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New Zealand

Patents (Patent Cooperation Treaty) Regulations 1992 (reprinted as at 01 April 2002)

 

 


Reprint as at 1 April 2002

Patents (Patent Cooperation Treaty) Regulations 1992

(SR 1992/316)

Catherine A Tizard, Governor-General

Order in Council

At Wellington this 9th day of November 1992

Present: The Right Hon D C McKinnon presiding in Council

Pursuant to section 114(1) and section 115 of the Patents Act 1953, HerExcellencytheGovernor-General,actingbyandwiththeadvice and consent of the Executive Council, hereby makes the following regulations.

Note

Changes authorised by section 17C of the Acts and Regulations Publication Act 1989 have been made in this reprint.

Ageneraloutlineofthesechangesissetoutinthenotesattheendofthisreprint,togetherwith other explanatory material about this reprint.

These regulationsare administered by the Ministry of Economic Development.

Contents

Page 1 Title and commencement 2 2 Interpretation 2

Translation of documents forming part of Treaty application

3 English translation of documents as required 3

Time limits

4 TimelimitspecifiedforArticles22(1)and39(1)ofPatent 4

Cooperation Treaty 5 Time limit specified for section 26G(1)(b) of Act 5 6 Timerestrictiononwhenpatentmaybegrantedorrefused 5

Additional information

7 Information to accompany Treaty application 5 8 Form and contents of Treaty application 6

Fees

9 Fees 6 10 Amount of goods and services tax not included 6 11 Transmittal fee 7 12 Basic fee and designation fee 7 13 Search fee 7 14 Late payment fee 7 15 Refund of fees 8 16 Trust Fund 8

Schedule 9 Fees

Regulations 1 Title and commencement

(1) TheseregulationsmaybecitedasthePatents(PatentCooperation Treaty) Regulations 1992.

(2) Theseregulationsshallcomeintoforceon1December1992.

2 Interpretation

In these regulations, unless the contextotherwise requires,the Act means the Patents Act 1953

Article means an Article of the Patent Cooperation Treaty certificate of verification means a statement

(a)
that a document to which the statement relates is a true and complete translation of the accompanying document to the best of the knowledge of the person who signs the statement; and
(b)
that is dated and signed Commissioner means the Commissioner of Patents convention application hasthe same meaning as in the Act international application, International Bureau, Patent

Cooperation Treaty, Treaty application, and Treaty regu

lations have the same meanings as in the Act nationalphasemeanstheperiodoftimeinwhichaTreatyapplicationisexamined,considered,andprocessedbytheCommissionerundertheAct,whichtimeshallcommence,either

(a)
following the fulfilment of the applicant’s obligations under Article 22(1) of the Patent Cooperation Treaty; or
(b)
following the fulfilment of the applicant’s obligations underArticle39(1)ofthePatentCooperationTreaty

as the case may be PatentOfficeJournalmeansthepublicationissuedperiodic ally by the Commissioner under section 112 of the Act

Rule means a Rule of the Treaty regulations.

Translation of documents forming part of Treatyapplication

3 English translation of documents as required

(1)
Subjecttosubclauses(2)to(4),whereanydocumentordocumentsformingpartofaTreatyapplicationhavebeensupplied totheCommissionerinalanguageotherthantheEnglishlanguage, theapplicantshall,within 3months of the commencement date of the national phase, supply a translation of that document or documents, as the case may be, to the Commissioner,whichtranslationshallbeaccompaniedbyacertificate of verification.
(2)
Upon application by the applicant in accordance with this regulation, the Commissioner may, for such time and upon

3

r 4 Patents (Patent Cooperation Treaty)Regulations 1992 Reprinted as at1 April 2002
such terms as the Commissioner thinks fit, extend the time
specified in subclause (1) for the supply of an English trans
lation and certificate of verification.
(3) The Commissioner may grant an extension pursuant to sub-
clause (2) notwithstanding the fact that the time has expired
forthesupplyoftheEnglishtranslationandcertificateofveri
fication.
(4) An application for extension of time must be made in writing.
(5) [Revoked]
Regulation 3(1): amended, on 1January 2002, byregulation 3(1)ofthePatents (Patent Cooperation Treaty) Amendment Regulations 2001 (SR 2001/357).
Regulation 3(1): amended, on 19 May 1994, by regulation 2(1) of the Patents (PatentCooperationTreaty)Regulations1992,AmendmentNo1(SR1994/59).
Regulation 3(2): added, on 19 May 1994, by regulation 2(2) of the Patents (PatentCooperationTreaty)Regulations1992,AmendmentNo1(SR1994/59).
Regulation 3(3): added, on 19 May 1994, by regulation 2(2) of the Patents (PatentCooperationTreaty)Regulations1992,AmendmentNo1(SR1994/59).
Regulation 3(4): substituted, on 1 January 2002, by regulation 3(2) of the Patents (Patent Cooperation Treaty) Amendment Regulations 2001 (SR 2001/357).
Regulation 3(5): revoked, on 1 January 2002, by regulation 3(2) of the Patents (Patent Cooperation Treaty) Amendment Regulations 2001 (SR 2001/357).
Time limits
4 Time limit specified for Articles 22(1) and 39(1) of Patent
Cooperation Treaty
(1) Where New Zealand was, within the meaning of Article
31(4)(a) of the Patent Cooperation Treaty, indicated as an
elected State for the purposes of an international application
withintheperiodof19monthsfromtheprioritydateaccorded
that application, the applicant shall fulfil the applicant’s obli
gations under Article 39(1) of the Patent Cooperation Treaty
within the period of 31 months from that priority date.
(2) In any other case, the applicant of an international application
shall fulfil the applicant’s obligations under Article 22(1) of
the Patent Cooperation Treaty within the period of 31 months
from the priority date accorded that application.
Regulation 4(2): amended, on 1 April 2002, by regulation 3 of the Patents (Patent Cooperation Treaty) Amendment Regulations 2002 (SR 2002/42).

5 Time limit specified for section 26G(1)(b) of Act Forthepurposesof section26G(1)(b) oftheActtheprescribed time limit shall be

(a)
31 months from the priority date accorded the international application, where New Zealand was, within the meaning of Article 31(4)(a) of the Patent Cooperation Treaty, indicated as an elected State for the purposesofthatapplicationwithintheperiodof19months from that priority date:
(b)
31 months from the priority date accorded the international application, in any other case, to which paragraph (a) does not apply.

Regulation 5(b): amended, on 1 April 2002, by regulation 4 of the Patents (Patent Cooperation Treaty) Amendment Regulations 2002 (SR 2002/42).

6 Time restriction on when patent may be granted or refused

(1)
Subject to subclause (2), except on the express request of the applicant, the Commissionershallnot grant apatent or refuse tograntapatent,untiltheexpirationof1monthfromthedate onwhichtheapplicanthasfulfilledtheapplicant’sobligations under either Article 22(1) or Article 39(1) of the Patent Cooperation Treaty, as the case may be.
(2)
Where communication to the Commissioner in accordance with Rule 47.1 of the Treaty regulations has not been made withintheperiodof1monthfromthedateonwhichtheapplicant fulfilled the applicant’s obligations under either Article 22(1) or Article 39(1) of the Patent Cooperation Treaty, as the case may be, the time limit set out in subclause (1) of this regulation shall be extended to 4 months.

Additional information

7 Information to accompany Treaty application At any time during the national phase and before the expir ation of the time period specified in section 19(1) of the Act for putting the application in order, the applicant of a Treaty applicationshallsupplytheCommissionerwiththefollowing information:

(a)
in the case of a convention application, a declaration as to the inventorship of the invention disclosed in the application:
(b)
inthecaseofanapplicationotherthanaconventionapplication, a declaration alleging the right of the applicant to make the application:
(c)
an address for service in New Zealand, which address shall be regarded for the purposes of the application as the applicant’s address:
(d)
where applicable, a notice of authorisation appointing an agent to act for the applicant in any proceedings or mattersbeforeoraffectingtheCommissionerunderthe Act or these regulations concerning the Treaty application. Inthecaseofanysuchappointment,serviceupon the agent of any document relating to the application shall be deemed to be service upon the person so appointing him or her, all communications directed to be madetothepersoninrespectoftheproceedingsormatters may be addressed to the agent, and all attendances upon the Commissioner relating thereto may be made by or through the agent.

8 Form and contents of Treaty application Notwithstanding the Patents Regulations 1954, the require ments relating to the form and contents of any Treaty appli-cation,shallbethosesetoutinthePatentCooperationTreaty, the Treaty regulations, and these regulations.

Fees

9 Fees Thefees payable to the Commissionerinrespectofanyinter national application are set out in the Schedule.

10 Amount of goods and services tax not included Thefeesprescribedbytheseregulationsareexclusiveofgoods and services tax under the Goods and Services Tax Act 1985.

11 Transmittal fee An applicant shall pay a transmittal fee to the Commissioner, inaccordancewithRule14.1oftheTreatyregulations,within 1 month of the applicant filing the international application.

12 Basic fee and designation fee

(1)
The Commissioner shall, from time to time, by notice in the Patent Office Journal, publish the fees, to be collected by the CommissioneronbehalfoftheInternationalBureau,pursuant to Rule 15 of the Treaty regulations.
(2)
Any alteration in the amount payable pursuant to subclause

(1) shall be published in the Patent Office Journal and shall take effect from the date prescribed under Rule 15.2(d) of the Treaty regulations.

13 Search fee

(1)
The Commissioner shall, from time to time, by notice in the Patent Office Journal, publish the fee to be collected by the Commissioner, on behalf of any International Searching Authority, pursuant to Rule 16 of the Treaty regulations.
(2)
Any alteration in the amount payable pursuant to subclause

(1) shall be published in the Patent Office Journal and shall take effect from the date prescribed under Rule 16.1(d) of the Treaty regulations.

14 Late payment fee

(1)
Whereatransmittalfeeispayablebytheapplicantpursuantto Rule 14.1 of the Treaty regulations and the fee is not paid in accordancewiththeprovisionsof regulation11 oftheseregulationstheapplicantshallpaytotheCommissioneralatepaymentfeeinaccordancewithRule16bis.2ofthePatentCooperation Treaty.
(2)
Whereabasicfeeordesignationfee,payablebytheapplicant pursuant toRule15.1oftheTreaty regulationsand inaccordancewiththeprovisionsof regulation12 oftheseregulations, is not paid within the time period prescribed for each fee pursuanttoRule15.4oftheTreatyregulations,theapplicantshall
r 15 Patents (Patent Cooperation Treaty)Regulations 1992 Reprinted as at1 April 2002
paytotheCommissioneralatepaymentfeeinaccordancewith
Rule 16bis.2 of the Patent Cooperation Treaty.
(3) Where a search fee payable by the applicant pursuant to
Rule 16 of the Treaty regulations and in accordance with the
provisions of regulation 13 of these regulations, is not paid
within the time period prescribed pursuant to Rule 16.1(f) of
the Treaty regulations, the applicant shall pay to the Commis
sioner a late payment fee in accordance with Rule 16bis.2 of
the Patent Cooperation Treaty.
(4) The amount of the late payment fee payable by the applicant
pursuant to subclauses (1) to (3) shall be
(a) 50%oftheamountoftheunpaidfeeorfees, asthecase
maybe,specifiedintheinvitationmadetotheapplicant
under either Rule 16bis.1(a) or 16bis.1(b) of the Treaty
regulations; or
(b) if the amount calculated under paragraph (a) of sub-
clause (4) is less than the transmittal fee, an amount
equal to the transmittal fee.
(5) The late payment fee payable under this regulation shall not
exceed the amount of the basic fee payable under these regu
lations.
15 Refund of fees
Where,inrelationtoafeepaidtotheCommissioner,thePatent
Cooperation Treaty requires that the fee be refunded to an ap
plicanteitherinwholeorinpart,thatfeeorthatpartofthatfee,
as the case may be, shall be refunded by the Commissioner to
the applicant accordingly.
16 Trust Fund
(1) All fees collectedby the Commissioner onbehalf of the Inter
nationalBureauoranyInternationalSearchingAuthorityshall
be paid into a Trust Fund established for the benefit of those
organisations and administered in accordance with Part 7 of
the Public Finance Act 1989.
(2) The Commissioner acting as trustee of the Trust Fund estab
lishedpursuanttosubclause(1)mayexpendthemoniesheldin
trustforthepurposesofthePatentCooperationTreatyinclud

ing the refunds and the remission of fees to the International Bureau and any International Searching Authority.

Schedule r9 Fees

Schedule: substituted, on 1 July 1999, by regulation 2 of the Patents (Patent

Cooperation Treaty) Amendment Regulations 1999 (SR 1999/156).
Matter Fee ($)
The International Phase
Transmittal fee for each international application 180
The National Phase
OnentryintothenationalphaseofaTreatyapplication for a patent 250

Marie Shroff, Clerk of the Executive Council.

Issued under the authority of the Acts and Regulations Publication Act 1989. Date of notification in Gazette: 12 November 1992.

Contents

1 General

2 Status of reprints

3 How reprints are prepared

4 Changesmadeundersection17CoftheActsandRegulations Publication Act 1989

5 List of amendments incorporated in this reprint (most recent first)

Notes

1 General

This is a reprint of the Patents (Patent Cooperation Treaty) Regulations 1992. The reprint incorporates all the amendments to theregulations asat 1 April2002, as specified in the list of amendments at the end of these notes.

Relevantprovisionsofany amending enactmentsthatcontain transitional, savings, or application provisions that cannot be compiled in the reprint are also included, after the principal enactment, in chronological order. For more information, see http://www.pco.parliament.govt.nz/reprints/ .

2 Status of reprints

Under section 16D of the Acts and Regulations Publication Act 1989, reprints are presumed to correctly state, as at the dateofthereprint,thelawenactedbytheprincipalenactment and by the amendments to that enactment. This presumption applies even though editorial changes authorised by section 17C of the Acts and Regulations Publication Act 1989 have been made in the reprint.

This presumption may be rebutted by producing the official volumesofstatutesorstatutoryregulations in whichthe principal enactment and its amendments are contained.

3 How reprints are prepared

A number of editorial conventions are followed in the preparation of reprints. For example, the enacting words are not included in Acts, and provisions that are repealed or revoked are omitted. For a detailed list of the editorial conventions, see http://www.pco.parliament.govt.nz/editorial-conventions/ or Part 8 of the Tables of New Zealand Acts and Ordinances and Statutory Regulations and Deemed Regulations in Force.

Changes made under section 17C of the Acts and Regulations Publication Act 1989

Section17C oftheActsandRegulationsPublicationAct1989 authorises the making of editorial changes in a reprint as set out in sections 17D and 17E of that Act so that, to the extent permitted, the format and style of the reprinted enactment is consistent with current legislative drafting practice. Changes thatwould alter the effect of the legislation are not permitted.

Anewformatoflegislationwasintroducedon1January2000. Changestolegislativedraftingstylehavealsobeenmadesince 1997,andareongoing. Totheextentpermittedbysection17C of the Acts and Regulations Publication Act 1989, all legislation reprinted after 1 January 2000 is in the new format for legislation and reflects current drafting practice at the time of the reprint.

Inoutline,theeditorialchangesmadeinreprintsundertheauthorityof section17C oftheActsandRegulationsPublication Act1989aresetoutbelow,andtheyhavebeenapplied,where relevant, in the preparation of this reprint:

omission of unnecessary referential words (such as “of this sectionand “of this Act”)

  • typefaceandtypesize(TimesRoman,generallyin11.5 point)
    • layout of provisions, including:
      • indentation
      • positionofsectionheadings(eg,thenumberand heading now appear above the section)
  • formatofdefinitions(eg,thedefinedtermnowappears in bold type, without quotation marks)
  • format of dates (eg, a date formerly expressed as “the 1stdayofJanuary1999”isnowexpressedas“1January 1999”)
  • positionofthedateofassent(itnowappearsonthefront page of each Act)
  • punctuation (eg, colons are not used after definitions)
  • Partsnumberedwithromannumeralsarereplacedwith arabic numerals, and all cross-references are changed accordingly
    • case and appearance of letters and words, including:
      • format of headings (eg, headings where each word formerly appeared with an initial capital letter followed by small capital letters are amended so that the heading appears in bold, with only the first word (and any proper nouns) appearing with an initial capital letter)
      • smallcapitallettersinsectionandsubsectionreferences are now capital letters
  • schedulesarerenumbered(eg,Schedule1replacesFirst Schedule),andallcross-referencesarechangedaccordingly
  • running heads (the information that appears at the top of each page)
  • format of two-column schedules of consequential amendments, and schedules of repeals (eg, they are rearranged into alphabetical order, rather than chronological).

List of amendments incorporated in this reprint (most recent first)

Patents (Patent Cooperation Treaty) Amendment Regulations 2002 (SR

2002/42) Patents (Patent Cooperation Treaty) Amendment Regulations 2001 (SR 2001/357)

Patents (Patent Cooperation Treaty) Amendment Regulations 1999 (SR

1999/156) Patents (Patent Cooperation Treaty) Regulations 1992, Amendment No 1 (SR 1994/59)

Wellington, New Zealand: Published under the authority of the New Zealand Government—2011

 

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