This Act shall come into force on a day to be appointed for the commencement thereof by the Governor-General by Proclamation.
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Interpretation
(1)
In this Act, unless the context otherwise requires,—
Applicant includes a person in whose favour a direction has been given under section 24 of this Act and the personal representative of a deceased applicant
Article includes any substance or material, and any plant, machinery, or apparatus, whether affixed to land or not
Assignee includes the personal representative of a deceased assignee; and references to the assignee of any person include references to the assignee of the personal representative or assignee of that person
Commissioner means the Commissioner of Patents
Commonwealth
[Repealed]
Commonwealth: this definition was repealed, as from 2 September 1996, by section 2 Patents Amendment Act 1996 (1996 No 139).
Convention application has the meaning assigned to it by subsection (4) of section 7 of this Act
Convention country, in any provision of this Act, means an entity for the time being declared by an order under section 77 to be a convention country for the purposes of that provision
Convention country: this definition was substituted, as from 14 October 1999, by section 3(2) Patents Amendment Act 1999 (1999 No 119).
Court means the High Court
Date of filing, in relation to any document filed under this Act, means the date on which the document is filed or, where it is deemed by virtue of any provision of this Act or of regulations made thereunder to have been filed on any different date, means the date on which it is deemed to be filed
Exclusive licence means a licence from a patentee which confers on the licensee, or on the licensee and persons authorised by him, to the exclusion of all other persons (including the patentee), any right in respect of the patented invention; and exclusive licensee shall be construed accordingly
Government Department means any Department or instrument of the Executive Government of New Zealand
Integrated circuit means a circuit, in its final or an intermediate form, in which the elements, at least one of which is an active element, and some or all of the interconnections are integrally formed in or on a piece of material and that is intended to perform an electronic function
Integrated circuit: this definition was inserted, as from 1 January 1995, by section 2 Patents Amendment Act 1994 (1994 No 122). See sections 17 and 18 of that Act as to the transitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).
International application means an application made under the Patent Cooperation Treaty for the protection of an invention
International application: this definition was inserted, as from 1 December 1992, by section 2 Patents Amendment Act 1992 (1992 No 81).
International Bureau means the International Bureau of the World Intellectual Property Organization
International Bureau: this definition was inserted, as from 1 December 1992, by section 2 Patents Amendment Act 1992 (1992 No 81).
International filing date means the international filing date given to an international application under Article 11 or Article 14(2) of the Patent Cooperation Treaty
International filing date: this definition was inserted, as from 1 December 1992, by section 2 Patents Amendment Act 1992 (1992 No 81).
Invention means any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies and any new method or process of testing applicable to the improvement or control of manufacture; and includes an alleged invention
Journal means the Patent Office Journal published under subsection (1) of section 112 of this Act
Minister means the Minister of Commerce
Minister: substituted, as from 1 December 1988, by section 4(1) Trade and Industry Act Repeal Act 1988 (1988 No 156).
Patent means letters patent for an invention
Patent Cooperation Treaty—
(a)
Means the Patent Cooperation Treaty, signed at Washington on the 19th day of June 1970, the text of which, as amended on the 2nd day of October 1979 and modified on the 3rd day of February 1984, is set out in Schedule 1 to the Patents Amendment Act 1992; and
(b)
Includes any amendments, modifications, and revisions from time to time made to the Treaty, being amendments, modifications, and revisions to which New Zealand is a party and by which New Zealand is bound:
Patent Cooperation Treaty: this definition was inserted, as from 1 December 1992, by section 2 Patents Amendment Act 1992 (1992 No 81).
Patent of addition means a patent granted in accordance with section 34 of this Act
Patent Attorney means a person carrying on for gain in New Zealand the business of acting as agent for other persons for the purpose of applying for or obtaining patents in New Zealand or elsewhere
Patentee, in relation to any patent, means the person or persons for the time being entered on the register of patents as grantee or proprietor of the patent
Prescribed means prescribed by this Act or by regulations made under this Act
Priority date has the meaning assigned to it by section 11 of this Act
Published, except in relation to a complete specification, means made available to the public; and without prejudice to the generality of the foregoing provision a document shall be deemed for the purposes of this Act to be published—
(a)
If it can be inspected as of right at any place in New Zealand by members of the public whether upon payment of a fee or otherwise; or
(b)
If it can be inspected in a library of a Government Department or of any institution or public authority and the library is one which is open generally to members of the public who are interested in matters to which the document relates and is a library in which members of the public in search of information related to the subject of the document would ordinarily seek and do in fact seek the information:
Receiving Office has the same meaning as in Article 2(xv) of the Patent Cooperation Treaty
Receiving Office: this definition was inserted, as from 1 December 1992, by section 2 Patents Amendment Act 1992 (1992 No 81).
The Statute of Monopolies means the Act of the 21st year of the reign of King James the First, chapter 3, intituled “An Act concerning monopolies and dispensations with penal laws and the forfeiture thereof”.
Treaty application means an international application—
(a)
Which contains a request specifying New Zealand as a designated State under Article 4(1)(ii) of the Patent Cooperation Treaty; and
(b)
Which has been given an international filing date:
Treaty application: this definition was inserted, as from 1 December 1992, by section 2 Patents Amendment Act 1992 (1992 No 81).
Treaty regulations—
(a)
Means the regulations made under the Patent Cooperation Treaty and set out in Schedule 2 to the Patents Amendment Act 1992; and
(b)
Includes any amendments from time to time made to those regulations.
Treaty regulations: this definition was inserted, as from 1 December 1992, by section 2 Patents Amendment Act 1992 (1992 No 81).
(2)
For the purposes of subsection (3) of section 7 of this Act, so far as it relates to a convention application, and for the purposes of section 81 of this Act, the expression personal representative, in relation to a deceased person, includes the legal representative of the deceased appointed in any country outside New Zealand.
(3)
In the case of an entity that is a convention country but is not a state, part of a state, or a territory for whose international relations a state is responsible,—
(a)
A reference in this Act to—
(i)
Application for protection in a country; or
(ii)
Application for protection in respect of a country,—
must be read as a reference to application for protection under the rules of the entity:
(b)
A reference in this Act to filing a specification in a convention country must be read as a reference to filing a specification under the rules of the entity:
(c)
A reference in this Act to the law of a convention country must be read as a reference to the rules of the entity:
(d)
A reference in this Act to the Government of a convention country must be read as a reference to the governing body of the entity.
Compare: Patents Act 1949, s 101 (UK); 1921-22 No 18 s 2
Subsection (3) was inserted, as from 14 October 1999, by section 3(3) Patents Amendment Act 1999 (1999 No 119).
There may from time to time be appointed under the State Sector Act 1988 some fit person to be the Commissioner of Patents.
(2)
The person who at the commencement of this Act holds the office of Commissioner of Patents, Designs, and Trade Marks under the Patents, Designs, and Trade Marks Act 1921-22 shall be deemed to have been appointed as Commissioner of Patents under this Act.
Compare: 1921-22 No 18 s 113
A reference to the State Services Act 1962 in subsection (1) was substituted, as from 1 January 1963, for a reference to the “Public Service Act 1912” pursuant to section 77(1) State Services Act 1962 (1962 No 132). This was in turn substituted, as from 1 April 1988, by a reference to the State Sector Act 1988 pursuant to section 88(2) State Sector Act 1988 (1988 No 20).
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Assistant Commissioners of Patents and other officers
(1)
There may from time to time be appointed under the State Sector Act 1988—
(a)
One or more fit persons to be Assistant Commissioners of Patents:
(b)
Such other officers and employees as may be necessary for carrying out the provisions of this Act.
(2)
Every Assistant Commissioner of Patents so appointed, while he remains in office, shall have and may exercise, subject to the control and direction of the Commissioner, all the powers, duties, and functions of the Commissioner, and all references in this or any other Act to the Commissioner shall, so far as may be necessary for the purpose of giving effect to the provisions of this section, be deemed to include a reference to every Assistant Commissioner of Patents.
(3)
The person who at the commencement of this Act holds the office of Deputy Commissioner of Patents, Designs, and Trade Marks under the Patents, Designs, and Trade Marks Act 1921-22 shall be deemed to have been appointed an Assistant Commissioner of Patents under this Act.
Compare: 1921-22 No 18 ss 114, 115
A reference to the State Services Act 1962 in subsection (1) was substituted, as from 1 January 1963, for a reference to the “Public Service Act 1912” pursuant to section 77(1) State Services Act 1962 (1962 No 132). This was in turn substituted, as from 1 April 1988, by a reference to the State Sector Act 1988 pursuant to section 88(2) State Sector Act 1988 (1988 No 20).
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Patent Office
(1)
The Minister may from time to time, by notice in the Journal, appoint a place to be the Patent Office. The place at the commencement of this Act used as the Patent Office shall be deemed to have been appointed to be the Patent Office under this Act.
(2)
The Commissioner, from time to time by notice in the Journal, may fix the hours during which the Patent Office shall be open for the transaction of public business under this Act, and may declare the Patent Office closed for the transaction of public business on any day.
(3)
Where the time prescribed for doing any act or taking any proceeding expires on a day on which the Patent Office is not open and by reason thereof the act or proceeding cannot be done or taken on that day, the act or proceeding shall be deemed to be in time if done or taken on the next day on which the Patent Office is open.
(4)
There shall be a seal of the Patent Office and impressions thereof shall be judicially noticed.
Compare: Patents Act 1949, s 98 (UK); 1921-22 No 18 ss 113, 116, 133
Subsection (2) was substituted, as from 9 December 1976, by section 2(1) Patents Amendment Act 1976 (1976 No 112).
5A
Closing of Patent Office at short notice
(1)
Notwithstanding subsection (2) of section 5 of this Act, where, because of an emergency or other temporary circumstances, the Commissioner is satisfied that it is or will be necessary or desirable to close the Patent Office on any day and it is not practicable to give notice of the closure in the Journal as required by that subsection, the Commissioner may, without giving that notice, declare the Patent Office closed for the transaction of public business on that day in accordance with the provisions of this section.
(2)
In every case where the Commissioner proposes to declare or has declared the Patent Office closed under subsection (1) of this section he shall, if practicable, display a public notice of that fact in or on the building in which the Patent Office is situated.
(3)
As soon as practicable thereafter the Commissioner shall also cause a copy of the public notice, or (if no such notice was displayed) a notice of the exercise of his powers under this section, to be published in the Journal.
This section was inserted, as from 9 December 1976, by section 2(2) Patents Amendment Act 1976 (1976 No 112).
6-
Officers and employees of Patent Office not to acquire interest in any patent or prepare specifications
(1)
Every officer and employee of the Patent Office shall be incapable, during the period for which he holds his appointment and for one year thereafter, of applying in New Zealand for a patent or of acquiring directly or indirectly, except under a will or on an intestacy, any right or interest in any patent granted or to be granted in New Zealand.
(2)
Every officer and employee of the Patent Office commits an offence, and shall be liable on summary conviction to a fine not exceeding $100, if, during the period for which he holds his appointment and for one year thereafter, he applies in any country other than New Zealand for a patent or acquires directly or indirectly, except under a will or on an intestacy, any right or interest in any patent granted or to be granted in any country other than New Zealand.
(3)
Every officer and employee of the Patent Office commits an offence, and shall be liable on summary conviction to a fine not exceeding $40, if, outside the scope of his official duties, he drafts or prepares a specification or drawing or any part of a specification or drawing or makes a search of the records of the Patent Office for the use or information of any applicant or intending applicant for a patent under this Act.
(4)
Nothing in subsections (1) and (2) of this section shall prevent any former officer or employee of the Patent Office who is practising as a solicitor or patent attorney from lawfully carrying out, within the period of one year specified in those subsections, any function that is merely incidental to that practice.
An application for a patent for an invention may be made by any of the following persons, that is to say:
(a)
By any person claiming to be the true and first inventor of the invention:
(b)
By any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application,—
and may be made by that person either alone or jointly with any other person.
(2)
Without prejudice to the foregoing provisions of this section, an application for a patent for an invention in respect of which protection has been applied for in a convention country (whether before or after it became a convention country) may be made by the person by whom the application for protection was made or by the assignee of that person; and for the purposes of this Act the filing in any convention country of a complete specification after the filing of a provisional specification or provisional specifications in respect of any such application shall be deemed to be an application for protection in that country:
Provided that no application shall be made by virtue of this subsection after the expiration of 12 months from the date of the application for protection in a convention country or, where more than one such application for protection has been made, from the date of the first application.
(2A)
For the purposes of this section, where more than one application for protection in a convention country has been made, the first application may be disregarded and the second application shall be substituted for the first application where—
(a)
The first application was made in or in respect of the same convention country and by the same applicant as the second application; and
(b)
Not later than the date of filing of the second application, the first application was unconditionally withdrawn, abandoned, or refused; and—
(i)
The first application had not been made available to the public in New Zealand or elsewhere before its unconditional withdrawal, abandonment, or refusal; and
(ii)
No rights remain outstanding in respect of the first application; and
(iii)
The first application has not served to establish a priority date (as defined in section 2 of this Act) in relation to another application in any country.
(3)
An application for a patent may be made under subsection (1) or subsection (2) of this section by the personal representative or the assignee of the personal representative of any deceased person who, immediately before his death was entitled to make such an application.
(4)
An application for a patent made by virtue of subsection (2) of this section is in this Act referred to as a convention application.
Compare: Patents Act 1949, s 1 (UK); 1921-22 No 18 ss 3, 48
Subsection (2) was amended, as from 14 October 1999, by section 2(1) Patents Amendment Act 1999 (1999 No 119) by inserting the words “(whether before or after it became a convention country)”. Section 2(2) of that Act states that this amendment is for the avoidance of doubt.
Subsection (2A) was inserted, as from 18 August 1992, by section 3 Patents Amendment Act 1992 (1992 No 81).
8-
Application
(1)
Every application for a patent shall be made in the prescribed form and shall be filed at the Patent Office in the prescribed manner.
(2)
Every application (other than a convention application) shall state that the applicant is in possession of the invention and shall name the person claiming to be the true and first inventor; and where the person so claiming is not the applicant or one of the applicants, the application shall contain a declaration that the applicant believes him to be the true and first inventor.
(3)
Every convention application shall specify the date on which and the convention country in which the application for protection, or the first such application, was made, and shall state that no application for protection in respect of the invention had been made in a convention country before that date by the applicant or any person from whom he derives title.
(4)
Where applications for protection have been made in one or more convention countries in respect of 2 or more inventions which are cognate or of which one is a modification of another, a single convention application may, subject to the provisions of section 10 of this Act, be made in respect of those inventions at any time within 12 months from the date of the earliest of the said applications for protection:
Provided that the fee payable on the making of any such application shall be the same as if separate applications had been made in respect of each of the said inventions; and the requirements of subsection (3) of this section shall in the case of any such application apply separately to the applications for protection in respect of each of the said inventions.
Compare: Patents Act 1949, s 2 (UK); 1921-22 No 18 s 3
9-
Complete and provisional specifications
(1)
Every application for a patent (other than a convention application) shall be accompanied by either a complete specification or a provisional specification; and every convention application shall be accompanied by a complete specification.
(2)
Where an application for a patent is accompanied by a provisional specification, a complete specification shall be filed within 12 months from the date of filing of the application, and if the complete specification is not so filed the application shall be deemed to be abandoned:
Provided that the complete specification may be filed at any time after 12 months but within 15 months from the date aforesaid if a request to that effect is made to the Commissioner and the prescribed fee paid on or before the date on which the specification is filed.
(3)
Where 2 or more applications accompanied by provisional specifications have been filed in respect of inventions which are cognate or of which one is a modification of another, a single complete specification may, subject to the provisions of this section and of section 10 of this Act, be filed in pursuance of those applications, or, if more than one complete specification has been filed, may with the leave of the Commissioner be proceeded with in respect of those applications.
(4)
Where an application for a patent (not being a convention application) is accompanied by a specification purporting to be a complete specification, the Commissioner may, if the applicant so requests at any time before the acceptance of the specification, direct that it shall be treated for the purposes of this Act as a provisional specification, and proceed with the application accordingly.
(5)
Where a complete specification has been filed in pursuance of an application for a patent accompanied by a provisional specification or by a specification treated by virtue of a direction under subsection (4) of this section as a provisional specification, the Commissioner may, if the applicant so requests at any time before the acceptance of the complete specification, cancel the provisional specification and post-date the application to the date of filing of the complete specification.
Compare: Patents Act 1949, s 3 (UK); 1921-22 No 18 ss 4, 7, 18; 1939 No 26 s 73
10-
Contents of specification
(1)
Every specification, whether complete or provisional, shall describe the invention, and shall begin with a title indicating the subject to which the invention relates.
(2)
Subject to any regulations made under this Act, drawings may, and shall if the Commissioner so requires, be supplied for the purposes of any specification, whether complete or provisional; and any drawings so supplied shall, unless the Commissioner otherwise directs, be deemed to form part of the specification, and references in this Act to a specification shall be construed accordingly.
(3)
Every complete specification—
(a)
Shall particularly describe the invention and the method by which it is to be performed; and
(b)
Shall disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; and
(c)
Shall end with a claim or claims defining the scope of the invention claimed.
(4)
The claim or claims of a complete specification must relate to a single invention, must be clear and succinct, and must be fairly based on the matter disclosed in the specification.
(5)
Regulations made under this Act may require that in such cases as may be prescribed by the regulations a declaration as to the inventorship of the invention, in such form as may be so prescribed, shall be furnished with the complete specification or within such period as may be so prescribed after the filing of that specification.
(6)
Subject to the foregoing provisions of this section, a complete specification filed after a provisional specification, or filed with a convention application, may include claims in respect of developments of or additions to the invention which was described in the provisional specification or, as the case may be, the invention in respect of which the application for protection was made in a convention country, being developments or additions in respect of which the applicant would be entitled under the provisions of section 7 of this Act to make a separate application for a patent.
(7)
Where a complete specification claims a new substance, the claim shall be construed as not extending to that substance when found in nature.
Compare: Patents Act 1949, s 4 (UK); 1921-22 No 18 ss 3, 4
11-
Priority date of claims of complete specification
(1)
Every claim of a complete specification shall have effect from the date prescribed by this section in relation to that claim (in this Act referred to as the priority date); and a patent shall not be invalidated by reason only of the publication or use of the invention, so far as claimed in any claim of the complete specification, on or after the priority date of that claim, or by the grant of another patent upon a specification claiming the same invention in a claim of the same or later priority date.
(2)
Where the complete specification is filed in pursuance of a single application accompanied by a provisional specification or by a specification which is treated by virtue of a direction under subsection (4) of section 9 of this Act as a provisional specification, and the claim is fairly based on the matter disclosed in that specification, the priority date of that claim shall be the date of filing of the application.
(3)
Where the complete specification is filed or proceeded with in pursuance of 2 or more applications accompanied by such specifications as are mentioned in subsection (2) of this section, and the claim is fairly based on the matter disclosed in one of those specifications, the priority date of that claim shall be the date of filing of the application accompanied by that specification.
(4)
Where the complete specification is filed in pursuance of a convention application and the claim is fairly based on the matter disclosed in the application for protection in a convention country or, where the convention application is founded upon more than one such application for protection, in one of those applications, the priority date of that claim shall be the date of the relevant application for protection.
(5)
Where, under the foregoing provisions of this section, any claim of a complete specification would, but for this provision, have 2 or more priority dates, the priority date of that claim shall be the earlier or earliest of those dates.
(6)
In any case to which subsections (2) to (5) of this section do not apply, the priority date of a claim shall be the date of filing of the complete specification.
Compare: Patents Act 1949, s 5 (UK); 1921-22 No 18 s 8
