PATENTS ACT 1990
Table of Provisions
CHAPTER 1--Introductory
- 1 Short title
- 2 Commencement
- 2A Object of this Act
- 3 Definitions
- 5 Associated applications
- 6 Deposit requirements
- 7 Novelty, inventive step and innovative step
- 7A Meaning of useful
- 9 Secret use
- 10 Certain international applications to be taken to have been given an international filing date
- 11 Act binds the Crown
- 12 Application of Act
- 12A Application of the
CHAPTER 2--Patent rights, ownership and validity
PART 1--PATENT--RIGHTS
PART 2--OWNERSHIP
PART 3--VALIDITY
DIVISION 1--Validity- 18 Patentable inventions
- 19 Certificate of validity
- 20 Validity of patent not guaranteed
- 21 Validity not implied by making or refusal of non-infringement declaration DIVISION 2--Matters not affecting validity
- 22A Validity not affected by who patent is granted to
- 22 Invalidity in relation to one claim not to affect validity in relation to other claims
- 23 Validity not affected by publication etc. after priority date
- 24 Validity not affected by making information available in certain circumstances
- 25 Validity: patents of addition
- 26 Validity not affected in certain cases involving amendments DIVISION 3--Notice of matters affecting validity
- 27 Notice of matters affecting validity of standard patents
- 28 Notice of matters affecting validity of innovation patents
CHAPTER 3--From application to acceptance
PART 1--PATENT--APPLICATIONS
DIVISION 1--Applications- 29 Application for patent--general rules
- 29A Applications for patents--special rules for PCT applications
- 29B Applications for patents--special rules for Convention applications
- 30 Filing date
- 31 Joint applicants
- 32 Disputes between applicants etc.
- 33 Applications by opponents etc.
- 34 Applications by eligible persons arising out of Court proceedings
- 35 Applications by eligible persons following revocation by Commissioner
- 36 Other applications by eligible persons
- 37 Complete application may be treated as provisional
- 38 Time for making complete application DIVISION 2--Specifications
- 40 Specifications
- 41 Specifications: micro-organisms
- 42 Micro-organisms ceasing to be reasonably available DIVISION 3--Priority dates
- 43 Priority dates
- 43AA Disclosure in basic applications
PART 2--EXAMINATION--OF STANDARD PATENT REQUESTS AND SPECIFICATIONS
DIVISION 1A--Preliminary search and opinion- 43A Preliminary search and opinion DIVISION 1--Examination
- 44 Request for examination
- 45 Examination
PART 3--ACCEPTANCE
DIVISION 1--Acceptance of standard patents- 49 Acceptance of patent request: standard patent
- 49A Postponing acceptance of patent request: standard patent
- 50 Application or grant may be refused in certain cases
- 50A Revocation of acceptance
- 51 Appeal DIVISION 2--Acceptance of innovation patents
- 52 Formalities check and acceptance of innovation patents
CHAPTER 4--Publication
- 53 Publication of certain information about applicants etc.
- 54 Notice of publication
- 55 Documents open to public inspection
- 56 Certain documents and information not to be published or open to public inspection
- 56A Publication and inspection of PCT applications
- 57 Effect of publication of complete specification
- 58 Result of search may be disclosed
CHAPTER 5--Opposition to grant of standard patent
CHAPTER 6--Grant and term of patents
PART 1--GRANT
- 61 Grant of standard patent
- 62 Grant and publication of innovation patent
- 63 Joint patentees
- 64 Grant: multiple applications
- 65 Date of patent
PART 2--TERM
PART 3--EXTENSION--OF TERM OF STANDARD PATENTS RELATING TO PHARMACEUTICAL SUBSTANCES
- 70 Applications for extension of patent
- 71 Form and timing of an application
- 72 Notification and public inspection of application
- 73 Withdrawal of application
- 74 Acceptance or refusal of application
- 75 Opposition to grant of extension
- 76 Grant of extension
- 77 Calculation of term of extension
- 78 Exclusive rights of patentee are limited if extension granted
- 79 Rights of patentee if extension granted after patent expires
- 79A Commissioner not to make decision if court proceedings pending
CHAPTER 6A--Divisional applications
- 79B Divisional applications prior to grant of patent
- 79C Divisional applications for innovation patents may be made after grant of an innovation patent
CHAPTER 7--Patents of addition
- 80 Chapter does not apply to innovation patents
- 81 Grant of patent of addition
- 82 Revocation of patent and grant of patent of addition instead
- 83 Term of patent of addition
- 85 Revocation of patent for main invention
- 86 Renewal fees not payable
- 87 Fees payable where patent of addition becomes an independent patent
CHAPTER 9--Re-examination of standard patents
- 96A Chapter does not apply to innovation patents
- 97 Re-examination of complete specifications
- 98 Report on re-examination
- 99 Statement by applicant or patentee
- 100 Copies of report to be given to court
- 100A Refusal to grant patent--re-examination before grant
- 101 Revocation of patent--re-examination after grant
CHAPTER 9A--Examination, re-examination and opposition-innovation patents
PART 1--EXAMINATION--OF INNOVATION PATENTS
- 101A Examination may be requested or Commissioner may decide to examine
- 101B Examination of an innovation patent
- 101C How and when examination to be carried out
- 101E Certificate of examination
- 101EA Revocation of certificate of examination
- 101F Revocation of innovation patents following examination under section 101B
PART 2--RE---EXAMINATION OF INNOVATION PATENTS
- 101G Re-examination of complete specifications of innovation patents
- 101H Patentee statements
- 101J Revocation of innovation patent following re-examination
- 101K Relevant proceedings and re-examination
- 101L Copies of report to be given to court
PART 3--OPPOSITION--TO INNOVATION PATENTS
- 101M Opposition to innovation patent
- 101N Hearing and decision by the Commissioner
- 101P Relevant proceedings and opposition
CHAPTER 10--Amendments
PART 1--AMENDMENTS--THAT ARE NOT ALLOWABLE
PART 2--AMENDMENTS--OF PATENT REQUESTS, SPECIFICATIONS AND OTHER FILED DOCUMENTS
- 104 Amendments by applicants and patentees
- 105 Amendments directed by court
- 106 Amendments directed by Commissioner: patents
- 107 Amendments directed by Commissioner: applications for standard patents
- 109 Appeal
PART 3--MISCELLANEOUS
- 110 Advertisement of amendment of complete specification
- 112 Pending proceedings
- 112A Decisions on appeal
- 113 Persons claiming under assignment or agreement
- 114 Priority date of claims of certain amended specifications
- 114A Objection cannot be taken to certain amended specifications
- 115 Restriction on recovery of damages etc.
- 116 Interpretation of amended specifications
CHAPTER 11--Infringement
PART 1--INFRINGEMENT--AND INFRINGEMENT PROCEEDINGS
- 117 Infringement by supply of products
- 118 Infringement exemptions: use in or on foreign vessels, aircraft or vehicles
- 119 Infringement exemptions: prior use
- 119A Infringement exemptions: acts for obtaining regulatory approval of pharmaceuticals
- 119B Infringement exemptions: acts for obtaining regulatory approval (non-pharmaceuticals)
- 119C Infringement exemptions: acts for experimental purposes
- 120 Infringement proceedings
- 121 Counter-claim for revocation of patent
- 121A Burden of proof--infringement of patent for a process
- 122 Relief for infringement of patent
- 123 Innocent infringement
PART 2--NON---INFRINGEMENT DECLARATIONS
- 124 Interpretation
- 125 Application for non-infringement declaration
- 126 Proceedings for non-infringement declarations
- 127 Effect of non-infringement declarations
PART 3--UNJUSTIFIED--THREATS OF INFRINGEMENT PROCEEDINGS
- 128 Application for relief from unjustified threats
- 129 Court's power to grant relief if threats related to a standard patent or standard patent application
- 129A Threats related to an innovation patent application or innovation patent and court's power to grant relief
- 130 Counter-claim for infringement
- 131 Notification of patent not a threat
- 132 Liability of legal practitioner or patent attorney
CHAPTER 12--Compulsory licences and revocation of patents
PART 1--INTRODUCTION
- 132A Simplified outline of this Chapter
PART 2--COMPULSORY--LICENCES (GENERAL)
- 132B Simplified outline of this Part
- 133 Compulsory licences--general
- 134 Revocation of patent after grant of compulsory licence under section 133
- 136 Orders to be consistent with international agreements
- 136A Dealing with allegation of contravention of application law
PART 3--PATENTED--PHARMACEUTICAL INVENTION COMPULSORY LICENCES (FOR MANUFACTURE AND EXPORT TO ELIGIBLE IMPORTING COUNTRIES)
DIVISION 1--Introduction- 136B Simplified outline of this Part
- 136C Relationship between Parts 2 and 3 DIVISION 2--Patented pharmaceutical invention compulsory licences
- 136D PPI compulsory licences--applications for orders
- 136E PPI compulsory licences--orders
- 136F PPI compulsory licences--terms
- 136G PPI compulsory licences--amendment
- 136H PPI compulsory licences--revocation DIVISION 3--Remuneration
- 136J PPI compulsory licences--remuneration DIVISION 4--General
- 136K PPI compulsory licences--nature of orders
- 136L PPI compulsory licences--consistency of orders with international agreements
- 136M PPI compulsory licences--applications heard together
PART 4--SURRENDER--AND REVOCATION OF PATENTS
- 136N Simplified outline of this Part
- 137 Revocation on surrender of patent
- 138 Revocation of patents in other circumstances
PART 5--OTHER--MATTERS
- 138A Simplified outline of this Part
- 139 Parties to proceedings
- 140 Commissioner to be given copies of orders
CHAPTER 13--Withdrawal and lapsing of applications and ceasing of patents
- 141 Withdrawal of applications
- 142 Lapsing of applications
- 143 Ceasing of patents
- 143A Ceasing of innovation patents
- 143B Payment of fees
CHAPTER 14--Contracts
- 145 Termination of contract after patent ceases to be in force
CHAPTER 15--Special provisions relating to associated technology
- 147 Certificate by Director as to associated technology
- 148 Lapsing etc. of applications
- 149 Revocation of direction
- 150 Restoration of lapsed application
- 151 Reinstatement of application as an international application
- 152 Notice of prohibitions or restrictions on publication
- 153 Effect of order
CHAPTER 16--Jurisdiction and powers of courts
- 154 Jurisdiction of Federal Court
- 155 Jurisdiction of other prescribed courts
- 156 Exercise of jurisdiction
- 157 Transfer of proceedings
- 158 Appeals
- 159 Commissioner may appear in appeals
- 160 Powers of Federal Court
CHAPTER 17--The Crown
PART 1--INTRODUCTORY
PART 2--EXPLOITATION--BY THE CROWN
- 163 Crown exploitation of inventions--general rule
- 163A Crown exploitation of inventions--emergencies
- 164 Crown exploitation of inventions--information to be given by relevant authority
- 165 Crown exploitation of inventions--terms (including remuneration)
- 165A Crown exploitation of inventions--court order to cease
- 166 Certain agreement and licences inoperative unless approved by relevant Minister
- 167 Sale of products
- 168 Supply of products by Commonwealth to foreign countries
- 170 Sale of forfeited articles
PART 3--ACQUISITIONS--BY AND ASSIGNMENTS TO THE CROWN
- 171 Acquisition of inventions or patents by Commonwealth
- 172 Assignment of invention to Commonwealth
PART 4--PROHIBITION--ORDERS
- 173 Prohibition of publication of information about inventions
- 174 Effect of prohibition orders
- 175 Disclosure of information to Commonwealth authority
- 176 International applications treated as applications under this Act
CHAPTER 18--Miscellaneous offences
- 177 False representations about the Patent Office
- 178 False representations about patents or patented articles
- 182 Officers not to traffic in inventions
- 183 Unauthorised disclosure of information by employees etc.
- 184 Other unauthorised disclosures of information
- 185 Commissioner etc. not to prepare documents or search records
CHAPTER 19--The Register and official documents
- 186 Register of Patents
- 187 Registration of particulars of patents etc.
- 188 Trusts not registrable
- 189 Power of patentee to deal with patent
- 190 Inspection of Register
- 191 False entries in Register
- 191A Commissioner's power to rectify register
- 192 Orders for rectification of Register
- 193 Inspection of documents
- 194 Information obtainable from Commissioner
- 195 Evidence--the Register
- 196 Evidence--unregistered particulars
- 197 Evidence--certificate and copies of documents
- 197AA Evidence of matters arising under PCT
CHAPTER 20--Patent Attorneys
PART 1--REGISTRATION--, PRIVILEGES AND PROFESSIONAL CONDUCT
PART 2--OFFENCES
- 201 Acting or holding out without being registered
- 201A When a person carries on business, practises or acts as a patent attorney
- 201B Incorporated patent attorney must have a patent attorney director
- 202 Documents prepared by legal practitioners
- 202A Documents prepared by a member of a partnership
- 202B Documents prepared by incorporated patent attorneys and incorporated legal practices
- 203 Attendance at patent attorney's office
- 204 Time for starting prosecutions
CHAPTER 21--Administration
- 205 Patent Office and sub-offices
- 206 Patent Office seal
- 207 Commissioner of Patents
- 208 Deputy Commissioner of Patents
- 209 Delegation of Commissioner's powers and functions
- 210 Commissioner's powers
- 210A Sanctions for non-compliance with Commissioner's requirements
- 211 Recovery of costs awarded by Commissioner
CHAPTER 22--Miscellaneous
- 212 Copies of examination reports to be communicated
- 213 Making and signing applications etc.
- 214 Filing of documents
- 214A Approved means of filing documents
- 214B Directions by Commissioner for filing of documents
- 214C Directions by Commissioner for filing of evidence
- 215 Death of applicant or nominated person
- 216 Exercise of discretionary power by Commissioner
- 217 Assessors
- 218 Costs where patent invalid in part
- 219 Security for costs
- 220 Costs of attendance of patent attorney
- 220A Notifications by Commissioner under this Act
- 221 Service of documents
- 222 Publication ofetc.
- 222A Doing act when Patent Office reopens after end of period otherwise provided for doing act
- 223 Extensions of time
- 223A Computerised decision-making
- 224 Review of decisions
- 225 Conduct of employees and agents of natural persons
- 226 Documents open to public inspection do not infringe copyright
- 227 Fees payable under this Act
- 227AAA Approved means of paying a fee
- 227AB Application of administrative law regime to decisions made in New Zealand
- 227A Trans-Tasman IP Attorneys Board
- 227B Publishing personal information of registered patent attorneys
- 228 Regulations
- 229 Instrument determining formalities requirements for patent documents