DRAFT FOR CONSULTATION Patents Bill Government Bill · · · · · · Explanatory note Clause 1 is the Title clause. Clause 2 is the commencement clause. Clause 2 provides that— the provisions relating to regulations and a M¯aori advisory committee come into force on the day after the date on which the Bill receives the Royal assent: the rest of the Bill comes into force on a date to be appointed by the Governor-General by Order in Council; and 1 or more orders may be made bringing different provisions into force on different dates. 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 appropriate 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 00—1 Explanatory note DRAFT FOR CONSULTATION Patents 2 · · · address M¯aori concerns relating to the granting of patents for inventions derived from indigenous plants and animals or from M¯aori 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. 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 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) which 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 purposes of the definition of prior art base if— · the disclosure occurred during the 1-year period immediately preceding the filing date of the patent application and the disclosure was due to, or made in consequence of, information having been obtained unlawfully or in breach of confidence: Explanatory note · · · · the disclosure occurred during the 1-year period immediately preceding the filing 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 6-month period immediately preceding 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 in New Zealand, at any time during the 1-year period immediately preceding the priority date of the claim, 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. Clause 11 provides that the Bill 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 inventions 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 as it existed before the priority date of that claim— · is novel; and involves an inventive step; and · · is useful; and 3 DRAFT FOR CONSULTATION Patents Act binds the Crown Explanatory note DRAFT FOR CONSULTATION Patents 4 · is not excluded from being a patentable invention under clause 14 or clause 15. 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 invention is not a patentable invention if the commercial exploitation of the invention, so far as claimed in a claim, is contrary to public policy or morality. In addition, the following are not patentable inventions: · · · human beings and biological processes for their generation: diagnostic, therapeutic, or surgical methods for the treatment of human beings: plant varieties. Subpart 2—Patent rights Clause 16 sets out the nature of a patent. A patent is personal property. 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 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 paying renewal fees. Generally, the prescribed period can be extended to a date that is not more than 6 months after the expiry of the prescribed period. 5 DRAFT FOR CONSULTATION Patents Explanatory note 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 true and first inventor; or derives title to the invention from the true and first inventor; or is the personal representative of a deceased person mentioned above. 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. Co-owners 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 accounting to the others. Clause 24 protects the rights of buyers from co-owners of a patent. Clause 25 gives the Commissioner of Patents (the Commissioner) the power to give directions to co-owners. 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. Clause 26 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 clause 25. Clause 27 contains miscellaneous provisions concerning directions. Explanatory note DRAFT FOR CONSULTATION Patents 6 Part 3 Process for obtaining grant of patent and other matters Subpart 1—Patent applications Clause 28 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 true and first inventor and certain other persons. Clause 29 provides that every patent application must be made in accordance with this Act and the regulations. Clause 30 allows the Commissioner to post-date patent applications and specifications. Clause 31 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 32 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 application. Clause 33 provides that if a patent application is accompanied by a provisional specification, a complete specification 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 15 months from the filing date of the patent application. A patent application must be treated as having been abandoned if the complete specification is not filed within the period allowable under the clause. Clause 34 provides that every provisional specification must describe the invention and include any other prescribed information. Clause 35 provides that every complete specification must— 7 DRAFT FOR CONSULTATION Patents Explanatory note · · · · particularly describe the invention and the method by which it is to be performed; and disclose the best method of performing the invention which is known to the applicant and for which the applicant is entitled 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 specification. Clause 36 provides for the supply of drawings. · · · · Clauses 37 to 40 contain provisions relating to specifications for micro-organisms. These provisions are similar to equivalent provisions in the Patents Act 1990 of the Commonwealth of Australia. In effect, a complete specification relating to micro-organisms will comply with clause 35(1)(a) and (b) if, and only if, the deposit requirements specified in clause 38 are satisfied in relation to the micro-organism. The deposit requirements are satisfied in relation to a micro-organism if, and only if,— the micro-organism was, on or before the filing date of the specification, deposited with a prescribed depositary institution in accordance with the rules relating to micro-organisms; and the applicant provides to the Commissioner a receipt for the deposit; and the specification includes all relevant information on the characteristics of the micro-organism that is known to the applicant; 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 micro-organism are obtainable from a prescribed depositary institution. Clause 39 provides that the deposit requirements must be treated as satisfied in certain circumstances. Explanatory note DRAFT FOR CONSULTATION Patents 8 Clause 40 provides that a patent may be revoked on the ground referred to in clause 105(1)(c) (which relates to complete specifications that do not comply with clause 35(1)) if the patent was granted for an invention that involves the use, modification, or cultivation of certain micro-organisms and the micro-organism 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 Cooperation Treaty that contain a request specifying New Zealand as a designated 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 (the 1953 Act). Generally, the provisions are carried forward from the 1953 Act with no change of substance. However,— · · certain drafting changes have been made to reflect current drafting practice; and clause 42(2) now provides that an indication, in relation to a deposited micro-organism 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 48 allows a convention applicant to make a convention application 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 in respect of an invention 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 basically the person who has made the basic application or is the assignee or personal representative of that person. Clause 49 provides that convention applications must be made and dealt with in the same manner as any other patent application. However, convention applications must— · include certain prescribed information relating to the relevant basic application; and · be accompanied by a complete specification; and 9 DRAFT FOR CONSULTATION Patents Explanatory note · be made and dealt with in accordance with the requirements prescribed by the Bill and regulations (if different or additional requirements for convention applications have been prescribed). Clause 50 provides that if more than 1 basic application has been made for an invention, the first basic application may be disregarded and the second basic application must be substituted for the first basic application in certain circumstances. This provision is based on section 7(2A) of the 1953 Act. Clause 51 allows a single convention application to be made in certain circumstances where basic applications have been made in 1 or more convention countries for 2 or more cognate inventions. Subpart 5—Priority dates Clause 52 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 53 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 54 provides for the priority date of a claim if the complete specification is filed for 2 or more applications that were accompanied 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 55 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. Clause 56 provides for the priority date for Treaty applications if— · that Treaty application claims the priority of an earlier application under Article 8 of the Patent Cooperation Treaty; and · that earlier application is— 10 · · · · the claim is fairly based on the matter disclosed in that earlier application or in a specification filed for that earlier application. 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 57 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. Clause 58 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 requirements in the Bill; and 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. Explanatory note DRAFT FOR CONSULTATION Patents 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 Subpart 6—Examination 11 DRAFT FOR CONSULTATION Patents Explanatory note Clause 59 allows the Commissioner to refuse to proceed with an application or require the application or specification to be amended if the Commissioner reports that— the application or specifications do not comply with the · requirements of the Bill or of the regulations; or there is any other lawful ground of objection to the grant of a · patent in respect of the application (for example, the invention is not a patentable invention). Clause 60 requires an applicant, by the deadline set by the Commissioner, to provide a substantive response to an adverse report. After each response, the Commissioner may issue a further report under clause 58. Clause 61 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 60. Clause 62 provides that the Commissioner must examine an amended complete specification in the same manner as the original specification if the specification is amended following the issue of a report under clause 58. Clause 63 creates a new duty on applicants to inform the Commissioner 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 64 provides that an amendment of a complete specification relating to a patent is not allowable if the patentee had breached clause 63 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 provided under clause 63. Clause 65 sets out how the new duty under clause 63 is to be performed. Subpart 7—Acceptance and publication Time for putting application in order for acceptance Clause 66 provides that a patent application is void unless, within 18 months from the date of the first report issued under clause 58, the applicant ensures that— · the application and the complete specification comply with the requirements of the Bill and of the regulations; and Explanatory note DRAFT FOR CONSULTATION Patents 12 · there is no other lawful ground of objection to the grant of a patent. Clause 67 allows the High Court (the Court) to extend the period allowed under clause 66 if an appeal to the Court is pending or the time within which an appeal may be brought has not expired. Clause 68 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 66. 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 69 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 requirements of the Bill and of the regulations; and there is no other lawful ground of objection to the grant of a patent. The Commissioner must, after acceptance of a complete specification, publish the acceptance in the journal published under clause 260 (the journal). Clause 70 allows applicants to request that the Commissioner postpone acceptance of the complete specification until a date that is specified in the notice. Publication Clause 71 requires the Commissioner to publish a notice in the journal 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. Clause 72 provides publication requirements in the case of divisional applications under clause 31. Clause 73 provides that if a notice is published under clause 71 or clause 72, the specification concerned, and the other prescribed 13 DRAFT FOR CONSULTATION Patents Explanatory note documents, are open to public inspection. In addition, if acceptance of a complete specification is published under clause 69, 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 published on the day on which it becomes open to public inspection unless it has been published otherwise before that day. Clause 74 provides that a Treaty application must be taken to have become open to public inspection, and to have been published in New Zealand, on the date that it is published under Article 21 of the Patent Cooperation Treaty. Clause 75 provides that, except as provided by the Act, documents of the kind mentioned in clause 73 or clause 74 must not be published or be open to public inspection, and are generally not liable to be inspected or produced. Clause 76 provides that the Commissioner’s examination reports must not, before the acceptance of the complete specification,— · be published or be open to public inspection; or be inspected or produced in any legal proceeding (except in · the interests of justice). Clause 77 provides that after a complete specification has become open to public inspection, the applicant has the same rights as the applicant would have had if a patent had been granted when the specification became open to public inspection. However, this does not give the applicant the right to commence proceedings in respect of any act unless a patent is ultimately granted. Clause 78 provides a defence to proceedings under clause 77 in respect 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 Clause 79 provides that after the acceptance of a complete specification, 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 Explanatory note DRAFT FOR CONSULTATION Patents 14 · 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 complete 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. Subpart 9—Assertions by third parties before acceptance and reexamination after acceptance Assertions by third parties before acceptance 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 before the acceptance of the complete specification. Clause 87 requires the Commissioner to take the assertions made under clause 86 into account as part of the examination process. Re-examination after acceptance Clause 88 provides that the Commissioner may, and must if requested to do so by any person, re-examine a complete specification after acceptance of the complete specification. Clause 89 provides that if a patent has been granted, the Commissioner 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 re-examining a complete specification, the Commissioner must consider and report on whether, to the best of the Commissioner’s knowledge, the invention is not novel or does not involve an inventive step. 15 DRAFT FOR CONSULTATION Patents Explanatory note Clause 91 requires copies of re-examination reports to be given to the Court if the Court directed the Commissioner to re-examine the complete specification. Clause 92 allows the Commissioner to refuse to grant the patent if the Commissioner makes an adverse report on a re-examination under clause 88. Clause 93 allows the Commissioner to revoke a patent if the Commissioner makes an adverse report on a re-examination under clause 89. Subpart 10—Grant of patent General rules Clause 94 provides that the Commissioner must grant a patent to the nominated person or persons as soon as is reasonably practicable after the date that is 3 months after the date of the publication of the accepted complete specification if either— · · the Commissioner has not decided to re-examine the complete specification and a request to re-examine the complete specification has not been made; or the Commissioner decides, following all re-examinations of the complete specification, that the patent should be granted. Clause 95 provides that every patent must be given a patent date that is the filing date of the complete specification. 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 improvement in, or modification of, an invention and to grant a patent of addition in substitution. 16 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 Commissioner 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. Clause 102 provides for renewal fees in relation to patents of addition. Clause 103 provides that an inventive step is not required in connection with a patent of addition. Clause 104 allows the Commissioner or the Court to revoke a patent on any of the grounds set out in clause 105. Clause 105 provides that a patent may be revoked on 1 or more of the following grounds: · · · · · · · Clause 106 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 107 provides for the surrender of a patent by the patentee. Explanatory note DRAFT FOR CONSULTATION Patents Subpart 11—Revocation and surrender of patents 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 35(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 or elsewhere before the priority date: that the patent has been granted contrary to law. 17 DRAFT FOR CONSULTATION Patents Explanatory note Subpart 12—Restoration of lapsed patents and restoration of patent applications Restoration of lapsed patents Clause 108 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 109 requires a request to restore a patent to describe the circumstances that led to the failure to pay the renewal fee. Clause 110 sets out who may make a request for the restoration of a patent. Clause 111 requires a request for the restoration of a patent to be made within 12 months of the date that the patent ceased to have effect. However, the Commissioner may extend the period within which a request may be made if the Commissioner is satisfied that there was no undue delay in making the request. Clause 112 requires the Commissioner to publish a request to restore a patent in the journal. Clause 113 allows any person to give notice to the Commissioner of opposition to a restoration order. Clause 114 provides that a restoration order must be made if— · all unpaid renewal fees are paid; and all other prescribed additional fees (if any) are paid; and · · either— no notice of opposition is given; or · · the decision of the Commissioner is in favour of the applicant. Restoration of patent applications Clause 115 allows an applicant to make a request to the Commissioner for an order to restore a void or an abandoned patent application and to extend the period for complying with the requirements imposed on the applicant by or under the Bill. Clause 116 provides that a request for an order under clause 115 must be made within 12 months of the date on which the patent application became void or was abandoned. However, the Commissioner may extend the period within which a request may be made if Explanatory note DRAFT FOR CONSULTATION Patents 18 the Commissioner is satisfied that there was no undue delay in making the request. Clause 117 allows any person to give notice to the Commissioner of opposition to a restoration order. Clause 118 relates to the determination of a request to restore a patent application. Subpart 13—Miscellaneous provisions Substitution of applicants Clause 119 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 120 provides that if an applicant dies before a patent is granted on the patent application, his or her personal representative may proceed with the application. Clause 121 allows the Commissioner to give directions in relation to disputes between interested parties. Provisions for secrecy of certain inventions Clause 122 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. Clause 123 requires the Commissioner to give notice of the patent application and of the directions given under clause 122 to the Minister of Defence. Clause 124 requires the Minister of Defence, on receipt of a notice under clause 123, 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 125 requires the Commissioner to revoke the directions given under clause 122 on receipt of a notice from the Minister of Defence. 19 DRAFT FOR CONSULTATION Patents Explanatory note Clause 126 provides for the acceptance of a complete specification while directions given under clause 122 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 Defence may pay to the applicant reasonable compensation. Clause 127 provides that no renewal fees are payable for any period during which directions are in force. Clause 128 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 $100,000, or to both. Part 4 Infringement, other patent proceedings, and matters affecting patent ownership Subpart 1—Infringement proceedings What constitutes infringements Clauses 129 and 130 determine what constitute infringement as follows: · · a person infringes a patent if (other than under a licence) the person does anything that the patentee has the exclusive right to do under section 17 (that is, exploit or authorise the exploitation of the invention): 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 131 sets out that a new product is presumed in infringement proceedings to have been obtained by the patented process for obtaining that product. What does not constitute infringement Clauses 132 and 133 provide the following exceptions: · · it is not an infringement to use inventions 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 exploit an invention solely for uses reasonably related to the development and submission of Explanatory note DRAFT FOR CONSULTATION Patents 20 information required under New Zealand law or other law that regulates the exploitation of any product. Counterclaim for revocation of patent Clause 134 spells out that a defendant may counterclaim for revocation of a patent in infringement proceedings. Bringing infringement proceedings Clause 135 provides that infringement proceedings may be brought by the patentee or an exclusive licensee for any infringement that occurs after the date of the licence. Clause 136 provides that infringement proceedings may not be brought until the patent is granted. However, there can be infringements before the patent is granted under clause 77 (and so proceedings brought after the patent’s grant can also relate to those infringements). Clause 137 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 unless 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 exclusive licensee’s rights. Relief for infringement Clause 138 sets out that a 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 139 prevents a 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 presumption 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 person knew, or ought reasonably to have known, of the product. Clause 140 requires the Court to refuse damages for an infringement before an amendment to an accepted complete specification unless the specification, as accepted, was framed in good faith and with 21 DRAFT FOR CONSULTATION Patents Explanatory note reasonable skill and knowledge or the amendment was only to correct an obvious mistake. Clause 141 entitles the Court to refuse damages for an infringement that occurs after renewal fees are not paid. Clause 142 states expressly that clauses 139 to 141 do not affect the Court’s power to grant injunctions in these circumstances. Clause 143 enables a 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 specification was framed in good faith and with reasonable skill and knowledge. Clause 144 enables a successful party to infringement or revocation proceedings to obtain reasonable solicitor-client costs if the party relied on the validity of the claim of a specification and the Court has certified that the claim’s validity was contested in earlier proceedings. Clause 144A requires infringement proceedings to be tried before a Judge alone. Subpart 2—Declarations of non-infringement Clause 145 enables a person to apply for a declaration of noninfringement if the patentee or exclusive licensee has not given that acknowledgement despite the person applying for it, giving full relevant particulars, and undertaking to pay a reasonable sum for the patentee’s or exclusive licensee’s expenses. Clause 146 provides that those proceedings may be brought at any time after the date of the publication of the accepted complete specification. Clause 147 provides that costs are at the Court’s discretion. Clause 148 clarifies that the validity of a patent is not at issue, and is not affected by, a declaration of non-infringement. Subpart 3—Other provisions for proceedings relating to patents Notice and registration requirements for proceedings on interests in patents Clauses 149 and 150 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: 22 · · · · Clause 151 clarifies how these provisions relate to the Limitation Act 1950. Clause 152 gives the Attorney-General standing to appear in various patent proceedings if he or she considers that the public interest is involved. Clause 153 accordingly requires parties questioning the validity of a patent to give notice of that intention to the Solicitor-General. Subpart 4—Patent dealings, patent licenses, and transmission or interests in patents Clause 154 requires a person acquiring a patent, a share in a patent, or an interest in a patent (whether by assignment, transmission, mortgage, licence, or by any other means) to apply for registration of the title or interest. Clause 155 requires the Commissioner, on proof of the title or interest satisfactory to the Commissioner, to register that title or interest. Clauses 156 and 157 enable the Commissioner to dispense with probate and letters of administration in registering a person as a patentee in place of a deceased patentee, allowing a person to take Explanatory note DRAFT FOR CONSULTATION Patents 1 month’s notice must be given to the defendant before bringing proceedings relating to an unregistered interest: within 1 month of receiving that notice the defendant can require 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: in any other case also, a person must not commence proceedings on a registered interest until at least 1 month has expired after registration. Standing for Attorney-General Registration of assignments, licenses, and other interests in patents Dispensing with probate and letters of administration for deceased patentees and applicants 23 DRAFT FOR CONSULTATION Patents Explanatory note over the application of a deceased applicant, or allowing a person to apply for a patent in place of a deceased inventor. Termination of contracts Clause 158 provides for the termination of certain contracts that relate to a patent after the patent ceases to be in force. Subpart 5—Compulsory licences Clause 159 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 160 allows the Court to order the grant of a licence in accordance 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 161 provides that if a licence is granted to a person, that person must pay certain remuneration to the patentee. Clause 162 prevents a licence from being granted in certain circumstances (for example, in the case of a patent relating to an integrated circuit). Clause 163 provides that the powers of the Court on an application under clause 159 must be exercised with a view to ensuring that the inventor or other person beneficially entitled to a patent receives reasonable remuneration. Clause 164 provides that an order for the grant of a licence has effect as deed. Subpart 6—Crown use of patented inventions Clause 165 allows any government department to exploit any patented invention for the services of the Crown. Clause 166 allows regulations to be made that may declare a particular use of an invention to be a Crown use. Clause 167 protects the buyers of products sold in the exercise of powers conferred by clause 165. Clause 168 concerns the rights of third parties in respect of a Crown use of an invention. Explanatory note DRAFT FOR CONSULTATION Patents 24 Clause 169 provides for the referral of disputes concerning a Crown use of an invention to the Court. Clause 170 allows the Court to refer matters relating to a Crown use of an invention to an official referee or arbitrator. Clause 171 contains special provisions as to a Crown use of an invention during an emergency. Clause 172 provides that the right to use a patented invention under clause 165 is not exclusive and, generally, must not be assigned. Clause 173 provides that if any use of a patented invention is made under clause 165, the government department must, as soon as practicable 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 174 provides that the Crown must, if an act is done under clause 165, pay certain remuneration to the patentee. Subpart 7—Mention of inventor in patent, specification, and patents register Clause 175 allows a person to make a request or claim to be mentioned as inventor in a patent. Clause 176 concerns how and when requests and claims to be mentioned as inventor may be made. Clause 177 requires the Commissioner to give notice of claims made under clause 176. Clause 178 provides that a person who alleges that another person should not have been mentioned as inventor under clauses 175 to 177 may apply to the Commissioner for a certificate to that effect. Part 5 Patent attorneys Subpart 1—Patent attorney title and privileges Clause 179 states who is a patent attorney. Clause 180 provides for the protection of the title ‘‘patent attorney’’. Clause 181 makes it an offence for persons who are not patent attorneys to act as a patent attorney and defines what acting as a patent attorney is for that purpose. 25 DRAFT FOR CONSULTATION Patents Explanatory note Clause 182 provides for the circumstances in which a director or a person concerned in the management of a company is guilty if a company is convicted of an offence against clause 180 or 181. Clauses 183 and 184 create exceptions to clauses 180 and 181 for personal representatives and companies if a patent attorney dies. Clause 185 creates an exception to clauses 180 and 181 in relation to companies that carried on business as a patent attorney before 1 January 1955. Clause 186 creates an exception to clauses 180 and 181 for employees who do things on behalf of their employer in their capacity as employees. Clauses 187 and 188 create an exception to clauses 180 and 181 for barristers and solicitors. However, it is an offence for a barrister and solicitor to prepare specifications or amendments to specifications unless under that person is acting under the instruction of a patent attorney or under the direction of a court. Clause 189 creates an exception for patent attorneys from sections 64 to 66 of the Law Practitioners Act 1982 in circumstances where patent attorneys do work related to patents, trademarks, designs, and related matters. However, the section does not permit a patent attorney who is not also a barrister and solicitor to conduct court proceedings. Subpart 2—Registration and practising certificates Clause 190 specifies the qualifications that a person must have to register as a patent attorney, both generally and in relation to persons who are registered as patent attorneys in overseas jurisdictions. It also contains requirements relating to whether a candidate is a fit and proper person to be registered. Clause 191 provides that a person is disqualified from registration if that person has been convicted of a crime involving dishonesty in the last 5 years. Clause 192 provides that the Commissioner must issue practising certificates to persons registered as patent attorneys who apply in a prescribed manner. It also deals with removal of registration if a person ceases to hold a practising certificate. Clause 193 provides that the Commissioner may suspend a person’s registration if that person does not pay prescribed practising fees or penalties. Explanatory note DRAFT FOR CONSULTATION Patents 26 Clause 194 provides for the circumstances in which the Commissioner may remove a person’s registration. Clauses 195 to 198 provide for the circumstances in which the Commissioner may suspend a person from the register of patent attorneys, the duties of the Commissioner when exercising the power to suspend, and the effect of suspension. Subpart 3—Standards of conduct and discipline Code of conduct Clauses 199 to 203 contain provisions relating to a code of conduct for patent attorneys, the purposes of the code, and the mechanisms by which it is to be put in place and maintained. It is expected the applicable code of conduct will be developed by the New Zealand Institute of Patent Attorneys Inc (the Institute) and approved by the Patent Attorneys’ Standards Board of New Zealand (the Board) established under clause 232 within 3 months of the relevant section coming into force. There is, however, provision for a code of conduct to be issued by the Board if necessary. The code must be available on the Internet and in hard copy, and the Board must encourage patent attorneys to inform their clients about its existence and how to access it. Disciplining of patent attorneys Clause 204 provides for the grounds on which a person may complain about a patent attorney to the Commissioner. The grounds include matters relating to whether a person is entitled to be registered as a patent attorney and whether a person has breached the code of conduct for patent attorneys. Complaints may be made about persons who are no longer registered as patent attorneys if the person was a patent attorney at the time of the relevant conduct. Clause 205 provides that the Commissioner must refer the complaint to the Tribunal and send particulars to the person about whom the complaint has been made. Clauses 206 and 207 provide that the Tribunal must assess a complaint after receiving it to see if it will dismiss it, and set out the grounds on which it can do so (which include a finding that, in the Tribunal’s opinion, the complaint is vexatious, frivolous, or trivial). Clause 208 provides that, unless the Tribunal dismisses a complaint that it receives, it must conduct an inquiry. 27 DRAFT FOR CONSULTATION Patents Explanatory note Clause 209 sets out the grounds for discipline of patent atttorneys. These include findings that a person has been convicted of certain offences, breached the code of conduct, or made use of false and misleading material for the purposes of registration. Clause 210 sets out the disciplinary penalties that the Tribunal may impose. These include the power to remove or suspend a person’s registration, the power to impose a censure or a fine, and the power to make remedial orders. Clause 211 provides that the Tribunal may make orders for payment of costs. Clause 212 provides that the Tribunal must notify the Commissioner of the orders it makes and decisions on appeal of which it is notified, for the purpose of maintaining the register of patent attorneys. It also provides for the circumstances in which the Tribunal may publicly notify an order it has made. Clause 213 relates to the effect of an order to pay money on the right to damages. Clause 214 provides that an order of the Tribunal has effect whether or not a person remains registered as a patent attorney. Clause 215 provides that the Commissioner may remove or suspend a person’s registration if a person does not pay fines, money, or costs ordered by the Tribunal. Appeals Clauses 216 to 223 provide for a right of appeal to the District Court against decisions of the Tribunal and also set out the procedure on appeal and the powers of the District Court on appeal. Clause 224 provides for a right of appeal to the High Court against any determination of the law arising in the appeal to the District Court. Subpart 4—Register of patent attorneys Clauses 225 to 231 require the Commissioner to keep a register of patent attorneys. It will be possible to search the register to find out information 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 Explanatory note DRAFT FOR CONSULTATION Patents 28 Commissioner may make changes to the register in specified circumstances. Subpart 5—Establishment and operation of bodies connected with patent attorneys Patent Attorneys’ Standards Board Clauses 232 to 237 establish a Patent Attorneys’ Standards Board of New Zealand (the Board). It has functions relating to— · the qualifications required for registration as a patent attorney; and · the code of conduct for patent attorneys. In addition, it recommends persons to be appointed to the New Zealand Patent Attorneys’ Disciplinary Tribunal. The Board comprises the Commissioner, an Assistant Commissioner, and 2 or more members that are nominated by the Institute and appointed by the Minister. The provisions of Schedule 1 apply to the Board. New Zealand Patent Attorneys’ Disciplinary Tribunal Clauses 238 to 245 establish the New Zealand Patent Attorneys’ Disciplinary Tribunal (the Tribunal). It consists of one person who is appointed by the Minister on the recommendation of the Board. The person must be a barrister or solicitor and must not be registered as a patent attorney. The Tribunal’s role is to receive, investigate, hear complaints about, and inquire into the conduct, and discipline, of patent attorneys. The provisions of Schedule 2 apply to the Tribunal and the person appointed to be the Tribunal. Miscellaneous Clause 246 provides that the Board, the Commissioner, and the Tribunal, when exercising their functions under Part 5, must give written notice and reasons for their decisions, observe the rules of natural justice, and comply with the regulations. 29 DRAFT FOR CONSULTATION Patents Explanatory note Part 6 Administrative and miscellaneous provisions Subpart 1—Patents register and other information on patents and patent applications Patents register Clause 247 requires the Commissioner to keep a patents register. Clause 248 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 their addresses for service, and find out other matters affecting the validity and ownership of the patent and patent licenses. The purpose is also to facilitate the Commissioner’s functions under the Bill. Clause 249 enables the patents register to be an electronic register or kept in any other manner the Commissioner thinks fit. Clause 250 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 251 entitles a person to search the register in accordance with this Act or the regulations. clause 252 requires the Commissioner to give a person prescribed information if requested. Clause 253 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 254 provides that the Commissioner may change the patents register in accordance with the Bill or the regulations: clause 255 provides for the Commissioner to correct mistakes by the Commissioner (or employees and others) in the patents register, in a patent, or in other documents issued under the Bill: clause 256 provides for the Commissioner to correct other person’s mistakes in the patents register, in a patent, in a patent application (but not in a complete specification), in a Explanatory note DRAFT FOR CONSULTATION Patents 30 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 257 enables the Court to rectify the patent register. Evidence Clause 258 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 259 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 260 requires the Commissioner to periodically publish a journal on patents, patent applications, and other matters. It may be published electronically. Clause 261 enables the Commissioner to publish indexes, specifications, and other works relating to inventions, patents, and patent applications. The Commissioner may keep classifications, by subject 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 262 requires evidence to be given by affidavit or statutory declaration unless the Commissioner directs otherwise. Clause 263 enables the Commissioner to receive evidence on oath. Clause 264 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 summons, in clauses 291 to 293. 31 DRAFT FOR CONSULTATION Patents Explanatory note Procedural requirements for Commissioner Clause 265 requires the Commissioner to give persons a reasonable opportunity to be heard before exercising discretionary powers adversely to them. Power to award costs Clause 266 enables the Commissioner to award costs in proceedings before him or her. Clause 267 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. Appeals of Commissioner’s decisions Clauses 268 to 273 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 274 provides that the Commissioner’s costs are at the discretion 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 275 provides for the appointment of the Commissioner and Assistant Commissioners by the chief executive of the Ministry as employees of that Ministry. Clause 276 sets out the functions of the Commissioner. Clause 277 provides that an Assistant Commissioner has all the functions, duties, and powers of the Commissioner (other than the power to delegate). Clause 278 enables the Commissioner to delegate the Commissioner’s functions, duties, and powers. Clause 279 requires the Commissioner to make an annual report to the Minister. The Minister must present that report to the House of Representatives. Explanatory note DRAFT FOR CONSULTATION Patents 32 Intellectual Property Office of New Zealand Clause 280 enables the Minister to appoint and name a place as an office for public communications on matters arising under this Bill, the Trade Markets Act 2002, the Designs Act 1953, and other intellectual property statutes. On commencement, the place previously used as the Patents Office is appointed and the office is named the Intellectual 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. Clauses 281 and 282 enables the Commissioner to fix IPONZ’s opening hours and declare it closed. Generally prior publication is required of any closure, but there are exceptions under clause 282. M¯aori advisory committee Clause 283 requires the Commissioner to appoint a M¯aori 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 m¯atauranga M¯aori (M¯aori traditional knowledge) and tikanga M¯aori (M¯aori protocol and culture). Clause 284 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 M¯aori traditional knowledge or from indigenous plants and animals and, if so, whether the commercial exploitation of that invention is likely to be contrary to M¯aori values. That advice must be considered by the Commissioner but is not binding (clause 285). Clause 286 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 287 to 289 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 specification or of a convention application: Explanatory note · · · 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 extension due to the Commissioner’s own delay) if insufficient time was allowed for delivery, there was a failure to act with 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. Clause 290 provides for service of notices, including by fax or email. Clause 291 sets out the requirements for the contents and service of a summons given under the Bill. Witnesses are entitled under clause 292 to be paid witnesses’ fees, allowances, and expenses. Clause 293 sets out the offence of failing to comply with a summons. The maximum penalty is a $2,000 fine. Clauses 294 and 295 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 Commissioner: fees for practising certificates must be applied to the costs of the Board and Tribunal. 33 DRAFT FOR CONSULTATION Patents Serving notices Requirements for summons Fees and other money paid under Act 34 Clause 295A 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 295B 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. Clause 295C provides that this Bill does not apply to Tokelau. This subpart contains the regulation-making powers for the Bill. This subpart contains repeals, consequential amendments, a validation of all fees prescribed and money collected under the Patents Act 1953 in relation to registration of patent attorneys or prescribed examinations, and transitional provisions. The key points under the transitional provisions are as follows: · · · · · Explanatory note DRAFT FOR CONSULTATION Patents Miscellaneous Subpart 5—Regulations Subpart 6—Repeals and transitional provisions 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 post-dated 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 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 Cooperation 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: 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 commencement of Part 3 of the Bill continue to be investigated and considered under the Patents Act 1953: patent attorneys registered under the Patents Act 1953 are treated as patent attorneys with current practising certificates under the Bill: applications for registration as a patent attorney made under the Patents Act 1953 continue under that Act: existing qualifications of patent applicants are treated as equivalent to passes in the same examinations conducted by the Board: existing permissions for personal representatives of deceased patent attorneys and barristers and solicitors are continued until the relevant matter is completed: the existing Commissioner and Assistant Commissioners are appointed as the new Commissioner and Assistant Commissioners. 35 DRAFT FOR CONSULTATION Patents 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Part 2 Patentable inventions and patent rights Contents Interpretation Meaning of novel Meaning of inventive step Meaning of prior art base Disclosure to be disregarded in certain circumstances Meaning of useful Patent may be granted for patentable inventions only Patentable inventions Inventions contrary to public policy 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 patents 00—1 20 21 Power of patentee to deal with patent 22 23 24 25 26 27 Part 3 Process for obtaining grant of patent and other matters 28 29 30 31 32 33 34 DRAFT FOR CONSULTATION Patents Bill Government Bill Title Commencement Part 1 Preliminary Purposes and overview Purposes Overview Interpretation Act binds the Crown Act binds the Crown Subpart 1—Patentable inventions General rules concerning what is patentable Exclusions from patentability Extension of period for paying renewal fees Subpart 3—Patent ownership Who may be granted patents Who may be granted patent Power of patentee to deal with patent Co-owners of patents Co-ownership of patents Rights of buyers from co-owners of patent Power of Commissioner to give directions to co-owners Commissioner may direct person to carry out direction in name and on behalf of defaulting person Miscellaneous provisions concerning directions Subpart 1—Patent applications Right to apply for patent Application requirements Commissioner may post-date application or specification Divisional applications Subpart 2—Specifications Complete and provisional specifications Filing of complete specification after provisional specification has been filed Contents of provisional specification Hon Margaret Wilson 1 35 36 37 38 39 40 41 42 43 44 45 46 47 48 49 50 51 52 53 54 55 56 57 58 59 60 2 DRAFT FOR CONSULTATION Patents 61 62 63 Contents of complete specification Supply of drawings Specifications for micro-organisms Deposit requirements for microorganisms Deposit requirements treated as satisfied in certain circumstances Micro-organism ceasing to be reasonably available 64 65 Subpart 7—Acceptance and publication 66 67 68 69 70 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 Amendments to documents forming part of complete specification Treaty application void Requirements for examination of Treaty application Subpart 4—Convention applications 71 72 73 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 74 75 76 77 78 Subpart 8—Amendment of specifications 79 80 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 81 82 83 Examination Commissioner may refuse to proceed with application or require application or specification to be amended 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 How duty is performed Time for putting application in order for acceptance Time for putting application in order for acceptance Court may extend period 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 31 Documents open to public inspection Publication of Treaty applications Certain documents not to be published Restriction on publication or discovery of examination reports Effect of publication of complete specification Defence for period between complete specification becoming open to public inspection and acceptance General rules concerning amendments of specifications 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 84 85 86 87 88 89 90 91 92 93 94 95 96 97 98 99 100 101 102 103 104 105 DRAFT FOR CONSULTATION Patents 106 107 Provisions concerning amendments with leave of Commissioner do not apply in certain circumstances Amendment of specification with leave of Court Subpart 12—Restoration of lapsed patents and restoration of patent applications Subpart 9—Assertions by third parties before acceptance and re-examination after acceptance Assertions by third parties before acceptance 108 109 110 111 Assertions by third parties on novelty and inventive step Commissioner must take notice into account as part of examination process Re-examination after acceptance 112 113 114 115 116 Re-examination of complete specifi- cation before patent is granted Re-examination of complete specifi- cation after patent is granted Report on re-examination Copies of report to be given to Court Refusal to grant patent: re-examination before grant Revocation of patent: re-examination after grant Subpart 10—Grant of patent General rules 117 118 Subpart 13—Miscellaneous provisions 119 120 121 When patent must be granted 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 Provisions for secrecy of certain inventions Patents of addition 122 123 124 125 126 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 Inventive step not required in connection with patents of addition 127 Subpart 11—Revocation and surrender of patents Revocation of patent Grounds for revoking patent Court may also revoke patent if patentee, without reasonable cause, refuses request of government department to exploit invention Surrender of patent 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 When request for restoration of patent may be made 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 When request for restoration of application may be made Notice of opposition Commissioner to determine matter Substitution of applicants Persons claiming under assignment or agreement or by operation of law Death of applicant Disputes between interested parties Directions in relation to inventions concerning defence Commissioner must give notice to Minister of Defence 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 Acceptance of complete specification while directions in force Renewal fees not payable while directions in force 3 128 128A Liability of officer of body corporate that commits offence Part 4 Infringement, other patent proceedings, and matters affecting patent ownership Subpart 1—Infringement proceedings 129 130 131 What does not constitute infringement 132 133 Counterclaim for revocation of patent 134 135 136 137 138 139 140 141 142 143 144 Types of relief available for infringement Court must not award damages or account of profits if innocent infringement Court must refuse damages for infringement before amendment to accepted specification unless requirements met Court may refuse damages if renewal fees not paid Limits on damages and accounts of profits do not affect power to grant injunction Court may grant relief for partially valid patent Court may grant costs for subsequent proceedings if validity of specifications contested 144A Infringement proceedings must be tried before Judge alone 4 DRAFT FOR CONSULTATION Patents Subpart 2—Declarations of noninfringement Failure to comply with directions an offence 145 146 147 148 What constitutes infringement Court may make declaration of noninfringement When proceedings for declaration of non-infringement may be brought Costs in declaration of noninfringement Validity of patent not at issue in proceedings for, and not affected by, declaration of non-infringement Subpart 3—Other provisions for proceedings relating to patents Notice and registration requirements for proceedings on interests in patents 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 149 150 No infringement by use in or from foreign vessels, aircraft, or vehicles No infringement for use to produce information required by law on product exploitation 151 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 on registered interests Application of Limitation Act 1950 Standing for Attorney-General 152 Defendant may counterclaim for revocation of patent 153 Bringing infringement proceedings Attorney-General may appear in patent proceedings Parties must give notice to Solicitor- General if questioning patent validity Subpart 4—Patent dealings, patent licences, and transmission of interests in patents Who may bring infringement proceedings When and how proceedings may be brought Proceedings brought by exclusive licensee Registration of assignments, licences, and other interests in patents Relief for infringement 154 155 Application for registration of assignments, licences, and other interests in patents Registration of assignments, licences, and other interests in patents Dispensing with probate and letters of administration for deceased patentees and applicants 156 157 Commissioner may dispense with probate and letters of administration Application of power to dispense with probate and letters of administration Termination of contracts 158 Termination of certain contracts after patent ceases to be in force Subpart 5—Compulsory licences Compulsory licences Court may order grant of licence 159 160 161 162 163 164 165 166 167 168 169 170 171 172 173 174 Subpart 7—Mention of inventor in patent, specification, and patents register 175 176 177 178 179 180 181 182 183 184 185 186 187 188 189 DRAFT FOR CONSULTATION Patents 190 191 192 193 Remuneration payable to patentee Licence must not be granted in certain circumstances Exercise of powers on applications under section 159 Order for grant of licence has effect as deed 194 195 196 197 198 199 200 201 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 official referee or arbitrator Special provisions as to Crown use during emergency Nature and scope of rights under section 165 Duty to inform patentee Patentee entitled to remuneration 202 Patent attorneys subject to code of conduct Applicable code of conduct Board may approve code of conduct developed by Institute Board must issue its own code in certain circumstances 202A Availability of code of conduct 203 204 205 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 206 207 208 209 Part 5 Patent attorneys 210 211 212 213 214 215 216 217 218 219 220 Subpart 1—Patent attorney title and privileges Title of patent attorney Protection of title patent attorney Restrictions on acting as patent attorney Liability of officer of company that commits offence Exception for carrying on of business of patent attorney by personal representative Exception for companies carrying on business in certain circumstances Exception for pre-1955 companies Exception for employees Exception for barristers or solicitors Restrictions on barristers or solicitors Powers of patent attorneys Subpart 2—Registration and practising certificates Qualifications for registration as patent attorney Disqualification from registration Practising certificates Commissioner may suspend registration for unpaid fees Removal from register of patent attorneys Suspensions from register of patent attorneys Voluntary suspension Duties of Commissioner on removal or suspension Effect of suspension Subpart 3—Standards of conduct and discipline Code of conduct Status of code of conduct Disciplining of patent attorneys Complaints about patent attorneys Commissioner must refer complaint to Tribunal Assessment of complaint Dismissal of complaint Tribunal must conduct inquiry Grounds for discipline of patent attorneys Disciplinary penalties Orders for payment of costs Tribunal must notify Commissioner of orders Effect of order to pay money on right to damages Orders enforceable against former registered patent attorneys Non-payment of fines, money or costs Appeals Right of appeal Notice of right of appeal Decisions to have effect pending determination of appeal Procedure on appeal Court’s decision final 5 221 222 223 224 Subpart 4—Register of patent attorneys 225 226 227 228 229 230 231 Subpart 5—Establishment and operation of bodies connected with patent attorneys 232 233 234 236 237 238 239 240 241 242 243 244 245 246 6 DRAFT FOR CONSULTATION Patents 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 1—Patents register and other information on patents and patent applications 247 248 249 250 Searches of patents register and obtaining patent information 251 252 253 Changes to patents register and other official documents 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 matters contained in register of patent attorneys Changes to register of patent attorneys 254 255 256 Patent Attorneys’ Standards Board 257 258 259 Patent Attorneys’ Standards Board of New Zealand Functions of Board Capacity and powers Membership of Board Further provisions relating to Board and its members New Zealand Patent Attorneys’ Disciplinary Tribunal 260 New Zealand Patent Attorneys’ Dis- 261 ciplinary Tribunal Membership of Tribunal Functions of Tribunal Procedure of Tribunal Tribunal’s powers of investigation Evidence 262 Issuing of summons by Tribunal Further provisions relating to 263 Tribunal 264 Miscellaneous Specified procedure for making decisions Part 6 Administrative and miscellaneous provisions Patents register Patents register Purpose of patents register Form of patents register Contents of patents register Search of patents register Requests for patent information Loss or destruction of patent 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 Procedural requirements for Commissioner 265 266 267 Appeals of Commissioner’s decisions 268 273 274 Subpart 3—Establishment and operation of administrative bodies for patents Commissioner and Assistant Commissioners 275 276 277 278 279 Intellectual Property Office of New Zealand 280 281 282 283 284 285 286 Subpart 4—Other miscellaneous provisions 287 288 289 DRAFT FOR CONSULTATION Patents 290 Commissioner must give persons opportunity to be heard Power to award costs 291 292 293 Commissioner may award costs Commissioner or Court may require security for costs Fees and other money paid under Act 294 295 Appeals of decisions of Commissioner Appeals of decisions of Court on appeal Costs of Commissioner Costs of Commissioner in proceedings 295A Protection of Royal arms, etc 295B Saving for Royal prerogative and certain Crown rights 295C Act does not apply to Tokelau Subpart 5—Regulations 296 297 298 Commissioner and Assistant Commissioners Functions of Commissioner Powers of Assistant Commissioners of Patents Power of Commissioner to delegate Annual report of Commissioner 303 304 305 306 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 Transitional provisions for patents and patent applications M¯aori advisory committee 307 308 309 310 Appointment and membership of M¯aori advisory committee Functions of M¯aori advisory committee Effect of advice from M¯aori advisory committee M¯aori advisory committee may regulate own procedure 311 Power to extend time limits 312 313 Commissioner may extend time limits for delays by Commissioner Commissioner may extend time limits for certain filing requirements or for delivery failures Requirement for applying and granting extensions of time limits under section 288 Serving notices Services of notices Requirements for summons Requirements for summons Witnesses’ fees, allowances, and expenses Offence of failing to comply with summons Fees and penalties payable under Act or regulations Payment and application of fees and other money paid under this Act Miscellaneous Regulations Orders in Council as to convention countries Regulations concerning patent attorneys Subpart 6—Repeals and transitional provisions Repeal of Patents Act 1953 Consequential amendments to other enactments Preservation of various regulations and orders Validation of fees Transitional provision for patents granted under Patents Act 1953 General transitional provision for patent applications made under Patents Act 1953 Exception if complete specification provided on or after commencement Exception if patent application postdated Specific transitional provision for divisional applications Specific transitional provision for Treaty applications Transitional provisions for other applications, notices, and requests Transitional provision for other applications, notices, or requests 7 DRAFT FOR CONSULTATION Patents cl 1 318 Transitional provision for matters in force on commencement 319 314 Transitional provision for applicants for registration Transitional provision for miscellaneous patent attorney matters Transitional provision for orders, directions, and other matters in effect on commencement Transitional provisions for administrative bodies Transitional provision for patents register and register of patent attorneys 320 Transitional provision for Commissioner and Assistant Commissioners 315 Transitional provision for patents register and register of patent attorneys Transitional provisions for existing offences and infringements Schedule 1 Further provisions applying to Board and its members 316 Transitional provision for existing offences and infringements Schedule 2 Further provisions applying to Tribunal Transitional provisions for patent attorneys Schedule 3 Consequential amendments 317 Transitional provision for patent attorneys registered under Patents Act 1953 The Parliament of New Zealand enacts as follows: 1 Title This Act is the Patents Act 2004. 2 Commencement (1) Section 1, this section, sections 283 to 286, and subpart 5 of Part 6 come into force on the day after the date on which this Act receives the Royal assent. (2) The rest of this Act comes into force on a date to be appointed by the Governor-General by Order in Council; and 1 or more orders may be made bringing different provisions into force on different dates. Purposes (i) Part 1 Preliminary Purposes and overview The purposes of this Act are to— (a) ensure that a patent is granted for an invention only in appropriate circumstances by— establishing appropriate criteria for the granting of a patent; and 3 8 Part 1 cl 4 DRAFT FOR CONSULTATION Patents (ii) providing for procedures that allow the validity of a patent to be tested; and (b) provide greater certainty for patent owners and the users of patented inventions that patents will be valid after they are granted; and (c) address M¯aori concerns relating to the granting of patents for inventions derived from indigenous plants and (d) promote quality, expertise, and integrity in the profesanimals or from M¯aori traditional knowledge; and sion of patent attorneys; and (e) ensure that New Zealand’s patent regime takes account of international developments. Overview 4 (1) In this Act,— (a) this Part specifies the purposes of this Act and defines terms and expressions used in this Act; and (b) Part 2 contains provisions concerning patentable inventions and patent rights, including provisions relating 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 (c) Part 3 describes the process for obtaining a patent and various other matters, including provisions relating to patent applications, specifications, examinations, acceptance, publication, and the granting of patents; and (d) Part 4 contains matters affecting patent ownership, including provisions relating to infringement proceedings, declarations of non-infringement, other proceedings relating to patents, patent dealings, and compulsory licences; and (e) Part 5 contains provisions relating to patent attorneys, (f) including a registration system for patent attorneys, a requirement for a code of conduct for the profession of patent attorneys, a complaints and disciplinary regime, and the establishment of the Patent Attorneys’ Standards Board and the New Zealand Patent Attorneys’ Disciplinary Tribunal; and Part 6 contains provisions relating to the patents register, the Commissioner, the M¯aori advisory committee, and other administrative and miscellaneous matters. 9 DRAFT FOR CONSULTATION Patents Part 1 cl 4 (2) This section is intended only as a guide to the general scheme and effect of this Act. Interpretation 5 Interpretation (1) In this Act, unless the context otherwise requires,— applicant— (a) means a person who has applied for a patent for an invention; and (b) includes a person in whose favour a direction has been given under section 119 or section 121 and the personal representative of a deceased applicant 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 basic application means an application for protection in respect of an invention that is made in a convention country (whether before or after it became a convention country) Board means the Patent Attorneys’ Standards Board of New Zealand established under section 232 Budapest Treaty— (a) means the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure signed at Budapest on 28 April 1977 together with the regulations annexed to that treaty; and (b) includes any amendments, modifications, and revisions from time to time made to that treaty or those regulations, being amendments, modifications, and revisions 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 under section 200 Commissioner— (a) means the Commissioner of Patents appointed under section 275; and (b) includes an Assistant Commissioner of Patents appointed under section 275 10 Part 1 cl 5 DRAFT FOR CONSULTATION Patents convention applicant, in relation to a basic application, means a person who— (a) has made the basic application; or (b) is the assignee of the person who made the basic application; or (c) would, on the grant of a patent on the basic application, be entitled to have the patent assigned to the person; or (d) is the personal representative of a person mentioned in paragraph (a), (b), or (c); or (e) has the consent of a person mentioned in paragraph (a), (b), (c), or (d) to make a convention application based on that basic application convention application means a patent application made under subpart 4 of Part 3 convention country, in a provision of this Act, means an entity for the time being declared by an order made under section 297 to be a convention country for the purposes of that provision Court means the High Court date of the publication of the accepted complete specification has the meaning set out in section 69 depositary institution means a body or institution that receives, accepts, and stores micro-organisms and furnishes samples of micro-organisms exclusive licence means a licence from a patentee that gives the licensee (or the licensee and persons authorised by the licensee) 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 filing date, in relation to a document filed under this Act, means— (a) the date on which the document is filed; or (b) the date on which the document is treated as having been filed (if it is treated under this Act or the regulations as having been filed on a different date) government department means any department or instrument of the Executive Government of New Zealand, or any branch or division of any of those departments or instruments 11 DRAFT FOR CONSULTATION Patents Part 1 cl 5 Institute means the body corporate existing under the name of the New Zealand Institute of Patent Attorneys Inc immediately before the day on which this section comes into force integrated circuit means a circuit, in its final or an intermediate form, if— (a) the elements of the circuit and some or all of the interconnections are integrally formed in or on a piece of material; and (b) at least one of the elements of the circuit is an active element; and (c) the circuit is intended to perform an electronic function 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 the Patent Cooperation Treaty for the protection of an invention International Bureau means the International Bureau of the World Intellectual Property Organization international depositary authority has the same meaning as in the Budapest Treaty 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 invention includes an alleged invention IPONZ means the Intellectual Property Office of New Zealand journal means the journal published under section 260 licence means a licence to do anything that the patentee otherwise has the exclusive right to do under section 17 Minister means the Minister of the Crown who, under the authority of any warrant or with the authority of the Prime Minister, is for the time being responsible for the administration of this Act Ministry means the Ministry that has, with the authority of the Prime Minister, for the time being assumed responsibility for the administration of this Act New Zealand means— 12 Part 1 cl 5 DRAFT FOR CONSULTATION Patents (a) New Zealand; and (b) all waters within the outer limits of the territorial sea of New Zealand (as defined by section 3 of the Territorial Sea, Contiguous Zone, and Exclusive Economic Zone Act 1977); and (c) the airspace above New Zealand and those waters nominated person, in relation to a patent application, means the person identified as the person to whom the patent is to be granted patent means letters patent for an invention patent application means an application for a patent under this Act patent attorney means a registered patent attorney who holds a current practising certificate Patent Cooperation Treaty— (a) means the Patent Cooperation Treaty signed at Washington on 19 June 1970 as amended on 28 September 1979 and modified on 3 February 1984 and 3 October 2001; 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 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 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 the grantee or owner of a patent at the relevant time patents register means the patents register kept under section 247 person appointed to be the Tribunal means a person appointed under section 239 or clause 2 of Schedule 2 personal representative, in relation to a deceased person,— 13 DRAFT FOR CONSULTATION Patents Part 1 cl 5 (a) means a person to whom probate of the will of the deceased 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 (b) does not include a person referred to in paragraph (a) if, under the terms of the grant, the person is not entitled to do an act in relation to which the expression is used practising certificate means a practising certificate that is issued under section 192 prescribed depositary institution means— (a) an international depositary authority, whether in or outside New Zealand; or (b) any other depositary institution in New Zealand that is prescribed for the purposes of this paragraph 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 product includes any substance or material, and any plant, machinery, or apparatus (whether or not attached to land) publicly notify, in relation to the Commissioner, has the meaning set out in subsection (3) publish, in relation to the Commissioner, has the meaning set out in subsection (4) receiving Office has the same meaning as in Article 2(XV) of the Patent Cooperation Treaty registered, in relation to a patent attorney, means registered as a patent attorney under section 190 regulations means regulations in force under this Act relevant proceeding, in relation to a patent, means a Court proceeding— (a) for infringement of the patent; or (b) for the revocation of the patent; or (c) in which the validity of the patent, or of a claim, is in dispute rules relating to micro-organisms means— (a) the provisions of the Budapest Treaty that are applicable; and 14 Part 1 cl 5 DRAFT FOR CONSULTATION Patents (b) the provisions of the regulations that relate to microorganisms Statute of Monopolies means the Act of the 21st year of the reign of King James the First, chapter 3, being an Act concerning monopolies and dispensations with penal laws and the forfeiture thereof Treaty application means an international application— (a) that contains a request specifying New Zealand as a designated State under Article 4(1)(ii) of the Patent Cooperation Treaty; and (b) that has been given an international filing date Treaty regulations— (a) means the regulations made under the Patent Cooperation Treaty; and (b) includes any amendments from time to time made to those regulations Tribunal means the New Zealand Patent Attorneys’ Disciplinary Tribunal established under section 238. (2) 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 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 (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; and (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; and (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. (3) 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 purposes; and 15 Part 1 cl 5 (4) Any requirement in this Act for the Commissioner to publish 6 7 8 (1) For the purpose of deciding whether or not an invention is (2) For the purpose of deciding whether or not an invention is 16 DRAFT FOR CONSULTATION Patents (b) if the Commissioner thinks fit, also publishing it by any other means that the Commissioner considers appropriate to make it known to persons that are likely to have an interest in the matter. anything in the journal requires the Commissioner to publish that matter in the journal in the manner required by the regulations (if any). Compare: 1953 No 64 s 2 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 inventive 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) Meaning of prior art base novel and for the purpose of deciding whether or not an invention involves an inventive step, the prior art base, in relation to an invention so far as claimed in a claim, means all matter (whether a product, a process, information about a product or process, or anything else) which 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 description, by use, or in any other way. 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— (a) the information is, or were to be, the subject of a claim of the specification, and the claim has, or would have, a priority date earlier than that of the claim under consideration; and Part 1 cl 9 DRAFT FOR CONSULTATION Patents (b) the specification became open to public inspection after the priority date of the claim under consideration; and (c) the information was contained in the specification on its filing date and when it became open to public inspection. (3) However, subsection (2) does not apply if— (a) either or both of the following apply: (i) all of the applicants under the patent application are the same as the applicants under the other patent application at the filing date of the patent application under consideration: (ii) all of the inventors identified in the patent application are the same as the inventors identified in the other patent application at the filing date of the patent application under consideration; and (b) neither of the complete specifications filed for the patent applications contains a claim for matter claimed in the other. Disclosure to be disregarded in certain circumstances 9 (1) For the purposes of section 8, the disclosure of matter constituting an invention, so far as claimed in a claim, must be disregarded if 1 or more of the following applies: (a) that disclosure occurred during the 1-year period immediately preceding the filing date of the patent application and the disclosure was due to, or made in consequence of, the matter having been obtained unlawfully or in breach of confidence by a person from— (i) (ii) any other person to whom the matter was made the inventor; or available in confidence by the inventor; or (iii) any other person who obtained it from the inventor because the person or the inventor believed that the person was entitled to obtain it; or (iv) any other person to whom the matter was made available in confidence by any person referred to in subparagraphs (i) to (iii) or in this subparagraph; or (v) 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 17 DRAFT FOR CONSULTATION Patents Part 1 cl 9 obtained it believed that the person was entitled to obtain it: (b) that disclosure occurred during the 1-year period immediately preceding the filing date of the patent application and the disclosure was made in breach of confi- dence by a person who obtained the matter in confidence from the inventor or from any other person to whom it was made available, or who obtained it, from the inventor: (c) that disclosure was due to the communication of the invention to a government department or to any person authorised by a government department to investigate the invention or its merits, or of anything done, in consequence of that communication, for the purpose of the investigation: (d) that disclosure occurred during the 6-month period immediately preceding the filing date of the patent application and that disclosure was due to, or made in consequence of,— (i) the display of the invention with the consent of the inventor at a specified exhibition; or (ii) the use of the invention with the consent of the inventor for the purposes of a specified exhibition in the place where it is held; or (iii) the publication of any description of the invention in consequence of its display or use at a specified exhibition; or (iv) the use of the invention, after it has been displayed or used at a specified exhibition as referred to in subparagraphs (i) and (ii) and during the period of the exhibition, by any person without the consent of the inventor; or (v) 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: (e) that disclosure was due to, or made in consequence of, the invention being publicly worked in New Zealand, at any time during the 1-year period immediately preceding the priority date of the claim, by any of the following persons if the working was effected for the purpose 18 Part 2 cl 12 DRAFT FOR CONSULTATION Patents of reasonable trial only and if it was reasonably necessary, having regard to the nature of the invention, that the working for that purpose should be effected in public: (i) (ii) any person from whom the patentee or applicant the patentee or applicant: derives title: (iii) any person with the consent of the patentee or applicant: (iv) any person with the consent of any person from whom the patentee or applicant derives title. (2) For the purposes of this section,— inventor— (a) means the true and first inventor of the invention; and (b) includes any owner of the invention at the relevant time specified exhibition means an exhibition (whether held in New Zealand or elsewhere) that is declared to be an international 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. 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 patentable invention. (2) This section is subject to section 103 (which relates to patents of addition). 19 DRAFT FOR CONSULTATION Patents Part 2 cl 13 13 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 section 6 of the Statute of Monopolies; and (b) when compared with the prior art base as it existed before the priority date of that claim— (i) is novel; and (ii) involves an inventive step; and (c) is useful; and (d) is not excluded from being a patentable invention under section 14 or section 15. Compare: Patents Act 1990 s 18(1) (Aust) Exclusions from patentability 14 Inventions contrary to public policy 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 public policy or morality. (2) For the purposes of subsection (1), commercial exploitation must not be regarded as contrary to public policy or morality only because it is prohibited by any law in force in New Zealand. (3) The Commissioner may, for the purpose of making a decision under this section, seek advice from any person that the Commissioner considers appropriate. 15 Other exclusions (1) Human beings, and biological processes for their generation, are not patentable inventions. (2) Diagnostic, therapeutic, or surgical methods for the treatment of human beings are not patentable inventions. (3) Plant varieties are not patentable inventions. (4) For the purposes of subsection (3), a plant variety is a plant grouping within a single botanical taxon of the lowest known rank, which grouping can be— (a) defined by the expression of the characteristics resulting from a given genotype or combination of genotypes; and 20 Part 2 cl 18 DRAFT FOR CONSULTATION Patents (b) distinguished from any other plant grouping by the expression of at least 1 of those characteristics; and (c) considered as a unit with regard to its suitability for being propagated unchanged. Subpart 2—Patent rights 16 Nature of patent (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. (3) 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 s 63(5), 84(4) 17 Exclusive rights given by patent (1) 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. (2) In this Act, exploit, in relation to an invention, includes,— (a) if the invention is a product, to— (i) make, hire, sell, or otherwise dispose of the product; or (ii) offer to make, sell, hire, or otherwise dispose of the product; or (iii) use or import the product; or (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 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 inventions for services of the Crown). Compare: Patents Act 1990 s 13 (Aust) 18 Extent, effect, and form of patent (1) A patent has effect throughout New Zealand. 21 DRAFT FOR CONSULTATION Patents Part 2 cl 18 (2) However, a patent may be assigned for any place in, or part of, New Zealand 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 a subject. (4) Subsection (3) is subject to the provisions of this Act and of 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) 19 Term of patents (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 period prescribed for the payment of any renewal fee if that fee is not paid within that period or within the period that is extended under section 20. (3) Subsection (2) applies despite anything in the patent or any other provision in this Act. Compare: 1953 No 64 s 30(3), (4) 20 Extension of period for paying renewal fees (1) If the prescribed period for the payment of a renewal fee expires 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 extended to the date that is 4 months after the date of the grant of the patent. (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)) be extended to any date that is not more than 6 months after the expiry of the prescribed period. (3) The Commissioner must extend the prescribed period for the payment of the renewal fee to the date referred to in subsection (2) if, before that date,— (a) the request under subsection (2) is made; and (b) the renewal fee is paid; and (c) the prescribed penalty (if any) is paid. Compare: 1953 No 64 s 30(4), (5) 22 Part 2 cl 23 DRAFT FOR CONSULTATION Patents Subpart 3—Patent ownership Who may be granted patents 21 Who may be granted patent (1) A patent for an invention may only be granted to a person who— (a) is the true and first inventor; or (b) derives title to the invention from the true and first inventor; or (c) is the personal representative of a deceased person mentioned in paragraph (a) or paragraph (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 22 Power of patentee to deal with patent (1) A patentee may (subject to any rights vested in other persons that are entered in the patents register) deal with the patent as the absolute owner of it and give good discharges for any consideration for that dealing. (2) This section does not protect a person who deals with a patentee otherwise than as a purchaser in good faith for value and without notice of any fraud on the part of the patentee. Compare: Patents Act 1990 s 189(1), (2) (Aust) Co-owners of patents 23 Co-ownership of patents (1) If a patent is granted to 2 or more persons, each of those persons is entitled to an equal undivided share in the patent. (2) 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. (3) A licence 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 assignor). (4) Subsections (1) to (3) are subject to any agreement to the contrary between the patentees of the patent. 23 DRAFT FOR CONSULTATION Patents Part 2 cl 23 (5) Subsections (2) and (3) are subject to any direction of the Commissioner under sections 25 to 27. (6) Nothing in subsection (1) or subsection (2) affects the mutual rights or obligations of trustees or of the personal representatives of a deceased person, or their rights or obligations as trustees or personal representatives. Compare: 1953 No 64 s 63(1)–(3), (5) 24 Rights of buyers from co-owners of patent If a patented product, or a product of a patented process, is sold by any of the 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) 25 Power of Commissioner to give directions to co-owners (1) If 2 or more persons are patentees of a patent, the Commissioner 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. (2) The directions must relate to— (a) the sale or lease of the patent or any interest in it; or (b) the grant of licences; or (c) the exercise of any right under section 23 in relation to the patent. Compare: 1953 No 64 s 64(1) 26 Commissioner may direct person to carry out direction in name and on behalf of defaulting person If any patentee fails to do anything required to carry out a direction given under section 25 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 and on behalf of the person in default. Compare: 1953 No 64 s 64(2) 24 Part 3 cl 30 DRAFT FOR CONSULTATION Patents 27 Miscellaneous provisions concerning directions (1) Before giving a direction under section 25 or section 26, the Commissioner must— (a) give a reasonable opportunity to be heard,— (i) in the case of a request under section 25, to the patentees of the patent; and (ii) in the case of a request under section 26, to the person in default; and (b) have regard to the terms of any agreement between the patentees of the patent that are brought to the Commissioner’s notice. (2) The Commissioner must not give a direction that affects the rights or obligations of a trustee or of the personal representative of a deceased person, or rights or obligations arising out of either of those relationships. (3) This section does not limit the ability of the Commissioner to make a direction that is inconsistent with the terms of an agreement between the patentees of the patent. Compare: 1953 No 64 s 64(3), (5) Part 3 Process for obtaining grant of patent and other matters Subpart 1—Patent applications 28 Right to apply for patent Any person may apply for a patent either alone or jointly with another person. Compare: Patents Act 1977 s 7(1) (UK) 29 Application requirements Every patent application must be made in accordance with this Act and the regulations. 30 Commissioner may post-date application or specification (1) The Commissioner may, on the request of the applicant in the prescribed manner (if any), direct that a patent application be post-dated to the date that is specified in the request. (2) The Commissioner must not exercise the power under subsection (1) after the acceptance of the complete specification. 25 DRAFT FOR CONSULTATION Patents Part 3 cl 30 (3) A patent application must not be post-dated under subsection (1) to a date later than 6 months after the date that it was actually made or would, but for subsection (1), be treated as having been made. (4) A convention application must not be post-dated under this section to a date later than the last date that, under the provisions of this Act, the application could have been made. (5) 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 post-dated to the date that the amendment is first filed. Compare: 1953 No 64 s 12(3), (4) 31 Divisional applications (1) 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, make a fresh patent application for any part of the subject matter of the original application. (2) 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. (3) The earlier date must not be earlier than the filing date of the original patent application. Compare: 1953 No 64 s 12(5) Subpart 2—Specifications 32 Complete and provisional specifications (1) Every patent application must— (a) be accompanied by a complete specification or a provisional specification unless the application is a convention application; and (b) be accompanied by a complete specification if the application is a convention application. (2) The Commissioner may direct that a specification that purports to be a complete specification be treated as a provisional specification if— (a) the applicant requests, at any time before the acceptance of the specification, that the Commissioner make that direction; and 26 Part 3 cl 33 DRAFT FOR CONSULTATION Patents (b) the patent application is not a convention application. (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. (4) The Commissioner may cancel a provisional specification and post-date the patent application to the filing date of a complete specification if— (a) a complete specification has been filed for a patent application that was accompanied by a provisional specification or by a specification treated as a provisional specification under subsection (2); and (b) the applicant requests, at any time before the acceptance of the complete specification, that the Commissioner cancel the provisional specification and post-date the application. Compare: 1953 No 64 s 9(1), (4), (5) 33 Filing of complete specification after provisional specification has been filed (1) If a patent application is accompanied by a provisional specifi- cation, a complete specification must be filed within the period allowable under subsection (2). (2) The period allowable is— (a) the period within 12 months from the filing date of the patent application; or (b) an extended period not exceeding 15 months from the filing date of the patent application if, on or before the date on which the complete specification is filed,— (i) a request to that effect is made to the Commissioner in the prescribed manner (if any); and (ii) the prescribed penalty (if any) is paid. (3) A patent application must be treated as having been abandoned if the complete specification is not filed within the period allowable under subsection (2). (4) 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 27 DRAFT FOR CONSULTATION Patents Part 3 cl 33 (b) more than 1 complete specification may be filed for those applications with the leave of the Commissioner. (5) Subsection (4) is subject to subsections (1) to (3) and sections 34 to 40. Compare: 1953 No 64 s 9(2), (3) 34 Contents of provisional specification Every provisional specification must— (a) describe the invention; and (b) include any other prescribed information. Compare: 1953 No 64 s 10(1) 35 Contents of complete specification (1) Every complete specification must— (a) particularly describe the invention and the method by which it is to be performed; and (b) disclose the best method of performing the invention which is known to the applicant and for which the applicant is entitled to claim protection; and (c) end with a claim or claims defining the scope of the invention claimed; and (d) include any other prescribed information. (2) The claim or claims must— (a) relate to one invention only; and (b) be clear, succinct, and fairly based on the matter disclosed in the specification. (3) A complete specification filed after a provisional specification, or filed with a convention application, may include claims concerning 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 convention country (as the case may be) if those developments or additions are developments or additions for which the applicant would be entitled to make a separate patent application under subpart 1. (4) If a complete specification claims a new substance, the claim must not be construed as extending to that substance when found in nature. Compare: 1953 No 64 s 10(1), (3), (4), (6), (7) 28 Part 3 cl 38 DRAFT FOR CONSULTATION Patents 36 Supply of drawings (1) Drawings may be supplied for the purposes of any specification. (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) 37 Specifications for micro-organisms (1) To the extent that an invention is a micro-organism, the complete specification complies with section 35(1)(a) and (b), so far as those paragraphs require a description of the micro-organism, if, and only if, the deposit requirements specified in section 38 are satisfied in relation to the micro-organism. (2) Subsection (3) applies if— (a) an invention involves the use, modification, or cultivation of a micro-organism, other than the micro-organism mentioned in subsection (1); and (b) 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 micro-organism before starting to perform the invention; and (c) the micro-organism is not reasonably available to a person skilled in the relevant art in New Zealand. (3) The complete specification complies with section 35(1)(a) and (b), to the extent that those paragraphs require a description of the micro-organism, if, and only if, the deposit requirements specified in section 38 are satisfied in relation to the microorganism. (4) For the purposes of this section and section 40, a micro-organism may be reasonably available to a person even if it is not so available in New Zealand. Compare: Patents Act 1990 s 41 (Aust) 38 Deposit requirements for micro-organisms (1) The deposit requirements are satisfied in relation to a microorganism to which a specification relates if, and only if,— (a) the micro-organism was, on or before the filing date of the specification, deposited with a prescribed depositary 29 DRAFT FOR CONSULTATION Patents Part 3 cl 38 institution in accordance with the rules relating to micro-organisms; and (b) the applicant for the patent provides to the Commissioner, within the prescribed period, a receipt for the deposit from the prescribed depositary institution; and (c) the specification includes, at the filing date of the specification, all relevant information on the characteristics of the micro-organism that is known to the applicant; and (d) at all times since the end of the prescribed period, the specification has included— (i) the name of a prescribed depositary institution from which samples of the micro-organism are obtainable as provided by the rules relating to micro-organisms; and (ii) the file, accession, or registration number of the deposit given by the institution; and (e) at all times since the filing date of the specification, samples of the micro-organism have been obtainable from a prescribed depositary institution as provided by those rules. (2) For the purposes of subsection (1)(b), the receipt for the deposit must be in the prescribed form (if any). Compare: Patents Act 1990 s 6 (Aust) 39 Deposit requirements treated as satisfied in certain circumstances (1) This section applies if— (a) the requirements specified in section 38(1)(d) or (e) cease to be satisfied in relation to a micro-organism; and (b) steps are taken at a later time within the prescribed period in accordance with all applicable provisions of the regulations (if any); and (c) 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. (2) If this section applies,— (a) the requirements specified in section 38(1)(d) and (e) must be treated as having been satisfied during the period mentioned in subsection (1)(c); and 30 Part 3 cl 42 DRAFT FOR CONSULTATION Patents (b) the provisions that are prescribed have effect for the protection or compensation of persons who availed themselves, or took definite steps by way of contract or otherwise to avail themselves, of the invention during that period. Compare: Patents Act 1990 s 41(4) (Aust) 40 Micro-organism ceasing to be reasonably available (1) A patent may be revoked on the ground referred to in section 105(1)(c) (which relates to complete specifications that do not comply with section 35(1)) if— (a) the patent was granted for an invention that involves the use, modification, or cultivation of a micro-organism, other than a micro-organism mentioned in section 37(1); and (b) the micro-organism was, at the filing date of the complete specification, reasonably available to a person skilled in the relevant art in New Zealand; and (c) the micro-organism has ceased to be reasonably available to a person skilled in the relevant art in New Zealand. (2) This section does not limit section 35(1). Subpart 3—Treaty applications 41 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 specification. Compare: 1953 No 64 s 26A 42 Description, claims, and drawings (1) The description, claims, and drawings (if any) contained in a Treaty application must be treated as a complete specification. (2) An indication, in relation to a deposited micro-organism given under rule 13bis.4 of the Treaty regulations, in relation to a Treaty application, must be taken to be included in the description 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) 31 DRAFT FOR CONSULTATION Patents Part 3 cl 43 43 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 44 Commissioner must provide international filing date (1) The Commissioner must give an international application an international filing date if— (a) a request contained in the international application specifies New Zealand as a designated State under Article 4(1)(ii) of the Patent Cooperation Treaty; and (b) 1 or more of the following applies: (i) the receiving Office has refused to accord the international application an international filing date under Article 11(1) of the Patent Cooperation Treaty: (ii) the receiving Office has declared that the international application is considered withdrawn: (iii) the International Bureau has made a finding under Article 12(3) of the Patent Cooperation Treaty that the international application is considered withdrawn; and (c) the Commissioner has decided under Article 25(2)(a) of the Patent Cooperation Treaty that the refusal or the declaration or the finding was the result of a mistake on the part of the receiving Office or the International Bureau. (2) The date must be the date of receipt of the application by the receiving Office under Article 11(1) of the Patent Cooperation Treaty. (3) If the date of receipt of the application by the receiving Office cannot be ascertained, the Commissioner may give the application an international filing date. (4) This Act applies to the application in accordance with this section. (5) 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 has been provided to the Commissioner. Compare: 1953 No 64 s 26D 32 Part 3 cl 46 DRAFT FOR CONSULTATION Patents 45 Amendments to documents forming part of complete specification (1) Subsection (2) applies if an English translation of a Treaty application— (a) has been filed with the Commissioner; or (b) has been published under Article 21 of the Patent Cooperation Treaty by the International Bureau. (2) The description, claims, and any matter associated with the drawings, contained in the application, must be treated for the purposes of this Act as having been amended, on the day the translation was filed, by substituting the translated documents for those originally filed. (3) The description, claims, and drawings contained in a Treaty application must be treated for the purposes of this Act as having been amended on the day that an amendment was made if— (a) the Treaty application has been amended under Article 19(1) of the Patent Cooperation Treaty; or (b) the Treaty application has been amended under Article 34 of the Patent Cooperation Treaty, and New Zealand has been chosen by the applicant to be an elected State under Article 31(4)(a) of the Patent Cooperation Treaty within the prescribed time limit. (4) If a Treaty application has been rectified under rule 91 of the Treaty regulations, the description, claims, and drawings contained in that Treaty application must be treated, for the purposes of this Act, as having been amended on the application’s international filing date. Compare: 1953 No 64 s 26E 46 Treaty application void (1) A Treaty application must be treated as void for the purposes of this Act if— (a) an applicant withdraws the applicant’s international application, or withdraws the application in relation to New Zealand as a designated State; or (b) an international application is considered to be withdrawn in accordance with Article 12(3) or Article 14(1)(b) or Article 14(3)(a) or Article 14(4) of the Patent Cooperation Treaty; or 33 DRAFT FOR CONSULTATION Patents Part 3 cl 46 (c) 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 (d) the applicant fails to fulfil the applicant’s obligations under Article 22(1) of the Patent Cooperation Treaty within the prescribed time limit; or (e) the applicant fails to fulfil the applicant’s obligations under Article 39(1)(a) of the Patent Cooperation Treaty within the prescribed time limit. (2) Subsection (1)(b) and (c) is subject to Article 25 of the Patent Cooperation Treaty. Compare: 1953 No 64 s 26F 47 Requirements for examination of Treaty application (1) The Commissioner must not exercise the Commissioner’s powers under subpart 6 (which relates to examination of patent applications) until— (a) the applicant has fulfilled the applicant’s obligations under Article 22(1) or Article 39(1) of the Patent Cooperation Treaty; and (b) the prescribed time limit has expired; and (c) a translation of the international application into English, if applicable, has been filed with the Commissioner and verified to the satisfaction of the Commissioner; and (d) all documents required to be filed under this Act and the regulations have been filed; and (e) all fees required to be paid under this Act and the regulations have been paid. (2) However, the Commissioner may, on the express request of the applicant, exercise the Commissioner’s powers under subpart 6 at any time. Compare: 1953 No 64 s 26G Subpart 4—Convention applications 48 Convention applicants may make convention applications (1) A convention applicant in relation to a basic application may make a convention application, or 2 or more of those convention applicants may make a joint convention application, within the period of 12 months from the day on which a basic 34 Part 3 cl 49 DRAFT FOR CONSULTATION Patents application is first made in a convention country in respect of the invention. (2) For the purposes of this Act,— (a) the filing of a complete specification in a convention country after the filing of a provisional specification in relation to a basic application must be treated as an application for protection in that country; and (b) a person must be treated as having applied for protection for an invention in a convention country if the person has applied for protection for the invention by an application that,— (i) in accordance with the terms of a treaty subsisting between that convention country and any 1 or more other convention countries, is equivalent to an application duly made in any one of those convention countries; or (ii) in accordance with the law of that convention country, is equivalent to an application duly made in that convention country; and (c) matter must be treated as having been disclosed in an application for protection in a convention country if it was claimed or disclosed (otherwise than by way of disclaimer or acknowledgment of prior art) in that application or in documents submitted by the applicant for protection in support of, and at the same time as, that application. (3) Despite subsection (2)(c), no account may be taken of any disclosure effected by any of the documents referred to in that paragraph unless a copy of the document is filed with the convention application or within the period as may be prescribed after the filing of that application. 49 How convention applications are made and dealt with (1) A convention application must be made and dealt with in the same manner as any other patent application. (2) However, a patent application that is a convention application must— (a) include the prescribed information relating to the relevant basic application; and (b) be accompanied by a complete specification in accordance with section 32(1); and 35 DRAFT FOR CONSULTATION Patents Part 3 cl 49 (c) be made and dealt with in accordance with the requirements prescribed by— (i) this Act (if this Act has prescribed different or additional requirements for convention applications); and (ii) regulations (if regulations have prescribed different or additional requirements for convention applications). 50 Withdrawn, abandoned, or refused basic applications For the purposes of this Act, if more than 1 basic application has been made for an invention, the first basic application may be disregarded and the second basic application must be substituted for the first basic application if— (a) the first basic application was made in, or in respect of, the same convention country and by the same applicant as the second basic application; and (b) not later than the filing date of the second basic application, the first basic application was unconditionally withdrawn, abandoned, or refused; and (c) the first basic application had not been made available to the public in New Zealand or elsewhere before its unconditional withdrawal, abandonment, or refusal; and (d) no rights remain outstanding in respect of the first basic application; and (e) the first basic application has not served to establish a priority date (as defined in section 5) in relation to another basic application in any country. Compare: 1953 No 64 s 7(2A) 51 Basic applications for 2 or more cognate inventions (1) If basic applications have been made in 1 or more convention countries for 2 or more inventions that are cognate or of which one is a modification of another, a single convention application 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 for patent applications prescribed by this Act and the regulations apply separately to the applications for protection for each of the inventions. 36 Part 3 cl 54 DRAFT FOR CONSULTATION Patents Subpart 5—Priority dates 52 Priority date of claims of complete specification (1) 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 on or after the priority date of the claim by written or oral description, by use, or in any other way; or (b) by the grant of another patent on a specification claiming the same invention in a claim of the same or a later priority date. Compare: 1953 No 64 s 11(1) 53 Priority date if complete specification filed for single application The priority date of a claim is the filing date of the patent application if— (a) the complete specification is filed for a single application that was accompanied by a provisional specification or by a specification that is treated as a provisional specification; and (b) the claim is fairly based on the matter disclosed in that provisional specification. Compare: 1953 No 64 s 11(2) 54 Priority date if complete specification filed for 2 or more applications (1) This section applies if— (a) the complete specification is filed or proceeded with in relation to 2 or more patent applications that were accompanied by provisional specifications or by specifications that are treated as provisional specifications; and (b) the claim is fairly based on the matter disclosed in at least 1 of those provisional specifications. 37 DRAFT FOR CONSULTATION Patents Part 3 cl 54 (2) 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) 55 Priority date for convention applications (1) 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 country; or (b) in 1 of those applications for protection if the convention application is founded on more than 1 application for protection in a convention country. (2) The priority date of the claim is the date of the relevant application for protection. Compare: 1953 No 64 s 11(4) 56 Priority date for Treaty applications (1) This section applies if— (a) the patent application that relates to the complete specification that contains the claim is a Treaty application; and (b) that Treaty application claims the priority of an earlier application under Article 8 of the Patent Cooperation Treaty; and (c) that earlier application is— (i) an application made in New Zealand not more than 12 months before the international filing date of the Treaty application; or (ii) 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 (iii) an application for protection for an invention made in a convention country after an application referred to in subparagraph (ii); and 38 Part 3 cl 58 DRAFT FOR CONSULTATION Patents (d) the claim is fairly based on the matter disclosed in that earlier application or in a specification filed for that earlier application. (2) The priority date of the claim is,— (a) if the claim is fairly based on the matter disclosed in that earlier application, the filing date of that application; or (b) 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. 57 Rules that apply if 2 or more priority dates apply or other rules do not apply (1) If, under sections 52 to 56, 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. (2) If sections 52 to 56 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) Subpart 6—Examination 58 Examination (1) 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 invention under section 13; and (c) all other matters (if any) that are prescribed. (2) The examination must be carried out in the prescribed manner. (3) The Commissioner must give a copy of the report to the applicant after it is issued. Compare: Patents Act 1990 s 45 (Aust) 39 DRAFT FOR CONSULTATION Patents Part 3 cl 59 59 Commissioner may refuse to proceed with application or require application or specification to be amended (1) This section applies if, after examining under section 58 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 regulations; or (b) there is any other lawful ground of objection to the grant of a patent in respect of the application. (2) The Commissioner— (a) must state the grounds of objection when reporting on an examination; and (b) may— (i) refuse to proceed with the patent application; or (ii) require the applicant to amend the patent application or any specification before the Commissioner proceeds with the application. 60 Applicants must act by deadline if deadline set by Commissioner (1) If the Commissioner has acted under section 59(2)(b)(ii), the applicant must, by the deadline set by the Commissioner,— (a) respond to the report; and (b) take reasonable steps to ensure that the response is a substantive response. (2) After each response, the Commissioner may issue a further report under section 58 and act under section 59 if the Commissioner still believes that— (a) the patent application or any specification filed in relation to the application does not comply with the requirements of this Act or of the regulations; or (b) there is any other lawful ground of objection to the grant of a patent in respect of the application. (3) If the Commissioner has issued a further report under section 58 and acted under section 59, the applicant must, by the deadline set by the Commissioner (if any),— (a) respond to the report; and (b) take reasonable steps to ensure that the response is a substantive response. 40 Part 3 cl 63 DRAFT FOR CONSULTATION Patents (4) The Commissioner must set deadlines (if any) in the prescribed manner. (5) For the purposes of this section, a substantive response is a response that, in relation to each ground of objection raised by the Commissioner in the report, either— (a) gives a fair and substantial answer to the ground of objection; or (b) amends the application or specification to remove the ground of objection. 61 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 comply with section 60. 62 Commissioner must examine amended specification (1) The Commissioner must examine an amended complete specification in the same manner as the original specification if the specification is amended following the issue of a report under section 58. (2) Subsection (1) does not apply after the complete specification is accepted. Compare: 1953 No 64 s 18(2) 63 Duty to inform Commissioner of search results (1) The applicant must inform the Commissioner of the results 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 disclosed in the complete specification of a corresponding application filed outside New Zealand. (2) 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 (b) applies only to searches completed before the grant of the patent. (3) A search is completed on the earliest of— (a) the date, if any, specified in the search report as the date that the report was issued; and 41 DRAFT FOR CONSULTATION Patents Part 3 cl 63 (b) the date, if any, specified in the search report as the date that the search was completed; and (c) the date that the search results were issued to the applicant or patentee by the foreign patent office. Compare: Patents Act 1990 s 45(3) (Aust) 64 Consequences of breach of duty An amendment of a complete specification relating to a patent is not allowable and must not be made if— (a) the patentee or the patentee’s predecessor in title breaches or breached section 63 in relation to the patent; and (b) the effect of the proposed amendment would be to remove a lawful ground of objection in relation to section 13(b) to the specification arising from the existence of some or all of the information not provided under section 63. 65 How duty is performed (1) An applicant informs the Commissioner of the results of documentary searches by, or on behalf of, a foreign patent office by providing, in the prescribed manner (if any),— (a) a copy of the search report issued by the foreign patent office; or (b) a list of the documents cited by the foreign patent office. (2) For the purposes of subsection (1)(b),— (a) the applicant must include with the list the symbols (if any) used by the patent office to indicate the relevance of the documents if the foreign patent office is the European Patent Office or the United Kingdom Patent Office; and (b) it is not necessary to refer, in a list, to a document that has been included in a list or report in relation to the patent application that has previously been provided to the Commissioner under this Act or the regulations. 42 Part 3 cl 67 DRAFT FOR CONSULTATION Patents Subpart 7—Acceptance and publication Time for putting application in order for acceptance 66 Time for putting application in order for acceptance (1) A patent application is void unless, within 18 months from the date of the first report issued under section 58, the applicant ensures that— (a) the application and the complete specification comply with the requirements of this Act and of the regulations; and (b) there is no other lawful ground of objection to the grant of a patent in respect of the application. (2) Nothing in section 60 (which relates to deadlines set for applicants by the Commissioner) limits this section. Compare: 1953 No 64 s 19(1), (1A) 67 Court may extend period (1) This section applies if, at the expiry of the period allowed under section 66,— (a) an appeal to the Court is pending under any of the provisions of this Act in respect of the patent application; or (b) an appeal to the Court is pending under any of the provisions 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 (c) the time within which an appeal referred to in paragraph (a) or paragraph (b) may be brought under the rules of Court (apart from any future extension of time under this section) has not expired. (2) The Court may extend the period that applies under section 66 if an appeal is pending or is brought within the time referred to in subsection (1)(c). (3) If an appeal is not pending and is not brought within the time referred to in subsection (1)(c), the period that applies under section 66 continues until the end of the time referred to in subsection (1)(c), or, if any extension of that time is granted under this section, until the expiry of the extension or last extension that is granted. Compare: 1953 No 64 s 19(3) 43 DRAFT FOR CONSULTATION Patents Part 3 cl 68 68 Notice of entitlement must be filed before acceptance (1) The applicant must file, in the prescribed manner, a notice stating the entitlement of the nominated person to the grant of the patent— (a) before the expiry of the period allowed under section 66; or (b) before the expiry of the extension or last extension under section 67 (if the period allowed under section 66 is extended under section 67). (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 the only nominated person, the applicant must identify all of the nominated persons in the notice referred to in subsection (1). (4) A patent application is void if the applicant does not comply with this section. Acceptance 69 Acceptance of complete specification (1) The Commissioner must accept the complete specification relating to a patent application if the Commissioner is satis- fied, on the balance of probabilities, that— (a) the application and the specification comply with the requirements of this Act and of the regulations; and (b) there is no other lawful ground of objection to the grant of a patent in respect of the application. (2) The Commissioner must, after acceptance of a complete specification,— (a) give notice of the acceptance to the applicant; and (b) publish the acceptance in the journal. (3) For the purposes of this Act, date of the publication of the accepted complete specification means the date of publication of the journal containing the publication under subsection (2)(b). (4) This section is subject to sections 66, 67, and 70. Compare: 1953 No 64 s 20(1), (2) 44 Part 3 cl 72 DRAFT FOR CONSULTATION Patents 70 Applicant may request Commissioner to postpone acceptance (1) The applicant may give notice to the Commissioner requesting the Commissioner to postpone acceptance of the complete specification until a date that is specified in the notice. (2) The date specified in the notice must not be a date that is later than 18 months from— (a) the filing date of the complete specification; or (b) the date that the application becomes eligible for examination under Article 23 or Article 40 of the Patent Cooperation Treaty in the case of a Treaty application. (3) The Commissioner may postpone acceptance under section 69 if a notice is given under this section. Compare: 1953 No 64 s 20(1) Publication 71 Publication (1) 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 (b) a period of 18 months after the earliest priority date claimed in the patent application has ended; and (c) the specification is not already open to public inspection. (2) Subsection (1) does not apply if the patent application is void or has been abandoned. Compare: Patents Act 1990 s 54(3) (Aust) 72 Publication in case of divisional applications made as provided for in section 31 (1) The Commissioner must publish a notice in the journal that a complete specification filed for a fresh application is open to 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 (b) the complete specification filed for the original application was open to public inspection when the fresh application was made. 45 DRAFT FOR CONSULTATION Patents Part 3 cl 72 (2) Subsection (3) applies if a fresh application (other than a Treaty application) is made in respect of an original application 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 (b) a notice is published in the journal that the complete specification filed for the fresh application is open to public inspection. (3) The Commissioner must also publish in the journal a notice that,— (a) if subsection (2)(a) applies, the complete specification filed for the fresh application is open to public inspection; or (b) if subsection (2)(b) applies, the complete specification filed for the original application is open to public inspection. (4) The Commissioner must also publish in the journal a notice that the complete specification filed for a fresh application is 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 (b) a notice is published in the journal that the complete specification filed for the original application is open to public inspection. (5) For the purposes of this section,— fresh application means a fresh patent application referred to in section 31 original application means the original patent application referred to in section 31. Compare: Patents Act 1990 s 54(4)–(6) (Aust) 73 Documents open to public inspection (1) If a notice is published under section 71 or section 72, the specifi- cation concerned, and the other documents (if any) that are prescribed, are open to public inspection. (2) If acceptance of a complete specification is published under section 69(2)(b) in relation to a patent application, the following 46 Part 3 cl 75 DRAFT FOR CONSULTATION Patents documents (being documents that have not already become open to public inspection) are open to public inspection: (a) all documents (other than prescribed documents) filed in relation to the application or the patent, whether before or after the acceptance or grant: (b) all documents (other than prescribed documents) filed, after the patent ceases, expires, or is revoked, in relation to the former patent: (c) 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 former applicant or patentee. (3) A specification, or other document, must be taken to have been published on the day on which it becomes open to public inspection unless it has been published otherwise before that day. Compare: Patents Act 1990 s 55 (Aust) 74 Publication of Treaty applications A Treaty application must be taken to have become open to public inspection, and to have been published in New Zealand, on the date that it is published under Article 21 of the Patent Cooperation Treaty. 75 Certain documents not to be published (1) Except as otherwise provided by this Act, documents of the kind mentioned in section 73 or section 74— (a) must not be published or be open to public inspection; and (b) are not liable to be inspected or produced before the Commissioner or in a legal proceeding unless the Commissioner, court, or any person having power to order inspection or production, directs that the inspection or production be allowed. (2) Subsection (1) does not prevent the Commissioner from publishing the date and number of a patent application and any details of the patent application and invention that are required to be given in the patent application form. (3) Notice of an application for the production in legal proceedings of a document of the kind mentioned in section 73 or section 47 DRAFT FOR CONSULTATION Patents Part 3 cl 75 74 must be given to the Commissioner, who is entitled to be heard on the application. Compare: Patents Act 1990 s 56 (Aust) 76 Restriction on publication or discovery of examination reports The reports of the Commissioner on the examination of a patent application or specification must not, before the acceptance of the complete specification,— (a) be published by the Commissioner or be open to public inspection; or (b) be inspected or produced in any legal proceeding unless the court, or any person having power to order inspection or production in the proceeding, certifies that it is desirable that the production or inspection be allowed in the interests of justice. Compare: 1953 No 64 s 91(2) 77 Effect of publication of complete specification (1) After a complete specification relating to a patent application has become open to public inspection and until a patent is granted on the application, the applicant has the same rights as the applicant would have had if a patent for the invention had been granted on the day when the specification became open to public inspection under sections 71 to 74. (2) Subsection (1) does not give the applicant the right to commence proceedings in respect of any act unless— (a) a patent is granted on the patent application; and (b) the act would, if done after the grant of the patent, have constituted an infringement of a claim of the specification. (3) 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 an action for that infringement is the later of— (a) 6 years from the date of the alleged infringement; or (b) 3 years from the date of the grant of the patent. (4) Subsection (3) applies despite anything to the contrary in the Limitation Act 1950. Compare: Patents Act 1990 s 57(1), (3) (Aust); 1953 No 64 s 20(5) 48 Part 3 cl 79 DRAFT FOR CONSULTATION Patents 78 Defence for period between complete specification becoming open to public inspection and acceptance (1) 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 to the applicant 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 (b) before that complete specification was accepted. Compare: Patents Act 1990 s 57(4) (Aust) Subpart 8—Amendment of specifications 79 General rules concerning amendments of specifications (1) After the acceptance of a complete specification, an amendment to that specification is not allowable and must not be made, except for the purpose of correcting an obvious mistake, 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 specifi- cation before the amendment; or (b) a claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment. (2) If, after the date of the publication of the accepted complete 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 amendment must not be called into question except on the ground of fraud; and (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, reference may be made to the specification as originally published. Compare: 1953 No 64 s 40(1), (2) 49 DRAFT FOR CONSULTATION Patents Part 3 cl 80 80 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) 81 Amendment of specification with leave of Commissioner (1) 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 complete specification to be amended subject to any conditions that the Commissioner thinks fit. (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. (3) Every request for leave to amend a specification under this section must— (a) state the nature of the proposed amendment; and (b) give full particulars of the reasons for the application. (4) This section is subject to section 79 (which contains the general rules about amendments of specifications). Compare: 1953 No 64 s 38(1), (2) 82 Request for leave to amend must be published in journal (1) Every request for leave to amend a specification under section 81, and the nature of the proposed amendment, must be published in the journal. (2) However, if the request is made before the date of the publication 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 until the date of the publication of the accepted complete specification. Compare: 1953 No 64 s 38(3) 83 Opposition to proposed amendment (1) Any person may give notice to the Commissioner of opposition to a proposed amendment within the prescribed period after the publication of a request under section 82. 50 Part 3 cl 85 DRAFT FOR CONSULTATION Patents (2) If a notice is given within the prescribed period, the Commissioner must— (a) notify the person who made the request under section 82; and (b) give that person and the opponent a reasonable opportunity to be heard before the Commissioner decides the case. Compare: 1953 No 64 s 38(4) 84 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 the infringement or validity of a claim; or (b) in accordance with any provision of this Act that authorises the Commissioner to revoke a patent, or to refuse to grant a patent, unless the specification is amended to the Commissioner’s satisfaction. Compare: 1953 No 64 s 38(6) 85 Amendment of specification with leave of Court (1) In any relevant proceeding in relation to a patent, the Court may by order allow the patentee to amend the patentee’s complete specification in the manner and subject to the terms as to costs, publication, or otherwise that the Court thinks fit. (2) If, in any proceedings for the revocation of a patent, the Court decides that the patent is invalid, the Court may allow the specification to be amended under this section instead of revoking the patent. (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 application to the Commissioner; and (b) the Commissioner may appear and be heard on the application; and (c) the Commissioner must appear if he or she is directed by the Court to appear. (4) This section is subject to section 79 (which contains the general rules about amendments of specifications). Compare: 1953 No 64 s 39 51 DRAFT FOR CONSULTATION Patents Part 3 cl 86 Subpart 9—Assertions by third parties before acceptance and re-examination after acceptance Assertions by third parties before acceptance 86 Assertions by third parties on novelty and inventive step (1) A person may, at any time during the specified period, notify the Commissioner, in the prescribed manner (if any), that the person asserts that the invention, so far as claimed in a claim, is not a patentable invention because it does not comply with section 13(b) (which relates to the requirement for the invention to be novel and involve an inventive step). (2) The notice must state the reasons for the person’s assertion. (3) The notice and any document accompanying it are open to public inspection. (4) For the purposes of this section, specified period means,— (a) in the case of a patent application other than a Treaty application, the period after the complete specification becomes open to public inspection and before the acceptance of that specification under section 69; and (b) in the case of a Treaty application, the period after the matters referred to in section 47(1)(a) to (e) (which relates to the preconditions for examinations) have occurred or been satisfied and before the acceptance of the complete specification under section 69. Compare: Patents Act 1990 s 27(1), (4) (Aust) 87 Commissioner must take notice into account as part of examination process (1) The Commissioner must, after receiving a notice under section 86, take into account the matters raised in the notice when carrying out an examination under subpart 6. (2) The Commissioner must inform the applicant for the patent in writing of any matter of which the Commissioner is notified under section 86 and send the applicant a copy of any document accompanying the notice. 52 Part 3 cl 89 DRAFT FOR CONSULTATION Patents Re-examination after acceptance 88 Re-examination of complete specification before patent is granted (1) The Commissioner may, and must if requested to do so by any person, re-examine a complete specification on or after the date of the publication of the accepted complete specification if the patent has not been granted. (2) A request must be made in the prescribed manner (if any). 89 Re-examination of complete specification after patent is granted (1) If a patent has been granted, the Commissioner may, and must if requested to do so by any person, re-examine the complete specification. (2) Subsection (1) does not apply if— (a) a relevant proceeding in relation to the patent is pending; or (b) 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 application. (3) A request under subsection (1) must be made in the prescribed manner (if any). (4) If the Commissioner has started to re-examine a complete specification relating to a patent under subsection (1), the Commissioner must not continue the re-examination if— (a) a relevant proceeding in relation to the patent is commenced and the Commissioner has received notification of the commencement of that proceeding; or (b) 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 application. (5) The Commissioner must re-examine the complete specification if the validity of a patent is disputed in any proceedings before the Court under this Act and the Court directs the Commissioner to re-examine the complete specification. Compare: Patents Act 1990 s 97 (Aust) 53 DRAFT FOR CONSULTATION Patents Part 3 cl 90 90 Report on re-examination (1) On re-examining a complete specification, 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 as it existed before the priority date of that claim— (a) is not novel; or (b) does not involve an inventive step. (2) 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). Compare: Patents Act 1990 s 98 (Aust) 91 Copies of report to be given to Court A copy of a report under section 90 must, if the re-examination was directed under subsection 89(5), be given by the Commissioner to the Court that gave the direction. Compare: Patents Act 1990 s 100 (Aust) 92 Refusal to grant patent: re-examination before grant (1) If the Commissioner makes an adverse report on a re-examination under section 88, the Commissioner may refuse to grant the patent. (2) The Commissioner must not refuse to grant a patent under this section unless— (a) the Commissioner has, if appropriate, given the applicant a reasonable opportunity to amend the relevant specification 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 inventive step); and (b) the applicant has failed to do so. Compare: Patents Act 1990 s 100A (Aust) 93 Revocation of patent: re-examination after grant (1) If the Commissioner makes an adverse report on a re-examination 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). 54 Part 3 cl 94 DRAFT FOR CONSULTATION Patents (2) The Commissioner must not revoke a patent under this section unless— (a) the Commissioner has, if appropriate, given the patentee a reasonable opportunity to amend the relevant specification 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 inventive step); and (b) the patentee has failed to make that amendment. (3) The Commissioner must not revoke a patent under this section— (a) while a relevant proceeding in relation to that patent is pending; or (b) before the Commissioner has made a decision on an application for revocation of the patent made under section 104 (if an application has been made to the Commissioner under that section). (4) Subpart 11 (which relates to revocation and surrender of patents) does not limit this section. Compare: Patents Act 1990 s 101 (Aust) Subpart 10—Grant of patent General rules 94 When patent must be granted (1) The Commissioner must grant a patent to the nominated person, 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 if either— (a) the Commissioner has not decided to re-examine a complete specification under section 88 and a request to re-examine a complete specification has not been made in accordance with that section; or (b) the Commissioner decides, following all re-examinations of the complete specification relating to the patent application under section 88, that the patent should be granted. (2) If a nominated person dies before a patent is granted on the patent application, the patent may be granted to his or her personal representative. 55 DRAFT FOR CONSULTATION Patents Part 3 cl 94 (3) The date that the patent is granted must be entered in the patents register. (4) 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. (5) This section does not limit the Commissioner’s power to refuse to grant a patent under section 92. Compare: 1953 No 64 s 27(1) 95 Patent date (1) Every patent must be given a patent date that is the filing date of the complete specification. (2) However, no proceeding may be taken for an infringement committed before the date on which the complete specification became open to public inspection. (3) The patent date of every patent must be entered in the patents register. Compare: 1953 No 64 s 30(1), (2) 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) 97 Amendment of patent granted to deceased person or to person that has been liquidated or wound up (1) 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) had died before the patent was granted; or (b) had ceased to exist before the patent was granted in the case of a body corporate. (2) The Commissioner may amend the patent by substituting for the name of that person the name of the person to whom the patent should have been granted. 56 Part 3 cl 100 DRAFT FOR CONSULTATION Patents (3) 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 98 Patents of addition (1) This section applies if— (a) a patent application is made in respect of any improvement in, or modification of, an invention (the main invention); and (b) the applicant also applies, or has applied, for a patent for that invention or is the patentee of that invention. (2) 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) 99 Commissioner may revoke patent for improvement or modification and grant patent of addition (1) This section applies if— (a) an invention that is an improvement in, or modification of, another invention is the subject of an independent patent; and (b) the patentee of that patent is also the patentee of the patent for the main invention. (2) The Commissioner may, on the request of the patentee, by order revoke the patent for the improvement or modification and grant to the patentee a patent of addition for the improvement or modification. (3) 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 addition unless the filing date of the complete specification was the same as, or later than, the filing date of the complete specification for the main invention. 57 DRAFT FOR CONSULTATION Patents Part 3 cl 100 (2) 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) 101 Term of patent of addition (1) A patent of addition— (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 (b) remains in force— (i) during that term; or (ii) 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). (2) However, if the patent for the main invention is revoked under this Act, the Court or Commissioner (as the case may be) may order that the patent of addition 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) 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 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) 103 Inventive step not required in connection with patents of addition (1) 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 use of— (a) the main invention described in the complete specification for the main invention; or 58 Part 3 cl 104 DRAFT FOR CONSULTATION Patents (b) any improvement in, or modification of, the main invention described in the complete specification of— (i) a patent of addition to the patent for the main invention; or (ii) an application for a patent of addition to the patent for the main invention. (2) The validity of a patent of addition must not be questioned on 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 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 105. (2) An application under this section may be made by any person. (3) The Commissioner may refuse any application to the Commissioner under this section that is vexatious. (4) If a relevant proceeding in relation to a patent is pending in any Court, an application to the Commissioner under this section may be made only with the leave of the Court. (5) If an application is made to the Commissioner under this section, the Commissioner must— (a) notify the patentee; and (b) give to the person who made the application and the patentee a reasonable opportunity to be heard before deciding the case (unless the application has been refused under subsection (3)). (6) If, on an application under this section, the Commissioner is satisfied that any of the grounds set out in section 105 are established, the Commissioner may by order direct that the patent is either— (a) revoked unconditionally; or (b) revoked unless the complete specification is amended to the Commissioner’s satisfaction within the time that is specified in the order. (7) This section does not limit the Court’s power, under any other enactment or rule of law, to stay or dismiss any proceeding 59 DRAFT FOR CONSULTATION Patents Part 3 cl 104 generally or in relation to any claim for relief in the proceeding. Compare: 1953 No 64 ss 41(1), (3), 42(3) 105 Grounds for revoking patent (1) A patent may be revoked on 1 or more of the following grounds: (a) that the invention, so far as claimed in a claim, is not a patentable invention under section 13: (b) that the patentee is not entitled to the patent: (c) that the complete specification does not comply with section 35(1) (which requires descriptions of the invention, method of performance, and claims): (d) 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: (e) that the patent was obtained by fraud, false suggestion, (f) or a misrepresentation: that the invention, so far as claimed in a claim, was secretly used (whether in New Zealand or elsewhere) before the priority date of that claim: (g) that the patent has been granted contrary to law. (2) For the purposes of subsection (1)(a), account must not be taken of any secret use of the invention. (3) 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 the trial or experiment is conducted by, on behalf of, or with the consent of the patentee or the patentee’s predecessor in title; or (b) by a government department or any person authorised by a government department if the applicant for the patent, or any person from whom the applicant derives title, has communicated or disclosed the invention directly or indirectly to that department or person; or (c) by any other person if— (i) the applicant for the patent, or any person from whom the applicant derives title, has communicated or disclosed the invention to that person; and 60 Part 3 cl 107 DRAFT FOR CONSULTATION Patents (ii) that person has used the invention without the consent of the applicant or of any person from whom the applicant derives title. (4) Every ground set out in subsection (1) is available as a ground of defence in any proceeding for the infringement of the patent. Compare: 1953 No 64 s 41(1), (2), (4) 106 Court may also revoke patent if patentee, without 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 the government department to exploit the patented invention for the services of the Crown on reasonable terms under section 165. Compare: 1953 No 64 s 41(3)(a) 107 Surrender of patent (1) A patentee may, by notice given to the Commissioner, offer to surrender the patent. (2) The Commissioner must publish the offer in the journal. (3) A person may, within the prescribed period after the publication, give notice to the Commissioner of opposition to the surrender. (4) The Commissioner must notify the patentee if notice of opposition is given. (5) The Commissioner may accept the offer and by order revoke the patent if— (a) the Commissioner has given the patentee and the opponent a reasonable opportunity to be heard; and (b) the Commissioner is satisfied that the patent may properly be surrendered. Compare: 1953 No 64 s 43 61 DRAFT FOR CONSULTATION Patents Part 3 cl 108 Subpart 12—Restoration of lapsed patents and restoration of patent applications Restoration of lapsed patents 108 Restoration of lapsed patents (1) This section applies if a patent has ceased to have effect by reason of a failure to pay any renewal fee within the prescribed period or within that period as extended under section 20. (2) The Commissioner may, on a request made in the prescribed manner, by order restore the patent, and any patent of addition specified in the request 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) 109 Request must describe circumstances that led to failure to pay renewal fee (1) A request for an order under section 108 must contain a statement that fully sets out the circumstances that led to the failure to pay the renewal fee. (2) The Commissioner may require the person who makes the request to provide any further evidence that the Commissioner thinks fit. Compare: 1953 No 64 s 35(3) 110 Persons who may make request for restoration of patent (1) A request for an order under section 108 may be made by the person who was the patentee or, if that person is deceased, by that person’s personal representative. (2) If the patent was held by 2 or more persons jointly, the request for an order under section 108 may, with the leave of the Commissioner, be made by 1 or more of them without joining the others. Compare: 1953 No 64 s 35(2) 111 When request for restoration of patent may be made (1) A request for an order under section 108 may only be made within 12 months of the date that the patent ceased to have effect. 62 Part 3 cl 113 DRAFT FOR CONSULTATION Patents (2) However, the Commissioner may extend the period within which a request may be made if the Commissioner is satisfied that there was no undue delay in making the request. (3) The person who makes the request must, for the purposes of subsection (2), provide the Commissioner with a statement that fully sets out the circumstances that caused the delay and the reasons why the delay is not undue. (4) The Commissioner may require that person to provide any further evidence that the Commissioner thinks fit. 112 Commissioner to publish request in journal (1) The Commissioner must publish a request made in accordance with sections 108 to 111 in the journal if the Commissioner is satisfied that the failure to pay the renewal fee was unintentional. (2) The Commissioner must, before the Commissioner makes a decision under subsection (1), give the person who made the request a reasonable opportunity to be heard. Compare: 1953 No 64 s 35(4) 113 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 108 on either or both of the following grounds: (a) that the failure to pay the renewal fee was not unintentional: (b) if the period within which an application for an order under section 108 may be made is extended under section 111, that the delay in making the request was undue. (2) The Commissioner must notify the person who made the request if a person has given notice under subsection (1). (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) 63 DRAFT FOR CONSULTATION Patents Part 3 cl 114 114 Order to be made on payment of unpaid fees (1) The Commissioner must make an order under section 108 in accordance with the request after the prescribed period for giving notice of opposition if— (a) all unpaid renewal fees are paid; and (b) all other prescribed additional fees (if any) are paid; and (c) either— (i) no notice of opposition is given within the prescribed period; or (ii) the decision of the Commissioner is in favour of the applicant (in the case of a notice of opposition having been given within the prescribed period). (2) An order for the restoration of a patent— (a) may be made subject to a condition requiring the registration of any matter if the provisions of this Act concerning entries in the patents register have not been complied with; and (b) must contain, or be subject to, any prescribed provision for the protection of persons who may have begun to exploit the patented invention between the date when the patent ceased to have effect and the date on which the request is published under section 112; and (c) may be made subject to any other conditions that the Commissioner thinks fit. (3) If any condition of an order under this section is not complied with by the patentee, the Commissioner may revoke the order and give any directions that are consequential on the revocation that the Commissioner thinks fit. (4) The Commissioner must, before the Commissioner makes a decision under subsection (3), give to the patentee a reasonable opportunity to be heard. Compare: 1953 No 64 s 35(6)–(8) Restoration of patent applications 115 Request for restoration of void or abandoned patent applications (1) This section applies if— (a) the patent application is abandoned under section 61 or is void under section 66; or (b) in the case of a Treaty application, the Treaty application is void under section 46. 64 Part 3 cl 117 DRAFT FOR CONSULTATION Patents (2) 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 imposed on the applicant by or under this Act to a date that is specified in the order. (3) 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 or under this Act within the time allowed by or under this Act. (4) 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 was unintentional. Compare: 1953 No 64 s 37(1), (2) 116 When request for restoration of application may be made (1) Every request for an order under section 115 may only be made within 12 months of the date on which the patent application became void or was abandoned. (2) However, the Commissioner may extend the period within which a request may be made if the Commissioner is satisfied that there was no undue delay in making the request. (3) The applicant must, for the purposes of subsection (2), provide the Commissioner with a statement that fully sets out the circumstances that caused the delay and the reasons why the delay is not undue. (4) The Commissioner may require the applicant to provide any further evidence that the Commissioner thinks fit. 117 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 118 on either or both of the following grounds: (a) that any 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 was not unintentional: 65 DRAFT FOR CONSULTATION Patents Part 3 cl 117 (b) if the period within which a request under section 115 may be made is extended under section 116, that the delay in making the request was undue. (2) The Commissioner must notify the applicant if a person has given notice under subsection (1). (3) The Commissioner must give the opponent a reasonable opportunity to be heard before the Commissioner decides the case. Compare: 1953 No 64 s 37(3), (4) 118 Commissioner to determine matter (1) The Commissioner must, after the expiry of the prescribed period for giving notice of opposition,— (a) restore the patent application and extend the period for complying with the requirements imposed on the applicant 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 or under this Act within the time allowed by or under this Act was unintentional; and (ii) if the period within which the request for an order under this section may be made was extended under section 116, there was no undue delay in making the request; or (b) dismiss the request. (2) An order under this section must contain, or be subject to, any prescribed provisions for the protection of persons who may have exploited the invention that is the subject of the patent application between the specified date and the date on which the request is published under section 115. (3) For the purposes of subsection (2), the specified date means,— (a) in the case of a patent application that is a Treaty application that is void under section 46, the date on which the application became void; and (b) in any other case, the date when the patent application became void or abandoned. (4) The Commissioner must publish in the journal the making of an order under subsection (1) after that order is made. Compare: 1953 No 64 s 37(5), (6) 66 Part 3 cl 121 DRAFT FOR CONSULTATION Patents Subpart 13—Miscellaneous provisions Substitution of applicants 119 Persons claiming under assignment or agreement or by operation of law (1) 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) the patent; or (b) an interest in the patent; or (c) an undivided share in the patent or in an interest in the patent. (2) The Commissioner may, on a request made by the person in the prescribed manner, direct that the patent application proceed 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). (3) If the Commissioner gives a direction,— (a) the person must be taken to be the applicant, or a joint applicant, as the case may require; and (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: Patents Act 1990 s 113 (Aust) 120 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 and letters of administration and allow a person to proceed with a deceased applicant’s application under section 156. Compare: Patents Act 1990 s 215(1) (Aust) 121 Disputes between interested parties (1) If a dispute arises between interested parties in relation to a patent application concerning whether, or in what manner, the application should proceed, the Commissioner may, on a 67 DRAFT FOR CONSULTATION Patents Part 3 cl 121 request made to the Commissioner, give any directions that the Commissioner thinks fit— (a) for enabling the application to proceed in the name of 1 or more of the parties alone; or (b) for regulating the manner in which it is to proceed; or (c) for both of the purposes referred to in paragraphs (a) and Minister of Defence as relevant for defence purposes; or (b). (2) A request under subsection (1) must be made in the prescribed manner and may be made by any of the parties. (3) The Commissioner must, before giving a direction, give a reasonable opportunity to be heard to any person that the Commissioner considers is interested (whether or not that person is currently an interested party). Compare: 1953 No 64 s 24(5) Provisions for secrecy of certain inventions 122 Directions in relation to inventions concerning defence (1) The Commissioner may give any of the directions described in subsection (2) if— (a) a patent application has been made for an invention either before or after the commencement of this section; and (b) the invention is, in the opinion of the Commissioner,— one of a class notified to the Commissioner by the (i) (ii) likely to be valuable for defence purposes. (2) The directions are directions— (a) for prohibiting or restricting the publication of information concerning the invention; or (b) for prohibiting or restricting the communication of information concerning the invention to a person or class of persons specified in the directions. (3) While the directions are in force,— (a) the patent application may, subject to the directions, proceed up to the acceptance of the complete specification; and (b) the patent application and the complete specification must not become open to public inspection; and 68 Part 3 cl 125 DRAFT FOR CONSULTATION Patents (c) a patent must not be granted in relation to the patent application. Compare: 1953 No 64 s 25(1) 123 Commissioner must give notice to Minister of Defence If the Commissioner gives directions under section 122, the Commissioner must give notice of the patent application and of the directions to the Minister of Defence. Compare: 1953 No 64 s 25(2) 124 Minister of Defence must consider whether publication would be prejudicial to defence of New Zealand (1) The Minister of Defence must,— (a) on receipt of a notice under section 123, consider whether the publication of the invention would be prejudicial to the defence of New Zealand; and (b) unless a notice under subsection (3) has been given to the Commissioner, reconsider that question before the expiry of 9 months from the filing date of the patent application and at least once in every subsequent year. (2) For the purposes of subsection (1), the Minister of Defence may, at any time after the complete specification has been accepted or, with the consent of the applicant, at any time before the complete specification has been accepted, inspect the patent application and any documents provided to the Commissioner in connection with that application. (3) If, on consideration of the invention at any time, 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. Compare: 1953 No 64 s 25(2)(a)–(c) 125 Commissioner must revoke directions on receipt of notice from Minister of Defence On receipt of a notice under section 124, the Commissioner— (a) must revoke the directions given under section 122; 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 69 DRAFT FOR CONSULTATION Patents Part 3 cl 125 with the patent application, whether or not that time has previously expired. Compare: 1953 No 64 s 25(2)(d) 126 Acceptance of complete specification while directions in force (1) This section applies if a complete specification filed for a patent application for an invention for which directions have been given under section 122 is accepted while the directions are in force. (2) 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 department, subpart 6 of Part 4 applies to that use as if the patent had been granted for the invention. (3) 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 may pay to the applicant an amount by way of compensation that the Minister considers is reasonable. (4) For the purposes of subsection (3), the Minister must have regard to— (a) the novelty and usefulness of the invention; and (b) the purpose for which the invention is designed; and (c) any other relevant matters. Compare: 1953 No 64 s 25(3) 127 Renewal fees not payable while directions in force No renewal fees are payable for any period during which directions that are given under section 122 are in force if a patent is granted for an application for which directions have been given. Compare: 1953 No 64 s 25(4) 128 Failure to comply with directions an offence Every person who fails to comply with a direction given under section 122 commits an offence and is liable on conviction on indictment to imprisonment for a term not exceeding 2 years, to a fine not exceeding $100,000, or to both. Compare: 1953 No 64 s 25(6) 70 Part 4 cl 130 DRAFT FOR CONSULTATION Patents 128A Liability of officer of body corporate that commits offence If a body corporate is convicted of an offence against section 128, every director and every person concerned in the 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; and (b) that he or she— (i) knew, or could reasonably be expected to have known, that the offence was to be or was being committed; and (ii) failed to take all reasonable steps to prevent or stop it. Compare: 1953 No 64 s 108 Part 4 Infringement, other patent proceedings, and matters 71 affecting patent ownership Subpart 1—Infringement proceedings What constitutes infringement 129 Infringement by doing anything patentee has exclusive right to do A person infringes a patent if (other than under a licence) the person does anything that the patentee has the exclusive right to do under section 17 (that is, exploit or authorise exploitation of the invention). 130 Infringement by supplying means to infringe to another person (1) A person (A) also infringes a patent if (other than under a licence)— (a) A supplies, or offers to supply, in New Zealand 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 DRAFT FOR CONSULTATION Patents Part 4 cl 130 (c) B would infringe the patent by putting the invention into effect. (2) However, it is not an infringement to supply or offer to supply 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 129. 131 Presumption that product produced by infringing process (1) If a patented invention is a process for obtaining a new product, the same product produced by a person (other than under a licence) is presumed in infringement proceedings to have been obtained by that process. (2) Subsection (1) applies unless the defendant proves the contrary. (3) In applying subsection (1), the Court must not require any person to disclose any manufacturing or commercial secrets if the Court thinks that it would be unreasonable to require that disclosure. Compare: 1953 No 64 s 68A What does not constitute infringement 132 No infringement by use in or from foreign vessels, aircraft, or vehicles (1) 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 is used for the vessel’s actual needs only; or (ii) in the construction or working of a foreign aircraft or foreign land vehicle or of a foreign aircraft’s or foreign land vehicle’s accessories; and (b) the vessel, aircraft, or land vehicle comes into New Zealand accidentally or only temporarily. (2) In this section, foreign means— (a) registered in a convention country, in the case of a vessel or aircraft; and (b) owned by a person resident in a convention country, in the case of a land vehicle. Compare: 1953 No 64 s 79 72 Part 4 cl 137 DRAFT FOR CONSULTATION Patents 133 No infringement for use to produce information required by law on product exploitation It is not an infringement of a patent for a person to exploit the invention solely for uses reasonably related to the development and submission of information required under New Zealand law or the law of any other country that regulates the exploitation of any product. Compare: 1953 No 64 s 68B Counterclaim for revocation of patent 134 Defendant may counterclaim for revocation of patent A defendant may apply by way of counterclaim in infringement proceedings for revocation of the patent on any of the grounds stated in section 105 or, in the case of a government department, the ground stated in section 106. Bringing infringement proceedings 135 Who may bring infringement proceedings Infringement proceedings may be brought by— (a) the patentee: (b) an exclusive licensee for any infringement that occurs after the date of the licence. 136 When and how proceedings may be brought (1) Infringement proceedings may not be brought until the patent is granted. (2) However, section 77 enables infringement proceedings to relate to infringements before the patent is granted in the circumstances set out in that section (and subject to the defence in section 78). (3) Sections 149 to 151 contain notice and registration requirements for civil proceedings (including infringement proceedings) relating to interests in patents. 137 Proceedings brought by exclusive licensee (1) If an exclusive licensee brings infringement proceedings,— (a) the patentee must be added as a defendant unless joined as a plaintiff; and 73 DRAFT FOR CONSULTATION Patents Part 4 cl 137 (b) a 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 exclusive licensee as a result of the infringement; or (ii) the profits earned as a result of the infringement. (2) A patentee added as a defendant is not liable for costs unless the patentee actually defends the proceedings. Compare: 1953 No 64 s 72 Relief for infringement 138 Types of relief available for infringement The relief that a Court may grant for an infringement of a patent includes— (a) an injunction; and (b) at the option of the plaintiff, damages or an account of profits. Compare: 1953 No 64 s 69 139 Court must not award damages or account of profits if innocent infringement (1) A 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 reasonably to have known, that the patent existed. (2) 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; and (b) the person knew, or ought reasonably to have known, of the product. (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) 140 Court must refuse damages for infringement before amendment to accepted specification unless requirements met 74 Part 4 cl 143 DRAFT FOR CONSULTATION Patents (1) If an amendment has been made to an accepted complete specification under this Act, a Court must not award damages for an infringement that occurs before the date of the decision to allow the amendment. (2) 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 knowledge; or (b) it is only an amendment to correct an obvious mistake. Compare: 1953 No 64 s 68(3) 141 Court may refuse damages if renewal fees not paid A Court may refuse to award damages for an infringement that occurs after a failure to pay any renewal fee for the patent within the prescribed period or any extended period. Compare: 1953 No 64 s 68 142 Limits on damages and accounts of profits do not affect power to grant injunction Nothing in sections 139 to 141 affects a Court’s power to grant an injunction in infringement proceedings. Compare: 1953 No 64 s 68(4) 143 Court may grant relief for partially valid patent (1) If it is found in infringement proceedings that a patent is only partially valid, a Court may grant relief for that part of the patent that is valid and infringed. (2) However, the Court may grant damages, an account of profits, or costs for that part of the patent only if the plaintiff proves that the specification for the patent was framed in good faith and with reasonable skill and knowledge. (3) 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 should be counted. (4) A Court may, as a condition of the relief, direct that the specification be amended by an application under section 85 (which relates to the amendment of a specification with the leave of a Court), and the application may be made even if the 75 DRAFT FOR CONSULTATION Patents Part 4 cl 143 other issues in the infringement proceedings have not yet been determined. Compare: 1953 No 64 s 71 144 Court may grant costs for subsequent proceedings if validity of specifications contested (1) If the validity of a claim of a specification is contested in proceedings and a Court finds the claim to be valid, the Court may certify that the claim’s validity was contested in those proceedings. (2) A party who is relying on the validity of that claim in any subsequent infringement or revocation proceedings is then entitled to reasonable solicitor-client costs for the certified claim if a final order or judgment is made or given in favour of that party. (3) This section does not apply to the costs of any appeal in those proceedings. Compare: 1953 No 64 s 73 144A 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 non-infringement 145 Court may make declaration of non-infringement (1) A 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 acknowledgement to that effect and has given B full written particulars of the relevant product or process; and (b) A has undertaken to pay a reasonable sum for B’s expenses in obtaining advice on the declaration sought; and (c) B has not given that acknowledgement. 76 Part 4 cl 149 DRAFT FOR CONSULTATION Patents (2) It does not matter that B has not asserted anything to the contrary. Compare: 1953 No 64 s 75(1) 146 When proceedings for declaration of non-infringement may be brought (1) Proceedings for a declaration of non-infringement may be brought at any time after the date of the publication of the accepted complete specification. (2) If proceedings are brought before the grant of the patent under subsection (1), references to the patentee and B in section 145 must be read as references to the applicant for the patent. Compare: 1953 No 64 s 75(4) 147 Costs in declaration of non-infringement The costs of the parties in proceedings for a declaration of non-infringement are at the discretion of the Court. Compare: 1953 No 64 s 75(2) 148 Validity of patent not at issue in proceedings for, and not affected by, declaration of non-infringement (1) The validity of a claim of the specification of a patent must not be questioned in proceedings for a declaration of noninfringement. (2) Accordingly, whether or not a declaration is made does not 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 149 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 interest in a patent that is not registered under this Act unless A has first given at least 1 month’s written notice to the proposed defendant (B) of— (a) A’s intention to bring proceedings; and 77 DRAFT FOR CONSULTATION Patents Part 4 cl 149 (b) A’s address for service. (2) If the interest is capable of being registered under this Act, B may require A to register A’s interest in the patent by giving A written notice of the requirement within 1 month of receiving A’s notice of intention to bring proceedings. (3) If B gives A notice of the requirement to register A’s interest in accordance with subsection (2), A must not bring civil proceedings in respect of that interest against B unless A registers the interest— (a) within 6 months of B giving that notice; and (b) at least 1 month before A commences proceedings. (4) In this section and section 150, interest in a patent means an interest to which a person may be entitled as owner, mortgagee, licensee, or otherwise in a patent. Compare: 1953 No 64 s 85(1)(a), (1)(c), (2) 150 Interests must be registered at least 1 month before bringing civil proceedings on registered interests A person must not bring civil proceedings in respect of any interest in a patent (as defined in section 149(4)) that is registered under this Act unless that interest was registered— (a) if section 149(3) applies, within the time limits required by that subsection; and (b) in any other case, at least 1 month before the person commences the proceedings. Compare: 1953 No 64 s 85(1)(b) 151 Application of Limitation Act 1950 (1) Nothing in section 149 or section 150 enables persons to bring proceedings 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 149 or section 150. Compare: 1953 No 64 s 85(3) Standing for Attorney-General 152 Attorney-General may appear in patent proceedings (1) The Attorney-General may do all or any of the following things if he or she considers that the public interest is or may be involved: 78 Part 4 cl 154 DRAFT FOR CONSULTATION Patents (a) bring proceedings to test the validity of a patent: (b) apply for the revocation of a patent: (c) appear and be heard, and take any steps that a party could take, in any proceedings before a court or the Commissioner for the grant, amendment, or revocation of a patent, or for a declaration of non-infringement: (d) intervene in, and take over the control and conduct of, any proceedings referred to in paragraph (c) with the consent of a party. (2) In any of those proceedings in which the Attorney-General appears, costs may be awarded either to or against the Attorney- General. Compare: 1953 No 64 s 76(1), (3) 153 Parties must give notice to Solicitor-General if questioning patent validity (1) A party to proceedings before a court or the Commissioner who intends to question the validity of a patent must give notice of that intention to the Solicitor-General. (2) That notice must be given in writing at least 21 days before the hearing. (3) The party must also supply the Solicitor-General with any papers filed in the proceedings by that or any other party to the proceedings that the Solicitor-General requests. Compare: 1953 No 64 s 76(2) Subpart 4—Patent dealings, patent licences, and transmission of interests in patents Registration of assignments, licences, and other interests in patents 154 Application for registration of assignments, licences, and other interests in patents (1) A person who acquires a patent or share in a patent, or an interest in a patent, must apply to the Commissioner for registration of the person’s title or of the person’s interest. (2) A person who disposes of a patent or share in a patent, or who confers an interest in a patent, may apply to the Commissioner for registration of the acquirer’s title or interest. 79 DRAFT FOR CONSULTATION Patents Part 4 cl 154 (3) In either case, the application must be made, and any prescribed documents must also be provided to the Commissioner, in the prescribed manner. (4) This section applies to acquisitions and disposals by assignment, transmission, operation of law, mortgage, licence, or by any other means. Compare: 1953 No 64 s 84(1), (2), (5) 155 Registration of assignments, licences, and other interests in patents If an application is made under section 154, the Commissioner, on proof of the person’s title or interest satisfactory to the Commissioner,— (a) must register the person’s title or interest; and (b) may issue a replacement copy of the patent in the name of the new patentee; and (c) must retain the documents provided under section 154(3) or a copy of those documents. Dispensing with probate and letters of administration for deceased patentees and applicants 156 Commissioner may dispense with probate and letters of administration (1) The Commissioner may, without requiring the production of probate or letters of administration, register a person as a patentee in place of a deceased patentee, or allow a person to take over the application of a deceased applicant or apply for a patent in place of a deceased inventor, if— (a) that person (A) applies in the prescribed manner; and (b) the Commissioner is satisfied that A— (i) has obtained or is entitled to obtain probate of the will of the deceased person; or (ii) has obtained or is entitled to obtain letters of administration in the deceased person’s estate in the place where he or she was living at the time of his or her death; or (iii) is the personal representative of the deceased person in the place where he or she was living at the time of his or her death; and 80 Part 4 cl 158 DRAFT FOR CONSULTATION Patents (c) the Commissioner is satisfied that probate of that will or those letters of administration have not been granted or resealed in New Zealand; and (d) the Commissioner is satisfied that the interests of creditors of the deceased person, and of all persons benefi- cially interested under his or her will or on his or her intestacy, will be adequately safeguarded if the Commissioner registers A as the patentee. (2) If A is registered as the patentee under this section, A holds the patent subject to all existing interests and equities affecting it. 157 Application of power to dispense with probate and letters of administration (1) Section 156 applies whether the deceased patentee or applicant has died before or after the commencement of this section. (2) Nothing in section 70 or section 73 of the Administration Act 1969 restricts the operation of this section. Compare: 1953 No 64 s 86(2)–(4) Termination of contracts 158 Termination of certain contracts after patent ceases to be in force (1) This section applies to the following contracts: (a) a contract for the sale or lease of a patented product: (b) a contract relating to a licence to exploit a patented invention. (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 invention was protected at the time the contract was made, has or have ceased to be in force. (3) Subsection (2)— (a) applies whether the contract was made before or after the commencement of this section; and (b) applies despite anything to the contrary in the contract or in any other contract; and (c) does not limit any right to terminate a contract exercisable apart from this section. Compare: 1953 No 64 s 67 81 DRAFT FOR CONSULTATION Patents Part 4 cl 159 Subpart 5—Compulsory licences 159 Compulsory licences (1) An 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 of the granting of a patent; or (b) the expiry of 4 years from the patent date. (2) 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) 160 Court may order grant of licence (1) The Court may make an order for the grant of a licence in accordance with an application under section 159 on any terms that the Court thinks fit if the Court is satisfied that either of the grounds referred to in section 159(2) is established. (2) A licence granted under this section— (a) is not exclusive; and (b) must not be assigned otherwise than in connection with the goodwill of the business in which the patented invention is used; and (c) is limited to the supply of the patented invention predominantly in New Zealand; and (d) must be recorded in the patents register by the Commissioner as soon as is reasonably practicable after the Commissioner receives a copy of the order made under 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) 161 Remuneration payable to patentee If a licence is granted under section 160 to a person, that person must pay the remuneration to the patentee— (a) that is agreed between that person and the patentee; or 82 Part 4 cl 165 DRAFT FOR CONSULTATION Patents (b) that is determined by a method agreed between that person and the patentee; or (c) that is determined by the Court on the application of that person or the patentee in default of agreement. Compare: 1953 No 64 s 46(6) 162 Licence must not be granted in certain circumstances (1) A licence must not be granted under section 160 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 160 for a patent relating to an integrated circuit. (3) A licence must not be granted under section 160 that would be contrary to a treaty, convention, arrangement, or engagement applying to New Zealand and a convention country. Compare: 1953 No 64 ss 46(7), (8), 54(3) 163 Exercise of powers on applications under section 159 The powers of the Court on an application under section 159 must be exercised with a view to ensuring that the inventor or other person beneficially entitled to a patent receives reasonable remuneration having regard to the nature of the invention. Compare: 1953 No 64 s 48 164 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. (2) Subsection (1) does not limit any other method of enforcement. Compare: 1953 No 64 s 54(1) Subpart 6—Crown use of patented inventions 165 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. 83 DRAFT FOR CONSULTATION Patents Part 4 cl 165 (2) Anything done under subsection (1) does not amount to an infringement of the patent concerned. (3) Subsection (1)— (a) is subject to sections 172 to 174; but (b) applies despite any other provision of this Act. (4) For the purposes of this section and sections 166 to 168,— (a) any use of an invention for the supply to the Government 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 New Zealand and the Government of that country: (b) the power of a government department or a person authorised 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 powers conferred by this section that are no longer required for the purpose for which they were made: (c) the power of a government department or a person authorised by a government department under this section to sell a patented invention does not, in the case of a patent relating to an integrated circuit, extend to the sale of the invention to the public. Compare: 1953 No 64 s 55(1), (2) 166 Regulations may declare use to be Crown use Any use of an invention must, for the purposes of section 165 and sections 167 to 171, be treated as a use for the services of the Crown if the Governor-General, 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 in New Zealand of any enterprise or undertaking in which the Crown or any government department has a complete or an almost complete monopoly. Compare: 1953 No 64 s 55(3) 84 Part 4 cl 169 DRAFT FOR CONSULTATION Patents 167 Protection of buyers The buyer of any products sold in the exercise of powers conferred by section 165, and any person claiming through the 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) 168 Rights of third parties in respect of Crown use (1) This section applies to any use of a patented invention, 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 165; or (b) by the patentee or applicant for the patent to the order of a government department. (2) 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 department is of no effect to the extent that those provisions— (a) restrict or regulate the use of the invention; or (b) restrict or regulate the use of any model, document, or information relating to the invention; or (c) provide for the making of payments for any of those uses or calculated by reference to any of those uses. (3) The reproduction or publication of any model or document in connection with a use referred to in subsection (2) is not an infringement of any copyright subsisting in the model or document. (4) Subsection (2)— (a) applies whether the licence, assignment, or agreement is made before or after the commencement of this section; and (b) is subject to sections 172 and 174. Compare: 1953 No 64 s 56 169 Reference of disputes concerning Crown use (1) The following disputes may be referred to the Court by either party to the dispute in the manner that is prescribed by rules of the Court: 85 DRAFT FOR CONSULTATION Patents Part 4 cl 169 (a) any dispute concerning the exercise by a government department or a person authorised by a government department of the powers conferred by sections 165 to 168: (b) any dispute concerning the terms for the use of an invention for the services of the Crown under that section. (2) In any proceedings under this section, the government department 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; and (b) if the patentee is a party to the proceedings, apply for the revocation of the patent under section 104 or section 106; and (c) in any case, put in issue the validity of the patent without applying for its revocation. (3) In determining any dispute referred to the Court under this section, the Court must have regard to— (a) any benefit or compensation that the patentee of the patented invention may have received, or may be entitled to receive, directly or indirectly from any government department or person authorised by a government department in respect of the invention; and (b) the need to ensure that the patentee receives reasonable remuneration having regard to the nature of the patented invention. Compare: 1953 No 64 s 57(1)–(3) 170 Court may refer matter to official referee or arbitrator (1) In any proceedings under section 169, 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. (2) References to the Court in section 169 must be construed as including a reference to the official referee or arbitrator. Compare: 1953 No 64 s 57(4) 86 Part 4 cl 172 DRAFT FOR CONSULTATION Patents 171 Special provisions as to Crown use during emergency (1) The powers exercisable in relation to an invention by a government department or a person authorised by a government department under section 165 include the power to exploit the patented invention for any purpose that appears to the government department necessary or desirable— (a) to avoid prejudice to the security or defence of New Zealand; or (b) to assist in the exercise of powers and the implementation of civil defence emergency management during a state of emergency declared under the Civil Defence Emergency Management Act 2002. (2) This section is subject to sections 172 to 174. Compare: 1953 No 64 s 58 172 Nature and scope of rights under section 165 (1) The right to use a patented invention under section 165— (a) is not exclusive; and (b) must not be assigned otherwise than in connection with the goodwill of the business in which the patented invention is used; and (c) is, despite section 165(4)(a), limited to the supply of the patented invention predominantly in New Zealand by a government department or a person authorised by a government department under that section. (2) The right to use a patented invention under section 165 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 exist and are unlikely to recur. (3) The right to use a patented invention under section 165 is, except in a case to which section 171 applies, subject to the government department or person authorised by a government department under section 165 having first taken all reasonable 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 87 DRAFT FOR CONSULTATION Patents Part 4 cl 173 173 Duty to inform patentee (1) If any use of a patented invention is made by or with the authority of a government department under section 165, the government department must, as soon as practicable 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. (2) 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 security or defence of New Zealand. Compare: 1953 No 64 s 58B 174 Patentee entitled to remuneration The Crown must, if an act is done under section 165, pay the remuneration to the patentee— (a) that is agreed between the patentee and the Crown; or (b) that is determined by a method agreed between the patentee and the Crown; or (c) that is determined by the Court under section 169 in default of agreement. Compare: 1953 No 64 s 58C Subpart 7—Mention of inventor in patent, specification, and patents register 175 Mention of inventor in patent, specification, and patents register (1) This section applies if the Commissioner is satisfied, on a request or claim made under section 176,— (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 been made; or (ii) a substantial part of an invention for which a patent application has been made; and (b) that the patent application is a direct result of that person being the inventor. (2) The Commissioner must cause the person to be mentioned as inventor in— 88 Part 4 cl 177 DRAFT FOR CONSULTATION Patents (a) any patent granted in relation to the patent application; and (b) the complete specification; and (c) the patents register. (3) The mention of a person as inventor under this section does not confer or derogate from any rights under the patent. (4) For the purposes of this section,— (a) the actual deviser of an invention or of a part of an invention is to be treated as the inventor, whether or not any other person is, for any of the other purposes of this Act, treated as the true and first inventor; and (b) no person is to be treated as the inventor of an invention or a part of an invention by reason only that it was imported by the person into New Zealand. Compare: 1953 No 64 s 23(1), (2) 176 Request or claim to be mentioned as inventor (1) A request or claim made for the purposes of section 175 must 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 specification becomes open to public inspection; or (b) within a further period (not exceeding 1 month) that the Commissioner may allow. (3) The Commissioner may only extend the period under subsection (2)(b) on a request to that effect made to the Commissioner before the expiry of the period of 2 months. Compare: 1953 No 64 s 23(3)–(5) 177 Commissioner must give notice of claim and opportunity to be heard (1) If a claim is made under section 176, the Commissioner must give notice of the claim to every applicant for the patent (not being the claimant) and to any other person that the Commissioner considers is interested. (2) The Commissioner must, before deciding on any request or claim made under section 176, give a reasonable opportunity 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: 89 DRAFT FOR CONSULTATION Patents Part 4 cl 177 (b) any person to whom notice of the claim has been given under this section. Compare: 1953 No 64 s 23(7) 178 Certificate concerning ownership (1) A person who alleges that another person should not have been mentioned as inventor under sections 175 to 177 may apply to the Commissioner for a certificate to that effect. (2) The Commissioner may issue a certificate that specifies that a person should not have been mentioned as inventor under those sections. (3) If the Commissioner issues a certificate, the Commissioner must rectify the specification and the patents register accordingly. (4) 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) Part 5 Patent attorneys Subpart 1—Patent attorney title and privileges 179 Title of patent attorney A person is a patent attorney if he or she— (a) is registered; and (b) holds a current practising certificate. 180 Protection of title patent attorney (1) No person may, either alone or in partnership with any other person, describe himself or herself, or hold himself or herself out, or permit himself or herself to be described or held out, as a patent attorney, or patent agent, unless the individual is a patent attorney. (2) No company may hold itself out or permit itself to be described or held out as a patent attorney or patent agents, unless all of the directors and shareholders are patent attorneys. 90 Part 5 cl 182 DRAFT FOR CONSULTATION Patents (3) A person who contravenes this section commits an offence, and is liable on summary conviction to a fine not exceeding $5,000. Compare: 1953 No 64 s 103 181 Restrictions on acting as patent attorney (1) No person may act as a patent attorney, either alone or in partnership with any other person, unless the person is a patent attorney or, in the case of a partnership, unless that person and all of the other partners are patent attorneys. (2) No company may act as a patent attorney unless all of the directors and shareholders are patent attorneys. (3) A person acts as a patent attorney for the purposes of this section and section 188 if, and only if, the person does, or undertakes to do, on behalf of someone else, any of the following in New Zealand for gain: (a) applies for or obtains patents in New Zealand or elsewhere: (b) prepares or amends specifications or other documents for the purposes of this Act or of the patent law of any country: (c) gives advice other than of a scientific or technical nature as to the validity of patents or their infringement. (4) A person who contravenes this section commits an offence, and is liable on summary conviction to a fine not exceeding $5,000. Compare: 1953 No 64 s 103 182 Liability of officer of company that commits offence If a company is convicted of an offence against section 180 or 181, every director and every person concerned in the management of the company 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 (b) that he or she— (i) knew, or could reasonably be expected to have known, that the offence was to be or was being committed; and (ii) failed to take all reasonable steps to prevent or stop it. Compare: 1953 No 64 s 108 91 DRAFT FOR CONSULTATION Patents Part 5 cl 183 183 Exception for carrying on of business of patent attorney by personal representative Nothing in sections 180(1) and 181(1) prevents a personal representative of a deceased patent attorney who is not also a patent attorney from carrying on the activities set out in those subsections in the course of carrying on the business of the deceased patent attorney if the personal representative— (a) does not carry on the business for a period that exceeds 12 months; and (b) employs a patent attorney to manage the business. Compare: 1953 No 64 s 103(6) 184 Exception for companies carrying on business in certain circumstances Nothing in sections 180(2) and 181(2) prevents a company from carrying on the activities set out in those subsections merely because a personal representative of a deceased patent attorney holds shares in the company if the personal representative disposes of those shares by the end of a period of 12 months beginning on the day that the deceased patent attorney died. 185 Exception for pre-1955 companies Nothing in section 180 or section 181 applies to a company, or any person in his or her capacity as an employee, manager, or director of that company if— (a) the company carried on business as a patent attorney immediately before 1 January 1955, and was carrying on business as a patent attorney immediately before the commencement of this section; and (b) at least one manager or director of the company is a patent attorney. 186 Exception for employees Nothing in section 180 or section 181 applies to a person acting in his or her capacity as an employee in respect of anything done, or undertaken to be done, for that person’s employer in that capacity. 92 Part 5 cl 189 DRAFT FOR CONSULTATION Patents 187 Exception for barristers or solicitors Nothing in section 181 applies to any barrister or solicitor of the High Court of New Zealand (but the restrictions in section 188 instead apply). 188 Restrictions on barristers or solicitors (1) No barrister or solicitor of the High Court of New Zealand who is not also a patent attorney may prepare a specification or a document relating to an amendment of a specification unless he or she is— (a) acting under the instruction of a patent attorney; or (b) directed to do so by any court of New Zealand. (2) A person who contravenes subsection (1) commits an offence, and is liable on summary conviction to a fine not exceeding $1,000. 189 Powers of patent attorneys (1) A patent attorney is not guilty of an offence against sections 64 to 66 of the Law Practitioners Act 1982 as a result only of— (a) advising on a patent, trademark, design, or related matter; or (b) preparing, drawing, or reviewing— (i) the provisions of any conveyance, deed, or agreement that relates to a patent, trademark, design, or related matter; or (ii) any conveyance, deed, or agreement by which only rights related to a patent, trademark, design, or related matter are assigned; or (c) conducting proceedings before the Commissioner under this Act; or (d) preparing documents for use in proceedings before the Commissioner under this Act; or (e) providing services incidental to the services referred to in paragraphs (a) to (d). (2) Nothing in this section authorises a patent attorney who is not also a barrister and solicitor of the High Court to transact business or conduct proceedings in a court. Compare: 1953 No 64 s 101 93 DRAFT FOR CONSULTATION Patents Part 5 cl 190 Subpart 2—Registration and practising certificates 190 Qualifications for registration as patent attorney (1) The Commissioner must register as a patent attorney any individual who— (a) applies in the prescribed manner; and (b) is not disqualified from registration under section 191; and (c) is in at least 1 of the categories in subsections (2) to (4). (2) A person in the first category— (a) holds qualifications that are certified by the Board as— (i) consisting of a pass in all of the examinations conducted by the Board; or (ii) equivalent to a pass in all of the examinations conducted by the Board; and (b) is certified by the Board as meeting the prescribed criteria (if any) relating to experience that must be satisfied by candidates for registration; and (c) is, in the opinion of the Commissioner, a fit and proper person to practise as a patent attorney. (3) A person in the second category— (a) is registered as a patent attorney in an overseas jurisdiction; and (b) holds qualifications that are certified by the Board as equivalent to a pass in all of the examinations conducted by the Board; and (c) is certified by the Board as meeting the prescribed criteria (if any) relating to experience that must be satisfied (d) either,— by candidates for registration; and (i) is, in the opinion of the Commissioner, a fit and proper person to practise as a patent attorney; or (ii) is registered in an overseas jurisdiction that, in the opinion of the Commissioner, has a substantially similar character requirement, and is not the subject of current disciplinary proceedings or a suspension order. (4) A person in the third category is a person who is entitled to be registered as a patent attorney in accordance with the Trans- Tasman Mutual Recognition Act 1997. 94 Part 5 cl 194 DRAFT FOR CONSULTATION Patents 191 Disqualification from registration A person is disqualified from registration if he or she has been convicted of a crime involving dishonesty (as defined in section 2(1) of the Crimes Act 1961) at any time in the preceding 5 years. 192 Practising certificates (1) The Commissioner must issue a practising certificate to any person who is registered as a patent attorney if the person applies in the prescribed manner. (2) The Commissioner may remove a person’s registration if a person does not hold a current practising certificate for more than 12 months, unless the person does not hold a current practising certificate because that person has required his or her registration to be suspended under section 196. 193 Commissioner may suspend registration for unpaid fees (1) If the prescribed practising fees or prescribed penalties remain unpaid for 30 days or more, the Commissioner may— (a) suspend the person’s registration until the person pays the fees and any prescribed penalties; and (b) if the person does not pay the fees and any prescribed penalties within the prescribed period, remove his or her registration. (2) Subsection (1) is in addition to any action taken under section 294(2). 194 Removal from register of patent attorneys The Commissioner may remove a person’s registration only— (a) if the person dies; or (b) if the person, by written notice, requires the Commissioner to remove his or her registration; or (c) in accordance with section 192 (which relates to practising certificates); or (d) in accordance with section 193 (which relates to suspension of registration for unpaid fees); or (e) in accordance with section 210 (which relates to disciplinary penalties); or (f) in accordance with section 215 (which relates to nonpayment of fines, money, or costs). 95 DRAFT FOR CONSULTATION Patents Part 5 cl 195 195 Suspensions from register of patent attorneys (1) The Commissioner may suspend a person’s registration only in accordance with— (a) section 193 (which relates to suspension of registration for unpaid fees); or (b) section 196 (which relates to voluntary suspension); or (c) section 210 (which relates to disciplinary penalties); or (d) section 215 (which relates to non-payment of fines, money, or costs); or (e) section 230 (which relates to the obligation to notify the Commissioner of changes to matters contained in the register of patent attorneys). (2) The Commissioner must record any suspension in the register of patent attorneys. 196 Voluntary suspension The Commissioner may suspend a person’s registration if the person, by written notice, requires it (and then for the period required, subject to the regulations). 197 Duties of Commissioner on removal or suspension The Commissioner must comply with any applicable procedures under the regulations in exercising his or her power to remove or suspend a person’s registration. 198 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) a patent attorney partnership does not cease to be a patent attorney partnership by reason only that the registration of a partner in that partnership has been suspended; and (b) a patent attorney company does not cease to be a patent attorney company by reason only that registration of a director or shareholder of the company has been suspended. (3) At the end of the period of suspension, the person’s registration is immediately revived (unless there is some other ground to suspend or remove that person’s registration under this Part). 96 Part 5 cl 202 DRAFT FOR CONSULTATION Patents Subpart 3—Standards of conduct and discipline Code of conduct 199 Patent attorneys subject to code of conduct (1) Every patent attorney is subject to a code of conduct. (2) The purposes of a code of conduct are— (a) to provide a framework for fair and equitable dealing between patent attorneys and their clients: (b) to provide a means for assisting the public to understand the obligations of patent attorneys to their clients: (c) to promote standards for dispute resolution: (d) to establish standards for the discipline of patent attorneys, including minimum standards of care and competence for practice as a patent attorney. 200 Applicable code of conduct The applicable code of conduct is— (a) the code of conduct that is in force and developed by the Institute, as approved by the Board under section 201; or (b) if there is no such code, the code issued by the Board under section 202 and remaining in force. 201 Board may approve code of conduct developed by Institute (1) The Board must encourage the Institute to— (a) develop and maintain a code of conduct for the profession of patent attorneys that is consistent with the purposes set out in section 199; and (b) consult with persons having an interest in its subject matter, including patent attorneys who are not members of the Institute (if any) in the course of developing and maintaining the code of conduct. (2) The Board may approve a code of conduct developed by the Institute (and any subsequent amendments) if, in the Board’s opinion, it is consistent with the purposes set out in section 199. (3) A code of conduct approved under subsection (2) must include procedures for its amendment, revocation, or replacement. 202 Board must issue its own code in certain circumstances The Board must issue its own code of conduct under this section if,— 97 DRAFT FOR CONSULTATION Patents Part 5 cl 202 (a) by the end of the period of 3 months beginning on the day this section comes into force, the Institute has not submitted a code of conduct that has been approved by the Board under section 201; or (b) at any other time, the Board considers it necessary to do so in order to ensure that a code of conduct that best fits the purposes in section 199 is in force. 202A Availability of code of conduct The Board must— (a) ensure that the code of conduct is available for inspection by the public at reasonable times, free of charge, on (b) ensure that hard copies of the code of conduct can be an Internet website; and purchased at a reasonable cost; and (c) encourage patent attorneys to inform their clients that the code exists and about how they can access it. 203 Status of code of conduct The code of conduct and every amendment to that code must be treated as regulations for the purposes of the Regulations (Disallowance) Act 1989, but are not regulations for the purposes of the Acts and Regulations Publication Act 1989. Disciplining of patent attorneys 204 Complaints about patent attorneys (1) A person may complain to the Commissioner in the prescribed manner that— (a) a person has been convicted of an offence reflecting adversely on his or her fitness to practise as a patent attorney: (b) a person who is registered as a patent attorney was not qualified to register as a patent attorney: (c) a person who is registered as a patent attorney was registered on the basis of false or misleading information: (d) a person has breached the code of conduct (which may include an allegation relating to unsatisfactory conduct, negligence, or incompetence). (2) A complainant who makes a complaint under subsection (1)(d) does not need to refer to specific provisions in the code, but 98 Part 5 cl 209 DRAFT FOR CONSULTATION Patents may instead refer generally to the conduct of a person when acting in his or her capacity as a patent attorney. (3) A complaint, and any decision on the complaint, may relate to a person who is no longer a registered patent attorney, but who was a registered patent attorney at the time of the relevant conduct. 205 Commissioner must refer complaint to Tribunal The Commissioner must, as soon as practicable after receiving a complaint,— (a) refer it to the Tribunal; and (b) send particulars of the complaint to the person to whom the complaint relates, and invite him or her to provide a written explanation to the Tribunal. 206 Assessment of complaint The Tribunal must examine the complaint as soon as practicable after receiving it, to determine if it will dismiss it in accordance with section 207. 207 Dismissal of complaint The Tribunal may dismiss a complaint if, in the Tribunal’s opinion,— (a) it is vexatious, frivolous, or trivial; or (b) it does not raise a serious issue as to whether there is a ground or there are grounds for the patent attorney to be disciplined; or (c) because of the length of time that has elapsed between the date when the subject-matter of the complaint arose and the date when the complaint is made, an inquiry into the complaint is no longer practicable. 208 Tribunal must conduct inquiry The Tribunal must conduct an inquiry into a complaint it receives, unless it dismisses the complaint under section 207. 209 Grounds for discipline of patent attorneys (1) After conducting an inquiry, the Tribunal may make an order under section 210 if it is satisfied that a person— (a) has been convicted, whether before or after he or she became registered, by any court in New Zealand or 99 DRAFT FOR CONSULTATION Patents Part 5 cl 209 elsewhere of any offence punishable by imprisonment for a term of 6 months or more if, in the Tribunal’s opinion, the commission of the offence reflects adversely on the person’s fitness to practise as a patent attorney; or (b) has breached the code of conduct (which may include an order that such conduct amounts to negligence or incompetence); or (c) has, for the purpose of obtaining registration or a practising certificate (either for himself or herself or for any other person),— (i) either orally or in writing, made any declaration or representation knowing it to be false or misleading in a material particular; or (ii) produced to the Board or Commissioner or made use of a document knowing it to contain a declaration or representation referred to in subparagraph (i); or (iii) produced to the Board or Commissioner or made use of any document knowing that it was not genuine. (2) The Tribunal may make the order whether or not the person is still a patent attorney. 210 Disciplinary penalties (1) In any case to which section 209 applies, the Tribunal may make the following orders: (a) that the person’s registration be removed, and that the person may not apply for re-registration before the expiry of a specified period: (b) that the person’s registration 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): (c) that the person be censured (a censure): (d) that the person must pay a fine not exceeding $5,000 (a fine order): (e) that the person must refund money or return money or property to a person specified in the order (a remedial order): 100 Part 5 cl 212 DRAFT FOR CONSULTATION Patents (f) that the person must pay a specified sum to another person specified in the order for loss or damage caused by the first person’s conduct (a remedial order): (g) that the person do a specified act or acts to remedy the complaint (a remedial order). (2) The Tribunal may, in the same case, make— (a) more than 1 remedial order; or (b) a fine order in addition to either— (i) a suspension order; or (ii) a censure; or (c) a remedial order in addition to either— (i) a suspension order; or (ii) a censure. (3) Otherwise, the Tribunal may make only 1 type of order under subsection (1) for a case. (4) No fine may be imposed under subsection (1)(d) in relation to an act or omission that constitutes an offence for which the person has been convicted by a court. 211 Orders for payment of costs (1) In any case to which section 210 applies, the Tribunal may— (a) order that the person must pay the reasonable costs and expenses of, and incidental to, the investigation or inquiry made, and any hearing conducted, by the Tribunal (which may include expenses incurred by the Commissioner in providing administrative support to the Tribunal): (b) order that the person in respect of whom the complaint was made pay to the complainant the costs that the Tribunal considers were reasonably incurred by the complainant in respect of the investigation or inquiry made, and any hearing conducted, by the Tribunal. (2) The order may be entered as a judgment of the Court and, with the leave of the Court, may be enforced accordingly. 212 Tribunal must notify Commissioner of orders (1) The Tribunal must, for the purposes of section 228, notify the Commissioner— (a) of any order it makes under section 210; and 101 DRAFT FOR CONSULTATION Patents Part 5 cl 212 (b) of any decision of which the Tribunal is notified that is a decision of the District Court or High Court on an appeal from a decision of the Tribunal. (2) If the person does not exercise his or her rights of appeal under section 216 or section 224 within the applicable time limit or has unsuccessfully exhausted his or her rights of appeal under those sections, the Tribunal may, in addition to notifying the Commissioner under subsection (1), publicly notify an order in any other way it thinks fit. (3) The Commissioner, subject to section 228(3), must take any action necessary to give effect to an order of the Tribunal in relation to the registration of a person on the register of patent attorneys. 213 Effect of order to pay money on right to damages An order made under section 210(1)(e), (f), or (g) does not affect any right of the person who is entitled to receive money or property under that order to recover damages in respect of the same loss, but that order must be taken into account in assessing damages. 214 Orders enforceable against former registered patent attorneys If the Tribunal, acting in accordance with this Act and the regulations in relation to a disciplinary matter, makes an order or 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. 215 Non-payment of fines, money or costs If money payable by a person under section 210(1)(d), (e), or (f) or under section 211 remains unpaid for 60 days or more, the Tribunal may notify the Commissioner in writing, and on notification the Commissioner may— (a) remove the person’s registration; or (b) suspend the person’s registration until the person pays the amount due and, if he or she does not do so within 12 months, remove his or her registration. 102 Part 5 cl 219 DRAFT FOR CONSULTATION Patents Appeals 216 Right of appeal (1) A person may appeal to a District Court against any decision of the Tribunal— (a) under section 207: (b) under section 210. (2) An appeal— (a) must be brought by way of notice of appeal in accordance with the rules of court; and (b) must be lodged within 20 working days after notice of the decision or action is communicated to the appellant, or within any further time the District Court allows on application made before or after the period expires. 217 Notice of right of appeal When notifying a person under this Act of any decision against which section 216 gives him or her a right of appeal, the Tribunal must also notify the person in writing of the right of appeal and the time within which an appeal must be lodged. 218 Decisions to have effect pending determination of appeal A decision against which an appeal under section 216 is lodged continues in force pending the determination of the appeal unless the District Court orders otherwise. 219 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 District Court— (a) may confirm, reverse, or modify the decision appealed against; and (b) may make any other decision that the Tribunal could have made. (4) The District Court must not review— (a) any part of a decision not appealed against; or (b) any decision not appealed against at all. 103 DRAFT FOR CONSULTATION Patents Part 5 cl 220 220 Court’s decision final Except as provided in section 224, the decision of the District Court on an appeal is final. 221 Court may refer matter back for reconsideration (1) Instead of determining an appeal, the District Court may direct the Tribunal to reconsider, either generally or in respect of any specified aspect, the whole or any part of the decision. (2) 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. (3) The Tribunal, after receiving a direction to reconsider,— (a) must reconsider the matter; and (b) in doing so, must— (i) take the court’s reasons into account; and (ii) give effect to the court’s directions. 222 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. 223 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 particulars of the affairs of a patent attorney or any other person. (2) 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 limitation, the privacy of any complainant); and (b) the public interest. 224 Appeal on question of law (1) A party to an appeal may appeal to the High Court against any determination of law arising in the appeal. (2) The appeal must be heard and determined in accordance with the appropriate rules of court. 104 Part 5 cl 227 DRAFT FOR CONSULTATION Patents (3) Part IV 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 modifications; but (b) only so far as it relates to appeals on questions of law. (4) Subsection (3) overrides subsection (2). Subpart 4—Register of patent attorneys 225 Commissioner to establish and maintain register of patent attorneys (1) The Commissioner must keep, in New Zealand, a register of patent attorneys in accordance with this Act and the regulations. (2) Section 259 provides for the Commission’s certificate to be prima facie evidence of matters relating to the register and registration of patent attorneys. 226 Purpose of register of patent attorneys The purpose of the register is to— (a) facilitate the functions of the Commissioner under this Act; and (b) enable persons who search the register in accordance with this Act to— (i) know whether or not a person is registered as a patent attorney and, if a person is registered as a patent attorney, to know the status of the person’s registration, and whether he or she has a current practising certificate; and (ii) find out the contact address and address for service of a patent attorney; and (iii) know whether a patent attorney has been the subject of a disciplinary order in the last 3 years and, in relation to persons who have had their registration suspended, that there is a suspension order in force. 227 Form of register of patent attorneys The register of patent attorneys may be— (a) an electronic register; or 105 DRAFT FOR CONSULTATION Patents Part 5 cl 227 (b) kept in any other manner that the Commissioner thinks fit. 228 Contents of register of patent attorneys (1) The register of patent attorneys must contain the information referred to in subsection (2), to the extent that it is relevant, in relation to— (a) each registered person; and (b) each person in respect of whom a suspension order is in force. (2) The information that must be contained in the register is— (a) the full name and contact address of the person: (b) the New Zealand address for service of the person: (c) the following matters on the status and history of the person’s registration: (i) the date on which the person was registered; and (ii) the period for which the most recent practising certificate was issued; and (iii) any order made on a disciplinary matter in the last 3 years; and (iv) any other current suspension, the ground under this Act for the suspension, its period, and any conditions for its termination; and (v) in relation to any voluntary suspension, a statement to the effect that the suspension was or is at that person’s request; and (d) any other prescribed information. (3) The Commissioner may publicly notify in the register an order made on a disciplinary matter only if the person has not exercised any right of appeal under section 216 or section 224 within the applicable time limit or has exhausted any right of appeal under those sections. 229 Search of register of patent attorneys A person may search the register of patent attorneys in accordance with this Act or regulations made under this Act. 230 Obligation to notify Commissioner of changes to matters contained in register of patent attorneys (1) If a patent attorney has provided his or her name, contact address, or address for service in accordance with section 228, 106 Part 5 cl 233 DRAFT FOR CONSULTATION Patents the patent attorney must inform the Commissioner of any changes to that information within 3 months after the change. (2) If the Commissioner becomes aware that a patent attorney has not provided information that the person has a duty to provide under subsection (1) within the prescribed time period, the Commissioner may suspend the person’s registration until the information is provided. 231 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 section 228; or (b) correct an error or omission on the part of the Commissioner or any other person. (2) If the Commissioner makes a change to the register of patent attorneys under subsection (1)(b), the Commissioner must send written notification to the affected person before making the change. Subpart 5—Establishment and operation of bodies connected with patent attorneys Patent Attorneys’ Standards Board 232 Patent Attorneys’ Standards Board of New Zealand The Patent Attorneys’ Standards Board of New Zealand is established. 233 Functions of Board The functions of the Board are— (a) to conduct examinations in the prescribed subjects or subject groups: (b) to accredit persons to provide courses of study (including examinations) in the prescribed subjects or subject groups: (c) to assess the qualifications and experience held by candidates for registration against the requirements under this Part or the regulations: (d) to publish (whether by electronic means or otherwise) information related to the Board’s functions under this 107 DRAFT FOR CONSULTATION Patents Part 5 cl 233 Part or the requirements relating to patent attorneys under this Part or the regulations: (e) to exercise powers and perform duties in respect of a code of conduct for patent attorneys in accordance with section 201 and section 202: (f) to recommend persons for appointment to the Tribunal: (g) to carry out any functions that are incidental and related to, or consequential on, its functions set out in paragraphs (a) to (f). 234 Capacity and powers (1) The Board has only the statutory powers conferred by this Act and any other Act. (2) The Board may exercise its powers only for the purpose of performing its functions. 236 Membership of Board (1) The membership of the Board consists of— (a) the Commissioner: (b) an Assistant Commissioner of Patents who is nominated by the Commissioner: (c) no less than 2 persons who are— nominated by the Institute; and (i) (ii) appointed by the Minister. (2) The Commissioner is the chairperson of the Board. 237 Further provisions relating to Board and its members Schedule 1 applies to the Board and its members. New Zealand Patent Attorneys’ Disciplinary Tribunal 238 New Zealand Patent Attorneys’ Disciplinary Tribunal The New Zealand Patent Attorneys’ Disciplinary Tribunal is established. 239 Membership of Tribunal (1) The Tribunal consists of one person who is appointed by the Minister on the recommendation of the Board. (2) The person appointed by the Minister must be a person who— (a) is not a registered patent attorney; and 108 Part 5 cl 242 DRAFT FOR CONSULTATION Patents (b) holds a current practising certificate as a barrister or solicitor of the High Court; and (c) has had not less than 7 years’ practice as a barrister or solicitor. 240 Functions of Tribunal The functions of the Tribunal are to receive, investigate, and hear complaints about, and to inquire into the conduct of, and discipline, patent attorneys. 241 Procedure of Tribunal Subject to this Act and the regulations, the Tribunal may regulate its procedure as it sees fit. 242 Tribunal’s powers of investigation (1) For the purposes of any investigation or inquiry, the Tribunal or any person authorised by it in writing to do so may— (a) examine any papers, documents, records, or things: (b) require any person to produce for examination any papers, documents, records, or things in that person’s possession or under that person’s control, and to allow copies of or extracts from any such papers, documents, or records to be made: (c) require any person to supply, in a form approved by or acceptable to the Tribunal,— (i) any information or particulars that it requires: (ii) any copies of or extracts of papers, documents, or records supplied or produced to it: (d) require any person to verify any written information or particulars or any copies or extracts supplied or produced to it under this section by statutory declaration. (2) The Tribunal may on its own initiative, or on application of any 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 Tribunal: (a) any information or particulars: (b) a copy of the whole or any part of any paper, document, or record. 109 DRAFT FOR CONSULTATION Patents Part 5 cl 243 243 Evidence (1) The Tribunal may— (a) receive in evidence any statement, document, information, 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 (b) receive evidence on oath (and for that purpose the person appointed to be the Tribunal may administer an oath); and (c) 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 otherwise. (2) An inquiry before the Tribunal is a judicial proceeding for the purposes of sections 108 and 109 of the Crimes Act 1961. 244 Issuing of summons by Tribunal (1) The Tribunal may issue a summons to a person requiring that person to attend a hearing before the Tribunal and to do all or any of the following matters: (a) give evidence: (b) give evidence under oath: (c) produce documents, things, or information, or any specified documents, things, or information, in the possession or control of that person that are relevant to the subject of the inquiry. (2) The Tribunal may require that any documents, things, or information produced under this section be verified by oath, statutory declaration, or otherwise. (3) Sections 291 to 293 contain requirements for the summons and offences for failing to comply with the summons. 245 Further provisions relating to Tribunal Schedule 2 applies to the Tribunal and the person appointed to be the Tribunal. 110 Part 6 cl 248 DRAFT FOR CONSULTATION Patents Miscellaneous 246 Specified procedure for making decisions In the performance and exercise of its decision-making functions and powers under this Part, the Board, the Commissioner, or the Tribunal must— (a) give written notice of, and reasons for, its decision to any person to whom the decision relates; and (b) observe the rules of natural justice; and (c) comply with the regulations. Part 6 Administrative and miscellaneous provisions Subpart 1—Patents register and other information on patents and patent applications Patents register 247 Patents register (1) The Commissioner must keep, in New Zealand, a register of patents in New Zealand in accordance with this Act and the regulations. (2) Sections 258 and 259 provide for evidence relating to the patents register. 248 Purpose of patents register The purpose of the patents register is to— (a) enable members of the public to— (i) know what patents are in force and the key dates for those patents; and (ii) know who is the patentee and who has other interests in a patent (for example, under a mortgage or licence) and the addresses for service of those persons; and (iii) 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 Act. 111 DRAFT FOR CONSULTATION Patents Part 6 cl 249 249 Form of patents register The patents register may be— (a) an electronic register; or (b) kept in any other manner that the Commissioner thinks fit. 250 Contents of patents register (1) The patents register must contain the following information for patents in force in New Zealand: (a) the names, nationality or principal place of business (as appropriate), and addresses for service of patentees: (b) the date of filing of the patent application, the patent date, the priority date or dates, the date of acceptance, the date of grant, and the date the next renewal fee is due: (c) titles of the complete specifications: (d) details of assignments and transmissions: (e) the names and addresses for service of licensees and (f) other persons with interests in patents: 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, 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 251 Search of patents register A person may search the register in accordance with this Act or the regulations. 252 Requests for patent information The Commissioner must give a person the prescribed information concerning a patent or patent application if the person requests it in the prescribed manner. Compare: 1953 No 64 s 90 112 Part 6 cl 256 DRAFT FOR CONSULTATION Patents 253 Loss or destruction of patent If the Commissioner is satisfied that a patent has been lost or 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 254 Changes to patents register The Commissioner may make changes to the patents register in accordance with this Act or the regulations. 255 Commissioner may correct own mistakes in patents register, etc (1) The Commissioner may correct an error or omission that the Commissioner is satisfied has been made by the Commissioner (or an employee or other person providing services for the benefit of the Commissioner or IPONZ) in the patents register, in any patent, or in any other document issued under this Act. (2) The Commissioner must, before making the correction,— (a) give notice that the Commissioner proposes to make the correction to persons that the Commissioner thinks have an interest in; and (b) give those persons a reasonable opportunity to be heard. (3) The Commissioner may require production of the patent or other document to make the correction. Compare: 1953 No 64 s 88(1), (2) 256 Commissioner may correct other persons’ mistakes in patents register, etc (1) The Commissioner may (on application by any person or on the Commissioner’s own initiative) correct an error or omission that the Commissioner is satisfied has been made by any person in the patents register, in any patent, in any patent application, or in any documents filed in connection with a patent application or filed in proceedings before the Commissioner in connection with a patent or patent application. 113 DRAFT FOR CONSULTATION Patents Part 6 cl 256 (2) Any person (whether or not that person made the error or omission) may apply for a correction under this section in the prescribed manner. (3) The Commissioner must, before making the correction, publish in the journal the nature of the proposed correction if the Commissioner thinks that— (a) the correction would materially alter the meaning or scope of the document to be corrected; and (b) it ought not be made without notice to persons who have an interest in it. (4) If a person gives notice within the prescribed time to the Commissioner of opposition to the application for the proposed correction, the Commissioner must, before deciding the matter,— (a) give notice of the opposition to the applicant; and (b) give the applicant and opponent a reasonable opportunity to be heard. (5) This section does not apply to an error or omission by persons referred to in section 255(1) or to an error or omission in a complete specification (see subpart 8 of Part 3 for amendments to complete specifications). Compare: 1953 No 64 s 88(3), (4) 257 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 varying or deleting an entry, in it. (2) In proceedings under this section, the Court may determine any question that it is necessary or expedient to decide in (3) The applicant for rectification must give notice of the applicaconnection with the rectification of the patents register. tion in the prescribed manner to the Commissioner. (4) 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 notice of the order must be served on the Commissioner in the prescribed manner. (6) The Commissioner must, on receipt of notice of an order, rectify the patents register accordingly. Compare: 1953 No 64 s 87 114 Part 6 cl 260 DRAFT FOR CONSULTATION Patents Evidence 258 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 is certified to be a true copy or extract by the 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), 89 259 Evidence: anything done by Commissioner (1) A certificate signed by the Commissioner in relation to the matters referred to in subsection (2) is for all purposes prima facie evidence of those matters specified in the certificate. (2) The matters are— (a) that anything that he or she is authorised to do by or under this Act (including entries in the patents register (b) that anything that he or she is authorised or required to or register of patent attorneys) has or has not been done: do by or under this Act has been lawfully done: attorney at any particular time or during any period (c) that any person was or was not registered as a patent specified in the certificate; or (d) that any person did or did not hold a practising certifi- cate at any particular time or during any period speci- fied in the certificate; or (e) that any entry in the patents register or register of patent attorneys is as stated in the certificate. Journal and other publications 260 Commissioner must publish journal (1) The Commissioner must periodically publish a journal containing— (a) prescribed details concerning patents and patent applications (for example, the names and patentees of patents granted and brief descriptions of the inventions); and (b) any other matter required by this Act, the regulations, or any other law to be published in it; and 115 DRAFT FOR CONSULTATION Patents Part 6 cl 260 (c) other information concerning patents or patent applications that the Commissioner thinks is useful or desirable for patentees, patent applicants, licensees, or the public to know. (2) The journal may be published electronically or in any other manner that the Commissioner thinks fit. Compare: 1953 No 64 s 112(1) 261 Commissioner may keep or publish indexes, etc (1) The Commissioner may publish indexes, specifications, abridgments of specifications, catalogues, and other works relating to inventions, patents, and patent applications that he or she thinks fit. (2) The Commissioner may keep a classification by subject matter of— (a) specifications filed in New Zealand and open to public inspection; and (b) printed publications relating to patents published in New Zealand that are necessary or useful for the purpose of determining with readiness and accuracy the patentability of inventions. (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) Subpart 2—General provisions on proceedings of Commissioner Giving evidence to Commissioner 262 How to give evidence to Commissioner in proceedings (1) Evidence must be given by affidavit or statutory declaration (unless the Commissioner directs otherwise under subsection (2)) in proceedings before the Commissioner under this Act. (2) However, the Commissioner may— (a) take oral evidence instead of, or as well as, the affidavit or declaration; and (b) allow a witness to be cross-examined on the witness’s affidavit or declaration. 116 Part 6 cl 265 DRAFT FOR CONSULTATION Patents (3) The statutory declaration may be used before a Court in any appeal instead of evidence by affidavit and, if used in this way, has all the same incidents and consequences as evidence by affidavit. (4) Section 111 of the Crimes Act 1961 (which relates to false statements or declarations) applies to every affidavit and statutory declaration made for the purposes of this Act. Compare: 1953 No 64 s 96(1), (4) 263 Commissioner may receive evidence on oath (1) The Commissioner may also administer oaths to any witness in proceedings before him or her. (2) Evidence given on oath before the Commissioner is given in 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) 264 Issuing of summons by Commissioner (1) The Commissioner may issue a summons to a person requiring that person to attend a hearing before the Commissioner and to do all or any of the following matters: (a) give evidence: (b) give evidence under oath: (c) produce documents, things, or information, or any specified documents, things, or information, in the possession or control of that person that are relevant to the hearing. (2) The Commissioner may require that any documents, things, or information produced under this section be verified by oath, statutory declaration, or otherwise. (3) Sections 291 to 293 contain requirements for the summons and offences for failing to comply with the summons. Procedural requirements for Commissioner 265 Commissioner must give persons opportunity to be heard The Commissioner must give a person a reasonable opportunity to be heard before exercising adversely to that person any discretionary powers under this Act or the regulations. 117 DRAFT FOR CONSULTATION Patents Part 6 cl 266 Power to award costs 266 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 (b) direct how and by what parties they are to be paid. (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) 267 Commissioner or Court may require security for costs (1) The Commissioner or the Court on appeal, as the case may be, 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. (2) If the party does not give the security required, the Commissioner or Court may treat the proceedings as abandoned by the party and determine the matter accordingly. Compare: 1953 No 64 s 95(2) Appeals of Commissioner’s decisions 268 Appeals of decisions of Commissioner (1) A person who is aggrieved by a decision of the Commissioner under this Act may appeal to the Court. (2) In determining an appeal, the Court may exercise any of the powers that could have been exercised by the Commissioner in relation to the matter to which the appeal relates. 273 Appeals of decisions of Court on appeal (1) A decision of the Court on an appeal of a decision of the Commissioner may be further appealed to the Court of Appeal if— (a) the decision was made under section 25 or section 26 (which relates to the Commissioner’s power to give directions to co-owners); or (b) the decision was made under section 93 or section 104 (which relates to the revocation of a patent by the Commissioner) if the appeal revokes the patent; or (c) the Court or Court of Appeal gives leave. 118 Part 6 cl 276 DRAFT FOR CONSULTATION Patents (2) All other decisions of the High Court on an appeal of a decision of the Commissioner are final. Compare: 1953 No 64 s 97(4), s 98 Costs of Commissioner 274 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 Subpart 3—Establishment and operation of administrative bodies for patents Commissioner and Assistant Commissioners 275 Commissioner and Assistant Commissioners (1) The chief executive of the Ministry must appoint, under the State Sector Act 1988,— (a) the Commissioner of Patents; and (b) 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 appointments may be held separately or in conjunction with any other office in the Ministry. Compare: 1953 No 64 ss 3, 4 276 Functions of Commissioner The functions of the Commissioner are, in accordance with this Act and the regulations, to— (a) examine patent applications, grant patents, revoke, and accept surrenders of patents, and make other decisions relating to patent applications and patent grants: (b) register patent attorneys and carry out other functions relating to their registration: (c) provide administrative support to the Board and the Tribunal: (d) maintain the patents register and carry out other functions relating to the patents register: (e) maintain and supply information on patents and patent applications, including by publishing a journal: (f) carry out other functions, duties, and powers conferred on him or her by this Act and the regulations. 119 DRAFT FOR CONSULTATION Patents Part 6 cl 277 277 Powers of Assistant Commissioners of Patents (1) An Assistant Commissioner of Patents has the functions, duties, and powers of the Commissioner under this Act (other than the power to delegate under section 278), but is subject to the control of the Commissioner. (2) The fact that an Assistant Commissioner exercises those functions, duties, and powers is conclusive evidence of the authority to do so. Compare: 1953 No 64 s 4(2), (3) 278 Power of Commissioner to delegate (1) The Commissioner may delegate to any person, either generally or particularly, any of the Commissioner’s functions, duties, 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 that the Commissioner thinks fit; and (c) is revocable at any time, in writing; and (d) does not prevent the performance or exercise of a function, duty, or power by the Commissioner. (3) A person to whom any functions, duties, or powers are delegated may perform and exercise them in the same manner and with the same effect as if they had been conferred directly by this Act and not by delegation. (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 Commissioner includes a reference to the delegate in respect of anything delegated to that person. 279 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 Minister a report on the operation of this Act for the year ended on the immediately preceding 30 June. (2) The report must include an account of fees, salaries, allowances, and other money received and paid under this Act 120 Part 6 cl 281 DRAFT FOR CONSULTATION Patents during that year, and any other reports required by other Acts or by the regulations. (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 Intellectual Property Office of New Zealand 280 Intellectual Property Office of New Zealand (1) 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 2002, the Designs Act 1953, and any other intellectual property statutes that the Minister thinks fit; and (b) change that place; and (c) name that office; and (d) change the name of that office. (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 (b) the name of that office is the Intellectual Property Office of New Zealand. (3) The Governor-General may, by Order in Council, amend this Act and any other enactment by omitting the name of that office and substituting another name to reflect a name change of that office. 281 Opening hours of Intellectual Property Office of New Zealand (1) The Commissioner may— (a) fix the opening hours for IPONZ; and (b) declare IPONZ closed on any day. (2) 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 period is not an opening day of IPONZ, be done on the next opening day. 121 DRAFT FOR CONSULTATION Patents Part 6 cl 282 282 Closing of Intellectual Property Office of New Zealand at short notice (1) The Commissioner may declare IPONZ closed without giving publication of the closure under section 281 if— (a) he or she thinks it necessary or desirable because of an emergency or other temporary circumstances; and (b) it is not practicable to make that prior publication. (2) The Commissioner must then, if practicable, display a public notice that IPONZ is closed in or on the building in which IPONZ is situated. (3) The Commissioner must also, as soon as practicable after closing IPONZ, publicly notify the closure. M¯aori advisory committee 283 Appointment and membership of M¯aori advisory committee (1) The Commissioner must appoint a committee called the M¯aori advisory committee. (2) The Commissioner may, at any time,— (a) appoint a person to the committee: (b) remove a member from the committee and, if the Commissioner thinks fit, appoint another member in that member’s place. (3) A person must not be appointed as a member of the committee unless, in the opinion of the Commissioner, the person is qualified for appointment, having regard to that person’s knowledge of m¯atauranga M¯aori (M¯aori traditional knowledge) and tikanga M¯aori (M¯aori protocol and culture). (4) A member of the committee may resign office by notice in writing to the Commissioner. 284 Functions of M¯aori advisory committee The function of the M¯aori advisory committee is to advise the Commissioner (on request) on whether— (a) an invention claimed in a patent application is derived from M¯aori traditional knowledge or from indigenous plants and animals; and (b) if so, whether the commercial exploitation of that invention is likely to be contrary to M¯aori values. 122 Part 6 cl 288 DRAFT FOR CONSULTATION Patents 285 Effect of advice from M¯aori advisory committee The Commissioner must consider, but is not bound by, the advice given by the M¯aori advisory committee. 286 M¯aori advisory committee may regulate own procedure The M¯aori advisory committee may regulate its own procedure, subject to any direction given by the Commissioner. Subpart 4—Other miscellaneous provisions Power to extend time limits 287 Commissioner may extend time limits for delays by Commissioner (1) The Commissioner may extend 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 delay by the Commissioner. (2) The Commissioner may grant the extension even if the time has expired for doing the thing. Compare: 1953 No 64 s 93(1), (5) 288 Commissioner may extend time limits for certain filing requirements or for delivery failures (1) The Commissioner may, on application by any person under section 289 or at the Commissioner’s own discretion, extend— (a) the time limit under section 33 (which relates to the time limit for the filing of a complete specification) or section 48 (which relates to the filing of a convention application); or (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 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, by post or otherwise, of any documents or information 123 DRAFT FOR CONSULTATION Patents Part 6 cl 288 relating to the matter for which the application for the extension is made; or (b) the applicant or the applicant’s agent has in any other way failed to act with due diligence and prudence on the matter; or (c) there has been undue delay in applying for the extension of time or in prosecuting the application. (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) 289 Requirement for applying and granting extensions of time limits under section 288 (1) A person must apply for an extension of a time limit under section 288 in the prescribed manner. (2) If an extension is applied for by a person’s agent, the Commissioner may require— (a) written confirmation that the application is authorised by that person; and (b) the confirmation to be signed by that person and lodged with the Commissioner within the time specified by the Commissioner. (3) The Commissioner must publish every extension granted in the journal. Compare: 1953 No 64 s 93A(4), (5) Serving notices 290 Services 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 person’s address for service or last known place of residence or business; or (b) sent by fax or email to the person’s last known fax number or email address. (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. 124 Part 6 cl 291 DRAFT FOR CONSULTATION Patents (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 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. (5) This section does not apply to— (a) notices or other documents served or given in any proceedings in a court: (b) notices or other documents served or given in accordance with another procedure specified in this Act or the regulations. Requirements for summons 291 Requirements for summons (1) A summons issued by the Tribunal under section 244 or by the Commissioner under section 264 must be in writing, be signed by the Tribunal or Commissioner, and state— (a) the date and time when, and the place where, the person must attend; and (b) the documents, things, or information that the person is required to bring and produce to the Tribunal or Commissioner; and (c) the entitlement to be paid or tendered a sum in respect of witnesses’ fees, allowances, and expenses; and (d) the penalty for failing to attend. (2) A summons may be served by— (a) delivering it personally to the person summoned; or (b) posting it to the person summoned at that person’s usual place of residence or address for service. (3) A summons must,— (a) if it is to be served by personal delivery, be served at least 48 hours before the attendance of the witness is required: (b) if it is to be served by post, be served at least 10 days 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. 125 DRAFT FOR CONSULTATION Patents Part 6 cl 292 292 Witnesses’ fees, allowances, and expenses (1) A witness appearing before the Tribunal or Commissioner under a summons is entitled to be paid witnesses’ fees, allowances, and expenses in accordance with the scales prescribed by regulations under the Summary Proceedings Act 1957. (2) The person requiring attendance of the witness must pay or 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. 293 Offence of failing to comply with summons (1) A person summoned to attend before the Tribunal or Commissioner commits an offence if the person, without sufficient cause,— (a) fails to attend in accordance with the summons; or (b) does not give evidence when required to do so; or (c) does not give evidence under oath when required to do so; or (d) does not answer any question that is lawfully asked by the Tribunal or Commissioner; or (e) does not provide any documents, things, or information that the summons requires the person to provide. (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 section if witnesses’ fees, allowances, and expenses to which the person is entitled under section 292 have not been paid or tendered to him or her. Fees and other money paid under Act 294 Fees and penalties payable under Act or regulations (1) Fees and penalties must be paid for any matter arising under this Act if required by this Act or by the regulations. (2) The Commissioner may 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. (3) Fees for international applications may, in accordance with New Zealand’s obligations under the Patent Cooperation Treaty, be collected by the Commissioner on behalf of— 126 Part 6 cl 295A DRAFT FOR CONSULTATION Patents (a) the International Bureau; or (b) any international search authority that has been approved, for the purposes of this subsection, by the Minister as an appropriate authority on whose behalf the Commissioner may collect those fees. Compare: 1953 No 64 s 115(1), (3) 295 Payment and application of fees and other money paid under this Act (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). (2) The Commissioner must pay all the fees or other money paid to him or her under this Act into a Departmental Bank Account. (2A) Any fee that is prescribed in connection with an application for or renewal of a practising certificate must be applied by the Commissioner for the purposes of section 276(c). (3) Any sum paid to the Commissioner by mistake, or any sum the payment of which is not required by the regulations, may be refunded by the Commissioner, and all money so refunded may be paid out of public money without further appropriation than this Act. (4) 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 of competent jurisdiction as a debt due to the Crown. (5) 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) Miscellaneous 295A Protection of Royal arms, etc The grant of a patent does not in itself authorise the patentee to use or place on a patented article any representation specified in sections 12 to 15 of the Flags, Emblems, and Names Protection Act 1981 (which relate to the use of Royal, vice-regal, State, and heraldic emblems and names). Compare: 1953 No 64, s 107 127 DRAFT FOR CONSULTATION Patents Part 6 cl 295B 295B 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 letters patent or to the withholding of a grant of letters patent. (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 use articles forfeited under laws relating to customs or excise. Compare: 1953 No 64 s 117 295C Act does not apply to Tokelau This Act does not apply to Tokelau. Subpart 5—Regulations 296 Regulations (1) The Governor-General may, by Order in Council, make regulations for all or any of the following purposes: Patent applications and the granting of patents (a) prescribing procedures, requirements, and other matters, not inconsistent with this Act, in respect of patent applications and the granting of patents under this Act, including— (i) requiring patent applications, specifications, and any other documents relating to patent applications or specifications to be filed or otherwise provided to the Commissioner in a prescribed manner; and (ii) requiring those patent applications, specifications, and documents to be dealt with in a prescribed manner; and (iii) providing for further information or documents to be filed or otherwise provided to the Commissioner in the prescribed manner, in relation to any of those patent applications, specifications, or documents; and (iv) providing for the procedure to be followed in connection with the division of a patent application, specification, or other document into 2 or more applications, specifications, or documents; and 128 Part 6 cl 296 DRAFT FOR CONSULTATION Patents (v) providing for the procedure to be followed in connection with the merging of separate patent applications, specifications, or documents; and (vi) providing for the Commissioner to direct that 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 documents were actually filed; and Applications, requests, notices, and proceedings (b) requiring any applications, requests, or notices under this Act to be made or given in a prescribed manner: (c) providing for the procedure to be followed in connection 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: (d) regulating the making of applications, requests, or notices under this Act by agents, and prescribing classes of persons whom the Commissioner may refuse to recognise as agents: Declarations of true and first inventor (e) requiring a declaration concerning the true and first 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: Registers (f) prescribing procedures, requirements, and other matters, not inconsistent with this Act, for any register that the Commissioner is required to keep under this Act, including matters relating to— (i) the operation of the register: (ii) access to and search of the register: (iii) the location of, and hours of access to, the register: Matters under Commissioner’s direction or control (g) providing for all matters placed under the direction or control of the Commissioner by this Act or the regulations, including— 129 DRAFT FOR CONSULTATION Patents Part 6 cl 296 (i) providing for the Commissioner to extend time limits under the regulations or waive requirements of the regulations: (ii) regulating applications for, oppositions to, and the granting of extensions of time limits by the Commissioner under the Act, including providing for the protection of persons who have in good faith begun to exploit an invention for which an application for an extension is made: (iii) how statutory declarations for proceedings before the Commissioner must be made and given: (iv) providing for the Commissioner to destroy documents and information provided to him or her in connection with any application, request, or notice that is abandoned, void, or otherwise inactive for the prescribed period: Micro-organisms (h) providing for the procedure to be followed in connection with the deposit for the purposes of this Act of micro-organisms with prescribed depositary institutions, the furnishing of samples of micro-organisms by those institutions, and requests for those samples: (i) for carrying out, or giving effect to, New Zealand’s obligations under the Patent Cooperation Treaty: (j) for carrying out, or giving effect to, New Zealand’s obligations under the Budapest Treaty: (k) prescribing the manner in which something must be Patent Cooperation Treaty Budapest Treaty Journal published in the journal: Fees (l) prescribing fees to be paid, or the means by which those fees may be calculated or ascertained, for any matter under this Act or the regulations: (m) prescribing the period for the payment of a renewal fee: (n) exempting, or providing for the Commissioner to exempt from, waive, or refund fees: General (o) providing for transitional provisions: 130 Part 6 cl 298 DRAFT FOR CONSULTATION Patents General (p) providing for any other matters contemplated by this Act, necessary for its administration, or necessary for giving it full effect. (2) For the purposes of this Act, the power to prescribe the manner in which a thing is done includes the power to prescribe— (a) when, where, and how the thing must be done; and (b) the form that must be used in connection with doing the (c) what information must be provided or other documents thing; and must be filed or provided in connection with the thing: (d) requirements with which documents that are filed or otherwise provided in connection with the thing must comply; and (e) the fees that must be paid in connection with doing the thing. (3) The regulations may prescribe different or additional procedures, requirements, or matters in relation to different classes of applications, requests, or notices. Compare: 1953 No 64, ss 93A(7), 96(5), 114 297 Orders in Council as to convention countries For the purpose of giving effect to any international agreement or arrangement to which New Zealand is a party or that applies to New Zealand, the Governor-General 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 agreement or arrangement applies (whether a State, part of a State, a territory for whose international relations a State is responsible, 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. 298 Regulations concerning patent attorneys The Governor-General may, by Order in Council made on the recommendation of the Minister given after consultation with the Board, make regulations for all or any of the following purposes: Registration and practising certificates (a) prescribing the manner in which persons must apply for registration as a patent attorney: 131 DRAFT FOR CONSULTATION Patents Part 6 cl 298 (b) regulating the way in which any information provided by applicants for registration must be evaluated, and decisions on the information or evidence must be made and implemented: (c) regulating the way in which a proposed removal or suspension of registration (that does not relate to a disciplinary matter) is to be considered, decided on, and implemented, and any minimum and maximum periods for suspension under section 193 or section 196: (d) providing for any additional matters that may be recorded on the register of patent attorneys and the amendment of the register: (e) prescribing the manner in which persons must apply for a practising certificate or renewal of a practising certifi- cate, the circumstances (if any) in which a practising certificate may be renewed, and the periods for which a practising certificate or any renewal is in force: Qualifications and examinations (f) providing for subjects or subject groups for examinations conducted by the Board or courses of study accredited by the Board: (g) regulating the manner in which the Board must conduct examinations including the information that must be provided to candidates about the subject matter of the examinations and the fees payable to examiners: (h) regulating the manner in which persons must apply to (i) (j) sit examinations conducted by the Board: regulating the manner in which the Board may assess whether qualifications (including overseas qualifications) are equivalent to a pass in all of the examinations conducted by the Board: regulating the manner in which the Board accredits persons to provide courses of study: (k) prescribing criteria relating to the type of experience (if any) that candidates for registration as patent attorneys must satisfy: Complaints (l) prescribing the information that must be provided in respect of complaints: 132 Part 6 cl 306 DRAFT FOR CONSULTATION Patents (m) prescribing the manner in which the Commissioner and the Tribunal must perform their functions in relation to complaints and disciplinary matters: General (n) regulating the manner in which the Board exercises any of its other functions under this Act. Subpart 6—Repeals and transitional provisions 303 Repeal of Patents Act 1953 (1) The Patents Act 1953 (1953 No 64) is repealed. (2) The Patents Regulations 1954 (SR 1954/211) are consequentially revoked. 304 Consequential amendments to other enactments The enactments set out in Schedule 3 are amended in accordance with that schedule. 305 Preservation of various regulations and orders The following regulations continue in force, despite the repeal of the Patents Act 1953, as if made under this Act: (a) High Court Amendment Rules (No 2) 1990 (SR (b) Patents, Designs, and Trade Marks Convention Order (c) Patents (Patent Cooperation Treaty) Regulations 1992 (d) Patents (United States of America) Regulations 1956 1990/187): 2000 (SR 2000/236) (except that clause 4 is revoked): (SR 1992/316): (SR 1956/159). 306 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 referred to in subsection (1) must be taken to be and always to have been lawfully collected. 133 DRAFT FOR CONSULTATION Patents Part 6 cl 307 Transitional provisions for patents and patent applications 307 Transitional provision for patents granted under Patents Act 1953 (1) This Act applies to a patent granted under the Patents Act 1953 as if it were granted under this Act. (2) However,— (a) the patent retains its original date of filing of the patent application, patent date (that is the date of filing of the complete specification), priority date or dates, date of acceptance, date of grant, and date the next renewal fee was due under the Patents Act 1953; and (b) the patent retains its existing term; and (c) the period prescribed for the payment of a renewal fee under this Act applies only after the date the next renewal fee was due under the Patents Act 1953; and (d) on re-examining the complete specification under section 90 the Commission 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 (e) the Commissioner or Court may revoke the patent under section 104 only on the grounds set out in section 41(1) of the Patents Act 1953 (rather than the grounds in section 105 of this Act). 308 General transitional provision for patent applications made under Patents Act 1953 (1) The Patents Act 1953 continues to apply to a patent application made under that Act and not deemed to be void, refused, granted, withdrawn, or abandoned before the commencement of Part 3 of this Act. (2) Section 307 applies to any patent granted in respect of that application. 309 Exception if complete specification provided on or after commencement (1) 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: 134 Part 6 cl 312 DRAFT FOR CONSULTATION Patents (a) only a provisional specification was filed before the commencement of Part 3; or (b) the original complete specification was directed (whether before or after the commencement of Part 3) to be treated as a provisional specification under section 9(4) of the Patents Act 1953. (2) 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. (3) If a complete specification is provided for 2 or more patent applications that are cognate or of which one is a modification of another, this section applies to those 2 or more patent applications. 310 Exception if patent application post-dated 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. 311 Specific transitional provision for divisional applications If a fresh patent application is made on or after the commencement of Part 3 of this Act for any part of the subject-matter of a patent application made under the Patents Act 1953, the fresh patent application must also be treated as a patent application made under the Patents Act 1953 (and sections 308 and 309 apply). 312 Specific transitional provision for Treaty applications (1) The Patents Act 1953 continues 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 was not deemed to be void, refused, granted, withdrawn, or abandoned, before the commencement of Part 3 of this Act. (2) Section 307 applies to any patent granted in respect of that application. 135 DRAFT FOR CONSULTATION Patents Part 6 cl 312 (3) However, this Act applies to a Treaty application made under the Patents Act 1953 if the applicant did not fulfil those obligations before the commencement of Part 3. Transitional provisions for other applications, notices, and requests 313 Transitional provision for other applications, notices, or requests (1) The Patents Act 1953 continues to apply to any application (other than a patent application or an application for registration as a patent attorney), notice, or request that was 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 relates to a patent application— (a) to which the Patents Act 1953 applies, that Act applies to the other application, notice, or request also; or (b) to which this Act applies, this Act applies to the other application, notice, or request also. Transitional provision for matters in force on commencement 314 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, and that is in effect immediately before the commencement of this section, continues to have effect as if it had been made under the provision of this Act— (a) that, with or without modification, replaces, or that corresponds to, the provision of the Patents Act 1953 under which it was made; and (b) under which it could be made. (2) The order, direction, or other matter may be amended or revoked as if it had been made under the provision of this Act that replaces, or that corresponds to, the provision of the Patents Act 1953 under which it was made. 136 Part 6 cl 318 DRAFT FOR CONSULTATION Patents Transitional provision for patents register and register of patent attorneys 315 Transitional provision for patents register and register of patent attorneys (1) The register of patents kept under section 83 of the Patents Act 1953 continues to have effect as the patent register kept under section 247 of this Act. (2) The register of patent attorneys kept under section 100 of the Patents Act 1953 continues to have effect as the register of patent attorneys kept under section 225 of this Act. Transitional provisions for existing offences and infringements 316 Transitional provision for existing offences and infringements The Patents Act 1953 continues to apply for the purpose of— (a) investigating any offence or infringement committed before the commencement of this section: (b) commencing or completing proceedings for any offence or infringement committed before the commencement of this section: (c) imposing a penalty or granting any relief or other remedy for any offence or infringement committed before the commencement of this section. Transitional provisions for patent attorneys 317 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 and as having a current practising certificate on the commencement of Part 5. (2) The practising certificate is treated as expiring on the date on which the person’s next renewal fees were due under the Patents Act 1953. 318 Transitional provision for applicants for registration (1) The Patents Act 1953 continues to apply to an application for registration as a patent attorney made under that Act and not 137 DRAFT FOR CONSULTATION Patents Part 6 cl 318 refused, accepted, or withdrawn before the commencement of Part 5 of this Act. (2) A person who has a pass in an examination for a subject conducted by the Commissioner and the Council of the New Zealand Institute of Patent Attorneys Incorporated under the Patents Act 1953 is treated, for the purposes of section 190 of this Act, as having being certified by the Board as having a qualification equivalent to a pass in the examination for the same subject conducted by the Board. 319 Transitional provision for miscellaneous patent attorney matters (1) Nothing in sections 180 and 181 prohibits barristers or solicitors of the High Court of New Zealand from completing giving professional advice or taking part in proceedings as permitted by section 103(5) of the Patents Act 1953 in relation to instructions received before the commencement of Part 5 of this Act. (2) A personal representative of a deceased patent attorney who was carrying on the business or practice of the deceased patent attorney under section 103(6) of the Patents Act 1953 immediately before the commencement of Part 5 of this Act may continue doing so for the period permitted by section 103(6) of the Patents Act 1953, rather than the period permitted by section 183 of the Act. Transitional provisions for administrative bodies 320 Transitional provision for Commissioner and Assistant Commissioners The persons holding office as the Commissioner and Assistant Commissioners are treated as having been appointed as the Commissioner and Assistant Commissioners on the commencement of this section. 138 Schedule 1 DRAFT FOR CONSULTATION Patents s 237 Schedule 1 Further provisions applying to Board and 2 3 its members 1 Term of appointment (1) A member of the Board appointed by the Minister holds office for the term, not exceeding 3 years, specified in his or her notice of appointment. (2) A member of the Board appointed by the Minister may be reappointed to the Board. (3) Even though a member’s term of appointment may have expired, the member continues in office until his or her successor is appointed. Extraordinary vacancies (1) This clause applies to any member of the Board appointed by the Minister. (2) A member may be removed from office by the Minister for incapacity affecting performance of duty, neglect of duty, or misconduct, proved to the satisfaction of the Minister. (3) A member may resign his or her office by notice in writing delivered to the Minister. (4) A member appointed by the Minister is treated as having vacated his or her office if he or she is adjudged bankrupt under the Insolvency Act 1967. (5) If a member or substitute member dies, resigns, or is removed from office,— (a) the vacancy so created must be filled in the manner in which the appointment to the vacant office was originally made; and (b) the person appointed to fill the vacancy must be appointed for the residue of the term for which his or her predecessor 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. 139 DRAFT FOR CONSULTATION Patents Schedule 1 4 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 Government services for the purposes of the Government Superannuation Fund Act 1956 or in the State services for the purposes of the State Sector Act 1988. 5 Committees (1) 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: (b) to exercise on behalf of the Board any of its functions or powers and may delegate to any committee any function or power. (2) A committee appointed under this clause— (a) is subject to the control of the Board; and (b) may, at any time, be discharged, altered, or reconstituted by the Board. (3) Subject to any general or special directions given or conditions imposed by the Board, a committee may exercise a function or power delegated to it under this clause in the same manner and with the same effect as if it had been conferred directly by this Act and not by delegation. (4) A committee appearing to act under a delegation, in the absence of proof to the contrary, is presumed to be acting in accordance with the delegation. (5) A delegation may be revoked at any time. (6) No delegation prevents the exercise of any function or power by the Board. 6 Protection for Board members No member or employee of the Board is personally liable— (a) for any liability of the Board; or (b) for any act or omission done, in good faith, in the performance or intended performance of its functions, duties, or powers. 140 Schedule 1 DRAFT FOR CONSULTATION Patents Fees and allowances for Board members 7 (1) The Board is a statutory Board within the meaning of the Fees and Travelling Allowances Act 1951. (2) Members appointed to the Board under section 236(1)(c) are to be paid, out of money appropriated by Parliament for the purpose, remuneration by way of fees, salary, or allowances and travelling allowances and expenses in accordance with the Fees and Travelling Allowances Act 1951, and the provisions of that Act apply accordingly. 8 Annual report As soon as practicable after the end of each financial year, the Board must give the Commissioner a report on the performance of its functions and duties and the exercise of its powers during the year, for the purposes of the Commissioner’s annual report to the Minister under section 279. 141 DRAFT FOR CONSULTATION Patents Schedule 2 s 245 1 2 Schedule 2 Further provisions applying to Tribunal Term of office (1) The person appointed to be the Tribunal under section 239 must be appointed for a term not exceeding 5 years but is eligible for a further term not exceeding 5 years. (2) The person appointed to be the Tribunal under section 239 continues to hold office, after his or her term of office expires, until he or she is reappointed or his or her successor is appointed. Acting Tribunal (1) If any of the circumstances specified in subclause (3) occur, the Minister may, in the place of the person appointed to be the Tribunal under section 239, appoint a person to act as the Tribunal. (2) The person must be a person who— (a) is not a registered patent attorney; and (b) holds a current practising certificate as a barrister and solicitor of the High Court. (3) The circumstances are— (a) the person appointed to be the Tribunal under section 239 becomes incapable of fulfilling his or her duties by reason of illness, absence, or other sufficient cause; or (b) there is a vacancy in that office; or (c) the person appointed to be the Tribunal under section 239 or the Minister considers that it is not proper or desirable that the person appointed under that section adjudicate on any specified matter. (4) An appointment made in the circumstances specified in subsection (3)(c) relates only to the exercise of the Tribunal’s functions and powers in relation to the relevant matter or matters, and is of a duration specified in the appointment. (5) A person appointed to act as the Tribunal under this section is appointed until notified otherwise, by at least 2 weeks’ written notice to that person, unless subsection (3)(c) applies. (6) During the term of his or her appointment, and in respect of any other matter arising from his or her appointment, the provisions of this Act apply to the person appointed to be the 142 Schedule 2 DRAFT FOR CONSULTATION Patents Tribunal under this section as if he or she was a person appointed under section 239. 3 Vacation of office (1) The person appointed to be the Tribunal may, at any time, be removed by the Minister for incapacity affecting performance of duty, neglect of duty, or misconduct, proved to the satisfaction of the Minister. (2) The person appointed to be the Tribunal is treated as having vacated his or her office if he or she is adjudged bankrupt under the Insolvency Act 1967. (3) The person appointed to be the Tribunal may, at any time, resign his or her office by giving notice in writing to that effect to the Minister. Remuneration of person appointed to be the Tribunal 4 (1) The Tribunal is a statutory Board within the meaning of the Fees and Travelling Allowances Act 1951. (2) The person appointed to be the Tribunal is to be paid, out of money appropriated by Parliament for the purpose, remuneration by way of fees, salary, or allowances and travelling allowances and expenses in accordance with the Fees and Travelling Allowances Act 1951, and the provisions of that Act apply accordingly. 5 Protection for persons appointed to be Tribunal and others for disciplinary matters (1) No person appointed to be the Tribunal is personally liable— (a) for any liability of the Tribunal; or (b) for any act or omission done, in good faith, in the performance or intended performance of the Tribunal’s functions, duties or powers. (2) Every person who does the following things has the same privileges as witnesses have in a court: (a) provides documents, things, or information to the Tribunal in relation to a disciplinary matter; or (b) gives evidence or answers questions at a hearing of the Tribunal in relation to a disciplinary matter. 143 DRAFT FOR CONSULTATION Patents Schedule 2 (3) Every counsel appearing before the Tribunal in relation to a disciplinary matter has the same privileges and immunities as counsel in a court. 6 Person appointed to be Tribunal not in service of the Crown No person appointed to the Tribunal is, by reason of his or her holding of that office, employed in the Government service for the purposes of the Government Superannuation Fund Act 1956 or in the State services for the purposes of the State Sector Act 1988. 144 Schedule 3 DRAFT FOR CONSULTATION Patents Text to come. s 304 4946V9 17-DEC-04 145 Schedule 3 Consequential amendments Wellington, New Zealand: Published under the authority of the New Zealand Government—2004