Intellectual property issues

Paris Convention

Is your jurisdiction party to the Paris Convention for the Protection of Industrial Property? The Patent Cooperation Treaty (PCT)? The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs)?

On 29 July 1931, New Zealand became party to the Paris Convention for the Protection of Industrial Property (1883), revised at Brussels (1900), Washington (1911), The Hague (1925), London (1934), Lisbon (1958) and Stockholm (1967), and amended in 1979 (Paris Union). The latest Act of the Convention that New Zealand became party was the London Act on 14 July 1946. There are also articles 13 to 30 of the Paris Convention Stockholm Act of 20 June 1984. On 1 December 1992, New Zealand also became party to the Patent Cooperation Treaty 1970. In addition, on 1 January 1994, New Zealand became party to the Agreement on Trade-Related Aspects of Intellectual Property Rights 1994. New Zealand has been a member of these conventions and treaties since the early days of their promulgation and tends to support intellectual property rights (IPRs) worldwide.

Contesting validity

Can the licensee be contractually prohibited from contesting the validity of a foreign licensor’s intellectual property rights or registrations in your jurisdiction?

Yes. The licensee can be contractually prohibited from contesting the validity of a foreign licensor’s IPRs or registrations, and there does not appear to be a law that precludes this; it would be prudent for such a clause to be included in any agreement.

Invalidity or expiry

What is the effect of the invalidity or expiry of registration of an intellectual property right on a related licence agreement in your jurisdiction? If the licence remains in effect, can royalties continue to be levied? If the licence does not remain in effect, can the licensee freely compete?

If a trademark or patent (or any other IPR capable of registration, such as a registered design) expires in relation to its registration or is declared invalid, then the legal effect would be to take away the protection of such IPR that may lead to its abuse by a licensee. However, the tort of passing off would assist any licensor should a renegade licensee try to take advantage of the situation, but a licensee who is not the subject of a legally binding licence agreement would be free to compete.

Requirements specific to foreigners

Is an original registration or evidence of use in the jurisdiction of origin, or any other requirements unique to foreigners, necessary prior to the registration of intellectual property in your jurisdiction?

There is no such registration or evidence of use necessary, but any New Zealand registration of intellectual property would certainly be expedited if the intellectual property were registered in an overseas jurisdiction. Any new registration in New Zealand must go through the Intellectual Property Office, which is based in Wellington. There is always a time lapse for objections and legal requirements.

Unregistered rights

Can unregistered trademarks, or other intellectual property rights that are not registered, be licensed in your jurisdiction?

An unregistered trademark may be licensed and is a matter of contract, and there is no statute that would preclude this. However, trademarks should always be registered to enable full protection for the owner. The two main grounds to claim a right in an unregistered trademark are under the common law of passing off or a claim under the Fair Trading Act 1986.

Security interests

Are there particular requirements in your jurisdiction to take a security interest in intellectual property?

In relation to the validity of an intellectual property licence, the relevant law or statute in New Zealand must be complied with. The subject matter of the protection sought must not be illegal or offensive and the legal procedures must run their course. As to whether an intellectual property licence could be opposable to a third party, it would depend on the circumstances of the particular case and whether a third party has any legal rights to object. As for taking a security interest in intellectual property, the Personal Property Securities Act 1999 (PPSA) allows for the registration of a security interest in ‘personal property’, which is defined in the PPSA as including intangibles. Intangible property includes intellectual property such as trademarks, patents, designs and copyright.

Proceedings against third parties

Can a foreign owner or licensor of intellectual property institute proceedings against a third party for infringement in your jurisdiction without joining the licensee from your jurisdiction as a party to the proceedings? Can an intellectual property licensee in your jurisdiction institute proceedings against an infringer of the licensed intellectual property without the consent of the owner or licensor? Can the licensee be contractually prohibited from doing so?

A foreign owner may institute proceedings in such a manner without joining the licensee, although it would be normal for the foreign owner or licensor of intellectual property to consult with the New Zealand licensee, who may be very helpful in providing information for the attack on the infringing third party. In relation to proceedings against an infringer of the licensed intellectual property without the consent of the owner or licensor, it would depend upon the exact wording of a clause in the relevant agreement. Normally, however, an agreement should preclude a local licensee from attacking an infringer without the consent of the owner or licensor.

Sub-licensing

Can a trademark or service mark licensee in your jurisdiction sub-license use of the mark to a third party? If so, does the right to sub-license exist statutorily or must it be granted contractually? If it exists statutorily, can the licensee validly waive its right to sub-license?

A trademark or service mark licensee could only sub-license the use of that mark to a third party if the agreement provided such a right. It would be unusual in our opinion, and such agreement should preclude any right to sub-license.

Jointly owned intellectual property

If intellectual property in your jurisdiction is jointly owned, is each co-owner free to deal with that intellectual property as it wishes without the consent of the other co-owners? Are co-owners of intellectual property rights able to change this position in a contract?

The answer depends on the type of intellectual property right, but it appears that you could enter into an agreement with other joint owners of an intellectual property right. In New Zealand, there is the Patents Act 2013, the Trade Marks Act 2002 and the Copyright Act 1994, and various sections of those Acts impact upon the types of intellectual property rights.

First to file

Is your jurisdiction a ‘first to file’ or ‘first to invent’ jurisdiction? Can a foreign licensor license the use of an invention subject to a patent application but in respect of which the patent has not been issued in your jurisdiction?

In New Zealand, it is the ‘first to file’ who wins a patent application. There is an arrangement between New Zealand and Australia that if a company lodges a trademark application in one jurisdiction on a particular date and later files the same trademark application in the other then, in relation to the second jurisdiction, the date of filing will be backdated to the original date of filing in the first.

A foreign licensor may license the use of an invention subject to a patent application for which the patent has not been issued in New Zealand.

Scope of patent protection

Can the following be protected by patents in your jurisdiction: software; business processes or methods; living organisms?

The Patents Act 2013 provides for the appointment of an office and place for the purpose of communications to and from the public on matters arising under the Act, the power to appoint a Maori Advisory Committee, appointment of the Commissioner and Assistant Commissioners of Patents, and regulation-making powers.

A number of exclusions are included in the Act and they include:

  • an invention is not patentable if the commercial exploitation of the invention is contrary to public policy or morality;
  • computer programs;
  • plant varieties;
  • human beings and biological processes for their generation;
  • inventions of methods of treatment of human beings by surgery or therapy; and
  • inventions of methods of diagnosis practised on human beings.

 

The most significant changes include a tougher examination of patent applications, stricter deadlines, subject matter exclusions, more challenge options and annual renewal fees.

Trade secrets and know-how

Is there specific legislation in your jurisdiction that governs trade secrets or know-how? If so, is there a legal definition of trade secrets or know-how? In either case, how are trade secrets and know-how treated by the courts?

There is no specific legislation that governs trade secrets or know-how, but there are common law principles that would apply and give protection. In particular, there are laws covering breach of confidential information, which includes know-how, business data, trade secrets, product and process inventions.

Does the law allow a licensor to restrict disclosure or use of trade secrets and know-how by the licensee or third parties in your jurisdiction, both during and after the term of the licence agreement? Is there any distinction to be made with respect to improvements to which the licensee may have contributed?

New Zealand law allows a licensor to restrict disclosure or use of trade secrets and know-how by the licensee or third parties, and it is a matter of contract. There are no restrictions except in the area of restraint on competition or restraint of trade, both during the term and after the expiration of the term or termination of a licence agreement. If restraints on competition are too wide and simply too tough, they will be determined to be against public policy and be declared illegal pursuant to section 83 of the Contract and Commercial Law Act 2017. There is no distinction to be made with respect to improvements to which the licensee may have contributed.

Copyright

What constitutes copyright in your jurisdiction and how can it be protected?

The law relating to copyright in New Zealand is contained in the Copyright Act 1994. There is no registration system for copyright, although, as a signatory to the Berne Convention for the Protection of Literary and Artistic Works 1886, it is possible to register copyright works internationally. In essence, copyright is inherent, but it is not the ideas that are protected by copyright: it is the tangible evidence of skill, labour and judgment that have resulted in the copyright work.

Law stated date

Correct on

Give the date on which the information above is accurate.

11 December 2020