Patents Act 1953 (reprint as at 1 January 2011), New Zealand

Note

Changes authorised by section 17C of the Acts and Regulations Publication Act 1989 have been made in this eprint.

Ageneraloutlineofthesechangesissetoutinthenotesattheendofthiseprint,togetherwith other explanatory material about this eprint.

This Act is administered by the Ministry of Commerce

12 Examination of application 18 13 Search for anticipation by previous publication 20 14 Search for anticipation by prior claim 21 15 Commissioner may require information as to 22

corresponding applications overseas 16 Reference in case of potential infringement 23 17 Refusal of application in certain cases 24 18 Supplementary provisions as to examination, etc 24 19 Time for putting application in order for acceptance 24 20 Acceptance and publication of complete specification 26 21 Opposition to grant of patent 27 22 Refusal of patent without opposition 29 23 Mention of inventor as such in patent 29 24 Substitution of applicants, etc 31 25 Provisions for secrecy of certain inventions 32 26 Inventions relating to atomic energy 35

Treaty application 26A Treaty application deemed to be application accompanied 37

by complete specification 26B Description, claims, and drawings 37 26C International filing date 38 26D Commissioner to provide international filing date 38 26E Amendments to documents forming part of complete 39

specification 26F Treaty application void 40 26G Requirements for examination of Treaty application 40 26H Publication of Treaty applications 41

Grant, effect, and term of patent 27 Grant and sealing of patent 41 28 Amendment of patent granted to deceased applicant 43 29 Extent, effect, and form of patent 43 30 Date and term of patent 44 34 Patents of addition 45

Restoration of lapsed patentsand patent applications 35 Restoration of lapsed patents 47 36 Restoration of applications where patent not sealed 49 37 Restoration of application where complete specification 50

not accepted

Amendment of specifications 38 Amendment of specification with leave of Commissioner 51 39 Amendment of specification with leave of Court 52

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40 Supplementary provisions as to amendment of 52 specification

Revocation and surrender of patents 41 Revocation of patent by Court 53 42 Revocation of patent by Commissioner 55 43 Surrender of patent 56

Voluntary endorsement of patent 44 Endorsementofpatent “licencesofright ” 56 45 Cancellation of endorsement under section 44 58

Compulsory licences, etc 46 Compulsory licence 60 48 Exercise of powers on applications under section 46 61 54 Supplementary provisions 62

Use of patented inventions for services of the Crown 55 Use of patented inventions for services of the Crown 63 56 Rights of third parties in respect of Crown use 64 57 Reference of disputes as to Crown use 65 58 Special provisions as to Crown use during emergency 66 58A Nature and scope of rights under section 55 66 58B Duty to inform owner 67 58C Patentee entitled to remuneration 67

Anticipation, etc 59 Previous publication 68 60 Previous communication, display, or working 69 61 Use and publication after provisional specification or 71

foreign application 62 Priority date in case of obtaining 71

Miscellaneous provisions as to rights in inventions 63 Co-ownership of patents 72 64 Power of Commissioner to give directions to co-owners 73 65 Disputes as to inventions made by employees 74 66 Avoidance of certain restrictive conditions 75 67 Determination of certain contracts 76

Proceedings for infringement, etc 68 Restrictions on recovery of damages for infringement 77 68A Burden of proof for infringement of process patent 78 68B Regulatory review exception 78 69 Order for account in action for infringement 78 70 Counterclaim for revocation in action for infringement 78

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71 Relief for infringement of partially valid specification 79 72 Proceedings for infringement by exclusive licensee 79 73 Certificate of contested validity of specification 80 74 Remedy for groundless threats of infringement 80

proceedings 75 PowerofCourttomakedeclarationastonon-infringement 81 76 Attorney-General may appear in patent proceedings 82

International agreements, etc 77 Orders in Council as to convention countries 83 78 Supplementary provisions as to convention applications 83 79 Specialprovisionsastovessels,aircraft,andlandvehicles 84 80 Extension of time for certain convention applications 84 81 Protectionofinventionscommunicatedunderinternational 85

agreements 82 Regulations under section 80 or section 81 87

Register of patents, etc. 83 Register of patents 87 84 Registration of assignments, etc 88 85 Limitation of proceedings 89 85A Application of Personal Property Securities Act 1999 90 86 Commissioner may dispense with production of probate 90

or letters of administration in certain cases 87 Rectification of register of patents by Court 92 88 Correction of errors 92 89 Evidence of entries, documents, etc 93 90 Requestsforinformationastopatentorpatentapplication 94 91 Restriction upon publication of specifications, etc 94 92 Loss or destruction of patent 95 93 Commissioner may grant extension of time 95 93A Additional provisions for extending time limits 96

Proceedings before Commissioner 94 Exercise of discretionary powers of Commissioner 98 95 Costs and security for costs 98 96 Evidence before Commissioner 98

Appeals 97 Appeals to High Court 100 98 Appeals to Court of Appeal 100 99 Costs of Commissioner in proceedings before Court 101

Patent attorneys

100 Registration of patent attorneys 101

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101 Powers of patent attorneys 101 102 Cancellation of registration of patent attorneys 102 103 Restrictions on practice as patent attorney 102 104 Recovery of patent attorney’s charges 104

Offences 105 Falsification of register, etc 104 106 Unauthorised claim of patent rights 104 107 Protection of Royal Arms, etc 105 108 Offences by companies 106

Miscellaneous 110 Service of notices, etc, by post 106 111 Declaration by person under disability 106 112 Journal, indexes, etc 107 113 Rules of Court 108 114 Regulations 108 115 Fees 109 116 Annual report of Commissioner 110 117 Saving for Royal prerogative, etc 111 118 Application of Act to Tokelau 111 119 Repeals and savings 111

Schedule 1 112 Enactments repealed

Schedule 2 113 Regulations revoked

Schedule 3 113 Transitional provisions

An Act to consolidate and amend certain enactments relating to patents

1 Short Title and commencement

(1) This Act may be cited as the Patents Act 1953.

(2) ThisActshallcomeintoforceonadaytobeappointedforthe commencementthereofbytheGovernor-GeneralbyProclamation.

Interpretation

(1) In this Act, unless the context otherwise requires,— Applicant includes a person in whose favour a direction has been given under section 24 of this Act and the personal rep resentative of a deceased applicant Articleincludesanysubstanceormaterial,andanyplant,machinery, or apparatus, whether affixed to land or not Assignee includes the personal representative of a deceased assignee;andreferencestotheassigneeofanypersoninclude

referencestotheassigneeofthepersonalrepresentativeorassignee of that person Commissioner means the Commissioner of Patents Commonwealth[Repealed]

Commonwealth: this definition was repealed, as from 2 September 1996, by section 2 Patents Amendment Act 1996 (1996 No 139).

[Repealed]

Convention application has the meaning assigned to it by

subsection (4) of section 7 of this Act Convention country, in any provision of this Act, means an entityforthetimebeingdeclaredbyanorderundersection 77 to be a convention country for the purposes of that provision Convention country: this definition was substituted, as from 14 October 1999,

by section 3(2) Patents Amendment Act 1999 (1999 No 119).

Court means the High Court Dateoffiling,inrelationtoanydocumentfiledunderthisAct, means the date on which the document is filed or, where it is deemed by virtue of any provision of this Act or of regula

tionsmadethereundertohavebeenfiledonanydifferentdate, means the date on which it is deemed to be filed Exclusivelicencemeansalicencefromapatenteewhichcon

fersonthelicensee,or on the licensee andpersons authorised by him, to the exclusion of all other persons (including the patentee), any right in respect of the patented invention; and exclusive licensee shall be construed accordingly

Government Department means any Department or instru

ment of the Executive Government of New Zealand Integratedcircuitmeansacircuit,initsfinaloranintermediate form, in which the elements, at least one of which is an activeelement,andsomeoralloftheinterconnections arein

tegrallyformedinoronapieceofmaterialandthatisintended

to perform an electronic function

Integrated circuit: this definition wasinserted, as from1January1995, by section 2 Patents AmendmentAct 1994(1994No 122). Seesections17and 18 of that Act as to the transitional provisions. See regulation 2 Patents Amendment Act Commencement Order 1994 (SR 1994/302).

International application means an application made under the Patent Cooperation Treaty for the protection of an invention International application: this definition was inserted, as from 1 December

1992, by section 2 Patents Amendment Act 1992 (1992 No 81).

International Bureau means the International Bureau of the World Intellectual Property Organization International Bureau: this definition was inserted, as from 1 December 1992,

by section 2 Patents Amendment Act 1992 (1992 No 81).

International filing date means the international filing date giventoaninternationalapplicationunderArticle11orArticle 14(2) of the Patent Cooperation Treaty Internationalfilingdate: thisdefinitionwasinserted,asfrom1December1992,

by section 2 Patents Amendment Act 1992 (1992 No 81).

Invention meansanymannerof newmanufacturethesubject of letters patent and grant of privilege within section 6 of the StatuteofMonopoliesandanynewmethodorprocessoftesting applicable to the improvement or control of manufacture; and includes an alleged invention

JournalmeansthePatentOfficeJournalpublishedundersub

section (1) of section 112 of this Act Minister means the Minister of Commerce Minister: substituted, as from 1 December 1988, by section 4(1) Trade and

Industry Act Repeal Act 1988 (1988 No 156).

Patent means letters patent for an invention Patent Cooperation Treaty—

(a)

Means the Patent Cooperation Treaty, signed at Washington on the 19th day of June 1970, the text of which, as amendedon the 2nd day ofOctober 1979 andmodifiedonthe3rddayofFebruary1984,issetoutinSched ule 1 to the Patents Amendment Act 1992; and

(b)

Includesanyamendments,modifications,andrevisions from time to time made to the Treaty, being amend

ments, modifications, and revisions to which New ZealandisapartyandbywhichNewZealandisbound: Patent Cooperation Treaty: this definition was inserted, as from 1 December 1992, by section 2 Patents Amendment Act 1992 (1992 No 81).

Patentofadditionmeansapatentgrantedinaccordancewith

section 34 of this Act PatentAttorney meansaperson carryingonfor gaininNew Zealand the business of acting as agent for other persons for the purpose of applying for or obtaining patents in New Zealand or elsewhere

Patentee, in relation to any patent, means the person or persons for the time being entered on the register of patents as grantee or proprietor of the patent

Prescribed means prescribed by this Act or by regulations

made under this Act Priority date has the meaning assigned to it by section 11 of this Act

Published, except in relation to a complete specification, means made available to the public; and without prejudice to the generality of the foregoing provision a document shall be deemed for the purposes of this Act to be published—

(a)

If it can be inspected as of right at any place in New Zealand by members of the public whether upon payment of a fee or otherwise; or

(b)

If it can be inspected in a library of a Government Departmentorofanyinstitutionorpublicauthorityandthe libraryisonewhichisopengenerallytomembersofthe public who are interested in mattersto which thedocument relates and is a library in which members of the public in search ofinformation related to the subjectof thedocumentwouldordinarilyseekanddoinfactseek the information:

ReceivingOffice hasthesame meaningas inArticle 2(xv) of the Patent Cooperation Treaty Receiving Office: this definition was inserted, as from 1 December 1992, by

section 2 Patents Amendment Act 1992 (1992 No 81).

TheStatuteofMonopolies meanstheActofthe21styearof thereignofKingJamestheFirst,chapter3,intituled“AnAct

concerningmonopoliesanddispensationswithpenallawsand the forfeiture thereof”. Treaty application means an international application—

(a)

Which contains a request specifying New Zealand as a designated State under Article 4(1)(ii) of the Patent Cooperation Treaty; and

(b)

Which has been given an international filing date:

Treaty application: this definition was inserted, as from 1 December 1992, by section 2 Patents Amendment Act 1992 (1992 No 81).

Treaty regulations—

(a)

Means the regulations made under the Patent Cooper ation Treaty and set out in Schedule 2 to the Patents Amendment Act 1992; and

(b)

Includes any amendments from time to time made to those regulations.

Treaty regulations: this definition was inserted, as from 1 December 1992, by section 2 Patents Amendment Act 1992 (1992 No 81).

(2)

For the purposes of subsection (3) of section 7 of this Act, so far as it relates to a convention application, and for the pur poses of section 81 of this Act, the expression personal representative,inrelationtoadeceasedperson,includesthelegal representative of the deceased appointed in any country outside New Zealand.

(3)

In the case of an entity that is a convention country but is not a state, part of a state, or a territory for whose international relations a state is responsible,—

(a) A reference in this Act to—

(i)

Application for protection in a country; or

(ii)

Application for protection in respect of a coun

try,— mustbereadasareferencetoapplicationforprotection under the rules of the entity:

(b)

AreferenceinthisActtofilingaspecificationinaconvention country must be read as a reference to filing a specification under the rules of the entity:

(c)

AreferenceinthisActtothelawofaconventioncountrymustbereadasareferencetotherulesoftheentity:

TradeMarksunderthePatents,Designs,andTradeMarksAct 1921-22shall be deemed to havebeenappointedan Assistant Commissioner of Patents under this Act. Compare: 1921-22 No 18 ss 114, 115

AreferencetotheStateServicesAct1962insubsection(1)wassubstituted,as from1January1963,forareferencetothe“PublicServiceAct1912”pursuant to section 77(1) State Services Act 1962 (1962 No 132). This was in turn substituted, as from 1 April 1988, by a reference to the State Sector Act 1988 pursuant to section 88(2) State Sector Act 1988 (1988 No 20).

5A Closing of Patent Office at short notice

(1)

Notwithstandingsubsection (2) ofsection5ofthisAct,where, because of an emergency or other temporary circumstances, the Commissioner is satisfied that it is or will be necessary or desirable to close the Patent Office on any day and it is not practicable to give notice of the closure in the Journal as requiredbythatsubsection,theCommissionermay,withoutgiv

(4)

Nothinginsubsections (1) and (2) ofthissectionshallprevent any former officer or employee of the Patent Office who is practisingasasolicitororpatentattorneyfromlawfullycarrying out, within the period of one year specified in those sub-sections,anyfunctionthatismerelyincidentaltothatpractice. Compare: 1947 No 37 s 4

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Application, investigation, opposition, etc 7 Persons entitled to make application

(1) An application for a patent for an invention may be made by any of the following persons, that is to say:

(a)

Byanypersonclaimingtobethetrueandfirstinventor of the invention:

(b)

Byanypersonbeingtheassigneeofthepersonclaiming tobethetrueandfirstinventorinrespectoftherightto make such an application,—

and may be made by that person either alone or jointly with any other person.

(2) Without prejudice to the foregoing provisions of this section, an application for a patent for an invention in respect of whichprotectionhasbeenappliedforinaconventioncountry (whether before or after it became a convention country) may be made by the person by whom the application for protectionwasmadeorbytheassigneeofthatperson;andfor the purposes of this Act the filing in any convention country of a complete specification after the filing of a provisional specification or provisional specifications in respect of any such application shall be deemed to be an application for protection in that country: Provided that no application shall be made by virtue of this subsection after the expiration of 12 months from the date of the application for protection in a convention country or, wheremore than onesuch application for protection hasbeen made, from the date of the first application.

(2A) For the purposes of this section, where more than one application for protection in a convention country has been made, the first application may be disregarded and the second application shall be substituted for the first application where—

(a)

The first application was made in or in respect of the same convention country and by the same applicant as the second application; and

(b)

Not later than the date of filing of the second application, the first application was unconditionally withdrawn, abandoned, or refused; and—

(i)

Thefirstapplicationhadnotbeenmadeavailable tothepublicinNewZealandorelsewherebefore its unconditional withdrawal, abandonment, or refusal; and

(ii)

No rights remain outstanding in respect of the first application; and