Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016

1: Title
This Act is the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016.
2: Commencement
1: Part 1
2: Part 2
3: If any provision of Part 2 24 February 2017 Section 2(2) brought into force 24 February 2017 Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016 Commencement Order 2017
3: Principal Act
This Act amends the Patents Act 2013 principal Act 2016-11-21 Patents Act 2013 Part 1 only; deemed to have come into force on 13 September 2014 (see section 2(1)). OIC LI 2017/2 2017-02-24 Patents Act 2013 Part 2 to be brought into force by OIC (see section 2(2)).
1: Amendment to principal Act relating to opposition to grant of patent
4: Section 92 amended (Opposition to grant of patent)
In section 92(1)﻿(c) subpart 2 (which relates to specification requirements) any provision of subpart 2 (which relates to specification requirements) other than section 39(2)﻿(a) (which requires claims to relate to 1 invention only)
2: Amendments to principal Act including joint registration regime with Australia for patent attorneys
5: New Part 6 inserted
After Part 5
6: Joint registration regime with Australia for patent attorneys
Preliminary provisions
268: Purpose of this Part
The purpose of this Part is to regulate the provision of patent attorney services by giving effect to the joint registration regime in accordance with the Arrangement.
269: Interpretation of this Part
1: In this Part, unless the context otherwise requires,— Appeals Tribunal Arrangement Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys section 272(2) Australian Patents Act Board Code of Conduct
a: the code known as the Code of Conduct for Patent and Trade Marks Attorneys 2013
b: the replacement for that code, or any subsequent code, that is issued by the Board under the joint registration regime company designated manager Disciplinary Tribunal incorporated law firm incorporated patent attorney joint registration regime
a: Part 1 of Chapter 20 of the Australian Patents Act and any regulations made for the purposes of that Part; and
b: this Part; and
c: any other Acts of the Parliament of Australia or New Zealand, and any regulations made under them, that give effect to the Arrangement; and
d: the Arrangement lawyer limited partnership ordinarily resident in New Zealand section 270 patent attorney attorney
a: carries on business in New Zealand or Australia or both; and
b: undertakes patent attorney services patent attorney director patent attorney services
a: applying for or obtaining a patent in Australia or New Zealand or elsewhere on behalf of another person; and
b: preparing or amending specifications or other documents for the purposes of the patent law of Australia, New Zealand, or any other country on behalf of another person; and
c: giving advice (other than of a scientific or technical nature) as to the validity of patents or their infringement— and providing patent attorney services professional misconduct
a: unsatisfactory professional conduct that involves a substantial or consistent failure to reach reasonable standards of competence and diligence; or
b: any other conduct, whether occurring in connection with practice as an attorney or otherwise, that shows that the attorney is not of good fame, integrity, and character; or
c: any contravention of a law that is declared by the joint registration regime to be professional misconduct registered patent attorney unsatisfactory professional conduct
2: Any terms that are used but not defined in this Part, but defined in the joint registration regime, have the meanings given in that regime.
3: A reference in, or in any regulations made under, this Part to a repealed Australian enactment is a reference to an Australian enactment that, with or without modification, replaces, or corresponds to, the Australian enactment repealed.
4: Subsection (3) 2010 No 108 s 5; Patents Act 1990 s 198, Schedule 1 (Aust); Patents Regulations 1990 (Aust); Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 1
270: Meaning of ordinarily resident in New Zealand
1: For the purposes of this Part, an individual is taken to be ordinarily resident in New Zealand
a: the individual has his or her home in New Zealand; or
b: New Zealand is the country of his or her permanent abode even though he or she is temporarily absent from New Zealand.
2: However, the individual is taken not to be ordinarily resident in New Zealand if he or she resides in New Zealand for a special or temporary purpose only. Joint registration regime applies in New Zealand
271: Patent attorneys must comply with joint registration regime
1: A person providing patent attorney services must be registered under, and comply with, the joint registration regime.
2: Without limiting subsection (1)
a: no person may provide patent attorney services unless the person is a registered patent attorney; and
b: a company may provide patent attorney services as long as the company is an incorporated patent attorney; and
c: a partnership other than a limited partnership may provide patent attorney services as long as at least 1 member of the partnership is a registered patent attorney; and
d: a limited partnership may not provide patent attorney services; and
e: the joint registration regime applies to the person and the person may be registered as a patent attorney under the regime; and
f: a registered patent attorney must co-operate with a request for information from the Board if the Board is investigating whether or not to commence proceedings against a registered patent attorney; and
g: acts or omissions in New Zealand of the person have the same effect for the purposes of the joint registration regime as if they were acts or omissions in Australia; and
h: if the person’s registration as a patent attorney is suspended or cancelled under the Australian Patents Act, the person's registration is suspended or cancelled (as the case may be) for the purposes of this Part; and
i: the person must pay the fees to the designated manager that are prescribed under the joint registration regime. 1953 No 64 s 103(1); 1997 No 60 s 17; Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 3.3
272: Commissioner must provide information about joint registration regime
1: The Commissioner must provide information about the joint registration regime on an Internet site maintained by or on behalf of the Commissioner, including information about—
a: the role of the designated manager (including registration requirements and processes):
b: the role of the Board (including the Code of Conduct):
c: the consequences of professional misconduct and unsatisfactory professional conduct:
d: how a person in New Zealand may make a complaint to the Board about a registered patent attorney in New Zealand:
e: the role and decisions of the Disciplinary Tribunal:
f: how the Trans-Tasman Proceedings Act 2010, the Evidence Act 2006, and the Trans-Tasman Proceedings Act 2010 (Aust) apply to the joint registration regime:
g: the role of the Appeals Tribunal:
h: the application of the Administrative Decisions (Judicial Review) Act 1977 (Aust).
2: The Commissioner must publish, on an Internet site maintained by or on behalf of the Commissioner, a copy of the Arrangement and Internet links to the Acts and regulations that comprise the joint registration regime.
273: Interface with Lawyers and Conveyancers Act 2006
1: Section 271
a: from providing legal services; or
b: from taking part in proceedings under the Patents Act 2013 to the extent that they were entitled to do so before the commencement of this Part.
2: However, this section does not limit sections 277(1) and 279 1953 No 64 ss 101, 103(5) Offences and penalties
274: Offences: unregistered persons practising, etc, as patent attorneys
Individuals
1: An individual commits an offence, and is liable on conviction to a fine not exceeding $6,000, if—
a: the individual carries on business, practises, or acts as a patent attorney; and
b: the individual is not a registered patent attorney or a lawyer.
2: An individual commits an offence, and is liable on conviction to a fine not exceeding $6,000, if—
a: the individual describes himself or herself, or holds himself or herself out, or permits himself or herself to be described or held out, as a patent attorney or an agent for obtaining patents; and
b: the individual is not a registered patent attorney. Companies
3: A company commits an offence, and is liable on conviction to a fine not exceeding $30,000, if—
a: the company carries on business, practises, or acts as a patent attorney; and
b: the company is not a registered patent attorney or an incorporated law firm.
4: A company commits an offence, and is liable on conviction to a fine not exceeding $30,000, if—
a: the company describes itself, or holds itself out, or permits itself to be described or held out, as a patent attorney or an agent for obtaining patents; and
b: the company is not a registered patent attorney. Partnerships other than limited partnerships
5: A partner in a partnership commits an offence, and is liable on conviction to a fine not exceeding $6,000, if—
a: the partner carries on business, practises, or acts as a patent attorney; and
b: none of the partners in the partnership is a registered patent attorney or a lawyer.
6: A partner in a partnership commits an offence, and is liable on conviction to a fine not exceeding $6,000, if—
a: the partner describes the partnership, or holds the partnership out, or permits the partnership to be described or held out, as a patent attorney or an agent for obtaining patents; and
b: none of the partners in the partnership is a registered patent attorney or a lawyer. Limited partnerships
7: A limited partnership commits an offence, and is liable on conviction to a fine not exceeding $30,000, if the limited partnership carries on business, practises, or acts as a patent attorney.
8: A limited partnership commits an offence, and is liable on conviction to a fine not exceeding $30,000, if the limited partnership describes itself, or holds itself out, or permits itself to be described or held out, as a patent attorney or an agent for obtaining patents. Interpretation
9: For the purposes of this Part, a person is taken to carry on business, practise, or act as a patent attorney if, and only if, the person does, or undertakes to do, patents work in New Zealand.
10: In this Part, patents work
a: applying for or obtaining patents in New Zealand or anywhere else:
b: preparing specifications or other documents for the purposes of this Act or the patent law of another country:
c: giving advice (other than advice of a scientific or technical nature) about the validity, or infringement, of patents. Patents Act 1990 ss 201, 201A (Aust); Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 3.3(e)
275: Exceptions for legal representatives and employees
Exception: legal representatives of deceased patent attorneys
1: Section 274(1), (3), and (5)
a: is carried on, within 3 years after the death of the patent attorney or any further time allowed by a court, by the legal representative of the deceased registered patent attorney; and
b: is managed by a registered patent attorney on behalf of the legal representative. Exception: employees
2: Section 274(1) and (2)
a: for his or her employer; or
b: if the person's employer is a member of a related company group, for another member of the group.
3: Section 274(3) and (4) Evidential burden
4: The defendant must adduce or point to evidence that suggests a reasonable possibility that a matter in this section exists or does not exist, in order to rely on this section. Whether company is related to another company
5: In this section, related company group Patents Act 1990 s 201 (Aust)
276: Incorporated patent attorney must have patent attorney director
Offence: failing to notify lack of patent attorney director
1: An incorporated patent attorney commits an offence, and is liable on conviction to a fine not exceeding $30,000, if the incorporated patent attorney—
a: does not have a patent attorney director; and
b: does not notify the designated manager of that within 7 days. Offence: acting after 7 days without patent attorney director
2: An incorporated patent attorney commits an offence, and is liable on conviction to a fine not exceeding $30,000, if the incorporated patent attorney—
a: does not have a patent attorney director; and
b: has not had a patent attorney director during the previous 7 days; and
c: carries on business, practises, or acts as a patent attorney. Patents Act 1990 s 201B (Aust); Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 3.3(e)
277: Documents prepared by lawyers
1: No lawyer may prepare a specification or a document relating to an amendment of a specification (or make a representation, or permit another person to represent, that the lawyer is entitled to do so) unless the lawyer is—
a: also a registered patent attorney; or
b: acting under the instructions of a registered patent attorney; or
c: directed to do so by a court of New Zealand or elsewhere.
2: A person who contravenes subsection (1) Patents Act 1990 s 202 (Aust); Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 3.3(e)
278: Documents prepared by member of partnership
1: A partner in a partnership (other than a limited partnership) who is not a registered patent attorney must not prepare a specification, or a document relating to an amendment of a specification, unless—
a: the person is acting under the instructions or supervision of a registered patent attorney; or
b: the amendment has been directed by an order under section 89.
2: A partner in a limited partnership who is not a registered patent attorney must not prepare a specification or a document relating to an amendment of a specification.
3: A person who contravenes subsection (1) or (2) Patents Act 1990 s 202A (Aust); Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 3.3(e)
279: Documents prepared by incorporated patent attorneys and incorporated law firms
An incorporated patent attorney or an incorporated law firm commits an offence, and is liable on conviction to a fine not exceeding $30,000, if—
a: an employee or a member of the incorporated patent attorney or incorporated law firm prepares a specification or a document relating to an amendment of a specification; and
b: the employee or member is not a registered patent attorney; and
c: the specification or document is not prepared—
i: under the instructions or supervision of an individual who is a registered patent attorney; or
ii: as directed by an order under section 89. Patents Act 1990 s 202B (Aust); Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 3.3(e)
280: Attendance at patent attorney's office
A registered patent attorney commits an offence, and is liable on conviction to a fine not exceeding $6,000, if—
a: the registered patent attorney practises, acts, or holds himself, herself, or itself out as practising or acting, as a patent attorney, at an office or place of business where specifications or other documents are prepared for the purposes of this Act; and
b: there is not an individual who is a registered patent attorney—
i: in regular attendance at that office or place; and
ii: in continuous charge of the patents work done at that office or place. Patents Act 1990 s 203 (Aust); Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 3.3(e)
281: Time limit for filing charging documents for offences
Despite anything to the contrary in section 25 of the Criminal Procedure Act 2011, the limitation period in respect of an offence under this Part ends on the date that is 5 years after the date on which the offence was committed. Patents Act 1990 s 204 (Aust) Provisions that apply if Disciplinary Tribunal and Appeals Tribunal sit in Australia
282: Provisions that apply if Tribunals sit in Australia
1: The purpose of this section is to give the Disciplinary Tribunal and the Appeals Tribunal powers in respect of a person or persons that ordinarily reside in New Zealand to enable proceedings to be conducted in Australia.
2: For that purpose, the Disciplinary Tribunal is deemed to have been declared by the Minister of Justice to be an Australian court under section 152 of the Evidence Act 2006. Examples
Disciplinary Tribunal subpoenas may be served in New Zealand. The Disciplinary Tribunal may take evidence, and receive related examination and submissions, by audio link or audiovisual link from New Zealand.
3: The Disciplinary Tribunal and the Appeals Tribunal are declared to be tribunals to which subpart 5 of Part 2 of the Trans-Tasman Proceedings Act 2010 applies, and all decisions of those Tribunals that are made in connection with proceedings to review decisions made under the joint registration regime are declared to be orders to which that subpart applies. Example
Certain Tribunal orders may be recognised and enforced in New Zealand. Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 3.3(c) Provisions that apply if Disciplinary Tribunal sits in New Zealand
283: Provisions that apply if Disciplinary Tribunal sits in New Zealand
1: The Disciplinary Tribunal may, at a sitting of that Tribunal in New Zealand that involves a patent attorney that is ordinarily resident in New Zealand, exercise all the powers of that Tribunal as if it were a sitting in Australia.
2: Without limiting subsection (1)
3: Without limiting subsection (1)
a: direct that the hearing or any part of the hearing be held in private:
b: require any person to leave the Tribunal:
c: prohibit or restrict the publication of evidence or the name of any party or any witness.
4: Nothing in subsection (2) or (3)
a: the prosecution of any person for an offence committed as a witness; or
b: the enforcement or execution of any judgment, order, injunction, writ, or declaration given, made, or granted by the Disciplinary Tribunal.
5: A decision made under subsection (3) 1908 No 89 s 56J; Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 3.3(c)
284: Issue of summons by Disciplinary Tribunal
1: This section applies if the Disciplinary Tribunal, by instrument in writing signed by the President of the Disciplinary Tribunal, issues a summons that requires a person in New Zealand to appear before the Tribunal to give evidence and to produce documents or articles for the purposes of a sitting of the Tribunal in New Zealand.
2: The summons may be served on a person in New Zealand by leaving a copy of the summons with that person personally, together with a statement setting out the rights and obligations of that person, including information as to the manner in which application may be made to that Tribunal to have the summons set aside.
3: A person who has been served with the summons under subsection (1) 1908 No 89 s 56K
285: Failure of witness to comply with summons
1: This section applies if the Disciplinary Tribunal, by instrument in writing signed by the President of the Disciplinary Tribunal, issues a certificate stating that a person named in the certificate has failed to comply with a summons referred to in section 284(1)
2: The High Court may issue a warrant requiring any constable to arrest that person and bring that person before the court.
3: The High Court may, on the appearance of that person before the court, impose a fine not exceeding $1,000 unless the court is satisfied that the failure to comply with the summons, the onus of proof of which lies with that person, should be excused.
4: In determining whether the failure to comply with the summons should be excused, the High Court may have regard to—
a: any matters that were not brought to the attention of the Disciplinary Tribunal, if the High Court is satisfied that—
i: the Disciplinary Tribunal would have been likely to have set aside the summons if those matters had been brought to the attention of that Tribunal; and
ii: the failure to bring those matters to the attention of the Disciplinary Tribunal was not due to any fault on the part of the person alleged to have failed to comply with the summons or was because of an omission by that person that should be excused; and
b: any matters to which the High Court would have regard if the summons had been issued by the High Court.
5: For the purposes of this section, but subject to subsection (4)
a: that the summons was issued by that Tribunal:
b: that the witness failed to comply with the summons:
c: the decision of that Tribunal, or any orders or findings of fact made by that Tribunal, in relation to any application made to that Tribunal to have the summons set aside.
6: Subject to subsection (4) 1908 No 89 s 56L
286: Other provisions about proceedings
1: The provisions in subsection (2)
a: references to the Federal Court of Australia must be treated as references to the Disciplinary Tribunal:
b: references to the court must be treated as references to the Disciplinary Tribunal:
c: references to a Judge of the court must be treated as references to a member of the Disciplinary Tribunal:
d: references to an Australian proceeding must be treated as references to a proceeding before the Disciplinary Tribunal in New Zealand.
2: The provisions are the following provisions of the Judicature Act 1908:
a: section 56M(1)﻿(a) and (2) (power to administer oaths in New Zealand):
b: section 56N (orders not subject to review):
c: section 56O (contempt):
d: section 56Q(1), (2)﻿(a), (3)﻿(a), and (4)﻿(a) (privileges and immunities of Judges, counsel, and witnesses). Miscellaneous provisions
287: Territorial scope and jurisdiction
1: A registered patent attorney who is ordinarily resident in New Zealand is within the jurisdiction of the Disciplinary Tribunal and the Appeals Tribunal and must co-operate with an investigation by either Tribunal into his or her conduct.
2: This Part does not apply to a person or company that is part of the patent attorney profession of a country outside New Zealand if—
a: the person or company—
i: is resident or incorporated in a country other than Australia or New Zealand; or
ii: has a principal place of business for undertaking patent attorney services in a country other than Australia or New Zealand; and
b: the patent attorney services provided by the person or company are in respect of the patent law of a country other than New Zealand or Australia. 1961 No 43 s 7; Therapeutic Products and Medicines Bill 2006 cl 29; Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 3.3(d)
288: Rights of patent attorney over documents and client property
A registered patent attorney has the same right of lien over documents and property of a client as a lawyer or incorporated law firm, as the case may be, has. Patents Regulations 1991 (Aust) r 20.53
289: Investigations under Australian Acts
A member of the Disciplinary Tribunal who is ordinarily resident in New Zealand must co-operate with an investigation that is undertaken under the Freedom of Information Act 1982 (Aust) or the Privacy Act 1988 (Aust).
290: Regulations under this Part
The Governor-General may, by Order in Council, make regulations for all or any of the following purposes:
a: prescribing matters that are necessary or desirable for the implementation of the Arrangement:
b: increasing or decreasing the fines for an offence under this Part to an amount that is consistent with the fines that apply under the joint registration regime after any alteration of the amount of penalty units under section 4AA of the Crimes Act 1914 (Aust):
c: prescribing any other matters that are required or permitted by the joint registration regime to be prescribed:
d: providing for any other matters contemplated by this Act, necessary for its administration, or necessary for giving it full effect. Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013 cl 3.3(e), (f)
6: New Schedule 1AA inserted
Before the Schedule Schedule 1
7: Repeal of Patents Act 1953
1: The Patents Act 1953
2: However, the Patents Regulations 1954 Part 2 of Schedule 2 section 114 OIC LI 2017/2 2017-02-24 Patents Act 1953 Part 2 to be brought into force by OIC (see section 2(2)).
8: Consequential amendments
The enactments specified in Schedule 2 OIC LI 2017/2 2017-02-24 Evidence Act 2006 Lawyers and Conveyancers Act 2006 Patents Act 2013 Privacy Act 1993 Lawyers and Conveyancers Act (Lawyers: Income sharing with Patent Attorneys) Regulations 2008 Patents Regulations 1954 Trade Marks Regulations 2003 Part 2 to be brought into force by OIC (see section 2(2)).