WIPO Lex

Patents Regulations 2014 (reprint as at 1 September 2017)

Patents Regulations 2014 (LI 2014/275)

Jerry Mateparae, Governor-General

Order in Council

At Wellington this 11th day of August 2014

Present: The Right Hon John Key presiding in Council

Pursuant to subpart 5 of Part 5 of the Patents Act 2013, His Excellency the Governor- General, acting on the advice and with the consent of the Executive Council, makes the following regulations.

Contents Page

1 Title 9 2 Commencement 9 3 Interpretation 9 4 Application 11

Note Changes authorised by subpart 2 of Part 2 of the Legislation Act 2012 have been made in this official reprint.

Note 4 at the end of this reprint provides a list of the amendments incorporated.

These regulations are administered by the Ministry of Business, Innovation, and Employment.

Reprint as at 1 September 2017

Part 1 Preliminary

Subpart 1—Fees and penalties General provisions

5 Amount of fees and penalties 11 6 Time of payment of fees and penalties 11 7 Form of payment of fees and penalties 11

Maintenance and renewal fees 8 When maintenance and renewal fees become due 11 9 Periods within which maintenance fees must be paid 12 10 Period within which renewal fees must be paid 13 11 Certificate of payment of maintenance and renewal fees 13

Subpart 2—Forms and documents Use of case management facility

12 Certain information or documents must be given electronically through case management facility

13 Case management facility is prescribed electronic delivery method for certain purposes

14 Information that must be given when case management facility first used

15 Number of patent application or patent must be given when all information or documents filed under Act or regulations

16 Information or documents may be given by alternative delivery method

17 Electronic documents 15 Filing

18 Number of copies 15 19 Document filed when received in proper form 15 20 Filing date of document if not received on working day 16

Requirements for documents 21 Documents must be in English or Māori 16 22 Signatures 16

Requirements for complete specifications 23 Form and size of complete specifications 17 24 Numbering of pages of complete specifications 17 25 Text 17

Requirements for drawings in complete specifications 26 Form and size of drawings 18 27 Arrangement of drawings 18 28 Preparation of drawings 18

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29 Descriptive matter 19 30 Alterations 20 31 Preparation of line drawings 20

Requirements for terminology and signs in complete specifications 32 Terminology and signs 20

Abstracts 33 Form and content of abstracts 21

Subpart 3—Addresses 34 Address for service must be given 21 35 Communication address must be given 22 36 Change of address notice must be given 22 37 Sufficiency of address 22

Subpart 4—Agents 38 Agent may act on behalf of principal for purposes of regulations 22 39 Commissioner may give notices to agent 23 40 Commissioner may require principal of agent to file authority with

Commissioner in certain cases 23

41 Commissioner must refuse to recognise certain persons as agent 24 42 Commissioner must notify refusal to recognise person as agent 24 43 Notice to Commissioner of revocation or alteration of authority 24 44 Notice of revocation of authority may be given by agent 24

Subpart 5—Interpretation 45 Specified exhibitions 25

Part 2 Patentable inventions and patent rights

46 Form of patent under section 19 of Act 25 47 Request for directions to co-owners under section 26(1) of Act 25 48 Request for directions to co-owners under section 26(3) of Act 25 49 Request for determination of dispute under section 28 of Act 26

Part 3 Process for obtaining grant of patent and other matters

Subpart 1—Patent applications and specifications Patent applications

50 Application for patent 27 51 Requests for post-dating 27 52 Divisional applications 27 53 Personal representative must establish right to be granted patent 28

Specifications 54 Requirements for provisional specification 28

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55 Requirements for complete specification 28 56 Extension of period for filing complete specification 29 57 Cognate applications 29 58 Amendment of complete specification before acceptance 29

Deposit requirements for micro-organisms 59 Deposit requirements for micro-organisms 29 60 Deposit requirements treated as satisfied in certain circumstances 30

Subpart 2—Treaty applications Treaty applications before entry to national phase

61 Amendments to documents forming part of complete specification 30 62 Time limit specified for sections 51 and 52 of Act 30

Treaty applications on entry to national phase 63 Application for entry to national phase 30 64 Request for examination of Treaty application 30 65 English translation of documents as required 31

Fees for international applications and Treaty applications 66 Fees payable for international applications and Treaty applications 31 67 Trust fund 31

Subpart 3—Convention applications 68 Convention applicants may make convention applications 31 69 Convention application for patent 31 70 Evidence in support of convention applications 32

Subpart 4—Rest of process for obtaining grant of patent and other matters

Examination 71 Manner of making request for examination of patent application 32 72 Grounds on which Commissioner may direct applicant to request

examination of patent application 33

73 Period within which applicant may be directed to request examination

74 Manner in which person may require Commissioner to give direction

75 Commissioner may refuse to proceed with application or require application or specification to be amended

76 Applications must be examined in order in which request for examination is made

77 Examination may be advanced out of turn 34 78 Deadlines by which applicants must act if Commissioner refuses to

proceed with application, etc 34

79 Duty to inform Commissioner of search results 34

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Acceptance and publication 80 Time for putting application in order for acceptance 35 81 Manner of filing notice of entitlement before acceptance 35 82 Acceptance of complete specification 35 83 Applicant may request Commissioner to postpone acceptance 35 84 Notice that complete specification open to public inspection

following request by applicant 35

85 Documents open to public inspection 36 86 Treaty application documents open for public inspection 36

Amendment of specifications after acceptance 87 Amendment of specification after acceptance with leave of

Commissioner 36

88 Commissioner must consider request for leave to amend complete specification

89 Requirements for notice of opposition to proposed amendment 37 Assertions by third parties

90 Assertions by third parties on novelty and inventive step 38 91 Manner in which Commissioner must consider and deal with

notice of assertion under section 90 of Act 38

Opposition to grant of patent 92 Matters that must be included in notice of opposition 38 93 Period within which notice of opposition may be filed 39 94 Counter-statement to notice of opposition 39

Re-examination after acceptance 95 Requests for re-examination 40 96 Commissioner must give notice of re-examination requests 40 97 Re-examination reports and amendment of complete specification 40

Grant of patent 98 Circumstances in which grant of patent may be postponed 41 99 Amendment of patent under section 105 of Act 41

Patents of addition 100 Application for patent of addition 41 101 Commissioner may revoke patent for improvement or modification

and grant patent of addition 41

Revocation of patents 102 Application to Commissioner for revocation of patent 41 103 Counter-statement to application and evidence for revocation of

patent 42

104 Procedure if no counter-statement to application for revocation of patent is filed

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105 Refusal of applications for revocation of patent 43 Surrender of patents

106 Notice of offer to surrender patent 43 107 Opposition to surrender of patent 43 108 Patentee must file counter-statement 44 109 Filing of evidence 44

Restoration of lapsed patents 110 Manner in which request to restore lapsed patent may be made 44 111 When request for restoration of patent may be made 45 112 Opposition to restoration of patent 45 113 Patentee must file counter-statement 46 114 Filing of evidence 46 115 Protection of persons who avail themselves of invention if

Commissioner restores lapsed patent 46

Restoration of patent applications 116 Request for restoration of void or abandoned patent applications 47 117 When request for restoration of application may be made 47 118 Opposition to restoration of patent application 48 119 Applicant must file counter-statement 48 120 Filing of evidence 48 121 Protection of persons who avail themselves of invention if

Commissioner restores patent application 49

Miscellaneous provisions 122 Request for direction under section 129 of Act 49 123 Request for directions under section 131 of Act 50

Part 4 Infringement, other patent proceedings, and matters affecting

patent ownership Registration of assignments, licences, and other interests in patents

124 Application under section 165 of Act 50 Vesting of patents and patent applications without probate or

letters of administration 125 Application to vest patent or patent application without probate or

letters of administration 51

Mention of inventor in patent, specification, and patents register 126 Request or claim under section 190(1) of Act to be mentioned as

inventor 51

127 Application for certificate under section 193(1) of Act concerning mention of inventor

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Part 5 Administrative and other miscellaneous provisions in Part 5 of

Act Subpart 1—Patents register and other information on patents and

patent applications Patents register

128 Patents register must record grant of patents 52 129 Other patents information that must be entered in patents register 52 130 Payment of renewal fees must be entered in patents register 53

Searches of patents register and obtaining patent information 131 Search of patents register 53 132 Information concerning patent or patent application that may be

requested 53

133 How request for patent information and certified copies must be made

Changes to patents register and other official documents 134 Request to alter entries on patents register 54 135 Notice of court orders must be given for entry on patents register 54 136 Application to correct other persons’ mistakes in patents register,

etc 55

137 Opposition to proposed correction 55 138 Applicant must file counter-statement 55 139 Filing of evidence 56 140 Opposition to Commissioner-initiated correction 56 141 Notice of application to court to rectify patents register 56 142 Notice of order of court to rectify patents register 57

Journal and other publications 143 Particulars of patent applications that must be published 57

Subpart 2—Miscellaneous provisions Evidence

144 Form of evidence 57 Amendment of documents

145 Amendment of documents 57 Extensions of time limits

146 Requirements for applying and granting extensions of time limits under section 231 of Act

147 General power of Commissioner to extend time limits in exceptional circumstances

148 Ability to request extension under other regulations must be exhausted

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Miscellaneous 149 Power of Commissioner to waive requirements in exceptional

circumstances 59

150 Power to waive requirements for patent applications and specifications temporarily

151 Maintenance of certain records 59 Part 6

Procedural and evidential requirements for proceedings before Commissioner

Proceedings to which this Part applies 152 Application of this Part 60

Documents filed in proceedings 153 Extra information that must be contained in documents filed in

proceedings 61

Hearing before exercise of Commissioner’s discretion 154 Hearing before exercise of Commissioner’s discretion 61

Case management 155 Commissioner may require parties to attend case management

conference 61

156 Commissioner may give directions 62 157 Parties must comply with Commissioner’s directions 62 158 Non-compliance with Commissioner’s directions 62

Halt in proceedings 159 Commissioner may halt proceeding 63

Consolidation of proceedings 160 Commissioner may consolidate proceedings 64

Extension of time limits in proceedings 161 Commissioner may extend time limits in proceedings 64

Evidence 162 Evidence restricted to particulars filed 65

Procedural and evidential requirements 163 Supply of documents for use of Commissioner 65 164 Party filing documents must copy documents to opposite party 66 165 Evidence out of time 66 166 Application for permission to file evidence out of time 66 167 Right to file evidence in reply if evidence in chief permitted out of

time 67

168 Evidence from another proceeding 67

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Hearings 169 Form of hearing 67 170 Commissioner may determine form of hearing, etc 68 171 Notice of hearing by appearance 68 172 Hearing fee 68 173 Venue for hearing by appearance 69 174 Conduct of hearing by appearance 69

Costs 175 Costs 69

Part 7 Transitional provisions

176 Amendment to Patents Regulations 1954 69 2A Application of these regulations for transitional purposes 70

177 Transitional provision as to statutory references to corresponding matters

Schedule Fees and penalties

Regulations

1 Title These regulations are the Patents Regulations 2014.

2 Commencement These regulations come into force on 13 September 2014.

3 Interpretation (1) In these regulations, unless the context otherwise requires,—

Act means the Patents Act 2013 address for service means 1 of the following addresses in New Zealand: (a) a postal address: (b) a post office box or document exchange box agent means a person— (a) who is a patent attorney or a barrister or solicitor (to the extent that the

barrister or solicitor is entitled to practise in matters under the Act or these regulations); and

(b) who is authorised by the person’s principal (X) to act for X in any pro- ceeding in accordance with these regulations or to take any step on X’s behalf under these regulations

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anniversary date, in relation to a maintenance or renewal fee, has the meaning set out in regulation 8 case management facility means the case management facility that may be ac- cessed through the Commissioner’s website or web services 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 communication address means an electronic address at which communica- tions may be received from the case management facility drawings includes line drawings, flow sheets, diagrams, photographs, and other digital images fee means a fee or charge payable under the Act or these regulations give— (a) means issue, supply, produce, provide, file, send, serve, or give in any

other way; and (b) in respect of information or documents that are given by the Commis-

sioner, includes to make the information or document accessible to the relevant person through the case management facility

information or a document has the same meaning as in section 229(6) of the Act national phase means the period of time commencing when the applicant has fulfilled the applicant’s obligations under Article 22(1) or 39(1)(a) of the Patent Cooperation Treaty (other than the obligation to file a verified translation) proceeding means a proceeding under the Act or these regulations verified translation means a translation into English of an accompanying document that has a certificate of verification attached working day means a day of the week other than— (a) Saturday, Sunday, Good Friday, Easter Monday, Anzac Day, the Sover-

eign’s birthday, Labour Day, and Waitangi Day; and (b) the anniversary day for Wellington; and (c) a day in the period that commences with 25 December in any year and

ends with 2 January in the following year; and (d) if 1 January in any year falls on a Friday, the following Monday; and (e) if 1 January in any year falls on a Saturday or a Sunday, the following

Monday and Tuesday; and

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(f) if Waitangi Day or Anzac Day falls on a Saturday or a Sunday, the fol- lowing Monday.

(2) An example used in these regulations has the following status: (a) the example is only illustrative of the provision to which it relates and

does not limit the provision; and (b) if the example and the provision to which it relates are inconsistent, the

provision prevails. Compare: SR 1992/316 r 2

4 Application (1) These regulations apply to all matters under the Act. (2) To avoid doubt, these regulations apply to a Treaty application after it enters

the national phase.

Part 1 Preliminary

Subpart 1—Fees and penalties

General provisions

5 Amount of fees and penalties (1) The fees and penalties set out in the Schedule are payable in respect of the mat-

ters set out in that schedule. (2) The fees and penalties are exclusive of goods and services tax.

Compare: SR 2003/187 r 167

6 Time of payment of fees and penalties Fees and penalties must be paid at the time of making an application or a re- quest, or on giving notice or filing information or a document, in respect of which a fee or penalty is payable, unless an arrangement acceptable to the Commissioner has been made for payment at another time. Compare: SR 1954/211 r 4

7 Form of payment of fees and penalties Fees and penalties must be paid by electronic means.

Maintenance and renewal fees

8 When maintenance and renewal fees become due (1) On the fourth and each subsequent anniversary of the filing date of a complete

specification (the anniversary date), either a maintenance fee or a renewal fee becomes due.

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(2) A maintenance fee becomes due on each anniversary date that occurs before the date on which the patent is granted.

(3) A renewal fee becomes due on each anniversary date, until the 19th anniversa- ry date, that occurs on or after the date on which the patent is granted.

Example M files a complete specification on 1 May 2016. The first maintenance fee is due on 1 May 2020 and then on each 1 May after that until the patent is granted. The first renewal fee is due on the first 1 May after the patent is granted and then on each 1 May after that until the 19th anniversary date.

9 Periods within which maintenance fees must be paid (1) The prescribed periods within which a maintenance fee under section 35(1) of

the Act must be paid are— (a) each period of 3 months ending with the close of the anniversary date;

and (b) if the fee is not paid within that period, a further period of 6 months be-

ginning at the close of the period in paragraph (a). (2) A maintenance fee that is paid before the anniversary date on which it becomes

due must be treated as a renewal fee if the patent is granted before the anniver- sary date.

Example M files a complete specification on 1 May 2016. The first maintenance fee is due on 1 May 2020. That first maintenance fee must be paid between 1 February 2020 and 1 November 2020. The fee is $100 if M pays the maintenance fee between 1 February and 1 May. The fee is $150 if M pays the maintenance fee between 2 May and 1 November (see the Schedule). If M does not pay the maintenance fee by 1 May in any year, the Commissioner may postpone the grant of the patent (see regulation 98(a)). M’s patent application is treated as abandoned under section 35(2) of the Act if M does not pay the maintenance fee by 1 November in any year. If M pays a maintenance fee between 1 February and 30 April in any year and M’s patent is granted before 1 May, the maintenance fee is treated as the renewal fee for that anniversary date. If M’s patent is granted on 25 January 2022, M’s last maintenance fee is the one that must be paid by 1 November 2021.

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10 Period within which renewal fees must be paid The prescribed period within which a renewal fee under section 20(2) of the Act must be paid is each period of 3 months ending with the close of the anni- versary date.

Example M files a complete specification on 1 May 2016 and M’s patent is granted on 25 January 2022. The first renewal fee is due on 1 May 2022. Each year after that until the 19th anniversary date, M must pay the renewal fee between 1 February and 1 May. M can request an extension of the period for paying a renewal fee under section 21 of the Act, on payment of the penalty (see the Schedule). If M does not pay by 1 May (or by the end of any extended period), M’s patent ceases to have effect under section 20(2) of the Act. The final renewal fee is due on 1 May 2035.

11 Certificate of payment of maintenance and renewal fees After receipt of a maintenance fee or renewal fee, the Commissioner must issue a certificate to the applicant or patentee (as the case requires) that specifies— (a) the number of the patent application or patent, as the case may be; and (b) the date on which the fee was paid; and (c) the amount of the fee and any penalty paid; and (d) the period in respect of which the fee was paid.

Subpart 2—Forms and documents

Use of case management facility

12 Certain information or documents must be given electronically through case management facility

(1) Any information or a document that the Act or these regulations requires to be given to or by the Commissioner in the prescribed manner must be given— (a) through the case management facility; and (b) in a file format of a type approved by the Commissioner.

(2) Anything that is given using the case management facility must be treated as having been received— (a) by the Commissioner, at the time when the information or document be-

comes accessible to the Commissioner through the case management fa- cility; or

(b) by a person other than the Commissioner, at the time when the Commis- sioner notifies the person at the person’s communication address that the

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information or document is accessible to the person through the case management facility.

(3) Only the Commissioner may use the case management facility to give informa- tion or a document to a person other than the Commissioner. Compare: SR 1954/211 r 19; SR 2003/187 r 8

13 Case management facility is prescribed electronic delivery method for certain purposes The case management facility is— (a) the prescribed electronic delivery method for the purpose of section

229(2) and (3)(a) of the Act; and (b) not a prescribed electronic delivery method for the purpose of section

233(1)(c) of the Act; and (c) the prescribed manner in which matters described in section 243 of the

Act (for example, patent applications, specifications, and documents) are to be dealt or proceeded with, including the manner in which communi- cations with the Commissioner are to be conducted (to the extent provi- ded by the case management facility).

14 Information that must be given when case management facility first used The following information must be given to the Commissioner, to the extent that the case management facility requires, when any information or a docu- ment is first given to the Commissioner in respect of a matter through the case management facility: (a) the full name of the person giving the information or document or on

whose behalf the information or document is given, for example, the ap- plicant or the opponent) (the person); and

(b) the person’s address for service, if required by regulation 34; and (c) the person’s communication address; and (d) the name of the person’s agent, if an agent is acting, or will act, for the

person. Compare: SR 2003/187 r 5

15 Number of patent application or patent must be given when all information or documents filed under Act or regulations All information or documents given to the Commissioner under the Act or these regulations must contain, or be filed with, the number of the patent appli- cation or patent (if any) that is the subject of the application, request, assertion, opposition, or other matter in respect of which the information or document is given. Compare: SR 2003/187 r 5

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16 Information or documents may be given by alternative delivery method (1) Despite regulation 12, the Commissioner may allow information or documents

to be given to the Commissioner by an alternative delivery method listed in subclause (2) if the Commissioner is satisfied that a person is unable to access the case management facility because of any exceptional circumstances beyond the person’s control.

(2) Alternative delivery method means delivery by 1 or more of the following methods: (a) in person: (b) post: (c) courier: (d) electronic mail: (e) fax.

(3) The same rules that apply in respect of service of notices in section 233 of the Act apply to the giving of information and documents by post, electronic mail, or fax. Compare: SR 2003/187 r 8(3)

17 Electronic documents To avoid doubt, any requirement in these regulations that a document must be in writing is satisfied if the document complies with section 222 of the Con- tract and Commercial Law Act 2017. Compare: SR 2003/187 r 7

Regulation 17: amended, on 1 September 2017, by section 347 of the Contract and Commercial Law Act 2017 (2017 No 5).

Filing

18 Number of copies (1) The Commissioner may require an additional copy, or additional copies, of any

information or document that is filed. (2) The requirement in subclause (1) may include a requirement for 1 or more

documents that are filed electronically to be provided on paper or in a different format.

19 Document filed when received in proper form (1) A document is filed when it is received in proper form. (2) A document is in proper form only if—

(a) it is legible; and (b) it complies with the requirements of the Act and these regulations; and

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20 Filing date of document if not received on working day If a document is received on a day that is not a working day, the document is treated as having been filed on the next working day. Compare: SR 2003/187 r 10

Requirements for documents

21 Documents must be in English or Māori (1) All documents filed must be in English or Māori. (2) However,—

(a) a person who files a document in Māori must, if required by the Com- missioner, file a verified translation within the time that the Commis- sioner specifies; and

(b) a person may, if it is necessary to do so, file a document that is not in English or Māori if the document is accompanied by a verified transla- tion.

Compare: SR 2003/187 r 4

22 Signatures (1) In the following cases, a document must be signed for the purposes of these

regulations as follows: (a) in the case of a partnership, the document must—

(i) contain the full names of all partners, unless a list of the current partners has been filed; and

(ii) be signed by a qualified partner or another person who has, to the Commissioner’s satisfaction, authority to sign:

(b) in the case of a body corporate, the document must be signed by a director or senior manager who has, to the satisfaction of the Commis- sioner, authority to sign:

(c) in the case of an unincorporated association, the document may be signed by a person who appears to the Commissioner to be duly quali- fied.

(2) To avoid doubt, a document may be signed in accordance with section 226 of the Contract and Commercial Law Act 2017. Compare: SR 2003/187 r 6

Regulation 22(2): amended, on 1 September 2017, by section 347 of the Contract and Commercial Law Act 2017 (2017 No 5).

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Requirements for complete specifications

23 Form and size of complete specifications (1) All complete specifications and copies of complete specifications, except draw-

ings, that are filed must— (a) use black text on a white background; and (b) be capable of being printed legibly on A4 paper.

(2) The minimum margins of all complete specifications, except drawings, when printed on A4 paper are as follows: (a) top: 2 centimetres: (b) left side: 2.5 centimetres: (c) right side: 2 centimetres: (d) bottom: 2 centimetres.

(3) All margins of a complete specification must be blank when the complete spe- cification is filed.

(4) However, if a complete specification contains line numbers, the numbers must appear in the right half of the left-side margin. Compare: SR 1954/211 r 10

24 Numbering of pages of complete specifications (1) Each page of a complete specification must be numbered consecutively with

Arabic numerals. (2) Page numbers must be at the top or bottom of each page. (3) The Commissioner may request fresh copies of a complete specification, or any

amended page or pages of a complete specification, as specified by the Com- missioner.

(4) If a request is made by the Commissioner under subclause (3), the applicant must renumber the amended page or pages if necessary and submit a copy of the amended complete specification to the Commissioner. Compare: SR 1954/211 r 12; Patent Cooperation Treaty Rules r 11.7

25 Text (1) Graphic symbols and characters, and chemical or mathematical formulas, may

be written or drawn by hand, provided that— (a) they are clearly written or drawn; and (b) the scale and distinctness are such that they are capable of being repro-

duced with a linear reduction in size to two-thirds of their original size in a way that would enable all details to be distinguished without difficulty.

(2) The text on all pages of each complete specification, except drawings, must use one and a half line spacing when printed on A4 paper.

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(3) The size of the text in each complete specification, except drawings, must be such that the capital letters are at least 0.28 centimetres in height when printed on A4 paper. Compare: SR 1954/211 r 10(c); Patent Cooperation Treaty Rules r 11.9

Requirements for drawings in complete specifications

26 Form and size of drawings (1) Drawings must be made on a white background and be capable of being prin-

ted on A4 paper. (2) The minimum margins on each page of drawings, when printed on A4 paper,

are as follows: (a) top: 2.5 centimetres: (b) left side: 2.5 centimetres: (c) right side: 1.5 centimetres: (d) bottom: 1 centimetre.

(3) All margins must be blank when the drawings are filed. Compare: SR 1954/211 r 31; Patent Cooperation Treaty Rules r 11.6(c)

27 Arrangement of drawings (1) No more pages than are necessary may be used for any drawings. (2) Drawings must be numbered consecutively in Arabic or Roman numerals with-

out regard to the number of pages and must, as far as possible, be arranged in numerical order.

(3) If a page contains more than 1 drawing, the drawings must be separated by suf- ficient space to keep them distinct.

(4) An exceptionally large drawing may be continued on subsequent pages. (5) If drawings on 2 or more pages in effect form a single complete drawing, the

drawings must be so arranged that the complete drawing can be assembled without concealing any part of another drawing. Compare: SR 1954/211 r 31

28 Preparation of drawings All drawings must comply with the following requirements: (a) each element of each drawing must be in proper proportion to every

other element of the drawing, except where the use of a different propor- tion is necessary to ensure that the drawing is clear:

(b) the scale of drawings must be sufficiently large to show the invention clearly, and only so much of the product may appear as effects this pur- pose:

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(c) the scale of drawings and their distinctness must be such that they are capable of being reproduced with a linear reduction in size to two-thirds of their original size in a way that would enable all details to be distin- guished without difficulty:

(d) if the scale is given, it must be represented graphically and not denoted by words, and no dimensions may be marked on the drawings:

(e) all numbers, letters, and reference lines appearing on drawings must be clear and simple and brackets, circles, and inverted commas must not be used in association with numbers and letters:

(f) where practicable, the drawings must appear in an upright position in re- lation to the top and bottom of the page but, if they cannot be shown in such a position, they must be placed sideways so that the top of the drawing is at the left side of the page:

(g) subject to any special directions of the Commissioner in any particular case,— (i) reference letters and numerals, and index letters and numerals

used in conjunction with reference letters or numerals, must be bold, distinct, and not less than 0.32 centimetres in height when printed on A4 paper; and

(ii) the same letters or numerals must be used in different views of the same parts; and

(iii) if the reference letters or numerals are shown outside the parts re- ferred to, they must be connected with those parts by fine lines:

(h) any lettering on drawings must use the Latin alphabet or, where custom- ary, the Greek alphabet:

(i) any reference signs used in drawings must be referred to in the descrip- tion.

Compare: SR 1954/211 r 32(f)–(i); Patent Cooperation Treaty Rules r 11.13(c)–(e), (g)–(h), (l)

29 Descriptive matter (1) Descriptive matter must not appear on drawings, but drawings in the nature of

flow sheets may bear descriptive matter to show the materials used and any chemical or other reactions or treatments effected in carrying out the invention.

(2) Drawings showing a number of instruments or units of products and their inter- connections, either mechanical or electrical, may bear descriptive matter to the extent necessary to identify the instruments or units or their interconnections, provided that the instrument or unit is shown only symbolically.

(3) Descriptive matter must be black, and the letters must not be less than 0.4 cen- timetres in height when printed on A4 paper.

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(4) No drawing or sketch, other than a graphic chemical formula or a mathematical formula, symbol, or equation, may appear in the description or claims of the specification. Compare: SR 1954/211 r 34

30 Alterations (1) All drawings—

(a) must be reasonably free from erasures, photocopy marks, and other arte- facts caused by copying or reproduction processes; and

(b) must be free from alterations, overwritings, and interlineations. (2) The Commissioner may accept drawings that do not comply with subclause (1)

if the Commissioner is satisfied that the drawings— (a) are authentic; and (b) are capable of being reproduced without any loss in quality.

31 Preparation of line drawings Line drawings, including flow sheets and diagrams, must comply with the fol- lowing requirements: (a) each line must be durable, sufficiently dense and dark, uniformly thick,

and have well-defined lines and strokes: (b) section lines, lines for effect, and shading lines must be as few as pos-

sible and must not be close together: (c) shading lines must not contrast excessively in thickness with the general

lines of the drawings: (d) cross-sections must be indicated by oblique hatching that does not im-

pede the ability to read any reference signs and leading lines: (e) shading must not be represented by solid black. Compare: SR 1954/211 r 32(a)–(e); Patent Cooperation Treaty Rules r 11.13(a)–(b)

Requirements for terminology and signs in complete specifications

32 Terminology and signs In a complete specification,— (a) units of description must be expressed in terms of the metric system or,

if first expressed in other terms, must also be expressed in terms of the metric system:

(b) temperatures must be expressed in degrees Celsius or, if first expressed in another manner, must also be expressed in degrees Celsius:

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(d) in chemical formulas, the symbols, atomic weights, and molecular for- mulas in general use must be used:

(e) other terms, signs, and symbols that are generally accepted in the art to which the complete specification principally relates must be used:

(f) if the complete specification is expressed in English, the beginning of any decimal fraction must be marked by a period:

(g) units, signs, symbols, and other terms must be used consistently. Compare: Patents Regulations 1991 cl 1 Schedule 3 (Aust)

Abstracts

33 Form and content of abstracts (1) An abstract must consist of the following:

(a) a summary of the disclosure of the complete specification as contained in the description, the claims, and any drawings; and

(b) if applicable, the chemical formula which, among all the formulas con- tained in the patent application, best characterises the invention.

(2) The summary referred to in subclause (1)(a) must— (a) indicate the technical field to which the invention pertains; and (b) be written in a way that allows the clear understanding of the technical

problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention.

(3) The abstract must be as concise as the disclosure of the complete specification permits.

(4) The abstract must not contain statements on the alleged merits or value of the claimed invention or on its speculative application. Compare: Patent Cooperation Treaty Rules r 8.1

Subpart 3—Addresses

34 Address for service must be given (1) The following persons must give the Commissioner an address for service at

the time when the person first gives any information or a document to the Commissioner in respect of a matter: (a) an applicant: (b) a patentee: (c) an agent: (d) any party to a proceeding or any person intending to be a party to a po-

tential proceeding.

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(2) For the purpose of any communication with the Commissioner in the name of 2 or more persons with different addresses, the Commissioner may require 1 ad- dress for service to be given. Compare: SR 2003/187 r 13

35 Communication address must be given (1) A person must give the Commissioner notice of a communication address at

the time when the person first gives any information or a document to the Commissioner in respect of a matter.

(2) For the purpose of any communication with the Commissioner in the name of 2 or more persons with different addresses, the Commissioner may require 1 communication address to be given. Compare: SR 2003/187 r 15

36 Change of address notice must be given (1) A person who gives the Commissioner an address for service or a communica-

tion address must, if the address changes, give the Commissioner a notice of change of address as soon as practicable after the change occurs.

(2) If the address of an agent changes, the agent must give the Commissioner a no- tice of change of address as soon as practicable after the change occurs. Compare: SR 2003/187 r 16

37 Sufficiency of address An address that is given to the Commissioner under these regulations must be sufficiently detailed to enable the Commissioner to contact the addressee at that address. Compare: SR 2003/187 r 18

Subpart 4—Agents

38 Agent may act on behalf of principal for purposes of regulations (1) Subject to the scope of the agent’s authority, an agent may act for the agent’s

principal (X) in any proceeding in accordance with these regulations or take any step (including the signing of documents) on X’s behalf under these regula- tions.

(2) However, the Commissioner may in any case require that a document that must be signed for the purposes of these regulations be signed by the principal and not by the agent. Compare: SR 2003/187 r 20

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39 Commissioner may give notices to agent (1) The Commissioner satisfies any requirement under these regulations to give

documents or notice to, or correspond with, a person by giving documents or notice to, or corresponding with, that person’s agent.

(2) Subclause (1) does not apply to the extent that any written authority that is filed by the agent’s principal expressly excludes the authority of the agent for any of the matters specified in subclause (1). Compare: SR 2003/187 r 21

40 Commissioner may require principal of agent to file authority with Commissioner in certain cases

(1) This regulation applies if— (a) the Commissioner receives a communication from a person who refers

to himself or herself in the communication as an agent (A) of a principal (X) and, at the time of the communication, the Commissioner does not have an authority in respect of A that complies with the requirements in subclause (3); or

(b) the Commissioner has an authority in respect of an agent that complies with the requirements in subclause (3) and the Commissioner receives a communication informing the Commissioner that the principal (X) has appointed a new agent (A).

(2) The Commissioner may require X to file, within the specified time, a written authority in respect of A.

(3) The written authority must— (a) be signed by X and not by an agent; and (b) contain the following information:

(i) A’s name and address for service; and (ii) if A is authorised to act in respect of a particular patent or patent

application, the number of the patent or patent application; and (iii) a statement of any limitation on the authority of A to act on X’s

behalf. (4) In subclause (2),—

(a) specified time means the time that the Commissioner specifies in the re- quirement given under subclause (2); and

(b) the specified time must be not less than 1 month after the date on which the Commissioner receives the communication referred to in subclause (1).

Compare: SR 2003/187 r 22

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41 Commissioner must refuse to recognise certain persons as agent The Commissioner must refuse to recognise as an agent in respect of any pro- ceedings a person who neither resides nor carries on business in New Zealand or Australia. Compare: SR 1954/211 r 16

42 Commissioner must notify refusal to recognise person as agent If the Commissioner becomes aware that a person is not entitled to act as an agent, the Commissioner must, as soon as practicable, notify that person and that person’s principal. Compare: SR 2003/187 r 24

43 Notice to Commissioner of revocation or alteration of authority (1) A principal (X) must, as soon as practicable, give written notice to the Com-

missioner of the revocation or alteration of the authority of X’s agent (A). (2) The notice must—

(a) be signed by X, and not by an agent; and (b) contain the information set out in subclause (3).

(3) The notice must contain the following information: (a) X’s name and address for service: (b) A’s name: (c) if A is authorised to act in respect of a particular patent or patent applica-

tion, the number of the patent or patent application: (d) if A’s authority is revoked, a statement to that effect: (e) if A’s authority is altered, a statement setting out—

(i) the alteration in authority; and (ii) the matters for which A continues to have authority.

(4) Notice to the Commissioner of the revocation or alteration of the authority of an agent is effective— (a) if it complies with this regulation; and (b) when it is received by the Commissioner. Compare: SR 2003/187 r 25

44 Notice of revocation of authority may be given by agent (1) An agent (A) of a principal (X) may give written notice to the Commissioner of

the revocation of A’s authority as X’s agent. (2) The notice must be signed by A and contain the information described in regu-

lation 43(3)(a) to (d).

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(3) Notice to the Commissioner of the revocation of the agent’s authority is effect- ive— (a) if it complies with this regulation; and (b) when it is received by the Commissioner. Compare: SR 2003/187 r 25A

Subpart 5—Interpretation

45 Specified exhibitions (1) A person who is responsible for an exhibition may request the Commissioner

to declare that exhibition to be an international or industrial exhibition under section 9(2) of the Act.

(2) The request must be made before the opening date of the exhibition and in- clude— (a) the date or dates on which the exhibition will be held; and (b) the name and location of the exhibition.

Part 2 Patentable inventions and patent rights

46 Form of patent under section 19 of Act The prescribed information for the purpose of section 19(5) of the Act is as fol- lows: (a) the name of the patentee or patentees; and (b) the title of the invention; and (c) the patent date and number; and (d) if the patent is a patent of addition, a statement that it is a patent of add-

ition and the number of the patent granted for the main invention.

47 Request for directions to co-owners under section 26(1) of Act (1) A request for directions under section 26(1) of the Act must include a state-

ment setting out the facts on which the person relies and the directions sought. (2) The person making the request must give a copy of the request to each other

patentee of the patent. (3) The Commissioner may give any directions regarding the subsequent proced-

ure that are consistent with the requirement in section 27 of the Act to give the patentees a reasonable opportunity to be heard. Compare: SR 1954/211 r 122

48 Request for directions to co-owners under section 26(3) of Act (1) A request for directions under section 26(3) of the Act must include—

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(a) the name of the person in default; and (b) the date on which directions were given by the Commissioner under sec-

tion 26(1) of the Act; and (c) a statement setting out the facts on which the person relies and the direc-

tions sought. (2) The person making the request must give a copy of the request to the person in

default. (3) The Commissioner may give any directions regarding the subsequent proced-

ure that are consistent with the requirement in section 27 of the Act to give the person in default a reasonable opportunity to be heard. Compare: SR 1954/211 r 123

49 Request for determination of dispute under section 28 of Act (1) A request by a party under section 28(2) of the Act (the applicant) to deter-

mine a dispute as to rights in an invention, or a patent granted, or to be granted, in respect of an invention,— (a) must include the name and address of the other party to the dispute (the

other party); and (b) must be signed by the applicant; and (c) must be accompanied by a statement of case setting out the facts of the

dispute on which the applicant relies and the relief sought. (2) The Commissioner must give a copy of the request and the statement of case to

the other party. (3) The other party must file a counter-statement, within 2 months after receiving

the copy of the request and the statement of case, setting out the grounds on which the other party disputes the right of the applicant to the relief sought.

(4) The applicant may, within 2 months after receiving the copy of the counter- statement, file evidence in support of his or her case.

(5) The other party may file evidence in support of his or her case within 2 months after receiving the copy of the applicant’s evidence or, if the applicant does not file any evidence, within 2 months after the expiration of the time within which the applicant’s evidence might have been filed.

(6) The applicant may, within 1 month after receiving the copy of the other party’s evidence, file evidence confined to matters strictly in reply.

(7) Subclauses (8) and (9) apply if the other party fails to file a counter-statement within the period prescribed by subclause (3).

(8) The applicant may file evidence in support of his her case within 2 months after the time by which the other party is required to file the counter-statement.

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(9) The Commissioner may determine the request after considering the request and any evidence filed in support of the request. Compare: SR 1954/211 r 124

Part 3 Process for obtaining grant of patent and other matters

Subpart 1—Patent applications and specifications

Patent applications

50 Application for patent (1) The prescribed manner for making a patent application is as follows:

(a) the application must be made in accordance with Part 1; and (b) an application must contain, or be accompanied by, the following infor-

mation: (i) the name and address of each applicant; and (ii) the nationality or principal place of business of each applicant;

and (iii) the title of the invention that is the subject of the application; and (iv) the name and address of each inventor; and (v) an abstract, if the application is accompanied by a complete speci-

fication. (2) If the name, address, nationality, or principal place of business of an applicant

changes from that notified, the applicant must give the Commissioner a notice of the change as soon as practicable after the change occurs. Compare: SR 1954/211 r 19, Schedule 2 forms 1, 3

51 Requests for post-dating A request to post-date an application under section 33 of the Act must contain the date to which the applicant requests that the application be post-dated. Compare: SR 1954/211 Schedule 2 form 8

52 Divisional applications (1) If an applicant makes a divisional application under section 34 of the Act, the

applicant must state that the application is a divisional application within the meaning of section 34 and give the application number of the parent applica- tion.

(2) A request for the Commissioner to direct that the divisional application or a complete specification for that application (or both) be given an earlier filing date must—

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(a) be made at the time the divisional application is filed; and (b) specify the earlier filing date that is requested for the divisional applica-

tion or complete specification (or both). (3) The prescribed manner in which an application may be made for the purpose of

section 34(1) of the Act is as follows: (a) the divisional application must not include a claim or claims for substan-

tially the same matter as claimed in the parent application; and (b) the parent application must not include a claim or claims for substantial-

ly the same matter as claimed in the divisional application. Compare: SR 1954/211 r 23

53 Personal representative must establish right to be granted patent (1) This regulation applies if a patent application, other than a convention applica-

tion, is made by the personal representative of a deceased person or the assign- ee of the personal representative of a deceased person who, in either case, would have been the nominated person in respect of the patent application.

(2) The probate of the will of the deceased person or the letters of administration of the deceased person’s estate, or an official copy of the probate or letters of administration, must be given to the Commissioner.

(3) This regulation does not apply if the Commissioner has dispensed with probate and letters of administration under section 167 of the Act. Compare: SR 1954/211 r 20

Specifications

54 Requirements for provisional specification Every provisional specification under section 38 of the Act— (a) must be in accordance with Part 1 of these regulations; and (b) must include, on its first page, the title of the invention that is the subject

of the application. Compare: SR 1954/211 Schedule 2 form 4

55 Requirements for complete specification Every complete specification under section 39 of the Act— (a) must be in accordance with Part 1 of these regulations; and (b) must include, on its first page, the title of the invention that is the subject

of the application. Compare: SR 1954/211 Schedule 2 form 5

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56 Extension of period for filing complete specification The prescribed extended period for the purposes of section 37(2)(b) of the Act is 15 months after the filing date of the patent application.

Example K files a patent application on 1 February 2016 accompanied by a provisional spe- cification. K must file a complete specification by 1 February 2017 or, if K also re- quests an extension of time, by 1 May 2017.

57 Cognate applications (1) This regulation applies if the Commissioner gives leave for a single complete

specification to be proceeded with under section 37(4)(b) of the Act in respect of 2 or more patent applications for which 2 or more complete specifications have been filed (the previous specifications).

(2) The single complete specification— (a) may include any matter disclosed in any of the previous specifications;

and (b) is treated as having been filed on the date that the Commissioner may

direct, being no earlier than the earliest date on which all the matters dis- closed in the single complete specification that support the claim have been disclosed to the Commissioner in or in connection with the applica- tions in the previous specifications.

Compare: SR 1954/211 r 22

58 Amendment of complete specification before acceptance An amendment of a complete specification before acceptance under section 40 of the Act must include— (a) the applicant’s reasons for making the amendment; and (b) a copy of the proposed completed specification as it would appear fol-

lowing amendment; and (c) a copy of the marked-up pages of the complete specification with the

amendments clearly shown; and (d) a statement setting out the specific part or parts of the original complete

specification that supports each of the proposed amendments.

Deposit requirements for micro-organisms

59 Deposit requirements for micro-organisms (1) The prescribed period for the purposes of section 43(1)(b) of the Act is 3

months after the date that the micro-organism is deposited with the prescribed depositary institution.

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(2) The prescribed form of receipt for the purposes of section 43(2) of the Act is a copy of a receipt issued by a prescribed depositary institution under rule 7 of the Budapest Regulations, and, if that receipt is not in English, the applicant must provide a verified translation of the receipt.

(3) In this regulation, Budapest Regulations— (a) means the regulations made under the Budapest Treaty; and (b) includes any amendments from time to time made to those regulations. Compare: Patents Regulations 1991 r 3.23(2) (Aust)

60 Deposit requirements treated as satisfied in certain circumstances The provisions prescribed for the purpose of section 44(2)(b) of the Act are the same as the provisions prescribed by regulation 121 for the purpose of section 128 of the Act, with any necessary modifications.

Subpart 2—Treaty applications

Treaty applications before entry to national phase

61 Amendments to documents forming part of complete specification The prescribed time limit for the purposes of section 50(3)(b) of the Act is 19 months after the earliest priority date accorded to the international application.

62 Time limit specified for sections 51 and 52 of Act The prescribed time limit for the purposes of sections 51(1)(d) and (e) and 52(1)(b) of the Act is 31 months after the earliest priority date accorded to the international application. Compare: SR 1992/316 r 5

Treaty applications on entry to national phase

63 Application for entry to national phase (1) An application for entry to the national phase must be accompanied by the

international application number. (2) The prescribed documents for the purposes of section 52(1)(d) of the Act are

the complete specification and any amendments proposed to be made to the complete specification during the international phase.

64 Request for examination of Treaty application A request for examination under section 52(2)(a) of the Act in relation to a Treaty application must include— (a) the applicant’s reasons for making the request before all of the require-

ments in section 52(1) of the Act are satisfied; and (b) any evidence in support of those reasons.

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65 English translation of documents as required (1) If any document or documents forming part of a Treaty application have been

filed in a language other than English, the applicant must, within 3 months after the commencement date of the national phase, file a verified translation of that document or those documents.

(2) However, the Commissioner may, on any terms that the Commissioner thinks fit, extend that time for a period of up to 2 months.

(3) The Commissioner may grant an extension under subclause (2) even if the time for the filing of the verified translation has expired under subclause (1). Compare: SR 1992/316 r 3

Fees for international applications and Treaty applications

66 Fees payable for international applications and Treaty applications (1) Part 2 of the Schedule sets out the amount of certain fees that must be paid in

respect of an international application or a Treaty application. (2) The fees are exclusive of goods and services tax.

67 Trust fund (1) All fees collected by the Commissioner on behalf of the International Bureau

or any international searching authority must be paid into a trust fund establish- ed 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 may expend the money held in trust for the purposes of the Patent Cooperation Treaty, including the refunds and the remission of fees to the International Bureau and any inter- national searching authority. Compare: SR 1992/316 r 16

Subpart 3—Convention applications

68 Convention applicants may make convention applications The prescribed period for the purposes of section 53(4) of the Act is 2 months after the date on which the Commissioner gives written notice to the conven- tion applicant requiring the convention applicant to file a copy of any or all of the documents, including the basic application, referred to in section 53(3)(c) of the Act.

69 Convention application for patent The prescribed manner for making a convention application, and the informa- tion that must be included under section 54(2)(a) of the Act, is as follows: (a) the application must be made in accordance with Part 1 and regulation

50 of these regulations; and

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(b) the application must contain, or be accompanied by, the following infor- mation: (i) the date on which the relevant basic application was made in a

convention country; and (ii) the convention country in which the relevant basic application

was made; and (iii) the number of the relevant basic application.

Compare: SR 1954/211 r 19, Schedule 2 form 3

70 Evidence in support of convention applications (1) This regulation applies if the Commissioner has given written notice to a con-

vention applicant requiring that the convention applicant file a copy or verified translation of any or all of the documents filed in relation to the relevant basic application.

(2) The convention applicant may file the copy or verified translation by— (a) providing an electronic copy of the document and a verified translation

of the document; or (b) making an electronic copy of the document and a verified translation of

the document available to the Commissioner through a digital library ap- proved by the Commissioner.

Compare: SR 1954/211 r 25

Subpart 4—Rest of process for obtaining grant of patent and other matters

Examination

71 Manner of making request for examination of patent application A request under section 64(1) of the Act for an examination of a patent applica- tion and the complete specification relating to the application must be made as follows: (a) for a divisional application, within 5 years of the date that the complete

specification for the divisional application is filed or treated as having been filed, whichever is the earlier; and

(b) for a patent application, or a complete specification relating to the appli- cation, that has been post-dated by the Commissioner, within 5 years of the date that the complete specification is treated as having been filed; and

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72 Grounds on which Commissioner may direct applicant to request examination of patent application The prescribed grounds for the purpose of section 64(2) of the Act are as fol- lows: (a) the Commissioner reasonably considers it expedient to give the direc-

tion, having regard to the progress made in the examination of applica- tions filed before the filing date of the application concerned; or

(b) the Commissioner reasonably considers it to be in the public interest to give the direction; or

(c) the Commissioner reasonably considers it expedient to give the direc- tion, having regard to the examination of another patent application.

Compare: Patents Regulations 1991 r 3.16 (Aust)

73 Period within which applicant may be directed to request examination The period prescribed for the purpose of section 64(2) and (6) of the Act is 2 months after the day on which the direction is given.

74 Manner in which person may require Commissioner to give direction The prescribed manner in which a person may require the Commissioner under section 64(3) of the Act to give a direction under section 64(2) of the Act is as follows: (a) the person must identify the nature of the public interest in which the ap-

plicant can be directed to request an examination; or (b) the person must describe the special circumstances that make it desirable

that the applicant be directed to request an examination. Compare: Patents Regulations 1991 r 3.17(2) (Aust)

75 Commissioner may refuse to proceed with application or require application or specification to be amended

(1) If the Commissioner requires an applicant to amend a patent application or any specification before the Commissioner proceeds with the application, the appli- cant must comply with regulation 58.

(2) See regulations 169 to 174 (which relate to hearings).

76 Applications must be examined in order in which request for examination is made The Commissioner must examine a patent application and the complete specifi- cation relating to the application, and report in accordance with section 65 of the Act, in the order in which the Commissioner is asked for an examination under section 64 of the Act. Compare: SR 1954/211 r 37

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77 Examination may be advanced out of turn (1) The Commissioner may advance the order of examination, despite regulation

76,— (a) to expedite the business of IPONZ; or (b) at the request of the applicant, if there are good and substantial reasons.

(2) A request to advance an application under this regulation must be accompanied by evidence in support of the request. Compare: SR 1954/211 r 38

78 Deadlines by which applicants must act if Commissioner refuses to proceed with application, etc

(1) The prescribed manner in which the Commissioner must set a deadline under section 67 of the Act is that the deadline must be stated in the examination re- port issued under section 65 of the Act.

(2) The prescribed manner in which the Commissioner may extend the deadline is that the applicant must file, within 1 month after the deadline stated in the examination report issued under section 65 of the Act, a response to the exam- ination report that includes a request for an extension.

(3) The Commissioner may also, in exceptional circumstances, extend the deadline if the applicant files, after the expiry of that 1-month period, a response to the examination report that includes a request for an extension.

79 Duty to inform Commissioner of search results (1) The prescribed searches to which section 70(1) of the Act does not apply are

searches that are both— (a) publicly available on an Internet site; and (b) in English.

(2) However, subclause (1) does not apply if the search is in respect of 1 or more countries, regions, or foreign patent offices specified by the Commissioner.

(3) The prescribed manner for informing the Commissioner of the results of any documentary search under section 70(1) of the Act is— (a) by including the results in the response to the examination report issued

under section 65 of the Act; and (b) by excluding any results of any searches that the Commissioner has sta-

ted are not required to be provided; and (c) if the applicant becomes aware of any further results in the period after

the response is given and before the complete specification is accepted, by giving the results to the Commissioner (without any further requests having to be made by the Commissioner).

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Acceptance and publication

80 Time for putting application in order for acceptance (1) The period prescribed for the purpose of section 71(1) of the Act is 12 months

after the date of issue of the first examination report under section 65 of the Act.

(2) The requirement prescribed for the purpose of section 71(1)(b) of the Act is the requirement to pay any fee and penalty that has become due under the Act or these regulations.

81 Manner of filing notice of entitlement before acceptance (1) A notice filed in accordance with section 73 of the Act must identify which of

the classes of person identified in section 22(1) of the Act applies to the nomin- ated person.

(2) The Commissioner may require the applicant to file evidence in support of the notice of entitlement.

(3) If the Commissioner requires the applicant to file evidence in support of the notice of entitlement, the applicant must file the evidence before the expiry of the period prescribed by regulation 80 or the expiry of the extension or last ex- tension under section 72 of the Act (if the prescribed period is extended under that section).

82 Acceptance of complete specification The requirement prescribed for the purpose of section 74(1)(b) of the Act is the requirement to pay any fee and penalty that has become due under the Act or these regulations.

83 Applicant may request Commissioner to postpone acceptance (1) A notice under section 75 of the Act requesting the Commissioner to postpone

acceptance of the complete specification must be filed before the complete spe- cification is accepted.

(2) The period prescribed for the purpose of section 75(2) of the Act is 12 months after the date of issue of the first examination report under section 65 of the Act.

84 Notice that complete specification open to public inspection following request by applicant

(1) If an applicant asks the Commissioner to publish a notice in the journal under section 76(3) of the Act that the complete specification is open to public in- spection, the Commissioner must publish the notice as soon as practicable fol- lowing the applicant’s request.

(2) The notice must include— (a) the number of the patent application; and

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(b) the applicant’s name; and (c) the title of the invention.

85 Documents open to public inspection (1) The other documents that are prescribed for the purpose of section 78(1) of the

Act are all documents, other than documents referred to in subclause (2), that are— (a) associated with the application; and (b) in the possession of the Commissioner.

(2) The documents prescribed for the purposes of section 78(2)(a) to (c) of the Act are documents— (a) that are subject to legal professional privilege; or (b) that are subject to an order of a court or a tribunal prohibiting disclosure

of the document or information in the document; or (c) that the Commissioner has reasonable grounds to believe should not be

open to public inspection. Compare: Patents Regulations 1991 r 4.3 (Aust)

86 Treaty application documents open for public inspection (1) The documents prescribed for the purpose of section 79(2) of the Act are—

(a) the application for the Treaty application to enter the national phase; and (b) all documents in the possession of the Commissioner that are associated

with the application to enter the national phase. (2) However, subclause (1) does not apply to documents—

(a) that are subject to legal professional privilege; or (b) that are subject to an order of a court or a tribunal prohibiting disclosure

of the document or information in the document; or (c) that the Commissioner has reasonable grounds to believe should not be

open for public inspection. Compare: Patents Regulations 1991 r 4.4(7) (Aust)

Amendment of specifications after acceptance

87 Amendment of specification after acceptance with leave of Commissioner A request for leave to amend a specification after acceptance under section 85 of the Act must include— (a) a copy of the proposed completed specification as it would appear fol-

lowing amendment; and (b) a copy of the current complete specification with the amendments sought

clearly shown; and

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(c) a statement setting out the specific part or parts of the current complete specification that supports each of the proposed amendments; and

(d) a declaration that there are no relevant proceedings before the court in respect of the invention.

88 Commissioner must consider request for leave to amend complete specification

(1) If, following receipt of a request under section 85 of the Act, the Commissioner is not satisfied that the amendment should be allowed, the Commissioner must notify the person who made the request.

(2) The person must, within 3 months after receiving that notice, satisfy the Com- missioner that the amendment should be allowed.

(3) The period may be extended by the Commissioner by up to 1 month on the re- quest of the person who received the notice or on the Commissioner’s own ini- tiative.

89 Requirements for notice of opposition to proposed amendment (1) The period prescribed for the purpose of section 87(1) of the Act for giving no-

tice to the Commissioner of opposition to a proposed amendment is 2 months after the date of the publication in the journal under section 86 of the Act of the request for leave to amend the specification under section 85 of the Act.

(2) The Commissioner may, on the request of a person wishing to oppose the pro- posed amendment, extend the period for filing a notice of opposition— (a) by up to 1 month, without the applicant’s consent; or (b) by up to 2 months, with the applicant’s consent.

(3) The Commissioner must not extend the period for filing a notice of opposition if the request for extension is received after the period for filing the notice has expired.

(4) A notice of opposition to a proposed amendment under section 87 of the Act— (a) must include the reasons for opposing the proposed amendment; and (b) must be accompanied by a statement of case setting out the facts on

which the opponent relies and the relief sought. (5) The Commissioner must give a copy of the notice and statement of case to the

applicant or patentee (as the case may be) who made the request for leave to amend the specification under section 85 of the Act.

(6) The applicant or patentee must file a counter-statement, within 2 months after receiving a copy of the notice and statement of case, setting out the grounds on which the opposition is contested.

(7) If the applicant or patentee does not file a counter-statement within the time prescribed in subclause (6), the applicant or patentee is treated as having aban- doned his or her request to amend the specification.

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(8) The opponent may, within 4 months after receiving the copy of the counter- statement, file evidence in support of his or her case.

(9) The applicant or patentee may file evidence in support of his or her case within 4 months after receiving the copy of the opponent’s evidence or, if the oppo- nent does not file any evidence, within 4 months after the expiration of the time within which the opponent’s evidence might have been filed.

(10) The opponent may, within 3 months after receiving the copy of the applicant’s evidence, file evidence confined to matters strictly in reply. Compare: SR 1954/211 r 100

Assertions by third parties

90 Assertions by third parties on novelty and inventive step (1) The period prescribed for the purpose of section 90(1) of the Act for notifying

the Commissioner of an assertion is the period that commences when the com- plete specification becomes open for public inspection and ends when the com- plete specification is accepted.

(2) An assertion made under section 90(1) of the Act must include— (a) a statement setting out—

(i) the relevant prior art (if any); and (ii) the relevant prior use or uses (if any), including location, date, and

context of the use; and (iii) the claims of the complete specification to which the prior art or

prior use relates; and (b) a statement that identifies any relevant proceedings before the court; and (c) any information or documents relied on in support of the assertion and a

statement as to their relevance.

91 Manner in which Commissioner must consider and deal with notice of assertion under section 90 of Act

(1) The manner in which the Commissioner must, under section 91(2) of the Act, consider and deal with a notice of assertion made under section 90 of the Act is by dealing with the matter as part of the examination process under section 65 of the Act.

(2) The Commissioner may, but is not required to, seek and receive further infor- mation or submissions from the person who made the assertion.

Opposition to grant of patent

92 Matters that must be included in notice of opposition (1) The prescribed manner in which a person may oppose the grant of a patent

under section 92(1) of the Act is by filing a notice of opposition that—

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(a) must include the ground or grounds on which the grant of the patent is opposed; and

(b) must be accompanied by a statement of case that sets out the facts on which the opponent relies and the relief sought.

(2) The Commissioner must give the applicant a copy of the notice of opposition and statement of case. Compare: SR 1954/211 r 48(1)–(2)

93 Period within which notice of opposition may be filed (1) A notice of opposition made under section 92(1) of the Act must be filed with-

in 3 months after the date of the publication of the accepted complete specifica- tion.

(2) The Commissioner may, on the request of a person wishing to oppose the grant of patent, extend the period for filing a notice of opposition— (a) by up to 1 month, without the applicant’s consent; or (b) by up to 2 months, with the applicant’s consent.

(3) The Commissioner must not extend the period for filing a notice of opposition if the request for extension is received after the period for filing the notice has expired.

94 Counter-statement to notice of opposition (1) The applicant must file a counter-statement within 2 months after receiving a

copy of the notice of opposition and of the statement of case filed under section 92(1) of the Act.

(2) The counter-statement must set out the grounds on which the opposition is con- tested.

(3) If the applicant does not file a counter-statement within the prescribed time, the patent application must be treated as having been abandoned.

(4) The opponent may, within 4 months after receiving the copy of the counter- statement, file evidence in support of his or her case.

(5) The applicant may file evidence in support of his or her case within 4 months after receiving the copy of the opponent’s evidence or, if the opponent does not file any evidence, within 4 months after the expiration of the time within which the opponent’s evidence might have been filed.

(6) The opponent may, within 3 months after receiving the copy of the applicant’s evidence, file evidence confined to matters strictly in reply. Compare: SR 1954/211 r 49

Reprinted as at 1 September 2017 Patents Regulations 2014 Part 3 r 94

Re-examination after acceptance

95 Requests for re-examination (1) A request for re-examination made under section 94(1) or 95(1) of the Act

must include— (a) a statement that—

(i) sets out the facts in support of the grounds in section 92 or 114 of the Act (as the case may be) that the person making the request wants the Commissioner to consider; and

(ii) identifies any proceedings referred to in section 96(1)(b)(i) or (ii) of the Act or, if no such proceedings are pending, a statement to that effect; and

(b) any information or documents relied on in support of the request and a statement as to their relevance.

(2) A request for re-examination made under section 94(1) or 95(1) of the Act may be amended or withdrawn by the person who made the request at any time be- fore the Commissioner issues a re-examination report under section 97 of the Act.

96 Commissioner must give notice of re-examination requests If the Commissioner receives a request for re-examination under section 94(1) or 95(1) of the Act, the Commissioner must notify the applicant or patentee (as the case may be) that a request has been made.

97 Re-examination reports and amendment of complete specification (1) If the Commissioner issues a re-examination report that states that he or she is

satisfied, on the balance of probabilities, that any of the relevant grounds in section 97 of the Act are established, the applicant or patentee may, not later than 3 months after the Commissioner issues the report, file a response to the report to amend the complete specification for the purpose of removing any lawful ground of objection.

(2) The Commissioner may extend the deadline prescribed by subclause (1) if the applicant or patentee files a response to the report that includes a request for an extension within 1 month after the expiry of the prescribed period.

(3) A response to a re-examination report that amends the complete specification must include the information and documents described in regulation 58.

(4) See regulations 169 to 174 (which relate to hearings).

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Grant of patent

98 Circumstances in which grant of patent may be postponed The circumstances in which the Commissioner may postpone the grant of a patent under section 101(3) of the Act are— (a) a maintenance fee that has become due has not been paid; or (b) a proceeding in relation to the patent application is pending before the

Commissioner or the court.

99 Amendment of patent under section 105 of Act An application under section 105 of the Act for the amendment of a patent must include— (a) the name and address of the person to whom the patent should have been

granted; and (b) the nationality or principal place of business of the person to whom the

patent should have been granted; and (c) evidence in support of the application. Compare: SR 1954/211 r 72

Patents of addition

100 Application for patent of addition An application made for a further patent must, for the purpose of section 106(1)(c) of the Act, include the number of the patent granted, or application made, for the main invention.

101 Commissioner may revoke patent for improvement or modification and grant patent of addition A request for revocation made under section 107(2) of the Act must include the following information: (a) the number of the patent granted for the main invention; and (b) the number of the patent granted for the invention that is an improve-

ment in, or modification of, the main invention.

Revocation of patents

102 Application to Commissioner for revocation of patent (1) The prescribed manner in which a person may apply to the Commissioner for

the revocation of a patent under section 112 of the Act is that the application— (a) must include the ground or grounds in section 114 of the Act on which

the application is made; and

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(b) must include a statement confirming that there are no relevant proceed- ings before the court; and

(2) The Commissioner must give the patentee a copy of the application and of the statement of case. Compare: SR 1954/211 r 104

103 Counter-statement to application and evidence for revocation of patent (1) The patentee must file a counter-statement to an application for revocation of a

patent, within 2 months after receiving a copy of the application and of the statement of case, setting out the grounds on which the application for revoca- tion is contested.

(2) The patentee may request an extension of time for filing a counter-statement by filing a request no later than 2 months after the 2-month period in subclause (1) expires, including evidence (if any) in support of the request.

(3) The Commissioner may extend the time for filing a counter-statement if the Commissioner is satisfied there are exceptional circumstances that justify the extension and, in that case, the period of the extension must be for no longer than 2 months after the date the counter-statement is required to be filed.

(4) The person who applied for revocation (the applicant) may, within 4 months after receiving the copy of the counter-statement, file evidence in support of his or her case.

(5) The patentee may file evidence in support of his or her case within 4 months after receiving the copy of the applicant’s evidence or, if the applicant does not file any evidence, within 4 months after the expiration of the time within which the applicant’s evidence might have been filed.

(6) The applicant may, within 3 months after receiving the copy of the patentee’s evidence, file evidence confined to matters strictly in reply. Compare: SR 1954/211 r 105

104 Procedure if no counter-statement to application for revocation of patent is filed

(1) This regulation applies if the patentee fails to file a counter-statement to an ap- plication for revocation within the period prescribed by regulation 103 or any extension of that period under that regulation.

(2) The applicant may file evidence in support of his her case within 4 months after the time within which the patentee is required to file the counter-state- ment.

(3) The Commissioner may determine the application for revocation under sec- tions 112 to 114 of the Act after considering the application for revocation and any evidence filed in support of the application.

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105 Refusal of applications for revocation of patent (1) If the Commissioner intends to refuse an application for revocation of a patent

under section 113(1) of the Act or to refuse to consider an issue under section 113(2) of the Act, the Commissioner must, as soon as practicable, notify the applicant that the Commissioner intends to refuse the application or to consider the issue (as the case may be).

(2) The notification must— (a) specify the grounds on which the Commissioner relies to refuse the ap-

plication or to consider the issue (as the case may be); and (b) advise the applicant that the applicant may request a hearing; and (c) specify a period within which the applicant may request a hearing, which

must be not less than 10 working days after the applicant receives the notification; and

(d) advise the applicant that the Commissioner will refuse the application or to consider the issue at the end of that period if the applicant has not re- quested a hearing.

(3) The Commissioner must, as soon as practicable, hold a hearing if a party re- quests it.

(4) However, the Commissioner is not required to hold a hearing if the Commis- sioner considers that the party seeking a hearing has failed, without reasonable excuse, to attend a hearing or agree to a hearing date.

(5) In that case, the Commissioner may either direct a hearing on the papers or treat the request for a hearing as having been withdrawn. Compare: SR 2003/187 r 36

Surrender of patents

106 Notice of offer to surrender patent (1) A notice of an offer by a patentee under section 116 of the Act to surrender a

patent must include— (a) the reasons for making the offer; and (b) full particulars of every relevant proceeding before the court.

(2) In regulations 107 to 109, opponent means the person who gives to the Com- missioner a notice of opposition to the surrender under section 116(3) of the Act. Compare: SR 1954/211 r 107

107 Opposition to surrender of patent (1) The period prescribed for the purpose of section 116(3) of the Act for giving to

the Commissioner a notice of opposition to the surrender of a patent is 2 months after the publication in the journal of the offer to surrender the patent.

Reprinted as at 1 September 2017 Patents Regulations 2014 Part 3 r 107

(2) The notice of opposition— (a) must include the opponent’s reasons for opposing the surrender of the

patent; and (b) must be accompanied by a statement of case setting out the opponent’s

interest in the surrender, the facts upon which the opponent relies, and the relief sought.

(3) The Commissioner must give a copy of the notice of opposition and of the statement of case to the patentee. Compare: SR 1954/211 r 108

108 Patentee must file counter-statement (1) The patentee must file a counter-statement within 2 months after receiving a

copy of the notice of opposition and of the statement of case under regulation 107.

(2) The counter-statement must set out the grounds on which the opposition is con- tested.

(3) If the patentee does not file a counter-statement within the 2-month period under subclause (1), the patentee must be treated as having abandoned the pat- entee’s offer to surrender the patent.

109 Filing of evidence (1) The opponent may, within 2 months after receiving the copy of the counter-

statement under regulation 108, file evidence in support of the opponent’s case. (2) The patentee may file evidence in support of the patentee’s case within 2

months after receiving the copy of the opponent’s evidence or, if the opponent does not file any evidence, within 2 months after the expiry of the time within which the opponent’s evidence might have been filed under subclause (1).

(3) The opponent may, within 1 month after receiving the copy of the patentee’s evidence, file further evidence, but only if the further evidence is confined to matters strictly in reply.

Restoration of lapsed patents

110 Manner in which request to restore lapsed patent may be made (1) A request under section 117(2) of the Act for restoration of a patent and any

patent of addition must include the date the renewal fee was due and evidence in support of the request.

(2) The patentee may file further evidence in support of the request within 3 months after the date that the request is made.

(3) If the Commissioner requires further evidence under section 118(2) of the Act, the patentee must file further evidence in support of the request within 3 months after the date that the request for restoration is given.

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(4) In this regulation and regulations 111 to 114, patentee means a person referred to in section 119 of the Act who makes a request for an order under section 117 of the Act. Compare: SR 1954/211 r 85

111 When request for restoration of patent may be made (1) For the purpose of section 120 of the Act, the prescribed period within which a

request under section 117 of the Act may be made is 12 months after the date on which the renewal fee becomes due under regulation 8(3).

(2) If the request under section 117 of the Act is made after the period referred to in subclause (1) expires, the request must be accompanied by— (a) the statement required by section 120(3) of the Act; and (b) the evidence in support of an extension under section 120(2) of the Act.

(3) The patentee may file further evidence in support of an extension under section 120(2) of the Act at any time within 3 months after making the request under section 117 of the Act.

(4) If the Commissioner requires the patentee to file further evidence under section 120(4) of the Act, the patentee must file that evidence within 3 months after the date that the request for restoration is made.

(5) The Commissioner may extend the period prescribed by subclause (3) or (4) by up to 1 month, on request by the patentee made before the end of that pre- scribed period.

112 Opposition to restoration of patent (1) For the purpose of section 123(1) of the Act, the prescribed period within

which notice of opposition to an order being made under section 117 of the Act may be given to the Commissioner is 2 months after the date on which the re- quest made in accordance with sections 117 to 120 of the Act is published in the journal under section 122 of the Act.

(2) The notice of opposition— (a) must identify the ground or grounds in section 123(1) of the Act that

apply; and (b) must be accompanied by a statement of case setting out the facts upon

which the opponent relies. (3) The Commissioner must give a copy of the notice of opposition and of the

statement of case to the patentee. (4) In this regulation and regulation 114, opponent means the person who gives

notice to the Commissioner of opposition to an order being made under section 117 of the Act. Compare: SR 1954/211 r 87

Reprinted as at 1 September 2017 Patents Regulations 2014 Part 3 r 112

113 Patentee must file counter-statement (1) The patentee must file a counter-statement within 2 months after receiving a

copy of the notice of opposition and of the statement of case under regulation 112.

(2) The counter-statement must set out the grounds on which the opposition is con- tested.

(3) If the patentee does not file a counter-statement within the 2-month period under subclause (1), the patentee must be treated as having abandoned the pat- entee’s request for restoration of the patent.

114 Filing of evidence (1) The opponent may file evidence in support of the opponent’s case within 2

months after receiving the copy of the counter-statement under regulation 113. (2) The patentee may file evidence in support of the patentee’s case within 2

(3) The opponent may file further evidence within 1 month after receiving the copy of the patentee’s evidence, but only if the further evidence is confined to matters strictly in reply.

115 Protection of persons who avail themselves of invention if Commissioner restores lapsed patent

(1) Every order under section 124 of the Act must contain or be subject to the pro- visions prescribed in this regulation.

(2) No action or other proceeding may be commenced or prosecuted, nor any dam- ages or account of profits recovered, in respect of a patent that a person re- ferred to in section 124(2) of the Act availed themselves of, or took definite steps to avail themselves of, on the ground that the person has infringed, or in- fringes, the patent for the invention.

(3) However, subclause (2) applies only to the extent that the person— (a) continues to act in a manner that is consistent with, but does not go

beyond, the way in which the person availed themselves of the inven- tion; or

(b) continues to act in a manner that is consistent with the definitive steps that were taken to avail themselves of the invention so as to complete those steps; or

(c) uses the result of the completion of the definitive steps in a manner that is consistent with, but does not go beyond, what was contemplated by those steps in order to avail themselves of the invention.

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(4) To avoid doubt, the protection in subclause (2) applies to activities undertaken at any time after the patent ceases to have effect. Compare: 1954/224 r 40C

Restoration of patent applications

116 Request for restoration of void or abandoned patent applications (1) A request under section 125 of the Act for an order to restore a patent applica-

tion and to extend the period for complying with the requirements imposed on the applicant by or under the Act or the Patent Cooperation Treaty (as the case may be) must include evidence in support of the request.

(2) The applicant may file further evidence in support of the request within 3 months after the request is made.

(3) The Commissioner may require the applicant to file further evidence in support of the request.

(4) If the Commissioner requires further evidence under subclause (3), the appli- cant must file that evidence within 3 months after the date that the request for restoration is made. Compare: SR 1954/211 r 95

117 When request for restoration of application may be made (1) The prescribed period for the purpose of section 126(1) of the Act within

which a request under section 125 of the Act may be made is,— (a) in the case of a patent application that is abandoned under section 35 of

the Act, 12 months after the date on which the maintenance fee becomes due under regulation 8(2); and

(b) in any other case referred to in section 125(1) of the Act, 12 months after the date on which the application is considered void or abandoned under the Act.

(2) If the request under section 125 of the Act is made after the period referred to in subclause (1) expires, the request must be accompanied by— (a) the statement required by section 126(3) of the Act; and (b) the evidence in support of an extension under section 126(2) of the Act.

(3) The applicant may file further evidence in support of an extension under sec- tion 126(2) of the Act at any time within 3 months after making the request under section 125 of the Act.

(4) If the Commissioner requires the applicant to file further evidence under sec- tion 126(4) of the Act, the applicant must file that evidence within 3 months after the date that the request for restoration is made.

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(5) The Commissioner may extend the period prescribed by subclause (3) or (4) by up to 1 month, on request by the applicant made before the end of that pre- scribed period.

118 Opposition to restoration of patent application (1) The period prescribed for the purpose of section 127(1) of the Act for giving

notice to the Commissioner of opposition to an order being made under section 128 of the Act is 2 months after the date on which the request for the order is published in the journal under section 125(4) of the Act.

(2) The notice of opposition— (a) must identify the ground or grounds in section 127(1) of the Act that

apply; and (b) must be accompanied by a statement of case setting out the facts upon

which the opponent relies. (3) The Commissioner must give a copy of the notice of opposition and statement

of case to the applicant. (4) In this regulation and regulation 120, opponent means the person who has

given notice to the Commissioner of opposition to an order being made under section 128 of the Act. Compare: SR 1954/211 r 97

119 Applicant must file counter-statement (1) The applicant must file a counter-statement within 2 months after receiving a

copy of the notice of opposition and of the statement of case under regulation 118.

(2) The counter-statement must set out the grounds on which the opposition is con- tested.

(3) If the applicant does not file a counter-statement within the 2-month period under subclause (1), the applicant must be treated as having abandoned the ap- plicant’s request for restoration.

120 Filing of evidence (1) The opponent may, within 2 months after receiving the copy of the counter-

statement under regulation 119, file evidence in support of the opponent’s case. (2) The applicant may file evidence in support of the applicant’s case within 2

(3) The opponent may, within 1 month after receiving the copy of the applicant’s evidence, file further evidence, but only if the further evidence is confined to matters strictly in reply.

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121 Protection of persons who avail themselves of invention if Commissioner restores patent application

(1) Every order under section 128 of the Act must contain or be subject to the pro- visions prescribed in this regulation.

(2) No action or other proceeding may be commenced or prosecuted, nor any dam- ages or account of profits recovered, in respect of an invention (as described in the published complete specification) that is the subject of the patent applica- tion that a person referred to in section 128(2) of the Act availed themselves of, or took definite steps to avail themselves of, on the ground that the person has infringed, or infringes, the patent for the invention.

(3) However, subclause (2) applies only to the extent that the person— (a) continues to act in a manner that is consistent with, but does not go

beyond, the way in which the person availed themselves of the inven- tion; or

(b) continues to act in a manner that is consistent with the definitive steps that were taken to avail themselves of the invention so as to complete those steps; or

(4) To avoid doubt, the protection in subclause (2) applies to activities undertaken at any time after the patent application becomes void or is abandoned. Compare: SR 1954/224 r 40C

Miscellaneous provisions

122 Request for direction under section 129 of Act (1) A request for a direction under section 129(2) of the Act must include—

(a) the full name and address of the person or persons in whose name or names the application is requested to proceed; and

(b) the nationality or principal place of business of the person or persons in whose name or names the application is requested to proceed; and

(c) a statement identifying how the person or persons are entitled to the patent, an interest in the patent, or an undivided share in the patent or in an interest in the patent; and

(d) either— (i) a copy of the assignment or agreement that entitles the person or

persons referred to in paragraph (a) to the patent, an interest in the patent, or an undivided share in the patent or in an interest in the patent; or

(ii) both—

Reprinted as at 1 September 2017 Patents Regulations 2014 Part 3 r 122

(A) a statement setting out the particulars of any document that establishes the person’s or persons’ entitlement by oper- ation of law to the patent, an interest in the patent, or an un- divided share in the patent or in an interest in the patent, the document’s date, the parties to the document, and how the entitlement is substantiated; and

(B) a copy of each document referred to in that statement. (2) The Commissioner may also require that the person who makes the request

produce the original copy of the assignment, agreement, or other document and any other evidence. Compare: SR 1954/211 r 65

123 Request for directions under section 131 of Act (1) A request for directions under section 131(1) of the Act must include—

(a) the name and address of each interested party; and (b) a statement setting out the facts relied on and directions sought.

(2) The Commissioner must notify each interested party (other than the person who made the request) that the request has been made.

(3) The Commissioner may give any directions regarding the subsequent proced- ure that are consistent with the requirement in section 131(3) of the Act. Compare: SR 1954/211 r 66

Part 4 Infringement, other patent proceedings, and matters affecting patent

ownership

Registration of assignments, licences, and other interests in patents

124 Application under section 165 of Act (1) An application under section 165 of the Act must identify whether it is made

under section 165(1) or (2) of the Act and must include— (a) a statement identifying whether the patent, share, or interest was ac-

quired, disposed of, or conferred by assignment, transmission, operation of law, mortgage, licence, or other means; and

(b) if registering an interest, the nature of the interest; and (c) a statement setting out the particulars of the document that establishes

the entitlement to the patent, share, or interest, the document’s date, the parties to the document, and how the entitlement is substantiated; and

(d) a copy of the document that establishes the entitlement. (2) The Commissioner may require that the original document referred to in an ap-

plication be produced to the Commissioner.

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(3) If an original document required by the Commissioner under subclause (2) is not in electronic form, regulation 12 does not apply to the production of that document. Compare: SR 1954/211 rr 127, 128

Vesting of patents and patent applications without probate or letters of administration

125 Application to vest patent or patent application without probate or letters of administration

(1) An application under section 167 of the Act to register or substitute a person (B) as a patentee, an applicant for a patent, or a nominated person without re- quiring probate or letters of administration must include— (a) the full name and address of B; and (b) the nationality or principal place of business of B; and (c) the full name of the deceased person (A) and identify whether A was the

nominated person, applicant, or patentee; and (d) a statement as to the circumstances and grounds on which the applica-

tion is made. (2) The statement required by subclause (1)(d) must identify—

(a) whether A was intestate when he or she died; and (b) the date on which A died; and (c) the place where A died; and (d) the country where A was domiciled when he or she died; and (e) how B is entitled to obtain probate or letters of administration or is the

personal representative of A; and (f) how the interests of the creditors of A, and of all persons beneficially

interested under A’s will or on A’s intestacy, will be adequately safeguar- ded if the action applied for is taken.

(3) The Commissioner may require further evidence to be filed in support of the application. Compare: SR 1954/211 r 132

Mention of inventor in patent, specification, and patents register

126 Request or claim under section 190(1) of Act to be mentioned as inventor (1) A request or claim made under section 190(1) of the Act must include—

(a) the full name and address of the inventor (if different from the person making the request or claim); and

(b) a statement setting out the facts relied on.

Reprinted as at 1 September 2017 Patents Regulations 2014 Part 4 r 126

(2) The Commissioner may give any directions regarding the procedure subse- quent to giving notice of the claim under section 192(1) of the Act that are con- sistent with the requirement in section 192(2) of the Act. Compare: SR 1954/211 rr 60, 61

127 Application for certificate under section 193(1) of Act concerning mention of inventor

(1) An application under section 193(1) of the Act for a certificate must include— (a) the name of the person who it is alleged should not have been mentioned

as the inventor; and (b) a statement setting out the facts relied on.

(2) The Commissioner must notify each patentee (not being the person applying for the certificate), the person mentioned as the inventor, and any other person whom the Commissioner considers to be interested that an application has been made.

(3) The Commissioner may give any directions regarding the subsequent proced- ure that are consistent with the requirement in section 193(4) of the Act. Compare: SR 1954/211 r 63

Part 5 Administrative and other miscellaneous provisions in Part 5 of Act

Subpart 1—Patents register and other information on patents and patent applications

Patents register

128 Patents register must record grant of patents The Commissioner must ensure that the information required by section 197(1) of the Act is entered in the patents register in respect of patents in force in New Zealand as soon as practicable after the date that a patent is granted or, in the case of information filed after the grant of a patent, as soon as practicable after the information is filed. Compare: SR 1954/211 r 125

129 Other patents information that must be entered in patents register The information that must be entered in the patents register under section 197(1)(f) of the Act is all documents that are open to public inspection (for ex- ample, see section 78 of the Act and regulation 85). Compare: SR 1954/211 r 129

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130 Payment of renewal fees must be entered in patents register The Commissioner must enter, under section 197(1)(f) of the Act, the follow- ing information in the patents register when the Commissioner issues a certifi- cate of payment under regulation 11: (a) that a renewal fee has been paid; and (b) the date of payment.

Searches of patents register and obtaining patent information

131 Search of patents register (1) The patents register must be available for access and searching by members of

the public at all times unless subclause (2) applies. (2) The Commissioner may refuse access to the patents register or suspend its op-

eration, in whole or in part,— (a) if the Commissioner considers that it is not practical to provide access to

the patents register; or (b) to enable maintenance of the patents register; or (c) in response to technical difficulties in the maintenance or operation of

the patents register; or (d) to ensure the security or integrity of the patents register. Compare: SR 1954/211 r 129

132 Information concerning patent or patent application that may be requested A request under section 199(c) of the Act for information relating to a patent or patent application may be made— (a) as to when a complete specification following a provisional specification

has been filed or when a period of 15 months after the filing date of the patent application has expired and a complete specification has not been filed; and

(b) as to when a complete specification is or will be open to public inspec- tion, or when a patent application has become abandoned or void; and

(c) as to when a patent has been granted; and (d) as to when a maintenance or renewal fee has been paid; and (e) as to when a patent has expired; and (f) as to when an entry has been made in the patents register or application

has been made for the making of the entry; and (g) as to when any application is made or action taken involving an entry in

the patents register or publication in the journal. Compare: SR 1954/211 r 139(1)

Reprinted as at 1 September 2017 Patents Regulations 2014 Part 5 r 132

133 How request for patent information and certified copies must be made A request under section 199 of the Act must contain the purpose for which cop- ies of documents (if sought) or information is required. Compare: SR 1954/211 r 139(2)

Changes to patents register and other official documents

134 Request to alter entries on patents register (1) A request by a patentee to alter a name, nationality, principal place of business,

address, or address for service entered in the patents register in respect of the patentee’s patent must include— (a) the name, nationality, principal place of business, address, or address for

service to which the entry is to be altered; and (b) in respect of an alteration of a name or nationality, evidence to verify the

new name or nationality (as the case may be). (2) Before acting on a request to alter a name or nationality, the Commissioner

may require any further evidence in support of the alteration that the Commis- sioner thinks fit.

(3) Any evidence required under subclause (2) must be provided to the Commis- sioner within 2 months after the Commissioner requires the evidence.

(4) If the Commissioner is satisfied that the request may be allowed, the Commis- sioner must ensure that the patents register is altered accordingly. Compare: SR 1954/211 r 126

135 Notice of court orders must be given for entry on patents register (1) This regulation applies in respect of orders made by the court under the Act

that— (a) revoke a patent; or (b) allow a patentee to amend a specification; or (c) affect the validity or ownership of a patent or any rights under a patent;

or (d) require an entry to be added to the patents register or an entry on the pat-

ents register to be varied or deleted. (2) A person in whose favour an order to which this regulation applies is made

must give notice of the order to the Commissioner. (3) The notice must include—

(a) a statement setting out the effect of the order; and (b) a copy of the order. Compare: SR 1954/211 r 151

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136 Application to correct other persons’ mistakes in patents register, etc (1) An application under section 202(2) of the Act for a correction of an error or

omission must include— (a) a statement that—

(i) identifies where the error or omission is thought to have been made; and

(ii) includes either a description of the error or omission or a copy of the entry in the patents register, patent, patent application, or other document (as the case requires) with the error or omission clearly identified; and

(b) evidence (if any) in support of the application. (2) The Commissioner may require the applicant to file further evidence in support

of the application. (3) If the Commissioner requires further evidence under subclause (2), the appli-

cant must file that evidence within 3 months after the date that the application is made.

(4) In this regulation and in regulations 137 to 140,— applicant means the person who applied for the correction under section 202(2) of the Act opponent means the person who gives a notice of opposition under section 202(4) of the Act. Compare: SR 1954/211 r 133

137 Opposition to proposed correction (1) The period prescribed for the purpose of section 202(4) of the Act is 2 months

after the date on which the proposed correction is published in the journal. (2) A notice of opposition under section 202(4) of the Act must include—

(a) sufficient detail to identify the proposed correction that is opposed; and (b) the grounds on which the proposed correction is opposed.

(3) The notice of opposition must also be accompanied by a statement of case set- ting out the facts relied on in support of the opposition and the relief sought.

(4) The Commissioner must give a copy of the notice of opposition and of the statement of case to the applicant. Compare: SR 1954/211 r 135

138 Applicant must file counter-statement (1) The applicant must file a counter-statement within 2 months after receiving a

copy of the notice of opposition under section 202(4) of the Act and of the statement of case under regulation 137.

Reprinted as at 1 September 2017 Patents Regulations 2014 Part 5 r 138

(2) The counter-statement must set out the grounds on which the opposition is con- tested.

(3) If the applicant does not file a counter-statement within the 2-month period under subclause (1), the applicant must be treated as having abandoned the ap- plicant’s application for correction.

139 Filing of evidence (1) The opponent may, within 4 months after receiving the copy of the counter-

statement filed under regulation 138, file evidence in support of the opponent’s case.

(2) The applicant may file evidence in support of the applicant’s case within 4 months after receiving the copy of the opponent’s evidence or, if the opponent does not file any evidence, within 4 months after the expiry of the time within which the opponent’s evidence might have been filed under subclause (1).

(3) The opponent may, within 3 months after receiving the copy of the applicant’s evidence, file further evidence, but only if the further evidence is confined to matters strictly in reply.

140 Opposition to Commissioner-initiated correction (1) Any person may oppose a correction proposed by the Commissioner on his or

her own initiative under section 202 of the Act by filing a notice within 2 months after the date on which the proposed correction is published in the jour- nal.

(2) The notice must include— (a) sufficient detail to identify the proposed correction that is opposed; and (b) the grounds on which the proposed correction is opposed.

(3) The notice must also be accompanied by a statement of case setting out the facts relied on in support of the opposition and the relief sought.

(4) The opponent may, within 4 months after filing the notice, file evidence in sup- port of his or her case.

(5) Following consideration of the notice and any evidence filed, the Commis- sioner must notify the opponent of the decision he or she intends to make.

141 Notice of application to court to rectify patents register (1) Any notice given to the Commissioner under section 203(3) of the Act must

include a copy of the application for rectification. (2) The Commissioner must enter a notice of application under section 203(3) of

the Act in the patents register as soon as practicable after receiving the notice. Compare: SR 1954/211 r 150

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142 Notice of order of court to rectify patents register Any notice served on the Commissioner under section 203(5) of the Act must include— (a) a copy of the order of the court; and (b) the date or dates by which action is required to be taken by the Commis-

sioner or the applicant for rectification in respect of the order.

Journal and other publications

143 Particulars of patent applications that must be published The Commissioner must publish in the journal under section 206 of the Act the following particulars about patent applications as soon as practicable, so far as the particulars are known to the Commissioner: (a) the number and date of the application; and (b) the name of the applicant; and (c) the name of the inventor, if known; and (d) the title of the invention; and (e) the convention application number, date, and country, if applicable. Compare: SR 1954/211 r 164

Subpart 2—Miscellaneous provisions

Evidence

144 Form of evidence If these regulations require or permit evidence to be filed, it must be by statuto- ry declaration or affidavit unless otherwise expressly provided in these regula- tions. Compare: SR 1954/211 r 141

Amendment of documents

145 Amendment of documents (1) In any proceedings before the Commissioner, the Commissioner may, if he or

she thinks fit,— (a) allow any document filed in the proceedings to be amended if no express

provision is made in the Act or these regulations for the amendment of the document; and

(b) rectify any irregularity in procedure. (2) Any action taken by the Commissioner under this regulation may be on any

terms as he or she may direct. Compare: SR 1954/211 r 167

Reprinted as at 1 September 2017 Patents Regulations 2014 Part 5 r 145

Extensions of time limits

146 Requirements for applying and granting extensions of time limits under section 231 of Act

(1) An application under section 232 of the Act for an extension of a time limit under section 231 of the Act must— (a) state the reasons for the failure to comply with the prescribed time limit

for filing a complete specification or a convention application, or doing any other thing required to be done under the Act or these regulations (as the case may be); and

(b) include evidence (if any) in support of the application. (2) The Commissioner must notify the applicant if, after considering an application

made under section 232 of the Act and any evidence filed in support of that application, the Commissioner considers that he or she must refuse to grant the extension under section 231(3) of the Act.

(3) The applicant may provide any further information or evidence, within 2 months after receiving a notice from the Commissioner under subclause (2), to satisfy the Commissioner that the Commissioner may grant the extension.

147 General power of Commissioner to extend time limits in exceptional circumstances

(1) The Commissioner may, in exceptional circumstances, extend a time limit pre- scribed by these regulations for filing information or a document or for taking a step in respect of a matter.

(2) However, this regulation does not apply— (a) to a time limit prescribed for filing a notice of opposition of a kind re-

ferred to in regulation 152(1)(a); or (b) to a time limit prescribed for filing information or a document or taking

a step in respect of a proceeding described in regulation 152(1); or (c) to the time prescribed by regulation 154(3) for filing a request for a hear-

ing under section 208 of the Act; or (d) if the Act precludes an extension being granted under these regulations

(see, for example, sections 21(1), 37(2)(b), and 71(2) of the Act). (3) The Commissioner may grant the extension even if either or both of the follow-

ing apply: (a) the time limit has expired for doing the thing: (b) the Commissioner has already granted an extension under these regula-

tions.

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(4) An extension is granted by giving notice to the person filing the information or document or taking the step and to any other parties to the proceeding, and may be on any terms that the Commissioner thinks fit. Compare: SR 1954/211 r 168

148 Ability to request extension under other regulations must be exhausted If a regulation other than regulation 147 specifically provides for a power to extend a time limit in relation to a particular matter, a request for an extension under regulation 147 may be made only if the ability to request an extension under the other regulation has been exhausted.

Miscellaneous

149 Power of Commissioner to waive requirements in exceptional circumstances

(1) The Commissioner may, in exceptional circumstances, waive a requirement in Part 1, or any provision of regulations 50(1), 51, 52, 54, 55, 65, and 69, for a person to do anything, on production of any evidence that the Commissioner thinks fit.

(2) The Commissioner may grant the waiver even if the time has expired for doing the thing.

(3) A waiver is granted by giving notice to the persons known to the Commis- sioner to be affected by the waiver, and may be on any terms that the Commis- sioner thinks fit. Compare: SR 1954/211 r 169(1)

150 Power to waive requirements for patent applications and specifications temporarily

(1) The Commissioner may allow a patent application or specification to be filed that is not made in accordance with Part 1, or any provision of regulations 50(1), 51, 52, 54, 55 and 69, provided that the applicant takes any action neces- sary to comply with the relevant provision as soon as practicable after the ap- plication or specification is filed.

(2) If the patent application or specification is not amended or other action is not taken to comply with the relevant provision as soon as practicable after filing the application or specification, the application must be treated as if it had been abandoned or, in the case of a specification, as if the specification had never been filed unless the Commissioner waives compliance under regulation 149. Compare: SR 1954/211 r 169(2)

151 Maintenance of certain records The Commissioner must maintain electronic copies of all provisional and com- plete specifications, drawings, and other information or documents associated with a patent application or patent, including filing dates, priority dates, and the

Reprinted as at 1 September 2017 Patents Regulations 2014 Part 5 r 151

names of the inventors and applicants, that are filed under the Act or these regulations. Compare: SR 1954/211 r 170

Part 6 Procedural and evidential requirements for proceedings before

Commissioner

Proceedings to which this Part applies

152 Application of this Part (1) This Part applies to the following proceedings:

(a) a proceeding that is commenced by the filing of any of the following documents: (i) a request for directions to co-owners under section 26 of the Act: (ii) a request to determine a dispute under section 28 of the Act: (iii) an opposition to a proposed amendment of a complete specifica-

tion after acceptance under section 87 of the Act: (iv) an opposition to the grant of a patent under section 92 of the Act: (v) an application to the Commissioner for the revocation of a patent

under section 112 of the Act: (vi) an opposition to an offer to surrender a patent under section 116 of

the Act: (vii) an opposition to the restoration of a lapsed patent under section

123 of the Act: (viii) an opposition to the restoration of a void or an abandoned patent

application under section 127 of the Act: (ix) a request to the Commissioner under section 131 of the Act in re-

spect of a dispute between interested parties: (x) an opposition to an application to correct an error or omission

under section 202 of the Act: (xi) a request or claim to be mentioned as inventor under section 190

of the Act: (xii) a request for a certificate concerning mention of inventor under

section 193 of the Act: (b) a hearing under section 208 of the Act before the exercise of the Com-

missioner’s discretion. (2) Regulations 169 to 174 also apply to—

(a) examination proceedings; and

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(b) re-examination proceedings under subpart 9 of Part 3 of the Act.

Documents filed in proceedings

153 Extra information that must be contained in documents filed in proceedings

(1) A document, including written evidence, or bundle of documents filed in a pro- ceeding must contain the following information: (a) the name and address for service of the person filing the document; and (b) if that person has an agent, the agent’s name; and (c) the number of the patent application or patent that is the subject of the

proceeding. (2) Every document referred to in regulation 152(1)(a), and every statement of

case and counter-statement, that is filed in a proceeding must be signed by the person giving the information or document or on whose behalf the information or document is given (for example, the applicant or the opponent). Compare: SR 2003/187 r 5

Hearing before exercise of Commissioner’s discretion

154 Hearing before exercise of Commissioner’s discretion (1) This regulation applies if section 208 of the Act requires the Commissioner to

give a person (A) a reasonable opportunity to be heard before exercising a dis- cretionary power under the Act or these regulations.

(2) The Commissioner must notify A of the decision that the Commissioner propo- ses to make, and the reasons for the decision (if not already given), before exer- cising the discretionary power.

(3) If A wishes to be heard before the discretionary power is exercised, A must file a notice within 10 working days after receiving that notification from the Com- missioner.

(4) The notice must state the matter in respect of which A seeks a hearing and be signed by A. Compare: SR 2003/187 r 123

Case management

155 Commissioner may require parties to attend case management conference (1) At any stage in a proceeding, the Commissioner may, for the purpose of secur-

ing the just, speedy, and inexpensive determination of the proceeding, give a direction requiring the parties to attend a case management conference to re- view the proceeding and the steps that have been or must still be taken.

(2) The Commissioner must give each party notice of the conference at least 10 working days before the conference.

Reprinted as at 1 September 2017 Patents Regulations 2014 Part 6 r 155

(3) The parties may attend in person or by a telecommunication link that is accept- able to the Commissioner. Compare: SR 2003/187 r 26

156 Commissioner may give directions (1) At any stage in a proceeding, the Commissioner may give directions that are

consistent with the Act and these regulations requiring a party to do things to secure the just, speedy, and inexpensive determination of the proceeding within a time limit specified by the Commissioner.

(2) Without limiting the generality of the directions that may be given, the Com- missioner may— (a) fix the time by which a step in the proceeding must be taken; and (b) specify the steps that must be taken to prepare the proceeding for a hear-

ing; and (c) direct how the hearing of the proceeding is to be conducted; and (d) require parties to use their best endeavours to agree on how information

or evidence that may be confidential or privileged is to be treated; and (e) give directions about how information that may be confidential or privil-

eged is to be treated if the parties have not been able to reach an agree- ment within the time limit specified by the Commissioner; and

(f) require parties to file copies of documents; and (g) require parties to provide other parties to the proceeding with copies of

documents; and (h) require parties to file better or further particulars; and (i) require parties to provide other parties to the proceedings with better or

further particulars. (3) The Commissioner may give the direction on the Commissioner’s own initia-

tive or on the application of any party to the proceeding. Compare: SR 2003/187 r 26

157 Parties must comply with Commissioner’s directions All parties to a proceeding must comply with a direction given by the Commis- sioner under this Part. Compare: SR 2003/187 r 27(1)

158 Non-compliance with Commissioner’s directions (1) If a party (party A) fails to comply with a direction given by the Commis-

sioner under this Part (non-compliance),— (a) the Commissioner must, as soon as practicable,—

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(i) request party A to provide an explanation for party A’s non-com- pliance to the Commissioner and to the opposite party within a time limit specified by the Commissioner; and

(ii) in that request, advise party A of the potential consequences of non-compliance; and

(b) the opposite party may provide comments on the explanation to the Commissioner within a time limit specified by the Commissioner; and

(c) after considering the explanation (if any) and comments from the oppos- ite party (if any), the Commissioner must— (i) consider whether party A has a reasonable excuse for party A’s

non-compliance; and (ii) notify both parties of the decision that the Commissioner intends

to make. (2) The notification referred to in subclause (1)(c)(ii) must also—

(a) advise the parties that either party may request a hearing concerning the non-compliance; and

(b) specify a period during which a party may request a hearing concerning the non-compliance, being a period of not less than 10 working days after the party receives the notification.

(3) The Commissioner must, as soon as practicable, hold a hearing concerning the non-compliance if a party requests it, and in that case the Commissioner must make a decision only after holding a hearing.

(4) If the Commissioner’s decision is that party A has not satisfied the Commis- sioner that party A has a reasonable excuse for party A’s non-compliance, the Commissioner may, in addition to exercising his or her power under section 212 of the Act,— (a) extend the period for party A to comply with the direction; or (b) modify, or waive compliance with, the direction; or (c) direct that party A take no further step in the proceeding.

(5) The Commissioner must notify both parties of his or her decision and any orders made under subclause (4) as soon as practicable. Compare: SR 2003/187 r 27(2)–(6)

Halt in proceedings

159 Commissioner may halt proceeding (1) The Commissioner may halt a proceeding, if the Commissioner thinks it appro-

priate, on the application of a party or on the Commissioner’s own initiative.

Reprinted as at 1 September 2017 Patents Regulations 2014 Part 6 r 159

(2) The Commissioner may halt the proceeding for the period and on the terms that the Commissioner thinks appropriate, but must not halt the proceeding for more than 6 months.

(3) The Commissioner may halt the proceeding for further periods, but on each oc- casion for no more than 6 months.

(4) The Commissioner may recommence the proceeding at any time while the pro- ceeding is halted. Compare: SR 2003/187 r 28

Consolidation of proceedings

160 Commissioner may consolidate proceedings The Commissioner may require that 2 or more proceedings be consolidated on terms that the Commissioner thinks appropriate, or may require them to be heard at the same time or one after the other, or may require any of them to be halted until after the determination of any other of them, if the Commissioner is satisfied that— (a) a common question of law or fact arises in both or all of them; or (b) the proceedings relate to—

(i) identical patents; or (ii) patents with the same, or related, owners; or

Compare: SR 2003/187 r 31A

Extension of time limits in proceedings

161 Commissioner may extend time limits in proceedings (1) The Commissioner may extend a time limit prescribed by these regulations for

filing information or a document, or taking a step, in a proceeding— (a) for a period not exceeding 3 months if the Commissioner is satisfied that

the extension is reasonable in the circumstances; or (b) for a period longer than 3 months, as specified by the Commissioner, if

the Commissioner is satisfied that there are genuine and exceptional cir- cumstances that justify the extension.

(2) However, subclause (1) does not apply in any of the following circumstances: (a) if a regulation that provides for the filing of a counter-statement already

provides for the granting of an extension of the same period: (b) in respect of the time limit prescribed for filing a notice of opposition of

a kind referred to in regulation 152(1)(a):

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(c) in respect of the time limit prescribed by regulation 154(3) for filing a request for a hearing under section 208 of the Act before the exercise of the Commissioner’s discretion:

(d) if the time limit for filing the information or document or taking the step has already expired before the extension request is filed.

(3) An extension is granted by giving notice to the person filing the information or document or taking the step and to any other parties to the proceeding, and may be on any terms that the Commissioner thinks fit.

(4) More than 1 extension may be granted under subclause (1)(a) provided that the total period of those extensions does not exceed 3 months.

(5) An extension may be granted under subclause (1)(b) even if the period has al- ready been extended under subclause (1)(a).

Example R wishes to file a notice of opposition to the grant of a patent under section 92 of the Act. R cannot apply for an extension of the time limit for filing the notice of op- position under this regulation, but R can apply for an extension under Part 3 (see regulation 93(2)). S, the applicant for the patent, can apply under this regulation for an extension of the time limit for filing the counter-statement because Part 3 does not provide for extensions for that counter-statement. S cannot apply for an extension of the time limit under Part 5 (see regulation 147(2)(b)).

Compare: SR 2003/187 r 32

Evidence

162 Evidence restricted to particulars filed A party to a proceeding may only file evidence in the proceeding that relates to the particulars filed by that party or any other party to the proceeding. Compare: High Court Rules, r 22.24

Procedural and evidential requirements

163 Supply of documents for use of Commissioner (1) Copies of information or documents, other than New Zealand specifications,

referred to in a proceeding to which this Part applies, or in any statement or evidence filed in connection with that proceeding, must be filed, unless the Commissioner directs otherwise.

(2) If a specification or other document in a foreign language is referred to, a veri- fied translation of the specification or document must be filed.

Reprinted as at 1 September 2017 Patents Regulations 2014 Part 6 r 163

164 Party filing documents must copy documents to opposite party (1) A party who files information or a document (including evidence) in a proceed-

ing to which this Part applies must, as soon as practicable, send copies of the information or document to the opposite party and to any party intervening.

(2) However, copies of information or a document (including evidence) filed in a proceeding that include confidential information must be sent to the opposite party and any party intervening as agreed between the parties or, if agreement cannot be reached, in the manner directed by the Commissioner.

(3) Despite subclause (2), the parties may agree, or the Commissioner may direct, that any information or document that is subject to a privilege recognised by Part 2 of the Evidence Act 2006 may not be sent to the other party. Compare: SR 2003/187 r 33

165 Evidence out of time (1) A party to a proceeding must not file evidence after the prescribed time unless

the party has applied to the Commissioner for permission to file it and the Commissioner allows it.

(2) The Commissioner may allow the evidence to be filed only if— (a) the Commissioner considers that there are genuine and exceptional cir-

cumstances that justify filing the evidence; or (b) the evidence could not have been filed earlier.

(3) In this regulation, prescribed time means, in relation to a proceeding to which this regulation applies, the time prescribed in these regulations by which the evidence or type of evidence must be filed. Compare: SR 2003/187 r 34

166 Application for permission to file evidence out of time (1) The application for permission to file evidence out of time must—

(a) be in writing; and (b) be signed by the party applying for permission; and (c) contain the information in subclause (2).

(2) The application must contain the following information: (a) the nature of the evidence and whether it is evidence in chief or evidence

confined to matters strictly in reply; and (b) an explanation why the evidence could not have been filed earlier; and (c) any other ground or grounds for making the application.

(3) The Commissioner must notify the opposite party of the application, and the opposite party may make submissions to the Commissioner within the time specified by the Commissioner.

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(4) The Commissioner must notify the parties of the decision that the Commis- sioner intends to make on the application.

(5) That notification must— (a) specify the ground or grounds on which the Commissioner intends to re-

ject or accept the application; and (b) advise the parties that either party may request a hearing; and (c) specify a period of not less than 1 month after the date of notification for

a party to request a hearing; and (d) advise the parties that the Commissioner will decide the application at

the end of that period if a party has not requested a hearing. (6) The Commissioner must, as soon as practicable, hold a hearing if the applicant

requests it unless regulation 169(3) applies. Compare: SR 2003/187 r 35

167 Right to file evidence in reply if evidence in chief permitted out of time If a party is permitted under regulations 165 and 166 to file evidence in chief out of time, the opposite party may file evidence confined to matters strictly in reply within 1 month after the date of being notified by the Commissioner that the evidence out of time will be admitted in the proceeding. Compare: SR 2003/187 r 35A

168 Evidence from another proceeding (1) The Commissioner may in a proceeding, at the request of a party to the pro-

ceeding, accept evidence that the party has filed in an earlier or existing pro- ceeding.

(2) Any evidence that is accepted for filing under subclause (1) does not have to comply with regulation 153(1)(c). Compare: SR 2003/187 r 35B

Hearings

169 Form of hearing (1) A hearing may be—

(a) a hearing by appearance, that is, the appearance of a party before the Commissioner, whether in person or by telecommunication link accepta- ble to the Commissioner; or

(b) a hearing by submissions, that is, the consideration by the Commissioner of written submissions filed by a party and a review of the other docu- ments filed in the proceedings, without an appearance; or

Reprinted as at 1 September 2017 Patents Regulations 2014 Part 6 r 169

(2) A party may, subject to subclause (3), elect whether to be heard by appearance, by submissions, or on the papers.

(3) If the Commissioner considers that a party has failed, without reasonable ex- cuse, to attend a hearing or to agree to a hearing date, the Commissioner may, in his or her discretion,— (a) direct a hearing on the papers for that party; or (b) direct that the party take no further part in the proceeding; or (c) treat the request for a hearing as withdrawn.

(4) To avoid doubt, subclause (3)(a) does not prevent any other party to the pro- ceeding being heard by appearance or by submissions. Compare: SR 2003/187 r 122

170 Commissioner may determine form of hearing, etc After all the evidence has been filed, the Commissioner may, by correspond- ence or by holding a pre-hearing conference of the parties, determine— (a) whether a hearing is required: (b) the form of the hearing: (c) the time for filing submissions: (d) the venue of the hearing: (e) the pleadings that will be considered at the hearing: (f) any other matter necessary for arranging a hearing. Compare: SR 2003/187 r 124

171 Notice of hearing by appearance (1) The Commissioner must give each party to a hearing by appearance notice of

the date and venue of the hearing not less than 1 month before the date of the hearing.

(2) Subclause (1) does not apply if— (a) the date and venue have been determined at a prehearing conference; or (b) the parties waive compliance with subclause (1); or (c) in the Commissioner’s opinion, notice of 1 month is not practicable for

reasons of urgency. Compare: SR 2003/187 r 125

172 Hearing fee (1) Each party who requests a hearing (other than a hearing on the papers) must

pay the fee for a request for a hearing (hearing fee) in the Schedule. (2) The hearing fee must be paid,—

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(a) in the case of a hearing by appearance, not less than 10 working days be- fore the date set for the hearing:

(b) in the case of a hearing by submissions, when the party files the submis- sions.

(3) In the case of a hearing required under regulation 154, the hearing fee must ac- company the filing of the notice seeking a hearing.

(4) The Commissioner must refund a hearing fee paid by a party who withdraws from the hearing if the Commissioner receives notice of withdrawal not less than 5 working days before the date set for the hearing. Compare: SR 2003/187 r 126

173 Venue for hearing by appearance (1) If 1 party resides or has a principal place of business in Wellington, the hearing

must be held in Wellington or the place in New Zealand (if any) that is agreed by all the parties and the Commissioner as the venue for the hearing.

(2) Otherwise, the Commissioner must determine where the hearing will be held. (3) The Commissioner may require the party or parties concerned to pay the Com-

missioner’s costs in holding the hearing at a venue outside Wellington. Compare: SR 2003/187 r 127

174 Conduct of hearing by appearance (1) The Commissioner must determine how a hearing by appearance must be con-

ducted. (2) Members of the public may attend a hearing by appearance, unless the Com-

missioner decides that it is not appropriate. Compare: SR 2003/187 r 128

Costs

175 Costs In deciding whether costs should be awarded to a party, the Commissioner may consider whether the proceedings might have been avoided if the party who started the proceedings had given to the applicant or patentee (as the case may be) a reasonable opportunity to take action to avoid the proceedings before the proceedings were started. Compare: SR 1954/211 r 56

Part 7 Transitional provisions

176 Amendment to Patents Regulations 1954 (1) This regulation amends the Patents Regulations 1954.

Reprinted as at 1 September 2017 Patents Regulations 2014 Part 7 r 176

(2) After regulation 2, insert:

2A Application of these regulations for transitional purposes (1) These regulations continue to apply on and after 13 September 2014 only as

provided in subpart 6 of Part 5 of the Patents Act 2013. (2) Part 30 continues to apply as if the Patents Regulations 2014 had not been

made.

177 Transitional provision as to statutory references to corresponding matters The reference in section 8(2) of the Act to another patent application includes, for the purpose of determining the prior art base under that section, a patent ap- plication made under the Patents Act 1953.

Schedule Fees and penalties

rr 5, 66

Part 1 Matters under Act and regulations

Section of Act Fee Amount (NZ$)

(exclusive of GST) 20(2) Renewal fee due on the 4th, 5th, 6th, 7th, 8th, and

9th anniversary of the filing date of the complete specification

100

20(2) Renewal fee due on the 10th, 11th, 12th, 13th, and 14th anniversary of the filing date of the complete specification

200

20(2) Renewal fee due on the 15th, 16th, 17th, 18th, and 19th anniversary of the filing date of the complete specification

350

21(2)(c) Penalty payable for request to extend the period for payment of a renewal fee

32 Patent application accompanied by a provisional specification

100

32 Patent application accompanied by a complete specification (including convention applications)

250

35(1) Maintenance fee due on the 4th and each subsequent anniversary of the filing date of the complete specification if the fee is paid during the period prescribed by regulation 9(1)(a)

100

35(1) Maintenance fee due on the 4th and each subsequent anniversary of the filing date of the complete specification if the fee is paid during the further period prescribed by regulation 9(1)(b)

150

40 Amendment by applicant of complete specification before acceptance (other than in

150

Part 7 r 177 Patents Regulations 2014 Reprinted as at

1 September 2017

Section of Act Fee Amount (NZ$)

(exclusive of GST) response to an objection raised in a report issued by the Commissioner under section 65 or 97 of the Act)

64, 94, 95 Request for examination or re-examination 500 85(3) Request for leave to amend complete specification

after acceptance 150

87, 92, 116(3), 123, 127, 202(4)

Notice of opposition 350

112(1) Application to revoke a patent 350 117(2), 125(2) Request for restoration of patent or patent

application 100

Various Request for a hearing 850

Part 2 Patent Cooperation Treaty

Legislative/Treaty basis Fee Amount (NZ$)

(exclusive of GST) International phase Rule 14.1 of Treaty regulations

Transmittal fee for each international application, payable to the Commissioner within 1 month of the applicant filing the international application

180

National phase Section 46 of Act Application for entry into the national

phase of a Treaty application (treated as a patent application accompanied by a complete specification)

250

Michael Webster, Clerk of the Executive Council.

Issued under the authority of the Legislation Act 2012. Date of notification in Gazette: 14 August 2014.

Reprinted as at 1 September 2017 Patents Regulations 2014 Schedule

Reprints notes

1 General This is a reprint of the Patents Regulations 2014 that incorporates all the amendments to those regulations as at the date of the last amendment to them.

2 Legal status Reprints are presumed to correctly state, as at the date of the reprint, the law enacted by the principal enactment and by any amendments to that enactment. Section 18 of the Legislation Act 2012 provides that this reprint, published in electronic form, has the status of an official version under section 17 of that Act. A printed version of the reprint produced directly from this official elec- tronic version also has official status.

3 Editorial and format changes Editorial and format changes to reprints are made using the powers under sec- tions 24 to 26 of the Legislation Act 2012. See also http://www.pco.parlia- ment.govt.nz/editorial-conventions/.

4 Amendments incorporated in this reprint Contract and Commercial Law Act 2017 (2017 No 5): section 347

Wellington, New Zealand:

Published under the authority of the New Zealand Government—2017

Notes Patents Regulations 2014 Reprinted as at

1 September 2017

New Zealand

NZ222

Patents Regulations 2014 (reprint as at 1 September 2017)