New Zealand: Patents Bill introduced to Parliament



Following the release of a draft Patents Bill in 2005, a new Patents Bill has now been introduced to the New Zealand Parliament for a first reading. The Bill will then be referred to a select committee.

Proposed law

The Patents Bill retains the most significant proposals for change from the draft Bill. These include:

Our previous report on the draft Bill can be found at:  http://www.freehills.com/publications/publications_4955.asp.

Changes from the draft Bill

The Bill proposes some significant changes from the draft Bill. 

Employee disputes

Where a dispute arises as to an invention made by an employee, the dispute can be referred to either the commissioner or the Employment Relations Authority, an investigative body established under Employment Relations legislation. Under the 1953 Act, such disputes were heard either by the commissioner or the court.  

Experimental use exemption

An experimental use exemption has been introduced. This was to be expected following discussion of such an exemption in 2006.  

Secret use

The ground of revocation of a patent for secret use has been confined to use within New Zealand. The draft Bill provided for revocation based on secret use regardless of where the use occurred.  

Damages

A court may only grant damages or an account of profits for a partially valid patent if it is proved that the invalid claim was framed in good faith and with reasonable skill and knowledge. Previously, account was to be taken of the framing of the specification as a whole.  

It is also interesting that the Bill retains prior art disclosure requirements similar to those that were in effect for a period in Australia and recently abandoned.  

The bill can be viewed at http://www.legislation.govt.nz/bill/government/2008/0235-1/latest/DLM1419043.html.

For more information please contact



Name : Paul Savage
Title : Partner
Office : Sydney
Phone : +61 2 9225 5004
Fax : +61 2 9322 4000
Email : paul.savage@freehills.com

This article provides a summary only of the subject matter covered, without the assumption of a duty of care by Freehills or Freehills Patent & Trade Mark Attorneys. The summary is not intended to be nor should it be relied upon as a substitute for legal or other professional advice.

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