Tēnā koe Wayne
Thank you for your email of 24 April 2023 requesting, under the Official
Information Act 1982, the following information: 
Callaghan Innovation recently issued a document entitled “ Eligible
Activities for the Arohia Seed Grant.”
A note under the heading ELIGIBLE ACTIVITY EXAMPLES contains the following
statement:
"Callaghan Innovation will only co-fund or fund patent work and patent
advice that is provided by a registered patent attorney. This includes
advice on the validity of patents and their infringement resulting from
FTO/IP scanning search results. We recommend doing due diligence on
providers in this space, including taking into account whether they are
registered or recognised by any industry body.”
Would you please provide copies of all internal papers and emails, as well
as external correspondence, that relate to the decision to include this
wording.
Would you also please advise whether your definition of ‘patent work’
includes drafting and filing patents.
A decision on your request will be communicated to you on or before 23 May
2023.

Ngā mihi,

 

Ministerial Services

Rukuhia te wāhi ngaro, hei maunga tātai whetū
Dive into the unknown, reach for excellence
[1]www.callaghaninnovation.govt.nz

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Kia ora Mr Hudson, 
Please find attached our response to your OIA request, along with the
related document for release. 

Ngā mihi,

 

Ministerial Services

Rukuhia te wāhi ngaro, hei maunga tātai whetū
Dive into the unknown, reach for excellence
[1]www.callaghaninnovation.govt.nz

show quoted sections

Tēnā koe Wayne
Thank you for your email of 3 October 2023 requesting, under the Official
Information Act 1982, the following information: 
In your letter of 23 May 2023 you stated:
"In order to provide you with further context in terms of the information
you have requested, we note that the wording was drafted to encourage
customers to do due diligence and select legitimate providers to carry out
activities funded by the grant.  The definition of ‘patents work’ refers
to the legislative definition provided in section 274(10) of the Patents
Act 2013."
Attached to your reply was an email dated 4 April 2023 from Helena Page,
Legal Counsel for Callaghan Innovation, in which she stated (in relation
to the New to R&D Grants and FTO searches):
"For patent related work and advice, under New Zealand law we recommend
you contact a registered Trans-Tasman patent attorney (the directory can
be found here).  Please note that Callaghan Innovation will only co-fund
or fund patent work and patent advice that is provided by a registered
patent attorney. This includes advice on the validity of patents and their
infringement resulting from Freedom to Operate (FTO)/IP scanning search
results."
However, the definition of "patents work" in section 274(10)(c) of the
Patents Act appears to allow anyone (not just a registered patent
attorney) to give advice of a scientific or technical nature about the
validity, or infringement, of patents.
Can you therefore please provide me with all information and
correspondence that resulted in the decision to limit funding of patent
work and patent advice / FTO searches to registered patent attorneys (as
"legitimate providers") and not to fund other providers of scientific and
technical advice about the validity or infringement of patents / prior art
research services.
A decision on your request will be communicated to you on or before 1
November 2023.

Ngā mihi,

 

Ministerial Services

Rukuhia te wāhi ngaro, hei maunga tātai whetū
Dive into the unknown, reach for excellence
[1]www.callaghaninnovation.govt.nz

show quoted sections

Kia Ora  Mr Hudson  , 
Please refer to the attached correspondence regarding your OIA request
received 1 October 2023. 

Ngā mihi,

 

Ministerial Services

Rukuhia te wāhi ngaro, hei maunga tātai whetū
Dive into the unknown, reach for excellence
[1]www.callaghaninnovation.govt.nz
On Tue, 3 Oct 2023 at 16:15, Wayne Hudson <
> wrote:

Dear Ministerial Services,

In your letter of 23 May 2023 you stated:
"In order to provide you with further context in terms of the
information you have requested, we note that the wording was drafted to
encourage customers to do due diligence and select legitimate providers
to carry out activities funded by the grant.  The definition of ‘patents
work’ refers to the legislative definition provided in section 274(10)
of the Patents Act 2013."

Attached to your reply was an email dated 4 April 2023 from Helena Page,
Legal Counsel for Callaghan Innovation, in which she stated (in relation
to the New to R&D Grants and FTO searches):
"For patent related work and advice, under New Zealand law we recommend
you contact a registered Trans-Tasman patent attorney (the directory can
be found here).  Please note that Callaghan Innovation will only co-fund
or fund patent work and patent advice that is provided by a registered
patent attorney. This includes advice on the validity of patents and
their infringement resulting from Freedom to Operate (FTO)/IP scanning
search results."

However, the definition of "patents work" in section 274(10)(c) of the
Patents Act appears to allow anyone (not just a registered patent
attorney) to give advice of a scientific or technical nature about the
validity, or infringement, of patents.

Can you therefore please provide me with all information and
correspondence that resulted in the decision to limit funding of patent
work and patent advice / FTO searches to registered patent attorneys (as
"legitimate providers") and not to fund other providers of scientific
and technical advice about the validity or infringement of patents /
prior art research services.

Yours sincerely,

Wayne Hudson

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Tēnā koe Wayne
Thank you for your email of 27 October 2023 requesting, under the Official
Information Act 1982, the following information: 
In your letter of 23 May, you said that, ”The definition of ‘patents work’
refers to the legislative definition provided in section 274(10) of the
Patents Act 2013.”
However that statement is incorrect, as the legislative definition
 contains as an exception “(other than of a scientific or technical
nature)”.  That means that lay people are allowed to provide scientific
and technical advice in relation to patents.
This is the area in which I am interested as I am trying to find out why
Callaghan 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 Callaghan Innovation at the time of the planning of the
grant.”
This statement indicates that a decision had previously been made by
Callaghan 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 all
information (including internal sign-off) relating to the implementation
of that policy.
A decision on your request will be communicated to you on or before 24
November 2023.

Ngā mihi,

 

Ministerial Services

Rukuhia te wāhi ngaro, hei maunga tātai whetū
Dive into the unknown, reach for excellence
[1]www.callaghaninnovation.govt.nz

show quoted sections

Kia ora, Mr Hudson
Please refer to the attached correspondence regarding your OIA request
received on 27 October 2023 .

Ngā mihi,

 

Ministerial Services

[1]callaghaninnovation.govt.nz

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