Section 165: Licenses and financial interests involving Patent and Patent applications

1. This document provides guidelines on registering an interest or a change to an interest for granted patents under the Patents Act 2013. It discusses the types of change that can be requested through the ‘change licensee/mortgagee/financial interest’ function and provides detail on what documentation may be needed.

2. An interest may include a licensee, mortgagee, or other financial interest. A licence (exclusive or otherwise) can only be recorded against a granted patent.

3. Registering an interest or a change to an interest involving a granted patent is covered by section 165 and regulation 124.

4. These requests are treated the same way as a change of ownership of a granted patent. See Section 129 and 165: Changing the Ownership of Patents or Patent applications guidelines. But the applicant of the request must state whether it is the Licensor (s165(2)) or the Licensee (s165(1)) requesting the recording of the licence.

5. If there are 2 or more patentees (co-owners), consent of all patentees is required for recording of a licence, unless there is an agreement to the contrary, see sections 24(3) and 24(4).

6. There is no provision to register a licensee, mortgagee, or financial interest for a patent application in the Patents Act 2013. Registering an interest or a change to an interest cannot be completed for a patent application.

7. There are no specific requirements for removal of an interest from the register. If an interest is released, then this will be considered as being an acquisition of the interest by the patentee.

Documents and statements

8. Each change to an interest should have a statement clearly showing how the how the change of interest has occurred or been established. The supplied documentation should be consistent with this statement.

9. Examples of suitable documents are the license agreement, the mortgage agreement, or the relevant financial agreements. Sometimes the supplied document can be a document confirming what was in the original document relating to the requested change. The Office normally will consider this type of document as sufficient evidence that change in an interest has occurred.

10. If the document is executed outside New Zealand, the Office must be satisfied that the document is legitimate and corresponds to the applicant’s statements regarding how the document shows how the change of interest has occurred or been established.

11. The name and/or position of the signatories of the supplied document should be provided within the document or within the statement.

12. Applicants should not rely on documents provided in a previous (declined) or related validated task as each request is treated on its own in the case management facility. All relevant documents should be provided with each request. The Office accepts redacted versions of documents as long as the parties, intent of the agreement and the patents being assigned are clear.

13. For more information on how to register an interest or a change to an interest, please visit our Maintain a Patent page.

Trusts

14. Section 197(3) provides that:
No notice of any trust may be entered in the patents register, and the Commissioner is not affected by any notice of that kind.

15. Any reference to an owner acting as trustee constitutes a notice of a trust and is a breach of section 197(3). Pursuant to this section, an application may only be made in the name of a trust where the trust is incorporated (for example under the Charitable Trust Act 1957).

16. If an application is filed in the name of an unincorporated trust, the application should be made in all of the individual names of the trustees of the trust as it is the trustee(s) who legally own the property, not the trust itself.

17. Where property is held on trust for someone else, the trustee (as legal owner of the patent or patent application) should be entered as the applicant rather than the beneficiary.

18. For a Patent Cooperation treaty application designating New Zealand, the reference to an owner acting as a trustee will be allowable.

Other changes

19. When requesting a change to an interest, further additional changes to the name or address may also be included and processed at the same time. However, the Office will decline any change to an interest request that solely involves the correction of an error or a change of name or address.

Change a name or address

20. A change of an interest’s legal name should be made as a change of name in our case management system. For more information on how to change a name of a party, please visit our Maintain a Patent page.

21. A change of an interest’s address should be made as a change of address in our case management system. For more information on how to change an address of a party, please visit our Maintain a Patent page.

Correction of error

22. If the change in an interest involves a correction of error in an interest relating to a granted patent, then a correction of error request should be filed. For more information on requesting a correction of error, please visit our Maintain a Patent page.