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Legislative Implementation of Flexibilities - New Zealand

Title:Sections 12, 13, 14, 15 and 18 of the Patents Act No 64 of 1953 (as at 01/08/2008)
Field of IP:Patents
Type of flexibility:Substantive examination
Summary table:PDF

Provisions of Law

12. Examination of application

(1) Subject to section 26G of this Act, when the complete specification has been filed in respect of an application for a patent, the application and specification or specifications shall be referred by the Commissioner to an examiner.

(2) If the examiner reports that the application or any specification filed in pursuance thereof does not comply with the requirements of this Act or of any regulations made thereunder, or that there is lawful ground of objection to the grant of a patent in pursuance of the application, the Commissioner sic: Commissioner may either:

(a) Refuse to proceed with the application; or

(b) Require the application or any such specification as aforesaid to be amended before he proceeds with the application.

(3) At any time after an application has been filed under this Act and before acceptance of the complete specification, the Commissioner may, at the request of the applicant and upon payment of the prescribed fee, direct that the application shall be post-dated to such date as may be specified in the request:

Provided that

(a) No application shall be post-dated under this subsection to a date later than 6 months from the date on which it was actually made or would, but for this subsection, be deemed to have been made; and

(b) A convention application shall not be post-dated under this subsection to a date later than the last date on which, under the foregoing provisions of this Act, the application could have been made.

(4) Where an application or specification filed under this Act is amended before acceptance of the complete specification, the Commissioner may direct that the application or specification shall be post-dated to the date on which the amendment is first filed.

(5) Regulations made under this Act may make provision for securing that where, at any time after an application or specification has been filed under this Act and before acceptance of the complete specification a fresh application or specification is filed in respect of any part of the subject-matter of the first-mentioned application or specification, the Commissioner may on request direct that the fresh application or specification shall be antedated to a date not earlier than the date of filing of the first-mentioned application or specification.

(6) An appeal to the Court shall lie from any decision of the Commissioner under subsection (2) or subsection (4) of this section.

13. Search for anticipation by previous publication

(1) Subject to the provisions of section 12 of this Act, the examiner to whom an application for a patent is referred under this Act shall make investigation for the purpose of ascertaining whether the invention, so far as claimed in any claim of the complete specification, has been published before the date of filing of the applicant's complete specification in any specification filed in pursuance of an application for a patent made in New Zealand and dated within 50 years next before that date.

(2) The examiner shall, in addition, make such investigation as the Commissioner may direct for the purpose of ascertaining whether the invention, so far as claimed in any claim of the complete specification, has been published in New Zealand before the date of filing of the applicant's complete specification in any other document (not being a document of any class described in subsection (1) of section 59 of this Act).

(3) If it appears to the Commissioner that the invention, so far as claimed in any claim of the complete specification, has been published as aforesaid, he may refuse to accept the specification unless the applicant either

(a) Shows to the satisfaction of the Commissioner that the priority date of the claim of his complete specification is not later than the date on which the relevant document was published; or

(b) Amends his complete specification to the satisfaction of the Commissioner.

(4) An appeal to the Court shall lie from any decision of the Commissioner under this section.

14. Search for anticipation by prior claim

(1) In addition to the investigation required by section 13 of this Act, the examiner shall make investigation for the purpose of ascertaining whether the invention, so far as claimed in any claim of the complete specification, is claimed in any claim of any other complete specification published on or after the date of filing of the applicant's complete specification, being a specification filed

(a) In pursuance of an application for a patent made in New Zealand and dated before that date; or

(b) In pursuance of a convention application founded upon an application for protection made in a convention country before that date.

(2) If it appears to the Commissioner that the said invention is claimed in a claim of any such other specification as aforesaid, he may, subject to the provisions of this section, direct that a reference to that other specification shall be inserted by way of notice to the public in the applicant's complete specification unless within such time as may be prescribed either

(a) The applicant shows to the satisfaction of the Commissioner that the priority date of his claim is not later than the priority date of the claim of the said other specification; or

(b) The complete specification is amended to the satisfaction of the Commissioner.

(3) If in consequence of the investigation under section 13 of this Act or otherwise it appears to the Commissioner

(a) That the invention, so far as claimed in any claim of the applicant's complete specification, has been claimed in any such specification as is mentioned in subsection (1) of that section; and

(b) That the other specification was published on or after the priority date of the applicant's claim,

then, unless it has been shown to the satisfaction of the Commissioner under that section that the priority date of the applicant's claim is not later than the priority date of claim of that other specification, the provisions of subsection (2) of this section shall apply as they apply in relation to a specification published on or after the date of filing of the applicant's complete specification.

(4) The powers of the Commissioner under this section to direct the insertion of a reference to another specification may be exercised either before or after a patent has been granted for the invention claimed in that other specification, but any directions given before the grant of such a patent shall be of no effect unless and until such a patent is granted.

(5) An appeal to the Court shall lie from any decision of the Commissioner under this section.

15 Commissioner may require information as to corresponding applications overseas

(1) Subject to subsection (2) of this section, for the purposes of the investigation required under this Act an applicant, if so required by the Commissioner shall,

(a) State whether a corresponding or substantially corresponding application has been filed in any of the following countries, namely,

(i) The United Kingdom, Canada, Australia, or the United States of America; or

(ii) Any other country for the time being declared by Order in Council to be a country to which this paragraph applies:

(b) With respect to any such application in any such country, furnish (so far as it is reasonably available to the applicant) the following information:

(i) The number and filing date of the application; and

(ii) Particulars sufficient to identify the prior art cited against the application; and

(iii) The number allotted to the patent when granted on the application and the form of the claims allowed; and

(iv) Particulars of any other application or patent with which the corresponding application is or has been involved in opposition, conflict, interference, or similar proceedings.

(2) This section shall not apply to Treaty applications.

18. Supplementary provisions as to examination, etc

(1) The powers of the Commissioner under section 14 or section 16 of this Act may be exercised either before or after the complete specification has been accepted or a patent granted to the applicant and references in those sections to the applicant shall accordingly be construed as including references to the patentee.

(2) Where a complete specification is amended under the foregoing provisions of this Act before it has been accepted, the amended specification shall be examined and investigated in like manner as the original specification.

(3) The examination and investigations required by the foregoing provisions of this Act shall not be deemed to warrant the validity of any patent, and no liability shall be incurred by the Patent Office or any officer thereof by reason of or in connection with any such examination or investigation or any report or other proceedings consequent thereon.

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