Patents
Patents and mātauranga Māori
The owner of a patent can prevent others from commercialising the patented invention for up to 20 years.
Positive protection (getting a patent):
Patent law can protect innovations in practices that are based on tradition, such as rongoa or processes, where the formula or use has not been previously disclosed and involves an "inventive step".
Defensive protection (stopping a patent):
The proposed Patents Bill10 provides for the creation of a Māori Advisory Committee to advise the Commissioner of Patents. The Committee will advise the Commissioner on whether:
- an invention seeking patent protection is derived from Mātauranga Māori and/or from indigenous plants or animals; and
- the commercial exploitation of the invention is likely to be contrary to Māori values.
If the Committee finds that either of these criteria applies, a patent is unlikely to be granted by the Commissioner. For more information on the proposed Patents Bill and Māori Advisory Committee, see the MED website.
What is a patent?
A patent is an exclusive right for a new invention. The owner of a patent can prevent others from commercialising the patented invention for up to 20 years.
Patents represent a contract between the Crown, who is responsible for granting this right, and the inventor. The community benefits from new ideas and research, such as the development of new products and technology. In return for making the details of their invention publicly available, the inventor is granted a period of monopoly protection to allow them to benefit directly from their invention and from the effort and money they have put into it.
Patent protection is provided for under the Patents Act 1953.11
What can be protected by a patent?
Patents are intended to cover products, processes, improvements and testing methods related to manufacturing – that is, how things work, what they do, how they do it, or how they are made. Patents can't be granted for scientific, mathematical or other theories or ideas. To be patentable, such theories must be translated into manufactured products or manufacturing techniques.
What are the benefits of having a patent?
A patent is a business asset that can be bought, sold, transferred or licensed like most other property. Some companies don't actually manufacture their patented inventions, but rather trade and profit from licensing their patents to others.
If your invention is protected by a patent:
- you have exclusive rights to use or sell your invention;
- you have exclusive rights to permit or license others to use the invention;
- you can take legal action against anyone who tries to use your invention without your consent; and
- the existence of the patent may be enough to deter would-be infringers.
What are the main requirements for patent protection?
- The invention must be new. If the invention has been described in a publication, used, displayed or otherwise made available or commercialised in Aotearoa-New Zealand before a patent is applied for, then it will probably not be patentable (see Tip).
- The invention must not be obvious compared to what is already known. The invention must involve doing something more than what would be obvious to someone with a good knowledge and skill in the field of the invention.
- The invention must be more than just combining two or more known products or processes in a way that produces no new effect or improved result over what the previously known products or processes achieve individually.
What does not qualify for patent protection?
If an invention doesn't meet the above criteria, or if exploiting an invention commercially is regarded as contrary to public policy or morality, it can't be patented.
What rights does a patent give you?
Having a patent for an invention gives you the right to stop others from making, using or selling the invention as claimed during the term of the patent. As discussed previously, in return for the grant of a patent you must make public a complete description of the invention.
Do I have to patent my invention?
No. You are not legally required to obtain a patent for your invention before you use it.
You may choose to keep your invention secret. This approach can be useful if the invention is difficult to "reverse engineer". For example, the Coca Cola® drink recipe has been kept secret through trade secrets. This is possible because the exact formula for the recipe is difficult to reproduce.
Or you may decide that the best way to commercially exploit your invention is to be the first to put the product out into the market. This approach can work well for inventions that have a limited time span, for example, due to trend changes.
There are many IP options and filing strategies. If you are not certain which direction to take, get help from a patent attorney or business mentor who is familiar with IP.
How do I protect my invention?
Searching for patents
Before applying for a patent, it is a good idea to carry out a search to assess the originality of your invention. By searching both Aotearoa-New Zealand and overseas patent databases, you can see if a similar invention has already been developed or published. If you search the patent database you might also find out that if you continue to use your invention, you could be infringing someone else's patent.
You can search patents in the following places:
- the database on the IPONZ website; or
- patent databases on the Internet.
Making an application
Patent applications must be made to IPONZ, who will examine the application and decide whether the invention is eligible for the grant of a patent.
A completed application form (available at the IPONZ website), the appropriate fee, and either a provisional specification or a complete specification must accompany a patent application.
What are specifications?
A patent specification is a written description of the invention, often including drawings and tables, to show how it is made and works. You have the option of filing a provisional specification or a complete specification in the first instance. A provisional specification broadly describes the invention and how it works. A complete specification accurately describes the invention and the best known method of carrying it out, and ends with one or more "claims" which define the scope of the invention.
What are the advantages of filing an application with a provisional specification?
- The invention is not examined until the complete specification is filed.
- Your Aotearoa-New Zealand filing date gives you a 12 month priority to file your patent application in most overseas countries.
- You will get an application number that you can use on the products you manufacture along with the status "patent pending".
- You can disclose or reveal your invention as described in the provisional specification and gauge how successful it may be before proceeding further.
- You have extra time to continue your application (up to a maximum of 15 months).
- You avoid the larger cost of continuing your application until you decide if you will proceed further with your application.
What does the term "patent pending" mean?
The term "patent pending" signals that someone has applied for a patent for the invention, although it has not yet been granted. "Patent pending" can be written on, for example, products made according to the invention or publications relating to the products and how they are made as described in complete and/or provisional specifications.
How much does it cost to apply for a patent?
The fee for lodging a provisional specification is $50 (excl GST), while the cost for a complete specification is $250 (excl GST). Please go to the IPONZ website for the latest information on fees.
In most cases you will need a patent attorney to help draft your application. This will involve separate legal costs.
How long does patent protection last?
Your patent will last for 20 years from the date IPONZ receives your complete specification, as long as you pay the renewal fees. Renewal fees are due at the end of the 4th, 7th, 10th and 13th years of a patent.
Does patent protection extend overseas?
No. Your patent will only protect you in Aotearoa-New Zealand. If you want to protect your invention by patenting overseas there are two options available:
- You can file applications with the IP Offices in the overseas countries of interest (usually through a local agent). This may be a cost-effective method if you are applying in only a few countries.
- If you want to apply in a larger number of overseas countries you can make an application under the Patent Cooperation Treaty (PCT). Under the PCT system you can make a single international application to cover as many of the member countries that interest you. Patents filed under the PCT are not "world-wide patents" – there is no such thing. Applications are still filed and examined in the individual countries selected and will have to meet their individual requirements. A PCT application is the first step towards gaining a family of national and/or regional patents overseas. For more information read the IPONZ International Patent Protection publication or visit the World Intellectual Property Organization (WIPO) website.
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