20 November 2023
Ref: OIA-23-054
Wayne Hudson
By Email:
[FYI request #22548 email]
Tēnā koe Mr Hudson,
O cial Information Act 1982 request for patent work and patent advice policy
I refer to your email of 27 October 2023 requesting, under the O cial Information Act 1982 (the Act), the fol owing
information:
“In your letter of 23 May, you said that, ”The de nition of ‘patents work’ refers to the legislative de nition
provided in section 274(10) of the Patents Act 2013.”
However that statement is incorrect, as the legislative de nition contains as an exception “(other than of a
scienti c or technical nature)”. That means that lay people are al owed to provide scienti c and technical
advice in relation to patents.
This is the area in which I am interested as I am trying to nd out why Cal aghan and certain other
government agencies have omitted the words quoted above.
In your letter of 26 October you stated that “The decision to have funding for patent work and patent
advice/FTO searches conducted by registered patent attorneys was not taken in relation to this grant, and
was already the policy of Cal aghan Innovation at the time of the planning of the grant.”
This statement indicates that a decision had previously been made by Cal aghan Innovation to introduce a
policy that patent work and patent advice/FTO searches should be conducted by registered patent
attorneys.
Therefore please provide me with a copy of the original policy and al information (including internal
sign-off) relating to the implementation of that policy.”
Context
Policy documentation for al funding products offered by Cal aghan Innovation are developed under a Ministerial
Direction. Our monitoring agency, the Ministry of Business Innovation and Employment (MBIE) is responsible for the
policies. Cal aghan Innovation is responsible for the operational administration of the funding products, which
includes the development of guidance for Grant applicants and recipients. The documentation you seek in relation to
the funding/co-funding of patent advice is therefore not policy, but guidance produced by Cal aghan Innovation,
which is what we are releasing to you.
Guidance documents
There are two guidance documents that refer to the funding/ co-funding of patent advice, and that it is to be
provided by a registered patent attorney. Both of these documents are publicly available, therefore, I am declining
your request for copies of these guidance documents in accordance with Section 18(d) of the Act, as the information
requested is publicly available.
Rukuhia te wāhi ngaro, hei maunga tātai whetū
Explore the unknown, pursue excel ence
cal aghaninnovation.govt.nz | Page 1
The rst is the
Eligible Activities for the Arohia Ful Grant document, where page 7 refers to patent advice. It is noted
that you refer to this particular document in your previous correspondence. The second is in the
Eligible Costs for the
New to R&D Grant document, where page 4 refers to patent advice.
Introduction of patent advice guidance to Callaghan Innovation guidelines
As you are aware, under the Patents Act 2013 only a registered patent attorney can carry out “patent work” which
includes Freedom to operate advice. We understand that freedom to operate advice almost always involves advice
on the validity and/or infringement of patents (which is patent work and accordingly should only be provided by
registered patent attorneys).
It was brought to our attention that Cal aghan Innovation and our Regional Business Partners had been referring New
Zealand businesses to persons who were not registered patent attorneys for freedom to operate advice.
In light of this information, Cal aghan Innovation implemented guidance for relevant programmes (currently only the
two Eligible Activities documents provided in this response), and recommended that staff and Regional Business
Partners remind customers to do due diligence on providers and take into account whether they are registered or
recognised by an industry body.
The two Eligible Activities documents that speci cal y refer to patent advice (
the guidance) were developed to
encourage grant recipients to enlist the services of a registered patent attorney to carry out patent related activities
funded by the grant.
The wording for the guidance was drafted with reference to section 274(10) of the Patents Act 2013. The wording
focuses on advice on the validity and/or infringement of patents and refers customers to the relevant industry body.
It does not restrict customers from receiving other innovation or IP consultancy related services (for example
scienti c and technical advice), as Cal aghan Innovation recognises those services are not captured by the Patent
Act 2013 and are legitimate services currently provided by other Cal aghan Innovation providers (for example in
Beyond IP).
However, by limiting the funding/co-funding for patent advice to registered patent attorneys, Cal aghan Innovation is
attempting to ensure that grant recipients are engaging with licensed professionals and can therefore receive patent
advice that they can rely on. As Cal aghan Innovation provides public funding for its grants, Cal aghan Innovation has
an obligation to the taxpayer to ensure that grant recipients are seeking services from quali ed individuals (and
accordingly using the funding appropriately).
You have the right to seek an investigation and review by the Ombudsman of this decision. Information about how to
make a complaint is available at
.ombudsman.parliament.nz or freephone 0800 802 602.
Nāku noa, nā
Brett Calton
Chief Product O cer
Callaghan Innovation
Rukuhia te wāhi ngaro, hei maunga tātai whetū
Explore the unknown, pursue excel ence
cal aghaninnovation.govt.nz | Page 2
