬁcation includes all relevant information on the char­ acteristics of the micro­organism that is known to the appli­ cant; and at all times since the end of the prescribed period, the speciﬁ­ cation includes— • • the name of a prescribed depositary institution; and the ﬁle, accession, or registration number of the deposit; and at all times since the ﬁling date of the speciﬁcation, samples of the micro­organism are obtainable from a prescribed deposit­ ary institution.
• • • • Explanatory note Patents Bill 19 Clause 41 provides that the deposit requirements must be treated as satisﬁed in certain circumstances.
Clause 42 provides that a patent may be revoked on the ground re­ ferred to in clause 106(1)(c) (which relates to complete speciﬁcations that do not comply with clause 37(1)) if the patent was granted for an invention that involves the use, modiﬁcation, or cultivation of certain micro­organisms and the micro­organism has ceased to be reasonably available to a person skilled in the relevant art in New Zealand.
Subpart 3—Treaty applications This subpart relates to applications made under the Patent Cooper­ ation Treaty that contain a request specifying New Zealand as a des­ ignated State under Article 4(1)(ii) of that Treaty.

The provisions in this subpart have been carried over from sections 26A to 26G of the Patents Act 1953.

Generally, the provisions are carried forward from that Act with no change of substance.
However,— • certain drafting changes have been made to reﬂect current drafting practice; and clause 44(2) now provides that an indication, in relation to a deposited micro­organism given under rule 13bis.4 of the Patent Cooperation Treaty regulations, must be taken to be included in the description contained in the Treaty application even if the indication is contained in another document.
• Subpart 4—Convention applications Clause 50 allows a convention applicant to make a convention appli­ cation in relation to a basic application within 12 months of the day on which the basic application is ﬁrst made in a convention country.

A basic application is an application for protection that is made in a convention country.

A convention country is an entity declared by regulations to be a convention country.
The convention applicant is the person who has made the basic application or is the assignee or personal representative of that person.

20 Patents Bill Explanatory note • • Clause 51 provides that convention applications must be made and dealt with in the same manner as any other patent application.
How­ ever, convention applications must— • include certain prescribed information relating to the relevant basic application; and be accompanied by a complete speciﬁcation; and be made and dealt with in accordance with any other require­ ments for convention applications that have been prescribed.
Clause 52 provides that if more than 1 basic application has been made for an invention, a previously ﬁled basic application must be disregarded and a subsequently ﬁled basic application must be sub­ stituted for the previously ﬁled basic application in certain circum­ stances.

This provision is based on section 7(2A) of the Patents Act 1953.
Clause 53 allows a single convention application to be made in cer­ tain circumstances where basic applications have been made in 1 or more convention countries for 2 or more cognate inventions.

Subpart 5—Priority dates Clause 54 provides that every claim of a complete speciﬁcation has effect from the date prescribed by this subpart as the priority date of that claim.
The priority date of a claim is important when considering the extent of the prior art base for the purposes of the novelty and inventive step tests in clause 13.

Clause 55 provides for the priority date of a claim if the complete speciﬁcation is ﬁled for a single application that was accompanied by a provisional speciﬁcation.

The priority date is the ﬁling date of the patent application if the claim is fairly based on the matter disclosed in that provisional speciﬁcation.
Clause 56 provides for the priority date of a claim if the complete speciﬁcation is ﬁled for 2 or more applications that were accompan­ ied by provisional speciﬁcations.

The priority date is the ﬁling date of the patent application that is accompanied by the speciﬁcation that ﬁrst disclosed the matter on which the claim is fairly based.

Clause 57 provides for the priority date for convention applications if the claim is fairly based on the matter disclosed in an application for protection.
The priority date is the date of the relevant application for protection.
Explanatory note Patents Bill 21 Clause 58 provides for the priority date for Treaty applications if— that Treaty application claims the priority of an earlier appli­ • cation under Article 8 of the Patent Cooperation Treaty; and that earlier application is— • • an application made in New Zealand not more than 12 months before the international ﬁling date of the Treaty application; or an application for protection for an invention, made in a convention country not more than 12 months before the international ﬁling date of the Treaty application, that is the ﬁrst application made in a convention country for the invention; or an application for protection for an invention made in a convention country after an application referred to above; and • • • the claim is fairly based on the matter disclosed in that earlier application or in a speciﬁcation ﬁled for that earlier applica­ tion.
• In this case, the priority date of the claim is,— • if the claim is fairly based on the matter disclosed in that earlier application, the ﬁling date of that application; or in any other case, the ﬁling date of the speciﬁcation for the earlier application that ﬁrst disclosed the matter on which the claim is fairly based.
Clause 59 provides that— • if a claim would, but for this provision, have 2 or more priority dates, the priority date of that claim is the earlier or earliest of those dates; and if the other provisions in the subpart do not apply to any case, the priority date is the ﬁling date of the complete speciﬁcation.
• Subpart 6—Examination Clause 60 provides that the Commissioner must examine a patent application and the complete speciﬁcation relating to the application and report on— • whether the speciﬁcation complies with the speciﬁcation re­ quirements in the Bill; and 22 • Patents Bill Explanatory note whether, to the best of the Commissioner’s knowledge, the invention, so far as claimed, is a patentable invention under clause 13; and any other prescribed matters.
• Examinations must be carried out in the prescribed manner.

Clause 61 allows the Commissioner to refuse to proceed with an ap­ plication or require the application or speciﬁcation to be amended if the Commissioner reports that— • the application or speciﬁcations do not comply with the re­ quirements of the Bill or of the regulations; or the invention is not a patentable invention; or there is any other lawful ground of objection to the grant of a patent in respect of the application.
• • Clause 62 requires an applicant, by the deadline set by the Commis­ sioner, to provide a substantive response to an adverse report.

After each response, the Commissioner may issue a further report.

Clause 63 provides that an application must be treated as having been abandoned if the Commissioner is satisﬁed that the applicant has failed to comply with clause 62.
Clause 64 provides that the Commissioner must examine an amended complete speciﬁcation in the same manner as the original speciﬁca­ tion if the speciﬁcation is amended following the issue of a report.

Clause 65 creates a new duty on applicants to inform the Commis­ sioner of any documentary searches by, or on behalf of, a foreign patent ofﬁce carried out for the purpose of assessing the patentability of an invention.
Clause 66 provides that an amendment of a complete speciﬁcation re­ lating to a patent is not allowable if the patentee has breached clause 65 in relation to the patent and the effect of the proposed amendment would be to remove a lawful ground of objection to the speciﬁcation arising from the existence of some or all of the information not pro­ vided under that clause.
Explanatory note Patents Bill 23 Subpart 7—Acceptance and publication Time for putting application in order for acceptance Clause 67 provides that a patent application is void unless, within the prescribed period, the applicant ensures that— • the application and the complete speciﬁcation comply with the requirements of the Bill and of the regulations; and the invention is a patentable invention; and there is no other lawful ground of objection to the grant of a patent.
• • Clause 68 allows the High Court (the court) to extend the period allowed under clause 67 if an appeal to the court is pending or the time within which an appeal may be brought has not expired.

Clause 69 requires applicants to ﬁle a notice stating the entitlement of the nominated person to the grant of the patent before the expiry of the period allowed under clause 67.

The nominated person is the person identiﬁed as the person to whom the patent is to be granted.
A patent application is void if the applicant does not comply with this requirement.

Acceptance Clause 70 provides that the Commissioner must accept the complete speciﬁcation relating to a patent application if the Commissioner is satisﬁed, on the balance of probabilities, that— • the application and the speciﬁcation comply with the require­ ments of the Bill and of the regulations; and the invention is a patentable invention; and there is no other lawful ground of objection to the grant of a patent.
• • The Commissioner must, after acceptance of a complete speciﬁca­ tion, publish the acceptance in the journal published under clause 254 (the journal).

Clause 71 allows applicants to request that the Commissioner post­ pone acceptance of the complete speciﬁcation until a date that is spe­ ciﬁed in the notice.
24 Patents Bill Explanatory note • Publication Clause 72 requires the Commissioner to publish a notice in the jour­ nal stating that a complete speciﬁcation is open to public inspection if— • the speciﬁcation has been ﬁled for a patent application other than a Treaty application; and a period of 18 months after the earliest priority date has ended; and • the speciﬁcation is not already open to public inspection.
The clause also provides for the Commissioner, if asked to do so by the applicant, to publish a notice in the journal stating that the complete speciﬁcation is open to public inspection.

Clause 73 provides publication requirements in the case of divisional applications under clause 33.

Clause 74 provides that if a notice is published under clause 72 or 73, the speciﬁcation concerned, and the other prescribed documents, are open to public inspection.
In addition, if acceptance of a complete speciﬁcation is published, certain documents (being documents that have not already become open to public inspection) become open to public inspection.

A document must be taken to have been made available to the public on the day on which it becomes open to public inspection unless it has been made available otherwise before that day.
Clause 75 provides that a Treaty application must be taken to have become open to public inspection, and to have been made available to the public in New Zealand, on the date that it is published under Article 21 of the Patent Cooperation Treaty.
Clause 76 provides that, except as provided by the Act, documents of the kind mentioned in clause 74 or 75 and examination reports must not be published by the Commissioner or be open to public inspec­ tion, and are generally not liable to be inspected or produced.
The clause also provides that a request for information under the Ofﬁcial Information Act 1982 may be refused by the Commissioner or the Ministry if it would require those documents, or information about those documents, to be made available before those documents are open to public inspection.
Clause 77 provides that after a complete speciﬁcation has become open to public inspection, the nominated person has the same rights Explanatory note Patents Bill 25 as the nominated person would have had if a patent had been granted when the speciﬁcation became open to public inspection.

However, this does not give the nominated person the right to commence pro­ ceedings in respect of any act unless a patent is ultimately granted.
Clause 78 provides a defence to proceedings under clause 77 in re­ spect of an act done before the complete speciﬁcation is accepted if the defendant proves that a patent could not validly have been granted on the basis of the claims as framed when the act was done.
Subpart 8—Amendment of speciﬁcations after acceptance Clause 79 provides that after the acceptance of a complete speciﬁ­ cation, an amendment to that speciﬁcation is not allowable, except for the purpose of correcting an obvious mistake, if the effect of the amendment is that— • the speciﬁcation as amended would claim or describe matter that was not in substance disclosed in the speciﬁcation before the amendment; or a claim of the speciﬁcation as amended would not fall wholly within the scope of a claim of the speciﬁcation before the amendment.
• Clause 80 provides for the publication of amendments in the journal.

Clause 81 allows the Commissioner, on request, to allow the com­ plete speciﬁcation to be amended subject to any conditions that the Commissioner thinks ﬁt.

Clause 82 requires every request for leave to amend a speciﬁcation under clause 81 to be published in the journal.

Clause 83 allows any person to oppose a proposed amendment.
Clause 84 provides that the provisions concerning amendments with the leave of the Commissioner do not apply in certain circumstances.

Clause 85 allows the court, in any relevant proceeding, to allow the patentee to amend the patentee’s complete speciﬁcation.
26 Patents Bill Explanatory note Subpart 9—Assertions by third parties and re­examinations Assertions by third parties within prescribed period Clause 86 allows any person to assert to the Commissioner that an invention is not novel or does not involve an inventive step.

These assertions must be made within the prescribed period after a complete speciﬁcation becomes open to public inspection.

Clause 87 provides that the Commissioner must consider the asser­ tions in the prescribed manner.
Re­examination after acceptance Clause 88 provides that the Commissioner may, and must if requested to do so by any person, re­examine a complete speciﬁcation after acceptance of the complete speciﬁcation.

Clause 89 provides that if a patent has been granted, the Commis­ sioner may, and must if requested to do so by any person, re­examine the complete speciﬁcation (unless a relevant proceeding is pending).
Clause 90 provides that on re­examining a complete speciﬁcation, the Commissioner must consider and report on whether, to the best of the Commissioner’s knowledge, the invention is novel and involves an inventive step.

Clause 91 allows the Commissioner to refuse to grant the patent if the Commissioner makes an adverse report on a re­examination under clause 88.

Clause 92 allows the Commissioner to revoke a patent if the Com­ missioner makes an adverse report on a re­examination under clause 89.
Subpart 10—Grant of patent General rules Clause 93 provides that the Commissioner must grant a patent to the nominated person or persons as soon as is reasonably practicable Explanatory note Patents Bill 27 • after the date that is 3 months after the date of the publication of the accepted complete speciﬁcation if either— • a request to re­examine the complete speciﬁcation has not been made and the Commissioner has decided not to re­examine the complete speciﬁcation; or the Commissioner decides, following all re­examinations of the complete speciﬁcation, that the patent should be granted.
Clause 94 provides that nothing done under the Bill guarantees the granting of a patent or that a patent is valid.

Clause 95 provides that every patent must be given a patent date that is the ﬁling date of the relevant complete speciﬁcation or, if the regulations provide for the determination of a different date as the patent date, the date determined under the regulations.

Clause 96 provides that a patent may be granted for one invention only.
Clause 97 provides for the amendment of a patent that was granted to a deceased person or to a person that has been liquidated or wound up.

Patents of addition Clause 98 applies if a patent application is made in respect of any improvement in, or modiﬁcation of, an invention and the applicant also applies, or has applied, for a patent for that invention or is the patentee of that invention.
The clause allows the Commissioner, on request, to grant the patent for the improvement or modiﬁcation as a patent of addition.

Clause 99 allows the Commissioner to revoke a patent for an im­ provement in, or modiﬁcation of, an invention and to grant a patent of addition in substitution.

Clause 100 contains certain restrictions on the granting of patents of addition.
Clause 101 provides that a patent of addition must be granted for a term equal to that of the patent for the main invention, or as much of the term of the patent for the main invention that is unexpired.

If the patent for the main invention is revoked, the court or the Commis­ sioner may order that the patent of addition continue in force as an independent patent for the remainder of the term of the patent for the main invention.
28 Patents Bill Explanatory note Clause 102 provides for renewal fees in relation to patents of add­ ition.

Clause 103 provides that the grant of a patent of addition must not be refused, and a patent of addition must not be revoked or invalidated, on the ground only that the invention does not involve an inventive step having regard to any publication or use of the main invention or any improvement in, or modiﬁcation of, the main invention.
Subpart 11—Revocation and surrender of patents Clause 104 allows the Commissioner or the court to revoke a patent on any of the grounds set out in clause 106.

Clause 105 contains provisions concerning applications for revoca­ tion that are made to the Commissioner, including a provision that allows the Commissioner to refuse an application that is frivolous or vexatious.
Clause 106 provides that a patent may be revoked on 1 or more of the following grounds: • • • that the invention is not a patentable invention (see clause 13): that the patentee is not entitled to the patent: that the complete speciﬁcation does not comply with clause 37(1) (which requires descriptions of the invention, method of performance, and claims): that the scope of a claim is not sufﬁciently and clearly deﬁned or that a claim is not fairly based on the matter disclosed in the complete speciﬁcation: that the patent was obtained by fraud, false suggestion, or a misrepresentation: that the invention was secretly used in New Zealand before the priority date: that the patent has been granted contrary to law.
• Clause 107 provides that if a patent application (application A) is made for an invention that has been claimed in a complete speciﬁ­ cation ﬁled in relation to another patent application and the patent granted in relation to the other application has been revoked because the patentee was not entitled to the patent, the Commissioner may • • • Explanatory note Patents Bill 29 direct that application A and any relevant speciﬁcation be treated as having been ﬁled on an earlier date.
Clause 108 provides that the court may also revoke a patent if the patentee, without reasonable cause, refuses a request of a government department to exploit the invention for the services of the Crown.

Clause 109 provides for the surrender of a patent by the patentee.
Subpart 12—Restoration of lapsed patents and restoration of patent applications Restoration of lapsed patents Clause 110 allows the Commissioner to restore a patent that has ceased to have effect by reason of a failure to pay a renewal fee if the Commissioner is satisﬁed that the failure to pay the renewal fee was unintentional.

Clause 111 requires a request to restore a patent to describe the cir­ cumstances that led to the failure to pay the renewal fee.
Clause 112 sets out who may make a request for the restoration of a patent.

Clause 113 requires a request for the restoration of a patent to be made within the prescribed period.

However, the Commissioner may extend the period within which a request may be made if the Com­ missioner is satisﬁed that there was no undue delay in making the request.
Clause 114 requires the Commissioner to give the applicant a reason­ able opportunity to be heard if the Commissioner is not satisﬁed that a prima facie case has been made out for an order under clause 110.

Clause 115 requires the Commissioner to publish a request to restore a patent in the journal if the Commissioner is satisﬁed that a prima facie case has been made out for an order under clause 110.

Clause 116 allows any person to give notice to the Commissioner of opposition to a restoration order.
Clause 117 provides that a restoration order must be made if— • • • all unpaid renewal fees are paid; and all other prescribed additional penalties (if any) are paid; and either— • no notice of opposition is given; or 30 Patents Bill Explanatory note • the decision of the Commissioner is in favour of the applicant.
Restoration of patent applications Clause 118 allows an applicant to make a request to the Commis­ sioner for an order to restore a void or an abandoned patent appli­ cation and to extend the period for complying with the requirements imposed on the applicant by or under the Bill.

Clause 119 provides that a request under clause 118 must be made within the prescribed period.
However, the Commissioner may ex­ tend the period within which a request may be made if the Commis­ sioner is satisﬁed that there was no undue delay in making the request.

Clause 120 allows any person to give notice to the Commissioner of opposition to a restoration order.

Clause 121 relates to the determination of a request to restore a patent application.
Subpart 13—Miscellaneous provisions Substitution of applicants Clause 122 applies if, before a patent has been granted, a person would, if the patent were to be then granted, be entitled under an assignment or agreement, or by operation of law, to the patent or an interest in it.

The clause provides that the Commissioner may direct that the patent application proceed in the name of the person or in the names of the person and the applicant.
Clause 123 provides that if an applicant dies before a patent is granted on the patent application, his or her personal representative may pro­ ceed with the application.

Clause 124 allows the Commissioner to give directions in relation to disputes between interested parties.

Provisions for secrecy of certain inventions Clause 125 allows the Commissioner to give directions in relation to inventions that may be relevant for defence purposes or that are likely to be valuable for defence purposes.
Explanatory note Patents Bill 31 Clause 126 requires the Commissioner to give notice of the patent application and of the directions given under clause 125 to the Min­ ister of Defence.

Clause 127 requires the Minister of Defence, on receipt of a notice under clause 126, to consider whether publication of an invention would be prejudicial to the defence of New Zealand.
If it appears to the Minister of Defence that the publication of the invention would not, or would no longer, be prejudicial to the defence of New Zealand, the Minister of Defence must give notice to the Commissioner to that effect.

Clause 128 requires the Commissioner to revoke the directions given under clause 125 on receipt of a notice from the Minister of Defence.

Clause 129 provides for the acceptance of a complete speciﬁcation while directions given under clause 125 are in force.
If it appears to the Minister of Defence that the applicant for the patent has suffered hardship by reason of the directions being in force, the Minister of Finance may pay to the applicant reasonable compensation.

Clause 130 provides that no renewal fees are payable for any period during which directions are in force.
Clause 131 provides that a failure to comply with the directions is an offence punishable on conviction to imprisonment for a term not exceeding 2 years, to a ﬁne not exceeding $20,000, or to both.

Clause 132 provides for the liability of an ofﬁcer of a body corporate that commits an offence against clause 131.
Part 4 Infringement, other patent proceedings, and matters affecting patent ownership Subpart 1—Infringement proceedings What constitutes infringements Clauses 133 and 134 determine what constitutes infringement as fol­ lows: • a person infringes a patent if (other than under a licence or with the consent or agreement of the patentee) the person does anything in New Zealand that the patentee has the exclusive right to do under section 17 (which relates to the exploitation of the invention): 32 • Patents Bill Explanatory note a person also infringes a patent if the person supplies another with the means for putting an invention into effect if doing so would infringe a patent and the person knows (or ought reasonably to have known) that the supplied means are suitable and intended for that purpose.
There is an exception for the supply of staple commercial products.

Clause 135 sets out that a new product is presumed in infringement proceedings to have been obtained by the patented process for ob­ taining that product.
What does not constitute infringement Clauses 136, 137, and 138 provide the following exceptions: • it is not an infringement to do an act for experimental purposes relating to the subject matter of an invention (which includes determining how the invention works, its scope, or the valid­ ity of the claims, or seeking an improvement of the invention) if that act does not unreasonably conﬂict with normal exploit­ ation of the invention: it is not an infringement to use an invention in the stated ways on foreign vessels, aircraft, or vehicles that come into New Zealand accidentally or only temporarily: it is not an infringement to make, use, exercise, or sell an in­ vention solely for uses reasonably related to the development and submission of information required under New Zealand law, or other law, that regulates the manufacture, construction, use, or sale of any product.
• • Counterclaim for revocation of patent Clause 139 provides that a defendant may counterclaim for revoca­ tion of a patent in infringement proceedings.

Bringing infringement proceedings in court Clause 140 provides that infringement proceedings may be brought in court by the patentee or by an exclusive licensee for any infringe­ ment that occurs during the term of the licence.

Clause 141 provides that infringement proceedings may not be brought until the patent is granted.
However, there can be in­ Explanatory note Patents Bill 33 fringements before the patent is granted under clause 77 (and so proceedings brought after the patent’s grant can also relate to those infringements).

Clause 142 makes speciﬁc provision for infringement proceedings brought by exclusive licensees.

The patentee (if not joined as the plaintiff) must be added as a defendant, but is not liable for costs un­ less the patentee actually defends the proceedings.
The court must, in awarding relief, take into account the loss suffered or proﬁt earned from the infringement to the extent the infringement is of the exclu­ sive licensee’s rights.

Relief for infringement Clause 143 sets out that the court may grant an injunction and, at the option of the plaintiff, damages or an account of proﬁts for an infringement of a patent.

This is not an exhaustive list of the relief available.
Clause 144 prevents the court from awarding damages or an account of proﬁts if the defendant proves that they did not know, and ought not reasonably to have known, that the patent existed.

There is a pre­ sumption that the defendant ought to have known the patent existed if it is marked as patented in New Zealand and with the New Zealand patent number (but none if it is just marked as patented) and the per­ son knew, or ought reasonably to have known, of the product.
Clause 145 requires the court to refuse damages or an account of proﬁts for an infringement before an amendment to an accepted com­ plete speciﬁcation unless the speciﬁcation, as accepted, was framed in good faith and with reasonable skill and knowledge or the amend­ ment was only to correct an obvious mistake.

Clause 146 entitles the court to refuse damages or an account of proﬁts for an infringement that occurs after renewal fees are not paid.
Clause 147 states expressly that clauses 144 to 146 do not affect the court’s power to grant injunctions in these circumstances.

Clause 148 enables the court to grant relief for a partially valid patent, but in the case of damages, an account of proﬁt, or costs, the plaintiff must ﬁrst prove that the invalid claim was framed in good faith and with reasonable skill and knowledge.
Clause 149 enables a successful party to infringement or revocation proceedings to obtain reasonable solicitor­client costs if the party re­ 34 Patents Bill Explanatory note lied on the validity of the claim of a speciﬁcation and the court has certiﬁed that the claim’s validity was contested in earlier proceed­ ings.

Clause 150 requires infringement proceedings to be tried before a Judge alone.
Subpart 2—Declarations of non­infringement Clause 151 enables a person to apply for a declaration of non­in­ fringement if the patentee or exclusive licensee has not given that acknowledgement despite the person applying for it, giving full rele­ vant particulars, and undertaking to pay a reasonable sum for the pa­ tentee’s or exclusive licensee’s expenses.

Clause 152 provides that those proceedings may be brought at any time after the date of the publication of the accepted complete speci­ ﬁcation.
Clause 153 provides that costs are at the court’s discretion.

Clause 154 clariﬁes that the validity of a patent is not at issue, and is not affected by, a declaration of non­infringement.
Subpart 3—Other provisions for proceedings relating to patents Notice and registration requirements for proceedings on interests in patents Clauses 155 and 156 set out notice and registration requirements that apply to infringement proceedings and any other civil proceedings on interests in a patent (including ownership, mortgagee, licensee, and other interests) as follows: • 1 month’s notice must be given to the defendant before bring­ ing proceedings relating to an unregistered interest: within 1 month of receiving that notice the defendant can re­ quire the plaintiff to register the plaintiff’s interest by notice: the plaintiff cannot then bring proceedings unless they register the interest within 6 months and a further 1 month has expired after registration: • • Explanatory note Patents Bill 35 • in any other case also, a person must not commence proceed­ ings on a registered interest until at least 1 month has expired after registration.
However, the court may authorise a person to bring civil proceedings without complying with these requirements.

Clause 157 clariﬁes how these provisions relate to the Limitation Act 1950.

Standing for Attorney­General Clause 158 gives the Attorney­General standing to appear in various patent proceedings if he or she considers that the public interest is involved.

Clause 159 accordingly requires parties questioning the validity of a patent to give notice of that intention to the Solicitor­General.
Subpart 4—Patent dealings, patent licenses, and transmission of interests in patents Registration of assignments, licenses, and other interests in patents Clause 160 requires a person acquiring a patent, a share in a patent, or an interest in a patent (whether by assignment, transmission, mort­ gage, licence, or by any other means) to apply for registration of the title or interest.
However, the application can instead be made by the person who disposes of the patent or the share in the patent or who confers the interest in the patent.

Clause 161 requires the Commissioner, on proof of the acquirer’s title or interest satisfactory to the Commissioner, to register that title or interest.
Vesting of patents and patent applications without probate or letters of administration Clause 162 enables the Commissioner to vest patents or substitute persons as patent applicants or nominated persons for deceased per­ sons without probate or letters of administration in certain cases.
36 Patents Bill Explanatory note Termination of sales, leases, and licences of patented products and processes if patent no longer in force Clause 163 provides for the termination of sales, leases, and licences of patented products and processes, on 3 months’ notice, after the patent ceases to be in force.
Subpart 5—Compulsory licences Clause 164 allows an interested person to apply to the court for the grant of a licence under a patent on the grounds that a market for the patented invention is not being supplied, or is not being supplied on reasonable terms, in New Zealand.

Clause 165 allows the court to order the grant of a licence in ac­ cordance with an application on any terms that the court thinks ﬁt.

A licence granted under this clause is not exclusive and, generally, must not be assigned.
Clause 166 provides that if a licence is granted to a person, that per­ son must pay certain remuneration to the patentee.

Clause 167 prevents a licence from being granted in certain circum­ stances (for example, in the case of a patent relating to an integrated circuit).

Clause 168 provides that the powers of the court on an application under clause 164 or 166 must be exercised with a view to ensuring that the inventor or other person beneﬁcially entitled to a patent re­ ceives reasonable remuneration.
Clause 169 provides that an order for the grant of a licence has effect as if it were a deed.

Subpart 6—Crown use of patented inventions Clause 170 allows any government department patented invention for the services of the Crown.

Clause 171 allows regulations to be made that may declare a particu­ lar use of an invention to be a Crown use.
Clause 172 protects the buyers of products sold in the exercise of powers conferred by clause 170. to exploit any Explanatory note Patents Bill 37 Clause 173 concerns the rights of third parties in respect of a Crown use of an invention.

Clause 174 provides for the referral of disputes concerning a Crown use of an invention to the court.

Clause 175 allows the court to refer matters relating to a Crown use of an invention to an ofﬁcial referee or arbitrator.
Clause 176 contains special provisions as to a Crown use of an in­ vention during an emergency.

Clause 177 provides that the right to use a patented invention under clause 170 is not exclusive and, generally, must not be assigned.
Clause 178 provides that if any use of a patented invention is made under clause 170, the government department must, as soon as prac­ ticable after the use of the patented invention has begun, notify and provide the patentee with information concerning the extent of the use as the patentee may from time to time require.

Clause 179 provides that the Crown must, if an act is done under clause 170, pay certain remuneration to the patentee.
Subpart 7—Mention of inventor in patent, speciﬁcation, and patents register Clause 180 allows a person to make a request or claim to be men­ tioned as inventor in a patent.

Clause 181 concerns how and when requests and claims to be men­ tioned as inventor may be made.

Clause 182 requires the Commissioner to give notice of claims made under clause 181.
Clause 183 provides that a person who alleges that another person should not have been mentioned as inventor under clauses 180 to 182 may apply to the Commissioner for a certiﬁcate to that effect.

Part 5 Patent attorney profession This Part deals with the patent attorney profession.

Only individuals may register as patent attorneys, but patent attorney services may be provided by patent attorneys either alone or through a patent attorney company or patent attorney partnership.
In addition to establishing criteria for registering patent attorneys, this Part sets up a code of 38 Patents Bill Explanatory note conduct and a complaints and disciplinary regime for patent attorneys and patent attorney companies.
Subpart 1—Restrictions on providing patent attorney services Clauses 184 to 186 set out who is a patent attorney, patent attorney company, and patent attorney partnership as follows: • • a patent attorney is a person who is registered under this Act: a patent attorney company is (in essence) a company in which all the shareholders and directors are registered patent attor­ neys.
However, relatives of registered patent attorneys may hold non­voting shares and personal representatives of de­ ceased patent attorneys may also hold shares for a period under clause 191: a patent attorney partnership is a partnership in which all the partners are registered patent attorneys.
• Clause 187 makes it an offence for— • persons who are not patent attorneys (with a current registra­ tion certiﬁcate) or patent attorney companies to provide patent attorney services; and persons to provide patent attorney services in partnership with anyone unless all partners are registered patent attorneys (ie, a patent attorney partnership).
• A patent attorney company or partnership may have directors, share­ holders, or partners who do not have current registration certiﬁcates (so the whole company or the rest of the partnership does not lose the right to provide patent attorney services if 1 person fails to renew his or her registration certiﬁcate).

However, those individuals without a current registration certiﬁcate are not of course entitled to provide patent attorney services for the company or partnership.
This clause also deﬁnes the patent attorney services that are limited to patent attorneys, patent attorney companies, and patent attorney partnerships.

Clause 188 makes it an offence for a person to make false represen­ tations that— • that person is a patent attorney or patent attorney company; or Explanatory note Patents Bill 39 • a partnership of which the person is a partner is a patent attor­ ney partnership.
Clause 189 provides for the circumstances in which a director or a person concerned in the management of a company is guilty if a com­ pany is convicted of an offence against clause 187 or 188.
Clauses 190 to 192 create exceptions to clauses 187 and 188 for— lawyers and incorporated law ﬁrms, who are permitted to carry • out some limited patent attorney services: personal representatives to carry on a deceased patent attor­ ney’s business (with a patent attorney or patent attorney com­ pany managing the business) and hold his or her shares for 3 years: companies carrying on business as patent attorneys before 1955.
• • Subpart 2—Registration and certiﬁcates Clauses 193 to 195 deal with registration of a person as a patent attor­ ney under the Act.

To qualify for registration, a person must satisfy the Commissioner that— • he or she has the necessary qualiﬁcations.

These will be listed by the Board under clause 194.
It is envisaged that this list will initially comprise all the patent attorney examinations cur­ rently provided by the Institute and Commissioner, but that over time the Board will begin providing, or accredit others to provide, examinations or courses and revise the list accord­ ingly.
The list may include alternatives, in particular so that some common overseas qualiﬁcations may also be listed and examinations provided by the Institute and Commissioner can continue to be recognised for a transitional period.

The Board may also certify a person who has qualiﬁcations not on this list as having equivalent or substantially equivalent qualiﬁcations (which will enable overseas candidates to be considered on a case­by­case basis): he or she meets the prescribed criteria for experience.
Again, the Board may certify a person who does not meet the experi­ ence criteria in the regulations as having equivalent or substan­ tially equivalent experience to the prescribed criteria: • 40 Patents Bill Explanatory note • he or she is a ﬁt and proper person to practise as a patent at­ torney.
Clause 195 lists matters that the Commissioner may take into account in making this judgment (for example, con­ victions and suspensions or cancellations of registration as a patent attorney or lawyer in New Zealand or overseas).

The Act also acknowledges that Australian candidates may separ­ ately qualify for registration under the Trans­Tasman Mutual Recog­ nition Act 1997.
Clauses 196 and 197 deal with registration certiﬁcates (which must be held by a patent attorney who provides patent attorney services).

These are issued on registration and then subsequently issued to a person who is registered as a patent attorney and applies and pays the prescribed renewal fee.
If a patent attorney does not pay his or her renewal fee, the Commissioner may ﬁrst charge him or her a penalty, then suspend registration, and ﬁnally (if the fee and penalty are still not paid) remove his or her registration.

Clause 198 is an index of the reasons for which the Commissioner may suspend or remove a person’s registration.
Suspensions or re­ movals may occur for non­payment of the renewal fee, for voluntary suspensions or removals, to implement disciplinary orders, and if a patent attorney dies.

Suspensions of registration do not affect the status of a patent attorney company or patent attorney partnership, but the individual concerned is not a patent attorney for the purposes of the Act for the period of the suspension (clause 199).
Subpart 3—Standards of conduct and discipline Code of conduct Clauses 201 to 207 contain provisions relating to a code of con­ duct for patent attorneys and patent attorney companies, the pur­ poses of the code, and the mechanisms by which it is to be put in place and maintained.
The code of conduct will be developed by the New Zealand Institute of Patent Attorneys (Incorporated) (the Insti­ tute) and approved by the Patent Attorneys’ Standards Board of New Zealand (the Board) established under clause 237 before this Part of the Act comes into force.

Explanatory note Patents Bill 41 The code must be available on the Internet and in hard copy and must be presented to the House of Representatives.
The provisions of the code will be regulations for the purposes of the Regulations (Dis­ allowance) Act 1989 (and so subject to the same parliamentary over­ sight as regulations).
However, they are to be prepared by the Insti­ tute and approved by the Board (rather than being regulations made by the Government) because they will govern only patent attorneys and patent attorney companies, and it is appropriate in this context that a professional body with expertise as to the acceptable standards of conduct develop the code with governmental oversight.
Disciplining of patent attorneys and patent attorney companies Clause 208 applies the disciplinary regime to patent attorneys and patent attorney companies (and former patent attorneys and patent attorney companies).

(Because partnerships are not legal persons, they are not separately subject to the code and disciplinary regime, but the individual patent attorney partners and employees will be.)

Clause 209 enables a person to make written complaints under the disciplinary regime.
The Board may also refer matters on its own motion to the disciplinary regime.

Clauses 210 to 215 contain key powers and provisions relating to the disciplinary regime.

Regulations will set out most of the detail of the disciplinary regime.
However,— • clause 210 empowers the Board to direct parties to explore the use of alternative dispute resolution for complaints (because in many cases there may be a dispute to be resolved, rather than an issue about the professional conduct of the patent attorney or patent attorney company): the Board’s powers of investigation (and an offence of obstruc­ tion) are contained in clauses 211 and 212: the Board’s powers to hear evidence and issue summons are contained in clauses 213 and 214.
• • In practice these powers will be delegated by the Board or regulations to the complaints assessment committee and disciplinary committee.

42 Patents Bill Explanatory note The grounds for disciplining patent attorneys and patent attorney companies are set out in clause 216.
In essence, these are— • conviction of an offence punishable by at least 6 months im­ prisonment that reﬂects adversely on a person’s ﬁtness to prac­ tise as a patent attorney (this is not relevant for patent attor­ ney companies because they are not separately registered, but would apply to the individual directors, shareholders, and em­ ployees): breach of the code of conduct: false or misleading representations by an individual for the purpose of obtaining registration or a registration certiﬁcate.
• • The disciplinary penalties, contained in clause 217, are— • orders to remove an individual’s registration (which may in­ clude a time bar on applying for re­registration and an order to sell shares in a patent attorney company): orders to suspend an individual’s registration (for up to 12 months): censures: ﬁnes of up to $5,000: orders to refund money or property to another person: orders to do, or pay for another person to do, things to remedy a complaint or other matter.
• • • • • The Board may also, under clause 218, order a person to pay the costs of the Board, and the costs of the Commissioner providing admin­ istrative support to the Board, in connection with the investigation, inquiry, or hearing.

Subpart 4—Appeals under this Part Clauses 222 to 228 provide for a right of appeal to the District Court against decisions of the Board or Commissioner under this Part and also set out the procedure on appeal and the powers of the District Court on appeal.
Clause 229 provides for a right of appeal to the High Court against any determination of the law arising in the appeal to the District Court.

Explanatory note Patents Bill 43 Subpart 5—Register of patent attorneys This subpart requires the Commissioner to keep a register of patent attorneys.

It will be possible to search the register to ﬁnd out infor­ mation about a person’s registration status, address details, and any disciplinary proceedings or suspension orders relating to that person.
Patent attorneys are required to notify the Commissioner of changes to some of the information held in the register, and the Commissioner may make changes to the register to reﬂect changes in the register in­ formation or to correct errors and omissions.

Subpart 6—Patent Attorneys’ Standards Board Clauses 237 to 239 establish the Patent Attorneys’ Standards Board of New Zealand (the Board).
It has, in particular, functions relating to— • the qualiﬁcations required for registration as a patent attorney; and the code of conduct and disciplinary regime for patent attor­ neys and patent attorney companies.

• The Board comprises the Commissioner, an Assistant Commissioner, no fewer than 2 persons nominated by the Institute, and (at the Min­ ister’s option) 1 person appointed by the Minister.

The provisions of Schedule 1 apply to the Board.


Part 6 Administrative and miscellaneous provisions Subpart 1—Patents register and other information on patents and patent applications Patents register Clause 241 requires the Commissioner to keep a patents register.
Clause 242 sets out the purpose of the patents register, which is to enable the public to know what patents are in force and their key dates, know who is the patentee and has other interests in the patent and the addresses for service of those persons, ﬁnd out about the 44 Patents Bill Explanatory note scope of a claim, and ﬁnd out other matters affecting the validity and ownership of the patent and patent licences.

The purpose is also to facilitate the Commissioner’s functions under the Bill.
Clause 243 enables the patents register to be an electronic register or kept in any other manner the Commissioner thinks ﬁt.

Clause 244 sets out what must be contained in the patents register.

Searches of patents register and obtaining patent information Persons may obtain patent information as follows: • clause 245 entitles a person to search the register in accordance with this Act or the regulations: clause 246 requires the Commissioner to give a person pre­ scribed information if requested.
• Clause 247 enables the Commissioner to provide replacement patents if patents are lost or destroyed.
Changes to patents register and other ofﬁcial documents The Commissioner may make changes to the patents register and other ofﬁcial documents under the following provisions: • clause 248 provides that the Commissioner may change the patents register in accordance with the Bill or the regulations: clause 249 provides for the Commissioner to correct mistakes by the Commissioner (or employees and others providing ser­ vices for the Commissioner or IPONZ) in the patents register, in a patent, or in other documents issued under the Bill: clause 250 provides for the Commissioner to correct other per­ sons’ mistakes in the patents register, in a patent, in a patent application (but not in a complete speciﬁcation), in a document ﬁled in connection with a patent application, or in proceedings before the Commissioner in connection with a patent or patent application.
• • In addition, clause 251 enables the court to rectify the patents register.

Explanatory note Patents Bill 45 Evidence Clause 252 makes the patents register prima facie evidence of its entries.

Certiﬁed copies or extracts are admissible in evidence to the same extent as the original.

Clause 253 makes the Commissioner’s certiﬁcate on various matters prima facie evidence of those matters.

These matters include entries in the patents register or register of patent attorneys.
Journal and other publications Clause 254 requires the Commissioner to periodically publish a jour­ nal on patents, patent applications, and other matters.

It may be pub­ lished electronically.

Clause 255 enables the Commissioner to publish indexes, speciﬁ­ cations, and other works relating to inventions, patents, and patent applications.

The Commissioner may keep classiﬁcations, by sub­ ject matter, of speciﬁcations and printed publications to determine the patentability of inventions.
These indexes and other documents may be kept and published electronically.

Subpart 2—General provisions on proceedings of Commissioner Giving evidence to Commissioner Clause 256 requires evidence to be given by afﬁdavit or statutory declaration unless the Commissioner directs otherwise.

Clause 257 enables the Commissioner to receive evidence on oath.

Clause 258 enables the Commissioner to summons persons to attend a hearing before the Commissioner.
There are various requirements for the summons, and an offence for failing to comply with the sum­ mons, in clauses 283 to 285.

Power to award costs Clause 259 enables the Commissioner to award costs in proceedings before him or her.

Clause 260 enables the Commissioner (or the court, on appeal) to require security for costs if the person does not reside and does not carry on business in New Zealand.
46 Patents Bill Explanatory note Appeals of Commissioner’s decisions Clauses 261 to 264 entitle a person to appeal the Commissioner’s decisions under the Bill to the High Court, and then to the Court of Appeal in certain cases.

Costs of Commissioner Clause 265 provides that the Commissioner’s costs are at the discre­ tion of the relevant court in any proceedings before that court.
Subpart 3—Establishment and operation of administrative bodies for patents Commissioner and Assistant Commissioners Clause 266 provides for the appointment of the Commissioner and Assistant Commissioners by the chief executive of the Ministry as employees of that Ministry.

Clause 267 sets out the functions of the Commissioner.

Clause 268 provides that an Assistant Commissioner has all the functions, duties, and powers of the Commissioner (other than the power to delegate).
Clause 269 enables the Commissioner to delegate the Commis­ sioner’s functions, duties, and powers.

Clause 270 requires the Commissioner to make an annual report to the Minister.

The Minister must present that report to the House of Representatives.

Clause 271 removes liability of the Commissioner and others for good faith performance of the Commissioner’s functions.
Intellectual Property Ofﬁce of New Zealand Clause 272 enables the Minister to appoint and name a place as an ofﬁce for public communications on matters arising under this Bill, the Trade Marks Act 2002, the Designs Act 1953, and other intellec­ tual property statutes.

On commencement, the place previously used as the Patents Ofﬁce is appointed and the ofﬁce is named the Intel­ lectual Property Ofﬁce of New Zealand (IPONZ).
Orders in Council may consequentially amend the name of the ofﬁce in this Bill or other enactments if it is changed.

Explanatory note Patents Bill 47 Clauses 273 and 274 enables the Commissioner to ﬁx IPONZ’s open­ ing hours and declare it closed.

Generally prior publication is re­ quired of any closure, but there are exceptions under clause 274.

Māori advisory committee Clause 275 requires the Commissioner to appoint a Māori advisory committee.
A person must not be appointed unless, in the opinion of the Commissioner, the person is qualiﬁed for appointment, having regard to their knowledge of mātauranga Māori (Māori traditional knowledge) and tikanga Māori (Māori protocol and culture).
Clause 276 provides that the committee’s function is to advise the Commissioner (on request) on whether an invention claimed in a patent application is derived from Māori traditional knowledge or from indigenous plants and animals and, if so, whether the commer­ cial exploitation of that invention is likely to be contrary to Māori values.

That advice must be considered by the Commissioner but is not binding (clause 277).
Clause 278 enables the committee to regulate its own procedures, subject to the Commissioner’s directions.

Subpart 4—Other miscellaneous provisions Power to extend time limits Clauses 279 to 281 provide for extensions to time limits in the Bill.
The key points are as follows: • the Commissioner may extend any time limit if something will not be done in time due to a delay by the Commissioner: the Commissioner may (on application or at his or her own discretion) extend a time limit for the ﬁling of a complete spe­ ciﬁcation or of a convention application (but may no longer extend the time for putting a patent application in order for ac­ ceptance): the Commissioner may (on application or at his or her own discretion) extend any time limit if something will not be done in time due to a delivery delay: the Commissioner must refuse an extension (other than a ex­ tension due to the Commissioner’s own delay) if insufﬁcient time was allowed for delivery, there was a failure to act with • • • 48 • Patents Bill Explanatory note due diligence and prudence, or there has been undue delay in applying for the extension or prosecuting the application: the Commissioner must publish extensions in the journal.
Serving notices Clause 282 provides for service of notices, including by fax or email.

Requirements for summons Clause 283 sets out the requirements for the contents and service of a summons given under the Bill.

Witnesses are entitled under clause 284 to be paid witnesses’ fees, allowances, and expenses.

Clause 285 sets out the offence of failing to comply with a summons.

The maximum penalty is a $2,000 ﬁne.


Fees and other money paid under Act Clauses 286 and 287 provide for fees and other money paid under the Bill.
The key points are as follows: • fees and penalties must be paid if required by the Bill or the regulations: the Commissioner may decline to do anything for which a fee or penalty is payable until it is paid: fees may be collected by the Commissioner for international applications on behalf of other approved agencies: fees and other money must generally be paid to the Commis­ sioner: fees and penalties paid for registration and registration certiﬁ­ cates must be applied to the costs of the administrative support provided by the Commissioner to the Board.
• • • • Miscellaneous Clause 288 provides that a patent does not authorise the patentee to use a representation protected under sections 12 to 15 of the Flags, Emblems, and Names Protection Act 1981.

Clause 289 saves the Royal prerogative for granting letters patent and the rights of the Crown and others deriving title from the Crown to sell or use articles forfeited under customs and excise laws.

Explanatory note Patents Bill 49 Clause 290 provides that this Bill does not apply to Tokelau.
Clause 291 provides that nothing in various provisions of the Bill affects the operation of the Personal Property Securities Act 1999.

Subpart 5—Regulations This subpart contains the regulation­making powers for the Bill.
Subpart 6—Repeals, amendments, validation, and saving and transitional provisions This subpart contains repeals, consequential amendments, a valid­ ation in clause 298 of all fees prescribed and money collected under the Patents Act 1953 in relation to registration of patent attorneys or prescribed examinations, and saving and transitional provisions.
The key points under the transitional provisions are as follows: • patents granted under the Patents Act 1953 are continued under this Bill, but with their existing key dates, term, and grounds for revocation: patent applications made under the Patents Act 1953 continue under that Act unless a complete speciﬁcation is provided on or after the commencement of Part 3 of this Bill.
In this case, the complete speciﬁcation must comply with this Bill and the application proceeds under this Bill: patent applications post­dated at the applicant’s request until after the commencement of Part 3 of this Bill proceed under this Bill: divisional applications made after the commencement of Part 3 of the Bill but dated earlier will be treated in the same way as the parent application (and so, if that was proceeding under the Patents Act 1953, the divisional application will proceed under that Act also): Treaty applications for which the applicant has fulﬁlled the obligations in article 22(1) or article 39(1)(a) of the Patent Co­ operation Treaty before the commencement of Part 3 of the Bill will continue under the Patents Act 1953.
In other cases, the Bill will apply to Treaty applications: • • • • 50 Patents Bill Explanatory note • • • • • • • • • other applications made before the commencement of Part 3 of the Bill will continue under the Patents Act 1953 (unless they relate to a patent application that is proceeding under this Bill): existing orders, directions, and other matters in effect on the commencement of Part 3 of the Bill are continued: the existing patents register and register of patents attorney are continued as the new registers: offences and infringements committed before the commence­ ment of Part 3 of the Bill continue to be investigated and con­ sidered under the Patents Act 1953: patent attorneys registered under the Patents Act 1953 are treated as patent attorneys registered under the Bill.
Those patent attorneys who have paid renewal fees for the year are treated as having current registration certiﬁcates under the Bill: applications for registration as a patent attorney made under the Patents Act 1953 continue under that Act: existing exceptions for personal representatives of deceased patent attorneys and for lawyers are continued until the rele­ vant matter is completed: the existing Commissioner and Assistant Commissioners are appointed as the new Commissioner and Assistant Commis­ sioners: the Commissioner is given a transitional power for 3 years to exempt from (on terms and conditions if he or she thinks ﬁt), or give extra time for compliance with, statutory requirements that apply to applications, notices, and requests made under the Patents Act 1953 that are now to be completed under the Bill.
This is because there is a risk that patent and other applications made under old requirements may not comply with, or need to be modiﬁed to comply with, the new requirements.

Explanatory note Patents Bill 51 Regulatory impact and business compliance cost statement—Review of Patents Act 1953 Stage 2 Statement of policy objective A patent provides the patent owner with an exclusive right to make, use, and sell an invention.
In return for this exclusive right, the patent owner gives to society a new invention, which becomes available for all to use when the patent expires.

The limited monopoly provided by the patent gives patent owners an opportunity to make a proﬁt from their inventions and gain a return from their investment in innovation.
The grant of this limited monopoly is justiﬁed on the grounds that the beneﬁts to society as a whole, in terms of encouraging innova­ tion and the disclosure of the invention, exceed the costs, such as increased prices and lessened competition.

However, there will be a net beneﬁt to society only if patents are granted for real innovations.
If patents are granted for things that are not innovations then soci­ ety is, in effect, granting a valuable property right without receiving something of comparable value in return.

More than 90% of New Zealand patents are granted to overseas owners.

If patent rights are granted that ought not to be granted, then much of the ﬁnancial and social beneﬁts of these patents may ﬂow overseas, increasing the cost to New Zealand without corresponding beneﬁts.
A key objective of the current review of the Patents Act 1953 is to, as far as possible, reduce the possibility that patents will be granted for things that are not innovations and, where such patents are granted, to make it easier and cheaper for the validity of such patents to be challenged.

Statement of problem and need for action The Patents Act 1953 is nearly 50 years old.

It was based on the United Kingdom Patents Act 1949, and reﬂects practices and atti­ tudes prevailing in the 1940s.
The Patents Act 1953 is now out of step with international developments in patent law and practice, and there are doubts about its ability to meet the needs of New Zealand businesses in the twenty­ﬁrst century.

Other aspects of the Act are now superﬂuous in the light of other legislative changes since the Act was passed.

52 Patents Bill Explanatory note To address the deﬁciencies of the Patents Act 1953, Cabinet, in August 2001, agreed to a 3­stage review of the Act.
The proposals discussed in this regulatory impact statement are part of Stage 2 of this Review.

Cabinet has previously agreed to proposals in Stage 1 (August 2001) and the ﬁrst part of Stage 2 (September 2001).

Contentious issues including Māori and other concerns regarding issues such as the patentability of biotechnological inventions, medical treatments, and computer software and business methods, will be dealt with in Stage 3 of the review.
The criteria for granting a patent contained in the Patents Act 1953 are less stringent than the criteria now applied in most other de­ veloped countries, including New Zealand’s major trading partners.

This means that patents granted in New Zealand provide a broader monopoly than would be provided for the same invention in other countries.

It also means that New Zealand is providing greater patent rights to overseas applicants than other countries would grant to New Zealand applicants.
There is no economic advantage to New Zealand in doing this, and, potentially, there is a net economic cost to New Zealand given that more than 90% of patent owners are from over­ seas.

The procedures contained in the Patents Act 1953 for challenging the validity of a granted patent are complex and expensive.

This, to­ gether with the inevitable uncertainty involved in taking legal action, may deter local businesses from challenging the validity of a patent, even where it is felt that a good case exists.
This may mean that in­ valid patents, that is, patents that have been granted for things that are not innovations, may remain in force, with consequential costs to the economy in terms of higher prices and reduced competition.

Statement of options for achieving desired objectives The options available for achieving the desired objectives are limited by New Zealand’s obligations under the Paris Convention and the TRIPS agreement, which set out internationally agreed criteria for determining patentability.
It is also desirable that New Zealand’s patent regime be aligned with those of other countries so as to sim­ plify the requirements for those applicants who ﬁle applications in other countries.

Explanatory note Patents Bill 53 The proposals that are intended to achieve the desired objectives are— • introduction of examination for inventive step, or “obvious­ ness”.
Currently there is no examination for inventive step, although lack of inventive step is a ground for opposition to grant, and revocation of, a patent.

Inventive step is an inter­ nationally recognised criterion for determining whether the beneﬁts to society from granting a patent outweigh the costs of granting a patent: abolition of the existing pre­grant opposition procedures and replacement with the re­examination procedure mentioned be­ low: introduction of a re­examination procedure.
This will allow any person to submit evidence to the Commissioner of Patents that the invention claimed in a patent application or granted patent is not novel or is lacking an inventive step: requiring applicants to disclose to the Commissioner of Patents all information that they are, or become, aware of that may have a bearing on the patentability of their inventions.
This will increase the amount of information available to the Commissioner before deciding whether to grant a patent and will assist in reducing the likelihood that patents will be granted when such a grant is not justiﬁed: introduction of a deﬁnition of infringement so that a patent owner’s rights are clearly deﬁned.
• • • • Other proposals are intended to bring the procedures within the Act in line with current international practice and repeal provisions in the Act that are redundant in the light of changes to other legislation since the Patents Act 1953 was passed.

These have no compliance cost implications.


The proposals that deal with the criteria for patentability, and pro­ cedures, are broadly in line with procedures that are in force, or have been proposed in other developed countries, including Australia, and are consistent with New Zealand’s international obligations.
Statement of net beneﬁt The proposals set out above will provide beneﬁts to society as a whole that are considered to outweigh the costs discussed later in 54 Patents Bill Explanatory note this statement.

These beneﬁts are not easily quantiﬁable.

They in­ clude the following: • the introduction of examination for inventive step will reduce the risk that invalid patents will be granted, although this risk cannot be eliminated entirely.

Granted patents will be stronger, and less likely to be challenged.
This is likely to result in less litigation, with consequent savings in cost to patent owners and third parties: examination for inventive step will also mean that those patents that are granted will be narrower in scope than those granted under the Patents Act 1953.
That is, the limited monopoly conferred by the patent will be narrower, which may result in lower prices and increased competition: the relatively broad patent rights conferred due to the current absence of examination for inventive step may inhibit innova­ tion by restricting the ideas that are available for others to use.
Examination for inventive step will make ideas available for innovators to use and result in a stimulus to innovation: more than 90% of New Zealand patents are granted to over­ seas owners.

The relatively broad patent rights conferred by the Patents Act 1953 means that much of the ﬁnancial beneﬁt of these patents will ﬂow overseas.

This effectively increases the costs of these patents to New Zealand without any corres­ ponding beneﬁt.
Narrowing the scope of patents granted in New Zealand may reduce the cost of the patent system to New Zealand while retaining the beneﬁts: although the changes that are proposed above will reduce the risk that patents are granted when they ought not to be, the resources of the Intellectual Property Ofﬁce of New Zealand (IPONZ) are limited, so it is impossible to completely elimi­ nate the risk.
If invalid patents are granted, then it is essential that there is a means for easily challenging the validity of those patents.
The proposed re­examination procedure will make it much easier and cheaper than at present to challenge the val­ idity of a patent: the abolition of the existing pre­grant opposition procedure will remove a potential source of costs and delay in obtaining a patent: • • • • • Explanatory note Patents Bill 55 • the introduction of a deﬁnition of infringement will reduce any uncertainty there may be regarding a patent owner’s rights.
Regulatory costs Administrative costs The proposed changes to the Patents Act 1953 will result in some increased costs to IPONZ.

As IPONZ recovers all its costs from ap­ plicants, there will be no increased costs to the Government.

Any increased costs to applicants is discussed in the business cost com­ pliance statement below.

Economic costs The changes proposed to the Patents Act 1953 will increase the costs involved in obtaining a patent, although the increase will not be sub­ stantial.
It may be argued that this may inhibit innovation, particu­ larly by smaller enterprises.

Smaller businesses currently may apply for assistance with the costs of obtaining intellectual property protec­ tion though the Enterprise Awards Scheme established by Industry New Zealand.

Business cost compliance statement Implementation of the proposals listed above is likely to result in some increased costs to patent applicants.
The increased costs can­ not be easily quantiﬁed and will be different for different applicants depending on such factors as the complexity of the application and whether the applicant has applied for a patent in other countries.

The costs are ongoing rather than one­off and add to the cost of each patent application ﬁled.
The increased costs to applicants will arise from 2 sources: the fees charged by IPONZ, and increases in legal costs to applicants, as fol­ lows: • IPONZ operates on a cost recovery basis, that is, all costs are recovered from fees charged to patent applicants.

The require­ ment to examine for inventive step will mean that IPONZ will need to employ more examiners to examine patent applica­ tions.
This will increase IPONZ’s costs: 56 • • Patents Bill Explanatory note the introduction of examination for inventive step is likely to mean a greater amount of correspondence between patent examiners and applicants.
As nearly all patent applicants use the services of a patent attorney, this will mean increased legal costs for applicants: the requirement for applicants to provide the Commissioner with all information that they are, or become, aware of that might have a bearing on the patentability of their inventions will also impose extra costs on applicants.

In particular, the applicant may be required to supply copies of this information if it is not readily available to IPONZ.
About 4 800 patent applications are ﬁled in New Zealand each year.

About 85% of applicants are from overseas, and will have ﬁled patent applications in other countries.

Most other countries impose require­ ments similar to those proposed above.

Approximately half of those applicants who are resident in New Zealand will also ﬁle applications in other countries.
For these applicants, any increase in costs is likely to be conﬁned to any increase in fees charged by IPONZ, as they are in effect already having to comply with the proposed requirements.

It is those applicants who only apply for patents in New Zealand who will be most affected by any cost increase associated with the propos­ als.

Approximately 5% (240 per year) of New Zealand applicants ﬁle patent applications only in New Zealand.
As noted above, the costs of the proposals are difﬁcult to quantify, as the costs will vary from applicant to applicant.

The cost to New Zealand applicants of obtaining a New Zealand patent is typically between $4,000 and $7,000, depending on the complexity of the ap­ plication.

Of this cost, between $300 and $400 (plus GST for New Zealand applicants) is made up of fees charged by IPONZ.

The re­ mainder is made up of fees charged by patent attorneys.
Approxi­ mately one­quarter to one­third of the attorney’s charges will be in­ curred in dealing with objections made by patent examiners.

The remainder arises from the preparation of the patent speciﬁcation and any initial patentability search.

As noted above, the review of the Patents Act 1953 is being con­ ducted in 3 stages, of which the proposals discussed in this statement are part of Stage 2.
It will not be possible to estimate the net effect on compliance costs of changes to the Patents Act 1953 until the re­ view has been completed.

Any increase in costs to applicants as a Explanatory note Patents Bill 57 result of the proposals detailed in this statement are estimated to be in the range of $100 to $1,000 per application for most New Zealand applicants.
Consultation Most of the proposals in the cabinet paper to which this regulatory impact statement is attached were discussed in a discussion document published by the Ministry of Commerce in 1992.

Public submissions received at that time indicated general agreement with the proposals.

Some new proposals, dealing with matters that have arisen since the publication of the 1992 discussion paper, have been the subject of consultation with the New Zealand Institute of Patent Attorneys.
Regulatory impact statement—Review of Patents Act 1953 Stage 3: Part 1 Statement of nature and magnitude of problem and need for government action In New Zealand, patents are granted under the Patents Act 1953 (the Act).

The grant of a patent provides patent owners with the exclusive right to make, sell, and use their invention for a maximum period of 20 years from the date a patent application is ﬁled.
This provides an opportunity for innovators to make a return from their investment in research and development, and acts as an incentive to innovation.

In return for the grant of a patent, patent owners must provide a full and complete description of their invention, which is made available to the public.

Patents are granted after an examination process by the Intellectual Property Ofﬁce of New Zealand (IPONZ).
The Act’s deﬁnition of a patentable invention as “any manner of new manufacture” does not clearly deﬁne the requirements for a patentable invention.

This can lead to uncertainty as to just what the requirements are, and just what subject matter is patentable, particularly in relation to new technologies.
In addition, no other comparable country now has the same deﬁnition of invention, so that court decisions relating to the deﬁnition of invention from these countries are no longer useful as a guide to IPONZ or the New Zealand courts.

IPONZ, when deciding whether or not to grant a patent, must give ap­ plicants the beneﬁt of the doubt and can only refuse to grant a patent 58 Patents Bill Explanatory note if it is “practically certain” that a court would ﬁnd the patent invalid.
As a result, patents that might be likely (but not almost certain) to be held invalid will be granted.

The uncertainties and expense of challenging the validity of a patent mean that few patents are ever challenged.

If patents are granted that the courts would ﬁnd to be invalid, the rights enjoyed by patent owners are greater than they are entitled to.
These greater rights have the potential to restrict compe­ tition and raise prices to consumers, and may restrict the activities of local businesses that lack the resources to challenge the validity of the patent.

The courts have interpreted the current deﬁnition of invention to ex­ clude methods of medical treatment of humans from patent protec­ tion.
This leads to uncertainty for both IPONZ and applicants over the patentability of these methods, as the courts may, in future, de­ cide that they are patentable.

Statement of public policy objective(s) To provide an efﬁcient and effective patent system that promotes in­ novation and economic growth while providing an appropriate bal­ ance between the interests of innovators and the interests of society as a whole and that complies with New Zealand’s international obli­ gations.
Statement of feasible options that may constitute viable means for achieving desired objectives Status quo A patentable invention is deﬁned as “any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies and any method or process of testing ap­ plicable to the improvement or control of manufacture; and includes an alleged invention”.
When deciding whether or not to grant a patent, IPONZ is required to give applicants the beneﬁt of the doubt.

Methods of medical treatment of humans are excluded from patent protection, but this exclusion can be overturned by a judicial deci­ sion.

Explanatory note Patents Bill 59 The status quo is not appropriate, as it does not achieve the policy objectives.
Preferred regulatory option Deﬁne patentable invention as “manner of manufacture”, with additional criteria (preferred option) Under this option, a patentable invention would be deﬁned as an in­ vention that was a “manner of manufacture” and that additionally met the criteria of novelty, non­obviousness, and usefulness.
Introduce a balance of probabilities test Amend the Act to require that a patent can only be granted when IPONZ is satisﬁed, on the balance of probabilities, that the require­ ments for patentability are met (the balance of probabilities test is the test used in most civil litigation).

Speciﬁcally exclude methods of medical treatment of humans from patent protection The Act would be amended to explicitly exclude methods of medical treatment of humans from patent protection.
Such an exclusion is permitted by New Zealand’s international obligations, and most other countries exclude these methods from patent protection.

Alternative option No deﬁnition of invention Under this option, there would be no formal deﬁnition of a patentable invention, and anything that met the criteria of novelty, non­obvious­ ness, and industrial applicability would be granted a patent.
The lack of a deﬁnition of a patentable invention is likely to lead to uncertainty as to what is patentable subject matter.

Allow methods of medical treatment of humans to be patented Allowing such methods to be patented could mean that medical prac­ titioners might be constrained in their choice of treatment for fear of 60 Patents Bill Explanatory note infringing a patent.

There might also be some additional costs im­ posed on the health system with no additional beneﬁts.
Statement of net beneﬁt of proposal Innovators and business The proposed changes to the Patents Act 1953 will give greater certainty as to what is patentable subject matter.

Because the def­ inition of invention will be the same as that in Australia, inventions patentable in Australia will also be patentable in New Zealand and vice­versa.

This will assist businesses in making decisions on whether or not they can obtain a patent, and hence on whether or not to invest in the development of a new product.
If patents are only granted when, on the balance of probabilities, the criteria for patentability are met, there will be a much greater pre­ sumption that a granted patent is valid.

This beneﬁts both patent owners and third parties, as there would be greater certainty that a granted patent would be held to be valid by the courts.

It would also reduce the likelihood that third parties will ﬁnd that their access to existing technologies will be blocked by otherwise invalid patents.
The imposition of a stricter test for granting a patent may impose some extra costs on businesses applying for a New Zealand patent, due to more drawn­out arguments between patent applicants and patent examiners.

It is likely, though, that the additional costs will reduce over time as both applicants and patent examiners become accustomed to the new requirements.
Government The proposed changes to the deﬁnition of invention are unlikely to impose additional costs or beneﬁts upon the Government, as the new deﬁnition is not greatly different from the current one.

The stricter test for granting a patent may lead to more drawn­out arguments be­ tween applicants and patent examiners.

This could increase the time taken to examine patent applications and may impose some extra costs on IPONZ.
It is not possible to quantify these costs, although they are likely to be small.

As IPONZ operates on a cost recovery basis, any extra costs will be met from fees charged to patent appli­ cants.

Currently, the fees charged by IPONZ for the grant of a patent are in the range $300 to $400.

Explanatory note Patents Bill 61 The economy The stricter tests for granting a patent will reduce the number of in­ valid patents granted, and reduce the costs these impose on the econ­ omy.
Consultation undertaken A discussion paper entitled Review of the Patents Act 1953: Bound­ aries to Patentability in March 2002.
Government departments and ministries consulted were: the Depart­ ment of the Prime Minister and Cabinet, Te Puni Kokiri, Ministry of Agriculture and Forestry, Ministry of Consumer Affairs, Depart­ ment for Courts, the New Zealand Customs Service, Ministry of Edu­ cation, Ministry of Foreign Affairs and Trade, Ministry of Justice, Ministry of Research, Science and Technology, and the Treasury.

No signiﬁcant concerns were raised with the proposals.
Regulatory impact statement—Review of Patents Act 1953 Stage 3: Part 2 Statement of nature and magnitude of problem and need for government action In New Zealand, patents are granted under the Patents Act 1953 (the Act).

The grant of a patent provides patent owners with the exclusive right to make, sell, and use their invention for a maximum period of 20 years from the date a patent application is ﬁled.
This provides an opportunity for innovators to make a return from their investment in research and development, and acts as an incentive to innovation.

In return for the grant of a patent, patent owners must provide a full and complete description of their invention, which is made available to the public.

Patents are granted after an examination process by the Intellectual Property Ofﬁce of New Zealand (IPONZ).
At present, IPONZ will grant patents that include claims for plants and non­human animals if they meet the requirements for patent pro­ tection.

The patenting of plants and animals raises ethical and social issues that are not encountered with non­living inventions.

Many groups in society, including many Māori, are opposed to the granting of patents over plants and animals.

Plant varieties can be protected under both the Plant Variety Rights Act 1987 and under the Patents Act 1953.
(In this context, a plant 62 Patents Bill Explanatory note means a particular species of plant, such as an apple.

A plant variety is a particular variant of that plant species, such as the apple variety known as “Fuji”).

Providing both patent protection and plant variety protection for the same variety is not consistent with New Zealand’s obligations under the 1978 Convention of the International Union for the Protection of New Plant Varieties (UPOV 78), to which New Zealand is a party.
Under the Patents Act 1953, an invention does not have to be useful to be granted a patent.

The issue of usefulness has become an issue in relation to inventions involving genetic material, where some ap­ plicants have obtained patents for large numbers of genes without demonstrating any particular use for them.

This means that those researchers who want to ﬁnd a use for the genes will have to pay a royalty.

This increases the cost of research and may discourage in­ novation in this area.
The magnitude of the problem is not known, because although lack of usefulness is a ground for revocation of a granted patent, the costs and uncertainties involved in revoking a patent mean that patents are seldom challenged on this ground.
Statement of public policy objective(s) To provide an efﬁcient and effective patent system that promotes in­ novation and economic growth, while providing an appropriate bal­ ance between the interests of patent owners and the interests of so­ ciety as a whole, complies with New Zealand’s international obliga­ tions, and is consistent with the Crown’s obligations under the Treaty of Waitangi.
Statement of feasible options that may constitute viable means for achieving desired objectives Status quo Plants and non­human animals may be patented if they meet the requirements of the Patents Act 1953.

The grant of a patent may be refused if the Commissioner of Patents considers that use of the patented plant or animal would be “contrary to morality”, but there is no requirement for a patent to be refused in such circumstances.
Plant varieties may be granted a patent if they meet the requirements of the Patents Act 1953.

Explanatory note Patents Bill 63 Patent applicants do not have to demonstrate that their inventions are useful before being granted a patent, although lack of usefulness is a ground for revoking a granted patent.

It is not appropriate to maintain the status quo, as it does not meet the policy objectives.
Regulatory options Preferred option Plants and animals would be patentable, but inventions, the commer­ cial use of which is contrary to morality or public order, or prejudicial to plant life or animal health, or may cause serious prejudice to the environment will be excluded from patent protection (the morality exclusion).
The wording of this exclusion is based on Article 27.2 of the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), to which New Zealand is a party by virtue of its membership of the WTO.

Plant varieties will be speciﬁcally excluded from patent protection but will continue to be protectable under the Plant Variety Rights Act 1987.
The Patents Act 1953 will be amended to speciﬁcally require patent applicants to demonstrate that their invention has a credible, speciﬁc, and substantial use before a patent will be granted.

It would still be possible to revoke a patent on the ground of lack of usefulness.

Alternative option: total exclusion of plants and animals from patent protection Plants and animals would be speciﬁcally excluded from patent pro­ tection.
This option, while meeting the concerns of those opposed to the grant of such patents, is likely to have an adverse effect on the local biotechnology industry.

Such exclusion could reduce the incen­ tive for local investment in biotechnology and make it more difﬁcult for local biotechnology ﬁrms to attract foreign investment.

It is also possible that overseas biotechnology ﬁrms would be unwilling to al­ low their new plants and animals to be exploited in New Zealand.
64 Patents Bill Explanatory note Statement of net beneﬁt of proposal Innovators and businesses The introduction of the morality exclusion may add to the costs of obtaining a patent where a patent is refused on these grounds.

In the event of such a refusal, patent applicants may incur increased costs if they choose to dispute the refusal of the patent application, as fur­ ther submissions would be required to convince the Commissioner to grant the patent.
Since a patent will also be able to be revoked on these grounds, there may also be an increase in costs to patent owners in making submissions to the Commissioner or the courts in defend­ ing their patent.

Objections, though, are likely to be relatively un­ common, affecting only those patents or patent applications in areas where there is likely to be strong opposition to the commercial use of the invention from a signiﬁcant section of society.
Making usefulness a criterion for granting a patent may impose addi­ tional costs on some patent applicants, particularly where their inven­ tions involve genes or gene sequences.

These costs may not be great though, as nearly all applicants in this ﬁeld also apply for patents in jurisdictions (such as the United States and the European Union) that already impose this requirement.
This proposal may reduce the num­ ber of excessively broad patents granted, particularly those involving genes or gene sequences.

Although such patents may be held to be in­ valid by a court, there are signiﬁcant costs and uncertainties involved in challenging their validity.

The proposal will reduce the number of possibly invalid patents granted and reduce the costs imposed on re­ searchers and businesses by these patents.
Excluding plant varieties from patent protection will provide greater certainty among both plant breeders and users of new varieties as to what protection breeders may obtain for their new varieties.
The rights granted under a patent and a plant variety right are different; some activities may infringe a patent, but not a plant variety right (for example, use of a protected variety for the purpose of breeding another variety would not infringe a plant variety right, but use of a patented variety for the same purpose would infringe a patent).
Government The proposed changes to the scope of patentable subject matter may impose some extra costs on IPONZ, as IPONZ will have to develop Explanatory note Patents Bill 65 guidelines for determining when it is appropriate to make an objec­ tion.

Any increased correspondence between patent examiners and applicants may also impose additional costs on IPONZ.
As such, ob­ jections are likely to involve only a small proportion of patent ap­ plications and the cost increase, although not quantiﬁable, is likely to be small.

Any cost increase would be recovered through the fees charged by IPONZ (currently $300 to $400 to grant a patent).

Ex­ cluding plant varieties from patent protection will ensure that New Zealand meets its international obligations.
Society This proposal goes some way towards meeting the concerns of those who feel that patenting inventions involving life forms or genetic material is morally wrong, and gives them an opportunity to object to the grant of such patents.

Consultation undertaken A discussion paper entitled Review of the Patents Act 1953: Bound­ aries to Patentability was released in March 2002.
Government departments and ministries consulted were: the Depart­ ment of the Prime Minister and Cabinet, Te Puni Kokiri, Ministry of Agriculture and Forestry, Ministry of Consumer Affairs, Ministry of Foreign Affairs and Trade, Ministry of Justice, Ministry of Research, Science and Technology, and the Treasury.
The Ministry of Health (MOH) expressed concern that requiring in­ ventions to be useful before a patent is granted would not, in itself go far enough to reduce the number of overly broad gene patents being granted.

The MOH suggested that the usefulness criterion should be strengthened to require that the “use be credible, substantial and spe­ ciﬁc”, in line with practice in the US and EU, and this has been done.
Regulatory impact statement—Review of Patents Act 1953 Stage 3: Part 3 Statement of nature and magnitude of problem and need for government action The Intellectual Property Ofﬁce of New Zealand (IPONZ) does not have any formal system of consultation with Māori about patent ap­ plications it receives.
The Royal Commission on Genetic Modiﬁca­ 66 Patents Bill Explanatory note tion considered that an established system of consultation with Māori is necessary, The Royal Commission on Genetic Modiﬁcation rec­ ommended (Recommendation 10.3)— that a Māori Consultative Committee be established by the In­ tellectual Property Ofﬁce of New Zealand to develop proced­ ures for assessing applications, and to facilitate consultation with the Māori community where appropriate.
Cabinet has agreed, in its response to the Royal Commission recom­ mendation, that a Māori Consultative Committee be established, but that its scope and role be conﬁrmed following public consultation as part of Stage 3 of the review of the Patents Act 1953.

While it is difﬁcult to estimate the number of patent applications that might be referred to the Committee, it is unlikely to be more than 40 to 50 applications per year.

In the year ended 30 June 2002 about 5 700 patent applications were ﬁled.
Statement of public policy objective(s) To provide an efﬁcient and effective patent system that promotes in­ novation and economic growth, while providing an appropriate bal­ ance between the interests of patent owners and the interests of so­ ciety as a whole, complies with New Zealand’s international obliga­ tions, and is consistent with the Crown’s obligations under the Treaty of Waitangi.
Statement of feasible options that may constitute viable means for achieving desired objectives Status quo There is no formal system of consultation between IPONZ and Māori about patent applications it receives.

Preferred regulatory option The Patents Act 1953 will be amended to require the Commissioner of Patents to establish a Māori Consultative Committee.
The func­ Explanatory note Patents Bill 67 tions of the Māori Consultative Committee will be speciﬁed in the Act as the following: • providing advice to the Commissioner of Patents as to whether an invention claimed in a patent application is derived from or appears to be derived from traditional knowledge, or indigen­ ous plants and animals: providing advice to the Commissioner of Patents as to whether the commercial exploitation of such an invention is or is likely to be contrary to Māori values.
• The advice provided by the Committee will assist the Commissioner of Patents to determine whether or not an invention meets the require­ ments for the grant of a patent, particularly in relation to inventions derived from Māori traditional knowledge, or that involve indigen­ ous plants and animals.
Statement of net beneﬁt of proposal Innovators and businesses It will be less likely that patents would be inappropriately granted for inventions involving traditional knowledge and indigenous plants and animals, and reduce the likelihood that Māori will have to face the costs of challenging such patents.

Patent owners would be more certain that if a patent is granted that it will be valid.
Government The establishment of the Committee will contribute towards meeting the Crown’s obligations under the Treaty of Waitangi.

The Māori Consultative Committee will impose some extra costs on IPONZ.

The costs will depend on the number of applications the Committee considers.

While this is difﬁcult to estimate, the num­ ber of patent applications that might be referred to the Committee, it is unlikely to be more than 40 to 50 applications per year.
IPONZ es­ timates that, on this basis, the cost of the Committee will be approxi­ mately $250,000 per annum.

As IPONZ operates on a cost recovery basis, any extra costs will be met from fees charged to applicants.

The fees charged by IPONZ for the grant of a patent are in the range $300 to $400.
68 Patents Bill Explanatory note Society This proposal goes some way towards meeting the concerns of Māori and others regarding the granting of patents over inventions involv­ ing traditional knowledge and indigenous plants and animals.

Consultation undertaken A discussion paper entitled Review of the Patents Act 1953: Bound­ aries to Patentability was released in March 2002.
Government departments and ministries consulted about the proposal were: the Department of the Prime Minister and Cabinet, Te Puni Kokiri, Ministry of Agriculture and Forestry, Ministry of Consumer Affairs, Ministry of Foreign Affairs and Trade, Ministry of Justice, Ministry of Research, Science and Technology, and the Treasury.

No signiﬁcant concerns were identiﬁed.


Regulatory impact and business compliance cost statement—research or experimental use exception Statement of nature and magnitude of problem and need for government action The Patents Act 1953 does not contain a speciﬁc research or experi­ mental use exception.

The New Zealand courts have ruled that re­ search on a patented invention of an experimental nature would not infringe a patent, while research carried out with a commercial ad­ vantage in mind would.
The case law, however, offers little guidance as to just where the distinction lies between experimental and com­ mercial research.

There is little guidance for researchers to enable them to determine whether research or experimental work that they might wish to conduct on a patented invention would be held to in­ fringe a patent.

The status of research work involving a patented invention in New Zealand is therefore uncertain.
There have been few, if any, cases in New Zealand where research or experimental work involving a patented invention has been the sub­ ject of infringement litigation, but this does not necessarily mean that there is no problem.

In recent years this has become a particular con­ cern in the biotechnology ﬁeld, although the problem is not conﬁned to this area.

Explanatory note Patents Bill 69 A review of the Patents Act 1953 has recently been completed.
The issue of an experimental use exception was not covered in the Patents Act Review, as, at the time, it had not been identiﬁed as a signiﬁ­ cant problem.

The issue only came to prominence in 2003 when an Australian ﬁrm, Genetic Technologies Limited, sought to enforce 2 New Zealand patents on non­coding DNA analysis and mapping.

It appeared that almost anyone undertaking genetic research or testing would be infringing these patents.
The potential for being held liable for patent infringement may make researchers reluctant to consider research in areas that may be the subject of patent rights.

There is evidence to suggest that this has hap­ pened, although details of the number and nature of such instances is not available.
If uncertainty over the status of research or experimental work in­ volving a patented invention is inﬂuencing researchers’ decisions about their research work, this may act as a disincentive to research, and, as a result, innovation in New Zealand could be inhibited.

The Australian Law Reform Commission and the Australian Advi­ sory Council on Intellectual Property have considered whether Aus­ tralia should introduce a research exemption.
Both organisations have recommended that the Australian Patents Act 1990 be amended to include an explicit experimental use exception.

Statement of public policy objective(s) The objective is to provide that research or experimental work on a patented invention does not infringe a patent, in a manner that is con­ sistent with New Zealand’s international obligations, so as to reduce barriers to innovation in New Zealand.
Statement of feasible options (regulatory and non­regulatory) that may constitute viable means for achieving desired objective(s) Status quo The Patents Act 1953 does not contain an experimental use excep­ tion.

A review of the Patents Act 1953 has recently been completed, and a new Patents Bill to replace the Act has been drafted.

The re­ view did not deal with the issue of an experimental use exception.
The question of whether or not use of patented inventions in research 70 Patents Bill Explanatory note or experimental work constitutes patent infringement is determined by the courts on a case by case basis.

While future court decisions may clarify the issue, there is no guarantee that this will happen.

It is also possible that future decisions may have the effect of restricting the use in experiments of patented inventions, which is not desirable.
Retaining the status quo is not considered adequate to achieve the public policy objectives.

Regulatory option(s): amend draft patents Bill The only feasible regulatory option is to incorporate a speciﬁc ex­ perimental use exception into New Zealand’s patent legislation.

Any such exception must be consistent with Article 30 of the WTO Agree­ ment on Trade Related Aspects of Intellectual Property Rights (the TRIPS Agreement).
Four options were considered— Option 1 Provide that the deﬁnition of “exploitation” does not include experi­ mental use.

Although the simplest solution, it still leaves consider­ able uncertainty over just what constitutes experimental use.

There is also a risk that the courts could adopt a deﬁnition of experimen­ tal use so narrow that most research or experimental work could fall outside it.

Option 2 Include an exception from infringement would be made for fair ex­ perimentation.
The exception would include a non­exhaustive list of uses considered to be experimental uses together with guidelines on what constituted fair experimentation.

This option provides greater clarity to researchers than the status quo, while providing the courts with ﬂexibility.

This ﬂexibility, though, may lead to uncertainty, and the possibility that fair experimentation might be interpreted in a manner that restricts, rather than facilitates, the experimental use of patented inventions.
Another problem is that the concept of fair experimentation may not adequately capture the requirements of Art­ icle 30 of the TRIPS Agreement.

Explanatory note Patents Bill 71 Option 3 Include an exception for experimentation “on the subject matter of the invention” with a non­exhaustive list of uses considered to be experimental uses.

The exception would be available only if ex­ perimentation is the sole or dominant purpose of an activity.
Like option 2 this option combines greater clarity with ﬂexibility.

There may be difﬁculties, though, in distinguishing between experimenta­ tion “with” and experimentation “on” an invention.

In any particular case, there may be difﬁculties in determining what the dominant pur­ pose of an act is.
Option 4: preferred option Include an experimental use exception to be based on the ﬁnal pro­ posal of the ACIP: The rights of a patentee are not infringed by acts done for experimen­ tal purposes relating to the subject matter of the invention that do not unreasonably conﬂict with the normal exploitation of the patent.
Acts done for experimental purposes relating to the subject matter of the invention include— • • • • It is intended that the words “seeking an improvement to the inven­ tion” will include determining new properties of, or new uses of, an invention.

This option provides a reasonable degree of clarity and reduced un­ certainty compared with the status quo, and is consistent with Art­ icle 30 of the TRIPS Agreement.
It is similar to the experimental use exceptions available in some other countries, in particular, the EU, which will provide the New Zealand courts with some guidance in interpreting the exception.

determining how the invention works: determining the scope of the invention: determining the validity of the claims: seeking an improvement to the invention.
72 Patents Bill Explanatory note Statement of net beneﬁt of proposal, including total regulatory costs (administrative, compliance and economic costs) and beneﬁts (including non­quantiﬁable beneﬁts) of proposal, and other feasible options Government The adoption of the preferred option imposes no costs on govern­ ment.
The main beneﬁt to government is likely to lie in reduced risk that research activities undertaken by government entities such as Crown research institutes or universities will attract liability for patent infringement.

It may reduce barriers to innovation and in par­ ticular is consistent with the TRIPS Agreement and practices of other countries, including Australia.

Industry Businesses conducting research and development work will have greater freedom to conduct research in areas covered by patents.
They will have greater certainty about whether or not their activities will constitute patent infringement.

There may be less need to seek legal advice on this issue.

Adoption of an experimental use exception may mean that some ex­ perimental uses of inventions that might currently be considered in­ fringements would, in future, no longer be considered infringements.

This has the potential to reduce the income of patent owners, and possibly reduce incentives for innovation.
There is, however, little evidence that patent owners currently derive any signiﬁcant income from experimental use of their inventions, so the exception is unlikely to have any negative effect on innovation.

The provision of a speciﬁc experimental use exception is unlikely to have any signiﬁcant nega­ tive effect on levels of investment in research and development in New Zealand.

The effect is far more likely to be positive, although it is probably not possible to quantify the beneﬁt.
Society Adoption of an experimental use exception has the potential to bene­ ﬁt society by reducing barriers to innovative activity.

The main bene­ ﬁt is likely to be through spill­over beneﬁts from increased economic activity, although it is not possible to quantify this.

Explanatory note Patents Bill 73 Statement of consultation undertaken Stakeholder consultation An options paper seeking public submissions on the question of an experimental use exception was released in February 2006.
Ten submissions were received, of which all but one expressed support for the adoption by New Zealand of an experimental use exception.

Where concerns were expressed, they largely dealt with the potential erosion of the value of patent rights of an experimental use exception.

The preferred option includes the proviso that, to qualify for the exception, experimental use must not unreasonably conﬂict with the normal exploitation of the patent.
Government departments and agencies consultation The following ministries and agencies have been consulted in the preparation of this statement: Health, Research, Science and Tech­ nology, Treasury, Te Puni Kokiri, Foreign Affairs and Trade, Envir­ onment, Agriculture and Forestry, and the Department of the Prime Minister and Cabinet.
Regulatory impact statement—patent attorneys Nature and magnitude of problem and need for government action There are some 350 registered patent attorneys in New Zealand, in­ cluding around 240 Australians who are registered as a result of the Trans­Tasman Mutual Recognition Arrangements.

Concerns have arisen, from time to time, about the lack of a mechan­ ism for the public to make complaints about the standards of service provided by patent attorneys.
A number of respondents to the Min­ istry of Economic Development’s discussion paper entitled Review of the Regulatory Regime for the Patent Attorney Profession in New Zealand (published in October 2002) expressed dissatisfaction with the current disciplinary process.

The only statutory rules regarding the conduct of registered patent attorneys in New Zealand are set down in a disciplinary process pro­ vided under section 102(1) of the Patents Act 1953.
Only the Com­ missioner of Patents (the Commissioner) or the New Zealand In­ stitute of Patent Attorneys Inc (the NZIPA) may apply to the High 74 Patents Bill Explanatory note Court for an order to remove a person’s name from the register of patent attorneys.

A person may be removed where he or she has been convicted of a crime involving dishonesty, or has been guilty of misconduct, or has been guilty of grave impropriety or infamous conduct.

The process is, however, unsatisfactory for a range of reasons.
The only disciplinary measure is cancellation of registration by the High Court.

A lesser penalty (such as a reprimand or suspension of a patent attorney’s registration) is not available even though this might be more appropriate to the circumstances of the complaint.

An ag­ grieved person is unable to pursue a complaint against the patent at­ torney.

There is no obligation upon the Commissioner nor the NZIPA to take action in respect of any complaint.
The circumstances in which a complaint may be made are unclear.

Pursuing disciplinary action in the High Court is a lengthy and expensive process.

Because of these reasons, the statutory rules may be operating as a barrier to an aggrieved person pursuing a complaint and may account for why only one application has been to the High Court to cancel a person’s registration as a patent attorney in recent years.
It is, how­ ever, difﬁcult to determine the extent of any problem concerning the standards of service provided by patent attorneys in the absence of a complaints mechanism that is accessible to the public.

Membership of the NZIPA is voluntary and members are required to adhere to a code of conduct.

The Council of the NZIPA has es­ tablished a disciplinary process.
In such cases where the NZIPA de­ termines that disciplinary action is required, but where the circum­ stances do not warrant pursuing cancellation of the member’s regis­ tration, the NZIPA may only censure or expel a member.

Neither action, however, will have any effect on that person’s ability to con­ tinue practising as a patent attorney.

The NZIPA is generally unable to take action in respect of a complaint against those registered patent attorneys who are not members.
Further, membership of the NZIPA does not appear to be promoted to the public as a means by which the public can be assured of an acceptable standard of service from NZIPA members.

In Australia, patent attorneys must adhere to a code of conduct and disciplinary process under the Australian Patents Act 1990.
Explanatory note Patents Bill 75 Statement of public policy objective(s) The objective is to provide a code of conduct that speciﬁes the stan­ dards of service to be provided by a patent attorney in New Zealand and to provide an independent disciplinary process for any breach of standards of service.
The disciplinary process should— • • • • • be accessible to the public; and adhere to the rules of natural justice; and deal with matters quickly and efﬁciently; and allow for appeals to the courts; and apply a penalty that is commensurate with the extent of any breach of acceptable standards of service.
Statement of feasible options Status quo All patent attorneys are subject to the disciplinary procedure pro­ vided by section 102 of the Patents Act 1953, and only those patent attorneys who are members of the NZIPA are subject to the NZIPA’s voluntary code of conduct and disciplinary procedures.

These regimes do not satisfactorily meet the stated objectives for a disciplinary system for the profession.

Regulatory measures under Patents Act 1953 A.


Require all persons registered and practising as patent attorneys to be members of the NZIPA and, therefore, subject to the NZIPA’s code of conduct and disciplinary process.

Currently the NZIPA, while representing the majority of New Zealanders who are registered patent attorneys, does not represent the majority of all persons registered as patent attorneys.
Requiring all registered patent attorneys to belong to the NZIPA would raise issues under the New Zealand Bill of Rights Act 1990 about freedom of persons to associate.

In addition, in such a small profession, there is a potential risk that the NZIPA may face a conﬂict of interest in managing a disciplinary process.

B.

Require all registered patent attorneys to adhere to the existing Australian code of conduct and provide a disciplinary process for breaches of acceptable standards of service.
76 Patents Bill Explanatory note This option would require all registered patent attorneys to adopt the Australian code of conduct provided under the Australian Patents Act 1990, with their disciplinary process, including the establishment of a disciplinary tribunal, being replicated in New Zealand.
In Aus­ tralia the Professional Standards Board of Patent and Trade Mark Attorneys, comprising a representative from IP Australia and at least 3 ministerial appointments, is responsible for the development and maintenance of a code of conduct that all patent and trade mark at­ torneys must adhere to.
While this option would provide clients with the expectation of a consistent standard of service in both New Zealand and Australia, the standard of service would be the Australian standard, but without New Zealand patent attorneys being able to participate in the devel­ opment and maintenance of the Australian code.
C. Require all registered patent attorneys to adhere to a code of con­ duct developed and maintained in New Zealand and to provide a dis­ ciplinary process for breaches of acceptable standards of services (the preferred option).

The Patents Act would require the patent attorney profession in New Zealand to develop and maintain a New Zealand code of conduct with speciﬁed objectives.
To ensure that the code so developed by the profession met the speciﬁed objectives, the Patent Attorneys’ Standards Board, which is being established to administer the pro­ fessional qualiﬁcation examinations, would certify that the code so developed met the speciﬁed objectives.

The Act would specify the grounds on which a complaint could be made, the procedure for mak­ ing a complaint, and the orders following any breach of acceptable standards of service.
An independent disciplinary tribunal would be responsible for hearing the complaint and for determining the orders following any breach of acceptable standards of service.

This option has the advantage of allowing a New Zealand code of conduct to be developed by the profession, without the need for all registered patent attorneys to belong to a single industry body.

This option would provide for a disciplinary process that met the stated objectives.
Explanatory note Patents Bill 77 Net beneﬁt of proposal Beneﬁts The beneﬁts of the preferred option include— • a more responsive framework for ensuring ongoing quality of service from patent attorneys that is consistent with other regu­ lated professions; and certainty for the public about the standards of service they should receive from the patent attorney profession; and an increased understanding and acceptance by the profession of the acceptable standards of service they should be providing as a result of the profession being responsible for developing and maintaining the code of conduct; and greater public conﬁdence in the patent attorney profession that may lead to increased use of the professional services provided by the profession; and an aggrieved member of the public will be able to pursue a complaint about a breach of acceptable standards of service from a patent attorney; and a more cost effective and efﬁcient disciplinary process; and a ﬂexible penalty regime commensurate with the extent of any breach of standards of service.
Costs The costs of the preferred option include— • an increase in the current practising fee of $65 (excluding GST) for patent attorneys to cover the costs of the disciplinary process.
While the extent of the increase will depend on the number of complaints determined by the tribunal, experience from Australia suggests that the fee may need to increase to around $370 (excluding GST); and a cost to the profession in developing and maintaining the code of conduct (this should be relatively minor given that most patent attorneys are members of the NZIPA, who already op­ erate under a voluntary code of conduct, and that Australian patent attorneys, who make up over half the registered patent attorneys, already operate under a code of conduct); and • • • • • • • 78 • • Patents Bill Explanatory note an unknown time cost for an aggrieved person in preparing and taking a complaint to the disciplinary tribunal; and an unknown time cost for the respondent patent attorney de­ fending an allegation that he or she had breached an acceptable standard of behaviour.
It is considered that there will be a net beneﬁt arising out of providing a compulsory code of conduct for patent attorneys that deﬁnes the acceptable standards of service to be provided by the profession and a disciplinary process that is accessible to the public.

Consultation undertaken In October 2002 the Ministry of Economic Development published on its website a discussion paper entitled Review of the Regulatory Regime for the Patent Attorney Profession in New Zealand.
Noti­ ﬁcation of the publication of the discussion paper and an invitation to make submissions on the patent attorney profession was sent to around 490 interested parties, including registered patent attorneys and the users of patent attorney services.

Copies of the paper were sent to key interested parties.
Submissions were received from 17 re­ spondents, of which 7 respondents, including the NZIPA, called for the Act to provide an enhanced disciplinary process that was more accessible to aggrieved persons.
Government departments and ministries consulted were: the Depart­ ment of the Prime Minister and Cabinet, Te Puni Kokiri, Ministry of Agriculture and Forestry, Ministry of Consumer Affairs, Depart­ ment for Courts, the New Zealand Customs Service, Ministry of Edu­ cation, Ministry of Foreign Affairs and Trade, Ministry of Justice, Ministry of Research, Science and Technology, and the Treasury.

No concerns were raised with the preferred option.


Regulatory impact and business compliance cost statement—patent attorneys Executive summary In 2003 Cabinet agreed to an independent disciplinary tribunal (tri­ bunal) to inquire into and determine complaints about patent at­ torneys.

This change was modelled largely on the then Australian regime for patent attorneys.

Explanatory note Patents Bill 79 The Australian regime for the regulation of patent attorneys has re­ cently been under review.
The review identiﬁed that the majority of complaints about patent attorneys do not concern matters related to disciplinary issues.

Furthermore, the number of complaints about patent attorneys considered by the Australian tribunal was low (av­ eraging about 1 or 2 per year).

Setting up and maintaining a similar tribunal in New Zealand on this basis is therefore likely to be an inef­ ﬁcient and ineffective mechanism to resolve most complaints about patent attorneys.
In order to provide a more efﬁcient and effective disciplinary proced­ ure in the Patents Bill, it is proposed to dispense with the tribunal and transfer its functions to the Patent Attorneys’ Professional Standards Board (the Standards Board) to be set up under the Patents Bill, and to give the Standards Board the authority to direct parties to a com­ plaint to explore the possibility of resolving or settling the complaint or issues relating to the complaint that do not raise disciplinary issues by negotiation, conciliation, or mediation.
Adequacy statement The Ministry of Economic Development has reviewed this regulatory impact statement and considers it to be adequate according to the adequacy criteria.

Status quo and problem The patent attorney profession is currently regulated under the Patents Act 1953.

There are around 511 patent attorneys registered to practice in New Zealand.
Around 67% of these are Australian resident patent attorneys who have taken advantage of the provisions in the Trans­Tasman Mutual Recognition Arrangements (TTMRA) to register for practice in New Zealand.
Following a review of the regulation of the patent attorney profession under the Patents Act 1953, Cabinet agreed on 31 March 2003 that the licensing regime for patent attorneys should continue to be provided under patent le­ gislation with a number of modiﬁcations designed to modernise and more closely align the regulation of the patent attorney profession with Australia.
A recent review of the Australian regulatory regime for patent attorneys conducted by the Professional Standards Board 80 Patents Bill Explanatory note for Patent and Trade Mark Attorneys (the PSB) identiﬁed 2 areas where changes to the disciplinary regime were considered necessary.
The PSB found that most complaints between patent attorneys and their clients did not involve disciplinary issues, rather, the complaints related to, for example, disputes over costs, unpaid bills, or other re­ lated aspects of the relationship.

Disputes in which there is evidence that the patent attorney had acted inappropriately are rare (an average of around 1 complaint per year).

Anecdotal evidence in New Zealand suggests nearly all disputes fall into the former category.
Furthermore, the PSB considered that the present disciplinary regime did not make any distinction between those complaints that raised issues that are truly disciplinary in nature and those that do not.

The result is that a client who wishes to resolve a dispute with a patent attorney not involving a disciplinary issue has to allege that the patent attorney has acted in a way that merits disciplinary action.
Cabinet agreed to the Patents Act 1953 being amended (EDC Min (03) 35 and CAB Min (03) 11/5 refer) to provide for all complaints about patent attorneys to be referred to the tribunal for inquiry and determination.
Where the tribunal determines that the patent attor­ ney has breached any acceptable standards of service, it may make orders for his or her registration to be removed or suspended, and for the patent attorney to be censured, ﬁned, required to refund money, return property, or remedy the complaint.
Referring all complaints to the disciplinary tribunal, where the ma­ jority (if not all the complaints) do not involve disciplinary issues, is likely to provide an ineffective and inefﬁcient mechanism for set­ tling those complaints.

Furthermore, if few complaints involve dis­ ciplinary issues, the cost of setting up and maintaining a disciplinary tribunal would not be justiﬁed.
Objectives The objective is to provide a disciplinary regime for patent attorneys that ensures that disputes between patent attorneys and their clients are settled in an efﬁcient and effective manner.
Alternative options It was not considered feasible or practical to transfer the functions of the disciplinary tribunal to another disciplinary body set up for Explanatory note Patents Bill 81 another occupational group because the knowledge and skills to be­ come a patent attorney are unique to that profession.

Furthermore, responsibility for maintaining the reputation of the patent attorney profession should lie with the profession itself, rather than another occupational group.
Preferred option Amend the Patents Act 1953 so that the function of the tribunal to inquire into and determine complaints becomes the responsibility of the Standards Board (and thereby remove the requirement for a tri­ bunal to be provided).

The proposal to transfer the functions of the tribunal to the Stan­ dards Board would eliminate the costs associated with setting up and maintaining the tribunal.
While there would be some additional costs to the Standards Board to administer the disciplinary regime, an in­ crease in costs is likely to be small, as the number of complaints arising from disputes involving disciplinary issues are likely to be small and infrequent.

The costs incurred by the Standards Boards are, however, to be recovered from the profession though registra­ tion and renewal fees payable by patent attorneys in New Zealand.
There are no business compliance costs associated with this proposal.

In addition, the Standards Board is to be provided with the author­ ity to ﬁrst direct parties to a complaint to explore the possibility of resolving the complaint by negotiation, conciliation, or mediation before the Standards Board undertakes to determine the complaint.
Providing the Standards Board with such an authority would assist the parties to a complaint to settle their dispute or parts of a dispute without the client needing to allege disciplinary issues.

It would also assist to keep expenditure of the Standards Board resources for in­ quiring into and determining a compliant against the patent attorney to a minimum when disciplinary action is not warranted.
The proposed amendments would therefore create a more efﬁcient and effective regime for settling the range of disputes that are likely to arise between patent attorneys and their clients.

These changes to the dispute procedures would also be consistent with recent de­ velopments in the regulation of occupational groups in New Zealand such as the passing of the Building Act 2004, Registered Architects Act 2005, and the Lawyers and Conveyancers Act 2006.
Governing 82 Patents Bill Explanatory note boards of professional groups are being given more responsibility for maintaining the reputation of their respective professions and the ability to refer parties to a complaint to an independent arbitrator or negotiator to settle the complaint or parts of the complaint that do not raise disciplinary issues.
Implementation and review Changes to the disciplinary provisions for the patent attorney profes­ sion are to be implemented in a Patents Bill currently being prepared for introduction into the House of Representatives later this year.

Fol­ lowing enactment of the Patents Bill, regulations will be developed that will include the change in work experience required by a person registering as a patent attorney.
Information about the requirements to register as patent attorneys and changes being introduced under the Patents Bill will be available from the Ministry of Economic Development’s websites, including that of the Intellectual Property Ofﬁce of New Zealand’s website.
The Ministry of Economic Development will monitor the effective­ ness of the changes to the regulation of the patent attorney profession after the new Patents Act comes into force, with the view to conduct­ ing a review of the new Patents Act after 5 years.

Consultation Targeted consultation was undertaken with both the New Zealand Institute of Patent Attorneys Inc and the Institute of Patent and Trade Marks Attorneys of Australia.
The proposals were also discussed at the New Zealand Institute’s annual conferences in 2005 and 2006.

Both groups support the preferred option.

Government departments and ministries consulted were: Te Puni Kokiri, Ministry of Agriculture and Forestry, Ministry of Consumer Affairs, Department for Courts, the New Zealand Customs Service, Ministry of Education, Ministry of Foreign Affairs and Trade, Min­ istry of Justice, Ministry of Research, Science and Technology, and the Treasury.
No concerns were raised with the preferred option.

The Department of the Prime Minister and Cabinet was informed of the proposals.
Hon Judith Tizard Patents Bill Government Bill Contents Part 1 Preliminary Purposes and overview Title Commencement Purposes Overview Interpretation Interpretation Meaning of novel Meaning of inventive step Meaning of prior art base Disclosure to be disregarded in certain circumstances Meaning of useful Act binds the Crown Act binds the Crown Part 2 Patentable inventions and patent rights Subpart 1—Patentable inventions General rules concerning what is patentable 12 13 Patent may be granted for patentable inventions only Patentable inventions 235—1 Page 16 16 16 17 18 25 25 25 26 28 28 28 29 1 Patents Bill Exclusions from patentability Inventions contrary to public order or morality not patentable inventions Other exclusions Subpart 2—Patent rights Nature of patent Exclusive rights given by patent Extent, effect, and form of patent Term of patent Extension of period for paying renewal fees Subpart 3—Patent ownership Who may be granted patent 21 Who may be granted patent Power of patentee to deal with patent 22 Power of patentee to deal with patent Co­owners of patent Co­ownership of patent Rights of buyers from co­owners of patent Power of Commissioner to give directions to co­owners Miscellaneous provisions concerning directions Disputes as to inventions made by employees Disputes as to inventions made by employees Employment Relations Authority or Commissioner may apportion beneﬁt of invention and of patent Review of Commissioner’s decision Part 3 Process for
 obtaining grant of patent and other matters Subpart 1—Patent applications Right to apply for patent Application requirements Commissioner may post­date application or speciﬁcation Divisional applications Subpart 2—Speciﬁcations Complete and provisional speciﬁcations Filing of complete speciﬁcation after provisional speciﬁcation has been ﬁled Patents Bill Contents of provisional speciﬁcation Contents of
 complete speciﬁcation Supply of drawings Speciﬁcations for micro­organisms Deposit requirements for micro­organisms Deposit requirements treated as satisﬁed in certain circumstances Micro­organism ceasing to be reasonably available Subpart 3—Treaty applications Treaty application treated as application accompanied by complete speciﬁcation Description, claims, and drawings International ﬁling date Commissioner must provide international ﬁling date in certain circumstances Amendments to documents forming part of complete speciﬁcation Treaty application void Requirements for examination of Treaty application Subpart 4—Convention applications Convention applicants may make convention applications How convention applications are made and dealt with Withdrawn, abandoned, or refused basic applications Basic applications for 2 or more cognate inventions Subpart 5—Priority dates Priority date of claims of complete speciﬁcation Priority date if complete speciﬁcation ﬁled for single application Priority date if complete speciﬁcation ﬁled for 2 or more applications Priority date for convention applications Priority date for Treaty applications Rules that apply if 2 or more priority dates apply or other rules do not apply Subpart 6—Examination Examination Commissioner may refuse to proceed with application or require application or speciﬁcation to be amended 46
60 61 39 39 40 40 41 42 43 43 43 43 44 45 45 46 46 47 48 48 49 49 49 50 50 51 51 52 3 Patents Bill Applicants must act by deadline if deadline set by Commissioner Application treated as abandoned if applicant fails to act within set deadline Commissioner must examine amended speciﬁcation Duty to inform Commissioner of search results Consequences of breach of duty Subpart 7—Acceptance and publication Time for putting application in order for acceptance Time for putting application in order for acceptance Time may be extended if appeal pending or
 possible Notice of entitlement must be ﬁled before acceptance Acceptance Acceptance of complete speciﬁcation Applicant may request Commissioner to postpone acceptance Publication Publication Publication in case of divisional applications made as provided for in section 33 Documents open to public inspection Publication of Treaty applications Certain documents not to be published Effect of publication of complete speciﬁcation Defence for period between complete speciﬁcation becoming open to public inspection and acceptance Subpart 8—Amendment of speciﬁcations after acceptance General rules concerning amendments of speciﬁcations after acceptance Amendment must be published in journal Amendment of speciﬁcation with leave of Commissioner Request for leave to amend must be published in journal Opposition to proposed amendment Provisions concerning amendments with leave of Commissioner do not apply in certain circumstances Amendment of speciﬁcation with leave of court Patents Bill Subpart 9—Assertions by third parties and re­examinations Assertions by third parties within prescribed period Assertions by third parties on novelty and inventive step Commissioner must consider and deal with notice in prescribed manner Re­examination after acceptance Re­examination of complete speciﬁcation before patent is granted Re­examination of
 complete speciﬁcation after patent is granted Report on re­examination Refusal to grant patent: re­examination before grant Revocation of patent: re­examination after grant Subpart 10—Grant of patent General rules When patent must be granted Validity of patent not guaranteed Patent date Patent granted for one invention only Amendment of patent granted to deceased person or to person that has been liquidated or wound up Patents of addition Patents of addition Commissioner may revoke patent for improvement or
 modiﬁcation and grant patent of addition Restrictions on granting of patents of addition Term of patent of addition Renewal fees for patents of addition Provisions concerning inventive step requirement and validity in connection with patents of addition Subpart 11—Revocation and surrender of patents Revocation of patent Provisions concerning applications for revocation made to Commissioner Grounds for revoking patent Priority date in case of obtaining Patents Bill Court may also revoke patent if patentee, without reasonable cause, refuses request of government department to exploit invention Surrender of patent Subpart 12—Restoration of lapsed patents and restoration of patent applications Restoration of lapsed patents Restoration of lapsed patents Request must describe circumstances that led to failure to pay renewal fee Persons who may make request for restoration of patent 112 113 When request for restoration of patent may be made 114 Commissioner must give applicant reasonable opportunity to be heard if not satisﬁed that prima facie case has been made out for restoration Commissioner to publish request in journal Notice of opposition and reasonable opportunity to be heard Order to be made on payment of unpaid fees Restoration of patent applications Request for restoration of void or
 abandoned patent applications 119 When request for restoration of application may be made 120 121 Notice of opposition Commissioner to determine matter Subpart 13—Miscellaneous provisions Substitution of applicants 122 123 124 Persons claiming under assignment or agreement or by operation of law Death of applicant Disputes between interested parties Provisions for secrecy of certain inventions Directions in relation to inventions concerning defence 125 126 Commissioner must give notice to Minister of Defence
 127 Minister of Defence must consider whether publication would be prejudicial to defence of New Zealand Commissioner must revoke directions on receipt of notice from Minister of Defence 128 6 75 75 76 76 76 76 77 77 77 78 79 79 80 80 81 82 82 82 83 83 84 Patents Bill 129 130 131 132 133 134 135 136 137 138 Acceptance of complete speciﬁcation while directions in force Renewal fees not payable while directions in force Offence to fail to comply with directions Liability of directors and managers if body corporate commits offence Part 4 Infringement, other patent proceedings, and matters affecting patent ownership Subpart 1—Infringement proceedings What constitutes infringement Infringement by doing anything patentee has exclusive right to do Infringement by supplying means to infringe to another person Presumption that product produced by infringing process What does not constitute infringement No infringement for experimental use No infringement by use in or from foreign vessels, aircraft, or vehicles No infringement for use to produce information required by law Counterclaim for revocation of patent 139 Defendant may counterclaim for revocation of patent Bringing infringement proceedings in court 140 Who may bring infringement proceedings 141 When and how proceedings may be brought 142 Proceedings brought by exclusive licensee Relief for infringement 143 144 145 146 147 Types of relief available for infringement Court must not award damages or account of proﬁts if
 innocent infringement Court must refuse damages or account of proﬁts for infringement before amendment to accepted speciﬁcation Court may refuse damages or account of proﬁts if renewal fees not paid Limits on damages and accounts of proﬁts do not affect power to grant injunction 84 85 85 85 86 86 87 87 87 88 88 88 89 89 89 90 90 90 91 7 Patents Bill 148 149 150 Court may grant relief for partially valid patent Court may grant costs for subsequent proceedings if validity of speciﬁcations contested Infringement
 proceedings must be tried before Judge alone Subpart 2—Declarations of non­infringement 151 Court may make declaration of non­infringement 152 When proceedings for declaration of non­infringement 153 154 155 156 157 158 159 may be brought Costs in declaration of non­infringement Validity of patent not at issue in proceedings for, and not affected by, declaration of non­infringement Subpart 3—Other provisions for proceedings relating to patents Notice and registration requirements for proceedings on interests in patents Notice must be given before bringing civil proceedings on unregistered interests in patents Interests must be registered at least 1 month before bringing civil proceedings Application of Limitation Act 1950 Standing for Attorney­General Attorney­General may appear in patent proceedings Parties must give notice to Solicitor­General if questioning patent validity Subpart 4—Patent dealings, patent licences, and transmission of interests in patents Registration of assignments, licences, and other interests in patents 160 161 Application for registration of assignments, licences, and other interests in patents Registration of assignments, licences, and other interests in patents Vesting of patents and patent applications without probate or letters of administration 162 Commissioner may vest patent or patent application without probate or letters of administration 8 91 91 92 92 92 93 93 93 94 94 94 95 95 96 96 Patents Bill Termination of sales, leases,
 and licences of patented products and processes if patent no longer in force Termination of sales, leases, and licences of patented products and processes if patent no longer in force Subpart 5—Compulsory licences Compulsory licences Court may order grant of licence Remuneration payable to patentee Licence must not be granted in certain circumstances Exercise of powers on applications under section 164 or 166 Order for grant of licence has effect as deed Subpart 6—Crown use of patented inventions Crown use
 of patented inventions Regulations may declare use to be Crown use Protection of buyers Rights of third parties in respect of Crown use Reference of disputes concerning Crown use Court may refer matter to special or ofﬁcial referee or arbitrator Special provisions as to Crown use during emergency Nature and scope of rights under section 170 Duty to inform patentee Patentee entitled to remuneration 163 164 165 166 167 168 169 170 171 172 173 174 175 176 177 178 179 Subpart 7—Mention of inventor in patent, speciﬁcation, and patents register 180 Mention of inventor in patent, speciﬁcation, and patents register Request or claim to be mentioned as inventor Commissioner must give notice of claim and opportunity to be heard Certiﬁcate concerning ownership 181 182 183 Part 5 Patent attorney profession Subpart 1—Restrictions on providing patent attorney services 184 185 186 Title of patent attorney Title of patent attorney company Title of patent attorney partnership 97 97 98 98 99 99 99 99 100 100 101 101 102 102 103 104 104 104 105 105 106 106 106 107 9 Patents Bill 187 188 189 190 191 192 Only patent attorneys, and patent attorney companies and partnerships, may provide patent attorney services False representations Liability of directors and managers if body corporate commits offence Exception for lawyers and incorporated law ﬁrms to provide limited patent attorney services Period of grace for personal representatives of patent attorneys Exception for pre­1955 companies
 Subpart 2—Registration and certiﬁcates 193 Who is qualiﬁed to be registered as patent attorney 194 Determining qualiﬁcation requirements for registration 195 Matters that may be taken into account in determining whether applicant is ﬁt and proper person Registration certiﬁcates Failure to pay renewal fee for registration 196 197 198 When registration may or must be removed or suspended 199 200 Effect of suspension Other matters relating to suspension and removal of registration Subpart 3—Standards of
 conduct and discipline Code of conduct 201 202 203 204 205 206 207 Patent attorneys and patent attorney companies subject to code of conduct Purpose and contents of code of conduct Institute must develop code of conduct Board may approve draft code of conduct Publication and application of code of conduct Status of code of conduct Amendments and replacements of code of conduct Disciplining of patent attorneys and patent attorney companies 208 Who is covered by disciplinary regime 209 Complaints and referrals may be made under disciplinary regime Board may direct parties to explore use of alternative dispute resolution for complaints Board’s powers of investigation Offence of obstruction Patents Bill Evidence Issuing of summons by Board Protection of persons appearing Grounds for discipline of patent attorneys and patent attorney companies Disciplinary penalties Orders for payment of costs Board must notify Commissioner of orders Effect of order to pay money on right to damages Orders enforceable against former patent attorneys Subpart 4—Appeals under this Part Right of appeal Decisions to have effect pending determination of appeal Procedure on appeal Court’s decision ﬁnal Court may refer matter back for reconsideration Orders as to costs Orders as to publication of names or particulars Appeal on question of law Subpart 5—Register of patent
 attorneys Commissioner to establish and maintain register of patent attorneys Purpose of register of patent attorneys Form of register of patent attorneys Contents of register of patent attorneys Search of register of patent attorneys Obligation to notify Commissioner of changes to details in register of patent attorneys Changes to register of patent attorneys Subpart 6—Patent Attorneys’ Standards Board 213 214 215 216 217 218 219 220 221 222 223 224 225 226 227 228 229 230 231 232 233 234 235 236 Patent
 Attorneys’ Standards Board of New Zealand Functions of Board 237 238 239 Membership of Board 240 Further provisions relating to Board and its members 120 120 121 121 122 123 123 123 123 124 124 124 124 125 125 125 125 126 126 126 127 127 127 128 128 128 129 129 11 Patents Bill Part 6 Administrative and miscellaneous provisions Subpart 1—Patents register and other information on patents and patent applications Patents register Patents register Purpose of patents register Form of patents register Contents of patents register Searches of patents register and obtaining patent information Search of patents register Requests for patent information Loss or destruction of patent Changes to patents register and other ofﬁcial documents Changes to patents register Commissioner may correct own mistakes in patents register, etc Commissioner may correct other persons’ mistakes in patents register, etc Court may rectify patents register Evidence Evidence: patents register and patents Evidence: anything done by Commissioner Journal and other publications Commissioner must publish journal Commissioner may keep or publish indexes, etc Subpart 2—General provisions on proceedings of Commissioner Giving evidence to Commissioner How to give evidence to Commissioner in proceedings Commissioner may receive evidence on oath Issuing of summons by Commissioner Power to award costs Commissioner may award costs Commissioner or court may require security for costs 129 130 130 130 131 131 131
security for costs Patents Bill Appeals of Commissioner’s decisions 261 262 263 264 Appeals of decisions of Commissioner Decisions to have effect pending determination of appeal Procedure on appeal Appeals of decisions of court on appeal 265 Costs of Commissioner in proceedings Costs of Commissioner Subpart 3—Establishment and operation of administrative bodies for patents Commissioner and
 Assistant Commissioners 266 267 268 269 270 271 272 273 274 Commissioner and Assistant Commissioners Functions of Commissioner Powers of Assistant Commissioners of Patents Power of Commissioner to delegate Annual report of Commissioner Liability of Commissioner and others Intellectual Property Ofﬁce of New Zealand Intellectual Property Ofﬁce of New Zealand Opening hours of Intellectual Property Ofﬁce of New Zealand Closing of Intellectual Property Ofﬁce of New Zealand at short notice Māori advisory committee 275 Appointment and membership of Māori advisory committee Functions of Māori advisory committee 276 277 Effect of advice from Māori advisory committee 278 Māori advisory committee may regulate own procedure Subpart 4—Other miscellaneous provisions Power to extend time limits 279 280 281 Commissioner may extend time limits for delays by Commissioner Commissioner may extend time limits for certain ﬁling requirements or for delivery failures Requirements for applying and granting extensions of time limits under section 280 137 137 138 138 138 139 139 139 140 140 141 141 141 142 142 143 143 143 143 143 144 13 Patents Bill Serving notices 282 Service of notices Requirements for summons Requirements for summons 283 284 Witnesses’ fees, allowances, and expenses 285 Offence of failing to comply with summons Fees and other money paid under Act Fees and penalties payable under Act or regulations Payment and application of fees and other money paid under this Act Miscellaneous
 Protection of Royal arms, etc Saving for Royal prerogative and certain Crown rights Act does not apply to Tokelau Application of Personal Property Securities Act 1999 Subpart 5—Regulations Regulations Supplementary empowering provision Orders in Council as to convention countries Subpart 6—Repeals, amendments, validation, and saving and transitional provisions Repeal of Patents Act 1953 and consequential revocations Consequential amendments to other enactments Preservation of various regulations and orders
 Validation of fees Transitional provisions for patents and patent applications Outline of transitional provisions for patents Transitional provision for patents granted under Patents Act 1953 Patent applications made under Patents Act 1953 continue under that Act Patents Act 1953 ceases to apply to patent application if complete speciﬁcation later ﬁled This Act applies if patent application under Patents Act 1953 is post­dated Patents Act 1953 applies to divisional applications dated before commencement Patents Bill 305 Which Act applies to Treaty applications Transitional provisions for other applications, notices, and requests 306 Transitional provision for other applications, notices, or requests Transitional provision for matters in force on commencement 307 Transitional provision for orders, directions, and other matters in effect on commencement 158 158 159 Transitional provision for patents register and register of patent attorneys 308 Transitional provision for patents register and register of patent attorneys 159 309 310 311 312 313 314 315 Transitional provisions for existing offences and infringements Transitional provision for existing offences and infringements Transitional provisions for patent attorneys Outline of transitional provisions for patent attorneys Transitional provision
 for patent attorneys registered under Patents Act 1953 Transitional provision for applicants for registration Transitional provision for lawyers Transitional provisions for Commissioner and Assistant Commissioners Transitional appointment of Commissioner and Assistant Commissioners Transitional power for Commissioner Schedule 1 Further provisions applying to Board and its members Schedule 2 Consequential amendments 160 160 161 161 161 162 162 163 171 15 cl 1 Patents Bill The Parliament of New Zealand enacts
 as follows: 1 2 (1) Title This Act is the Patents Act 2008.
Commencement The following provisions of this Act come into force on the 5 day after the date on which this Act receives the Royal assent: (a) (b) section 1 and this section: section 194 (which relates to the setting of qualiﬁca­ tion requirements for patent attorney applications): sections 201 to 207 (which relate to the code of con­ 10 duct for patent attorneys and patent attorney compan­ ies): subpart 6 of Part 5 and Schedule 1 (which relate to the Board and its membership): subpart 3 of Part 6 (which relates to the establishment 15 and operation of the administrative bodies under this Act): subpart 5 of Part 6 (which contains the regulation­ making powers): section 314 (which appoints the Commissioner and 20 Assistant Commissioners of Patents under the Patents Act 1953 as the new Commissioner and Assistant Com­ missioners).
(c) (d) (e) (f) (g) (2) The rest of this Act comes into force on a date to be appointed by the Governor­General by Order in Council; and 1 or more 25 orders may be made bringing different provisions into force on different dates.
Part 1 Preliminary Purposes and overview 30 Purposes The purposes of this Act are to— (a) ensure that a patent is granted for an invention only in appropriate circumstances by— 3 16 Patents Bill Part 1 cl 4 (i) (ii) establishing appropriate criteria for the granting of a patent; and providing for procedures that allow the validity of a patent to be tested; and provide greater certainty for patent owners and the users 5 of patented inventions that patents will be valid after they are granted; and address Māori concerns relating to the granting of patents for inventions derived from indigenous plants and animals or from Māori traditional knowledge; and promote quality, expertise, and integrity in the profes­ sion of patent attorneys; and ensure that New Zealand’s patent regime takes account of international developments.
10 (b) (c) (d) (e) 4 (1) Overview In this Act,— (a) 15 (b) (c) (d) (e) including provisions relating 25 this Part speciﬁes the purposes of this Act and deﬁnes terms and expressions used in this Act; and Part 2 contains provisions concerning patentable in­ ventions and patent rights, including provisions relating 20 to what is a patentable invention, exclusions from what is patentable, the exclusive rights given by a patent, and who may be granted a patent; and Part 3 describes the process for obtaining a patent and various other matters, to patent applications, speciﬁcations, examinations, acceptance, publication, and the granting of patents; and Part 4 contains matters affecting patent ownership, including provisions relating to infringement pro­ 30 ceedings, declarations of non­infringement, and other proceedings relating to patents, and provisions on patent dealings and compulsory licences; and Part 5 contains provisions relating to patent attor­ neys, patent attorney companies, and patent attorney 35 partnerships, including a registration system for patent attorneys, a code of conduct for patent attorneys and patent attorney companies, a complaints and discip­ 17 Part 1 cl 5 Patents Bill (f) linary regime, and provisions dealing with the Patent Attorneys’ Standards Board of New Zealand; and Part 6 contains provisions relating to the patents regis­ ter, the Commissioner, the Māori advisory committee, and other administrative and miscellaneous matters.
5 (2) This section is intended only as a guide to the general scheme and effect of this Act.
Interpretation Interpretation In this Act, unless the context otherwise requires,— acquirer has, in sections 160 and 161, the meaning set out in section 160(1) applicant— (a) means a person who has applied for a patent for an in­ (b) vention; and includes a person in whose favour a direction has been given under section 122 or 124 and the personal rep­ resentative of a deceased applicant 10 15 assignee includes the personal representative of a deceased as­ signee; and references to the assignee of any person include 20 references to the assignee of the personal representative or as­ signee of that person basic application means an application for protection in re­ spect of an invention, being an application that is made in a convention country (whether before or after it became a con­ 25 vention country) Board means the Patent Attorneys’ Standards Board of New Zealand established under section 237 Budapest Treaty— (a) means the Budapest Treaty on the International Recog­ 30 nition of the Deposit of Microorganisms for the Pur­ poses of Patent Procedure signed at Budapest on 28 April 1977, together with the regulations annexed to that treaty; and includes any amendments, modiﬁcations, and revisions 35 from time to time made to that treaty or those regula­ tions, being amendments, modiﬁcations, and revisions (b) 5 (1) 18 Patents Bill Part 1 cl 5 to which New Zealand is a party and by which New Zealand is bound claim means a claim of the complete speciﬁcation code of conduct means the applicable code of conduct for
 patent attorneys and patent attorney companies under section 5 201 Commissioner— (a) means the Commissioner of Patents appointed under (b) section 266; and includes an Assistant Commissioner of Patents ap­ 10 pointed under section 266 in relation to a basic application, convention applicant, means a person who— (a) (b) has made the basic application; or is the assignee of the person who made the basic appli­ 15 cation; or is the personal representative of a person mentioned in paragraph (a) or (b); or has
 the consent of a person mentioned in paragraph (a), (b), or (c) to make a convention application based 20 on that basic application (c) (d) convention application means a patent application made under subpart 4 of Part 3 convention country, in a provision of this Act, means an en­ tity for the time being declared by an order made under sec­ 25 tion 294 to be a convention country for the purposes of that provision court means the High Court date of the publication of the accepted complete speciﬁca­ tion has the meaning set out in section 70 depositary institution means a body or institution that re­ ceives, accepts, and stores micro­organisms and furnishes samples of micro­organisms disciplinary matter means a complaint about, or inquiry into, the conduct of a patent attorney or patent attorney company or 35 a decision on that inquiry or complaint exclusive licence means a licence from a patentee that gives the licensee (or the licensee and persons authorised by the li­ 30 19 Part 1 cl 5 Patents Bill 10 15 censee) any of the patentee’s exclusive rights under section 17 to the exclusion of the patentee and all other persons exploit has the meaning set out in section 17 ﬁle means ﬁle with IPONZ ﬁling date, in relation to a document ﬁled under this Act, 5 means— (a) (b) the date on which the document is ﬁled; or the date on which the document is treated as having been ﬁled (if it is treated under this Act or the regula­ tions as having been ﬁled on a different date)
 (b) government department means any department or instru­ ment of the Executive Government of New Zealand, or any branch or division of any of those departments or instruments incorporated law ﬁrm has the meaning set out in section 6 of the Lawyers and Conveyancers Act 2006 Institute means the New Zealand Institute of Patent Attorneys (Incorporated) integrated circuit means a circuit, in its ﬁnal or an intermedi­ ate form, if— (a) the elements of the circuit and some or all of the inter­ 20 connections are
 integrally formed in or on a piece of material; and at least one of the elements of the circuit is an active element; and the circuit is intended to perform an electronic function 25 (c) interested party, in relation to a patent application, means the applicant or a joint applicant, or a person who claims to be entitled to the grant of a patent on the application, either alone or jointly with another person international application means an application made under 30 the Patent Cooperation Treaty for the protection of an inven­ tion International Bureau means the International Bureau of the World Intellectual Property Organization international depositary authority has the same meaning as 35 in the Budapest Treaty 20 Patents Bill Part 1 cl 5 5 international ﬁling date means the international ﬁling date given to an international application under Article 11 or 14(2) of the Patent Cooperation Treaty invention includes an alleged invention inventive step has the meaning set out in section 7 inventor,— (a) in relation to an invention, means the actual deviser of the invention; but (b) in section 9, has the meaning set out in section 9(2) IPONZ means the Intellectual Property Ofﬁce of New 10 Zealand journal means the journal published under section 254 lawyer has the meaning set out in section 6 of the Lawyers and Conveyancers Act 2006 licence means a licence to do anything that the patentee other­ 15 wise has the exclusive right to do under section 17 main invention has the meaning set out in section 98 Māori advisory committee means the committee appointed under section 275 Minister means the Minister of the Crown who, under the au­ 20 thority of any warrant or with the authority of the Prime Min­ ister, is for the time being responsible for the administration of this Act Ministry means the department of State that, with the author­ ity of the Prime Minister, is for the time being responsible for 25 the administration of this Act nominated person, in relation to a
 patent application, means the person identiﬁed as the person to whom the patent is to be granted novel has the meaning set out in section 6 patent means letters patent for an invention patent application means an application for a patent under this Act patent area means— (a) (b) New Zealand; and all waters within the outer limits of the territorial sea of New Zealand (as deﬁned by section 3 of the Territorial 35 30 21 Part 1 cl 5 Patents Bill Sea, Contiguous Zone, and Exclusive Economic Zone Act 1977); and the airspace above New Zealand and those waters (c) patent attorney means a registered patent attorney patent attorney company has the meaning set out in section 5 185 patent attorney partnership has the meaning set out in sec­ tion 186 Patent Cooperation Treaty— (a) means the Patent Cooperation Treaty signed at Wash­ 10 (b) ington on 19 June 1970; and includes any amendments, modiﬁcations, and revisions from time to time made to that Treaty, being amend­ ments, modiﬁcations, and revisions to which New Zealand is a party and by which New Zealand is bound 15 patent date, in relation to a patent, means the date given to the patent under section 95 patent of addition means a patent granted under sections 98 to 103 patentable invention has the meaning set out in section 13 20 patented process means a process for which a patent has been granted and is in force patented product means a product for which a patent has been granted and is in force patentee means the
 person entered in the patents register as 25 the grantee or owner of a patent at the relevant time patents register means the patents register kept under sec­ tion 241 personal representative, in relation to a deceased person,— (a) means a person to whom probate of the will of the de­ 30 ceased person, letters of administration of the estate of the deceased person, or any other similar grant, has been granted, whether in New Zealand or anywhere else; but does not include a person referred to in paragraph (a)
 if, under the terms of the grant, the person is not entitled 35 to do an act in relation to which the expression is used (b) prescribed means prescribed by regulations 22 Patents Bill Part 1 cl 5 prescribed depositary institution means— (a) an international depositary authority, whether in or out­ side New Zealand; or any other depositary institution in New Zealand that is prescribed for the purposes of this paragraph (b) 5 prior art base has the meaning set out in section 8, and prior art has a corresponding meaning priority date, in relation to a claim, means the priority date given to the claim under subpart 5 of Part 3 publicly notify, in relation to the Commissioner, has the 10 meaning set out in subsection (3) publish, in relation to the Commissioner publishing anything in the journal, has the meaning set out in subsection (4) receiving Ofﬁce has the same meaning as in Article 2(xv) of the Patent Cooperation Treaty register of patent attorneys or patent attorneys register means the register kept under section 230 registered, in relation to a patent attorney, means registered as a patent attorney under Part 5 registration certiﬁcate means a registration certiﬁcate that is 20 issued under Part 5 regulations means regulations in force under this Act relevant proceeding, in relation to a patent, means a court proceeding— (a) (b) (c) for infringement of the patent; or for the revocation of the patent; or in which the validity of the patent, or of a claim, is in
 dispute 15 25 rules relating to micro­organisms means— (a) the provisions of the Budapest Treaty that are applic­ 30 able; and the provisions of the regulations that relate to micro­ organisms (b) Statute of Monopolies means the Act of the 21st year of the reign of King James the First, chapter 3, being an Act con­ 35 cerning monopolies and dispensations with penal laws and the forfeiture thereof 23 Part 1 cl 5 Patents Bill Treaty application means an international application— (a) that contains a request
 specifying New Zealand as a des­ ignated State under Article 4(1)(ii) of the Patent Co­ operation Treaty; and that has been given an international ﬁling date (b) Treaty regulations— (a) means the regulations made under the Patent Cooper­ 5 (b) ation Treaty; and includes any amendments from time to time made to those regulations 10 (2) (3) useful has the meaning set out in section 10.
In the case of an entity that is a convention country but is not a State, part of a State, or a territory for whose international relations a State is responsible,— (a) a reference in this Act to an application for protection in 15 a country or an application for protection in respect of a country must be read as a reference to an application for protection under the rules of the entity; and a reference in this Act to ﬁling a speciﬁcation in a con­ vention country must be read as a reference to ﬁling a 20 speciﬁcation under the rules of the entity; and a reference in this Act to the law of a convention country must be read as a reference to the rules of the entity; and a reference in this Act to the Government of a conven­ tion country must be read as a reference to the governing 25 body of the entity.
(b) (c) (d) The Commissioner may comply with any requirement in this Act for the Commissioner to publicly notify anything by— (a) publishing it on a website maintained for IPONZ’s pur­ poses; and if the Commissioner thinks ﬁt, also publishing it by any other means that the Commissioner considers appropri­ ate to make it known to persons that are likely to have an interest in the matter.
(b) 30 (4) Any requirement in this Act for the Commissioner to publish 35 anything in the journal requires the Commissioner to publish that matter in the journal in the manner required by the regu­ lations (if any).

Compare: 1953 No 64 s 2 24 6 7 8 (1) (2) Patents Bill Part 1 cl 8 Meaning of novel An invention, so far as claimed in a claim, is novel if it does not form part of the prior art base.
Compare: Patents Act 1977 s 2(1) (UK) Meaning of inventive step An invention, so far as claimed in a claim, involves an inven­ tive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the prior art base.
Compare: Patents Act 1977 s 3 (UK) 5 10 Meaning of prior art base For the purpose of deciding whether or not an invention is novel and for the purpose of deciding whether or not an inven­ tion involves an inventive step, the prior art base, in relation to an invention so far as claimed in a claim, means all mat­ ter (whether a product, a process, information about a product 15 or process, or anything else) that has at any time before the priority date of that claim been made available to the public (whether in New Zealand or elsewhere) by written or oral de­ scription, by use, or in any other way.
For the purpose of deciding whether or not an invention is 20 novel, the prior art base, in relation to an invention so far as claimed in a claim, also includes the information contained in a complete speciﬁcation ﬁled in respect of another patent application if all of the following circumstances apply: (a) if the information is, or were to be, the subject of a claim 25 of that complete speciﬁcation, the claim has, or would have, a priority date earlier than that of the claim under consideration; and that complete speciﬁcation became open to public in­ spection after the priority date of the claim under con­ 30 sideration; and the information was contained in that complete speci­ ﬁcation on its ﬁling date and when it became open to public inspection.
(b) (c) (3) However, subsection (2) does not apply if— 35 (a) either or both of the following apply: 25 Part 1 cl 9 Patents Bill (i) (ii) all of the nominated persons under the patent application are the same as the nominated per­ sons under the other patent application at the ﬁl­ ing date of the patent application under consider­ ation: all of the inventors identiﬁed in the patent appli­ cation are the same as the inventors identiﬁed in the other patent application at the ﬁling date of the patent application under consideration; and neither of the complete speciﬁcations ﬁled for the patent 10 applications contains a claim for matter claimed in the other.
5 (b) Compare: Patents Act 1977 s 2(2) (UK) Disclosure to be disregarded in certain circumstances For the purposes of section 8, the disclosure of matter con­ 15 stituting an invention must be disregarded if 1 or more of the following applies: (a) that disclosure occurred during the 1­year period im­ mediately preceding the ﬁling date of the patent appli­ cation and the disclosure was due to, or made in conse­ 20 quence of, the matter having been obtained unlawfully or in breach of conﬁdence by a person from— (i) (ii) the inventor; or any other person to whom the matter was made available in conﬁdence by the inventor; or any other person who obtained it from the inven­ tor because the person or the inventor believed that the person was entitled to obtain it; or any other person to whom the matter was made available in conﬁdence by any person referred to 30 in subparagraphs (i) to (iii) or in this subpara­ graph; or any other person who obtained it from any person mentioned in subparagraphs (i) to (iv) because the person or the person from whom the person 35 obtained it believed that the person was entitled to obtain it: (iii) (iv) (v) 25 9 (1) 26 (b) (c) (d) Patents Bill Part 1 cl 9 that disclosure occurred during the 1­year period imme­ diately preceding the ﬁling date of the patent application and the disclosure was made in breach of conﬁdence by a person who obtained the matter in conﬁdence from the inventor or from any other person to whom it was made 5 available by, or who obtained it from, the inventor:
 that disclosure was due to the communication of the matter to a government department or to any person au­ thorised by a government department to investigate the invention or its merits, or to anything done, in conse­ 10 quence of that communication, for the purpose of the investigation: that disclosure occurred during the 6­month period im­ mediately preceding the ﬁling date of the patent appli­ cation and that disclosure was due to, or made in con­ 15 sequence of,— (i) the display of the invention with the
 consent of the inventor at a speciﬁed exhibition; or the use of the invention with the consent of the inventor for the purposes of a speciﬁed exhibition 20 in the place where it is held; or the publication of any description of the inven­ tion in consequence of its display or use at a spe­ ciﬁed exhibition as referred to in subparagraph (i) or (ii); or the use of the invention, after it has been dis­ played or used at a speciﬁed exhibition as re­ ferred to in subparagraphs (i) and (ii) and dur­ ing the period of the exhibition, by any person without the consent of the inventor; or a description of the invention in a paper being read by the inventor before a learned society or published with the inventor’s consent in the transactions of a learned society: 30 25 (ii) (iii) (iv) (v) (e) that disclosure was due to, or made in consequence of, 35 the invention being publicly worked, at any time dur­ ing the 1­year period immediately preceding the ﬁling date of the patent application, by any of the following persons if the working was effected for the purpose of 27 Part 1 cl 10 Patents Bill 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: (i) (ii) the patentee or applicant: any person from whom the patentee or applicant 5 derives title: any person with the consent of the patentee or applicant: any person with the consent of any person from whom the patentee or applicant derives title.
(iii) (iv) 10 (2) For the purposes of this section,— inventor, in relation to an invention,— (a) means the actual deviser of the invention; and (b) includes any owner of the invention at the relevant time speciﬁed exhibition means an exhibition (whether held in 15 New Zealand or elsewhere) that is declared to be an inter­ national or industrial exhibition by the Commissioner in a notice that is publicly notiﬁed.
Compare: 1953 No 64 s 60; Patents Act 1977 s 2(4), (5) (UK) 10 Meaning of useful An invention, so far as claimed in a claim, is useful if the invention has a speciﬁc, credible, and substantial utility.

Act binds the Crown 11 Act binds the Crown This Act binds the Crown.
20 25 Part 2 Patentable inventions and patent rights Subpart 1—Patentable inventions General rules concerning what is patentable 12 Patent may be granted for patentable inventions only (1) A patent may be granted for an invention only if it is a 30 patentable invention.

28 Patents Bill Part 2 cl 14 (2) 13 This section is subject to section 103 (which relates to patents of addition).
Patentable inventions An invention is a patentable invention if the invention, so far as claimed in a claim,— (a) is a manner of manufacture within the meaning of sec­ tion 6 of the Statute of Monopolies; and (b) when compared with the prior art base— is novel; and involves an inventive step; and (i) (ii) is useful; and is not excluded from being a patentable invention under section 14 or 15.
Compare: Patents Act 1990 s 18(1) (Aust) (c) (d) Exclusions from patentability 14 Inventions contrary to public order or morality not patentable inventions (1) An invention is not a patentable invention if the commercial exploitation of the invention, so far as claimed in a claim, is contrary to— (a) public order (which in this section has the same mean­ ing as the term ordre public as used in Article 27.2 of the TRIPS agreement); or 5 10 15 20 (2) (3) (4) (b) morality.
For the purposes of subsection (1), commercial exploitation 25 must not be regarded as contrary to public order or moral­ ity only because it is prohibited by any law in force in New Zealand.

The Commissioner may, for the purpose of making a decision under this section, seek advice from the Māori advisory com­ 30 mittee or any person that the Commissioner considers appro­ priate.
For the purposes of this section, TRIPS agreement means the World Trade Organization Agreement on the Trade Related 29 Part 2 cl 15 Patents Bill Aspects of Intellectual Property Rights done at Marrakesh on 15 April 1994.

Compare: Patents Act 1977 s 1(3), (4) (UK) Other exclusions 15 (1) Human beings, and biological processes for their generation, 5 are not patentable inventions.

(2) An invention of a method of treatment of human beings by surgery or therapy is not a patentable invention.
(3) An invention of a method of diagnosis practised on human beings is not a patentable invention.

(4) A plant variety is not a patentable invention.

(5) For the purposes of subsection (4), plant variety has the same meaning as that given to the term variety in section 2 of the Plant Variety Rights Act 1987.

Subpart 2—Patent rights Nature of patent 16 (1) A patent is personal property.
(2) The rules of law that apply to the ownership and devolution of personal property generally apply to patents as they apply in relation to other choses in action.

Equities in respect of a patent may be enforced in the same way as equities in respect of any other personal property.
Compare: 1953 No 64 ss 63(5), 84(4) (3) 10 15 20 Exclusive rights given by patent 17 (1) A patent gives the patentee the exclusive rights, during the 25 term of the patent, to exploit the invention and to authorise another person to exploit the invention.
In this Act, exploit, in relation to an invention, includes,— (a) (2) if the invention is a product, to— (i) make, hire, sell, or otherwise dispose of the prod­ 30 uct; or offer to make, hire, sell, or otherwise dispose of the product; or use or import the product; or (ii) (iii) 30 Patents Bill Part 2 cl 20 (iv) keep the product for the purpose of doing any of the things referred to in subparagraphs (i) to (iii); or (b) if the invention is a process, to use the process or to do any act mentioned in paragraph (a) in respect of a 5 product resulting from that use.
(3) This section is subject to subparts 5 and 6 of Part 4 (which relate to compulsory licences and the use of patented inven­ tions for services of the Crown).

Compare: Patents Act 1990 s 13 (Aust) Extent, effect, and form of patent 18 (1) A patent has effect throughout the patent area.

(2) However, a patent may be assigned for any place in, or part of, the patent area as effectively as if it were granted so as to extend to that place or part only.
(3) A patent has the same effect against the Crown as it has against (4) any other person.

Subsection (3) is subject to the provisions of this Act and to section 7(3) of the Crown Proceedings Act 1950.

(5) A patent must be in the prescribed form.

Compare: 1953 No 64 s 29(1)–(3) Term of patent 19 (1) The term of every patent is 20 years from the patent date.
(2) However, a patent ceases to have effect on the expiry of the 10 15 20 period prescribed for the payment of any renewal fee if that fee 25 is not paid within that period or within that period as extended under section 20.

Subsection (2) applies despite anything in the patent or any other provision in this Act.
Compare: 1953 No 64 s 30(3), (4) 30 Extension of period for paying renewal fees If the prescribed period for the payment of a renewal fee ex­ pires before the date that is 4 months after the date of the grant of the patent, the period for payment of the renewal fee is ex­ (3) 20 (1) 31 Part 2 cl 21 Patents Bill tended to the date that is 4 months after the date of the grant of the patent.
(3) (2) A patentee may request, in the prescribed manner (if any), that the prescribed period for the payment of a renewal fee (including any extension of the period under subsection (1)) 5 be extended to any date that is not more than 6 months after the expiry of the prescribed period.
The Commissioner must extend the prescribed period for the payment of the renewal fee to the date requested under sub­ section (2) if, before that date,— (a) (b) (c) Compare: 1953 No 64 s 30(4), (5) the request under subsection (2) is made; and the renewal fee is paid; and the prescribed penalty (if any) is paid.
10 Subpart 3—Patent ownership Who may be granted patent 21 Who may be granted patent (1) A patent for an invention may only be granted to a person who— (a) (b) (c) is the inventor; or derives title to the invention from the inventor; or is the personal representative of a deceased person men­ tioned in paragraph (a) or (b).

(2) A patent may be granted to a person whether or not the person is a New Zealand citizen.
Compare: Patents Act 1990 s 15 (Aust) Power of patentee to deal with patent Power of patentee to deal with patent 22 (1) A patentee may (subject to any rights vested in other persons 15 20 25 that are entered in the patents register) deal with the patent 30 as the absolute owner of it and give good discharges for any consideration for that dealing.
This section does not protect a person who deals with a pa­ tentee otherwise than as a purchaser in good faith for value and without notice of any fraud on the part of the patentee.

35 (2) 32 Patents Bill Part 2 cl 25 (3) This section is subject to section 16(3).

Compare: Patents Act 1990 s 189(1), (2) (Aust) Co­owners of patent 23 (1) (2) Co­ownership of patent If a patent is granted to 2 or more persons, each of those per­ 5 sons is entitled to an equal undivided share in the patent.
If 2 or more persons are patentees of the patent, each of those persons is entitled to exercise the exclusive rights given by the patent for the person’s own beneﬁt without accounting to the others.

10 (3) However, a licence under a patent must not be granted, and a share in a patent must not be assigned, except with the consent of all patentees of the patent (other than the licensor or assig­ nor).

Subsections (1) to (3) are subject to any agreement to the 15 contrary between the patentees of the patent.
This section is subject to any direction of the Commissioner under section 25.

(5) (4) (6) Nothing in subsection (1) or (2) affects the mutual rights or obligations of trustees or of the personal representatives of a 20 deceased person, or their rights or obligations as trustees or personal representatives.
Compare: 1953 No 64 s 63(1)–(3), (5) 24 25 (1) Rights of buyers from co­owners of patent If a patented product, or a product of a patented process, is 25 sold by any of 2 or more persons who are patentees of a patent, the buyer, and a person claiming through the buyer, may deal with the product as if the product had been sold by all of the patentees.
Compare: 1953 No 64 s 63(4); Patents Act 1990 s 16(2) (Aust) 30 Power of Commissioner to give directions to co­owners If 2 or more persons are patentees of a patent, the Commis­ sioner may, on the request of any of them in the prescribed manner, give any directions in accordance with the request that the Commissioner thinks ﬁt.
35 33 Part 2 cl 26 Patents Bill (2) (3) The directions under subsection (1) must relate to— (a) (b) (c) the sale or lease of the patent or any interest in it; or the grant of licences; or the exercise of any right under section 23 in relation to the patent.
5 If any patentee fails to do anything required to carry out a direction given under subsection (1) within 14 days after being asked in writing to do so by any of the other patentees, the Commissioner may, on the request of any of them in the prescribed manner, direct a person to do that thing in the name 10 and on behalf of the person in default.
Compare: 1953 No 64 s 64(1), (2) 26 Miscellaneous provisions concerning directions (1) Before giving a direction under section 25, the Commis­ sioner must— (a) give a reasonable opportunity to be heard,— (i) in the case of a request under section 25(1), to the patentees of the patent; and in the case of a request under section 25(3), to the person in default; and (ii) 15 20 (b) have regard to the terms of any agreement between the patentees of the patent that are brought to the Commis­ sioner’s notice.
The Commissioner must not give a direction that— (a) affects the rights or obligations of a trustee or of the per­ 25 sonal representative of a deceased person, or rights or obligations arising out of either of those relationships; or is inconsistent with the terms of an agreement between the patentees of the patent.
30 (b) Compare: 1953 No 64 s 64(3), (5); Patents Act 1990 s 17(3), (4) (Aust) Disputes as to inventions made by employees Disputes as to inventions made by employees This section and sections 28 and 29 apply if a dispute arises between an employer and a person who is, or was at the mater­ 35 (2) 27 (1) 34 Patents Bill Part 2 cl 28 ial time, his, her, or its employee as to the rights of the parties in respect of— (a) an invention made by the employee, either alone or jointly with any other person; or any patent granted, or to be granted, in respect of an 5 invention referred to in paragraph (a).
(b) (2) The Commissioner may, on a request made to him or her in the prescribed manner by either of the parties and after giving to each of them a reasonable opportunity to be heard,— (a) (b) make any orders for giving effect to his or her decision determine the matter in dispute; and 10 as he or she considers expedient.
(3) However, if it appears to the Commissioner that, in relation to any request under this section, the matter in dispute involves questions that would more properly be determined by the Au­ 15 thority, he or she may decline to deal with the matter.

(4) A decision of the Commissioner under this section or sec­ tion 28 has the same effect as between the parties and persons claiming under them as a decision of the Authority.
Section 161 of the Employment Relations Act 2000 does not 20 limit this section or section 28 or 29.

The parties to a dispute or review under this section or section 28 or 29 are the employer and employee.

In this section and sections 28 and 29, Authority means the Employment Relations Authority established by section 156 25 of the Employment Relations Act 2000.
Compare: 1953 No 64 s 65(1), (3) (7) (6) (5) 28 (1) (2) Employment Relations Authority or Commissioner may apportion beneﬁt of invention and of patent In proceedings before the Authority, or on a request made to 30 the Commissioner under section 27, the Authority or Com­ missioner may make an order speciﬁed in subsection (2) (un­ less satisﬁed that one or other of the parties is entitled, to the exclusion of the other, to the beneﬁt of an invention made by an employee).
The order referred to in subsection (1) is an order providing for the apportionment between the employer and employee of 35 35 Part 2 cl 29 Patents Bill the beneﬁt of the invention, and of any patent granted or to be granted in respect of the invention, in the manner that the Authority or Commissioner considers just.
Compare: 1953 No 64 s 65(2) Review of Commissioner’s decision 29 (1) A person who is aggrieved by a decision of the Commissioner under section 27 or 28 may apply to the Authority for a review of the decision.

(2) An application for review must be made within— (a) (b) 20 working days after the date of the decision; or any further time the Authority allows on an application made before or after that period expires.
(3) The Authority— (a) may conﬁrm, reverse, or modify the decision of the Commissioner; and (b) may make any other decision that the Commissioner 5 10 15 could have made.

(4) The Authority must not review any decision made under sec­ tion 27 or 28, or part of a decision made under those sections, that is not the subject of an application under subsection (1).
20 (5) A decision against which an application is made under sub­ section (1) continues in force pending the determination of the review unless the Authority orders otherwise.

Compare: 1953 No 64 s 65(4) Part 3 Process for obtaining grant of patent and other matters Subpart 1—Patent applications 25 Right to apply for patent Any person may apply for a patent either alone or jointly with 30 another person.
Compare: Patents Act 1977 s 7(1) (UK) 30 36 Patents Bill Part 3 cl 33 31 Application requirements Every patent application must be made in accordance with this Act and the manner prescribed by the regulations.

(2) 32 (1) Commissioner may post­date application or speciﬁcation The Commissioner may, on the request of the applicant in the 5 prescribed manner (if any), direct that a patent application be post­dated to the date that is speciﬁed in the request.
The Commissioner must not exercise the power under sub­ section (1) after the acceptance of the complete speciﬁcation.

(3) A patent application must not be post­dated under subsection 10 (1) to a date later than 6 months after the date that it was ac­ tually made or would, but for subsection (1), be treated as having been made.
(4) A convention application must not be post­dated under sub­ (5) 33 (1) (2) (3) section (1) to a date later than the last date that, under the 15 provisions of this Act, the application could have been made.

If an application or speciﬁcation ﬁled under this Act is amended before acceptance of the complete speciﬁcation, the Commissioner may direct that the application or speciﬁcation be post­dated to the date that the amendment is ﬁrst ﬁled.
Compare: 1953 No 64 s 12(3), (4) 20 Divisional applications If a patent application has been made (but has not become void or been abandoned), the applicant may, before the acceptance of the complete speciﬁcation and in the prescribed manner, 25 make a fresh patent application for any part of the subject mat­ ter of the original application.

The Commissioner may direct that the fresh patent application be given an earlier date if a request to that effect is made in the prescribed manner.
The earlier date must not be earlier than the ﬁling date of the original patent application.

Compare: 1953 No 64 s 12(5) 30 37 Part 3 cl 34 Patents Bill 34 (1) (2) Subpart 2—Speciﬁcations Complete and provisional speciﬁcations Every patent application must— (a) be accompanied by a complete speciﬁcation or a provi­ sional speciﬁcation unless the application is a conven­ 5 tion application; and be accompanied by a complete speciﬁcation if the ap­ plication is a convention application.
(b) The Commissioner may direct that a speciﬁcation that purports to be a complete speciﬁcation be treated as a provisional spe­ 10 ciﬁcation if— (a) the applicant requests, at any time before the acceptance of the speciﬁcation, that the Commissioner make that direction; and the patent application is not a convention application.
(b) 15 (4) (3) A person is not entitled to make a request under subsection (2) if the patent application and speciﬁcation ﬁled in respect of the application have become open to public inspection.

If the Commissioner makes a direction under subsection (2), the complete speciﬁcation must be treated, for the purposes of 20 this Act, to be, and to have always been, a provisional speci­ ﬁcation.
The Commissioner may cancel a provisional speciﬁcation and post­date the patent application to the ﬁling date of a complete speciﬁcation if— (a) (5) 25 a complete speciﬁcation has been ﬁled for a patent ap­ plication that was accompanied by a provisional spe­ ciﬁcation or by a speciﬁcation treated as a provisional speciﬁcation under subsection (2); and the applicant requests, at any time before the acceptance 30 of the complete speciﬁcation, that the Commissioner cancel the provisional speciﬁcation and post­date the application.
(b) Compare: 1953 No 64 s 9(1), (4), (5) 38 Patents Bill Part 3 cl 37 35 (1) (2) Filing of complete speciﬁcation after provisional speciﬁcation has been ﬁled If a patent application is accompanied by a provisional speciﬁ­ cation, 1 or more complete speciﬁcations must be ﬁled within the period allowable under subsection (2).
The period allowable is— (a) 5 the period within 12 months from the ﬁling date of the patent application; or an extended period not exceeding the prescribed period if, on or before the date on which the complete speciﬁ­ 10 cation is ﬁled,— (i) a request to that effect is made to the Commis­ sioner in the prescribed manner (if any); and the prescribed penalty (if any) is paid.
(ii) (b) (4) (3) A patent application referred to in subsection (1) must be 15 treated as having been abandoned if a complete speciﬁcation is not ﬁled within the period allowable under subsection (2).
If 2 or more patent applications accompanied by provisional speciﬁcations have been ﬁled for inventions that are cognate, or of which one is a modiﬁcation of another,— (a) a single complete speciﬁcation may be ﬁled for those applications; or 20 (5) 36 37 (1) (b) more than 1 complete speciﬁcation may be ﬁled for those applications with the leave of the Commissioner.

Subsection (4) is subject to subsections (1) to (3) and sec­ 25 tions 36 to 42.
Compare: 1953 No 64 s 9(2), (3); Patents Act 1990 s 37 (Aust) Contents of provisional speciﬁcation Every provisional speciﬁcation must— describe the invention; and (a) (b) include any other prescribed information.
Compare: 1953 No 64 s 10(1) 30 Contents of complete speciﬁcation Every complete speciﬁcation must— (a) particularly describe the invention and the method by 35 which it is to be performed; and 39 Part 3 cl 38 Patents Bill (b) (c) disclose the best method of performing the invention that is known to the applicant and for which there is an entitlement to claim protection; and end with a claim or claims deﬁning the scope of the invention claimed; and include any other prescribed information.
(2) (d) The claim or claims must— (a) (b) relate to one invention only; and be clear, succinct, and fairly based on the matter dis­ closed in the speciﬁcation.
5 10 (3) A complete speciﬁcation ﬁled after a provisional speciﬁcation, or ﬁled with a convention application, may include claims con­ cerning developments of, or additions to, the invention that was described in the provisional speciﬁcation or the invention for which the application for protection was made in a con­ 15 vention country (as the case may be) if those developments or additions are developments or additions for which the appli­ cant would be entitled to make a separate patent application under subpart 1.
If a complete speciﬁcation claims a new substance, the claim 20 must not be construed as extending to that substance when found in nature.

Compare: 1953 No 64 s 10(1), (3), (4), (6), (7) (4) Supply of drawings 38 (1) Drawings may be supplied for the purposes of any speciﬁca­ 25 tion.

(2) Drawings must be supplied for the purposes of a speciﬁcation if the Commissioner requires drawings to be supplied.
(3) Drawings supplied under this section form part of the speciﬁ­ cation unless the Commissioner directs otherwise.
Compare: 1953 No 64 s 10(2) 30 Speciﬁcations for micro­organisms To the extent that an invention is a micro­organism, the complete speciﬁcation complies with section 37(1)(a) and (b), so far as those paragraphs require a description of the 35 micro­organism, the deposit requirements if, and only if, 39 (1) 40 (2) (3) (4) 40 (1) Patents Bill Part 3 cl 40 (c) (b) than the 5 the use, modiﬁcation, or speciﬁed in section 40 are satisﬁed in relation to the mi­ cro­organism.
Subsection (3) applies if— (a) an invention involves cultivation of a micro­organism, other micro­organism mentioned in subsection (1); and a person skilled in the relevant art in New Zealand could not reasonably be expected to perform the invention without having a sample of the micro­organism before starting to perform the invention; and the micro­organism is not reasonably available to a per­ son skilled in the relevant art in New Zealand.
The complete speciﬁcation complies with section 37(1)(a) and (b), to the extent that those paragraphs require a descrip­ tion of the micro­organism, if, and only if, the deposit require­ 15 ments speciﬁed in section 40 are satisﬁed in relation to the micro­organism.

For this section and section 42, a micro­organism may be reasonably available to a person even if it is not so available in New Zealand.
Compare: Patents Act 1990 s 41 (Aust) the purposes of 20 10 Deposit requirements for micro­organisms The deposit requirements are satisﬁed in relation to a micro­ organism to which a speciﬁcation relates if, and only if,— (a) the micro­organism was, on or before the ﬁling date of 25 the speciﬁcation, deposited with a prescribed deposit­ ary institution in accordance with the rules relating to micro­organisms; and the applicant for the patent provides to the Commis­ sioner, within the prescribed period, a receipt for the 30 deposit from the prescribed depositary institution; and the speciﬁcation includes, at the ﬁling date of the speci­ ﬁcation, all relevant information on the characteristics of the micro­organism that is known to the applicant; and at all times since the end of the prescribed period, the speciﬁcation has included— 35 (b) (c) (d) 41 Part 3 cl 41 Patents Bill (i) (ii) the name of a prescribed depositary institution from which samples of the micro­organism are obtainable as provided by the rules relating to micro­organisms; and the ﬁle, accession, or registration number of the 5 deposit given by the institution; and (e) at all times since the ﬁling date of the speciﬁcation, sam­ ples of the micro­organism have been obtainable from a prescribed depositary institution as provided by those rules.
For the purposes of subsection (1)(b), the receipt for the de­ posit must be in the prescribed form (if any).
Compare: Patents Act 1990 s 6 (Aust) Deposit requirements treated as satisﬁed in certain circumstances This section applies if— (a) the requirements speciﬁed in section 40(1)(d) or (e) cease to be satisﬁed in relation to a micro­organism; and steps are taken at a later time within the prescribed period in accordance with all applicable provisions of 20 the regulations (if any); and as a result of those steps, if the period during which those requirements are not satisﬁed is disregarded, those requirements would be satisﬁed at that later time.
If this section applies,— (a) the requirements speciﬁed in section 40(1)(d) and (e) must be treated as having been satisﬁed during the period mentioned in subsection (1)(c); and the provisions that are prescribed have effect for the pro­ tection or compensation of persons who availed them­ 30 selves, or took deﬁnite steps by way of contract or other­ wise to avail themselves, of the invention during that period.
(b) (c) (b) Compare: Patents Act 1990 s 41(4) (Aust) 10 15 25 (2) 41 (1) (2) 42 Patents Bill Part 3 cl 45 42 Micro­organism ceasing to be reasonably available (1) A patent may be revoked on the ground referred to in section 106(1)(c) (which relates to complete speciﬁcations that do not comply with section 37(1)) if— (a) the patent was granted for an invention that involves the 5 use, modiﬁcation, or cultivation of a micro­organism, other than a micro­organism mentioned in section 39(1); and the micro­organism was, at the ﬁling date of the com­ plete speciﬁcation, reasonably available to a person 10 skilled in the relevant art in New Zealand; and the micro­organism has ceased to be reasonably avail­ able to a person skilled in the relevant art in New Zealand.
(b) (c) (2) This section does not limit section 37(1).

15 Subpart 3—Treaty applications 43 Treaty application treated as application accompanied by complete speciﬁcation For the purposes of this Act, a Treaty application must be treated as a patent application accompanied by a complete spe­ 20 ciﬁcation.

Compare: 1953 No 64 s 26A 44 (1) Description, claims, and drawings The description, claims, and drawings (if any) contained in a Treaty application must be treated as a complete speciﬁcation.
25 (2) An indication, in relation to a deposited micro­organism given under rule 13bis.4 of the Treaty regulations, in relation to a Treaty application, must be taken to be included in the descrip­ tion contained in the Treaty application even if the indication is contained in another document.

Compare: 1953 No 64 s 26B; Patents Act 1990 s 88(5) (Aust) 45 International ﬁling date A Treaty application must be treated as having been ﬁled in New Zealand on its international ﬁling date.
Compare: 1953 No 64 s 26C 30 35 43 Part 3 cl 46 Patents Bill Commissioner must provide international ﬁling date in certain circumstances The Commissioner must give an international application an international ﬁling date if— (a) a request contained in the international application spe­ 5 ciﬁes New Zealand as a designated State under Article 4(1)(ii) of the Patent Cooperation Treaty; and 1 or more of the following applies: (i) (b) the receiving Ofﬁce has refused to accord the international application an international ﬁling 10 date under Article 11(1) of the Patent Cooper­ ation Treaty: the receiving Ofﬁce has declared that the inter­ national application is considered withdrawn: the International Bureau has made a ﬁnding 15 under Article 12(3) of the Patent Cooperation Treaty that the international application is con­ sidered withdrawn; and (ii) (iii) (c) the Commissioner has decided under Article 25(2)(a) of the Patent Cooperation Treaty that the refusal or the 20 declaration or the ﬁnding was the result of a mistake on the part of the receiving Ofﬁce or the International Bureau.
The date given under subsection (1) must be the date of re­ ceipt of the application by the receiving Ofﬁce under Article 25 11(1) of the Patent Cooperation Treaty.

If the date of receipt of the application by the receiving Ofﬁce cannot be ascertained, the Commissioner may give the appli­ cation an international ﬁling date.

This Act applies to the application in accordance with this sec­ 30 tion.
This section does not apply to an international application that has been ﬁled in a receiving Ofﬁce in a language other than English, unless a translation of that application into English that has been veriﬁed to the satisfaction of the Commissioner 35 has been provided to the Commissioner.
Compare: 1953 No 64 s 26D 46 (1) (2) (3) (4) (5) 44 47 (1) (2) (3) (4) Patents Bill Part 3 cl 48 Amendments to documents forming part of complete speciﬁcation Subsection (2) applies if an English translation of a Treaty application— (a) (b) has been ﬁled with the Commissioner; or has been published under Article 21 of the Patent Co­ operation Treaty by the International Bureau.
5 The description, claims, and any matter associated with the drawings contained in the Treaty application must be treated for the purposes of this Act as having been amended, on the 10 day the translation was ﬁled, by substituting the translated documents for those originally ﬁled.
The description, claims, and drawings contained in a Treaty application must be treated for the purposes of this Act as hav­ ing been amended on the day that an amendment was made 15 if— (a) the Treaty application has been amended under Article 19(1) of the Patent Cooperation Treaty; or the Treaty application has been amended under Article 34 of the Patent Cooperation Treaty, and New Zealand 20 has been chosen by the applicant to be an elected State under Article 31(4)(a) of the Patent Cooperation Treaty within the prescribed time limit.
(b) If a Treaty application has been rectiﬁed under rule 91 of the Treaty regulations, the description, claims, and drawings con­ 25 tained in that Treaty application must be treated, for the pur­ poses of this Act, as having been amended on the application’s international ﬁling date.
Compare: 1953 No 64 s 26E Treaty application void 48 (1) A Treaty application must be treated as void for the purposes 30 of this Act if— (a) an applicant withdraws the applicant’s international ap­ plication, or withdraws the application in relation to New Zealand as a designated State; or an international application is considered to be with­ drawn in accordance with Article 12(3), 14(1)(b), 14(3)(a), or 14(4) of the Patent Cooperation Treaty; or 35 (b) 45 Part 3 cl 49 Patents Bill (2) 49 (1) (c) (d) (e) the designation of New Zealand as a designated State is considered to be withdrawn in accordance with Article 14(3)(b) of the Patent Cooperation Treaty; or the applicant fails to fulﬁl the applicant’s obligations under Article 22(1) of the Patent Cooperation Treaty 5 within the prescribed time limit; or the applicant fails to fulﬁl the applicant’s obligations under Article 39(1)(a) of the Patent Cooperation Treaty within the prescribed time limit.
Subsection (1)(b) and (c) are subject to Article 25 of the 10 Patent Cooperation Treaty.
Compare: 1953 No 64 s 26F Requirements for examination of Treaty application The Commissioner must not, in relation to a Treaty applica­ tion, exercise the Commissioner’s powers under subpart 6 15 (which relates to examination of patent applications) until— the applicant has fulﬁlled the applicant’s obligations (a) under Article 22(1) or 39(1) of the Patent Cooperation Treaty; and the prescribed time limit has expired; and if applicable, a translation of the international applica­ tion into English has been ﬁled with the Commissioner and veriﬁed to the satisfaction of the Commissioner; and all documents required to be ﬁled under this Act and the 25 regulations have been ﬁled; and all fees required to be paid under this Act and the regu­ lations have been paid.
(b) (c) (d) (e) 20 (2) However, the Commissioner may, on the express request of the applicant, exercise the Commissioner’s powers under sub­ 30 part 6 at any time.
Compare: 1953 No 64 s 26G Subpart 4—Convention applications 50 Convention applicants may make convention applications (1) A convention applicant in relation to a basic application may 35 make a convention application, or 2 or more of those con­ 46 Patents Bill Part 3 cl 51 vention applicants may make a joint convention application, within the period of 12 months from the day on which a basic application is ﬁrst made in a convention country in respect of the invention.
For the purposes of this Act,— (a) 5 (2) (b) (c) the ﬁling of a complete speciﬁcation in a convention country after the ﬁling of a provisional speciﬁcation in relation to an application for protection must be treated as a basic application made in that country; and a person must be treated as having made a basic appli­ 10 cation in a convention country in respect of an invention if the person has made an application for protection in respect of the invention by an application that,— (i) in accordance with the terms of a treaty subsist­ ing between that convention country and any 1 or 15 more other convention countries, is equivalent to a basic application duly made in any one of those convention countries; or in accordance with the law of that convention country, is equivalent to a basic application duly 20 made in that convention country; and (ii) a matter must be treated as having been disclosed in a basic application made in a convention country if it was claimed or disclosed (otherwise than by way of dis­ claimer or acknowledgment of prior art) in that applica­ 25 tion or in documents submitted by the convention ap­ plicant in support of, and at the same time as, that ap­ plication.
(3) Despite subsection (2)(c), no account may be taken of any disclosure effected by any of the documents referred to in that 30 paragraph unless a copy of the document is ﬁled with the con­ vention application or within the period as may be prescribed after the ﬁling of that application.

51 How convention applications are made and dealt with (1) A convention application must be made and dealt with in the 35 same manner as any other patent application.
(2) However, a patent application that is a convention application must— 47 Part 3 cl 52 Patents Bill (a) (b) (c) include the prescribed information relating to the rele­ vant basic application; and be accompanied by a complete speciﬁcation in accord­ ance with section 34(1); and be made and dealt with in accordance with any other 5 additional or different requirements prescribed for con­ vention applications by this Act or regulations.
52 Withdrawn, abandoned, or refused basic applications For the purposes of this Act, if more than 1 basic application has been made for an invention, a previously ﬁled basic appli­ 10 cation (basic application A) must be disregarded and a subse­ quently ﬁled basic application (basic application B) must be substituted for basic application A if— (a) basic application A was made in, or in respect of, the same convention country and by the same applicant as 15 basic application B; and not later than the ﬁling date of basic application B, basic application A was unconditionally withdrawn, aban­ doned, or refused; and basic application A had not been made available to the 20 public in New Zealand or elsewhere before its uncondi­ tional withdrawal, abandonment, or refusal; and no rights remain outstanding in respect of basic appli­ cation A; and basic application A has not served to establish a right 25 of priority in relation to another application in any con­ vention country.
(b) (c) (d) (e) Compare: 1953 No 64 s 7(2A) 53 (1) Basic applications for 2 or more cognate inventions If basic applications have been made in 1 or more convention 30 countries for 2 or more inventions that are cognate or of which one is a modiﬁcation of another, a single convention applica­ tion may be made for those inventions at any time within 12 months from the date of the earliest of the basic applications.
(2) Despite subsection (1), the requirements of section 35 51(2)(a) apply separately to the basic applications for each of the inventions referred to in subsection (1).

48 5 10 15 Patents Bill Part 3 cl 56 Subpart 5—Priority dates 54 (1) Priority date of claims of complete speciﬁcation Every claim of a complete speciﬁcation has effect from the date prescribed by this subpart as the priority date of that claim.
(2) A patent is not invalidated— (a) by reason only that the invention, so far as claimed in a claim, has been made available to the public (whether in New Zealand or elsewhere) on or after the priority date of the claim by written or oral description, by use, or in any other way; or by the grant of another patent on a speciﬁcation claim­ ing the same invention in a claim of the same or a later priority date.
Compare: 1953 No 64 s 11(1) (b) 55 56 (1) Priority date if complete speciﬁcation ﬁled for single application The priority date of a claim is the ﬁling date of the patent ap­ plication if— (a) the complete speciﬁcation is ﬁled for a single applica­ tion that was accompanied by a provisional speciﬁca­ 20 tion or by a speciﬁcation that is treated as a provisional speciﬁcation; and the claim is fairly based on the matter disclosed in that provisional speciﬁcation.
(b) Compare: 1953 No 64 s 11(2) 25 Priority date if complete speciﬁcation ﬁled for 2 or more applications This section applies if— (a) the complete speciﬁcation is ﬁled or proceeded with in relation to 2 or more patent applications that were ac­ 30 companied by provisional speciﬁcations or by speciﬁ­ cations that are treated as provisional speciﬁcations; and the claim is fairly based on the matter disclosed in at least 1 of those provisional speciﬁcations.
(b) 49 Part 3 cl 57 Patents Bill The priority date of the claim is the ﬁling date of the patent application that is accompanied by the speciﬁcation that ﬁrst disclosed the matter on which the claim is fairly based.
Compare: 1953 No 64 s 11(3) Priority date for convention applications This section applies if the complete speciﬁcation is ﬁled for a convention application and the claim is fairly based on the matter disclosed— (a) in the application for protection in a convention coun­ try; or if the convention application is founded on more than 1 application for protection in a convention country, in at least 1 of those applications for protection.
(b) 5 10 The priority date of the claim is the date of the relevant appli­ cation for protection that ﬁrst disclosed the matter on which 15 the claim is fairly based.
Compare: 1953 No 64 s 11(4) Priority date for Treaty applications This section applies if— (a) (b) (c) the patent application that relates to the complete speci­ 20 ﬁcation that contains the claim is a Treaty application; and that Treaty application claims the priority of an earlier application under Article 8 of the Patent Cooperation Treaty; and that earlier application is— (i) 25 an application made in New Zealand not more than 12 months before the international ﬁling date of the Treaty application; or an application for protection for an invention, 30 made in a convention country not more than 12 months before the international ﬁling date of the Treaty application, that is the ﬁrst application made in a convention country for the invention; or 35 (ii) (2) 57 (1) (2) 58 (1) 50 Patents Bill Part 3 cl 60 (iii) an application for protection for an invention made in a convention country after an applica­ tion referred to in subparagraph (ii); and the claim is fairly based on the matter disclosed in that earlier application or in a speciﬁcation ﬁled for that ear­ 5 lier application.
(d) The priority date of the claim is,— (a) (b) if the claim is fairly based on the matter disclosed in that earlier application, the ﬁling date of that application; or in any other case, the ﬁling date of the speciﬁcation for 10 the earlier application that ﬁrst disclosed the matter on which the claim is fairly based.
Rules that apply if 2 or more priority dates apply or other rules do not apply If, under sections 56 to 58, a claim would, but for this pro­ 15 vision, have 2 or more priority dates, the priority date of that claim is the earlier or earliest of those dates.

If sections 55 to 58 do not apply to any case, the priority date of a claim is the ﬁling date of the complete speciﬁcation.
Compare: 1953 No 64 s 11(5), (6) 20 Subpart 6—Examination Examination The Commissioner must examine a patent application and the complete speciﬁcation relating to the application and report on— (a) whether the speciﬁcation complies with subpart 2 (which relates to speciﬁcation requirements); and (b) whether, to the best of the Commissioner’s knowledge, the invention, so far as claimed, is a patentable inven­ tion under section 13; and all other matters (if any) that are prescribed.
(c) The examination must be carried out in the prescribed manner.

The Commissioner must give a copy of the report to the appli­ cant after it is issued.
Compare: Patents Act 1990 s 45 (Aust) 25 30 35 51 (2) 59 (1) (2) 60 (1) (2) (3) Part 3 cl 61 Patents Bill 61 (1) Commissioner may refuse to proceed with application or require application or speciﬁcation to be amended This section applies if, after examining under section 60 a patent application and any speciﬁcation ﬁled in relation to the application, the Commissioner reports that— (a) the application or any of those speciﬁcations do not comply with the requirements of this Act or of the regu­ lations; or the invention, so far as claimed, is not a patentable in­ vention under section 13; or there is any other lawful ground of objection to the grant of a patent in respect of the application.
(b) (c) (2) The Commissioner— (a) must state the grounds of objection when reporting on an examination; and (b) may— (i) (ii) refuse to proceed with the patent application; or require the applicant to amend the patent appli­ cation or any speciﬁcation before the Commis­ sioner proceeds with the application.
62 (1) Applicants must act by deadline if deadline set by Commissioner If the Commissioner has acted under section 61(2)(b)(ii), the applicant must, by the deadline set by the Commissioner (if any),— (a) (b) respond to the report; and take reasonable steps to ensure that the response is a substantive response.
(2) After each response, the Commissioner may issue a further re­ port under section 60, and, if the Commissioner still believes 30 that 1 or more of the following applies, the Commissioner may act under section 61: (a) the patent application or any speciﬁcation ﬁled in rela­ tion to the application does not comply with the require­ ments of this Act or of the regulations: the invention, so far as claimed, is not a patentable in­ vention under section 13: 35 (b) 52 (3) (4) (5) 63 64 (1) (2) Patents Bill Part 3 cl 64 (c) there is any other lawful ground of objection to the grant of a patent in respect of the application.
If the Commissioner has issued a further report under section 60 and acted under section 61, the applicant must, by the deadline set by the Commissioner (if any),— (a) (b) respond to the report; and take reasonable steps to ensure that the response is a substantive response.

The Commissioner must set deadlines (if any) in the pre­ scribed manner.
For the purposes of this section, a substantive response is a response that, in the opinion of the Commissioner,— (a) (b) (c) gives a fair and substantial answer to the report issued by the Commissioner; or gives a fair and substantial answer to the report issued 15 by the Commissioner and amends the application or speciﬁcation to remove 1 or more of the grounds of ob­ jection raised by the Commissioner in the report; or amends the application or speciﬁcation to remove all of the grounds of objection raised by the Commissioner in 20 the report.
5 10 Application treated as abandoned if applicant fails to act within set deadline A patent application must be treated as having been abandoned if the Commissioner is satisﬁed that the applicant has failed to 25 comply with section 62.

Commissioner must examine amended speciﬁcation The Commissioner must examine an amended complete speci­ ﬁcation in the same manner as the original speciﬁcation if the speciﬁcation is amended following the issue of a report under 30 section 60.
Subsection (1) does not apply after the complete speciﬁca­ tion is accepted.
Compare: 1953 No 64 s 18(2) 53 Part 3 cl 65 Patents Bill 65 (1) (2) Duty to inform Commissioner of search results The applicant must, in the prescribed manner, inform the Com­ missioner of the results of any documentary searches by, or on behalf of, a foreign patent ofﬁce carried out for the pur­ pose of assessing the patentability of an invention disclosed in 5 the complete speciﬁcation or a corresponding application ﬁled outside New Zealand.
Subsection (1)— (a) does not apply to a search if the search is prescribed as a type of search to which this section does not apply; and 10 applies only to searches completed before the grant of the patent.
(b) (3) A search is completed on the earliest of— (a) (b) (c) the date, if any, speciﬁed in the search report as the date that the report was issued; and the date, if any, speciﬁed in the search report as the date that the search was completed; and the date that the search results were issued to the appli­ cant or patentee by the foreign patent ofﬁce.
15 In this section, foreign patent ofﬁce means an ofﬁce, organ­ 20 isation, or other body that may grant protection in respect of an invention in a country outside New Zealand.
Compare: Patents Act 1990 s 45(3) (Aust) Consequences of breach of duty An amendment of a complete speciﬁcation relating to a patent 25 is not allowable and must not be made if— (a) the patentee or the patentee’s predecessor in title breaches or breached section 65 in relation to the patent; and the effect of the proposed amendment would be to re­ 30 move a lawful ground of objection in relation to sec­ tion 13(b) to the speciﬁcation arising from the exis­ tence of some or all of the information not provided under section 65.
(b) (4) 66 54 Patents Bill Part 3 cl 68 Subpart 7—Acceptance and publication Time for putting application in order for acceptance Time for putting application in order for acceptance 67 (1) A patent application is void unless, within the prescribed 5 period, the applicant ensures that— (a) (b) the application and the complete speciﬁcation comply with the requirements of this Act and of the regulations; and the invention, so far as claimed, is a patentable inven­ 10 tion under section 13; and there is no other lawful ground of objection to the grant of a patent in respect of the application.
(2) Deadlines set by the Commissioner under section 62 cannot (c) extend the prescribed period under subsection (1).

15 (3) Nothing in this section limits the power of the Commissioner to treat a patent application as having been abandoned under section 63.
Compare: 1953 No 64 s 19(1), (1A) 68 (1) Time may be extended if appeal pending or possible This section applies if, at the expiry of the prescribed period under section 67,— (a) 20 an appeal to the court is pending under any of the provi­ sions of this Act in respect of the patent application; or an appeal to the court is pending under any of the pro­ 25 visions of this Act, in the case of an application for a patent of addition, in respect of either that application or the patent application for the main invention; or the time within which an appeal referred to in para­ graph (a) or (b) may be brought under section 30 261(2)(b)(i) has not expired.
(b) (c) (2) The court may extend the period that applies under section 67 if an appeal referred to in subsection (1)(a) or (b) is pending or is brought within the time referred to in subsection (1)(c) or before the expiry of any extension of that time granted (in 35 the case of a ﬁrst extension) on an application made within that 55 Part 3 cl 69 Patents Bill (3) 69 (1) time or (in the case of a subsequent extension) on an applica­ tion made before the expiry of the last previous extension.
If no appeal referred to in subsection (1)(a) or (b) is pend­ ing or is so brought, the period that applies under section 67 continues until the end of the time referred to in subsection 5 (1)(c), or, if any extension of that time is granted, until the ex­ piry of the extension or last extension so granted.
Compare: 1953 No 64 s 19(3) Notice of entitlement must be ﬁled before acceptance The applicant must ﬁle, in the prescribed manner, a notice stat­ 10 ing the grounds on which the nominated person is entitled to be granted the patent under section 21— (a) before the expiry of the prescribed period under sec­ tion 67; or before the expiry of the extension or last extension 15 under section 68 (if the prescribed period under sec­ tion 67 is extended under that section).
(b) (2) For the purposes of this Act, the applicant may be taken to be the nominated person.

(3) However, if the applicant is not the nominated person or is not 20 the only nominated person, the applicant must identify all of the nominated persons in the notice referred to in subsection (1).

Subsection (2) does not limit subsection (1).

(4) (5) A patent application is void if the applicant does not comply 25 with this section.
Acceptance Acceptance of complete speciﬁcation The Commissioner must, after the applicant has complied with the requirements referred to in sections 67(1) and 69, accept 30 the complete speciﬁcation relating to a patent application if the Commissioner is satisﬁed, on the balance of probabilities, that— (a) the application and the speciﬁcation comply with the requirements of this Act and of the regulations; and 35 70 (1) 56 (2) (3) (4) 71 (1) (2) (3) 72 (1) Patents Bill Part 3 cl 72 (b) (c) the invention, so far as claimed, is a patentable inven­ tion under section 13; and there is no other lawful ground of objection to the grant of a patent in respect of the application.
give notice of the acceptance to the applicant; and publish the acceptance in the journal.

The Commissioner must, after acceptance of a complete spe­ 5 ciﬁcation,— (a) (b) For the purposes of this Act, date of the publication of the ac­ cepted complete speciﬁcation means the date of publication 10 of the journal containing the publication under subsection (2)(b).

This section is subject to sections 67, 68, and 71.
Compare: 1953 No 64 s 20(1), (2) 15 Applicant may request Commissioner to postpone acceptance The applicant may give notice to the Commissioner request­ ing the Commissioner to postpone acceptance of the complete speciﬁcation until a date that is speciﬁed in the notice.

The date speciﬁed in the notice must not be a date that is after 20 the prescribed period.

The Commissioner may postpone acceptance under section 70 if a notice is given under this section.
Compare: 1953 No 64 s 20(1) Publication Publication The Commissioner must publish a notice in the journal that a complete speciﬁcation is open to public inspection if— (a) the speciﬁcation has been ﬁled for a patent application that is not a Treaty application; and a period of 18 months after the earliest priority date claimed in the patent application has ended; and the speciﬁcation is not already open to public inspec­ tion.
(b) (c) 25 30 (2) Subsection (1) does not apply if the patent application is void 35 or has been abandoned.

57 Part 3 cl 73 Patents Bill If a complete speciﬁcation ﬁled in respect of a patent applica­ tion (other than a Treaty application) has not become open to public inspection, the Commissioner must, if asked to do so by the applicant, publish, in the prescribed manner, a notice in the journal that the complete speciﬁcation is open to public 5 inspection.
If section 39(2) applies to a speciﬁcation, the applicant may not make a request under subsection (3) in relation to the speciﬁcation unless the speciﬁcation includes the particulars mentioned in section 40(1)(d).
Compare: Patents Act 1990 s 54(1)–(3) (Aust) 10 Publication in case of divisional applications made as provided for in section 33 The Commissioner must publish a notice in the journal that a complete speciﬁcation ﬁled for a fresh application is open to 15 public inspection if— (a) the fresh application is not a Treaty application and is made in respect of an original application (whether or not the original application is a Treaty application); and the complete speciﬁcation ﬁled for the original applica­ 20 tion was open to public inspection when the fresh appli­ cation was made.
(b) Subsection (3) applies if a fresh application (other than a Treaty application) is made in respect of an original applica­ tion that is not a Treaty application and— (a) a notice is published in the journal that the complete speciﬁcation ﬁled for the original application is open to public inspection; or a notice is published in the journal that the complete speciﬁcation ﬁled for the fresh application is open to 30 public inspection.
(b) 25 The Commissioner must also publish in the journal a notice that,— (a) if subsection (2)(a) applies, the complete speciﬁca­ tion ﬁled for the fresh application is open to public in­ 35 spection; or (3) (4) 73 (1) (2) (3) 58 (4) (5) 74 (1) (2) Patents Bill Part 3 cl 74 (b) if subsection (2)(b) applies, the complete speciﬁca­ tion ﬁled for the original application is open to public inspection.
The Commissioner must also publish in the journal a notice that the complete speciﬁcation ﬁled for a fresh application is 5 open to public inspection if— (a) the fresh application is an application other than a Treaty application and is made in respect of an original application that is a Treaty application; and a notice is published in the journal that the complete 10 speciﬁcation ﬁled for the original application is open to public inspection.
(b) For the purposes of this section,— fresh application means a fresh patent application referred to in section 33 original application means the original patent application re­ ferred to in section 33.

Compare: Patents Act 1990 s 54(4)–(6) (Aust) 15 Documents open to public inspection If a notice is published under section 72 or 73, the speci­ 20 ﬁcation concerned, and the other documents (if any) that are prescribed, are open to public inspection.
If acceptance of a complete speciﬁcation is published under section 70(2)(b) in relation to a patent application, the fol­ lowing documents (being documents that have not already be­ 25 come open to public inspection) are open to public inspection: all documents (other than prescribed documents) ﬁled (a) in relation to the application or the patent, whether be­ fore or after the acceptance or grant: all documents (other than prescribed documents) ﬁled, 30 after the patent ceases, expires, or is revoked, in relation to the former patent: copies of all documents relating to the application or patent (other than prescribed documents) given by the Commissioner to the applicant or patentee, or the for­ 35 mer applicant or patentee.
(b) (c) 59 Part 3 cl 75 Patents Bill (3) A speciﬁcation, or other document, must be taken to have been made available to the public on the day on which it becomes open to public inspection unless it has been made available to the public (whether in New Zealand or elsewhere) otherwise before that day.

Subsection (3) is subject to section 75.


Compare: Patents Act 1990 s 55 (Aust) (4) 5 75 76 (1) (2) Publication of Treaty applications A Treaty application must be taken to have become open to public inspection, and to have been made available to the pub­ 10 lic, on the date that it is published under Article 21 of the Patent Cooperation Treaty.
Certain documents not to be published Except as otherwise provided by or under this Act, documents of the kind mentioned in section 74 or 75— (a) must not be published by the Commissioner or be open 15 (b) to public inspection; and are not liable to be inspected or produced before the Commissioner or in a legal proceeding unless the Com­ missioner, court, or any person having power to order 20 inspection or production, directs that the inspection or production be allowed.
Subsection (1) does not prevent— (a) the Commissioner from publishing the date and number of a patent application and any details of the patent ap­ 25 plication and invention that are required to be given in the patent application form: documents of the kind mentioned in section 74 or 75 being published by the Commissioner and becoming open to public inspection with the consent of the ap­ 30 plicant.
(b) (3) Notice of an application for the production in legal proceed­ ings of a document of the kind mentioned in section 74 or 75 must be given to the Commissioner, who is entitled to be heard on the application.
35 60 Patents Bill Part 3 cl 77 (4) The reports of the Commissioner on the examination of a patent application or speciﬁcation must not, before the ac­ ceptance of the complete speciﬁcation,— (a) be published by the Commissioner or be open to public inspection; or be inspected or produced in any legal proceeding unless the court, or any person having power to order inspec­ tion or production in the proceeding, certiﬁes that it is desirable that the production or inspection be allowed in the interests of justice.
(b) 5 10 (5) A request for information under the Ofﬁcial Information Act 1982 may be refused by the Commissioner or the Ministry, as contrary to this Act, if it would require documents of the kind mentioned in subsection (1) or (4), or information in connection with those documents, to be made available before 15 those documents are open to public inspection.
Compare: 1953 No 64 s 91(2); Patents Act 1990 s 56 (Aust) Effect of publication of complete speciﬁcation 77 (1) After a complete speciﬁcation relating to a patent application (2) (3) has become open to public inspection and until a patent is 20 granted on the application, the nominated person has the same privileges and rights as the nominated person would have had if a patent for the invention had been granted on the day when the speciﬁcation became open to public inspection under sec­ tions 72 to 75.
Subsection (1) does not give the nominated person the right to commence proceedings in respect of any act unless— a patent is granted on the patent application; and (a) the act would, if done after the grant of the patent, have (b) constituted an infringement of a claim of the speciﬁca­ 30 tion.
25 If it is alleged that an infringement has occurred in the period commencing with the date on which the complete speciﬁcation became open to public inspection and ending with the date that the patent is granted, the period of limitation for taking 35 an action for that infringement is the later of— (a) (b) 6 years from the date of the alleged infringement; or 3 years from the date of the grant of the patent.
61 Part 3 cl 78 Patents Bill (4) 78 (1) Subsection (3) applies despite anything to the contrary in the Limitation Act 1950.
Compare: 1953 No 64 s 20(4), (5); Patents Act 1990 s 57(1), (3) (Aust) Defence for period between complete speciﬁcation becoming open to public inspection and acceptance It is a defence to proceedings under section 77(1) in respect of an act done during the speciﬁed period if the defendant proves that a patent could not validly have been granted in respect of the claims (as framed when the act was done) that are alleged to have been infringed by the doing of the act.
(2) An act is done during the speciﬁed period if it is done— (a) after the complete speciﬁcation referred to in section 77(1) became open to public inspection; and before that complete speciﬁcation was accepted.
(b) Compare: Patents Act 1990 s 57(4) (Aust) 5 10 15 Subpart 8—Amendment of speciﬁcations after acceptance 79 General rules concerning amendments of speciﬁcations after acceptance (1) After the acceptance of a complete speciﬁcation, an amend­ 20 ment to that speciﬁcation is not allowable and must not be made, except for the purpose of correcting an obvious mis­ take, if the effect of the amendment is that— (a) the speciﬁcation as amended would claim or describe matter that was not in substance disclosed in the speci­ 25 ﬁcation before the amendment; or a claim of the speciﬁcation as amended would not fall wholly within the scope of a claim of the speciﬁcation before the amendment.
(b) If, after the date of the publication of the accepted complete 30 speciﬁcation, any amendment of the speciﬁcation is allowed by the Commissioner or the court,— (a) the right of the patentee or applicant to make the amend­ ment must not be called into question except on the ground of fraud; and 35 (2) 62 Patents Bill Part 3 cl 82 (b) the amendment must, in all courts and for all purposes, be treated as forming part of the speciﬁcation.
(3) However, in construing the speciﬁcation as amended, refer­ ence may be made to the speciﬁcation as originally published.

Compare: 1953 No 64 s 40(1), (2) 5 80 81 (1) Amendment must be published in journal If, after the date of the publication of the accepted complete speciﬁcation, any amendment of the speciﬁcation is allowed under sections 81 to 85, the fact that the speciﬁcation has been amended must be published in the journal.
Compare: 1953 No 64 s 40(3) 10 Amendment of speciﬁcation with leave of Commissioner The Commissioner may, on a request made under this section by a patentee, or by an applicant for a patent at any time after the acceptance of the complete speciﬁcation, allow the com­ 15 plete speciﬁcation to be amended subject to any conditions that the Commissioner thinks ﬁt.
(3) (2) However, the Commissioner must not allow a speciﬁcation to be amended on a request made under this section while any relevant proceeding is pending.

Every request for leave to amend a speciﬁcation under this section must— (a) (b) This section is subject to section 79 (which contains general 25 rules about amendments of speciﬁcations).

Compare: 1953 No 64 s 38(1), (2) state the nature of the proposed amendment; and give full particulars of the reasons for the request.
(4) 20 82 (1) Request for leave to amend must be published in journal Every request for leave to amend a speciﬁcation under sec­ tion 81, and the nature of the proposed amendment, must be 30 published in the journal.
(2) However, if the request is made before the date of the publica­ tion of the accepted complete speciﬁcation, the Commissioner may, if the Commissioner thinks ﬁt, dispense with publication under subsection (1) or direct that publication be postponed 35 63 Part 3 cl 83 Patents Bill until the date of the publication of the accepted complete spe­ ciﬁcation.
Compare: 1953 No 64 s 38(3) Opposition to proposed amendment 83 (1) Any person may give notice to the Commissioner of oppos­ 5 ition to a proposed amendment within the prescribed period after the publication of a request under section 82.

If a notice is given within the prescribed period, the Commis­ sioner must— (a) notify the person who made the request under section 10 81; and give that person and the opponent a reasonable oppor­ tunity to be heard before the Commissioner decides the case.
(b) Compare: 1953 No 64 s 38(4) 15 Provisions concerning amendments with leave of Commissioner do not apply in certain circumstances Sections 81 to 83 do not apply in relation to any amendment of a speciﬁcation effected— (a) on a reference to the Commissioner of a dispute as to 20 the infringement or validity of a claim; or in accordance with any provision of this Act that author­ ises the Commissioner to revoke a patent, or to refuse to grant a patent, unless the speciﬁcation is amended to the Commissioner’s satisfaction.
25 (b) Compare: 1953 No 64 s 38(6) Amendment of speciﬁcation with leave of court In any relevant proceeding in relation to a patent, the court may, by order, allow the patentee to amend the patentee’s com­ plete speciﬁcation in the manner and subject to the terms as to 30 costs, publication, or otherwise that the court thinks ﬁt.
If, in any proceedings for the revocation of a patent, the court decides that the patent is invalid, the court may allow the spe­ ciﬁcation to be amended under this section instead of revoking the patent.
35 (2) 84 85 (1) (2) 64 Patents Bill Part 3 cl 87 (3) If an application for an order under this section is made to the court,— (a) the applicant for that order must give notice of the ap­ plication to the Commissioner; and the Commissioner may appear and be heard on the ap­ 5 plication; and the Commissioner must appear if he or she is directed by the court to appear.

(b) (c) (4) This section is subject to section 79 (which contains general rules about amendments of speciﬁcations).
Compare: 1953 No 64 s 39 10 Subpart 9—Assertions by third parties and re­examinations Assertions by third parties within prescribed period 15 Assertions by third parties on novelty and inventive step 86 (1) A person may, within the prescribed period after a complete speciﬁcation becomes open to public inspection, notify the Commissioner, in the prescribed manner (if any), that the per­ son asserts that the invention, so far as claimed in a claim, 20 is not a patentable invention because it does not comply with section 13(b) (which relates to the requirement for the inven­ tion to be novel and involve an inventive step).
The notice must state the reasons for the person’s assertion.

The notice and any documents accompanying it are open to 25 public inspection.

Compare: Patents Act 1990 s 27(1), (4) (Aust) (2) (3) 87 (1) (2) Commissioner must consider and deal with notice in prescribed manner The Commissioner must inform the applicant in writing of any 30 matter of which the Commissioner is notiﬁed under section 86 and send the applicant a copy of any document accompany­ ing the notice.
The Commissioner must otherwise consider and deal with a notice under section 86 in the prescribed manner.

Compare: Patents Act 1990 s 27(2), (3) (Aust) 35 65 Part 3 cl 88 Patents Bill Re­examination after acceptance 88 (1) Re­examination of complete speciﬁcation before patent is granted The Commissioner may, and must if requested to do so by any person, re­examine a complete speciﬁcation on or after the 5 date of the publication of the accepted complete speciﬁcation if the patent has not been granted.
(2) A request under subsection (1) must be made in the pre­ scribed manner (if any).

89 (1) (2) Re­examination of complete speciﬁcation after patent is granted If a patent has been granted, the Commissioner may, and must if requested to do so by any person, re­examine the complete speciﬁcation.
Subsection (1) does not apply if— (a) a relevant proceeding in relation to the patent is pend­ ing; or an application for the revocation of the patent has been made to the Commissioner under section 104 and the Commissioner has not yet made a decision on that ap­ 20 plication.

10 15 (b) (3) A request under subsection (1) must be made in the pre­ (4) scribed manner (if any).
If the Commissioner has started to re­examine a complete spe­ ciﬁcation relating to a patent under subsection (1), the Com­ 25 missioner must not continue the re­examination if— (a) a relevant proceeding in relation to the patent is com­ menced and the Commissioner has received notiﬁcation of the commencement of that proceeding; or an application for the revocation of the patent has been 30 made to the Commissioner under section 104 and the Commissioner has not yet made a decision on that ap­ plication.
(b) (5) The Commissioner must re­examine the complete speciﬁca­ tion if the validity of a patent is disputed in any proceedings 35 66 Patents Bill Part 3 cl 92 before the court under this Act and the court directs the Com­ missioner to re­examine the complete speciﬁcation.

Compare: Patents Act 1990 s 97 (Aust) Report on re­examination 90 (1) On re­examining a complete speciﬁcation under this subpart, 5 is novel; and involves an inventive step.
the Commissioner must consider and report on whether, to the best of the Commissioner’s knowledge, the invention, so far as claimed in a claim, when compared with the prior art base,— (a) (b) For the purposes of subsection (1), in considering the prior art base, account must not be taken of information that is made publicly available only through the doing of an act (whether in or out of New Zealand).
10 (2) (3) A copy of a report under this section must, if the re­examin­ 15 ation was directed under section 89(5), be given by the Com­ missioner to the court that gave the direction.

Compare: Patents Act 1990 ss 98, 100 (Aust) 91 (1) (2) 92 (1) Refusal to grant patent: re­examination before grant If the Commissioner makes an adverse report on a re­exam­ 20 ination under section 88, the Commissioner may refuse to grant the patent.
The Commissioner must not refuse to grant a patent under this section unless the Commissioner has, if appropriate, given the applicant a reasonable opportunity to amend the relevant spe­ 25 ciﬁcation for the purpose of removing any lawful ground of objection in relation to section 13(b) (which relates to the requirement for the invention to be novel and involve an in­ ventive step) and the applicant has failed to do so.
Compare: Patents Act 1990 s 100A (Aust) 30 Revocation of patent: re­examination after grant If the Commissioner makes an adverse report on a re­exam­ ination under section 89, the Commissioner may, by notice in writing, revoke the patent, either wholly or in so far as it relates to a particular claim (as the case may be).
35 67 Part 3 cl 93 Patents Bill (2) (3) The Commissioner must not revoke a patent under this sec­ tion unless the Commissioner has, if appropriate, given the patentee a reasonable opportunity to amend the relevant spe­ ciﬁcation for the purpose of removing any lawful ground of objection in relation to section 13(b) (which relates to the 5 requirement for the invention to be novel and involve an in­ ventive step) and the patentee has failed to do so.
The Commissioner must not revoke a patent under this sec­ tion— (a) while a relevant proceeding in relation to that patent is 10 pending; or before the Commissioner has made a decision on an ap­ plication for revocation of the patent made under sec­ tion 104 (if an application has been made to the Com­ missioner under that section).

(b) 15 (4) Subpart 11 (which relates to the revocation and surrender of patents) does not limit this section.
Compare: Patents Act 1990 s 101 (Aust) Subpart 10—Grant of patent General rules 20 93 When patent must be granted (1) The Commissioner must grant a patent to the nominated per­ son, or to 2 or more nominated persons jointly, as soon as is reasonably practicable after the date that is 3 months after the date of the publication of the accepted complete speciﬁcation 25 if either— (a) a request to re­examine the complete speciﬁcation has not been made in accordance with section 88 and the Commissioner decides that he or she will not re­exam­ ine the complete speciﬁcation under that section; or the Commissioner decides, following all re­examin­ ations of the complete speciﬁcation relating to the patent application under section 88, that the patent should be granted.
(b) 30 If a nominated person dies before a patent is granted on the 35 patent application, the patent may be granted to his or her per­ sonal representative.

(2) 68 Patents Bill Part 3 cl 96 (3) (4) (5) 94 95 (1) The date that the patent is granted must be entered in the patents register.

The Commissioner must, as soon as is reasonably practicable after a patent has been granted, publish in the journal a notice that it has been granted.
This section does not limit the Commissioner’s power to refuse to grant a patent under section 91.

Compare: 1953 No 64 s 27(1) 5 Validity of patent not guaranteed Nothing done under this Act guarantees the granting of a 10 patent, or that a patent is valid, in New Zealand or anywhere else.
Compare: Patents Act 1990 s 20(1) (Aust) Patent date Every patent must be given a patent date that is— (a) (b) the ﬁling date of the relevant complete speciﬁcation; or if the regulations provide for the determination of a dif­ ferent date as the patent date, the date determined under the regulations.

15 (2) However, no proceeding may be taken for an infringement 20 committed before the date on which the relevant complete spe­ ciﬁcation became open to public inspection.
The patent date of every patent must be entered in the patents register.

Compare: 1953 No 64 s 30(1), (2); Patents Act 1990 s 65 (Aust) (3) 25 96 Patent granted for one invention only (1) A patent may be granted for one invention only.

(2) However, it is not competent for any person in an action or other proceeding to take any objection to a patent on the ground that it has been granted for more than 1 invention.
Compare: 1953 No 64 s 29(4) 30 69 Part 3 cl 97 Patents Bill Amendment of patent granted to deceased person or to person that has been liquidated or wound up This section applies if, at any time after a patent has been granted, the Commissioner is satisﬁed that the person to whom the patent was granted— (a) (b) had died before the patent was granted; or in the case of a body corporate, had ceased to exist be­ fore the patent was granted.
5 The Commissioner may amend the patent by substituting for the name of that person the name of the person to whom the 10 patent should have been granted.

The patent has effect, and is to be treated as always having had effect, in accordance with that amendment.
Compare: 1953 No 64 s 28 Patents of addition Patents of addition This section applies if— (a) a patent application is made in respect of any improve­ ment in, or modiﬁcation of, an invention (the main in­ vention); and the applicant also applies, or has applied, for a patent for that invention or is the patentee of that invention.

(b) The Commissioner may, on the request of the applicant, grant the patent for the improvement or modiﬁcation as a patent of addition.
Compare: 1953 No 64 s 34(1) 15 20 25 Commissioner may revoke patent for improvement or modiﬁcation and grant patent of addition This section applies if— (a) an invention that is an improvement in, or modiﬁcation 30 of, another invention is the subject of an independent patent; and the patentee of that patent is also the patentee of the patent for the main invention.
(b) The Commissioner may, on the request of the patentee, by 35 order revoke the patent for the improvement or modiﬁcation 97 (1) (2) (3) 98 (1) (2) 99 (1) (2) 70 Patents Bill Part 3 cl 102 (3) and grant to the patentee a patent of addition for the improve­ ment or modiﬁcation.

The patent of addition must have the same patent date as the patent date of the patent that is revoked.
Compare: 1953 No 64 s 34(2) 100 Restrictions on granting of patents of addition (1) The Commissioner must not grant a patent as a patent of add­ ition unless the ﬁling date of the complete speciﬁcation is the same as, or later than, the ﬁling date of the complete speciﬁ­ cation for the main invention.

The Commissioner must not grant a patent of addition before the granting of the patent for the main invention.
Compare: 1953 No 64 s 34(3), (4) (2) 101 Term of patent of addition (1) A patent of addition— (b) (a) must be granted for a term equal to that of the patent for the main invention, or as much of the term of the patent for the main invention that is unexpired; and remains in force— (i) (ii) during that term; or until the expiry of the term of the patent for the main invention (if the term of the patent for the main invention expires before the expiry of that term).
5 10 15 20 (2) However, if the patent for the main invention is revoked under 25 this Act, the court or the Commissioner (as the case may be) may order that the patent of addition become, and continue in force as, an independent patent for the remainder of the term of the patent for the main invention.

Compare: 1953 No 64 s 34(5) 30 102 Renewal fees for patents of addition (1) No renewal fees are payable in respect of a patent of addition.
(2) However, if any patent of addition becomes an independent patent under section 101(2), the renewal fees are payable 71 Part 3 cl 103 Patents Bill from that time, on the same dates, as if the patent had been originally granted as an independent patent.
Compare: 1953 No 64 s 34(6) (1) 103 Provisions concerning inventive step requirement and validity in connection with patents of addition The grant of a patent of addition must not be refused, and a patent granted as a patent of addition must not be revoked or invalidated, on the ground only that the invention claimed in the complete speciﬁcation of the patent of addition does not involve any inventive step having regard to any publication or 10 use of— (a) 5 the main invention described in the complete speciﬁca­ tion for the main invention; or any improvement in, or modiﬁcation of, the main in­ vention described in the complete speciﬁcation of— 15 a patent of addition to the patent for the main (i) invention; or an application for a patent of addition to the patent for the main invention.
(ii) (b) (2) The validity of a patent of addition must not be questioned on 20 the ground that the invention should have been the subject of an independent patent.

Compare: 1953 No 64 s 34(7) Subpart 11—Revocation and surrender of patents 25 104 Revocation of patent (1) The Commissioner or the court may, on an application under this section, revoke a patent on any of the grounds set out in section 106.

(2) An application under this section may be made by any person.
30 Compare: 1953 No 64 ss 41(1), (3), 42 105 Provisions concerning applications for revocation made to Commissioner The Commissioner may refuse any application to the Commis­ sioner under section 104 that is frivolous or vexatious.

35 (1) 72 Patents Bill Part 3 cl 106 (2) (3) (4) If a relevant proceeding in relation to a patent is pending in any court, an application to the Commissioner under section 104 may be made only with the leave of that court.
If an application is made to the Commissioner under section 104, the Commissioner must— (a) (b) notify the patentee; and give to the person who made the application and the pa­ tentee a reasonable opportunity to be heard before de­ ciding the case (unless the application has been refused under subsection (1)).
If, on an application made to the Commissioner under section 104, the Commissioner is satisﬁed that any of the grounds set out in section 106 are established, the Commissioner may by order direct that the patent is either— (a) (b) revoked unconditionally; or revoked unless the complete speciﬁcation is amended to the Commissioner’s satisfaction within the time that is speciﬁed in the order.
Compare: 1953 No 64 s 42(3) 5 10 15 106 Grounds for revoking patent (1) A patent may be revoked on 1 or more of the following 20 grounds: (a) 25 that the invention, so far as claimed in a claim, is not a patentable invention under section 13: that the patentee is not entitled to the patent: that the complete speciﬁcation does not comply with section 37(1) (which requires descriptions of the in­ vention, method of performance, and claims): that the scope of a claim is not sufﬁciently and clearly deﬁned or that a claim is not fairly based on the matter 30 disclosed in the complete speciﬁcation: that the patent was obtained by fraud, false suggestion, or a misrepresentation: that the invention, so far as claimed in a claim, was secretly used in New Zealand before the priority date 35 of that claim: that the patent has been granted contrary to law.
(b) (c) (d) (e) (f) (g) 73 Part 3 cl 107 Patents Bill (2) (3) (4) (b) For the purposes of subsection (1)(a), account must not be taken of any secret use of the invention.
For the purposes of subsection (1)(f), account must not be taken of any use of the invention— (a) for the purpose of reasonable trial or experiment only if 5 the trial or experiment is conducted by, on behalf of, or with the consent of the nominated person or any person from whom the nominated person derives title; or by a government department or any person authorised by a government department if the nominated person, or 10 any person from whom the nominated person derives title, has communicated or disclosed the invention di­ rectly or indirectly to that department or person; or by any other person, in consequence of the nominated person, or any person from whom the nominated person 15 derives title, communicating or disclosing the invention to that person in conﬁdence if the use of the invention is without the consent of the nominated person or of any person from whom the nominated person derives title.
Every ground set out in subsection (1) is available as a 20 ground of defence in any proceeding for the infringement of the patent.
Compare: 1953 No 64 s 41(1), (2), (4) (c) 107 Priority date in case of obtaining (1) This section applies if— (a) 25 a patent application (application A) is made for an in­ vention that has been claimed in a complete speciﬁca­ tion ﬁled in relation to another patent application (ap­ plication B); and the patent granted in relation to application B has been 30 revoked by the court or the Commissioner on the ground speciﬁed in section 106(1)(b).
(b) The Commissioner may direct that application A and any spe­ ciﬁcation ﬁled in relation to it must, for the purposes of sub­ part 5, be treated as having been ﬁled on the date on which 35 the corresponding document was ﬁled, or is treated as having been ﬁled, in relation to application B if the Commissioner is satisﬁed that the patent granted in relation to application B was (2) 74 Patents Bill Part 3 cl 109 obtained in breach of the rights of the person who is, or may be, granted a patent in relation to application A or any person under or through whom that person claims.
Compare: 1953 No 64 s 62(b) 108 Court may also revoke patent if patentee, without 5 (1) (2) reasonable cause, refuses request of government department to exploit invention The court may, on the application of a government department, revoke a patent if the court is satisﬁed that the patentee has, without reasonable cause, failed to comply with a request of 10 the government department to exploit the patented invention for the services of the Crown on reasonable terms under sec­ tion 170.
The ground for revoking a patent set out in subsection (1) is available as a ground of defence in any proceeding for the 15 infringement of the patent.

Compare: 1953 No 64 s 41(3)(a) 109 Surrender of patent (1) A patentee may, by notice given to the Commissioner, offer to 20 surrender the patent.

The Commissioner must publish the offer in the journal.

(2) (3) A person may, within the prescribed period after the publi­ cation, give notice to the Commissioner of opposition to the surrender.
The Commissioner must notify the patentee if notice of oppos­ 25 ition is given.

The Commissioner may accept the offer and by order revoke the patent if— (a) (5) (4) the Commissioner has given the patentee and the oppo­ nent a reasonable opportunity to be heard; and the Commissioner is satisﬁed that the patent may prop­ erly be surrendered.
(b) 30 Compare: 1953 No 64 s 43 75 Part 3 cl 110 Patents Bill Subpart 12—Restoration of lapsed patents and restoration of patent applications Restoration of lapsed patents 110 Restoration of lapsed patents (1) (2) This section applies if a patent has ceased to have effect by 5 reason of a failure to pay any renewal fee within the prescribed period or within that period as extended under section 20.
The Commissioner may, on a request made in the prescribed manner and in accordance with this subpart, by order restore the patent, and any patent of addition speciﬁed in the request 10 that has ceased to have effect when the patent ceased to have effect, if the Commissioner is satisﬁed that the failure to pay the renewal fee was unintentional.
Compare: 1953 No 64 s 35(1) 111 Request must describe circumstances that led to failure to 15 pay renewal fee (1) A request for an order under section 110 must contain a state­ ment that fully sets out the circumstances that led to the failure to pay the renewal fee.

The Commissioner may require the person who makes the re­ 20 quest to provide any further evidence that the Commissioner thinks ﬁt.
Compare: 1953 No 64 s 35(3) (2) 112 Persons who may make request for restoration of patent (1) A request for an order under section 110 may be made by the 25 person who was the patentee or, if that person is deceased, by that person’s personal representative.

If the patent was held by 2 or more persons jointly, the request for an order under section 110 may, with the leave of the Commissioner, be made by 1 or more of them without joining 30 the others.
Compare: 1953 No 64 s 35(2) (2) 113 When request for restoration of patent may be made (1) A request for an order under section 110 may only be made within the prescribed period.

35 76 Patents Bill Part 3 cl 116 (3) (2) However, the Commissioner may extend the period within which a request may be made if the Commissioner is satis­ ﬁed that there was no undue delay in making the request.
The person who makes the request must, for the purposes of subsection (2), provide the Commissioner with a statement 5 that fully sets out the circumstances that caused the delay and the reasons why the delay is not undue.

The Commissioner may require that person to provide any fur­ ther evidence that the Commissioner thinks ﬁt.
(4) 114 Commissioner must give applicant reasonable 10 opportunity to be heard if not satisﬁed that prima facie case has been made out for restoration The Commissioner must, after considering a request made in accordance with sections 110 to 113, give the person who made the request a reasonable opportunity to be heard if the 15 Commissioner is not satisﬁed that a prima facie case has been made out for an order under section 110.
115 Commissioner to publish request in journal The Commissioner must publish a request made in accordance with sections 110 to 113 in the journal if the Commissioner 20 is satisﬁed that a prima facie case has been made out for an order under section 110.
Compare: 1953 No 64 s 35(4) 116 Notice of opposition and reasonable opportunity to be heard (1) Any person may, within the prescribed period, give notice to the Commissioner of opposition to an order being made under section 110 on either or both of the following grounds: (a) that the failure to pay the renewal fee was not uninten­ tional: if the period within which a request for an order under section 110 may be made is extended under section 113, that the delay in making the request was undue.
(b) 25 30 (2) The Commissioner must notify the person who made the re­ quest if a person has given notice under subsection (1).

35 77 Part 3 cl 117 Patents Bill (3) The Commissioner must give the person who made the request and the opponent a reasonable opportunity to be heard before the Commissioner decides the case.
Compare: 1953 No 64 s 35(4), (5) 117 Order to be made on payment of unpaid fees (1) If the Commissioner has published a request under section 115, he or she must make an order under section 110 in ac­ cordance with the request after the prescribed period for giving notice of opposition if— (a) (b) all unpaid renewal fees are paid; and all other prescribed additional penalties (if any) are paid; and either— (i) (c) no notice of opposition is given within the pre­ scribed period; or the decision of the Commissioner is in favour of the person who made the request (in the case of a notice of opposition having been given within the prescribed period).
(ii) (2) An order for the restoration of a patent— 5 10 15 20 (a) may be made subject to a condition requiring the regis­ tration of any matter if the provisions of this Act con­ cerning entries in the patents register have not been complied with; and (b) must contain, or be subject to, the provisions that are 25 prescribed for the protection or compensation of per­ sons who availed themselves, or took deﬁnite steps by way of contract or otherwise to avail themselves, of the invention between the date when the patent ceased to have effect and the date on which the request is pub­ 30 lished under section 115; and (c) may be made subject to any other conditions that the Commissioner thinks ﬁt.
If any condition of an order under this section is not complied with by the patentee, the Commissioner may revoke the order 35 and give any directions that are consequential on the revoca­ tion that the Commissioner thinks ﬁt.

(3) 78 5 10 Patents Bill Part 3 cl 119 (4) The Commissioner must, before the Commissioner makes a decision under subsection (3), give the patentee a reasonable opportunity to be heard.
Compare: 1953 No 64 s 35(5)–(7) Restoration of patent applications 118 Request for restoration of void or abandoned patent (1) (2) (3) (4) applications This section applies if— (a) the patent application is abandoned under section 63 or is void under section 67 or 69; or in the case of a Treaty application, the Treaty applica­ tion is void under section 48.
(b) The applicant may make a request to the Commissioner in the prescribed manner for an order to restore the patent application and to extend the period for complying with the requirements 15 imposed on the applicant by or under this Act to a date that is speciﬁed in the order.
Every request for an order must contain a statement that fully sets out the circumstances that led to the failure of the applicant to comply with the requirements imposed on the applicant by 20 or under this Act within the time allowed by or under this Act.
The Commissioner must publish the request in the journal if the Commissioner is satisﬁed that the failure of the applicant to comply with the requirements imposed on the applicant by or under this Act within the time allowed by or under this Act 25 was unintentional.

Compare: 1953 No 64 s 37(1), (2) 119 When request for restoration of application may be made (1) A request under section 118 may only be made within the prescribed period.
30 (2) However, the Commissioner may extend the period within which a request may be made if the Commissioner is satis­ ﬁed that there was no undue delay in making the request.

The applicant must, for the purposes of subsection (2), pro­ vide the Commissioner with a statement that fully sets out the 35 (3) 79 Part 3 cl 120 Patents Bill circumstances that caused the delay and the reasons why the delay is not undue.
The Commissioner may require the applicant to provide any further evidence that the Commissioner thinks ﬁt.
(4) 120 Notice of opposition (1) Any person may, within the prescribed period, give notice to the Commissioner of opposition to an order being made under section 121 on either or both of the following grounds: (a) 5 that any failure of the applicant to comply with the re­ quirements imposed on the applicant by or under this 10 Act within the time allowed by or under this Act was not unintentional: if the period within which a request under section 118 may be made is extended under section 119, that the delay in making the request was undue.
15 (b) (2) (3) The Commissioner must notify the applicant if a person has given notice under subsection (1).

The Commissioner must give the applicant and the opponent a reasonable opportunity to be heard before the Commissioner decides the case.
Compare: 1953 No 64 s 37(3), (4) 20 121 Commissioner to determine matter (1) The Commissioner must, after the expiry of the prescribed period for giving notice of opposition under section 120,— (a) restore the patent application and extend the period for 25 complying with the requirements imposed on the appli­ cant by or under this Act to a period that is speciﬁed in the order if the Commissioner is satisﬁed that— (i) every failure of the applicant to comply with the requirements imposed on the applicant by 30 or under this Act within the time allowed by or under this Act was unintentional; and if the period within which the request for an order under this section may be made was extended under section 119, there was no undue delay in 35 making the request; or (ii) (b) dismiss the request.
80 Patents Bill Part 3 cl 122 (2) An order under this section must contain, or be subject to, the provisions that are prescribed for the protection or compensa­ tion of persons who availed themselves, or took deﬁnite steps by way of contract or otherwise to avail themselves, of the in­ vention that is the subject of the patent application between the 5 speciﬁed date and the date on which the request is published under section 118.
For the purposes of subsection (2), means,— (a) the speciﬁed date (3) in the case of a patent application that is a Treaty appli­ 10 cation that is void under section 48, the date on which the application became void; and in any other case, the date when the patent application became void or abandoned.

(b) (4) The Commissioner must publish in the journal the making of 15 an order under subsection (1) after that order is made.
Compare: 1953 No 64 s 37(5), (6) Subpart 13—Miscellaneous provisions Substitution of applicants 122 Persons claiming under assignment or agreement or by 20 (1) (2) (3) operation of law This section applies if, before a patent has been granted, a person would, if the patent were to be then granted, be entitled under an assignment or agreement, or by operation of law, to— (a) (b) (c) the patent; or an interest in the patent; or an undivided share in the patent or in an interest in the patent.
25 The Commissioner may, on a request made by the person in the prescribed manner, direct that the patent application proceed 30 in the name of the person, or in the names of the person and the applicant or the other joint applicant or applicants (as the case may require).
If the Commissioner gives a direction,— (a) the person must be taken to be the applicant, or a joint 35 applicant, as the case may require; and 81 Part 3 cl 123 Patents Bill (b) the patent application must be taken to have been amended so as to request the grant of a patent to the person, either alone or as a joint patentee, as the case may require.
Compare: 1953 No 64 s 24(1); Patents Act 1990 s 113 (Aust) 5 123 Death of applicant (1) If an applicant dies before a patent is granted on the patent application, his or her personal representative may proceed with the application.

(2) However, the Commissioner may also dispense with probate 10 and letters of administration and allow a person to proceed with a deceased applicant’s application under section 162.
Compare: Patents Act 1990 s 215(1) (Aust) 124 Disputes between interested parties (1) If a dispute arises between interested parties in relation to a 15 patent application concerning whether, or in what manner, the application should proceed, the Commissioner may, on a re­ quest made to the Commissioner, give any directions that the Commissioner thinks ﬁt— (a) for enabling the application to proceed in the name of 1 20 or more of the parties alone; or for regulating the manner in which it is to proceed; or for both of the purposes referred to in paragraphs (a) and (b).
(b) (c) (2) A request under subsection (1) must be made in the pre­ 25 (3) scribed manner and may be made by any of the parties.

The Commissioner must, before giving a direction, give a rea­ sonable opportunity to be heard to any person that the Com­ missioner considers is interested (whether or not that person is currently an interested party).
Compare: 1953 No 64 s 24(5) 30 Provisions for secrecy of certain inventions 125 Directions in relation to inventions concerning defence (1) The Commissioner may give any of the directions described in subsection (2) if— 35 82 Patents Bill Part 3 cl 127 (a) (b) a patent application has been made for an invention ei­ ther before or after the commencement of this section; and the invention is, in the opinion of the Commissioner,— (i) one of a class notiﬁed to the Commissioner by 5 the Minister of Defence as relevant for defence purposes; or likely to be valuable for defence purposes.
(ii) (2) The directions are directions— (a) (b) for prohibiting or restricting the publication of informa­ 10 tion concerning the invention; or for prohibiting or restricting the communication of in­ formation concerning the invention to a person or class of persons speciﬁed in the directions.
(3) While the directions are in force,— (a) (b) the patent application may, subject to the directions, proceed up to the acceptance of the complete speciﬁ­ cation; and the patent application and the complete speciﬁcation must not become open to public inspection; and a patent must not be granted in relation to the patent application.
Compare: 1953 No 64 s 25(1) (c) 15 20 126 Commissioner must give notice to Minister of Defence If the Commissioner gives directions under section 125, the 25 Commissioner must give notice of the patent application and of the directions to the Minister of Defence.
Compare: 1953 No 64 s 25(2) 127 Minister of Defence must consider whether publication would be prejudicial to defence of New Zealand The Minister of Defence must,— (a) (1) 30 on receipt of a notice under section 126, consider whether the publication of the invention would be preju­ dicial to the defence of New Zealand; and unless a notice under subsection (3) has been given to 35 the Commissioner, reconsider that question before the (b) 83 Part 3 cl 128 Patents Bill (2) (3) expiry of 9 months from the ﬁling date of the patent application and at least once in every subsequent year.
For the purposes of subsection (1), the Minister of Defence may, at any time after the complete speciﬁcation has been ac­ cepted or, with the consent of the applicant, at any time be­ 5 fore the complete speciﬁcation has been accepted, inspect the patent application and any documents provided to the Com­ missioner in connection with that application.
If, on consideration of the invention at any time, it appears to the Minister of Defence that the publication of the invention 10 would not, or would no longer, be prejudicial to the defence of New Zealand, the Minister of Defence must give notice to the Commissioner to that effect.
Compare: 1953 No 64 s 25(2)(a)–(c) 128 Commissioner must revoke directions on receipt of notice 15 from Minister of Defence On receipt of a notice under section 127, the Commis­ sioner— (a) must revoke the directions given under section 125; and (b) may, subject to any conditions that the Commissioner thinks ﬁt, extend the time for doing anything required or authorised to be done by or under this Act in connection with the patent application, whether or not that time has previously expired.
Compare: 1953 No 64 s 25(2)(d) 20 25 129 Acceptance of complete speciﬁcation while directions in force This section applies if a complete speciﬁcation ﬁled for a patent application for an invention for which directions have 30 been given under section 125 is accepted while the direc­ tions are in force.
If any use of the invention is made while the directions are in force by, on behalf of, or to the order of a government depart­ ment, subpart 6 of Part 4 applies to that use as if the patent 35 had been granted for the invention.
(1) (2) 84 Patents Bill Part 3 cl 132 (3) (4) If it appears to the Minister of Defence that the applicant for the patent has suffered hardship by reason of the directions be­ ing in force, the Minister of Finance may pay to the applicant an amount by way of compensation that the Minister of Fi­ nance considers is reasonable.
For the purposes of subsection (3), the Minister of Finance must have regard to— (a) (b) (c) Compare: 1953 No 64 s 25(3) the novelty and usefulness of the invention; and the purpose for which the invention is designed; and any other relevant matters.

5 10 130 Renewal fees not payable while directions in force No renewal fees are payable for any period during which di­ rections that are given under section 125 are in force if a patent is granted for an application for which directions have 15 been given.
Compare: 1953 No 64 s 25(4) 131 Offence to fail to comply with directions (1) Every person who fails to comply with a direction given under section 125 commits an offence if, at the time of the failure, 20 the person knew or ought to have known that a direction had been given.

Every person who commits an offence against subsection (1) is liable on conviction on indictment to imprisonment for a term not exceeding 2 years, to a ﬁne not exceeding $20,000, 25 or to both.
Compare: 1953 No 64 s 25(6) (2) 132 Liability of directors and managers if body corporate commits offence If a body corporate is convicted of an offence against section 30 131, every director and every person concerned in the man­ agement of the body corporate is guilty of the offence if it is proved— (a) that the act that constituted the offence took place with his or her authority, permission, or consent; and that he or she— (b) 35 85 Part 4 cl 133 Patents Bill (i) (ii) knew, or could reasonably be expected to have known, that the offence was to be or was being committed; and failed to take all reasonable steps to prevent or stop it.
5 Compare: 1953 No 64 s 108 Part 4 Infringement, other patent proceedings, and matters affecting patent ownership Subpart 1—Infringement proceedings What constitutes infringement 10 133 Infringement by doing anything patentee has exclusive right to do A person infringes a patent if (other than under a licence or with the consent or agreement of the patentee) the person does 15 anything in the patent area that the patentee has the exclusive right to do under section 17.
134 Infringement by supplying means to infringe to another person (1) A person (A) also infringes a patent if (other than under a li­ 20 cence or with the consent or agreement of the patentee)— (a) A supplies, or offers to supply, in the patent area another person (B) with any of the means, relating to an essential element of the invention, for putting the invention into effect; and (b) A knows, or ought reasonably to know, that the means are suitable and intended by B for putting the invention into effect; and B would infringe the patent by putting the invention into effect.
(c) (2) However, it is not an infringement to supply or offer to sup­ ply a staple commercial product unless the supply or offer is made for the purpose of inducing B to do anything that would infringe the patent under section 133.
86 25 30 Patents Bill Part 4 cl 137 135 Presumption that product produced by infringing process If a patented process is a process for obtaining a new product, (1) the same product produced by a person (other than under a licence or with the consent or agreement of the patentee) is presumed in infringement proceedings to have been obtained 5 by that process.

Subsection (1) applies unless the defendant proves the con­ trary.
In applying subsection (1), the court must not require any person to disclose any manufacturing or commercial secrets if 10 the court thinks that it would be unreasonable to require that disclosure.
Compare: 1953 No 64 s 68A (2) (3) What does not constitute infringement (2) 136 No infringement for experimental use (1) It is not an infringement of a patent for a person to do an act for experimental purposes relating to the subject matter of an invention if the act does not unreasonably conﬂict with the normal exploitation of the invention.
In this section, act for experimental purposes relating to the 20 subject matter of an invention includes an act for the purpose of— (a) (b) (c) (d) determining how the invention works: determining the scope of the invention: determining the validity of the claims: seeking an improvement of the invention (for example, determining new properties, or new uses, of the inven­ tion).
25 137 No infringement by use in or from foreign vessels, (1) aircraft, or vehicles It is not an infringement of a patent if— (a) an invention is used— (i) on board a foreign vessel, in the body of a foreign vessel, or in a foreign vessel’s machinery, tackle, apparatus, or other accessories, and the invention 35 is used for the vessel’s actual needs only; or 15 30 87 Part 4 cl 138 Patents Bill (ii) in the construction or working of a foreign air­ craft or foreign land vehicle or of a foreign air­ craft’s or foreign land vehicle’s accessories; and the vessel, aircraft, or land vehicle comes into the patent area accidentally or only temporarily.
(b) (2) In this section, foreign means— (a) registered in a convention country, in the case of a vessel or aircraft; or owned by a person resident in a convention country, in the case of a land vehicle.
(b) 5 10 Compare: 1953 No 64 s 79 138 No infringement for use to produce information required by law It is not an infringement of a patent for a person to make, use, import, sell, hire, or otherwise dispose of the invention solely 15 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, construc­ tion, use, importation, sale, hire, or disposal of any product.
Compare: 1953 No 64 s 68B 20 Counterclaim for revocation of patent (2) 139 Defendant may counterclaim for revocation of patent (1) A defendant may apply by way of counterclaim in infringe­ ment proceedings for revocation of the patent on any of the grounds stated in section 106.
If the defendant is a government department, it may apply by way of counterclaim in infringement proceedings for revocation of the patent on the ground stated in section 108 (whether or not it also applies by way of counterclaim for revocation of the patent on any of the grounds stated in 30 section 106).
25 Bringing infringement proceedings in court 140 Who may bring infringement proceedings Infringement proceedings may be brought in court by— (a) the patentee: 35 88 Patents Bill Part 4 cl 143 (b) an exclusive licensee for any infringement that occurs during the term of the licence.

141 When and how proceedings may be brought (1) Infringement proceedings may not be brought until the patent is granted.
5 (2) However, section 77 enables infringement proceedings to re­ late to infringements before the patent is granted in the cir­ cumstances set out in that section (and subject to the defence in section 78).

Sections 155 to 157 contain notice and registration require­ 10 ments for civil proceedings (including infringement proceed­ ings) relating to interests in patents.
(3) (b) 142 Proceedings brought by exclusive licensee (1) If an exclusive licensee brings infringement proceedings,— (a) the patentee must be added as a defendant unless joined 15 as a plaintiff; and the court must, in awarding damages or any other relief, take into account, to the extent the infringement is of the exclusive licensee’s rights,— (i) the loss suffered, or likely to be suffered, by the 20 exclusive licensee as a result of the infringement; or the proﬁts earned as a result of the infringement.
(2) A patentee added as a defendant is not liable for costs unless (ii) the patentee actually defends the proceedings.

Compare: 1953 No 64 s 72 Relief for infringement 143 Types of relief available for infringement The relief that the court may grant for an infringement of a patent includes— (a) (b) an injunction; and at the option of the plaintiff, damages or an account of proﬁts.
Compare: 1953 No 64 s 69 25 30 89 Part 4 cl 144 Patents Bill 144 Court must not award damages or account of proﬁts if (1) (2) innocent infringement The court must not award damages or an account of proﬁts for infringement of a patent if the defendant proves that at the date of the infringement the defendant did not know, and ought not 5 reasonably to have known, that the patent existed.
It is presumed that a person ought reasonably to have known that a patent existed if— (a) a product is marked so as to indicate it is patented in New Zealand and with the New Zealand patent number; 10 and the person knew, or ought reasonably to have known, of the product.

(b) (3) But there is no presumption if the product is marked merely so as to indicate it is patented.
Compare: 1953 No 64 s 68(1) 15 145 Court must refuse damages or account of proﬁts for (1) (2) infringement before amendment to accepted speciﬁcation If an amendment has been made to an accepted complete spe­ ciﬁcation under this Act, the court must not award damages or 20 an account of proﬁts for an infringement that occurs before the date of the decision to allow the amendment.
Subsection (1) does not apply if— (a) the court is satisﬁed that the speciﬁcation, as accepted, was framed in good faith and with reasonable skill and 25 knowledge; or it is only an amendment to correct an obvious mistake.
(b) Compare: 1953 No 64 s 68(3) 146 Court may refuse damages or account of proﬁts if renewal fees not paid The court may refuse to award damages or an account of proﬁts for an infringement that occurs after a failure to pay any renewal fee for the patent within the prescribed period and before any extension of that period.
Compare: 1953 No 64 s 68(2) 30 35 90 Patents Bill Part 4 cl 149 147 Limits on damages and accounts of proﬁts do not affect power to grant injunction Nothing in sections 144 to 146 affects the court’s power to grant an injunction in infringement proceedings.

Compare: 1953 No 64 s 68(4) 5 148 Court may grant relief for partially valid patent (1) If it is found in infringement proceedings that a patent is only partially valid, the court may grant relief for that part of the patent that is valid and infringed.
(3) (2) However, the court may grant damages, an account of proﬁts, 10 or costs for that part of the patent only if the plaintiff proves that the invalid claim was framed in good faith and with rea­ sonable skill and knowledge.

It is at the court’s discretion whether or not to grant costs and as to the date from which damages or the account of proﬁts 15 should be counted.
The court may, as a condition of the relief, direct that the spe­ ciﬁcation be amended by an application under section 85 (which relates to the amendment of a speciﬁcation with the leave of the court), and the application may be made even if 20 the other issues in the infringement proceedings have not yet been determined.
Compare: 1953 No 64 s 71 (4) 149 Court may grant costs for subsequent proceedings if (1) validity of speciﬁcations contested If the validity of a claim of a speciﬁcation is contested in pro­ ceedings and the court ﬁnds the claim to be valid, the court may certify that the claim’s validity was contested in those proceed­ ings.
25 (2) A party who is relying on the validity of that claim in any 30 subsequent infringement or revocation proceedings is then en­ titled to reasonable solicitor­client costs for the certiﬁed claim if a ﬁnal order or judgment is made or given in favour of that party.

91 Part 4 cl 150 Patents Bill (3) 150 This section does not apply to the costs of any appeal in those subsequent proceedings.
Compare: 1953 No 64 s 73 Infringement proceedings must be tried before Judge alone Infringement proceedings must be tried before a Judge alone, unless the court otherwise directs.
Compare: 1953 No 64 s 113(3) Subpart 2—Declarations of non­infringement 151 Court may make declaration of non­infringement (1) The court may declare in proceedings between a person (A) and a patentee or exclusive licensee (B) that the exploitation by A of any product or process does not or would not infringe the patent if A proves that— (a) A has applied in writing to B for a written acknowledge­ ment to that effect and has given B full written particu­ lars of the relevant product or process; and (b) A has undertaken to pay a reasonable sum for B’s ex­ 5 10 15 penses in obtaining advice on whether or not the pro­ 20 posed exploitation would infringe the patent; and B has not given that acknowledgement.
(c) It does not matter that B has not asserted anything to the con­ trary.

Compare: 1953 No 64 s 75(1) (2) 152 When proceedings for declaration of non­infringement may be brought Proceedings for a declaration of non­infringement may be brought at any time after the date of the publication of the accepted complete speciﬁcation.

If proceedings are brought before the grant of the patent under subsection (1), references to the patentee and B in section 151 must be read as references to the nominated person.
Compare: 1953 No 64 s 75(4) (1) (2) 92 25 30 Patents Bill Part 4 cl 155 153 Costs in declaration of non­infringement The costs of the parties in proceedings for a declaration of non­infringement are at the discretion of the court.

Compare: 1953 No 64 s 75(2) 154 Validity of patent not at issue in proceedings for, and not 5 (1) affected by, declaration of non­infringement The validity of a claim of the speciﬁcation of a patent must not be questioned in proceedings for a declaration of non­in­ fringement.
(2) Accordingly, whether or not a declaration is made does not 10 affect the validity of the patent.
Compare: 1953 No 64 s 75(3) Subpart 3—Other provisions for proceedings relating to patents Notice and registration requirements for proceedings on interests in patents 15 155 Notice must be given before bringing civil proceedings on unregistered interests in patents (1) A person (A) must not bring civil proceedings in respect of any A’s intention to bring proceedings; and interest in a patent that is not registered under this Act unless A 20 has ﬁrst given at least 1 month’s written notice to the proposed defendant (B) of— (a) (b) A’s address for service.
If the interest is capable of being registered under this Act, B 25 may require A to register A’s interest in the patent by giving written notice to A within 1 month of receiving A’s notice of intention to bring proceedings.

If B gives A written notice of that requirement, A must not bring civil proceedings in respect of that interest against B 30 unless A registers the interest— (a) (b) within 6 months of B giving that notice; and at least 1 month before A commences proceedings.
(2) (3) (4) However, the court may, on application in that behalf, author­ ise A to bring civil proceedings without complying with either 35 or both of subsections (1) and (3).

93 Part 4 cl 156 Patents Bill (5) In this section and section 156, interest in a patent means an interest to which a person may be entitled as owner, mort­ gagee, licensee, or otherwise in a patent.
Compare: 1953 No 64 s 85(1)(a), (1)(c), (2) 156 Interests must be registered at least 1 month before bringing civil proceedings 5 (1) A person (A) must not bring civil proceedings in respect of any interest in a patent (as deﬁned in section 155(5)) that is registered under this Act unless that interest was registered,— (a) if section 155(3) applies, within the time limits re­ 10 quired by that subsection; and in any other case, at least 1 month before the person commences the proceedings.
(b) (2) However, the court may, on application in that behalf, author­ ise A to bring civil proceedings without complying with sub­ 15 section (1).

Compare: 1953 No 64 s 85(1)(b) 157 Application of Limitation Act 1950 (1) Nothing in section 155 or 156 enables persons to bring pro­ ceedings that are barred under the Limitation Act 1950.

(2) Nothing in section 33 of the Limitation Act 1950 excludes the operation of that Act when proceedings are barred by section 155 or 156.
Compare: 1953 No 64 s 85(3) Standing for Attorney­General 20 25 158 Attorney­General may appear in patent proceedings (1) The Attorney­General may do all or any of the following things if he or she considers that the public interest is or may be involved: (a) (b) (c) bring proceedings to test the validity of a patent: apply for the revocation of a patent: appear and be heard in any proceedings before a court or the Commissioner for the grant, amend­ ment, or revocation of a patent, or for a declaration of non­infringement, and take any steps he or she 35 30 94 Patents Bill Part 4 cl 160 (d) considers desirable as if he or she were a party to the proceedings: intervene in, and take over the control and conduct of, any proceedings referred to in paragraph (c) with the consent of a party.
5 (2) In any of those proceedings in which the Attorney­Gen­ eral appears, costs may be awarded either to or against the Attorney­General.

Compare: 1953 No 64 s 76(1), (3) 159 Parties must give notice to Solicitor­General if questioning 10 patent validity (2) (1) A party to proceedings before a court or the Commissioner who intends to question the validity of a patent must give no­ tice of that intention to the Solicitor­General.

That notice must be given in writing at least 21 days before 15 the hearing.
The party must also supply the Solicitor­General with any papers ﬁled in the proceedings by that or any other party to the proceedings that the Solicitor­General requests.
Compare: 1953 No 64 s 76(2) (3) 20 Subpart 4—Patent dealings, patent licences, and transmission of interests in patents Registration of assignments, licences, and other interests in patents 160 Application for registration of assignments, licences, and 25 other interests in patents (1) A person who acquires a patent or share in a patent or an inter­ est in a patent (the acquirer) must apply to the Commissioner for registration of the acquirer’s title or of the acquirer’s inter­ est.
30 (2) However, the person who disposes of the patent or share in a patent or who confers the interest may instead apply to register the acquirer’s title or interest (and in this case subsection (1) does not apply).

95 Part 4 cl 161 Patents Bill (3) (4) the application must be made, and any In either case, prescribed documents must also be provided to the Commis­ sioner, in the prescribed manner.
This section applies to acquisitions and disposals by assign­ ment, transmission, operation of law, mortgage, licence, or by 5 any other means.
Compare: 1953 No 64 s 84(1), (2), (5) 161 Registration of assignments, licences, and other interests in patents If an application is made under section 160, the Commis­ 10 sioner, on proof of the acquirer’s title or interest satisfactory to the Commissioner,— (a) must register the acquirer’s title or interest; and (b) may issue a replacement copy of the patent in the name of the new patentee; and 15 (c) must retain the documents provided under section 160(3) or a copy of those documents.
Vesting of patents and patent applications without probate or letters of administration 162 Commissioner may vest patent or patent application 20 without probate or letters of administration If a patentee, applicant for a patent, or nominated person (A) dies, the Commissioner may (without requiring probate or let­ ters of administration) register or substitute a person (B) as the patentee, applicant, or nominated person in place of A if— 25 B proves, to the Commissioner’s satisfaction, that— (a) (i) B is entitled to obtain probate of A’s will or letters of administration of A’s estate, or is A’s personal representative, in the place where A was living at the time of his or her death; and probate or letters of administration have not been made or resealed in New Zealand; and the interests of A’s creditors, and of all persons beneﬁcially interested under A’s will or on A’s intestacy, will be adequately safeguarded if this 35 action is taken; and 30 (ii) (iii) (b) B applies in the prescribed manner.
(1) 96 Patents Bill Part 4 cl 164 (2) (3) If B becomes the patentee, applicant, or nominated person under this section, B holds the patent subject to all existing interests and equities affecting it.

This section applies even if A died before the commencement of this section.

(4) Nothing in section 70 or 73 of the Administration Act 1969 restricts the operation of this section.
Compare: 1953 No 64 s 86 Termination of sales, leases, and licences of patented products and processes if patent no longer in force 163 Termination of sales, leases, and licences of patented (1) products and processes if patent no longer in force This section applies to the following contracts: (a) (b) a contract for the sale or lease of a patented product: a licence to exploit a patented product or process.
5 10 15 (2) A contract that this section applies to may be terminated by either party, on giving 3 months’ written notice to the other party, at any time after the patent, or all the patents, by which the product or process was protected at the time the contract 20 was made, has or have ceased to be in force.
Subsection (2)— (a) (3) applies whether the contract was made before or after the commencement of this section; and applies despite anything to the contrary in the contract 25 or in any other contract; and does not limit any right to terminate a contract exercis­ able apart from this section.
(b) (c) Compare: 1953 No 64 s 67 Subpart 5—Compulsory licences 30 164 Compulsory licences (1) Any interested person may apply to the court for the grant of a licence under a patent on either of the grounds speciﬁed in subsection (2) at any time after the later of— (a) the expiry of 3 years from the date that the patent is 35 granted; or 97 Part 4 cl 165 Patents Bill (2) the expiry of 4 years from the patent date.
(b) The grounds are that a market for the patented invention is not being supplied, or is not being supplied on reasonable terms, in New Zealand.

Compare: 1953 No 64 s 46(1), (2) 165 Court may order grant of licence (1) The court may make an order for the grant of a licence in ac­ cordance with an application under section 164 on any terms that the court thinks ﬁt if the court is satisﬁed that either of the grounds referred to in section 164(2) is established.
(2) A licence granted under this section— is not exclusive; and (a) (b) must not be assigned otherwise than in connection with the goodwill of the business in which the patented in­ vention is used; and is limited to the supply of the patented invention pre­ dominantly in New Zealand; and (c) 5 10 15 (d) must be recorded in the patents register by the Com­ missioner as soon as is reasonably practicable after the Commissioner receives a copy of the order made under 20 subsection (1).
(3) Any licence granted under this section may, on the application of an interested party, be terminated by the court if the court is satisﬁed that the grounds on which the licence was granted have ceased to exist.
Compare: 1953 No 64 s 46(3)–(5) 166 Remuneration payable to patentee If a licence is granted under section 165 to a person, that person must pay the remuneration to the patentee— (a) (b) that is agreed between that person and the patentee; or that is determined by a method agreed between that per­ son and the patentee; or that is determined by the court on the application of that person or the patentee in default of agreement.
(c) Compare: 1953 No 64 s 46(6) 98 25 30 35 Patents Bill Part 4 cl 170 167 Licence must not be granted in certain circumstances (1) A licence must not be granted under section 165 unless the person applying for the licence, having taken all reasonable steps to do so, has been unable to obtain a licence, or to obtain a licence on reasonable terms, from the patentee.

(2) A licence must not be granted under section 165 for a patent relating to an integrated circuit.
(3) A licence must not be granted under section 165 that would be contrary to any treaty, convention, arrangement, or engage­ ment applying to New Zealand and a convention country.
Compare: 1953 No 64 ss 46(7), (8), 54(3) 5 10 168 Exercise of powers on applications under section 164 or 166 The powers of the court on an application under section 164 or 166 must be exercised with a view to ensuring that the in­ 15 ventor or other person beneﬁcially entitled to a patent receives reasonable remuneration having regard to the nature of the in­ vention.
Compare: 1953 No 64 s 48 169 Order for grant of licence has effect as deed (1) Any order under this Act for the grant of a licence has effect as if it were a deed, executed by the patentee and all other necessary parties, granting a licence in accordance with the order.

Subsection (1) does not limit any other method of enforce­ 25 ment.
Compare: 1953 No 64 s 54(1) (2) 20 Subpart 6—Crown use of patented inventions 170 Crown use of patented inventions (1) Any government department, and any person authorised in writing by a government department, may exploit any patented invention for the services of the Crown.

(2) Anything done under subsection (1) does not amount to an infringement of the patent concerned.

30 35 99 Part 4 cl 171 Patents Bill (3) (4) is subject to sections 177 to 179; but applies despite any other provision of this Act.
Subsection (1)— (a) (b) For the purposes of this subpart,— (a) any use of an invention for the supply to the Govern­ 5 ment of any country outside New Zealand of products required for the defence of that country must be treated as exploitation of the invention for the services of the Crown if that supply is made in accordance with any agreement or arrangement between the Government of 10 New Zealand and the Government of that country: the power of a government department or a person au­ thorised by a government department under this section to exploit a patented invention includes the power to sell to any person any products made in the exercise of the 15 powers conferred by this section that are no longer re­ quired for the purpose for which they were made: the power of a government department or a person au­ thorised by a government department under this section to sell a patented invention does not, in the case of a 20 patent relating to an integrated circuit, extend to the sale of the invention to the public.
(b) (c) Compare: 1953 No 64 s 55(1), (2) 171 Regulations may declare use to be Crown use Any use of an invention must, for the purposes of this subpart, 25 be treated as a use for the services of the Crown if the Gov­ ernor­General, by Order in Council, declares that the use of the patented invention by a person, or by any class of persons, engaged in a particular industry is necessary or desirable to enable full beneﬁt to be derived by the members of the public 30 in New Zealand of any enterprise or undertaking in which the Crown or any government department has a complete or an al­ most complete monopoly.
Compare: 1953 No 64 s 55(3) 172 Protection of buyers 35 The buyer of any products sold in the exercise of powers con­ ferred by section 170, and any person claiming through the 100 Patents Bill Part 4 cl 174 buyer, has the power to deal with them in the same manner as if the patent were held on behalf of the Crown.
Compare: 1953 No 64 s 55(4) 173 Rights of third parties in respect of Crown use (1) This section applies in relation to any use of a patented in­ 5 vention, or of an invention for which a patent application is pending, made for the services of the Crown— (a) by a government department or a person authorised by a government department under section 170; or by the patentee or applicant for the patent to the order 10 of a government department.
(b) (2) (3) (4) The provisions of any licence, assignment, or agreement made between the patentee or applicant for the patent, or any person who derives title from that person or from whom that person derives title, and any person other than a government depart­ 15 ment is of no effect to the extent that those provisions— (a) restrict or regulate the use of the invention referred to in subsection (1); or restrict or regulate the use of any model, document, or information relating to the invention in relation to the 20 use of the invention referred to in subsection (1); or provide for the making of payments for any of those uses or calculated by reference to any of those uses.
(b) (c) The reproduction or publication of any model or document in connection with a use referred to in subsection (1) is not 25 an infringement of any copyright subsisting in the model or document.

Subsection (2)— (a) applies whether the licence, assignment, or agreement is made before or after the commencement of this section; 30 and is subject to sections 177 and 179.
(b) Compare: 1953 No 64 s 56 174 Reference of disputes concerning Crown use (1) The following disputes may be referred to the court by either 35 party to the dispute in the manner that is prescribed by rules of the court: 101 Part 4 cl 175 Patents Bill (a) (b) any dispute concerning the exercise by a government department or a person authorised by a government de­ partment of the powers conferred by section 170: any dispute concerning the terms for the use of an inven­ tion for the services of the Crown under that section.
5 (2) (3) In any proceedings under this section, the government depart­ ment may,— (a) if the patentee is a party to the proceedings, apply for the revocation of the patent on any ground on which a patent may be revoked under subpart 11 of Part 3; 10 and in any case, put in issue the validity of the patent without applying for its revocation.
(b) In determining any dispute referred to the court under this sec­ tion, the court must have regard to— (a) any beneﬁt or compensation that the patentee of the patented invention may have received, or may be en­ titled to receive, directly or indirectly from any govern­ ment department or person authorised by a government department in respect of the invention; and the need to ensure that the patentee receives reasonable remuneration having regard to the nature of the patented invention.
(b) 15 20 Compare: 1953 No 64 s 57(1)–(3) 175 Court may refer matter to special or ofﬁcial referee or 25 (1) (2) arbitrator In any proceedings under section 174, the court may order the whole proceedings or any question or issue of fact arising in the proceedings to be referred to a special or ofﬁcial referee or an arbitrator on any terms that the court thinks ﬁt.

References to the court in section 174 must be construed as including a reference to the special or ofﬁcial referee or arbitrator.
Compare: 1953 No 64 s 57(4) 30 176 Special provisions as to Crown use during emergency (1) The powers exercisable in relation to an invention by a gov­ ernment department or a person authorised by a government 35 102 Patents Bill Part 4 cl 177 (b) department under section 170 include the power to exploit the patented invention for any purpose that appears to the gov­ ernment department necessary or desirable— (a) to avoid prejudice to the security or defence of New Zealand; or to assist in the exercise of powers and the implemen­ tation of civil defence emergency management during a state of emergency declared under the Civil Defence Emergency Management Act 2002.
This section is subject to sections 177 to 179.
Compare: 1953 No 64 s 58 5 10 (2) 177 Nature and scope of rights under section 170 (1) is not exclusive; and The right to use a patented invention under section 170— (a) (b) must not be assigned otherwise than in connection with 15 the goodwill of the business in which the patented in­ vention is used; and is, despite section 170(4)(a), limited to the supply of the patented invention predominantly in New Zealand by a government department or a person authorised by 20 a government department under that section.
(c) (2) (3) The right to use a patented invention under section 170 may, on the application of any interested party, be terminated by the court if the court is satisﬁed that the circumstances that gave rise to the right to use the patented invention have ceased to 25 exist and are unlikely to recur.
The right to use a patented invention under section 170 is, except in a case to which section 176 applies, subject to the government department or person authorised by a government department under section 170 having ﬁrst taken all reason­ 30 able steps to obtain the consent of the patentee to the use of the patented invention on reasonable terms and conditions, and having failed to obtain that consent within a reasonable period of time.
Compare: 1953 No 64 s 58A 35 103 Part 4 cl 178 Patents Bill 178 Duty to inform patentee (1) If any use of a patented invention is made by or with the au­ thority of a government department under section 170, the government department must, as soon as practicable after the use of the patented invention has begun, notify and provide the 5 patentee with any information concerning the extent of the use as the patentee may from time to time require.
Subsection (1) does not require the government department to notify or disclose information to the patentee if to do so would, or might reasonably be expected to, prejudice the se­ 10 curity or defence of New Zealand.
Compare: 1953 No 64 s 58B 179 Patentee entitled to remuneration The Crown must, if an act is done under section 170, pay the remuneration to the patentee— (a) (b) that is agreed between the patentee and the Crown; or that is determined by a method agreed between the pa­ tentee and the Crown; or that is determined by the court under section 174 in default of agreement.
(c) Compare: 1953 No 64 s 58C Subpart 7—Mention of inventor in patent, speciﬁcation, and patents register 180 Mention of inventor in patent, speciﬁcation, and patents 15 20 25 register This section applies if the Commissioner is satisﬁed, on a re­ quest or claim made under section 181,— (a) that the person in respect of whom, or by whom, the request or claim is made is the inventor of— (i) an invention for which a patent application has 30 been made; or a substantial part of an invention for which a patent application has been made; and (ii) (b) that the patent application is a direct result of that person being the inventor.
35 (2) (1) 104 Patents Bill Part 4 cl 182 (2) (3) The Commissioner must cause the person to be mentioned as inventor in— (a) any patent granted in relation to the patent application; and the complete speciﬁcation; and the patents register.

(b) (c) The mention of a person as inventor under this section does not confer or derogate from any rights under the patent.
Compare: 1953 No 64 s 23(1) 5 181 Request or claim to be mentioned as inventor (1) A request or claim made for the purposes of section 180 must 10 be made in the prescribed manner (if any).

(2) A request or claim under this section must be made— (a) before the date that is 2 months after the complete spe­ ciﬁcation becomes open to public inspection; or (b) within a further period (not exceeding 1 month) that the 15 Commissioner may allow.
(3) The Commissioner may only extend the period under subsec­ tion (2)(b) on a request to that effect made to the Commis­ sioner before the expiry of the 2 month period referred to in 20 subsection (2)(a).
Compare: 1953 No 64 s 23(3)–(5) 182 Commissioner must give notice of claim and opportunity (1) (2) to be heard If a claim is made under section 181, the Commissioner must 25 give notice of the claim to every applicant for the patent (not being the claimant) and to any other person that the Commis­ sioner considers is interested.
The Commissioner must, before deciding on any request or claim made under section 181, give a reasonable opportunity 30 to be heard to any of the following persons: (a) the person in respect of whom, or by whom, the request or claim is made: any person to whom notice of the claim has been given under this section.
Compare: 1953 No 64 s 23(7) (b) 35 105 Part 4 cl 183 Patents Bill (2) 183 Certiﬁcate concerning ownership (1) A person who alleges that another person should not have been mentioned as inventor under sections 180 to 182 may apply to the Commissioner for a certiﬁcate to that effect.

The Commissioner may issue a certiﬁcate that speciﬁes that 5 a person should not have been mentioned as inventor under those sections.
If the Commissioner issues a certiﬁcate, the Commissioner must rectify the speciﬁcation and the patents register accord­ ingly.

The Commissioner must, before deciding to issue a certiﬁcate, give a reasonable opportunity to be heard to any person that the Commissioner considers is interested.
Compare: 1953 No 64 s 23(8) (4) (3) 10 Part 5 Patent attorney profession Subpart 1—Restrictions on providing patent attorney services 15 184 Title of patent attorney A patent attorney is an individual who is registered as a 20 patent attorney.
185 Title of patent attorney company (1) A patent attorney company is a company in which— (a) (b) (c) all of the directors are registered as patent attorneys; and all of the holders of shares that confer voting rights are 25 registered as patent attorneys or permitted to hold the shares under section 191; and all of the holders of shares that do not confer voting rights are— (i) (ii) registered as patent attorneys; or permitted to hold the shares under section 191; or relatives of persons described in subparagraph (i) or (ii).
30 (iii) 106 Patents Bill Part 5 cl 187 (2) A relative of a person, for the purposes of this section, is any of the following: (a) a spouse, civil union partner, or de facto partner of the person: a parent or grandparent of the person: a step­parent of the person: a brother, sister, half­brother, or half­sister of the per­ son: a child of the person: a stepchild of the person: a parent of the person’s spouse, civil union partner, or de facto partner.
5 10 (b) (c) (d) (e) (f) (g) 186 Title of patent attorney partnership A patent attorney partnership is a partnership in which all of the partners are registered as patent attorneys.

15 187 Only patent attorneys, and patent attorney companies and partnerships, may provide patent attorney services (1) No person may provide patent attorney services unless the per­ son is— (a) (b) a patent attorney and has a current registration certiﬁ­ 20 cate; or a patent attorney company.
(2) No person may provide patent attorney services in partnership with another person unless the other person is— registered as a patent attorney; or (a) a patent attorney company.
(b) (3) A person provides patent attorney services for the purposes of this Act if, and only if, the person does any of the follow­ ing in New Zealand on behalf of another person for gain (or undertakes to do so): (a) applies for or obtains patents in New Zealand or else­ where: prepares or amends speciﬁcations or other documents for the purposes of this Act or of the patent law of any country: gives advice other than of a scientiﬁc or technical nature as to the validity of patents or their infringement.
(b) (c) 25 30 35 107 Part 5 cl 188 Patents Bill (4) to pro­ Subsection (1) does not permit any individual vide patent attorney services for a patent attorney company (whether as an employee or otherwise) unless the individual is a patent attorney with a current practising certiﬁcate.

(5) A person who contravenes this section commits an offence and 5 (6) is liable on summary conviction to a ﬁne not exceeding $5,000.
It is a defence to an offence under subsection (2) if the person proves that the person did not know, and could not reasonably be expected to have known, that the other person was not reg­ istered as a patent attorney or a patent attorney company.
Compare: 1953 No 64 s 103 10 188 False representations (1) No person (A) may represent himself, herself, or itself, or per­ mit another person to represent him, her, or it, as— (a) a patent attorney or patent agent unless A is a patent 15 attorney; or a patent attorney company unless A is a patent attorney company; or entitled to provide patent attorney services, unless A is so entitled under section 187.
20 (b) (c) (2) No person may represent a partnership, in which he or she is a partner, as a patent attorney partnership, or permit another person to do so, unless that partnership is a patent attorney partnership.

(4) (3) A person who contravenes this section commits an offence and 25 is liable on summary conviction to a ﬁne not exceeding $5,000.
It is a defence to an offence under subsection (2) if the per­ son proves that the person did not know, and could not reason­ ably be expected to have known, that the partnership was not a patent attorney partnership.
Compare: 1953 No 64 s 103 30 189 Liability of directors and managers if body corporate commits offence If a body corporate is convicted of an offence against section 187 or 188, every director, and every person concerned in the 35 108 Patents Bill Part 5 cl 191 management of the body corporate, is guilty of the offence if it is proved— (a) that the act that constituted the offence took place with his or her authority, permission, or consent; or that he or she— (i) (b) knew, or could reasonably be expected to have known, that the offence was to be or was being committed; and failed to take all reasonable steps to prevent or stop it.
(ii) Compare: 1953 No 64 s 108 190 Exception for lawyers and incorporated law ﬁrms to provide limited patent attorney services (1) A lawyer or incorporated law ﬁrm may (despite sections 187 and 188) do either or both of the following: (a) provide patent attorney services (including in partner­ ship with another lawyer or incorporated law ﬁrm, de­ spite section 187(2)): (b) make a representation that he, she, or it is entitled to do so.
5 10 15 20 (2) However, no lawyer or incorporated law ﬁrm may prepare a speciﬁcation or document relating to an amendment of a spe­ ciﬁcation (or make a representation that he, she, or it is entitled to do so) unless he, she, or it is— (a) also a patent attorney (with a current registration certiﬁ­ 25 cate) or a patent attorney company; or acting under the instruction of a patent attorney or patent attorney company; or directed to do so by a court of New Zealand.
(3) A person who contravenes subsection (2) commits an of­ 30 fence and is liable on summary conviction to a ﬁne not ex­ ceeding $1,000.
(b) (c) 191 Period of grace for personal representatives of patent (1) attorneys If a patent attorney (A) dies, A’s personal representative (B) 35 may, for up to 3 years from the date of A’s death (or any further period allowed by a court),— 109 Part 5 cl 192 Patents Bill (a) (b) carry on A’s business if B— (i) is a patent attorney (with a current registration certiﬁcate) or a patent attorney company; or ensures that a patent attorney or patent attorney company manages the business: (ii) hold A’s shares in a patent attorney company (and the company does not cease, merely for that reason, to be a patent attorney company).
(2) Subsection (1) applies despite sections 187 and 188.
Compare: 1953 No 64 s 103(6) 192 Exception for pre­1955 companies 5 10 A company is treated as a patent attorney company (despite not coming within section 185), for the purposes of this Act, if— (a) the company carried on business as a patent attorney 15 immediately before 1 January 1955, and was carrying on business as a patent attorney immediately before the commencement of this section; and at least 1 manager or director of the company is a patent attorney.
20 (b) Subpart 2—Registration and certiﬁcates 193 Who is qualiﬁed to be registered as patent attorney (1) An individual is qualiﬁed to be registered as a patent attorney if the Commissioner is satisﬁed that he or she— (a) has passed the examinations or courses required for 25 registration by the Board under section 194, or is certi­ ﬁed by the Board as having equivalent, or substantially equivalent, qualiﬁcations; and (b) meets the prescribed criteria for experience for registra­ tion, or is certiﬁed by the Board as having equivalent, 30 or substantially equivalent, experience; and is a ﬁt and proper person to practise as a patent attorney (see section 195); and has applied in the prescribed manner.
(c) (d) (2) An individual is also qualiﬁed to be registered as a patent 35 attorney if he or she is entitled to be registered under the 110 Patents Bill Part 5 cl 195 Trans­Tasman Mutual Recognition Act 1997 and gives writ­ ten notice to the Commissioner under section 19 of that Act.
194 Determining qualiﬁcation requirements for registration (1) The Board— (a) must keep a list of the examinations or courses required 5 to qualify for registration as a patent attorney (and may amend or replace that list): (b) may determine who is entitled to sit examinations or undertake courses, any rules for the conduct of examin­ ations or courses, and what constitutes a pass in exam­ 10 inations or courses provided by the Board or persons accredited by the Board: (c) may determine the length of time for which a pass in an examination or course remains effective for the pur­ poses of section 193.
The list of examinations or courses— (a) must include the subject or subject groups for the exam­ ination or course and the person providing the examin­ ation or course; and 15 (b) may have alternatives, in which case a candidate need 20 have a pass in only 1 of the alternatives listed.
(2) (3) An examination or course may only be listed if— (a) (b) it is provided to candidates in New Zealand by the Board, by a person that the Board has accredited, or by the Institute and the Commissioner; or it is provided to candidates outside New Zealand by any person and the Board considers that it is an equivalent, or substantially equivalent, qualiﬁcation to 1 or more of the examinations or courses listed under paragraph (a).
25 30 (4) The Commissioner must publicly notify the current list and the Board’s determinations under this section.
195 Matters that may be taken into account in determining (1) whether applicant is ﬁt and proper person The Commissioner may take into account any matters he or 35 she considers relevant in determining whether a person is a ﬁt 111 Part 5 cl 196 Patents Bill and proper person to provide patent attorney services, includ­ ing (without limitation)— (a) (b) whether the person has been convicted of an offence in whether the person is of good character: New Zealand or another country and, if so,— (i) (ii) the nature of the offence; and the time that has elapsed since the offence was committed; and the person’s age when the offence was commit­ ted: (iii) 5 10 (c) whether the person is subject to unresolved disciplinary proceedings relating to patent attorneys or legal practice in New Zealand or another country: (d) whether the person’s registration as a patent attorney (e) (f) has been removed and whether he or she is currently 15 barred from applying for re­registration under this Act: whether the person’s right to practise as a patent attor­ ney in another country has been cancelled and not re­ stored or is currently suspended: whether the person’s right to practise as a lawyer, in 20 New Zealand or another country, has been cancelled and not restored or is currently suspended.
(2) Subsection (1) does not limit the grounds on which a person may be determined not to be a ﬁt and proper person to practise as a patent attorney.

25 196 Registration certiﬁcates (1) An individual is entitled to a registration certiﬁcate on regis­ (2) tration as a patent attorney under this Part.
The individual is entitled to a subsequent registration certiﬁ­ cate if the Commissioner is satisﬁed that he or she— (a) is appropriately registered as a patent attorney (and the registration is not suspended); and has paid the renewal fee and has otherwise applied in the prescribed manner.

(b) (3) A registration certiﬁcate must state the date of its expiry.

(4) A registration certiﬁcate is in force until its expiry date or any earlier date on which a person’s registration is removed.
112 30 35 Patents Bill Part 5 cl 198 197 Failure to pay renewal fee for registration (1) If a patent attorney does not pay a renewal fee on or before the expiry of his or her registration certiﬁcate, the Commissioner may— (a) (b) (c) charge a person a prescribed penalty after the prescribed 5 period; and then suspend the person’s registration if the renewal fee or the penalty has not been paid within the prescribed period; and then remove the suspended person’s registration and bar 10 him or her from applying for re­registration if the re­ newal fee or the penalty has still not been paid within a further prescribed period.
(2) The Commissioner may not take action under a paragraph in subsection (1) if, before the expiry of the prescribed period 15 for that action, the person requests that his or her registration be suspended or removed (but any action already validly taken remains effective).

(3) A suspension or a bar on applying for re­registration under this section remains in force until the person has paid both the 20 renewal fee and the penalty (unless the Commissioner deter­ mines otherwise).
198 When registration may or must be removed or suspended The Commissioner may suspend or remove a person’s regis­ (1) tration in accordance with section 197 (which relates to not 25 paying the renewal fee for registration).

The Commissioner must suspend or remove a person’s regis­ tration— (a) (2) if the person applies for a suspension or removal in the prescribed manner: in accordance with an order under section 217 (which relates to disciplinary penalties).
(b) 30 (3) The Commissioner must remove a person’s registration if sat­ isﬁed that the person has died.

(4) A voluntary suspension under subsection (2)(a) must be for 35 the period required by the person (subject to any minimum or maximum periods set by regulations).

113 Part 5 cl 199 Patents Bill 199 Effect of suspension (1) A person is not a patent attorney for the purposes of this Act for the period for which his or her registration is suspended.
(2) Despite subsection (1),— (a) (b) a patent attorney partnership does not cease to be a 5 patent attorney partnership by reason only that the regis­ tration of a partner in that partnership has been sus­ pended; and a patent attorney company does not cease to be a patent attorney company by reason only that registration of a 10 director or shareholder of the company has been sus­ pended.
(3) A person whose registration is suspended is not entitled to be issued a registration certiﬁcate under section 196 until the end of the period of suspension.

15 (4) At the end of the period of suspension, the person’s registra­ tion, and his or her entitlement to a registration certiﬁcate, is immediately revived (unless his or her registration has been further suspended or removed under this Part).
200 Other matters relating to suspension and removal of 20 (1) (2) registration The Commissioner must comply with any applicable proced­ ures under regulations for suspending or removing registra­ tions.

The Commissioner must record the suspension or removal in 25 the register of patent attorneys.

(3) A person whose registration is suspended or removed is not entitled to a refund of any registration or renewal fees already paid.
114 Patents Bill Part 5 cl 204 Subpart 3—Standards of conduct and discipline Code of conduct 201 Patent attorneys and patent attorney companies subject to code of conduct Every patent attorney and patent attorney company is subject to the code of conduct approved and in force under this sub­ part.
5 202 Purpose and contents of code of conduct (1) The purpose of the code of conduct is to provide, consistent 10 with this Act, a standard of acceptable conduct for patent at­ torneys and patent attorney companies that may be used in the settling of disputes.

The code of conduct may contain minimum standards of care, competence, and conduct for patent attorneys and patent attor­ 15 ney companies.
(2) 203 Institute must develop code of conduct The Institute must— (a) (b) develop a code of conduct, for approval by the Board under section 204, that is consistent with section 20 202; and in preparing a draft code of conduct, consult with— (i) persons or groups that the Board directs (if any); and any other persons that the Institute considers 25 have an interest in its subject matter, including patent attorneys who are not members of the Institute (if any).
(ii) 204 Board may approve draft code of conduct (1) The Board must, as soon as practicable after receiving a draft 30 code of conduct for approval, either approve or decline to ap­ prove the draft code.

The Board may decline to approve a draft code only if, in the Board’s opinion,— (a) the draft code is inconsistent with section 202; or 35 (2) 115 Part 5 cl 205 Patents Bill (b) the Institute has not developed the draft code in accord­ ance with section 203.
205 Publication and application of code of conduct (1) The Board must, after approving a code of conduct, publish in the Gazette a notice stating— (a) (b) (c) the title of the code of conduct; and the date on which the code was approved; and that copies of the code are available for inspection, free of charge, on the Internet; and a place or places at which copies of the code are avail­ 10 able for purchase.
(d) 5 (2) (3) The Board must ensure that copies of the code of conduct are available— (a) (b) for inspection, free of charge, on the Internet; and for purchase at reasonable cost at the place or places 15 speciﬁed in the Gazette notice.

The code approved under section 204 must be presented to the House of Representatives no later than 16 sitting days after the date on which it is approved.
(4) A code of conduct does not have any force or effect under this 20 Act until 28 days after the date on which its approval is notiﬁed in the Gazette or any later date stated in the code.

206 Status of code of conduct The provisions of the code of conduct are regulations for the purposes of the Regulations (Disallowance) Act 1989, but are 25 not regulations for the purposes of the Acts and Regulations Publication Act 1989.
207 Amendments and replacements of code of conduct An amendment to, or revocation and replacement of, a code of conduct must be made in the same way as the code must 30 be made under this subpart, and sections 202 to 206 apply with all necessary modiﬁcations.
116 Patents Bill Part 5 cl 210 Disciplining of patent attorneys and patent attorney companies 208 Who is covered by disciplinary regime The disciplinary regime set out in sections 209 to 221 and in the regulations apply to— every patent attorney: (a) every patent attorney company: (b) every person who was a patent attorney or patent attor­ (c) ney company at the time of the relevant conduct: every person who is the subject of an order by the Board 10 under the disciplinary regime.
(d) 5 209 Complaints and referrals may be made under disciplinary regime (2) (1) A person may complain in the prescribed manner about the conduct of a person to whom the disciplinary regime applies.

The complaint must be in writing and contain the com­ plainant’s name and contact details.

The Board may also refer to the prescribed disciplinary regime any matter that arises out of its own inquiries or from infor­ mation it receives about the conduct of a person to whom the 20 disciplinary regime applies.
(3) 15 (4) Under that disciplinary regime, complaints and referrals must— (a) (b) (c) (unless dismissed on preliminary grounds set out in the regulations) be referred to a complaints assessment 25 committee for investigation; and (unless dismissed by the complaints assessment com­ mittee) be considered by a separate disciplinary com­ mittee; and be otherwise dealt with in accordance with the regula­ 30 tions.
210 Board may direct parties to explore use of alternative (1) dispute resolution for complaints The Board may give, in relation to any complaint, a direction that, within a time ﬁxed by the Board, the parties to the com­ 35 plaint both— 117 Part 5 cl 211 Patents Bill (2) (3) (a) explore the possibility of resolving, by negotiation, con­ ciliation, or mediation, the complaint or those issues re­ lating to the complaint speciﬁed by the Board; and report to the Board.
(b) The Board must not give a direction under subsection (1) if 5 it considers that the direction— (a) would not contribute constructively to resolving the complaint; or (b) would not, in all the circumstances, be in the public interest; or would undermine the urgent nature of the complaint.
(c) If the parties reach an agreed settlement on the complaint or any issue involved in the complaint, the Board— (a) may record the terms of the settlement; and (b) may, by consent of the parties, declare all or some of 15 the terms of the settlement to be all or part of a ﬁnal determination of the complaint by the Board.
10 (4) No evidence of any admission, information, or statement dis­ closed or made in a negotiation, conciliation, or mediation en­ tered into following a direction under this section is admissible 20 in proceedings before the Board, a Board committee, a court, or a tribunal (but this does not affect evidence that is otherwise discoverable or admissible and existed independently of that negotiation, conciliation, or mediation).
(5) Any resolution, or part resolution, of a complaint under this 25 section does not preclude the Board from exercising its powers under this Part in relation to the complaint.
211 Board’s powers of investigation (1) The Board, or any person authorised by the Board in writing to do so, may do 1 or more of the following things if the Board 30 considers it reasonably necessary for the purposes of any in­ vestigation or inquiry under this subpart: (a) (b) examine any papers, documents, records, or things: require any person to produce for examination any papers, documents, records, or things in that person’s 35 possession or under that person’s control, and to allow copies of or extracts from any such papers, documents, or records to be made: 118 Patents Bill Part 5 cl 212 (c) (d) require any person to supply, in a form approved by or acceptable to the Board,— (i) (ii) any information or particulars that it requires: any copies of or extracts of papers, documents, or records supplied or produced to it: require any person to verify any written information or particulars or any copies or extracts supplied or pro­ duced to it under this section by statutory declaration or afﬁdavit.
5 The Board may on its own initiative, or on application of any 10 party to the proceedings, and subject to any terms it thinks ﬁt, order that any of the following material supplied or produced to it under this section be supplied to any person appearing before the Board: (a) (b) any information or particulars: a copy of the whole or any part of any paper, document, or record.
15 Every person has the same privileges as witnesses have in a court in relation to— (a) the giving of information to the Board (or a Board com­ 20 mittee) or authorised person: the answering of questions put by the Board (or a Board committee) or authorised person: the production of papers, documents, records, and things to the Board (or a Board committee) or author­ 25 ised person.
(b) (c) (2) (3) 212 Offence of obstruction (1) Every person commits an offence who— (a) wilfully obstructs or hinders the Board, any member of it, a Board committee, or any authorised person in 30 any inspection or examination of papers, documents, records, or things under section 211; or (b) without sufﬁcient cause, fails to comply with any re­ quirement of the Board, a Board committee, or any au­ thorised person made under section 211(1)(b) or (c); 35 or without sufﬁcient cause, acts in contravention of or fails to comply with any order made by the Board or a Board (c) 119 Part 5 cl 213 Patents Bill committee under section 211(2) or any term or condi­ tion of the order.
(2) A person who commits an offence against this section is liable on summary conviction to a ﬁne not exceeding $2,000.
213 Evidence (1) The Board may— (a) receive in evidence any statement, document, informa­ tion, or matter that may, in its opinion, assist it to deal effectively with the matters before it, whether or not the material would be admissible in a court of law; and receive evidence on oath; and permit a person appearing as a witness before it to give evidence by tendering a written statement and verifying that statement by oath, statutory declaration, or other­ wise.
(b) (c) 5 10 15 (2) An inquiry before the Board (or a Board committee) is a ju­ dicial proceeding for the purposes of sections 108 and 109 of the Crimes Act 1961 (which relate to perjury).
Issuing of summons by Board The Board may issue a summons to a person requiring that 20 person to attend a hearing before the Board and to do all or any of the following matters: give evidence: (a) give evidence under oath: (b) produce documents, things, or information, or any spe­ 25 (c) ciﬁed documents, things, or information, in the posses­ sion or control of that person that are relevant to the subject of the inquiry.
The Board may require that any documents, things, or infor­ mation produced under this section be veriﬁed by oath, statu­ 30 tory declaration, or otherwise.

Sections 283 to 285 contain requirements for the summons and the offence of failing to comply with the summons.
214 (1) (2) (3) 120 Patents Bill Part 5 cl 216 215 Protection of persons appearing Every witness giving evidence, and every counsel or agent or other person appearing before the Board (or a Board commit­ tee), has the same privileges and immunities as witnesses and counsel in a court.
5 216 Grounds for discipline of patent attorneys and patent (1) attorney companies The Board may (in relation to a matter raised by a complaint or by its own inquiries) make an order under section 217 if it is satisﬁed that— (a) both of the following apply: (i) 10 a patent attorney has been convicted, whether be­ fore or after he or she was registered, by any court in New Zealand or elsewhere of any offence pun­ ishable by imprisonment for a term of 6 months 15 or more; and the commission of the offence reﬂects adversely on the person’s ﬁtness to practise as a patent at­ torney; or (ii) (b) (c) a patent attorney or patent attorney company has 20 breached the code of conduct; or a patent attorney has, for the purpose of obtaining regis­ tration or a registration certiﬁcate (either for himself or herself or for any other person),— (i) either orally or in writing, made any declaration 25 or representation knowing it to be false or mis­ leading in a material particular; or produced to the Board or Commissioner or made use of a document knowing it to contain a dec­ laration or representation referred to in subpara­ 30 graph (i); or produced to the Board or Commissioner or made use of any document knowing that it was not gen­ uine.
(ii) (iii) (2) The Board may make an order whether or not the person is still 35 a patent attorney or patent attorney company.
121 Part 5 cl 217 Patents Bill 217 Disciplinary penalties (1) In any case to which section 216 applies, the Board may order— (a) that (in the case of a patent attorney) the person’s regis­ tration be removed, and may order either or both of the 5 following: (i) (ii) the person may not apply for re­registration be­ fore the expiry of a speciﬁed period: the person must sell shares that he or she holds in a patent attorney company within a speciﬁed 10 period (and, in this case, the patent attorney com­ pany does not cease to be a patent attorney com­ pany merely for the reason that the person con­ tinues to hold the shares for that period): (b) (c) (d) (e) (f) that (in the case of a patent attorney) the person’s regis­ 15 tration be suspended for a period of no more than 12 months or until the person meets speciﬁed conditions relating to the registration (but, in any case, not for a period of more than 12 months): that the person be censured (a censure): that the person must pay a ﬁne to the Commissioner not exceeding $5,000 (a ﬁne): that the person must refund money or return money or property to a person speciﬁed in the order (a remedial order): that the person must do, or pay for another person to do, a speciﬁed act or acts to remedy the complaint or other matter (a remedial order).
20 25 (2) The Board may make only 1 type of order under subsection (1) in relation to a case, except that it may make— (a) more than 1 remedial order; or (b) an order for a ﬁne in addition to a suspension order or a censure; or a remedial order in addition to a suspension order or a censure.

(c) 30 35 (3) No ﬁne may be imposed in relation to an act or omission that constitutes an offence for which the person has been convicted by a court.
122 Patents Bill Part 5 cl 221 218 Orders for payment of costs (1) In any case to which section 217 applies, the Board may order the person to pay to the Commissioner the reasonable costs and expenses of either or both of the following: (a) any investigation or inquiry made, and any hearing con­ 5 ducted, by the Board in connection with that person: administrative support provided by the Commissioner to the Board on the investigation, inquiry, or hearing.
(b) (2) The order may be entered as a judgment of the court and, with the leave of the court, may be enforced accordingly.

10 219 Board must notify Commissioner of orders (1) The Board must notify the Commissioner, for recording in the register,— (a) (b) of any order it makes under section 217; and of any decision of which the Board is notiﬁed that is 15 a decision of the District Court or High Court on an appeal from a decision of the Board.
(2) (3) If the person does not exercise his or her right of appeal under section 222 or 229 within the applicable time limit or has un­ successfully exhausted his or her rights of appeal under those 20 sections, the Board may, in addition to notifying the Commis­ sioner under subsection (1), publicly notify an order in any other way it thinks ﬁt.
The Commissioner, subject to section 233(3), must take any action necessary to give effect to an order of the Board in re­ 25 lation to the registration of a person on the register of patent attorneys.

220 Effect of order to pay money on right to damages A remedial order made under section 217 does not affect any right of the person who is entitled to receive money or property 30 under that order to recover damages in respect of the same loss, but that order must be taken into account in assessing damages.
221 Orders enforceable against former patent attorneys If the Board, acting in accordance with this Act and the regu­ lations in relation to a disciplinary matter, makes an order or 35 123 Part 5 cl 222 Patents Bill otherwise exercises any power in respect of any person who is or was a patent attorney, that order or other exercise of any power has effect whether or not that person remains on the register of patent attorneys as a patent attorney.
Subpart 4—Appeals under this Part 5 222 Right of appeal (1) A person may appeal to a District Court against any decision of the Board or the Commissioner under this Part.

(2) An appeal— (a) must be brought by way of notice of appeal in accord­ 10 ance with the rules of court; and (b) must be lodged within 20 working days after the date of the decision or within any further time the District Court allows on application made before or after the period expires.
15 223 Decisions to have effect pending determination of appeal A decision against which an appeal under section 222 is lodged continues in force pending the determination of the ap­ peal unless the District Court orders otherwise.

224 Procedure on appeal (1) An appeal must be heard as soon as is reasonably practicable 20 after it is lodged.

(2) An appeal is by way of rehearing.


(3) On hearing the appeal, the District Court— (a) may conﬁrm, reverse, or modify the decision appealed 25 against; and (b) may make any other decision that the Board or Com­ missioner could have made.

(4) The District Court must not review— (a) (b) any part of a decision not appealed against; or any decision not appealed against at all.

30 225 Court’s decision ﬁnal Except as provided in section 229, the decision of the District Court on an appeal is ﬁnal.
124 Patents Bill Part 5 cl 229 226 Court may refer matter back for reconsideration (1) Instead of determining an appeal, the District Court may direct the Board or Commissioner to reconsider, either generally or in respect of any speciﬁed aspect, the whole or any part of the decision.

In giving a direction under subsection (1), the court— (a) must state its reasons for the direction; and (b) may give any other directions it thinks just as to the matter referred back for reconsideration.
(2) (3) The Board or Commissioner, after receiving a direction to re­ 10 consider,— (a) must reconsider the matter; and (b) in doing so, must— (i) (ii) take the court’s reasons into account; and give effect to the court’s directions.

227 Orders as to costs On an appeal, the District Court may order any party to the appeal to pay to any other party to the appeal any or all of the reasonable costs incurred by the other party in respect of the appeal.
228 Orders as to publication of names or particulars (1) On any appeal, the District Court may, if in its opinion it is proper to do so, prohibit the publication of the name or par­ ticulars of the affairs of a patent attorney, patent attorney com­ pany, or any other person.

In deciding whether to make an order under subsection (1), the District Court must have regard to— (a) the interests of any person (including, without limita­ tion, the privacy of any complainant); and the public interest.
(2) (b) 5 15 20 25 30 229 Appeal on question of law (1) A party to an appeal may appeal to the High Court against any (2) determination of law arising in the appeal.

The appeal must be heard and determined in accordance with the appropriate rules of court.
35 125 Part 5 cl 230 Patents Bill (3) (4) Part 4 of the Summary Proceedings Act 1957 (together with the other provisions of that Act that are applied in that Part) applies to the appeal— (a) so far as it is applicable and with all necessary modiﬁ­ cations; but only so far as it relates to appeals on questions of law.

(b) Subsection (3) overrides subsection (2).


5 Subpart 5—Register of patent attorneys 230 Commissioner to establish and maintain register of patent (1) (2) attorneys The Commissioner must keep, in New Zealand, a register of patent attorneys in accordance with this Act and the regula­ tions.

Section 253 provides for the Commissioner’s certiﬁcate to be prima facie evidence of matters relating to the register and 15 registration of patent attorneys.
10 231 Purpose of register of patent attorneys The purpose of the register of patent attorneys is to— (a) enable persons who search the register in accordance with this Act to— (i) 20 know whether a person is registered as a patent attorney, and to know what the status of the per­ son’s registration is and whether he or she has a current registration certiﬁcate; and ﬁnd out the contact address and address for ser­ 25 vice of a patent attorney; and know whether a patent attorney has been discip­ lined in the last 3 years; and (ii) (iii) (b) facilitate the functions of the Commissioner and Board under this Act.
30 232 Form of register of patent attorneys The register of patent attorneys may be— (a) (b) an electronic register; or kept in any other manner that the Commissioner thinks ﬁt.

35 126 Patents Bill Part 5 cl 235 233 Contents of register of patent attorneys (1) (2) (3) The register of patent attorneys must contain the information referred to in subsection (2), to the extent that it is relevant, for each patent attorney (including those with suspended regis­ trations).
The information that must be contained in the register is— the full name and contact address of the person; and (a) the New Zealand address for service of the person; and (b) the following matters on the status and history of the (c) person’s registration: (i) (ii) 5 10 the date on which the person was registered; and the period for which the most recent registration certiﬁcate was issued or the date on which it will expire; and any order made on a disciplinary matter in the last 15 3 years; and any other suspension that is current, the ground under this Act for the suspension, its period, and any conditions for its termination; and (iii) (iv) (d) any information the Commissioner considers necessary 20 or desirable for the purposes of the register.
The Commissioner may publicly notify in the register an order made on a disciplinary matter only if— (a) the person has not exercised any right of appeal under section 222 within 20 working days after the date of 25 the decision or under section 229 within the applicable time limit; or the person has exhausted a right of appeal that has been exercised under this Part.
(b) 234 Search of register of patent attorneys 30 A person may search the register of patent attorneys in accord­ ance with this Act and the regulations.

235 Obligation to notify Commissioner of changes to details in register of patent attorneys A patent attorney must inform the Commissioner of any 35 changes to his or her name, contact address, or address for service within 3 months after that change.
127 Part 5 cl 236 Patents Bill 236 Changes to register of patent attorneys (1) The Commissioner may, at any time, make any changes to the register of patent attorneys that are necessary to— (a) reﬂect any changes to any particulars of a person or the information that must be contained in the register under 5 section 233; or correct an error or omission on the part of the Commis­ sioner or any other person.
(b) (2) If the Commissioner makes a change to the register of patent attorneys under subsection (1)(b), the Commissioner must 10 send written notiﬁcation to the affected person before making the change.

Subpart 6—Patent Attorneys’ Standards Board 237 Patent Attorneys’ Standards Board of New Zealand 15 The Patent Attorneys’ Standards Board of New Zealand is es­ tablished.
238 Functions of Board The functions of the Board are— (a) to determine the examinations or courses in the subjects 20 or subject groups that are required to qualify for regis­ tration: to conduct examinations for patent attorney candidates, or accredit other persons to provide courses of study or conduct examinations (or both), in those subjects or 25 subject groups: to assess the qualiﬁcations and experience held by can­ didates for registration against the requirements under this Part or the regulations, and certify candidates as meeting those requirements when appropriate: to publish (whether by electronic means or otherwise) information related to the Board’s functions under this Part or the requirements relating to patent attorneys under this Part or the regulations: 30 (b) (c) (d) 128 Patents Bill Part 6 cl 241 (e) (f) (g) (h) to review the draft code of conduct and, if it meets the statutory requirements, approve the code of conduct in accordance with this Part: to receive, investigate, and hear complaints about, and to inquire into the conduct of, and discipline, patent 5 attorneys in accordance with this Part: to carry out other functions, duties, and powers con­ ferred on the Board by this Act and the regulations: any functions that are incidental and related to, or con­ sequential on, the other functions set out in this section.
10 239 Membership of Board The membership of the Board consists of— (a) (b) the Commissioner; and an Assistant Commissioner of Patents who is nominated by the Commissioner; and no fewer than 2 persons to be nominated by the Institute and appointed by the Minister; and at the option of the Minister, 1 person appointed by the Minister.

(c) (d) 240 Further provisions relating to Board and its members Schedule 1 applies to the Board and its members.
Part 6 Administrative and miscellaneous provisions Subpart 1—Patents register and other information on patents and patent applications Patents register 15 20 25 241 Patents register (1) The Commissioner must keep a register of patents in New 30 Zealand in accordance with this Act and the regulations.

Sections 252 and 253 provide for evidence relating to the patents register.
(2) 129 Part 6 cl 242 Patents Bill 242 Purpose of patents register The purpose of the patents register is to— enable members of the public to— (a) (i) (ii) know what patents are in force and the key dates for those patents (for example, the date of ﬁling 5 of the patent application); and know who is the patentee and who has other inter­ ests in a patent (for example, under a mortgage or licence) and the addresses for service of those persons; and 10 (iii) ﬁnd out about the scope of a claim; and (iv) ﬁnd out other matters affecting the validity and ownership of the patent and of any licences of the patent; and (b) facilitate the functions of the Commissioner under this 15 Act.
243 Form of patents register The patents register may be— an electronic register; or (a) kept in any other manner that the Commissioner thinks 20 (b) ﬁt.
244 Contents of patents register (1) The patents register must contain the following information for patents in force in New Zealand: (a) the names, addresses, nationality or principal place of 25 business (as appropriate), and addresses for service of patentees: the date of ﬁling of the patent application, the patent date, the priority date or dates, the date of the publica­ tion of the accepted complete speciﬁcation, the date the 30 complete speciﬁcation became open to public inspec­ tion, the date that the patent is granted, and the date the next renewal fee is due: titles of the complete speciﬁcations: details of assignments and transmissions: the names, addresses, and addresses for service of li­ censees and other persons with interests in patents: 35 (b) (c) (d) (e) 130 Patents Bill Part 6 cl 249 (f) any other matters required by or under this Act to be entered in the patents register.
(2) The patents register may also contain any other information that the Commissioner considers necessary or desirable.

(3) No notice of any trust may be entered in the patents register, 5 and the Commissioner is not affected by any notice of that kind.

Compare: 1953 No 64, s 83(1), (4) Searches of patents register and obtaining patent information 10 245 Search of patents register A person may search the register in accordance with this Act or the regulations.
246 Requests for patent information The Commissioner must give a person the prescribed infor­ 15 mation concerning a patent or patent application if the person requests it in the prescribed manner.

Compare: 1953 No 64 s 90 247 Loss or destruction of patent If the Commissioner is satisﬁed that a patent has been lost or 20 destroyed or cannot be produced, he or she may, on request by a person in the prescribed manner, provide a replacement copy of the patent.
Compare: 1953 No 64 s 92 Changes to patents register and other ofﬁcial documents 25 248 Changes to patents register The Commissioner may make changes to the patents register in accordance with this Act or the regulations.
249 Commissioner may correct own mistakes in patents 30 (1) register, etc The Commissioner may correct an error or omission that the Commissioner is satisﬁed has been made by the Commissioner 131 Part 6 cl 250 Patents Bill (or an employee or other person providing services for the beneﬁt of the Commissioner or IPONZ) in— (a) (b) (c) The Commissioner must, before making the correction,— (a) the patents register; or any patent; or any other document issued under this Act.
give notice that the Commissioner proposes to make the correction to persons that the Commissioner thinks have an interest in it; and give those persons a reasonable opportunity to be heard.

10 (b) The Commissioner may require production of the patent or other document to make the correction.
Compare: 1953 No 64 s 88(1), (2) 5 (2) (3) 250 Commissioner may correct other persons’ mistakes in (1) patents register, etc The Commissioner may (on application by any person or on the Commissioner’s own initiative) correct an error or omis­ sion that the Commissioner is satisﬁed has been made by any person in— (a) (b) (c) (d) the patents register; or any patent; or any patent application; or any documents ﬁled in connection with a patent appli­ cation or ﬁled in proceedings before the Commissioner in connection with a patent or patent application.
15 20 25 (2) Any person (whether or not that person made the error or omis­ sion) may apply for a correction under this section in the pre­ scribed manner.

The Commissioner must, before making the correction, pub­ lish in the journal the nature of the proposed correction if the 30 Commissioner thinks that— (a) (3) the correction would materially alter the meaning or scope of the document to be corrected; and it ought not be made without notice to persons who have an interest in it.
35 (b) 132 (4) (5) Patents Bill Part 6 cl 252 If a person gives notice within the prescribed time to the Com­ missioner of opposition to the application for the proposed cor­ rection, the Commissioner must, before deciding the matter,— give notice of the opposition to the applicant; and (a) give the applicant and opponent a reasonable opportun­ 5 (b) ity to be heard.
This section does not apply to an error or omission by persons referred to in section 249(1) or to an error or omission in a complete speciﬁcation (see subpart 8 of Part 3 for amend­ ments to complete speciﬁcations).

Compare: 1953 No 64 s 88(3), (4) (3) (2) 251 Court may rectify patents register (1) The court may, on application of any person aggrieved, order the patents register to be rectiﬁed by making an entry, or vary­ ing or deleting an entry, in it.
In proceedings under this section, the court may determine any question that it is necessary or expedient to decide in connec­ tion with the rectiﬁcation of the patents register.

The applicant for rectiﬁcation must give notice of the applica­ tion in the prescribed manner to the Commissioner.

The Commissioner is entitled to appear and be heard on the application, and must appear if so directed by the court.
(5) Any order by the court under this section must direct that no­ tice of the order must be served on the Commissioner in the prescribed manner.

The Commissioner must, on receipt of notice of an order, rec­ tify the patents register accordingly.

Compare: 1953 No 64 s 87 (6) (4) Evidence 252 Evidence: patents register and patents (1) The patents register is prima facie evidence of any matters required or authorised by or under this Act to be entered in it.
(2) A copy of, or extract from, a patent or registered document that purports to be certiﬁed as a true copy or extract by the 35 133 10 15 20 25 30 Part 6 cl 253 Patents Bill Commissioner is admissible in evidence in legal proceedings to the same extent as the original patent or document.
Compare: 1953 No 64 ss 83(3), 89(2) 253 Evidence: anything done by Commissioner (1) A certiﬁcate purporting to be signed by the Commissioner in 5 relation to the matters referred to in subsection (2) is for all purposes prima facie evidence of those matters speciﬁed in the certiﬁcate.
The matters are— (a) (2) that anything that he or she is authorised to do by or 10 under this Act (including entries in the patents register or register of patent attorneys) has or has not been done; or that anything that he or she is authorised or required to do by or under this Act has been lawfully done; or that any person was or was not registered as a patent at­ torney at any particular time or during any period spe­ ciﬁed in the certiﬁcate; or that any person did or did not hold a registration certiﬁ­ cate at any particular time or during any period speciﬁed 20 in the certiﬁcate; or that any entry in the patents register or register of patent attorneys is as stated in the certiﬁcate.
15 (b) (c) (d) (e) Compare: 1953 No 64 s 89(1) Journal and other publications 25 254 Commissioner must publish journal (1) The Commissioner must periodically publish a journal con­ taining— (a) prescribed details concerning patents and patent appli­ cations (for example, the names and patentees of patents 30 granted and brief descriptions of the inventions); and any other matter required by this Act, the regulations, or any other law to be published in it; and other information concerning patents or patent applica­ tions that the Commissioner thinks is useful or desirable 35 for patentees, patent applicants, licensees, or the public to know.
(b) (c) 134 Patents Bill Part 6 cl 256 (2) The journal may be published electronically or in any other manner that the Commissioner thinks ﬁt.

Compare: 1953 No 64 s 112(1) 255 Commissioner may keep or publish indexes, etc The Commissioner may publish indexes, (1) abridgments of speciﬁcations, catalogues, and other works relating to inventions, patents, and patent applications that he or she thinks ﬁt.
The Commissioner may keep a classiﬁcation by subject matter of— (a) (2) speciﬁcations, 5 10 speciﬁcations ﬁled in New Zealand and open to public inspection; and printed publications relating to patents published in New Zealand that are necessary or useful for the pur­ pose of determining with readiness and accuracy the 15 patentability of inventions.

(b) (3) Those indexes and other documents may be published or kept electronically or in any other manner that the Commissioner thinks ﬁt.
Compare: 1953 No 64 s 112(2), (3) 20 Subpart 2—General provisions on proceedings of Commissioner Giving evidence to Commissioner 256 How to give evidence to Commissioner in proceedings (1) Evidence must be given by afﬁdavit or statutory declaration 25 (unless the Commissioner directs otherwise under subsec­ tion (2)) in proceedings before the Commissioner under this Act.
(2) However, the Commissioner may— (a) (b) take oral evidence instead of, or as well as, the afﬁdavit 30 or declaration; and allow a witness to be cross­examined on the witness’s afﬁdavit, declaration, or oral evidence.

(3) The statutory declaration may be used before a court in any appeal instead of evidence by afﬁdavit and, if used in this way, 35 135 Part 6 cl 257 Patents Bill (4) has all the same incidents and consequences as evidence by afﬁdavit.
Section 111 of the Crimes Act 1961 (which relates to false statements or declarations) applies to every afﬁdavit and statu­ tory declaration made for the purposes of this Act.

Compare: 1953 No 64 s 96(1), (4) 5 257 Commissioner may receive evidence on oath (1) The Commissioner may also administer oaths to any witness in proceedings before him or her.
Evidence given on oath before the Commissioner is given in 10 judicial proceedings for the purposes of sections 108 and 109 of the Crimes Act 1961 (which relate to perjury).
Compare: 1953 No 64 s 96(2), (3) Issuing of summons by Commissioner The Commissioner may issue a summons to a person requiring 15 that person to attend a hearing before the Commissioner and to do all or any of the following matters: (a) (b) (c) give evidence: give evidence under oath: produce documents, things, or information, or any spe­ 20 ciﬁed documents, things, or information, in the posses­ sion or control of that person that are relevant to the hearing.
The Commissioner may require that any documents, things, or information produced under this section be veriﬁed by oath, 25 statutory declaration, or otherwise.

Sections 283 to 285 contain requirements for the summons and offences for failing to comply with the summons.
Power to award costs 259 Commissioner may award costs (1) The Commissioner may, in any proceedings before him or her under this Act,— (a) by order, award to a party costs that the Commissioner considers reasonable; and direct how and by what parties they are to be paid.

(b) 136 30 35 (2) 258 (1) (2) (3) Patents Bill Part 6 cl 262 (2) The order may be entered as a judgment of the court and, with the leave of the court, may be enforced accordingly.
Compare: 1953 No 64 s 95(1) 260 Commissioner or court may require security for costs (1) The Commissioner or the court on appeal, as the case may be, 5 may require a party to proceedings to give security for the costs of the proceedings or appeal if the party does not reside, and does not carry on business, in New Zealand.

If the party does not give the security required, the Commis­ sioner or court may treat the proceedings as abandoned by the 10 party and determine the matter accordingly.
Compare: 1953 No 64 s 95(2) (2) Appeals of Commissioner’s decisions 261 Appeals of decisions of Commissioner (1) A person who is aggrieved by a decision of the Commissioner 15 under this Act may appeal to the court.

(2) An appeal— (a) must be brought by way of notice of appeal in accord­ ance with the rules of court; and (b) must be lodged within— 20 (i) (ii) 20 working days after the date of the decision; or any further time the court allows on application made before or after that period expires.
(3) This section— (a) does not apply to decisions of the Commissioner under 25 Part 5 (see section 222 for appeals of those deci­ sions): does not allow an appeal to be made to the court from a decision of the Commissioner under section 27 or 28 (see section 29 for reviews of those decisions).
30 (b) 262 Decisions to have effect pending determination of appeal A decision against which an appeal under section 261 is lodged continues in force pending the determination of the ap­ peal unless the court orders otherwise.

137 Part 6 cl 263 Patents Bill 263 Procedure on appeal (1) An appeal must be heard as soon as is reasonably practicable after it is lodged.

(2) An appeal is by way of rehearing.


(3) On hearing the appeal, the court— (a) may conﬁrm, reverse, or modify the decision appealed against; and (b) may make any other decision that the Commissioner (4) could have made.

The court must not review— (a) (b) any part of a decision not appealed against; or any decision not appealed against at all.
264 Appeals of decisions of court on appeal (1) A decision of the court on an appeal of a decision of the Com­ 5 10 (b) missioner may be further appealed to the Court of Appeal if— 15 the decision was made under section 25 (which re­ (a) lates to the Commissioner’s power to give directions to co­owners); or the decision was made under section 92 or 104 (which relates to the revocation of a patent by the Commis­ 20 sioner) and the effect of the decision is the revocation of a patent; or the court or Court of Appeal gives leave.
(2) All other decisions of the court on an appeal of a decision of (c) the Commissioner are ﬁnal.

Compare: 1953 No 64 ss 97(4), 98 25 Costs of Commissioner 265 Costs of Commissioner in proceedings In all proceedings before a court under this Act, the costs of the Commissioner are at the discretion of the court.
Compare: 1953 No 64 s 99 30 138 Patents Bill Part 6 cl 268 Subpart 3—Establishment and operation of administrative bodies for patents Commissioner and Assistant Commissioners 266 Commissioner and Assistant Commissioners (1) The chief executive of the Ministry must appoint, under the 5 State Sector Act 1988,— (a) (b) the Commissioner of Patents; and as many Assistant Commissioners of Patents as may be necessary for the purposes of this Act.
(2) These persons are employees of the Ministry, and those ap­ 10 pointments may be held separately or in conjunction with any other ofﬁce in the Ministry.
Compare: 1953 No 64 ss 3, 4 267 Functions of Commissioner The functions of the Commissioner are, in accordance with 15 this Act and the regulations, to— (a) examine patent applications and speciﬁcations, grant patents, revoke patents, and accept surrenders of patents, and make other decisions relating to patent applications and patent grants: assess candidates for registration, register patent at­ torneys, and carry out other functions relating to their registration, in accordance with Part 5: provide administrative support to the Board: 20 (c) (d) maintain the patents register and carry out other func­ 25 tions relating to the patents register: (f) (e) maintain the patent attorneys register and carry out other functions relating to the patent attorneys register: maintain and supply information on patents and patent applications, including by publishing a journal: carry out other functions, duties, and powers conferred on him or her by this Act and the regulations.
(g) 30 268 Powers of Assistant Commissioners of Patents (1) An Assistant Commissioner of Patents has the functions, du­ ties, and powers of the Commissioner under this Act (other 35 139 (b) Part 6 cl 269 Patents Bill (2) than the power to delegate under section 269), but is subject to the control of the Commissioner.

The fact that an Assistant Commissioner exercises those func­ tions, duties, and powers is conclusive evidence of the author­ ity to do so.
Compare: 1953 No 64 s 4(2), (3) 269 Power of Commissioner to delegate (1) The Commissioner may delegate to any person, either gener­ ally or particularly, any of the Commissioner’s functions, du­ ties, and powers (except this power of delegation).
(2) A delegation— (a) must be in writing; and (b) may be made subject to any restrictions and conditions 5 10 (c) (d) that the Commissioner thinks ﬁt; and is revocable at any time, in writing; and does not prevent the performance or exercise of a func­ tion, duty, or power by the Commissioner.
(3) A person to whom any functions, duties, or powers are dele­ gated may perform and exercise them in the same manner and with the same effect as if they had been conferred directly by 20 this Act and not by delegation.

15 (4) A person who appears to act under a delegation is presumed to be acting in accordance with its terms in the absence of evidence to the contrary.
(5) Any reference in this Act or the regulations to the Commis­ 25 sioner includes a reference to the delegate in respect of any­ thing delegated to that person.

270 Annual report of Commissioner (1) The Commissioner must, as soon as practicable after 30 June, but no later than 30 September, of each year, give to the Min­ 30 ister a report on the operation of this Act for the year ended on the immediately preceding 30 June.
The report must include an account of fees, salaries, allow­ ances, and other money received and paid under this Act dur­ ing that year, and any other reports required by other Acts or 35 by the regulations.

(2) 140 Patents Bill Part 6 cl 273 (3) The Minister must present a copy of the report to the House of Representatives within 6 sitting days of receiving it.
Compare: 1953 No 64 s 116 271 Liability of Commissioner and others The Commissioner, an Assistant Commissioner, or any other 5 person acting on behalf of the Commissioner, is not person­ ally liable for any act or omission done in good faith in the performance or intended performance of the Commissioner’s functions, duties, or powers.
Intellectual Property Ofﬁce of New Zealand 10 272 (1) Intellectual Property Ofﬁce of New Zealand The Minister may, by notice in the Gazette,— (a) appoint a place where there is an ofﬁce situated for the purpose of communications to and from the public on matters arising under this Act, the Trade Marks Act 15 2002, the Designs Act 1953, and any other intellectual property statutes that the Minister thinks ﬁt; and change that place; and name that ofﬁce; and change the name of that ofﬁce.
20 (b) (c) (d) (2) On the commencement of this section (to avoid the need for a notice, but without preventing future changes by notice),— (a) the place used as the Patent Ofﬁce immediately before the commencement of this section is appointed as the place for that ofﬁce; and the name of that ofﬁce is the Intellectual Property Ofﬁce of New Zealand.
(b) 25 (3) The Governor­General may, by Order in Council, amend this Act and any other enactment by omitting the name of that of­ ﬁce and substituting another name to reﬂect a name change of 30 that ofﬁce.

273 Opening hours of Intellectual Property Ofﬁce of New (1) Zealand The Commissioner may— (a) ﬁx the opening hours for IPONZ; and 35 141 Part 6 cl 274 Patents Bill (2) declare IPONZ closed on any day.

(b) The Commissioner must publicly notify those opening hours and (before closing IPONZ) any closure.
(3) A thing that must or may be done on a particular day or within a limited period of time may, if that day or the last day of that 5 period is not an opening day of IPONZ, be done on the next opening day.
274 Closing of Intellectual Property Ofﬁce of New Zealand at (1) (2) (3) short notice The Commissioner may declare IPONZ closed without giving 10 publication of the closure under section 273 if— (a) he or she thinks it necessary or desirable because of an emergency or other temporary circumstances; and it is not practicable to make that prior publication.

(b) The Commissioner must then, if practicable, display a public 15 notice that IPONZ is closed in or on the building in which IPONZ is situated.
The Commissioner must also, as soon as practicable after clos­ ing IPONZ, publicly notify the closure.

Māori advisory committee 275 Appointment and membership of Māori advisory (1) (2) committee The Commissioner must appoint a committee called the Māori advisory committee.

The Commissioner may, at any time,— (a) (b) appoint a person to the committee: remove a member from the committee and, if the Com­ missioner thinks ﬁt, appoint another member in that member’s place.
20 25 (3) A person must not be appointed as a member of the committee 30 unless, in the opinion of the Commissioner, the person is qual­ iﬁed for appointment, having regard to that person’s know­ ledge of mātauranga Māori (Māori traditional knowledge) and tikanga Māori (Māori protocol and culture).

(4) A member of the committee may resign ofﬁce by notice in 35 writing to the Commissioner.
142 Patents Bill Part 6 cl 280 276 Functions of Māori advisory committee The function of the Māori advisory committee is to advise the Commissioner (on request) on whether— (a) an invention claimed in a patent application is derived from Māori traditional knowledge or from indigenous 5 plants or animals; and if so, whether the commercial exploitation of that in­ vention is likely to be contrary to Māori values.
(b) 277 Effect of advice from Māori advisory committee The Commissioner must consider, but is not bound by, the 10 advice given by the Māori advisory committee.

278 Māori advisory committee may regulate own procedure The Māori advisory committee may regulate its own proced­ ure, subject to any direction given by the Commissioner.
Subpart 4—Other miscellaneous provisions Power to extend time limits 15 279 Commissioner may extend time limits for delays by (1) (2) Commissioner The Commissioner may extend the time within which any­ thing must be done under this Act or the regulations if that 20 thing is or will not be done in time because of a delay by the Commissioner.

The Commissioner may grant the extension even if the time has expired for doing the thing.
Compare: 1953 No 64 s 93(1), (5) 25 280 Commissioner may extend time limits for certain ﬁling (1) requirements or for delivery failures The Commissioner may, on application by any person under section 281 or at the Commissioner’s own discretion, ex­ tend— (a) the time limit under section 35 (which relates to the time limit for the ﬁling of a complete speciﬁcation) or section 50 (which relates to the ﬁling of a convention application); or 30 143 Part 6 cl 281 Patents Bill (b) the time within which anything must be done under this Act or the regulations if that thing is or will not be done in time because of a failure or delay of the post, fax, or electronic delivery.
(2) The Commissioner may grant the extension even if the time 5 has expired for doing the thing.
(3) However, the Commissioner must refuse to grant an extension if in his or her opinion— (a) the applicant or the applicant’s agent has not allowed a reasonable margin of time for the delivery to IPONZ, 10 by post or otherwise, of any documents or information relating to the matter for which the application for the extension is made; or the applicant or the applicant’s agent has in any other way failed to act with due diligence and prudence on 15 the matter; or there has been undue delay in applying for the extension of time or in prosecuting the application.
(b) (c) (4) The Commissioner may grant the extension on any terms or conditions he or she thinks ﬁt.

Compare: 1953 No 64 s 93A(1), (2), (3) 20 281 Requirements for applying and granting extensions of time limits under section 280 (1) A person must apply for an extension of a time limit under (2) section 280 in the prescribed manner.
If an extension is applied for by a person’s agent, the Commis­ sioner may require— (a) written conﬁrmation that the application is authorised by that person; and the conﬁrmation to be signed by that person and lodged 30 with the Commissioner within the time speciﬁed by the Commissioner.

(b) 25 (3) The Commissioner must publish every extension granted in the journal.
Compare: 1953 No 64 s 93A(4), (5) 35 144 Patents Bill Part 6 cl 283 Serving notices 282 Service of notices (1) Any notice or any other document required to be served on, or given to, any person under this Act or the regulations is sufﬁciently served if, the notice or document is— (a) delivered personally or posted to the person at the per­ son’s address for service or last known place of resi­ dence or business; or sent by fax or email to the person’s last known fax num­ ber or email address.
(b) 5 10 (2) A notice or document that is sent to a person at a fax number or an email address must be treated as received by that person not later than 2 days after the date on which it is sent.

(3) A notice or document that is posted to a person must be treated as received by that person not later than 7 days after the date 15 on which it is posted.
(4) However, a notice or document must not be treated as received if the person to whom it is posted or sent proves that it was not received, otherwise than through fault on the person’s part.

This section does not apply to— (a) (5) notices or other documents served or given in any pro­ ceedings in a court: notices or other documents served or given in accord­ ance with another procedure speciﬁed in this Act or the regulations.
(b) Requirements for summons 283 Requirements for summons (1) A summons issued by the Board under section 214 or by the Commissioner under section 258 must be in writing, be signed by the Board or Commissioner, and state— (a) the date and time when, and the place where, the person must attend; and the documents, things, or information that the person is required to bring and produce to the Board or Commis­ sioner; and the entitlement to be paid or tendered a sum in respect of witnesses’ fees, allowances, and expenses; and (b) (c) 20 25 30 35 145 Part 6 cl 284 Patents Bill (d) the penalty for failing to attend.
(2) A summons may be served by— (a) (b) delivering it personally to the person summoned; or posting it to the person summoned at that person’s usual place of residence or address for service.

5 (3) A summons must,— (a) (b) if it is to be served by personal delivery, be served at least 48 hours before the attendance of the witness is required: if it is to be served by post, be served at least 10 days 10 before the attendance of the witness is required.
(4) A summons that is posted is treated as having been served when it would have been delivered in the ordinary course of post.

15 284 Witnesses’ fees, allowances, and expenses (1) A witness appearing before the Board or Commissioner under a summons is entitled to be paid witnesses’ fees, allowances, and expenses in accordance with the scales prescribed by regu­ lations under the Summary Proceedings Act 1957.
The person requiring attendance of the witness must pay or 20 tender to the witness the fees, allowances, and expenses at the time the requirement to attend is served or at some other reasonable time before the hearing.
(2) 285 Offence of failing to comply with summons (1) A person summoned to attend before the Board or Commis­ 25 sioner commits an offence if the person, without sufﬁcient cause,— (a) (b) (c) fails to attend in accordance with the summons; or does not give evidence when required to do so; or does not give evidence under oath when required to do 30 so; or does not answer any question that is lawfully asked by the Board or Commissioner; or does not provide any documents, things, or information that the summons requires the person to provide.
35 (d) (e) 146 Patents Bill Part 6 cl 287 (2) A person who commits an offence against this section is liable on summary conviction to a ﬁne not exceeding $2,000.

(3) A person must not be convicted of an offence against this sec­ tion if witnesses’ fees, allowances, and expenses to which the person is entitled under section 284 have not been paid or 5 tendered to him or her.
Fees and other money paid under Act (2) (3) 286 Fees and penalties payable under Act or regulations (1) 10 Fees and penalties must be paid for any matter arising under this Act if required by this Act or by the regulations.

The Commissioner may (in addition to any other action per­ mitted under this Act) decline to do any act, or to permit any act to be done, or to receive any document, for which a fee or penalty is payable until that fee or penalty is paid.
Fees for international applications may, in accordance with 15 New Zealand’s obligations under the Patent Cooperation Treaty, be collected by the Commissioner on behalf of— (a) (b) the International Bureau; or any international search authority that has been ap­ proved, for the purposes of this subsection, by the 20 Minister as an appropriate authority on whose behalf the Commissioner may collect those fees.
Compare: 1953 No 64 s 115(1), (3) 287 Payment and application of fees and other money paid under this Act 25 (1) All fees and other money required to be paid by this Act or the regulations must be paid to the Commissioner (unless this Act or the regulations require otherwise).

The Commissioner must pay all the fees or other money paid to him or her under this Act into a Departmental Bank Account.
30 (2) (3) Any fee or penalty paid in connection with registration or re­ newal of a registration certiﬁcate for a patent attorney must be applied for the purposes of sections 238 and 267(b), (c), and (e).

(4) Any sum paid to the Commissioner by mistake, or any sum 35 the payment of which is not required by the regulations, may 147 Part 6 cl 288 Patents Bill be refunded by the Commissioner, and all money so refunded may be paid out of public money without further appropriation than this Act.
(5) Any amount of a fee or other money required to be paid by this Act or the regulations that is not paid is recoverable in a court 5 of competent jurisdiction as a debt due to the Crown or, if the Act or regulations require it to be paid to a person other than the Commissioner, as a debt due to that person.

This section applies to ﬁnes, disciplinary penalties, and costs orders imposed under this Act other than ﬁnes for offences.
Compare: 1953 No 64, s 115(1), (2) 10 (6) 288 Protection of Royal arms, etc Miscellaneous The grant of a patent does not in itself authorise the patentee to use or place on a patented product any representation speciﬁed 15 in sections 12 to 15 of the Flags, Emblems, and Names Pro­ tection Act 1981 (which relate to the use of Royal, vice­regal, State, and heraldic emblems and names).
Compare: 1953 No 64, s 107 289 Saving for Royal prerogative and certain Crown rights (1) Nothing in this Act takes away, limits, or prejudicially affects the prerogative of the Crown in relation to the granting of let­ ters patent or to the withholding of a grant of letters patent.

20 (2) Nothing in this Act affects the right of the Crown or any person deriving title directly or indirectly from the Crown to sell or 25 use articles forfeited under laws relating to customs or excise.
Compare: 1953 No 64 s 117 290 Act does not apply to Tokelau This Act does not apply to Tokelau.

291 Application of Personal Property Securities Act 1999 30 Nothing in sections 16(3), 22, 155 to 157, 160, 161, and 241 to 252 affects the operation of the Personal Property Se­ curities Act 1999.
Compare: 1953 No 64 s 85A 148 Patents Bill Part 6 cl 292 Subpart 5—Regulations 292 Regulations The Governor­General may, by Order in Council, make regu­ lations for all or any of the following purposes: (a) Patent applications and the granting of patents prescribing procedures, requirements, and other mat­ ters, not inconsistent with this Act, in respect of patent applications and the granting of patents under this Act, including— (i) 5 (ii) (iii) (iv) (v) (vi) requiring patent applications, speciﬁcations, and 10 any other documents relating to patent appli­ cations or speciﬁcations to be ﬁled, made, or otherwise provided to the Commissioner in a prescribed manner: requiring those patent applications, speciﬁca­ 15 tions, and documents to be dealt or proceeded with in a prescribed manner: providing for further information or documents to be ﬁled or otherwise provided to the Commis­ sioner in the prescribed manner, in relation to 20 any of those patent applications, speciﬁcations, or documents: providing for the procedure to be followed in connection with the division of a patent applica­ tion, speciﬁcation, or other document into 2 or 25 more applications, speciﬁcations, or documents: providing for the procedure to be followed in connection with the merging of separate patent applications, speciﬁcations, or documents: providing for the Commissioner to direct that 30 patent applications, speciﬁcations, or documents ﬁled under this Act be treated as having been ﬁled on a different date from the date on which those
 patent applications, speciﬁcations, or other docu­ ments were actually ﬁled: 35 (b) Applications, requests, notices, and proceedings requiring any applications, requests, or notices under this Act to be made or given in a prescribed manner: 149 Part 6 cl 292 Patents Bill (c) (d) (e) (f) providing for the procedure to be followed in connec­ tion with any application, request, or notice under this Act, or in connection with any proceeding before the Commissioner, and for authorising the rectiﬁcation of
 irregularities of procedure: regulating the making of applications, requests, or no­ tices under this Act by agents, and prescribing classes of persons whom the Commissioner may refuse to recog­ nise as agents: Declarations as to inventor requiring a declaration concerning the inventor of an invention to be provided in prescribed cases with the complete speciﬁcation or within the prescribed period after the ﬁling of the complete speciﬁcation: Matters under Commissioner’s direction or control providing for all matters placed under the direction or control of the Commissioner by this Act or the regula­ tions, including— (i) 5 10 15 providing for the Commissioner to extend time limits under the regulations or waive require­ 20 ments of the regulations: regulating applications for, oppositions to, and the granting of extensions of time limits by the Commissioner under this Act, including pro­ viding for the protection of persons who have 25 in good faith begun to exploit an invention for which an application for an extension is made: how statutory declarations for proceedings be­ fore the Commissioner must be made and given: providing for the Commissioner to destroy docu­ 30 ments and information provided to him or her in connection with any application, request, or no­ tice that is abandoned, void, or otherwise inactive for the prescribed period: (ii) (iii) (iv) (g) Micro­organisms providing for the procedure to be followed in connec­ tion with the deposit for the purposes of this Act of micro­organisms with prescribed depositary institu­ 35 150 (h) (i) (j) (k) (l) (m) Patents Bill Part 6 cl 292 tions, the furnishing of samples of micro­organisms by those institutions, and requests for those samples: prescribing matters for the purposes of sections 39 to 41: Patent Cooperation Treaty carrying out, or giving effect to, New Zealand’s obliga­ tions under the Patent Cooperation Treaty: setting out the English text of the Patent Cooperation Treaty or the Treaty regulations as in
 force for New Zealand: Budapest Treaty carrying out, or giving effect to, New Zealand’s obliga­ tions under the Budapest Treaty: setting out the English text of the Budapest Treaty as in force for New Zealand: 5 10 15 Patent attorney registration and registration certiﬁcates prescribing procedures, requirements, and other mat­ ters, not inconsistent with this Act, relating to patent at­ torney registrations and registration certiﬁcates, includ­ 20 ing— (i) the manner in which persons must apply for registration and registration certiﬁcates: the procedures to be followed in evaluating and deciding on those applications and for implemen­ 25 tation of those decisions: the period for which registration certiﬁcates are in force: the subjects or subject groups in which candi­ dates must have passed examinations to have the 30 qualiﬁcations required for registration: the criteria for the type of experience required for candidates for registration: the procedures and requirements that apply to the Board’s assessment and certiﬁcation of qualiﬁ­ 35 cations and experience of candidates for regis­ tration against the requirements in Part 5 or the regulations: (ii) (iii) (iv) (v) (vi) 151 Part 6 cl 292 Patents Bill (vii) the procedures and requirements that apply to a removal or suspension of registration: (viii) any minimum and maximum periods for a volun­ tary suspension of registration: (n) (o) Examinations and courses of study prescribing procedures, requirements, and other mat­ ters, not inconsistent with this Act, relating to exam­ inations conducted by the Board and courses of study and examinations conducted by persons accredited by the Board, including— (i) the manner in which persons must apply to sit those examinations or carry out the course: the fees payable to examiners or instructors: (ii) Complaints and disciplinary matters on patent attorneys prescribing procedures, requirements, and other mat­ ters, not inconsistent with this Act, relating to com­ plaints on patent
 attorneys and disciplining of patent at­ torneys, including— (i) 5 10 15 the manner in which persons must make com­ 20 plaints: the investigation of and decisions on those com­ plaints, and the implementation of those deci­ sions: the exercise by the Commissioner and the Board 25 of their functions relating to complaints and dis­ ciplinary matters: constituting a complaints assessment committee and disciplinary committee and delegating Board functions and powers to those committees for the 30 purposes of the disciplinary regime: (ii) (iii) (iv) (p) (q) Board functions regulating the manner in which the Board exercises any of its other functions under this Act: Registers prescribing procedures, requirements, and other mat­ ters, not inconsistent with this Act, for any register that 35 152 Patents Bill Part 6 cl 293 the Commissioner is required to keep under this Act, in­ cluding matters relating to— (i) (ii) (iii) the operation of the register: access to and search of the register: the location of, and hours of access to, the regis­ 5 ter: Journal prescribing the manner in which something must be published in the journal: 10 Fees and penalties prescribing fees and penalties to be paid, or the means by which those fees and penalties may be calculated or ascertained, for any matter under this Act or the regula­ tions: prescribing the period for the payment of a renewal fee: 15 exempting, or providing for the Commissioner to ex­ empt from, waive, or refund fees or penalties: General providing for transitional or savings provisions: providing for any other matters contemplated by this 20 Act, necessary for its administration, or necessary for giving it full effect.
(r) (s) (t) (u) (v) (w) Compare: 1953 No 64, ss 93A(7), 96(5), 114 293 Supplementary empowering provision (1) For the purposes of this Act, the power for regulations made 25 to prescribe the manner in which a thing is done includes the power to— (a) (b) prescribe when, where, and how the thing must be done: prescribe the form that must be used in connection with doing the thing: prescribe what information must be provided or other evidence or documents must be provided in connection with the thing: prescribe requirements with which information, evi­ dence, or documents that are provided in connection 35 with the thing must comply: (c) (d) 30 153 Part 6 cl 294 Patents Bill (e) (f) provide for the Commissioner to determine any of the matters in paragraphs (a) to (d): prescribe that fees must be paid in connection with do­ ing the thing.
(2) Any regulations made under section 292 or this section may 5 prescribe, or provide for the Commissioner to determine, dif­ ferent or additional procedures, requirements, or matters in re­ lation to different classes of applications, requests, notices, or other matters.
294 Orders in Council as to convention countries 10 For the purpose of giving effect to any international agreement or arrangement to which New Zealand is a party or that ap­ plies to New Zealand, the Governor­General may, by Order in Council, declare that any entity speciﬁed in the order that is a party to the agreement or arrangement or to which the agree­ 15 ment or arrangement applies (whether a State, part of a State, a territory for whose international relations a State is respon­ sible, a political union, an international organisation, or any other entity) is, for the purposes of all or any of the provisions of this Act, a convention country.
20 Subpart 6—Repeals, amendments, validation, and saving and transitional provisions 295 Repeal of Patents Act 1953 and consequential revocations (1) (2) The Patents Act 1953 (1953 No 64) is repealed.

The Patents Regulations 1954 (SR 1954/211) are consequen­ tially revoked.

The Patents (Patent Cooperation Treaty) Regulations 1992 (SR 1992/316) are consequentially revoked.
(3) 25 296 Consequential amendments to other enactments 30 The enactments set out in Schedule 2 are amended in accord­ ance with that schedule.
154 Patents Bill Part 6 cl 299 297 Preservation of various regulations and orders (1) The following regulations continue in force, despite the repeal of the Patents Act 1953, as if made under this Act: (a) Patents, Designs, and Trade Marks Convention Order 2000 (SR 2000/236) (except that clause 4 is revoked): Patents (United States of America) Regulations 1956 (SR 1956/159).
(b) 5 (2) An order or regulation that continues in force under this sec­ tion may be amended or revoked as if it had been made under this Act.

10 298 Validation of fees (1) All fees prescribed under the Patents Act 1953 that relate to the registration of patent attorneys or prescribed examinations under that Act must be taken to be and always to have been lawfully imposed.
(2) All money received by the Commissioner from the fees re­ ferred to in subsection (1) must be taken to be and always to have been lawfully collected.
Transitional provisions for patents and patent applications 15 20 299 Outline of transitional provisions for patents (1) The general scheme and effect of the transitional provisions for patents is as follows: (a) (b) this Act applies to patents granted under the Patents Act 1953 on commencement (but patents retain their exist­ 25 ing key dates, term, and grounds for revocation): patent applications made under the Patents Act 1953 generally continue to be dealt with under that Act on and from commencement, but— (i) if a complete speciﬁcation is later ﬁled, this Act 30 then applies to the patent application: if a patent application is post­dated to a date on or after commencement, this Act applies to the patent application: (ii) (c) Treaty applications made under the Patents Act 1953— 35 155 Part 6 cl 300 Patents Bill (i) (d) continue to be dealt with under that Act if the applicant has fulﬁlled the applicant’s obligations under Article 22(1) or 39(1)(a) of the Patent Co­ operation Treaty before commencement; and (ii) must be dealt with under this Act if the applicant 5 did not fulﬁl those obligations before that time: if a fresh patent application is made, even after com­ mencement, in respect of a patent application that is under the Patents Act 1953, and if the fresh patent appli­ cation is given a date before commencement, the fresh 10 patent application must still be dealt with under that Act.
This section is a guide only to the general scheme and effect of the transitional provisions for patents.

(2) 300 Transitional provision for patents granted under Patents (1) Act 1953 This Act applies to a patent granted under the Patents Act 1953 as if it were granted under this Act.
15 (2) However,— (a) (b) (c) (d) (e) 25 the patent retains its original date of ﬁling of the patent application, patent date (that is the date of ﬁling of the 20 complete speciﬁcation), priority date or dates, date of the publication of the accepted complete speciﬁcation, date that the patent was granted, and date that the next renewal fee was due under the Patents Act 1953; and the patent retains its existing term; and the next renewal fee (after this Act comes into force) must be paid when due in accordance with the Patents Act 1953 but, after that due date, renewal fees become due in accordance with this Act; and on re­examining the complete speciﬁcation under sec­ 30 tion 89 the Commissioner must consider and report on the matters in section 41(1)(e) and (f) of the Patents Act 1953 (rather than the matters in section 90 of this Act); and the Commissioner or the court may revoke the patent 35 under section 104 only on the grounds set out in sec­ tion 41(1) or (3) of the Patents Act 1953 (rather than the grounds in section 106 of this Act).
156 Patents Bill Part 6 cl 303 301 Patent applications made under Patents Act 1953 (1) (2) continue under that Act The Patents Act 1953 (and the regulations, orders, directions, and other matters made under it) continue to apply to a patent application made under that Act and not deemed to be void, 5 refused, granted, withdrawn, or abandoned before the com­ mencement of Part 3 of this Act.

Section 300 applies to any patent granted in respect of that application.
302 Patents Act 1953 ceases to apply to patent application if 10 (1) (2) (3) complete speciﬁcation later ﬁled The Patents Act 1953 ceases to apply to a patent application made under that Act if a complete speciﬁcation is ﬁled on or after the commencement of Part 3 of this Act for the following reasons, or any other reason: (a) only a provisional speciﬁcation was ﬁled before the commencement of Part 3; or the original complete speciﬁcation was directed (whether before or after the commencement of Part 3) to be treated as a provisional speciﬁcation under 20 section 9(4) of the Patents Act 1953.
(b) 15 In this case, the complete speciﬁcation must comply with this Act, and this Act applies to the patent application, as if the patent application had been made under this Act.

If a complete speciﬁcation is provided for 2 or more patent ap­ 25 plications that are cognate or of which one is a modiﬁcation of another, this section applies to those 2 or more patent applica­ tions.
303 This Act applies if patent application under Patents Act 1953 is post­dated If a patent application made under the Patents Act 1953 is post­ dated, on the request of the applicant, to a date that is on or after the commencement of Part 3 of this Act, this Act applies to the patent application as if the patent application had been made under this Act.
30 35 157 Part 6 cl 304 Patents Bill 304 Patents Act 1953 applies to divisional applications dated before commencement If a fresh patent application is made on or after the commence­ ment of Part 3 of this Act for any part of the subject­matter of a patent application to which the Patents Act 1953 applies, 5 and the fresh patent application is given a date before that com­ mencement, the fresh patent application must also be treated as a patent application made under the Patents Act 1953 (and sections 301 and 302 apply).
10 305 Which Act applies to Treaty applications (1) The Patents Act 1953 (and the regulations, orders, directions, and other matters made under it) continue to apply to a Treaty application made under that Act if the applicant fulﬁlled the applicant’s obligations under Article 22(1) or Article 39(1)(a) of the Patent Cooperation Treaty, and the application 15 was not deemed to be void, refused, granted, withdrawn, or abandoned, before the commencement of Part 3 of this Act.
Section 300 applies to any patent granted in respect of that application.

(2) (3) However, this Act applies to a Treaty application made under 20 the Patents Act 1953 if the applicant did not fulﬁl those obli­ gations before the commencement of Part 3.
Transitional provisions for other applications, notices, and requests 306 Transitional provision for other applications, notices, or 25 (1) requests The Patents Act 1953 (and the regulations, orders, directions, and other matters made under it) continue to apply to any ap­ plication (other than a patent application or an application for registration as a patent attorney), notice, or request that was 30 received by the Commissioner or the court (as the case may be) before the commencement of Part 3 of this Act.
(2) However, if an application, notice, or request of that kind re­ lates to a patent application— (a) to which the Patents Act 1953 applies, that Act (and the 35 regulations, orders, directions, and other matters made 158 Patents Bill Part 6 cl 308 under it) apply to the other application, notice, or re­ quest also; or to which this Act applies, this Act applies to the other application, notice, or request also.
(b) Transitional provision for matters in force on commencement 5 307 Transitional provision for orders, directions, and other matters in effect on commencement (1) An order, direction, or any other matter made under the Patents Act 1953 or the Patents Regulations 1954, and that is in effect 10 immediately before the commencement of this section, con­ tinues to have effect as if it had been made under the provision of this Act or the regulations— (a) that, with or without modiﬁcation, replaces, or that cor­ responds to, the provision of the Patents Act 1953 under 15 which it was made; and under which it could be made.
(b) The order, direction, or other matter may be amended or re­ voked as if it had been made under the provision of this Act or the regulations that replaces, or that corresponds to, the provi­ 20 sion of the Patents Act 1953 or the Patents Regulations 1954 under which it was made.
(2) Transitional provision for patents register and register of patent attorneys 308 Transitional provision for patents register and register of 25 (1) (2) patent attorneys The register of patents kept under section 83 of the Patents Act 1953 continues to have effect as the patents register kept under section 241 of this Act.

The register of patent attorneys kept under section 100 of the 30 Patents Act 1953 continues to have effect as the register of patent attorneys kept under section 230 of this Act.
159 Part 6 cl 309 Patents Bill Transitional provisions for existing offences and infringements 309 Transitional provision for existing offences and infringements The Patents Act 1953 (and the regulations, orders, directions, 5 and other matters made under it) continues to apply for the purpose of— (a) investigating any offence or infringement committed before the commencement of this section: commencing or completing proceedings for any offence 10 or infringement committed before the commencement of this section: imposing a penalty or granting any relief or other rem­ edy for any offence or infringement committed before the commencement of this section.
15 (b) (c) Transitional provisions for patent attorneys 310 Outline of transitional provisions for patent attorneys (1) The general scheme and effect of the commencement and tran­ sitional provisions for patent attorneys is as follows: (a) 20 on Royal assent,— (i) the regulation­making powers in the Act and the provisions for making and approving the code of conduct for patent attorneys come into force; and the provisions governing the establishment, oper­ ation, powers, and functions of the Board come 25 into force; and (ii) (b) (c) between Royal assent and the commencement of Part 5, the Institute may develop the code of conduct for patent attorneys; and on the commencement of Part 5,— (i) the approved code of conduct may also come into force; and persons registered as patent attorneys under the Patents Act 1953 are treated as being registered under this Act; and persons may apply for registration as patent attor­ neys under this Act, but applications for registra­ tion made before the commencement date must 30 35 (ii) (iii) 160 Patents Bill Part 6 cl 313 continue to be dealt with under the Patents Act 1953.
(2) This section is a guide only to the general scheme and effect of the commencement and transitional provisions for patent attorneys.

5 311 Transitional provision for patent attorneys registered under Patents Act 1953 (1) A person who was registered as a patent attorney under the Patents Act 1953 immediately before commencement of Part 5 of this Act is treated as a patent attorney registered under 10 this Act on the commencement of Part 5.
(2) A patent attorney who had paid his or her renewal fee for regis­ tration for the calendar year in which Part 5 commences is treated as having a current registration certiﬁcate on the com­ mencement of Part 5.

The registration certiﬁcate is treated as expiring on the date on which the person’s next renewal fees were due under the Patents Act 1953.
(3) 15 312 Transitional provision for applicants for registration (1) The Patents Act 1953 (and the regulations, orders, directions, 20 and other matters made under it) continue to apply to an ap­ plication for registration as a patent attorney made under that Act and not refused, accepted, or withdrawn before the com­ mencement of Part 5 of this Act.
If a person qualiﬁes for registration as a patent attorney under 25 subsection (1), the person may be registered as a patent at­ torney and issued with a registration certiﬁcate under Part 5.
(2) 313 Transitional provision for lawyers Nothing in section 187 or 188 prohibits barristers or solici­ tors of the High Court of New Zealand from giving profes­ 30 sional advice or taking part in proceedings as permitted by sec­ tion 103(5) of the Patents Act 1953 in relation to instructions received before the commencement of Part 5 of this Act.
161 Part 6 cl 314 Patents Bill Transitional provisions for Commissioner and Assistant Commissioners 314 Transitional appointment of Commissioner and Assistant Commissioners The persons holding ofﬁce as the Commissioner and Assistant 5 Commissioners under the Patents Act 1953 are treated as hav­ ing been appointed as the Commissioner and Assistant Com­ missioners under this Act on the commencement of this sec­ tion (and may hold both ofﬁces concurrently).
315 Transitional power for Commissioner (1) 10 15 The Commissioner may, for the purpose of facilitating the transition from the Patents Act 1953 to this Act, do any of the following in connection with a patent application, other ap­ plication, notice, or request originally made under the Patents Act 1953 and to which this Act now applies: (a) exempt a person (on the terms and conditions (if any) that the Commissioner thinks ﬁt) from any statutory re­ quirement that applied or now applies to the application, notice, or request: give a person additional time to comply with a statutory 20 requirement in respect of the application, notice, or re­ quest that previously did not apply.
(b) (2) (3) In this section, statutory requirement means a requirement under the Patents Act 1953 or this Act, or under any regu­ lations, orders, directions or other matters made under either 25 Act.

This section expires on close of the day that is 3 years after the commencement of this section.
162 Patents Bill Schedule 1 Schedule 1 Further provisions applying to Board and its members s 240 Appointment of members 1 (1) A member of the Board is appointed by the Minister by written 5 (2) (3) notice to the member (with a copy to the Board).

The notice must— (a) state the date on which the appointment takes effect (which must not be earlier than the date on which the 10 notice is received); and state the term of the appointment.
(b) This section does not apply to the Commissioner or Assistant Commissioner of Patents.

Term of appointment 2 (1) A member holds ofﬁce for 3 years or any shorter period stated 15 in the notice of appointment.

(2) A member may be reappointed.


(3) A member continues in ofﬁce despite the expiry of his or her term of ofﬁce until— (a) (b) (c) the member is reappointed; or the member’s successor is appointed; or the Minister informs the member by written notice (with a copy to the Board) that the member is not to be reap­ pointed and no successor is to be appointed at that time.

25 20 (4) 3 (1) (2) (3) This section does not apply to the Commissioner or Assistant Commissioner of Patents.
Removal of members The Minister may, for incapacity affecting performance of duty, neglect of duty, or misconduct, proved to the satisfac­ 30 tion of the Minister, remove a member from ofﬁce.

The removal must be made by written notice to the member (with a copy to the Board).

The notice must— 163 Schedule 1 Patents Bill (a) (b) state the date on which the removal takes effect, which must not be earlier than the date on which the notice is received; and state the reasons for the removal.
(4) A member also ceases to hold ofﬁce if he or she is adjudged 5 (5) bankrupt.

This section does not apply to the Commissioner or Assistant Commissioner of Patents.

Resignation of members 4 (1) A member may resign his or her ofﬁce by written notice to the 10 Minister (with a copy to the Board) signed by the member.

The resignation is effective on receipt by the Minister of the notice or at any later time speciﬁed in the notice.
(2) Members who cease to be Commissioner or Assistant Commissioner of Patents cease also to be members A person who ceases to hold the ofﬁce of Commissioner or Assistant Commissioner of Patents, ceases at the same time to be a member of the Board.
15 Extraordinary vacancies If a person ceases to hold ofﬁce as a member before the expiry 20 of his or her term,— (a) the vacancy so created must be ﬁlled in the manner in which the appointment to the vacant ofﬁce was origin­ ally made; and the person appointed to ﬁll the vacancy must be ap­ 25 pointed for the residue of the term for which his or her predecessor was appointed.
(b) Appointment of chairperson and deputy chairperson The Minister may appoint 1 of the members as the chairperson, and another member as the deputy chairperson, of the Board 30 by written notice to the member (with a copy to the Board).

The notice of appointment must state the date on which the appointment takes effect.
5 6 7 (1) (2) 164 Patents Bill Schedule 1 (3) The chairperson and deputy chairperson each hold that ofﬁce until— (a) (b) (c) (d) he or she resigns from that ofﬁce; or he or she is removed from it by the Minister; or he or she ceases to hold ofﬁce as a member; or the term of ofﬁce that may have been speciﬁed on ap­ pointment expires, unless the member is reappointed for a further term.
5 Resignation of chairperson and deputy chairperson 8 (1) A chairperson or deputy chairperson may, without resigning 10 as a member, resign from that ofﬁce by written notice to the Minister (with a copy to the Board).

The notice of resignation must state the date on which the res­ ignation takes effect.
(2) 9 (1) (2) 10 Removal of chairperson The Minister may, after consultation with the person con­ cerned, remove a chairperson or deputy chairperson from that ofﬁce by written notice to the person (with a copy to the Board).

The notice of removal must state the date on which the removal 20 takes effect.
15 Exercise of chairperson’s functions and powers during vacancy The deputy chairperson has and may exercise all of the func­ tions and powers of the chairperson in relation to a matter if 25 the chairperson is unavailable or is unable to exercise his or her functions and powers for any reason.
Quorum 11 (1) A quorum for a meeting of the members is— (a) (b) half the number of members (if the Board has an even 30 number of members) or a majority of the members (if the Board has an odd number of members); but in any case, no less than 3 members.

165 Schedule 1 Patents Bill (2) No business may be transacted at a meeting of the board if a quorum is not present.
(3) However, a meeting of the Board may be held by means of audio, audio and visual, or electronic communication by which all members participating and constituting a quorum 5 can simultaneously communicate with each other throughout the meeting.
Presiding at meetings 12 (1) At a meeting of the Board, the following person presides: (a) (b) (c) if there is a chairperson and he or she is present, the 10 chairperson; or if there is no chairperson or he or she is not present, the deputy chairperson; or in any other case, a member chosen by the members present to be chairperson of the meeting.

15 (2) The elected person may exercise all the powers, duties, and functions of the chairperson for the purposes of the meeting.
Voting at meetings Each member has 1 vote.

13 (1) (2) A resolution of the Board is passed if it is agreed to by all 20 members present without dissent or if a majority of the votes cast on it are in favour of it.

(3) A member present at a meeting of the Board is presumed to have agreed to, and to have voted in favour of, a resolution of the board unless he or she expressly dissents from, or votes 25 against, the resolution at the meeting.
Unanimous written resolutions 14 (1) A resolution signed or assented to in writing (whether sent by post, delivery, or electronic transmission) by all members is as valid and effectual as if it had been passed at a meeting of the 30 Board duly called and constituted.

The resolution may consist of several documents containing the same resolution, each signed or assented to in writing by 1 or more members.
(2) 166 Patents Bill Schedule 1 15 When interests must be disclosed (1) A person is interested in the Board’s performance of its func­ tions or exercise of its powers (a matter) if he or she— (a) may derive a ﬁnancial beneﬁt from the matter; or (b) is the spouse, civil union partner, de facto partner, child, 5 or parent of a person who may derive a ﬁnancial beneﬁt from the matter; or (c) may have a ﬁnancial interest in a person to whom the (d) (e) matter relates; or is a partner, director, ofﬁcer, board member, or trustee 10 of a person who may have a ﬁnancial interest in a person to whom the matter relates; or is otherwise directly or indirectly interested in the mat­ ter.
(2) However, a person is not interested in a matter— 15 (a) (b) (c) only because he or she is a member of the Board; or because he or she receives an indemnity, insurance cover, remuneration, or other beneﬁts authorised under this Act; or if his or her interest is so remote or insigniﬁcant that it 20 cannot reasonably be regarded as likely to inﬂuence him or her in carrying out his or her responsibilities under this Act.
Consequences of having interest 16 (1) A member who is interested in a matter relating to the Board— 25 (a) must disclose the nature and monetary value (or extent, if the monetary value can not be quantiﬁed) of the in­ terest to the chairperson as soon as practicable after the member becomes aware that he or she is interested; and (b) must not vote or take part in any discussion or decision 30 of the Board or any committee relating to the matter, or otherwise participate in any activity of the Board that relates to the matter; and (c) must not sign any document relating to the matter; and (d) is to be disregarded for the purpose of forming a quorum 35 for that part of a meeting of the Board or committee during which a discussion or decision relating to the matter occurs or is made.
167 Schedule 1 Patents Bill (2) A general notice of an interest in a matter under subclause (1)(a) is effective disclosure until the nature of the interest ma­ terially alters or the extent of the interest materially increases.

17 (1) Consequences of failing to comply with obligations if interested The Board must notify the Minister of a failure to comply with clause 16, and of the acts affected, as soon as practicable after becoming aware of the failure.
(2) A failure to comply with clause 16 does not affect the validity of an act or matter.

5 10 (3) However, subclause (2) does not limit the right of any person to apply, in accordance with law, for judicial review.
Permission to act despite being interested in matter The Minister or chairperson may, by prior written notice to the Board, permit 1 or more members, or members with a speci­ 15 ﬁed class of interest, to do anything otherwise prohibited by clause 16, if satisﬁed that it is in the public interest to do so.

The permission may state conditions that the member must comply with.

The permission may be amended or revoked in the same way 20 as it may be given.
The Board must disclose an interest to which a permission relates in its annual report, together with a statement of who gave the permission and any conditions or amendments to, or revocation of, the permission.

25 Temporary appointments If a member is interested in any matter before the Board, the Minister may appoint an additional member to the Board (in the manner in which the interested member was appointed).
Procedure of Board Subject to this Act and any regulations made under this Act, the Board may regulate its procedure as it thinks ﬁt.
30 18 (1) (2) (3) (4) 19 20 168 21 22 (1) Patents Bill Schedule 1 Board members not in service of the Crown No person is, by reason only of that person’s appointment as a member of the Board, deemed to be employed in the Govern­ ment services for the purposes of the Government Superannu­ ation Fund Act 1956 or in the State services for the purposes 5 of the State Sector Act 1988.
10 (b) Board committees The Board may appoint committees, consisting of 2 or more members of the Board and any other persons as the Board thinks ﬁt— (a) to inquire into and report to the Board on matters within the scope of its functions that are referred to them by the Board: to exercise on behalf of the Board any of its functions or powers, and for this purpose the Board may delegate to 15 any committee any of the Board’s functions or powers.
The regulations may also constitute Board committees, which may consist of the number of Board members and other persons speciﬁed by the regulations, and delegate any of the Board’s functions or powers to those committees.

(3) A Board committee is subject to the control of the Board.

(4) (2) 20 The Board may— (a) alter the membership of the Board committee at any time (subject to the regulations); and discharge or reconstitute at any time a Board committee 25 appointed by the Board.
(b) (5) Subject to any general or special directions given or conditions imposed by the Board or regulations, a committee may exer­ cise a function or power delegated to it under this clause in the same manner and with the same effect as if it had been con­ 30 ferred directly by this Act and not by delegation.

(6) A committee appearing to act under a delegation, in the ab­ sence of proof to the contrary, is presumed to be acting in ac­ cordance with the delegation.
(7) A delegation may be revoked at any time by the Board (if given 35 by it) or the regulations (if made by them).

169 Schedule 1 Patents Bill (8) No delegation prevents the exercise of any function or power by the Board.

23 Protection for Board members No member of the Board, or employee of the Ministry, is per­ sonally liable for any act or omission done, in good faith, in 5 the performance or intended performance of the Board’s func­ tions, duties, or powers.
24 (1) Fees and allowances for Board members The Board is a statutory Board within the meaning of the Fees and Travelling Allowances Act 1951.
10 (2) Members appointed to the Board under section 239(c) and (d) (unless an employee of the Ministry) are to be paid, out of money appropriated by Parliament for the purpose, remuner­ ation by way of fees, salary, or allowances and travelling al­ lowances and expenses in accordance with the Fees and Trav­ 15 elling Allowances Act 1951, and the provisions of that Act apply accordingly.
25 Annual report As soon as practicable after the end of each ﬁnancial year, the Board must give the Commissioner a report on the perform­ 20 ance of its functions and duties and the exercise of its powers during the year, for the purposes of the Commissioner’s an­ nual report to the Minister.
170 Patents Bill Schedule 2 Schedule 2 Consequential amendments Part 1 Amendments to other Acts s 296 Administration Act 1969 (1969 No 52) Section 67(1): omit “section 86 of the Patents Act 1953” and substi­ tute “section 162 of the Patents Act 2008”.

Commerce Act 1986 (1986 No 5) Section 45(2)(a): repeal and substitute: the Patents Act 2008; or”.

“(a) Section 45(3)(a): omit “Patents Act 1953” and substitute “Patents Act 2008”.
Copyright Act 1994 (1994 No 143) Section 74(1): repeal and substitute: “(1) The making of any object in 3 dimensions (including, subject to subsection (2), a copy in 2 dimensions reasonably required for the making of the object) does not infringe copyright in a literary or artistic work, if the work or a copy of it forms part of— “(a) a patent speciﬁcation that— “(i) is open to public inspection in the Intellectual Property Ofﬁce of New Zealand in respect of a New Zealand patent that, for any reason, has ceased to have effect; and is used for the purpose of making the object; or “(ii) a representation or specimen of a design that— “(i) is open to public inspection in the Intellectual Property Ofﬁce of New Zealand in respect of a design for which registered protection in New 30 Zealand has ceased; and is used for the purpose of making the object.” “(ii) “(b) Section 74(3): repeal and substitute: “(3) If a patent that has ceased to have effect is restored by an order made under subpart 12 of Part 3 of the Patents Act 2008, 35 nothing done under subsection (1) in the period beginning 171 Schedule 2 Patents Bill Part 1 Amendments to other Acts—continued Copyright Act 1994 (1994 No 143)—continued with the day on which the patent ceased to have effect and ending with the close of the day on which the order is made constitutes an infringement of copyright in any literary or art­ istic work or copy of the work forming part of the patent spe­ ciﬁcation.” 5 Crown Proceedings Act 1950 (1950 No 54) Section 7(1): omit “Patents Act 1953” and substitute “Patents Act 2008”.
Section 7(2): repeal and substitute: “(2) Nothing in subsection (1) or in any other provision of this Act 10 affects the rights of any Government Department under sub­ part 6 of Part 4 of the Patents Act 2008 or sections 16 to 18 of the Designs Act 1953.” Dairy Industry Restructuring Act 2001 (2001 No 51) Section 108(5): omit “Patents Act 1953” and substitute “Patents Act 15 2008”.
Designs Act 1953 (1953 No 65) Deﬁnition of Journal in section 2(1): repeal and substitute: “Journal means the journal published under section 254 of the Patents Act 2008”.

20 Section 2(1): insert in its appropriate alphabetical order: “Ministry means the department of State that, with the author­ ity of the Prime Minister, is for the time being responsible for the administration of this Act”.
Sections 3 and 4: repeal and substitute: “3 “(1) The chief executive of the Ministry must appoint, under the Commissioner and Assistant Commissioners 25 State Sector Act 1988,— “(a) “(b) the Commissioner of Designs; and as many Assistant Commissioners of Designs as may be 30 necessary for the purposes of this Act.
172 Patents Bill Schedule 2 Part 1 Amendments to other Acts—continued Designs Act 1953 (1953 No 65)—continued “(2) These persons are employees of the Ministry, and those ap­ pointments may be held separately or in conjunction with any other ofﬁce in the Ministry.

Powers of Assistant Commissioners of Designs “4 “(1) An Assistant Commissioner of Designs has the functions, du­ 5 ties, and powers of the Commissioner under this Act, but is subject to the control of the Commissioner.
“(2) The fact that an Assistant Commissioner exercises those func­ tions, duties, and powers is conclusive evidence of the author­ ity to do so.” 10 Section 7(1): omit “Patent Ofﬁce” and substitute “Intellectual Prop­ erty Ofﬁce of New Zealand”.

Section 9(2): omit “Patent Ofﬁce” and substitute “Intellectual Prop­ erty Ofﬁce of New Zealand”.

Section 25(1): omit “Patent Ofﬁce” and substitute “Intellectual Prop­ 15 erty Ofﬁce of New Zealand”.

Section 25(2): omit “sealed with the seal of the Patent Ofﬁce”.
Section 29(1): omit “Patent Ofﬁce” and substitute “Intellectual Prop­ erty Ofﬁce of New Zealand”.

Section 30(1), (2), and (4): omit “Patent Ofﬁce” and substitute in 20 each case “Intellectual Property Ofﬁce of New Zealand”.
Section 32(2): repeal and substitute: “(2) A copy of any entry in the register of designs or of any repre­ sentation, specimen, or document kept in the Intellectual Prop­ erty Ofﬁce of New Zealand or an extract from the register or 25 any such document, purporting to be certiﬁed by the Commis­ sioner, must be admitted in evidence without further proof and without production of the original.” Section 37(1): omit “Patent Ofﬁce” and substitute “Intellectual Prop­ erty Ofﬁce of New Zealand”.
Section 37A(2)(a): omit “Patent Ofﬁce” and substitute “Intellectual Property Ofﬁce of New Zealand”.

30 173 Schedule 2 Patents Bill Part 1 Amendments to other Acts—continued Designs Act 1953 (1953 No 65)—continued Section 39(2): omit “Patents Act 1953” and substitute “Patents Act 2008”.

Section 45: omit “Patent Ofﬁce” in each place where it appears and substitute in each case “Intellectual Property Ofﬁce of New Zealand”.
Section 45A: omit “Patent Ofﬁce” in each place where it appears and 5 substitute in each case “Intellectual Property Ofﬁce of New Zealand”.

Section 46(2)(a), (c), and (f): omit “Patent Ofﬁce” and substitute in each case “Intellectual Property Ofﬁce of New Zealand”.

Section 46(2)(h): omit “Patent Ofﬁce Journal” and substitute “Jour­ nal”.

Section 49: omit “Patents Act 1953” and substitute “Patents Act 2008”.
10 Disputes Tribunals Act 1988 (1988 No 110) Deﬁnition of intellectual property in section 2: omit “Patents Act 1953” and substitute “Patents Act 2008”.

15 Employment Relations Act 2000 (2000 No 24) Section 161(1): insert after paragraph (q): “(qa) disputes about an invention made by an employee (ei­ ther alone or jointly with any other person) or any patent granted, or to be granted, in respect of that invention: “(qb) reviews under section 29 of the Patents Act 2008:”.
20 Flags, Emblems, and Names Protection Act 1981 (1981 No 47) Paragraph (f) of the deﬁnition of registering authority in section 2: omit “Patents Act 1953” and substitute “Patents Act 2008”.
Lawyers and Conveyancers Act 2006 (2006 No 1) Deﬁnition of patent attorney in section 6: repeal and substitute: 25 “patent attorney means a person who is registered, and holds a current registration certiﬁcate, as a patent attorney under the Patents Act 2008 174 Patents Bill Schedule 2 Part 1 Amendments to other Acts—continued Lawyers and Conveyancers Act 2006 (2006 No 1)—continued “patent attorney company has the meaning set out in sec­ tion 185 of the Patents Act 2008”.
Section 36(3): insert “or patent attorney company” after “patent at­ torney”.

Section 47(j): repeal.

5 Privacy Act 1993 (1993 No 28) Part 1 of Schedule 2: insert the following item in its appropriate al­ phabetical order: Patents Act 2008 section 230 Public Works Act 1981 (1981 No 35) Deﬁnition of intellectual property in section 2: omit “Patents Act 10 1953” and substitute “Patents Act 2008”.
Securities Act 1978 (1978 No 103) Clause 13 of Schedule 2: omit “Patents Act 1953” and substitute “Patents Act 2008”.
Summary Proceedings Act 1957 (1957 No 87) The item relating to the Patents Act 1953 in Part 2 of Schedule 1: omit and substitute the following item: 15 The Patents Act 2008 131 Breach of secrecy as to certain inventions Trade Marks Act 2002 (2002 No 49) Section 56: repeal and substitute: “56 Approved regulations must be deposited at Intellectual 20 Property Ofﬁce of New Zealand After the Commissioner has approved the draft regulations, the approved regulations that govern the use of the registered 175 Schedule 2 Patents Bill Part 1 Amendments to other Acts—continued Trade Marks Act 2002 (2002 No 49)—continued certiﬁcation trade mark must be deposited at the Intellectual Property Ofﬁce of New Zealand for inspection.
“Compare: 1953 No 66 s 48”.

Section 159(2)(a)(iii): omit “Patent Ofﬁce” and substitute “Intellec­ tual Property Ofﬁce of New Zealand”.

Section 184(2): omit “, sealed with the seal of the Patent Ofﬁce,”.
Sections 188 and 189 and the heading above section 188: repeal and substitute: 5 “Intellectual Property Ofﬁce of New Zealand “188 Opening and closing of Intellectual Property Ofﬁce of 10 New Zealand “(1) The Commissioner may, by notice in the prescribed manner,— “(a) ﬁx the hours during which the Intellectual Property Of­ ﬁce of New Zealand is open for the transaction of public business under this Act; and 15 “(b) declare the Intellectual Property Ofﬁce of New Zealand closed for the transaction of public business on any day.
“(2) An act or proceeding is in time if— “(a) “(b) the time prescribed for doing the act or taking the pro­ ceeding expires on a day when the Intellectual Property 20 Ofﬁce of New Zealand is closed; and the act or proceeding cannot be done or taken on that day because the Intellectual Property Ofﬁce of New Zealand is closed; and the act or proceeding is done or taken on the next day 25 when the Intellectual Property Ofﬁce of New Zealand is open.
“Compare: 1953 No 66 s 76 “(c) “189 Closing of Intellectual Property Ofﬁce of New Zealand at short notice 30 “(1) Despite section 188, the Commissioner may, without giv­ ing notice of the closure of the Intellectual Property Ofﬁce of New Zealand in the prescribed manner, declare the Intellectual 176 Patents Bill Schedule 2 Part 1 Amendments to other Acts—continued Trade Marks Act 2002 (2002 No 49)—continued Property Ofﬁce of New Zealand closed for the transaction of business if,— “(a) because of an emergency or other temporary circum­ stances, the Commissioner is satisﬁed that it is or will be necessary or desirable to close the Intellectual Prop­ 5 erty Ofﬁce of New Zealand on any day; and it is not practicable to give notice of the closure in the prescribed manner.
“(b) “(2) If the Commissioner proposes to declare or has declared the Intellectual Property Ofﬁce of New Zealand closed under sub­ 10 section (1), the Commissioner must, if practicable, display a public notice of that fact in or on the building in which the In­ tellectual Property Ofﬁce of New Zealand is situated.
“(3) As soon as practicable, the Commissioner must also cause a copy of the public notice, or (if no such notice was displayed) 15 a notice of the exercise of his or her powers under this section, to be published in the prescribed manner.

“Compare: 1953 No 66 s 76A” Section 198: omit “Patents Act 1953” and substitute “Patents Act 2008”.

The heading above section 199(l): repeal and substitute: “Intellec­ tual Property Ofﬁce of New Zealand”.
Section 199(l): omit “Patent Ofﬁce” and substitute “Intellectual Property Ofﬁce of New Zealand”.

20 Trans­Tasman Mutual Recognition Act 1997 (1997 No 60) Schedule 1: omit “Patents Act 1953” and substitute “Patents Act 2008”.

25 177 Schedule 2 Patents Bill Part 2 Regulations amended Defence Regulations 1990 (SR 1990/78) Regulation 24(1): omit “New Zealand Patent Ofﬁce” and substitute “Intellectual Property Ofﬁce of New Zealand”.
Regulation 24(1): omit “the Patent Ofﬁce” and substitute “the Intel­ lectual Property Ofﬁce of New Zealand”.

Regulation 26: omit “Patent Ofﬁce” and substitute “Intellectual Property Ofﬁce of New Zealand”.

Schedule 2: omit “Patent Ofﬁce” in each place where it appears and 10 substitute in each case “Intellectual Property Ofﬁce of New Zealand”.

5 Designs Regulations 1954 (SR 1954/224) The deﬁnition of lodged in regulation 2: omit “Patent Ofﬁce” and substitute “Intellectual Property Ofﬁce of New Zealand”.
Regulation 4: omit “Patent Ofﬁce” and substitute “Intellectual Prop­ 15 erty Ofﬁce of New Zealand”.

Regulation 5: omit “Patent Ofﬁce” and substitute “Intellectual Prop­ erty Ofﬁce of New Zealand”.

Regulation 6: omit “Patent Ofﬁce” and substitute “Intellectual Prop­ erty Ofﬁce of New Zealand”.

Regulation 16: omit “Patent Ofﬁce” in each place where it appears and substitute in each case “Intellectual Property Ofﬁce of New Zealand”.
Schedule 2: omit “Patent Ofﬁce” in each place where it appears and substitute in each case “Intellectual Property Ofﬁce of New Zealand”.

25 20 Patents, Designs, and Trade Marks Convention Order 2000 (SR 2000/236) Clause 3: omit “Patents Act 1953” and substitute “Patents Act 2008”.
178 Patents Bill Schedule 2 Part 2 Regulations amended—continued Patents (United States of America) Regulations 1956 (SR 1956/159) Regulation 3: omit “Patents Act 1953 or the Patents Regulations 1954” and substitute “Patents Act 2008 or regulations made under that Act”.

Regulation 4: omit “section 11 of the Patents Act 1953” and substi­ tute “section 5 of the Patents Act 2008”.
Regulation 4: omit “Patents Act 1953 or the Patents Regulations 1954” and substitute “Patents Act 2008 or regulations made under that Act”.

Trade Marks Regulations 2003 (SR 2003/187) Deﬁnition of ﬁling date in regulation 3: omit “Patent Ofﬁce” and substitute “Intellectual Property Ofﬁce of New Zealand”.

Regulation 8(a): omit “Patent Ofﬁce” and substitute “Intellectual Property Ofﬁce of New Zealand”.
Regulation 23(a) and (b): revoke and substitute: “(a) who is suspended from practice before the Intellectual 5 10 15 Property Ofﬁce of New Zealand; or “(b) whose name has been removed from the register of patent attorneys under section 198 of the Patents Act 20 2008, and has not been restored to the register; or”.

12 Wellington, New Zealand: Published under the authority of the New Zealand Government—2008 179