New Zealand Legal Documents


Trademark & copyright licences

This range of New Zealand trademark & copyright licence agreements offer an effective means of protecting your investment in your IP and covers issues such as royalties.

12

How to obtain a patent

Introduction

Applications for patents are made to the Intellectual Property Office. There are set forms for this, and you must pay a fee.

What is a patent?

A patent is a legal device that can be obtained to prohibit others from making, using or selling an invention that you can claim as original, novel and not already in existence.

Patents are governed by the PATENTS ACT 1953 and the PATENTS REGULATIONS 1954. Patents are administered in New Zealand by the Intellectual Property Office, which is in Lower Hutt, Wellington.

Who is eligible to apply for a patent?

An application for a patent may be made by the person who claims to be the true and first inventor of the invention, or by a person to whom the inventor has assigned the right to make the application. You may apply either separately or jointly with another person.

Note that firms, partnerships and other unincorporated bodies are not entitled to apply in those capacities, but must instead apply in the names of the partners constituting the firm, partnership or other unincorporated body. The application must be signed by all of those people.

If the person who was entitled to apply for a patent dies without making an application, the application may only be brought by the deceased's personal representative.

A person overseas may communicate an invention to a representative (the "communicatee"), who may then apply for a patent claiming to be the inventor. However, the communicatee should indicate on the application form the person on whose behalf the application is made (that is, the person who communicated the invention).

What may be patented?

An application for a patent may be made in respect of an "invention", as defined in the PATENTS ACT 1953. "Invention" means:

  • any manner of new manufacture, or
  • any new method or process of testing applicable to the improvement or control of manufacture

It is not possible to form an exhaustive list of what will and what will not come within this definition. The Intellectual Property Office is influenced by the facts of each case on its merits and also by relevant decisions from the courts; therefore one cannot state in advance precisely how the Office will treat a particular application. In general it seems that any new manufacture that results in some economic significance will be treated as patentable. In certain circumstances patents have also been granted for improvements that, although small in themselves, are of economic importance.

Note that mere intellectual information or visual content is not patentable. Examples include business systems, bookkeeping methods, mathematical or scientific formulae, and arrangements of words on a printed sheet.

An application for a patent may be refused if the use of the invention would be contrary to the law or to morality.

Who do I apply to for a patent?

You should apply to either of the following:

  • The Commissioner of Patents
    PO Box 30-687
    Lower Hutt
    Wellington
  • Intellectual Property Office of New Zealand (IPONZ)
    PO Box 9241
    Marion Square
    Wellington 6141
    Free phone 0508 447 669
    Website: www.iponz.govt.nz

What must I include in the application?

Applications must be made in the prescribed forms (in duplicate), and must be accompanied by the prescribed fee. You can obtain these forms from the Intellectual Property Office, but they must be completed with the correct wording and in accordance with the requirements of the PATENTS ACT 1953.

The application must contain the title given to the invention, which should indicate the subject-matter. The title should be brief but comprehensive. It is not necessary that it be the name under which the invention will be sold.

Further, the regulations set out certain details that must be included, including specifications, drawings and descriptions.

The regulations also provide for obtaining a patent to apply outside New Zealand and for obtaining provisional patents.

An application may be for one invention only

Each application for a patent must be restricted to one invention only. Several distinct matters will not necessarily be deemed to be one invention merely because they are all related to or come from part of an existing machine, apparatus or process.

How long do patents last for?

A patent lasts for 20 years. For the patent to continue after that, it is necessary to pay a fee.

Information that is available from the Intellectual Property Office

The Intellectual Property Office administers the Acts and regulations that govern patents, trademarks and registered designs. The Office holds a comprehensive library of technical and reference material, both from within New Zealand and overseas. They make available to the public copies of New Zealand patents, trademarks and designs. They have a comprehensive and very helpful web page (www.iponz.govt.nz).

Patents are recorded in a Register of Patents, which provides information on their current status. The public can inspect this register at the Intellectual Property Office.

Falsely claiming to be a patent-holder

It is an offence to falsely represent that you are the true holder of a patent of an invention. If convicted, you will be liable to a fine of up to $200.

Cautionary notes
  • Unless you are familiar with the PATENTS ACT 1953 and the patent system, applying for a patent can be a complex process. It is advisable that you obtain the services of a registered patent attorney to ensure that your application meets the requirements of the Act and to ensure that your interests will be appropriately protected.
  • The most essential element of an application for a patent is that the concept, idea or invention be novel. A patent will not and cannot be granted for a concept or idea that is already known to the public of New Zealand.
  • After a patent has expired it cannot be patented again, other than as a continuation of the original patent.
  • It is strongly recommended that you keep copies of all forms and documents that you send to the Intellectual Property Office, both for your own records and for any future correspondence with the Office. If you obtain the services of a patent attorney to apply on your behalf, the attorney will keep these records for you.

How to obtain a trademark

Introduction

If you're starting up a business or your existing company is developing a product or feature that distinguishes your goods or services from other competitors, you should select a brand or brand name and protect it by registering it as a trade mark. To register a trade mark you must apply to the Intellectual Property Office (see below).

The trade mark system is governed by the TRADE MARKS ACT 2002 and the TRADE MARKS REGULATIONS 2003 (SR 2003/187). These laws, which came into force on 20 August 2003, introduced some important reforms to the trade mark system. They are generally expected to make the process of applying for and maintaining registration more efficient.

What is a trade mark?

A trade mark is often called a "brand" or "brand name". It can be a name, signature, word (including an invented word), label or sign. In some cases it can include the shape of the goods themselves and the shape of the packaging if this can be represented in graphic form. A trade mark can include smells, sounds and containers.

Selecting a trade mark & ensuring you don't infringe an existing trade mark

Selecting a suitable trade mark is one of the most crucial decisions a business can make. You should select a brand name or symbol that is capable of distinguishing its goods and services from the competition.

When choosing a trade mark you should check the public record of registered trade marks to ensure that you do not infringe on another company's mark. You can do this by searching the register of trade marks maintained by the Intellectual Property Office (IPONZ), either at their Lower Hutt office or on their website at www.iponz.govt.nz, or alternatively you can ask IPONZ to carry out the search for you.

How do I apply to register a trade mark?

To register your trade mark, you should first obtain the application forms from:

  • Intellectual Property Office of New Zealand (IPONZ)
    PO Box 9241
    Marion Square
    Wellington 6141
    Free phone 0508 447 669
    Website: www.iponz.govt.nz, or
  • the Companies Office in any of New Zealand's main centres

You should send the completed forms either to the IPONZ office in Lower Hutt or to your local Companies Office.

You will have to pay a fee with your application. The amount will depend on the number of different classes of goods and services in relation to which you are registering your trade mark. For up-to-date information on fees, check www.iponz.co.nz.

The date from which your trade mark is protected (or from which you will have priority over other applicants for the same mark) will be the date on which the Intellectual Property Office or the Companies Officer receives your application.

Some trade marks cannot be registered, generally because they are not sufficiently distinctive. A trade mark may also be unacceptable because it is, for example, misleading or offensive (for more on this, see "Indigenous marks" below). If the Intellectual Property Office believes that your trade mark is not acceptable, your rights in response will include the right to a hearing before an IPONZ Hearings Officer.

Your application for registration will be advertised, and other parties will have the opportunity to oppose it. If the matter can't be resolved through negotiation, there will be a formal hearing. The Commissioner of Trade Marks will then decide whether or not to accept your application. Either side can appeal this decision to the High Court.

For more information on applying to register a trade mark, see the IPONZ website at www.iponz.co.nz.

Single applications for different classes of goods and services

The trade mark registration system divides up goods and services into different "classes", and trade marks are registered in relation to one or more of these classes. The TRADE MARKS ACT 2002 allows you to make just a single application if you want to register your trade mark in relation to more than one class of goods or services. (Under the previous (1953) Act, by contrast, you had to make a separate application for each class of good or service.)

The application fee will, however, depend on the number of different classes your application relates to: for up-to-date information on fees, check www.iponz.co.nz.

What is the effect of registering a trade mark?

Although you are not required to register your trade mark, it is advisable to do so. When your application to register the trade mark is accepted, your mark will appear on the register of trade marks, and this gives a number of benefits:

  • Registration gives you exclusive use of the trade mark for the goods and services that it applies to, and is effective notice to other companies attempting to register similar trade marks. You can take legal action against any unauthorised use of your trade mark.
  • Selecting and registering a trade mark at an early stage can be a valuable company asset, as you can sell or licence the trade mark.
  • You are also entitled to use the symbol "®" with your mark to indicate that it is a registered trade mark.

The TRADE MARKS ACT 2002 makes it a criminal offence to counterfeit a registered trade mark, or to possess counterfeiting equipment, or to import or sell counterfeit trade mark goods.

Registration in New Zealand does not provide similar protection overseas, and you must apply for protection under the trade mark registration system of the particular country. However, if you make your overseas application within six months of your New Zealand application, this may give you priority over others applying in the same country.

Indigenous marks

A trade mark cannot be registered if it is likely to offend a significant section of the community, including Maori.

A Maori Trade Marks Advisory Committee has been set up to advise the Commissioner of Trade Marks on applications to register trade marks that contain Maori signs, text or imagery.

How long does registration last for?

You must renew the registration of your trade mark after the first 10 years, and then every 10 years after that. You will be notified when your trade mark comes up for renewal.

Losing registration through non-use of your trade mark

If for a continuous period of three years you don't use your trade mark, anyone may apply to have it removed from the register.

(The equivalent period of non-use under the previous Act, the Trade Marks Act 1953, was five years.)

Losing registration through the trade mark becoming a common name

The registration of your trade mark can be revoked if, through your actions or inactivity, your trade mark becomes a common name used by the general public to refer to a particular product or service.

This new rule from the TRADE MARKS ACT 2002 is different from the equivalent rule under the previous Act. Under the 1953 Act, it was only if the trade mark became a common name in "trade use" (as opposed to general public use) that registration could be revoked; so in order to prevent their trade marks becoming a "common name", trade mark owners had only to be concerned to prevent other traders using the trade mark. By contrast the new law places a greater burden on the trade mark owner, as it will be significantly more difficult to take action against the general public to prevent the trade mark becoming a common name in general public use.

Cautionary notes
  • An unregistered trade mark enjoys significantly less protection than one that has been registered. There may therefore be much at stake financially if you fail to register your mark.
  • Obtaining a registered trade mark can be a lengthy and complex process, and may involve a hearing with the Intellectual Property Office. You should therefore hire a lawyer who is experienced in this area to advice and represent you.

NZ$49.00

This is a straight forward but comprehensive publishing agreement for use by either an author/composer or a publisher. Complies with relevant New Zealand legislation.

Document Delivery Format:Delivery format: Download MS Word file
Document Source:Complies with current New Zealand law
Document User Guide Available:Comprehensive document Guide Notes
Document Assembly Method:User fills in template blanks
Document Preview/Sample Available:No document preview
Help Support Email/Telephone:Limited - not legal advice
Country:New Zealand jurisdiction
State:n/a
MainSiteUrl:www.NetLawman.co.nz
NZ$59.00

This is a simple copyright licence agreement whereby the New Zealand owner of the copyright work grants a licence for a specified sum of money, for some other person to exploit his work. You can use this agreement for any sort of created work, for a specific time period or in perpetuity.

Document Delivery Format:Delivery format: Download MS Word file
Document Source:Complies with current New Zealand law
Document User Guide Available:Comprehensive document Guide Notes
Document Assembly Method:User fills in template blanks
Document Preview/Sample Available:No document preview
Help Support Email/Telephone:Limited - not legal advice
Country:New Zealand jurisdiction
State:n/a
MainSiteUrl:www.NetLawman.co.nz
NZ$139.00

This is a flexible sub-licence of any copyright material or created work. Complies with relevant New Zealand legislation.

Document Delivery Format:Delivery format: Download MS Word file
Document Source:Complies with current New Zealand law
Document User Guide Available:Comprehensive document Guide Notes
Document Assembly Method:User fills in template blanks
Document Preview/Sample Available:No document preview
Help Support Email/Telephone:Limited - not legal advice
Country:New Zealand jurisdiction
State:n/a
MainSiteUrl:www.NetLawman.co.nz
NZ$119.00

This is a heavyweight licence agreement for a "How to" product; for example an educational or training system, or a system for psychometric testing. Complies with relevant New Zealand legislation.

Document Delivery Format:Delivery format: Download MS Word file
Document Source:Complies with current New Zealand law
Document User Guide Available:Comprehensive document Guide Notes
Document Assembly Method:User fills in template blanks
Document Preview/Sample Available:No document preview
Help Support Email/Telephone:Limited - not legal advice
Country:New Zealand jurisdiction
State:n/a
MainSiteUrl:www.NetLawman.co.nz
NZ$159.00

This is a heavyweight licence agreement for merchandising rights in any product or work of intellectual property. Complies with relevant New Zealand legislation.

Document Delivery Format:Delivery format: Download MS Word file
Document Source:Complies with current New Zealand law
Document User Guide Available:Comprehensive document Guide Notes
Document Assembly Method:User fills in template blanks
Document Preview/Sample Available:No document preview
Help Support Email/Telephone:Limited - not legal advice
Country:New Zealand jurisdiction
State:n/a
MainSiteUrl:www.NetLawman.co.nz
NZ$159.00

This is a heavyweight licence agreement for rights in an invention. The product could be an innovative new product for sale or a device to improve an existing product. Complies with relevant New Zealand legislation.

Document Delivery Format:Delivery format: Download MS Word file
Document Source:Complies with current New Zealand law
Document User Guide Available:Comprehensive document Guide Notes
Document Assembly Method:User fills in template blanks
Document Preview/Sample Available:No document preview
Help Support Email/Telephone:Limited - not legal advice
Country:New Zealand jurisdiction
State:n/a
MainSiteUrl:www.NetLawman.co.nz
NZ$139.00

This is a heavyweight licence agreement for rights in an invention. It could be any technical  intellectual property. Complies with relevant New Zealand legislation.

Document Delivery Format:Delivery format: Download MS Word file
Document Source:Complies with current New Zealand law
Document User Guide Available:Comprehensive document Guide Notes
Document Assembly Method:User fills in template blanks
Document Preview/Sample Available:No document preview
Help Support Email/Telephone:Limited - not legal advice
Country:New Zealand jurisdiction
State:n/a
MainSiteUrl:www.NetLawman.co.nz
NZ$19.00

This simple license agreement assigns the rights to images legally and is therefore suitable for anyone selling / buying photographs. Complies with relevant New Zealand legislation.

Document Delivery Format:Delivery format: Download MS Word file
Document Source:Complies with current New Zealand law
Document User Guide Available:Comprehensive document Guide Notes
Document Assembly Method:User fills in template blanks
Document Preview/Sample Available:No document preview
Help Support Email/Telephone:Limited - not legal advice
Country:New Zealand jurisdiction
State:n/a
MainSiteUrl:www.NetLawman.co.nz
NZ$119.00

This is a heavyweight licence agreement for a "How to" product; for example an educational or training system, or a system for psychometric testing. Complies with relevant New Zealand legislation.

Document Delivery Format:Delivery format: Download MS Word file
Document Source:Complies with current New Zealand law
Document User Guide Available:Comprehensive document Guide Notes
Document Assembly Method:User fills in template blanks
Document Preview/Sample Available:No document preview
Help Support Email/Telephone:Limited - not legal advice
Country:New Zealand jurisdiction
State:n/a
MainSiteUrl:www.NetLawman.co.nz
NZ$159.00

This is an agreement for the restricted sale of rights in a chemical compound. It may be any compound for any purpose. Complies with relevant New Zealand legislation.

Document Delivery Format:Delivery format: Download MS Word file
Document Source:Complies with current New Zealand law
Document User Guide Available:Comprehensive document Guide Notes
Document Assembly Method:User fills in template blanks
Document Preview/Sample Available:No document preview
Help Support Email/Telephone:Limited - not legal advice
Country:New Zealand jurisdiction
State:n/a
MainSiteUrl:www.NetLawman.co.nz

New Zealand
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New Zealand
Fast & cost effective answers to your unique legal questions
Ask a Lawyer now




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