Patents of Invention

– Patents (United States of America) Regulations 1956.
– Patents, Designs and Trade Marks Convention Order 2012 (2012/189).
– Patents Act 2013 (2013, No. 68) and the Patents Regulations 2014 (SR 2014/275), effective as from September 13, 2014.
– Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016, effective as from February 24, 2017.

Notes: (1) In February 2017, the Patents Amendment Act 2016 came into force, under which the registration and regulation of patent attorneys in New Zealand and Australia would be done under a single regulatory body. (2) The 1953 Act will continue to apply to: (a) all applications with a complete specification made before September 13, 2014; (b) all Treaty (PCT) applications that have entered the national phase before September 13, 2014; and (c) divisional applications that have been antedated to a date earlier than September 13, 2014. (3) Patents granted under the 1953 Act are governed by the 2013 Act, but retain their key dates, term and grounds for revocation.

Membership in International Conventions

– Paris Convention, London Act, ratified on July 14, 1946, and Articles 13 to 30 Stockholm Act, on June 20, 1984.
– Convention Establishing the World Intellectual Property Organization (WIPO), since June 20, 1984.
– Patent Cooperation Treaty (Chapters I and II), since December 1, 1992.
– WTO’s TRIPS Agreement, since January 1, 1995.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since November 22, 2001.
– Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, since March 17, 2019.

Filing

Applicant: any person may apply either alone or jointly, but a patent may only be granted to inventor or person deriving title from inventor (nominated person). 

Foreigners and nationals not living in the country: must furnish an address for service in New Zealand. 

Protection of foreigners: must furnish an address for service in New Zealand. 

Naming of inventor(s): an inventor (a devisor of the invention) is entitled to be mentioned as such in the patent, on request or claim made no later than two months (extendible by one month) after publication of the complete specification. 

Notion of the invention: any manner of new manufacture that is novel, involves an inventive step, is useful, and is not excluded subject matter.

 Novelty: the invention claimed must not form a part of the prior art base. The prior art base means anything made available to the public anywhere in any manner before the priority date of a claim. The prior art base (for novelty but not inventive step) includes information in any other complete specification with an earlier priority date. Excepted are disclosures resulting from (1) the matter having been obtained unlawfully and the application is made within twelve months of that disclosure; (2) the publication of the matter was as a result of a breach of confidence and the application is made within twelve months of that publication; (3) communication to a government department for purpose of investigation of the invention and the application is made within twelve months of that communication; (4) display at an officially notified exhibition and the application is made within six months of that display; (5) public working within New Zealand within one year before the application, only if reasonably necessary for purposes of reasonable trial having regard to the nature of the invention; (6) disclosure by the patentee, any person deriving title from the patentee, or any person with consent of the patentee in the one year immediately preceding the patent date. 

Exceptions to protection (unpatentable inventions): a computer program as such; inventions whose commercial exploitation is contrary to public order (ordre public) or morality; human beings or biological processes for their generation; methods of surgical or therapeutic treatment of humans; diagnostic methods practiced on humans; plant varieties.

Kinds of applications: (a) non-Convention; (b) Convention; and (c) Treaty applications. (a) a non-Convention application may be filed with a provisional specification or a complete specification; a complete specification must be filed within twelve months, extendible to a maximum of fifteen months, of filing the provisional specification; (b) a Convention application must be filed with a complete specification within twelve months of the earliest priority date; (c) Treaty application – the entry of an international PCT application into the New Zealand national phase is deemed to be an application accompanied by a complete specification; the request must be made within 31 months (both Chapter I and Chapter II) of the earliest priority date. 

Kinds of protection: independent patents and patents of addition. Patents of addition are for inventions that are improvements in or modifications of an invention forming the subject of an earlier independent patent or patent application. If an independent patent has been obtained for the improvement or modification, this may be converted to a patent of addition to the patent for the main invention, provided that the patentee is the same in both cases. Patents of addition are granted for the remaining term of the main patent, and are not subject to payment of renewal fees. If the main patent is revoked, the patent of addition may be converted to an independent patent for the same term, subject to payment of renewal fees after conversion. 

Confirmation patents: not available.

Secret patents: not granted; but directions may be made by the Commissioner prohibiting or restricting publication of information with respect to inventions regarded as relevant or valuable for defense purposes. Applications in respect of which such directions have been made are referred to the Minister of Defense for consideration. No patent may be granted on an application in respect of which secrecy directions remain in force. When secrecy directions have been revoked, and a patent sealed, no renewal fees are payable in respect of the period during which the secrecy directions were in force. 

Priorities: multiple and partial priorities may be claimed. However, in the case of applications claiming partial priority, the additional subject matter in respect of which priority is not claimed must not have formed the subject of an application for patent in a Convention country at a date earlier than that of the application from which priority is claimed. In such cases, the additional subject matter can only be made the subject of a separate non-Convention patent application in New Zealand. Priorities should be claimed on filing a Convention application. 

Assignment: assignment of a patent application is registrable by substitution of applicant; the assignment should be by deed to be registrable as such.

Territory covered: New Zealand. 

Other international conventions: all countries with which New Zealand has an international or bilateral arrangement to claim Convention priority are listed in the Patents, Designs and Trade Marks Convention Order 2012.

Filing requirements for an application (to be sent to an agent resident in New Zealand or Australia). The Intellectual Property Office of New Zealand will only accept applications filed electronically through its online system. Documents should be sent in electronic form:
(a) Non-Convention and Convention applications:
1. Must be made using online case management system;
2. Name, address, nationality or principal place of business of each applicant;
3. Title of invention;
4. Name and address of each inventor;
5. Abstract (for a complete specification);
6. Specification including claims (if complete specification);
7. Drawings;
8. Certified copy of basic application(s) (if Convention case) with verified English translation(s) thereof if basis application(s) not in English (but only if required by Commissioner);
9. Signed (electronically) Notice of Entitlement Form (prior to acceptance).

(b) Treaty applications:
1. International application number (the international application, details and document will be downloaded from the WIPO server by the IPONZ online case management system);
2. Any amendments proposed during international phase;
3. Verified English translation(s) of document(s) not in English;
4. Signed (electronically) Notice of Entitlement Form (prior to acceptance).

Minimum for informal filing: specification; informal drawings; details of applicant and inventor; details of Convention application (or details of international PCT application). A filing fee is required to obtain a filing date. 

Filing of priority documents (Convention applications): only if requested by Commissioner within two months after the request. Verified English translation(s) of PCT specification and/or priority document(s) on a Treaty application to be filed within three months of entering the national phase. Thereafter, an extension of time of two months is available on request, at the discretion of the Commissioner of Patents. 

Consular legalization: legalization of signatures is not required, but English translations of priority documents (and PCT specifications) must be verified by a signed and dated certificate of verification. 

Late filing of complete specification or Convention application due to failure or delay of delivery method allowed on satisfying Commissioner by evidence of causes. Applicants must show that they allowed sufficient time for delivery, acted with due diligence and prudence, and without undue delay in seeking extension.

Examination Procedure

Amendment of application: unaccepted applications may be amended to meet official objections, or voluntarily on request of the applicant and with leave of the Commissioner. If new matter is added, the Commissioner may direct postdating of the application or specification to the date on which the amendment was first filed. Accepted complete specifications may be amended (apart from correction of an obvious mistake), but an amendment is not allowed if the effect is to claim or describe matter not in substance disclosed, or if the amended claim is not wholly within the scope of a claim; in each case, before the amendment. The Commissioner’s allowance of an amendment after publication is conclusive, unless fraudulently obtained.

Excess claim fees: there is an excess claim fee for each complete group of 5 claims over 25, payable after acceptance (allowance) of the application. The excess claim fee will apply if the specification includes 30 or more claims at any time during examination, and is calculated on the maximum number of claims present in the application at any time after requesting examination.

Process claims: process claims are allowable, and are deemed to extend to the product of the process, even in the absence of separate product claims. If the process is for obtaining a new product, an alleged infringing product is presumed to have been produced by the patented process unless the defendant proves otherwise. Swiss type use claims are allowed for second and subsequent medical uses of known pharmaceutical compounds. 

Prior use: prior use (other than prior secret use outside New Zealand) of an invention anywhere will invalidate a patent for invention, unless it falls within one of the exceptions listed under “Novelty” (above).

Disputes about ownership: obtaining of an invention in contravention of another’s rights is a ground for opposition to an application and for revocation of a patent. An application for patent by the person entitled may be accorded the priority of the application made in contravention of their rights. Disputes between co-owners of a patent as to the working of the patent may be referred to the Commissioner for directions. The Commissioner and the Employment Relations Authority each have power to determine disputes between employer and employee as to inventions made by employees. 

Disputes about novelty: novelty may be disputed by third parties (without the need to show a legal interest) by making a pre-grant assertion or opposition; post acceptance or post grant re-examination; or post grant revocation proceedings (see below for details). 

Requesting examination: examination may be requested by the applicant or by a third party. The Commissioner may direct the applicant to request examination. The request must be made no later than five years from the filing date (the ante-date of a divisional or the post date of a postdated application) of the complete specification date or within two months of a direction from the Commissioner. 

Examination: examination is done (on the balance of probabilities) to determine whether: (1) the application and specification comply with the Act and Regulations; (2) the applicant has complied with all requirements under the Act and Regulations; (3) the invention claimed is a manner of new manufacture, is novel, involves an inventive step, is useful and is not excluded subject matter; and (4) whether there is any lawful ground of objection to the grant of a patent. An application must be put in order for acceptance within twelve months of the date of issuance of first examination report. New Zealand is a member of the Global Patent Prosecution Highway (GPPH) programme, allowing expedited examination for patent applications on the basis that one or more claims of a corresponding application have been found to be allowable by another GPPH IP office. 

Division: division of an application (before acceptance) may be made voluntarily, or may be required by the Commissioner on the ground of plurality of invention. The Commissioner may, on request, direct that the divisional application be antedated to the date of filing of the parent application. 

Restoration: an application that has lapsed by failure to comply with requirements or by failure to pay any fee may be restored on proof that the failure was unintentional and no undue delay has occurred in applying for restoration. 

Application kept secret: secrecy directions may be given by the Commissioner (see above under “Secret patents“).

Opposition to application filed: any person may commence an opposition within three months after the publication of acceptance of an application in the Patent Office Journal. This period may be extended by one month (two months with applicant’s consent), on request made within the initial three-month opposition period. 

Reasons and procedure for opposition: the grounds for opposition are that: (1) the claimed invention is not a patentable invention (a manner of new manufacture, novel, involving an inventive step, useful and not excluded subject matter); (2) the nominated person was not entitled to the patent; (3) the complete specification does not comply with the requirements of the Act; (4) the applicant is attempting or has attempted to obtain the patent by fraud, false suggestion or a misrepresentation; (5) the claimed invention was secretly used in New Zealand before a claim’s priority date; (6) granting the patent would be contrary to law. Prior secret use outside New Zealand is not a ground for opposition. 

Provisional application: a non-Convention application for a patent may initially be accompanied by a provisional specification. If a complete specification is not filed within twelve months, extendible to a maximum period of fifteen months, the application is deemed abandoned. 

Maintenance fees: maintenance fees are payable annually commencing on the fourth anniversary of the date of filing of the complete specification until the date of grant (after which they are payable as renewal fees).

Granting, Protection

Publication: the application documents for non-Treaty applications are open to public inspection eighteen months after their earliest priority date. Treaty applications are taken to be open to public inspection on the date that they are published under PCT Article 21. 

Grant of patent: in the absence of opposition, a patent is granted as soon as possible after the expiry of the opposition date deadline. 

Beginning of protection: the patent is dated as of the filing date of the complete specification (or as of the international filing date in the case of a Treaty application). Infringeable rights are acquired in future on the laying open of the complete specification, but are not enforceable unless and until a patent has been sealed. If an application is amended before acceptance, no damages or account of profits may be awarded for infringement before the amendment is allowed. Action must be brought within six years from the date of infringement or six years from the date of patent sealing, whichever is the later. 

Duration – extension: New Zealand patents are granted for a term of twenty years from the filing date of the complete specification, subject to the payment of renewal fees; extensions of term are not obtainable. 

Renewal – latest term for payment – extension: renewal fees are payable annually from the fourth anniversary of the date of the patent (being the filing date of the complete specification or the international filing date of a Treaty application). A fee may not be paid more than three months before it is due. A maximum extension of six months may be had for late payment subject to extension fees. Lapsed patents may be restored on proof that failure to pay the renewal fee was unintentional. An application to restore must be made within twelve months of the date the fee was due or outside that time if no undue delay has occurred in applying for restoration. 

Marking of patented goods: marking is not compulsory, but failure to mark may provide a defense of innocent infringement, defeating a claim for damages or account of profits. 

Text of marking: “New Zealand Patent (number)” or “N.Z. Pat. (number)”.

Amendment of issued patents: (see above for accepted complete specifications under “Amendment of application“).

Revocation: patents may be revoked on application to the Commissioner of Patents or to the High Court at any time during the life of the patent on the same grounds as those available in opposition proceedings (except that in ground (2), that the patentee was not entitled to the patent).

Assignment: assignment of an application or an issued patent should preferably be by deed of assignment.

License for exploitation: licenses may be in form of a deed or an agreement. Assignments and licenses must be registered, although no penalty is provided for non-registration. Registration of assignments and licenses constitutes notice to the public, and therefore protects essentially the interests of the assignee or licensee. Documents creating an interest in a patent (such as licenses or mortgages) also need to be registered in the Personal Properties Securities Register (established under the Personal Property Securities Act 1999) to be enforceable. 

Working: working of patented inventions in New Zealand is not compulsory. However, a compulsory license may be granted, on the application of any interested person to the High Court after the later of three years from the sealing of the patent or four years from the date of the patent, on proof that a market for the patented invention is not being supplied, or is not being supplied on reasonable terms, in New Zealand. 

Validation of invalidated patents: a patent which has lapsed for non-payment of a renewal fee may be restored on proof that failure to pay the fee was unintentional, and that application for restoration was made as soon as reasonably possible after the patentee became aware that the patent had lapsed. In legal proceedings where the validity of the patent is successfully disputed, the Court may, in appropriate cases, allow the specification to be amended, instead of revoking the patent.

Modification of Protection after Granting

Right of prior user: a patent may be revoked if the invention was used in public anywhere or secretly in New Zealand before the priority date of the patent claims. In addition, exploitation or taking definite steps to exploit an invention in New Zealand by a third party prior to the priority date of any relevant claim are defenses to infringement. The exploitation or taking steps to exploit must not have stopped or been abandoned. This prior user right may be transferred but not licensed. 

Compulsory licenses: compulsory licenses may be granted on proof that a market for the patented invention is not being supplied, or is not being supplied on reasonable terms, in New Zealand. 

Expropriation: although patents may not be expropriated, the Crown has extensive powers in regard to the use of patented inventions for its services. Such use is subject to notification to the patentee (unless contrary to public interest), and is on terms that, in default of agreement between the relevant government department and the patentee, may be determined on reference to the High Court. During a period of emergency, the Crown has enlarged powers in regard to the use of patented inventions. 

Nullification: a patent may be revoked on application by any person on any of the grounds set out under “Revocation” (above). In addition, a court may invalidate a patent if a patentee has failed to comply with a request by a government department to exploit a patent on reasonable grounds. 

Infringement: a patent gives the patentee the exclusive right to exploit the patented invention in New Zealand. Infringement may be restrained by a High Court injunction in a civil action inter partes, and damages or an account of profits awarded as compensation. A patent is also infringed by supplying any of the means to infringe to another person (contributory infringement). Infringement does not attract criminal sanctions.  

Penalties: statutory penalties are provided for certain offenses in regard to patents, including breaching an order that a patent specification be kept secret and failing to comply with a summons issued by the Commissioner.

Particularities

Copies of specifications: electronic copies of many post-1979 New Zealand patent specifications may be downloaded from the Internet site of the Intellectual Property Office of New Zealand (www.iponz.govt.nz), along with copies of all abstracts dating back to 1979. The searchable collection of New Zealand patent abstracts extends back to 1861 (excluding the period 1880 to 1890). Copies of earlier complete specifications are stored with New Zealand Archives.