Patents Regulations 1954

Reprint as at 13 September 2014

Coat of Arms of New Zealand

Patents Regulations 1954

(SR 1954/211)

C W M Norrie, Governor-General

Order in Council

At the Government Buildings at Wellington this 7th day of December 1954

Present:
The Right Hon S G Holland presiding in Council

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.

Pursuant to the Patents Act 1953, His Excellency the Governor-General, acting by and with the advice and consent of the Executive Council, hereby makes the following regulations.

Contents

1Title, commencement, and arrangement
2Interpretation
2AApplication of these regulations for transitional purposes
3Fees payable according to Schedule 1
4Time of payment
5Form of payment
6Payments by post
7Payments from beyond New Zealand
8Notice of fees due
9Forms prescribed in Schedule 2
10Form and size of documents
11Duplicate documents
12Numbering of pages
13Agents may act for applicants
14Authorization of agent
15Revocation of agent’s authority
16Refusal to recognize agent
17Addressing of correspondence
18Address for service required in all cases
19Appropriate application forms to be used
20Personal representative to establish right to act
21Declaration of inventorship in certain cases
22Cognate applications
23Date of divisional application
24Division of applications if not cognate
25Evidence in support of convention applications
26Division of convention application
27Extension of period for filing complete specification
28Request for post-dating an application
29When supplied, drawings to accompany specification
30Drawing paper
31Size of sheets, etc
32Preparation of drawings
33Identification of drawings
34Descriptive matter
35Drawings not to be creased
36Drawings filed with provisional specification
37Order of examination
38Examination may be advanced
39Examination procedure under section 13 of the Act
40Procedure under section 14 of the Act
41Periods in regulation 40 may be extended
42Application for result of search
43Reference to prior specification
44Reference to prior patent
45Reference to applicant includes patentee
46Extension of time under section 19(2) of the Act
47Extension of time under section 20(1) of the Act
48Notice of opposition
49Counterstatement
50Filing of evidence by opponent
51Filing of evidence by applicant
52Closing of evidence
53Supply of documents, etc, for use of Commissioner
54Hearing
55Insertion of reference
56Costs
57Notice to applicant
58Hearing
59Extension of time
60Application under section 23(3) of the Act
61Application under section 23(4) of the Act
62Extension of time
63Application for certificate under section 23(8) of the Act
64Manner of mention of inventor
65Procedure under section 24(1) of the Act
66Procedure under section 24(5) of the Act
67Request for sealing
68Time for sealing under section 27(2) of the Act
69Time for sealing under section 27(3) of the Act
70Time for sealing under section 27(4) of the Act
71Form of patent
72Amendment of patent
73When payable
74Renewal fees may be paid in advance
75Extension of time for payment
76Certificate of payment
77Notice that renewal fee due
78Inventions relating to defence or atomic energy
79Application
80Advertisement of application
81Opposition and evidence
82Hearing
83Unopposed application
84Reference of application to the court
85Application
86Preliminary consideration by Commissioner
87Opposition
88Action on decision in favour of applicant
89Order of Commissioner restoring patent to be subject to provisions
90Application
91Preliminary consideration by Commissioner
92Opposition
93Action on decision in favour of applicant
94Order of Commissioner for sealing patent to be subject to provision
95Application
96Preliminary consideration by Commissioner
97Opposition
98Order of Commissioner restoring application to be subject to provisions
99Application to amend accepted complete specification
100Opposition
101Application to amend unaccepted complete specification
102Application to amend application for patent
103New specification and drawings as amended may be required
104Application for revocation
105Opposition procedure
106Application for surrender
107Form of offer to surrender a patent
108Opposition
109Application under section 44(1) of the Act
110Applications under section 44(2)(a) and (b) of the Act
111Cancellation of endorsement under section 45(1) of the Act
112Cancellation of endorsement under section 45(2) of the Act
113Advertisement and opposition
114Balance of renewal fees payable on cancellation
115Application under section 46 of the Act
116Application under section 49(1) of the Act
117Application under section 50 of the Act
118Evidence
119Preliminary consideration by Commissioner
120Opposition
121Application under section 51 of the Act
122Application under section 64(1) of the Act
123Application under section 64(2) of the Act
124Application under section 65(1) of the Act
125Register to record grant of patents
126Alteration of entries
127Registration of assignments, etc
128Copies of documents
129Public inspection of register, etc
130Payment of renewal fees to be entered
131Entry of claim arising from special provision in order for extension of term of patent
132Application for dispensing with probate or letters of administration
133Application
134Advertisement
135Opposition
136Hearing
137Request for certificate
138Certified copies of entries, etc
139Request for information
140Lost patent
141Form of evidence
142Preparation
143Manner of making declarations, etc
144Recognition of signatures on documents
145Further evidence
146Issue of summons
147Penalty for non-compliance with summons
148Expenses of witness
149Place of hearings
150Service of copy of application on Commissioner
151Action consequent upon court order
152Register of patent attorneys
153Publication of entries
154Qualification for registration
155Examination
156Persons entitled to sit examination
157Entries for examination and appointment of examiners
158Subjects of examination
159Rules for examination
160Requirements for pass
161Renewal of registration
162Amendment of entries in register of patent attorneys
163Evidence
164Particulars of patent applications which may be published
165Signature of documents
166Exercise of discretionary power by Commissioner
167Amendment of documents
168Power of Commissioner to extend times
169Power of Commissioner to waive requirements
170Destruction of records
171Revocations and savings
Gazette Information
Reprint notes

Regulations

Part 1 Preliminary

1 Title, commencement, and arrangement

(1)

These regulations may be cited as the Patents Regulations 1954.

(2)

These regulations shall come into force immediately after the commencement of the Patents Act 1953.

(3)

This subclause contained the table of contents.

2 Interpretation

In these regulations, unless the context otherwise requires,—

Act means the Patents Act 1953

agent means a registered patent attorney, or a solicitor so far as he is entitled to practise under the Act, who is duly authorized to the satisfaction of the Commissioner

Commonwealth country means a country that is a member of the British Commonwealth of Nations; and includes every territory for whose international relations the Government of that country is responsible

the register means the register of patents kept under the provisions of section 83 of the Act.

A reference to a numbered form is a reference to the patents form so numbered in Schedule 2.

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.

Regulation 2A: inserted, on 13 September 2014, by regulation 176 of the Patents Regulations 2014 (LI 2014/275).

Part 2 Fees

3 Fees payable according to Schedule 1

(1)

The fees to be paid in respect of the grant of patents and applications therefor and in respect of other matters relating to patents arising under the Act and these regulations shall be those prescribed in Schedule 1.

(2)

The fees prescribed by these regulations are exclusive of goods and services tax.

Regulation 3(2): inserted, on 1 July 1999, by regulation 2 of the Patents Amendment Regulations 1999 (SR 1999/154).

4 Time of payment

Fees and charges payable to the Patent Office shall be paid at the time of making an application or request or upon giving notice or filing any instrument in respect of which a fee or charge is payable under these regulations.

5 Form of payment

All fees shall be paid in cash at the Patent Office. The Commissioner may, however, accept payments made in any other form, but in such case he may delay or cancel the credit until collection is made.

6 Payments by post

Money sent by mail to the Patent Office shall be at the risk of the sender.

7 Payments from beyond New Zealand

Remittances from beyond New Zealand shall be payable and immediately negotiable in New Zealand for the full amount of the prescribed fee.

8 Notice of fees due

The Commissioner may give notice of any fee due or becoming due, but no liability shall be incurred by him if he fails to do so, or if for any reason the notice, if given, is incorrect in any particular or fails to reach the person for whom it is intended.

Part 3 Forms and documents

9 Forms prescribed in Schedule 2

The forms set out in Schedule 2 shall be used in all cases to which they are applicable, and may be modified as directed by the Commissioner.

10 Form and size of documents

All documents and copies of documents (except drawings) filed at the Patent Office shall, unless the Commissioner otherwise directs, be typewritten, lithographed, or printed, in the English language—

(a)

on strong white paper of approximately A4 international size; and

(b)

in legible characters with a permanent deep black ink; and

(c)

with a space of approximately 0.6 cm between each line; and

(d)

except in the case of statutory declarations and affidavits, on one side only; and

(e)

with a margin of at least 2.5 cm on the left-hand side; and

(f)

in the case of provisional and complete specifications, leaving a space of approximately 13 cm blank at the top of the form.

Regulation 10: replaced, on 27 March 1975, by regulation 2 of the Patents Regulations 1954, Amendment No 3 (SR 1975/58).

11 Duplicate documents

Duplicate documents, other than drawings, required under these regulations may be carbon copies of the original documents:

provided that they shall be on paper of good quality and the typing shall be black and distinct.

12 Numbering of pages

The pages of complete specifications shall be numbered consecutively; and the applicant shall, when requested so to do by the Commissioner, supply fresh copies of any amended page or pages specified by him, and shall, if necessary, renumber the pages of the specification.

Part 4 Agency and correspondence

13 Agents may act for applicants

Any application, request, or notice which is required or permitted by the Act or these regulations to be made or given to the Commissioner, and all other communications between an applicant or a person making a request or giving a notice and the Commissioner, and between the patentee and the Commissioner or any other person, may be signed, made, or given by or through an agent:

provided that where an application for a patent is signed by an agent a further application signed by the applicant shall be filed within 4 months.

14 Authorization of agent

Any applicant, person making a request or giving notice, or patentee, may appoint an agent to act for him in any proceedings or matter before or affecting the Commissioner under the Act or these regulations by signing and sending to the Commissioner an authority to that effect in such written form as the Commissioner may deem sufficient. In the case of any such appointment, service upon the agent of any document relating to the proceeding or matter shall be deemed to be service upon the person so appointing him, all communications directed to be made to the person in respect of the proceeding or matter may be addressed to the agent, and all attendances upon the Commissioner relating thereto may be made by or through the agent.

15 Revocation of agent’s authority

An authorization of an agent may be revoked at any stage in the proceedings, and an agent may withdraw, on giving notice to the Commissioner; and when any such authorization is so revoked, or the agent has withdrawn, the Patent Office shall communicate directly with the applicant or with such other agent as he may appoint. The Commissioner shall notify an agent of the revocation of his authority or the applicant of the withdrawal of his agent.

16 Refusal to recognize agent

The Commissioner shall refuse to recognize as agent in respect of any proceedings under the Act a person who neither resides nor carries on business in New Zealand.

17 Addressing of correspondence

All letters and other communications relating to matters arising under the Act or these regulations and intended for the Patent Office shall be addressed to the Commissioner of Patents, Wellington C 1. When appropriate, a letter may be marked for the attention of a particular officer.

18 Address for service required in all cases

Every person concerned in any proceedings to which these regulations relate and every patentee shall furnish to the Commissioner an address for service in New Zealand, and that address may be treated for all purposes connected with the proceedings or patent as the address of the person concerned in the proceedings or of the patentee.

Part 5 Applications for patents, and specifications

19 Appropriate application forms to be used

(1)

An application, other than a convention application, shall be made in form 1.

(2)

A convention application shall be made in form 2.

(3)

An application for the grant of a patent of addition instead of an independent patent shall be made in form 3.

(4)

Every application (other than a convention application) shall be accompanied by either a provisional specification in duplicate in form 4 or a complete specification in duplicate in form 5; and every convention application shall be accompanied by a complete specification in duplicate in form 5.

20 Personal representative to establish right to act

In the case of an application, other than a convention application, by the personal representative of a deceased person or the assignee of the personal representative of a deceased person who, in either case, was entitled to make such an application, the probate of the will of the deceased, or the letters of administration of his estate, or an official copy of the probate or letters of administration, shall be produced at the Patent Office in proof of the personal representative’s right to act:

provided that this regulation shall not apply in any case where the Commissioner has dispensed with the production of probate or letters of administration pursuant to section 86 of the Act.

21 Declaration of inventorship in certain cases

(1)

In the case of a convention application, and in the case of an application accompanied by a provisional specification, a declaration in form 6 as to the inventorship of the invention disclosed in the complete specification shall be filed with the complete specification or subsequently at any time before the expiration of the period allowed by or under section 19 of the Act for putting the application in order.

(2)

On request by the applicant, the Commissioner may if he thinks fit dispense with the declaration.

22 Cognate applications

Where, in pursuance of section 9(3) of the Act, the Commissioner allows a single complete specification to be proceeded with in respect of 2 or more applications in respect of which 2 or more complete specifications have been filed, the single complete specification may include any matter disclosed in any of the said specifications and shall be deemed to have been filed on such date, not earlier than the earliest date on which all the matter disclosed in the said single complete specification has been disclosed to the Patent Office in or in connection with the applications, as the Commissioner may direct.

23 Date of divisional application

(1)

Where an applicant has made an application for a patent, and, before the acceptance of the complete specification, makes a fresh application for a patent for matter included in the first mentioned application or in any specification filed in pursuance thereof, the Commissioner may direct that the fresh application or any specification filed in pursuance thereof shall be antedated to a date not earlier than the date of filing of the first mentioned application or specification if the applicant includes in the fresh application a request to that effect.

(2)

The Commissioner may require such amendment of the complete specification filed in pursuance of either of the said applications as may be necessary to ensure that neither of the said complete specifications includes a claim for matter claimed in the other.

24 Division of applications if not cognate

Where a complete specification has been filed pursuant to 2 or more applications accompanied by provisional specifications for inventions which the applicant believes to be cognate or modifications one of another and the Commissioner is of opinion that such inventions are not cognate or modifications one of another, the Commissioner may allow the complete specification to be divided into such number of complete specifications as may be necessary to enable the applications to be proceeded with as 2 or more separate applications for patents.

25 Evidence in support of convention applications

(1)

In addition to the specification filed with every convention application, there shall be filed with the application, or within 3 months thereafter, a copy of the specification and drawings or documents filed in respect of the relevant application for protection in a convention country or of each such application, duly certified by the official chief or head of the Patent Office of the convention country, or otherwise verified to the satisfaction of the Commissioner.

(2)

If any specification or other document relating to the application is in a foreign language, it shall be accompanied by a translation thereof into the English language verified by statutory declaration or otherwise to the satisfaction of the Commissioner.

26 Division of convention application

Where a single convention application has been made in respect of all or part of the inventions in respect of which 2 or more applications for protection have been made in 1 or more convention countries, and the Examiner reports that the claims of the specification filed with the said convention application relate to more than 1 invention, the Commissioner may allow 1 or more further applications to be filed and the specification to be divided into such number of specifications as may be necessary to enable 2 or more separate convention applications to be proceeded with, and may direct that the said applications be deemed to have been filed on the date of filing of the original application.

27 Extension of period for filing complete specification

A request for an extension of time for filing a complete specification up to a period not exceeding 15 months from the date of filing of the application shall be made in form 7.

28 Request for post-dating an application

Where an applicant for a patent desires that his application shall be post-dated in pursuance of the provisions of section 12(3) of the Act, he shall make a request in form 8.

Part 6 Drawings

29 When supplied, drawings to accompany specification

Drawings, when supplied, shall accompany the provisional or complete specification to which they refer, except in the case provided for by regulation 36. A true copy of the original drawings shall be filed at the same time as the original drawings.

30 Drawing paper

(1)

Drawings shall be made on pure white tough drawing paper, not thinner than 40 sheets to the centimetre, of smooth surface and good quality, and without colour or washes.

(2)

Mounted drawings may not be used.

Regulation 30(1): amended, on 27 March 1975, by regulation 3 of the Patents Regulations 1954, Amendment No 3 (SR 1975/58).

31 Size of sheets, etc

(1)

Drawings shall be on sheets of approximately A4 international size, and a clear margin of at least 1.5 cm shall be left at the edges of the sheet.

(2)

An exceptionally large figure may be continued on subsequent sheets.

(3)

No more sheets shall be employed than are necessary.

(4)

The figures shall be numbered consecutively without regard to the number of sheets, and shall as far as possible be arranged in numerical order, separated by a sufficient space to keep them distinct.

(5)

Where figures on a number of sheets form in effect a single complete figure, they shall be so arranged that the complete figure can be assembled without concealing any part of another figure.

Regulation 31(1): replaced, on 27 March 1975, by regulation 4 of the Patents Regulations 1954, Amendment No 3 (SR 1975/58).

32 Preparation of drawings

Drawings shall be prepared in accordance with the following requirements:

(a)

they shall be executed with absolutely black ink:

(b)

each line shall be firmly and evenly drawn, sharply defined, and of the same strength throughout:

(c)

section lines, lines for effect, and shading lines shall be as few as possible, and shall not be closely drawn:

(d)

shading lines shall not contrast excessively in thickness with the general lines of the drawing:

(e)

sections and shading shall not be represented by solid black or washes:

(f)

they shall be on a scale sufficiently large to show the invention clearly, and only so much of the apparatus, machine, or article may appear as effects this purpose:

(g)

if the scale is given, it shall be drawn and not denoted by words, and no dimensions may be marked on the drawings:

(h)

where convenient, the figures shall be drawn in an upright position in regard to the top and bottom of the sheet:

(i)

subject to any special directions of the Commissioner in any particular case, reference letters and numerals and index letters and numerals used in conjunction therewith shall be bold, distinct, and not less than 0.3 cm in height; the same letters or numerals shall be used in different views of the same parts; and where the reference letters or numerals are shown outside the parts referred to they shall be connected with the said parts by fine lines.

Regulation 32(i): amended, on 27 March 1975, by regulation 5 of the Patents Regulations 1954, Amendment No 3 (SR 1975/58).

33 Identification of drawings

(1)

Drawings shall bear in the right hand bottom corner particulars sufficient to identify the applicant and the signature of the applicant or his agent.

(2)

The title of the invention shall not appear on the drawings.

34 Descriptive matter

(1)

No descriptive matter shall appear on constructional drawings, but drawings in the nature of flow sheets may bear descriptive matter to show the materials used and the chemical or other reactions or treatments effected in carrying out the invention.

(2)

Drawings showing a number of instruments or units of apparatus and their interconnections, either mechanical or electrical, where each such instrument or unit is shown only symbolically, may bear such descriptive matter as is necessary to identify the instruments or units or their interconnections.

(3)

Such descriptive matter shall be in absolutely black ink, and the letters shall not be less than 0.4 cm in height.

(4)

No drawing or sketch, other than a graphic chemical formula or a mathematical formula, symbol, or equation, shall appear in the verbal part of the specification, and if such a formula, symbol, or equation is used therein a copy thereof, prepared in the same manner as drawings, shall be furnished if the Commissioner so directs.

Regulation 34(3): amended, on 27 March 1975, by regulation 6 of the Patents Regulations 1954, Amendment No 3 (SR 1975/58).

35 Drawings not to be creased

Drawings shall be delivered at the Patent Office free from folds, breaks, or creases which would render them unsuitable for reproduction by photography.

36 Drawings filed with provisional specification

If an applicant desires to adopt the drawings filed with his provisional specification as the drawings or part of the drawings for his complete specification, he shall refer to them in the complete specification as those filed with the provisional specification.

Part 7 Examination of applications

37 Order of examination

Applications with their specification or specifications shall be referred by the Commissioner to an examiner in the order in which the complete specifications are filed and, except as otherwise provided in these regulations, shall be taken up by the examiner for examination and investigation in that order.

38 Examination may be advanced

An application and its specification or specifications may be advanced out of turn for examination and investigation at the direction of the Commissioner—

(a)

to expedite the business of the Office; or

(b)

for good and substantial reasons at the request of the applicant made in form 9.

39 Examination procedure under section 13 of the Act

(1)

When the examiner, in making the investigation under section 13 of the Act, reports that the invention so far as claimed in any claim of the complete specification has been published in any specification or other document falling within subsection (1) or subsection (2) of that section, the applicant shall be so informed and shall be afforded an opportunity of amending his specification.

(2)

If the examiner finds that substantially the whole of the invention claimed has been published in 1 or more such specifications or documents he may, without continuing the investigation, make a provisional report to that effect.

(3)

If the applicant replies to the examiner’s objections or amends his specification and the examiner is not satisfied either that the invention so far as claimed in any claim has not been published in any specification or other document cited by the examiner or that the priority date of the claim is not later than the date on which the relevant document was published, the applicant shall be given an opportunity to be heard in the matter if he so requests.

(4)

Whether or not the applicant has replied or amended his specification, the Commissioner may appoint a hearing if he considers it desirable to do so, having regard to the time remaining for putting the application in order or other circumstances of the case.

(5)

When a hearing is appointed, the applicant shall be given not less than 10 days’ notice of the appointment, unless in the opinion of the Commissioner a shorter notice is reasonable, and the applicant shall as soon as possible notify the Commissioner whether he will attend the hearing.

(6)

After hearing the applicant, or without a hearing if the applicant has not attended or has notified that he does not desire to be heard, the Commissioner may prescribe or permit such amendment of the specification as will be to his satisfaction, and may refuse to accept the specification unless the amendment is made within such period as he may fix.

40 Procedure under section 14 of the Act

(1)

When the examiner reports that the invention so far as claimed in any claim of the complete specification is claimed in any claim of any other complete specification falling within subsection (1) or subsection (3) of section 14 of the Act, the applicant shall be so informed and shall be afforded an opportunity of amending, or submitting amendments of, his specification.

(2)

If, when the applicant’s specification is otherwise in order for acceptance, an objection under section 14 of the Act is outstanding, the Commissioner may accept the specification and fix a period (being not less than 2 months from the date of its publication) for removing the objection.

(3)

If an objection under section 14 of the Act is communicated to the applicant after acceptance of the specification, the Commissioner shall fix a period (being not less than 2 months from the date of the communication) for removing the objection.

(4)

If the applicant so requests at any time, or if the examiner is not satisfied that the objection has been met within the period prescribed by this regulation, including any extension thereof which the Commissioner may allow, a time for hearing the applicant shall be appointed and the applicant shall be given not less than 10 days’ notice of the appointment and shall as soon as possible notify the Commissioner whether he will attend the hearing.

(5)

After hearing the applicant, or without a hearing if the applicant has not attended or has notified that he does not desire to be heard, the Commissioner may prescribe or permit such amendment of the specification as will be to his satisfaction and may direct that a reference to such other specification as he shall mention shall be inserted in the applicant’s specification unless the amendment is made or agreed to within such period as he may fix.

41 Periods in regulation 40 may be extended

The periods mentioned in regulation 40 may be extended if a request for such extension is made in form 10 at any time within the extended period specified in the request:

provided that the total extension of either period allowed under this provision shall not exceed 6 months.

42 Application for result of search

An application under the proviso to section 91(2) of the Act for disclosure of the result of a search made under sections 13 and 14 of the Act or of information furnished under section 15(b)(i) of the Act shall be made in form 11.

43 Reference to prior specification

When, in pursuance of regulation 40(5), the Commissioner directs that reference to another specification shall be inserted in the applicant’s complete specification, the reference shall be inserted after the claims and shall be in the following form:

Reference has been directed, in pursuance of section 14 of the Patents Act 1953, to specification No [specify]”

44 Reference to prior patent

(1)

When in making the investigations under sections 13 and 14 of the Act it appears to the examiner that the applicant’s invention cannot be performed without substantial risk of infringement of a claim of another patent, the applicant shall be so informed and the procedure provided in regulations 40 and 41 shall apply.

(2)

When, pursuant to that procedure, the Commissioner directs that reference to a patent shall be inserted in the applicant’s complete specification, the reference shall be inserted after the claims and shall be in the following form:

Reference has been directed, in pursuance of section 16(1) of the Patents Act 1953, to patent No [specify]”

(3)

An application under subsection (2) of section 16 of the Act for the deletion of a reference inserted pursuant to a direction under subsection (1) of that section shall be made in form 12, and shall state fully the facts relied upon in support of the application.

45 Reference to applicant includes patentee

In the application of regulations 40, 43, and 44 to proceedings subsequent to the grant of the patent, references to the patentee shall be substituted for references to the applicant.

Part 8 Putting applications in order and acceptance of complete specifications

46 Extension of time under section 19(2) of the Act

A notice under subsection (2) of section 19 of the Act requesting an extension of the period allowable under subsection (1) of that section for putting an application in order shall be given in form 13.

47 Extension of time under section 20(1) of the Act

A notice under the proviso to section 20(1) of the Act requesting postponement of the acceptance of a complete specification to a date later than 15 months from its date of filing shall be given in form 14.

Part 9 Opposition to grant of patent

48 Notice of opposition

(1)

A notice of opposition to the grant of a patent—

(a)

shall be given in form 15;

(b)

shall state the ground or grounds on which the opponent intends to oppose the grant; and

(c)

shall be accompanied by a copy thereof and a statement (in duplicate) setting out fully the nature of the opponent’s interest, the facts upon which he relies, and the relief which he seeks.

(2)

A copy of the notice and of the statement shall be sent by the Commissioner to the applicant.

(3)

An application under the proviso to section 21(2) of the Act for an extension of the period for filing a notice of opposition shall be in form 16.

49 Counterstatement

If the applicant desires to proceed with his application he shall, within 2 months of the receipt by him of the copies specified in regulation 48, file a counterstatement setting out fully the grounds upon which the opposition is contested and deliver to the opponent a copy thereof. If the applicant does not file a counterstatement within the time allowed, he shall be deemed to have abandoned his application.

50 Filing of evidence by opponent

The opponent may within 2 months from the receipt of the copy of the counterstatement file evidence in support of his case and shall deliver to the applicant a copy of the evidence.

51 Filing of evidence by applicant

Within 2 months from the receipt of the copy of the opponent’s evidence or, if the opponent does not file any evidence, within 2 months from the expiration of the time within which the opponent’s evidence might have been filed, the applicant may file evidence in support of his case and shall deliver to the opponent a copy of the evidence; and within 2 months from the receipt of the copy of the applicant’s evidence the opponent may file evidence confined to matters strictly in reply and shall deliver to the applicant a copy of the evidence.

52 Closing of evidence

No further evidence shall be filed by either party except by leave or direction of the Commissioner.

53 Supply of documents, etc, for use of Commissioner

(1)

Copies of all documents, other than New Zealand specifications, referred to in the notice of opposition or in any statement or evidence filed in connection with the opposition, authenticated to the satisfaction of the Commissioner, shall be furnished (in duplicate) for the Commissioner’s use, unless he otherwise directs.

(2)

Where a specification or other document in a foreign language is referred to, a translation thereof, verified by statutory declaration or otherwise to the satisfaction of the Commissioner, and 2 copies of the translation, shall also be furnished.

54 Hearing

(1)

On completion of the evidence (if any), or if any party has not complied with the provisions of regulations 49 to 51 at such other time (whether before or after the evidence has been filed) as the Commissioner thinks fit, the Commissioner shall appoint a time for the hearing of the case, and shall give the parties not less than 14 days’ notice of the appointment.

(2)

If either party desires to be heard, he shall notify the Commissioner in form 17, and the Commissioner may refuse to hear either party who has not filed notice in the said form prior to the time of the hearing.

(3)

If either party intends to refer at the hearing to any publication not already mentioned in the proceedings, he shall give to the other party and to the Commissioner not less than 10 days’ notice of his intention, together with details of each publication to which he intends to refer.

(4)

After hearing the party or parties desiring to be heard or, if neither party desires to be heard, then without a hearing, the Commissioner shall decide the case and notify his decision to the parties.

55 Insertion of reference

If in consequence of the proceedings the Commissioner directs that a reference to another patent shall be inserted in the applicant’s specification under section 16(1) of the Act, the reference shall be as prescribed by regulation 44(2).

56 Costs

If the applicant notifies the Commissioner that he does not desire to proceed with the application, the Commissioner (in deciding whether costs should be awarded to the opponent) shall consider whether proceedings might have been avoided if the opponent had given reasonable notice to the applicant before the opposition was filed.

Part 10 Refusal of patent without opposition

57 Notice to applicant

If at any time after the acceptance of a complete specification and before the grant of the patent it comes to the notice of the Commissioner, otherwise than in consequence of proceedings in opposition to the grant, that the invention so far as claimed in any claim of the complete specification has been published in any specification or other document falling within section 22(1) of the Act, the applicant shall be so informed and shall be allowed a period of 2 months within which to submit such amendment of his specification as will be to the Commissioner’s satisfaction.

58 Hearing

(1)

If the specification has not been amended to the Commissioner’s satisfaction within the period allowed under regulation 57 including any extension thereof which the Commissioner may allow, a time for hearing the applicant shall be appointed, and the applicant shall be given at least 10 days’ notice of the appointment, and shall as soon as possible notify the Commissioner whether he will attend the hearing.

(2)

After hearing the applicant, or without a hearing if the applicant has not attended or has notified that he does not desire to be heard, the Commissioner may prescribe or permit such amendment of the specification as will be to his satisfaction and may refuse to grant a patent unless the amendment is made or agreed to within such period as he may fix.

59 Extension of time

The periods mentioned in regulations 57 and 58 may be extended if a request for such extension is made in form 10 at any time within the extended period specified in the request:

provided that the total extension of either period allowed under this provision shall not exceed 6 months.

Part 11 Mention of inventor as such

60 Application under section 23(3) of the Act

A request by the applicant for a patent, or, if the actual deviser of the invention or of a substantial part thereof is not the applicant or one of the applicants, by the applicant and the said deviser, under section 23(3) of the Act shall be made in form 18 and shall be accompanied by a statement setting out fully the facts relied upon.

61 Application under section 23(4) of the Act

(1)

A claim under section 23(4) of the Act shall be made in form 19, and shall be accompanied by a statement setting out fully the facts relied upon.

(2)

A copy of the claim and of the statement shall be sent by the Commissioner to every applicant for the patent (not being the claimant) and to any other person whom the Commissioner may consider to be interested; and the claimant shall supply a sufficient number of copies for that purpose.

(3)

The Commissioner may give such directions (if any) as he may think fit with regard to the subsequent procedure.

62 Extension of time

An application under section 23(5) of the Act for an extension of the period for making a request or claim shall be made in form 20.

63 Application for certificate under section 23(8) of the Act

(1)

An application under section 23(8) of the Act for a certificate shall be made in form 21, and shall be accompanied by a statement setting out fully the facts relied upon.

(2)

A copy of the application and of the statement shall be sent by the Commissioner to each patentee (not being the applicant), to the person mentioned as the actual deviser, and to any other person whom the Commissioner may consider to be interested, and the applicant shall supply a sufficient number of copies for that purpose.

(3)

The Commissioner may give such direction (if any) as he may think fit with regard to the subsequent procedure.

64 Manner of mention of inventor

Any mention of an actual deviser as inventor under section 23(1) of the Act may be made in the patent after the name of the Commissioner, and on the complete specification at the head of form 5, and may be in the form “The inventor of this invention in the sense of being the actual deviser thereof within the meaning of section 23 of the Patents Act 1953 is [specify], of [specify]”, or “The inventor of a substantial part of this invention in the sense of being the actual deviser thereof within the meaning of section 23 of the Patents Act 1953 is [specify], of [specify]”, as the case may require.

Part 12 Substitution of applicants, etc

65 Procedure under section 24(1) of the Act

(1)

A claim under section 24(1) of the Act that an application for a patent shall proceed in the name of the claimant or in the names of the claimant and the applicant or the other joint applicant or applicants shall be made in form 22, and shall be accompanied by a certified copy of any assignment or agreement upon which the claim is based.

(2)

The original assignment or agreement shall also be produced for the Commissioner’s inspection, and the Commissioner may call for such other proof of title or written consent as he may require.

66 Procedure under section 24(5) of the Act

(1)

An application under section 24(5) of the Act by a joint applicant for the directions of the Commissioner as to the names or manner in which an application for a patent shall be proceeded with shall be made in form 23, and shall be accompanied by a statement setting out fully the facts upon which the applicant relies and the directions which he seeks.

(2)

A copy of the application and statement shall be sent by the Commissioner to each other joint applicant; and the person making the application under section 24(5) of the Act shall supply a sufficient number of copies for that purpose.

(3)

The Commissioner may give such directions as he may think fit with regard to the subsequent procedure.

Part 13 Sealing and form of patent

67 Request for sealing

A request for the sealing of a patent on an application shall be made in form 24.

68 Time for sealing under section 27(2) of the Act

The period within which a request for the sealing of a patent may be made under proviso (a) to section 27(2) of the Act shall be 2 months from the date of the final determination of the proceedings.

69 Time for sealing under section 27(3) of the Act

(1)

An application under section 27(3) of the Act for the extension of the period for making a request for the sealing of a patent shall be made in form 25.

(2)

The extension shall not be more than 3 months.

70 Time for sealing under section 27(4) of the Act

(1)

An application under section 27(4) of the Act for extension of the period for making a request for the sealing of a patent shall be made in form 26.

(2)

The extension shall not be more than 6 months on any one application under section 27(4) of the Act.

71 Form of patent

A patent shall be in the form A or form B (whichever is applicable) set out in Schedule 3, or such modification of either of these forms as the Commissioner directs.

72 Amendment of patent

An application under section 28 of the Act for the amendment of a patent shall be made in form 27, and shall be accompanied by evidence verifying the statements therein and by the letters patent.

Part 14 Renewal fees

73 When payable

A person who desires to keep a patent in force shall file a request in form 28 before the expiration of the period prescribed in the first column of Schedule 4 and shall pay the renewal fee prescribed in the second column of that schedule:

provided that, where a patent is sealed after the expiration of the first period or any succeeding period (except in cases mentioned in regulation 78), a request in form 28 in respect of the second period and any succeeding period may be filed at any time before the expiration of 4 months from the date of sealing the patent.

74 Renewal fees may be paid in advance

All or any of the prescribed renewal fees may be paid in advance.

75 Extension of time for payment

A request for extension of the period for payment of any renewal fee shall be made in form 29.

76 Certificate of payment

On due compliance with the terms of regulation 73, the Commissioner shall issue a certificate in form 30 that the prescribed fee has been duly paid.

77 Notice that renewal fee due

Where any renewal fee is due or becomes due in respect of any patent the Commissioner may send to the patentee at his address for service and to the person who paid the last renewal fee a notice of the date when the payment is due, and of the consequences of non-payment.

78 Inventions relating to defence or atomic energy

Where directions given by the Commissioner under section 25(1) or under section 26(1) of the Act prohibiting the publication of information with respect to an invention forming the subject of an application for a patent have been revoked and a patent is granted on the application, no renewal fees shall be payable in respect of any period which commenced in the period during which the directions were in force.

Part 15 Extension of term of patent

79 Application

(1)

An application to the Commissioner under section 31, section 32, or section 33 of the Act for an order extending the term of a patent shall be made in form 31.

(2)

The application shall state the period of the extension which is sought and shall be supported by evidence setting out fully the facts relied upon, such evidence being filed either with the application or at any time within 3 months from the date thereof.

80 Advertisement of application

The Commissioner shall forthwith advertise an application under regulation 79 in 2 issues of the Journal, and the applicant shall notify registered licensees, and (in the case of an application under section 33 of the Act) the patentee, of the advertisement:

provided that where the supporting evidence is not filed with the application, the second advertisement of the application shall be made after the evidence has been filed.

81 Opposition and evidence

(1)

At any time within 2 months from the date of the second advertisement of the application in the Journal any person may give notice of opposition.

(2)

Such notice shall be in form 32, and shall be accompanied by a copy thereof together with a statement (in duplicate) setting out fully the nature of the opponent’s interest, the grounds of opposition, and the relief which he seeks.

(3)

Evidence (in duplicate) of the facts upon which he relies shall be filed within 1 month of the filing of the notice.

(4)

A copy of the notice, the statement, and the evidence, shall be sent by the Commissioner to the applicant, who within 2 months from the receipt thereof may file evidence confined to matters strictly in reply and shall deliver to the opponent a copy of the evidence.

(5)

No further evidence shall be filed by either party except by leave or direction of the Commissioner.

(6)

An opponent shall be entitled at his own expense to be supplied by the applicant with a copy of the application and of any evidence filed in support.

82 Hearing

(1)

On completion of the evidence or at such other time as he may see fit, the Commissioner shall appoint a time for the hearing of the case, and shall give the parties at least 14 days’ notice of the appointment.

(2)

If either party desires to be heard he shall notify the Commissioner in form 17, and the Commissioner may refuse to hear any party who has not filed notice in the said form prior to the time of the hearing.

(3)

After hearing the party or parties desiring to be heard or, if neither party desires to be heard, then without a hearing, the Commissioner shall decide the case and notify his decision to the parties.

83 Unopposed application

If no notice of opposition to the application is given the Commissioner shall, on the expiration of the period prescribed by regulation 82(1), after hearing the applicant if desiring to be heard, decide the case and notify his decision to the applicant.

84 Reference of application to the court

If at any stage of the application the Commissioner decides to refer the application for decision by the court, he shall notify every party to the proceedings accordingly.

Part 16 Restoration of lapsed patents

85 Application

(1)

An application under section 35 of the Act for restoration of a patent shall be made in form 33.

(2)

Evidence in support of the statements made in the application shall be filed within 3 months of the date of the application.

86 Preliminary consideration by Commissioner

(1)

If upon consideration of the evidence the Commissioner is not satisfied that a prima facie case for an order under section 35 of the Act has been made out, he shall notify the applicant accordingly and, unless within 1 month the applicant requests to be heard in the matter, the Commissioner shall refuse the application.

(2)

If the applicant requests a hearing within the time allowed, the Commissioner (after giving the applicant an opportunity of being heard) shall determine whether the application may proceed to advertisement or whether it shall be refused.

87 Opposition

(1)

At any time within 2 months of the advertisement of the application under section 35(4) of the Act, any person may give notice of opposition thereto in form 34.

(2)

The notice shall be accompanied by a copy thereof together with a statement (in duplicate) setting out fully the nature of the opponent’s interest and the facts upon which he relies.

(3)

A copy of the notice and of the statement shall be sent by the Commissioner to the applicant.

(4)

Upon notice of opposition being given the provisions of regulations 49 to 54 shall apply.

88 Action on decision in favour of applicant

If the Commissioner decides in favour of the applicant, he shall notify him accordingly, and require him to file memoranda in forms 28 and 35.

89 Order of Commissioner restoring patent to be subject to provisions

For the protection of persons who have begun to avail themselves of the patented invention between the date when the patent ceased to have effect and the date of the application, every order of the Commissioner restoring a patent shall be subject to the following provisions:

(a)

no action or other proceeding shall be commenced or prosecuted nor any damages recovered in respect of any manufacture, use, or sale of the invention the subject of the patent in the interim period as hereinafter defined by any person (not being a licensee under the patent at the date when it ceased to have effect), who after such date and before the date of the application has made, used, exercised, or sold the invention the subject of the patent or has manufactured or installed any plant, machinery, or apparatus claimed in the specification of the patent or for carrying out a method or process so claimed; and any such person shall be deemed to have so acted with the licence of the patentee and shall thereafter be entitled to continue to make, use, exercise, or sell the invention without infringement of the patent to the extent hereinafter specified, that it to say:

(i)

in so far as the complete specification of the patent claims an article (other than plant, machinery, or apparatus or part thereof as specified in subparagraph (ii)) and any article so claimed has been manufactured by him during the said interim period, that particular article may at all times be used or sold:

(ii)

in so far as the complete specification claims any plant, machinery, or apparatus or part thereof for the production of an article, then any particular plant, machinery, or apparatus or part thereof so claimed which has been manufactured or installed by him during the said interim period, and the products thereof, may at all times be used or sold and so that in the event of any such plant, machinery, apparatus, or part thereof being impaired by wear or tear or accidentally destroyed a like licence shall extend to any replacement thereof and to the products of any such replacement:

(iii)

in so far as the complete specification claims any process for the making or treating of any article or any method or process of testing, any particular plant, machinery, or apparatus which during the said interim period has been manufactured or installed by him or exclusively or mainly used by him for carrying on the method or process may at all times be so used or continue to be so used and the products thereof may at all times be used or sold and so that in the event of any such plant, machinery, or apparatus being impaired by wear or tear or accidentally destroyed a like licence shall extend to such method or process when carried on in any replacement of such plant, machinery, or apparatus and to the products of the process so carried on:

(b)

in this regulation the term article has the meaning specified in section 2 of the Patents Act 1953, and the term interim period means the period between the date when the patent ceased to have effect and the date of the order.

Part 17 Restoration of lapsed applications for patents where patent not sealed

90 Application

(1)

An application under section 36 of the Act for the sealing of a patent shall be made in form 36.

(2)

Evidence in support of the statements made in the application shall be filed within 3 months of the date of the application.

91 Preliminary consideration by Commissioner

(1)

If upon consideration of the evidence the Commissioner is not satisfied that a prima facie case for an order under section 36 of the Act has been made out he shall notify the applicant accordingly, and unless within 1 month from the notification the applicant requests to be heard in the matter, the Commissioner shall refuse the application.

(2)

If the applicant requests a hearing within the time allowed, the Commissioner, after giving the applicant an opportunity of being heard, shall determine whether the application may proceed to advertisement or whether it shall be refused.

92 Opposition

(1)

At any time within 2 months of the advertisement of an application under section 36(3) of the Act any person may give notice of opposition thereto in form 37.

(2)

Such notice shall be accompanied by a copy thereof together with a statement (in duplicate) setting out fully the nature of the opponent’s interest and the facts upon which he relies.

(3)

A copy of the notice and statement shall be sent by the Commissioner to the applicant.

(4)

Upon notice of opposition being given the provisions of regulations 49 to 54 shall apply.

93 Action on decision in favour of applicant

If the Commissioner decides in favour of the applicant, he shall notify the applicant accordingly and require him to file a memorandum in form 38 together with a request in form 24.

94 Order of Commissioner for sealing patent to be subject to provision

Every order of the Commissioner under section 36 of the Act for the sealing of a patent shall be subject to the same provision for the protection of persons who have begun to avail themselves of the invention between the date when the time allowed by or under section 27 of the Act for making the prescribed request for sealing expired, and the date of the application for an order for sealing, as are specified in regulation 89 for the protection of persons who have begun to avail themselves of a patented invention between the date when the patent ceased to have effect and the date of the application for restoration, there being substituted for references to the date when the patent ceased to have effect references to the date when the time allowed by or under section 27 of the Act for making the request for sealing expired.

Part 18 Restoration of application where complete specification not accepted

95 Application

(1)

An application under section 37 of the Act for restoration of an application and extension of the period for complying with the requirements imposed on the applicant by or under the Act shall be made in form 39.

(2)

Evidence in support of the statements made in the application shall be filed within 3 months of the date of the application.

96 Preliminary consideration by Commissioner

(1)

If upon consideration of the evidence the Commissioner is not satisfied that a prima facie case for an order under section 37 of the Act has been made out, he shall notify the applicant accordingly; and unless within 1 month from the notification the applicant requests to be heard in the matter, the Commissioner shall refuse the application.

(2)

If the applicant requests a hearing within the time allowed, the Commissioner, after giving the applicant an opportunity of being heard, shall determine whether the application may proceed to advertisement or whether it shall be refused.

97 Opposition

(1)

At any time within 2 months of the advertisement of the application under section 37(3) of the Act any person may give notice of opposition thereto in form 40.

(2)

Such notice shall be accompanied by a copy thereof together with a statement (in duplicate) setting out fully the nature of the opponent’s interest and the facts upon which he relies.

(3)

A copy of the notice and of the statement shall be sent by the Commissioner to the applicant.

(4)

Upon notice of opposition being given the provisions of regulations 49 to 54 shall apply.

98 Order of Commissioner restoring application to be subject to provisions

Every order of the Commissioner under section 37 of the Act for the restoration of an application and extension of the period for complying with the requirements imposed on the applicant by or under the Act shall be subject to the same provisions for the protection of persons who have begun to avail themselves of the invention between the date when the period prescribed by section 19 of the Act, and every extension of that period granted under that section or under section 93 of the Act for complying with all the requirements imposed on the applicant by or under the Act expired, and the date of the application for an order under section 37 of the Act, as are specified in regulation 89 for the protection of persons who have begun to avail themselves of a patented invention between the date when the patent ceased to have effect and the date of the application for restoration, there being substituted for references to the date when the patent ceased to have effect references to the date when the period prescribed by section 19 of the Act and every extension of that period granted under that section or under section 93 of the Act for complying with all the requirements imposed on the applicant by or under the Act expired.

Part 19 Amendment of specification or application for patent

99 Application to amend accepted complete specification

(1)

An application to the Commissioner for leave to amend an accepted complete specification under section 38 of the Act shall be made in form 41 and, subject to the proviso to section 38(3) of the Act, shall be advertised by publication of the application and the nature of the proposed amendment in the Journal, and in such other manner, if any, as the Commissioner may in each case direct.

(2)

Unless the Commissioner otherwise directs, an application or proposal for amendment of an accepted complete specification shall be accompanied by a copy of the specification and drawings clearly showing in red ink the amendment sought.

100 Opposition

(1)

Any person wishing to oppose the application shall, within 1 month from the date of the advertisement in the Journal, or such further period not exceeding 3 months from the said date as the Commissioner may in special cases allow, give notice to the Commissioner in form 42.

(2)

Such notice shall be accompanied by a copy thereof and a statement (in duplicate) setting out fully the nature of the opponent’s interest, the facts upon which he relies, and the relief which he seeks. A copy of the notice and of the statement shall be sent by the Commissioner to the applicant.

(3)

Upon such notice of opposition being given and a copy thereof sent to the applicant the provisions of regulations 49 to 54 shall apply.

101 Application to amend unaccepted complete specification

An application for leave to amend a complete specification which has not been accepted, except when the amendment is made to meet an objection contained in an examiner’s report, shall be made in form 43.

102 Application to amend application for patent

An application for leave to amend an application for a patent, except when the amendment is made to meet an objection made by the Patent Office, shall be made in form 44.

103 New specification and drawings as amended may be required

Where leave to amend a specification is given, the applicant shall, if the Commissioner so requires and within a time to be fixed by him, file a new specification and drawings as amended, which shall be prepared in accordance with regulations 10 and 30 to 35.

Part 20 Revocation and surrender of patent

104 Application for revocation

(1)

An application for the revocation of a patent under section 42 of the Act shall be made in form 45, and shall be accompanied by a copy thereof and a statement (in duplicate) setting out fully the nature of the applicant’s interest, the facts upon which he relies, and the relief which he seeks.

(2)

A copy of the application and of the statement shall be sent by the Commissioner to the patentee.

105 Opposition procedure

Upon any such application being made and a copy thereof sent to the patentee, the provisions of regulations 49 to 54 shall apply with the substitution of references to the patentee for references to the applicant and of references to the applicant for references to the opponent.

106 Application for surrender

If the patentee offers under section 43 of the Act to surrender his patent, the Commissioner, in deciding whether costs should be awarded to the applicant for revocation, shall consider whether proceedings might have been avoided if the applicant had given reasonable notice to the patentee before the application was filed.

107 Form of offer to surrender a patent

A notice of an offer by a patentee under section 43 of the Act to surrender his patent shall be given in form 46, and shall be advertised by the Commissioner in the Journal.

108 Opposition

(1)

At any time within 1 month from the advertisement any person may give notice of opposition to the Commissioner in form 47, which shall be accompanied by a copy thereof and a statement (in duplicate) setting out fully the nature of the opponent’s interest, the facts upon which he relies, and the relief which he seeks.

(2)

A copy of the notice and of the statement shall be sent by the Commissioner to the patentee.

(3)

Upon such notice of opposition being given and a copy thereof sent to the patentee, the provisions of regulations 49 to 54 shall apply with the substitution of references to the patentee for references to the applicant.

Part 21 Voluntary endorsement of patents licences of right

109 Application under section 44(1) of the Act

An application under section 44(1) of the Act for endorsement of a patent “licences of right” shall be made in form 48, and shall be accompanied by evidence verifying the statement in the application, and by the letters patent.

110 Applications under section 44(2)(a) and (b) of the Act

(1)

An application under paragraph (a) or paragraph (b) of section 44(2) of the Act for settlement of the terms of a licence under a patent endorsed “licences of right” shall be made in form 49, and shall be accompanied by a copy thereof and a statement (in duplicate) setting out fully the facts upon which the applicant relies and the terms of the licence which he is prepared to accept or grant.

(2)

A copy of the application and statement shall be sent by the Commissioner to the patentee or the person requiring a licence, as the case may be, who, if he does not agree to the terms set out in the statement, shall within 6 weeks of the receipt of those copies file a counterstatement setting out fully the grounds of the objection and send a copy thereof to the applicant.

(3)

The Commissioner shall give such directions as he may think fit with regard to the filing of evidence and the hearing of the parties.

111 Cancellation of endorsement under section 45(1) of the Act

An application under section 45(1) of the Act for the cancellation of an endorsement shall be made in form 50, and shall be accompanied by evidence verifying the statement in the application, and by a memorandum in form 28 with fees to the amount of the balance of all renewal fees which would have been payable if the patent had not been endorsed.

112 Cancellation of endorsement under section 45(2) of the Act

An application under section 45(2) of the Act for the cancellation of an endorsement shall be made in form 51 2 months after the patent has been endorsed, and shall be accompanied by a copy and a statement (in duplicate) setting out fully the nature of the applicant’s interest and the facts upon which he relies.

113 Advertisement and opposition

(1)

Every application under subsection (1) or subsection (2) of section 45 of the Act shall be advertised in the Journal, and the period within which notice of opposition to the cancellation of an endorsement may be given under section 45(5) of the Act shall be 3 months after the advertisement.

(2)

Such notice shall be given in form 52, and shall be accompanied by a copy thereof and a statement (in duplicate) setting out fully the facts upon which the opponent relies and, in the case of opposition to an application under section 45(1) of the Act, the nature of his interest.

(3)

A copy of the notice and of the statement shall be sent by the Commissioner to the applicant for cancellation of the endorsement, and thereafter the Commissioner may give such directions as he may think fit with regard to the subsequent procedure.

114 Balance of renewal fees payable on cancellation

Where the Commissioner cancels the endorsement pursuant to section 45(3) of the Act, the patentee shall within 1 month from the cancellation of the endorsement file a memorandum in form 28 with fees to the amount of the balance of all renewal fees which would have been payable if the patent had not been endorsed.

Part 22 Compulsory licence, compulsory endorsement of patent licences of right, and revocation

115 Application under section 46 of the Act

An application under section 46 of the Act for a licence under a patent or for endorsement of a patent “licences of right” shall be made in form 53.

116 Application under section 49(1) of the Act

An application under section 49(1) of the Act for the endorsement of a patent “licences of right” or for the grant of a licence under a patent to a specified person shall be made in form 54.

117 Application under section 50 of the Act

An application under section 50 of the Act for the revocation of a patent shall be made in form 55.

118 Evidence

An application under section 46, section 49, or section 50 of the Act shall be accompanied by evidence verifying the statements in the application.

119 Preliminary consideration by Commissioner

(1)

If upon consideration of the evidence the Commissioner is not satisfied that a prima facie case has been made out for the making of an order, he shall notify the applicant accordingly, and unless within 1 month the applicant requests to be heard in the matter the Commissioner shall refuse the application.

(2)

If the applicant requests a hearing within the time allowed, the Commissioner, after giving the applicant an opportunity of being heard, shall determine whether the application may proceed to advertisement or whether it shall be refused.

(3)

If the Commissioner allows the application to proceed to advertisement, he shall direct the applicant to serve copies of the application and of the evidence filed in support thereof upon the patentee and any other persons appearing from the register to be interested in the patent and upon any other person on whom, in his opinion, copies should be so served.

120 Opposition

(1)

The time within which notice of opposition under subsection (3) of section 52 of the Act may be given shall be 2 months after the advertisement of the application under subsection (2) of that section.

(2)

Such notice shall be given in form 56, and evidence verifying the statements made therein shall be filed within 1 month of the filing of the opposition.

(3)

The opponent shall serve a copy of the notice and of the evidence on the applicant.

(4)

Thereafter the Commissioner may give such directions as he may think fit with regard to the subsequent procedure.

121 Application under section 51 of the Act

(1)

An application under section 51 of the Act for a licence under a patent shall be made in form 57.

(2)

The procedure to be followed in connection with any such application shall be the same as that prescribed in regulations 118 to 120 for an application under section 46 of the Act.

Part 23 Directions to co-owners

122 Application under section 64(1) of the Act

(1)

An application for directions under section 64(1) of the Act by a co-grantee or co-proprietor of a patent shall be made in form 58, and shall be accompanied by a statement setting out fully the facts upon which the applicant relies and the directions which he seeks.

(2)

A copy of the application and of the statement shall be sent by the Commissioner to each other person registered as grantee or proprietor of the patent, and the applicant shall supply a sufficient number of copies for that purpose.

(3)

Thereafter the Commissioner may give such directions as he may think fit with regard to the subsequent procedure.

123 Application under section 64(2) of the Act

(1)

An application for directions under section 64(2) of the Act by a co-grantee or co-proprietor of a patent shall be made in form 59, and shall be accompanied by a copy thereof and a statement (in duplicate) setting out fully the facts upon which the applicant relies, and the directions which he seeks.

(2)

A copy of the application and of the statement shall be sent by the Commissioner to the person in default.

(3)

Thereafter the Commissioner may give such directions as he may think fit with regard to the subsequent procedure.

Part 24 Disputes as to inventions made by employees

124 Application under section 65(1) of the Act

(1)

An application under section 65(1) of the Act to determine a dispute as to rights in an invention shall be made in form 60, and shall be accompanied by a copy thereof together with a statement (in duplicate) setting out fully the facts of the dispute and the relief which is sought.

(2)

A copy of the application and of the statement shall be sent by the Commissioner to the other party to the dispute, who within 3 months after receipt thereof shall file a counterstatement (in duplicate) setting out fully the grounds on which he disputes the right of the applicant to the relief sought.

(3)

The Commissioner shall send a copy of this counterstatement to the applicant, and thereafter, subject to such directions as the Commissioner may think fit to give, the provisions of regulations 50 to 54 shall apply with the substitution of references to the applicant for references to the opponent and references to the other party for references to the applicant.

Part 25 Register of patents

125 Register to record grant of patents

(1)

Upon the sealing of a patent the Commissioner shall cause to be entered in the register the name, address, and nationality of the patentee as the grantee thereof, the title of the invention, the date of the patent, and the date of the sealing thereof, together with the address for service.

(2)

The Commissioner may at any time enter in the register such other particulars as he may deem necessary.

126 Alteration of entries

(1)

A request by a patentee for the alteration of a name, nationality, or address, or address for service entered in the register in respect of his patent shall be made in form 61.

(2)

Before acting on a request to alter a name or nationality, the Commissioner may require such proof of the alteration as he may think fit.

(3)

If the Commissioner is satisfied that the request may be allowed, he shall cause the register to be altered accordingly.

127 Registration of assignments, etc

(1)

An application for the registration of the title of any person becoming entitled by assignment, transmission, or operation of law to a patent or to a share in a patent, or becoming entitled by virtue of a mortgage, licence, or other instrument to any other interest in a patent, shall be made,—

(a)

in the case of an application under section 84(1) of the Act, by the person becoming so entitled, in form 62 or form 63, as the case may be:

(b)

in the case of an application under section 84(2) of the Act, by the assignor, mortgagor, licensor, or other party conferring the interest, in form 64 or form 65, as the case may be.

(2)

Application may be made in form 66 for entry in the register of notification of any other document purporting to affect the proprietorship of a patent.

128 Copies of documents

(1)

An official or certified copy of a document which is referred to in an application under regulation 127 and is a matter of record in New Zealand shall be produced to the Commissioner with the application.

(2)

Unless the Commissioner otherwise directs, the original of any other document so referred to shall be produced to him with the application and a certified copy of any such document shall be filed therewith.

129 Public inspection of register, etc

There shall be open for inspection without fee at any convenient time,—

(a)

the register;

(b)

copies of deeds, licences, and other documents affecting the proprietorship in any patent, or in any licence thereunder, which are supplied to the Commissioner under regulations 127 and 128;

(c)

specifications and abridgments of specifications (New Zealand and foreign) filed in the Patent Office library;

(d)

the register of patent attorneys; and

(e)

except as otherwise provided in the Act or these regulations, all applications, specifications, drawings, requests, notices, and other documents filed, made, or given under the Act or these regulations in respect of any patent, any application for patent, or in any proceedings relating to any such matters.

130 Payment of renewal fees to be entered

Upon the issue of a certificate of payment under regulation 76, the Commissioner shall enter in the register the fact that the fee has been paid, and the date of payment as stated on the certificate.

131 Entry of claim arising from special provision in order for extension of term of patent

Where an order for the extension of the term of a patent under section 31, section 32, or section 33 of the Act contains a provision that persons claiming to be deemed to have acted with the licence of the patentee or exclusive licensee shall make application for entry of their claim upon the register, the application shall be made in form 67.

132 Application for dispensing with probate or letters of administration

An application under section 86 of the Act for leave to dispense with the production of probate or letters of administration shall be made in form 68, and shall be supported by such evidence as may be required by the Commissioner.

Part 26 Correction of errors

133 Application

A request under section 88(3) of the Act for the correction of a mistake in the register, in any patent, or application for a patent, or any document filed in pursuance of such an application, or in proceedings in connection with any patent, shall be made in form 69.

134 Advertisement

Where the Commissioner requires notice of the nature of the proposed correction to be advertised, the advertisement shall be made by publication of the request and the nature of the proposed correction in the Journal, and in such other manner (if any) as the Commissioner may direct.

135 Opposition

(1)

Any person may, at any time within 1 month from the date of the advertisement in the Journal, give notice to the Commissioner of opposition to the proposed correction in form 70.

(2)

Every such notice shall be accompanied by a copy thereof and a statement (in duplicate) setting out fully the nature of the opponent’s interest, the facts on which he relies, and the relief which he seeks.

(3)

A copy of the notice and of the statement shall be sent by the Commissioner to the person making the request, and thereafter the provisions of regulations 49 to 54 shall apply.

136 Hearing

Where in accordance with section 88(4) of the Act a hearing is appointed, at least 14 days’ notice of the appointment shall be given to the patentee or the applicant for a patent and to any other person to whom notice of the proposed correction has been given by the Commissioner.

Part 27 Certificates and information

137 Request for certificate

A request for a certificate of the Commissioner for the purposes of section 89(1) of the Act shall be made in form 71.

138 Certified copies of entries, etc

The Commissioner may, on payment of the prescribed fees, furnish certified copies of any entry in the register, or certified copies of, or extracts from, patents, specifications, and other public documents in the Patent Office, or of or from registers and other records kept there, and may give certificates as to any matter relating to the Act or these regulations.

139 Request for information

(1)

A request under section 90 of the Act for information relating to any patent or application for a patent may be made—

(a)

as to when a complete specification following a provisional specification has been filed or when a period of 15 months from the date of the application has expired and a complete specification has not been filed;

(b)

as to when a complete specification is or will be published, or when an application for a patent has become void;

(c)

as to when a patent has been sealed or when the time for requesting sealing has expired;

(d)

as to when a renewal fee has been paid;

(e)

as to when a patent has expired;

(f)

as to when an entry has been made in the register or application has been made for the making of the entry; or

(g)

as to when any application is made or action taken involving an entry in the register or advertisement in the Journal.

(2)

Any such request shall be made in form 72, and a separate form shall be used in respect of each of the said matters.

140 Lost patent

An application under section 92 of the Act for a further patent to be sealed shall be made in form 73 and shall be accompanied by evidence setting out fully and verifying the circumstances in which the patent was lost or destroyed, or cannot be produced.

Part 28 Evidence and attendance of witnesses before Commissioner

141 Form of evidence

Where under these regulations evidence is required to be filed it shall be by statutory declaration or affidavit unless otherwise expressly provided in these regulations.

142 Preparation

(1)

The statutory declarations and affidavits required by these regulations, or used in any proceedings thereunder, shall be headed in the matter or matters to which they relate, and shall be divided into paragraphs consecutively numbered, and each paragraph shall so far as possible be confined to one subject.

(2)

Every statutory declaration or affidavit shall state the description and true place of abode of the person making the same, and shall be written, typed, lithographed, or printed.

143 Manner of making declarations, etc

(1)

The statutory declarations and affidavits shall be made and subscribed as follows:

(a)

if made in New Zealand, in the manner required by the Oaths and Declarations Act 1957;

(b)

if made in any other part of the Commonwealth or in the Republic of Ireland, before any court, Judge, Commissioner of Oaths, Justice of the Peace, or any person authorized by law to administer an oath there for the purpose of a legal proceeding, or before any Commonwealth representative; and

(c)

if made elsewhere, before a Commonwealth representative or a Notary Public, or before a Judge or Magistrate.

(2)

For the purposes of this regulation the expression Commonwealth representative means any Ambassador, High Commissioner, Minister, Chargé d’Affaires, Consular Officer, Trade Commissioner, or Tourist Commissioner of a Commonwealth country (including New Zealand); and includes any person lawfully acting for any such officer; and also includes any diplomatic secretary on the staff of any such Ambassador, High Commissioner, Minister, or Chargé d’Affaires.

Regulation 143(1)(a): amended, on 1 August 2007, by section 216 of the Evidence Act 2006 (2006 No 69).

144 Recognition of signatures on documents

Any document purporting to have affixed, impressed, or subscribed thereto or thereon the seal or signature of any person authorized by regulation 143 to take a declaration or affidavit, in testimony that the declaration or affidavit was made and subscribed before him, may be admitted by the Commissioner without proof of the genuineness of the seal or signature or of the official character of the person or his authority to take the declaration or affidavit.

145 Further evidence

At any stage of any proceedings before the Commissioner he may direct that such documents, information, or evidence as he may require shall be furnished within such period as he may fix.

146 Issue of summons

In any proceedings before the Commissioner under the Act or these regulations, the Commissioner may summon any person to appear and give evidence before him, or to appear and produce any books, deeds, papers, or other writings in his possession or under his control relating to the matter of the said proceedings. Every summons issued in pursuance of this regulation shall be in form 74.

147 Penalty for non-compliance with summons

Any person upon whom any such summons is served, and to whom at the same time payment or tender of his expenses is made in accordance with the scale referred to in regulation 148 and who fails to attend or to give evidence or to produce any such books, deeds, papers, or other writings in accordance with the terms of the summons, shall be liable on conviction to a fine not exceeding £20 for each such default.

Regulation 147: amended, on 1 July 2013, by section 413 of the Criminal Procedure Act 2011 (2011 No 81).

148 Expenses of witness

Witnesses in any such proceedings shall be entitled to receive payment for expenses in accordance with the scale of allowances for the time being payable to witnesses for attendance in proceedings in a District Court. All payments made in pursuance of this regulation shall be payable by the party on whose behalf the witness is summoned, or by any or all of the parties to the proceedings in such proportions as the Commissioner decides.

Regulation 148: amended, on 1 April 1980, pursuant to section 18(2) of the District Courts Amendment Act 1979 (1979 No 125).

149 Place of hearings

(1)

Except as provided in subclause (2), every hearing before the Commissioner shall be at Wellington.

(2)

One or more of the parties may, not later than 14 days before the date appointed for the hearing, apply to the Commissioner to conduct the hearing at some other place in New Zealand. The Commissioner may in his discretion, on payment by the party making the application of such sum to cover expenses and subject to such conditions as to notice and costs as the Commissioner thinks fit, conduct the hearing at the place named in the application.

(3)

Where an application under subclause (2) is not made by all the parties to the proceedings, the Commissioner shall not decide the application without giving the parties an opportunity to be heard.

Part 29 Applications to and orders of court

150 Service of copy of application on Commissioner

Where an application to the court under section 87 of the Act for rectification of the register has been made, the applicant shall forthwith serve an office copy of the application on the Commissioner, who shall enter a notice of the application in the register.

151 Action consequent upon court order

Where any order has been made by the court under the Act revoking a patent or extending the term of a patent, or allowing a patentee to amend his specification or affecting the validity or proprietorship of a patent or any rights thereunder, the person in whose favour the order has been made shall file an application in form 75 accompanied by a sealed duplicate of the order or a certified copy of the order, and thereupon the specification shall be amended or the register rectified or altered, as the case may be.

Part 30 Patent attorneys

152 Register of patent attorneys

A register of patent attorneys shall be kept by the Commissioner subject to the provisions of the Act and these regulations and shall contain the full names of all patent attorneys who are registered under the Act, and in respect of each patent attorney so registered shall, in addition, record—

(a)

his business address;

(b)

the date of registration;

(c)

any honours, degrees, memberships, or other additions which the Commissioner may consider worthy of mention; and

(d)

the payment of the prescribed annual practising fees.

153 Publication of entries

The Commissioner shall publish in the Journal at least once in each year a list of all patent attorneys who have paid for that year the prescribed annual renewal fee, together with their business addresses.

154 Qualification for registration

(1)

Any person shall be entitled to be registered as a patent attorney who,—

(a)

is a British subject or a citizen of the Republic of Ireland;

(b)

is not less than 21 years of age;

(c)

is of good character;

(d)

has passed the Patent Attorneys Examination as hereinafter prescribed; and

(e)

not being a solicitor of the High Court of New Zealand or a patent agent or patent attorney registered in the United Kingdom or in the Commonwealth of Australia, has been employed for a period or periods totalling not less than 3 years—

(i)

by a patent attorney in New Zealand; or

(ii)

in the Patent Office; or

(iii)

in some other employment which, in any particular case in the opinion of the Commissioner and the Council of the New Zealand Institute of Patent Attorneys Incorporated, affords substantially similar practical experience to that given by either of the last 2 mentioned forms of employment:

provided that if the Commissioner and the Council are unable to agree, the Minister shall decide as to the adequacy of the employment.

(2)

On being satisfied that an applicant for registration possesses the required qualifications and on payment of the prescribed registration fee, the Commissioner shall enter the name of the applicant in the register of patent attorneys with other appropriate entries, and shall issue to the applicant a certificate of his registration as a patent attorney.

Regulation 154(1)(e): amended, on 1 January 2004, by section 48(3) of the Supreme Court Act 2003 (2003 No 53).

155 Examination

An examination to be called the Patent Attorneys Examination shall be conducted when required as hereinafter set forth jointly by the Commissioner and the Council of the New Zealand Institute of Patent Attorneys Incorporated.

156 Persons entitled to sit examination

No person shall present himself for the examination unless he satisfies the Commissioner and the Council of the New Zealand Institute of Patent Attorneys Incorporated that he has passed the New Zealand School Certificate Examination or the New Zealand University Entrance Examination or an examination which in the opinion of the Commissioner and the Council is equivalent thereto or has been accredited for entrance to the University of New Zealand:

provided that if the Commissioner and the Council are unable to agree whether an examination is equivalent, the Minister shall decide.

157 Entries for examination and appointment of examiners

(1)

Any person desiring to present himself for examination in any subject shall notify the Commissioner and pay the fee prescribed in Schedule 1 not later than 1 February in the year in which he desires to be examined, or not later than such other day in that year (not being a day earlier than 1 February) as the Commissioner may advertise in the Journal.

(2)

On receiving such notice the Commissioner shall inform the Council of the New Zealand Institute of Patent Attorneys Incorporated, and the Commissioner and the Council shall jointly arrange the time and conduct of the examination.

(3)

The papers for the examination shall be set and marked by 2 examiners, of whom one shall be the Commissioner and one a registered patent attorney nominated by the Council.

(4)

If the 2 examiners cannot agree on any matter, the Commissioner and the Council shall jointly appoint a third examiner in respect of that matter, which shall be determined by the 3 examiners or by a majority of them.

(5)

If the Commissioner and the Council cannot agree on the appointment of a third examiner, the Minister shall appoint him.

Regulation 157: replaced, on 1 January 1973, by regulation 2 of the Patents Regulations 1954, Amendment No 2 (SR 1972/259).

158 Subjects of examination

(1)

The examination shall be conducted by means of written papers on the following subjects:

(a)

the New Zealand law and practice relating to patents and designs—2 papers each of 3 hours:

(b)

the New Zealand law and practice relating to trade marks—1 paper of 3 hours:

(c)

foreign patent law—1 paper of 3 hours:

(d)

the preparation of specifications for New Zealand patents—1 paper of 4 hours:

(e)

patent attorney practice in New Zealand, including the interpretation and criticism of patent specifications—1 paper of 4 hours.

(2)

Every candidate who before the commencement of this regulation has been credited with a pass in the subject foreign patent law and practice shall be deemed to have been credited with a pass in the subject specified in paragraph (c) of subclause (1).

(3)

Every candidate who before the commencement of this regulation has been credited with a pass in the subject patent attorney practice shall be deemed to have been credited with a pass in each of the subjects specified in paragraphs (d) and (e) of subclause (1).

Regulation 158: replaced, on 1 January 1973, by regulation 3 of the Patents Regulations 1954, Amendment No 2 (SR 1972/259).

159 Rules for examination

(1)

No candidate shall present himself for examination in more than 3 subjects in any one year.

(2)

Where a candidate has been credited with a pass in a single subject only in any one year, that credit shall lapse if the candidate fails to complete all the subjects of the examination by the end of the fifth year after the year in which he was credited with that subject.

(3)

Notwithstanding subclause (2), the Commissioner may allow the candidate to be credited with that subject for a further period not exceeding 2 years if the candidate applies for the credit before the end of the seventh year after the year in which he was credited with that subject and the Commissioner is satisfied that the candidate has pursued his studies with diligence.

(4)

No candidate shall present himself for examination in the subjects specified in paragraphs (d) and (e) of subclause (1) of regulation 158 until he has been credited with a pass in the subject specified in paragraph (a) of that subclause.

Regulation 159: replaced, on 1 January 1973, by regulation 4 of the Patents Regulations 1954, Amendment No 2 (SR 1972/259).

160 Requirements for pass

To pass in a subject having only 1 paper a candidate must obtain not less than 50% of the marks for that paper, and to pass in a subject having 2 papers he must obtain not less than 50% of the aggregate of the marks for both papers.

161 Renewal of registration

Every patent attorney shall on 1 January in each year pay to the Commissioner the prescribed fee for the renewal of his registration. If the fee is not paid within 1 month from the date aforesaid, the Commissioner may send to the patent attorney at his registered address a notice requiring him, on or before a day to be named in the notice, to pay his annual renewal fee; and, if the patent attorney does not within 1 month from the day named in the notice pay the renewal fee so due from him, the Commissioner may delete his name from the register of patent attorneys:

provided that the name of the person deleted from the register of patent attorneys under this regulation may be restored to the register on payment of the fee due from him together with the additional fee prescribed in Schedule 1.

162 Amendment of entries in register of patent attorneys

The Commissioner may from time to time amend the register of patent attorneys by—

(a)

deleting the name of any person who is dead:

(b)

inserting any alteration in the name or address of any person:

(c)

deleting any entry which is proved to his satisfaction to have been incorrectly or fraudulently inserted therein:

(d)

deleting the name of any person who has ceased to practice as a patent attorney, upon request by that person:

provided that the name of any person deleted from the register of patent attorneys pursuant to this paragraph may be restored to that register, subject to the payment of the prescribed registration fee, when that person satisfies the Commissioner that he has resumed the practice of a patent attorney.

163 Evidence

In the execution of his duties with reference to the registration of patent attorneys the Commissioner shall, subject to these regulations, in each case act on such evidence as appears to him sufficient.

Part 31 Miscellaneous provisions

164 Particulars of patent applications which may be published

The Commissioner shall, in respect of applications for patents (whether filed before or after the commencement of the Act), publish in the Journal as soon as convenient the following particulars so far as they are known to him:

(a)

the number and date of the application;

(b)

the name of the applicant;

(c)

the name of the inventor, if known;

(d)

the short title of the invention, with the provisional classification thereof; and

(e)

the convention date and country, if applicable.

165 Signature of documents

(1)

A document purporting to be signed for or on behalf of a partnership shall contain the names of all the partners in full and shall be signed by any qualified partner, or by any other person who satisfies the Commissioner that he is authorized to sign the document.

(2)

A document purporting to be signed for or on behalf of a body corporate shall be signed by a director or by the secretary or other principal officer of the body corporate, or by any other person who satisfies the Commissioner that he is authorized to sign the document.

166 Exercise of discretionary power by Commissioner

The Commissioner shall, before exercising adversely to any party any discretionary power given him by the Act or these regulations, afford to that party an opportunity of being heard. In such a case the Commissioner may require the party to put his case before the Commissioner in writing. Thereupon the Commissioner shall give not less than 10 days’ notice to the party of the time when he may be heard, and shall hear the party, if he so desires. The decision or determination of the Commissioner in the exercise of any such discretionary power as aforesaid shall be notified by him to the party, and to any other person who appears to him to be affected thereby.

167 Amendment of documents

(1)

In any proceedings before the Commissioner, if he thinks fit,—

(a)

any document filed in the proceedings for the amendment of which no express provision is made in the Act or these regulations may be amended during the course of the proceedings:

(b)

any irregularity in procedure may be rectified.

(2)

Any approval given by the Commissioner under this section may be on such terms as he may direct, including, if he thinks fit, the payment of a fee not exceeding $50.

Regulation 167(2): amended, on 1 October 1987, by regulation 2(1) of the Patents Regulations 1954, Amendment No 11 (SR 1987/227).

168 Power of Commissioner to extend times

The times prescribed by these regulations for doing any act, or taking any proceeding thereunder, other than the times prescribed by regulations 68, 81(1), 87(1), 92(1), 97(1), 108(1), 113(1), and 135(1), may be extended by the Commissioner, if he thinks fit, upon such notice to the parties and upon such terms as he may direct, and such extension may be granted although the time has expired for doing the act or taking the proceeding. An application for an extension of time under this regulation shall be made in form 76.

169 Power of Commissioner to waive requirements

(1)

Where, under these regulations, any person is required to do any act or thing, or any document or evidence is required to be produced or filed, the Commissioner may, upon the production of such evidence and subject to such terms and conditions as he thinks fit, modify or dispense with the doing of the act or thing or the production or filing of the document or evidence if he is satisfied that it is reasonable so to do.

(2)

The Commissioner may allow an application for a patent or a provisional or complete specification, although not in accordance with these regulations, to be left on such terms and conditions as he thinks fit. In any such case the Commissioner shall require the applicant to comply with these regulations within the time specified by him. Until the prescribed requirements are complied with no further action shall be taken by the Commissioner in respect of the application.

(3)

The Commissioner may dispense with any fee payable in respect of any application under this regulation if he is satisfied that the necessity for the application arises out of the coming into force of the Act or of these regulations.

170 Destruction of records

(1)

Where under section 9(2) of the Act an application for a patent has been deemed to be abandoned for a continuous period of 6 years, the Commissioner may, at the expiration of that period, destroy the application and all or any of the file records in respect of the said application, including the specification and drawings (if any) accompanying or left in connection with the said application.

(2)

Where under section 19 of the Act an application for a patent remains void for a continuous period of 6 years, or where a patent remains unsealed for a period of 6 years after the last date on which it could lawfully be sealed, or where the prescribed renewal fees in respect of a patent remain unpaid for a period of 6 years after the due date of payment, or where a period of 6 years has elapsed since the expiration of the patent and any extension thereof, the Commissioner, at the expiration in each case of the said period of 6 years, may destroy the relevant application and all or any of the file records in respect of the said application or patent except, in the case of an application which is open to public inspection under the Act, the specifications, drawings, and office search data in respect thereof.

Part 32 Revocations and savings

171 Revocations and savings

(1)

The regulations specified in Schedule 5 are hereby revoked.

(2)

Without limiting the provisions of the Interpretation Act 1999 it is hereby declared that the revocation of any provision by these regulations shall not affect any document made or any thing whatsoever done under the provision so revoked or under any corresponding former provision, and every such document or thing, so far as it is subsisting or in force at the time of the revocation and could have been made or done under these regulations, shall continue and have effect as if it had been made or done under the corresponding provision of these regulations and as if that provision had been in force when the document was made or the thing was done.

(3)

Notwithstanding anything in regulation 73 or in Schedule 4, and notwithstanding the revocation of the Patents Amending Regulations 1951 (SR 1951/185), the renewal fees to keep in force for the full term thereof patents granted upon applications made before 1 September 1951 shall be in accordance with regulation 3 of the said Patents Amending Regulations 1951, and the provisions of that regulation shall continue to apply to the said patents.

Regulation 171(2): amended, on 1 November 1999, pursuant to section 38(1) of the Interpretation Act 1999 (1999 No 85).

Schedule 1 Fees

r 3

Schedule 1: replaced, on 1 July 1999, by regulation 3 of the Patents Amendment Regulations 1999 (SR 1999/154).

ItemMatterFee
($)
1On filing provisional specification50.00
2On filing complete specification250.00
3Application to amend complete specification (whether before or after acceptance)60.00
4Amendment of patent under section 28 of Act60.00
5Application to renew patent: fourth year170.00
6Application to renew patent: seventh year340.00
7Application to renew patent: tenth year540.00
8Application to renew patent: 13th year1,000.00
9Sealing of further patent under section 92 of Act30.00
10Registration as patent attorney65.00
11Annual renewal of registration as patent attorney65.00
12Restoration of registration as patent attorney65.00
13Examination for registration as patent attorney—per paper25.00
14On all notices of opposition, by opponent300.00
15On hearing by Commissioner, for each party750.00
16For all certificates, certified copies or extracts from the register30.00
17Photocopying—per page (copy by office)0.89
—per page (self service)0.18

Schedule 2 Forms

Contents

Patents Form No 1Application for patent
Patents Form No 2Convention application for a patent
Patents Form No 3Application for the grant of a patent of addition instead of an independent patent
Patents Form No 4Provisional specification
Patents Form No 5Complete specification
Patents Form No 6Declaration as to inventorship (section 10(5))
Patents Form No 7Application for extension of time for filing a complete specification
Patents Form No 8Request for the post-dating of an application under section 12(3)
Patents Form No 9Request under regulation 38 for advancement of examination
Patents Form No 10Application for extension of time under regulation 40(5), 41, 44, 58, or 59
Patents Form No 11Application under section 91(2) for the result of a search made under sections 13 and 14, or for information furnished under section 15(b)(i)
Patents Form No 12Application under section 16(2) for deletion of reference
Patents Form No 13Notice of desire for extension of the period for putting an application in order
Patents Form No 14Request for postponement of acceptance of complete specification (section 20(1))
Patents Form No 15Notice of opposition to grant of patent (section 21)
Patents Form No 16Application under section 21(2) (proviso) for an extension of the period for giving notice of opposition
Patents Form No 17Notice that hearing before the Commissioner will be attended
Patents Form No 18Request under section 23(3)
Patents Form No 19Claim under section 23(4)
Patents Form No 20Application under section 23(5)
Patents Form No 21Application under section 23(8)
Patents Form No 22Claim under section 24(1) to proceed as an applicant or co-applicant
Patents Form No 23Application for directions under section 24(5) as to proceeding with an application for a patent in case of dispute between joint applicants
Patents Form No 24Request for the sealing of a patent
Patents Form No 25Application under section 27(3) for extension of the period for making a request for the sealing of a patent
Patents Form No 26Application under section 27(4) for an extension of the period for making a request for the sealing of a patent
Patents Form No 27Application under section 28 for amendment of letters patent
Patents Form No 28Payment of renewal fee
Patents Form No 29Request for extension of the period for payment of renewal fee
Patents Form No 30Certificate of payment of renewal fee
Patents Form No 31Application under section 31, section 32, or section 33 for extension of term of patent
Patents Form No 32Notice of opposition to application for extension of term of patent
Patents Form No 33Application under section 35 for the restoration of a patent
Patents Form No 34Notice of opposition to an application under section 35 for the restoration of a patent
Patents Form No 35Additional fee on an application under section 35 for restoration of a patent
Patents Form No 36Application under section 36 for the sealing of a patent
Patents Form No 37Notice of opposition to an application under section 36 for the sealing of a patent
Patents Form No 38Additional fee on an application under section 36 for the sealing of a patent
Patents Form No 39Application under section 37 for restoration of an application
Patents Form No 40Notice of opposition to an application under section 37 for restoration of an application
Patents Form No 41Application under section 38 for amendment of a complete specification after acceptance
Patents Form No 42Notice of opposition to amendment of specification under section 38
Patents Form No 43Application for amendment of a complete specification not yet accepted
Patents Form No 44Application for amendment of an application for a patent
Patents Form No 45Application under section 42 for the revocation of a patent
Patents Form No 46Offer under section 43 to surrender a patent
Patents Form No 47Notice of opposition under section 43 to offer to surrender a patent
Patents Form No 48Voluntary application for endorsement of patent licences of right
Patents Form No 49Application under section 44(2) for settlement of terms of licence under patent endorsed licences of right
Patents Form No 50Application under section 45(1) by patentee for cancellation of endorsement of a patent licences of right
Patents Form No 51Application under section 45(2) by any person interested for cancellation of endorsement of patent licences of right
Patents Form No 52Notice of opposition by patentee or by any person interested to cancellation of endorsement of a patent licences of right
Patents Form No 53Application for compulsory licence or for compulsory endorsement licences of right
Patents Form No 54Application by government department under section 49(1)
Patents Form No 55Application under section 50 for revocation of a patent
Patents Form No 56Notice of opposition under section 52 to an application for an order under section 46, 49, 50, or 51
Patents Form No 57Application under section 51 for licence
Patents Form No 58Application for directions under section 64(1)
Patents Form No 59Application for directions under section 64(2)
Patents Form No 60Application under section 65(1) to determine a dispute between employer and employee as to rights in an invention
Patents Form No 61Request for alteration of a name or nationality or an address or an address for service in the register of patents
Patents Form No 62Application for entry of name of proprietor or co-proprietor in the register of patents
Patents Form No 63Application for entry of notice of a mortgage or licence in the register of patents
Patents Form No 64Application under section 84(2) by assignor for entry of name of proprietor or co-proprietor in the register of patents
Patents Form No 65Application under section 84(2) by mortgagor or licensor for entry of notice of a mortgage or licence in the register of patents
Patents Form No 66Application for entry of notification of document in register of patents
Patents Form No 67Application for entry in the register of patents of a claim to be deemed a licensee
Patents Form No 68Application under section 86 for leave to dispense with production of probate or letters of administration
Patents Form No 69Request for correction of error (section 88)
Patents Form No 70Notice of opposition to the correction of a clerical error
Patents Form No 71Request for certificate of Commissioner
Patents Form No 72Request for information as to a matter affecting a patent or an application therefor
Patents Form No 73Application under section 92 for letters patent
Patents Form No 74
Patents Form No 75Application for entry of order of court in the register
Patents Form No 76Application under regulation 168 for extension of time

Patents Form No 1 Application for patent

Patents Act 1953

(To be accompanied by 2 copies of either a provisional specification (patents form 4) or a complete specification (patents form 5))

Note: This is a comprehensive form and parts inappropriate to a particular application should be cancelled. In the case of an application by the inventor, only sections 1, 4, and 6 of this form are appropriate, and section 5 if a patent of addition is applied for.

1

I (or We), [insert (in full) name, address, and nationality of applicant(s)], am (or are) in possession of an invention which is described in the accompanying provisional (or complete) specification under the title [insert title of invention].

I, (or We or The said) [insert name of inventor if inventor is the applicant] claim(s) to be the true and first inventor(s) of the invention.

or

2

I (or We) believe [insert (in full) name, address, and nationality of inventor(s) if inventor is not the applicant] to be the true and first inventor of the invention, and I (or we or the said) am (or are or is) the assignee(s) of the said inventor(s) in respect of the right to make this application (or personal representative(s) of the said inventor(s)).

3

The invention or a part of the invention was communicated from abroad to me (or us or the said) [specify] by [insert (in full) name, address, and nationality of communicator].

4

I (or We) declare that to the best of my (or our) knowledge and belief the statements made above are correct and there is no lawful ground of objection to the grant of a patent to me (or us) on this application, and I (or we) pray that a patent may be granted to me (or us) for the said invention.

(Use of the invention in New Zealand before the date of the application for a patent may be a lawful ground of objection.)

5

And I (or we) request that the patent may be granted as a patent of addition to patent No [specify] (or the patent to be granted on application No [specify]).

6

And I (or we) request that all notices, requisitions, and communications relating to this application may be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

[To be signed by applicant(s).]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 2 Convention application for a patent

Patents Act 1953

(To be accompanied by 2 copies of complete specification (patents form 5))

Note: This is a comprehensive form, and parts inappropriate to a particular application should be cancelled.

1

I (or We), [insert (in full) name, address, and nationality of applicant(s)], hereby declare that an application (or applications) for protection for an invention or inventions has (or have) been made in the following country or countries and on the following official date or dates, namely:

In [insert the name of the convention country in which the first application was made] on [insert the official date of the first application in a convention country] by [Insert name of applicant and (if inventor is not the applicant) address and nationality. Particulars of any further applications should be given on the back of this form or on a separate sheet]:

In, etc

In, etc

and that the said application or each of the said applications was the first application in a convention country in respect of the relevant invention by me (or us) or by any person from whom I (or we) derive title.

2

I am (or We are) the assignee(s) of the said [Insert name of applicant and (if inventor is not the applicant) address and nationality. Particulars of any further applications should be given on the back of this form or on a separate sheet] by virtue of [give particulars of the assignment] or the personal representative(s) of the said [Insert name of applicant and (if inventor is not the applicant) address and nationality. Particulars of any further applications should be given on the back of this form or on a separate sheet].

3

I (or We) declare that to the best of my (or our) knowledge and belief there is no lawful ground of objection to the grant of a patent to me (or us) on this application, and pursuant to subsection (2) (and subsection (3)) of section 7 of the Patents Act 1953 I (or we) pray that a patent may be granted to me (or us) with priority founded on the above-mentioned application(s) in a convention country or countries as provided by subsection (4) of section 11 of that Act for the invention described in the accompanying complete specification under the title [specify].

4

And I (or we) request that the patent may be granted as a patent of addition to patent No [specify] (or the patent to be granted on application No [specify]).

5

And I (or we) request that all notices, requisitions, and communications relating to this application may be sent to [specify] at [the address must be within New Zealand] who is (or are) hereby appointed to act for me (or us).

[To be signed by applicant(s).]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 3 Application for the grant of a patent of addition instead of an independent patent

Patents Act 1953

I (or We), [state full name, address, and nationality of patentee or patentees], hereby request that patent No [specify] of which I am (or we are) the patentee(s) be revoked and that instead thereof a patent of addition to patent No [specify] of which I am (or we are) also the patentee be granted to me (or us), such patent of addition to bear the same date as the patent so revoked.

[To be signed by the patentee.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 4 Provisional specification

Patents Act 1953

(To be furnished in duplicate)

[Insert title agreeing with that in the application form.]

I (or We), [state (in full) name, address, and nationality of applicant or applicants as in application form], do hereby declare this invention to be described in the following statement: [Begin description of the invention. The continuation of the specification should be upon paper of the same size as this form on one side only, with the lines well spaced and with a margin of 2.5 cm on the left hand part of the paper. The specification and the duplicate thereof must be signed at the end].

Schedule 2 form 4: amended, on 27 March 1975, by regulation 7(a) of the Patents Regulations 1954, Amendment No 3 (SR 1975/58).

Patents Form No 5 Complete specification

Patents Act 1953

[Where priority as provided by subsection (2) or subsection (3) of section 11 of the Patents Act 1953 is desired in respect of 1 or more provisional specifications, quote number or numbers and date or dates.]

No:

Date:

(To be furnished in duplicate)

[Insert title of invention.]

I (or We), [state (in full) name, address, and nationality of applicant or applicants as in application form], hereby declare the invention, for which I (or we) pray that a patent may be granted to me (or us), and the method by which it is to be performed, to be particularly described in and by the following statement: [Begin full description of invention. The continuation of the specification should be upon paper of the same size as this form, on one side only, with the lines well spaced and with a margin of 2.5 cm on the left hand part of the paper. The completion of the description should be followed by the words “What I (or we) claim is” after which should be written the claim or claims numbered consecutively. (See note below.) The specification and the duplicate thereof must be signed at the end].

Note: The claims must relate to a single invention, must be clear and succinct, and must be fairly based on the matter disclosed in the specification. They should form in brief a clear statement of that which constitutes the invention. Applicants should be careful that their claims include neither more nor less than they desire to protect by their patent. Any unnecessary multiplicity of claims or prolixity of language should be avoided. Claims should not be made for the efficiency or advantages of the invention.

Schedule 2 form 5: amended, on 27 March 1975, by regulation 7(b) of the Patents Regulations 1954, Amendment No 3 (SR 1975/58).

Patents Form No 6 Declaration as to inventorship (section 10(5))

Patents Act 1953

I (or We), [insert name(s) of applicant(s)], hereby declare that the true and first inventor(s) of the invention disclosed in the complete specification filed in pursuance of my (or our) application(s) numbered [specify] and dated [specify] is (or are): [state name, address, and nationality of inventor or of each inventor] and that my (or our) right to apply for a patent for the invention is as follows: [this need not be filled in if the inventor(s) named above is or are an applicant or applicants, or if the right to apply is as stated on the application form].

[To be signed by applicant(s).]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 7 Application for extension of time for filing a complete specification

Patents Act 1953

I (or We) hereby, in respect of application No [specify], dated [specify], request an extension of time until [specify] in which to file a complete specification.

[To be signed by applicant or applicants, or his or their agent.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 8 Request for the post-dating of an application under section 12(3)

Patents Act 1953

I (or We) hereby request that application No [specify], filed on [date], be deemed to have been made on the following date, namely, [date].

[To be signed by applicant(s).]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 9 Request under regulation 38 for advancement of examination

Patents Act 1953

I (or We) hereby request that application No [specify], filed on [date], be advanced for examination and investigation on the following grounds: [set out grounds in full and verify by accompanying statutory declaration or other evidence to the satisfaction of the Commissioner].

[To be signed by applicant(s) or his or their agent.]

To the Commissioner
The Patents Office
Wellington C 1

Patents Form No 10 Application for extension of time under regulation 40(5), 41, 44, 58, or 59

Patents Act 1953

Application No [specify], dated:

I (or We) hereby apply for [number] month(s) extension of time within which—

(a)to remove an objection under section 14 (regulation 41, Patents Regulations 1954).
curly bracket
[Delete the words which are not applicable.]
(b)agreement to the amendment of the specification or to the insertion of a reference under regulation 40(5) or regulation 44 of the Patents Regulations 1954 may be notified.
(c)to submit an amendment under section 22 (regulation 59 of the Patents Regulations 1954).
(d)agreement to the amendment of the specification under regulation 59 of the Patents Regulations 1954 may be notified.

[To be signed by applicant or applicants, or his or their agent.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 11 Application under section 91(2) for the result of a search made under sections 13 and 14, or for information furnished under section 15(b)(i)

Patents Act 1953

I (or We) hereby request that I (or we) may be informed of the result of the search made under sections 13 and 14, and of the information furnished under section 15(b)(i), of the Patents Act 1953 in connection with application for patent No [specify].

[Insert name and full address to which information is to be sent.]

To the Commissioner
The Patent Office
Wellington C 1

(This part to be filled in at the Patent Office.)

Result of the search made under sections 13 and 14 of the Patents Act 1953 in connection with application for patent No [specify] and information furnished under section 15(b)(i) of that Act.

Specifications or other publications cited as the result of the search made under section 13Specifications cited as the result of the search made under section 14Information furnished under section 15(b)(i)
 
 

Note: Citations may be made during the examination of the specifications which are not relevant to the specification as accepted. Citations under section 13 are completed before acceptance of the specification, but citations under section 14 may be made subsequently.

Patents Form No 12 Application under section 16(2) for deletion of reference

Patents Act 1953

I (or We), [state (in full) name and address of applicant(s)] hereby apply for deletion of the reference to patent No [specify] which has been inserted in the complete specification of my (or our) (application for a) [delete the words in parentheses if a patent has been granted] patent No [specify] in pursuance of a direction under section 16(1) of the Patents Act 1953.

The facts relied upon in support of this application are [the facts must be stated fully].

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

[To be signed by applicant(s) or his or their authorized agent.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 13 Notice of desire for extension of the period for putting an application in order

Patents Act 1953

I (or We) hereby give notice that I (or we) desire the period for putting in order application No [specify] dated [specify] to be extended to [number] months from the date of filing of the complete specification.

[To be signed by applicant or applicants or his or their agent.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 14 Request for postponement of acceptance of complete specification (section 20(1))

Patents Act 1953

I (or We) hereby request a postponement of the acceptance of the complete specification of application No [specify] dated [specify] to a date not later than the expiration of [number] months from the date of filing of the complete specification.

[To be signed by applicant or applicants or his or their agent.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 15 Notice of opposition to grant of patent (section 21)

Patents Act 1953

(To be accompanied by copy, and a statement of case in duplicate)

I (or We), [state full name and address], hereby give notice of opposition to the grant of a patent upon application No [specify] applied for by [specify] upon the ground [state upon which of the grounds of opposition permitted by section 21 of the Patents Act 1953 the grant is opposed, and identify all specifications and other publications relied upon].

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

[To be signed by opponent(s).]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 16 Application under section 21(2) (proviso) for an extension of the period for giving notice of opposition

Patents Act 1953

I (or We), [state name and address], hereby apply for 1 month’s extension of the period for giving notice of opposition to the grant of letters patent in respect of application No [specify].

The circumstances in and grounds upon which this extension is applied for are as follows: [the circumstances and grounds must be stated in detail].

Communications should be sent to [specify] at [the address must be within New Zealand].

Signature:

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 17 Notice that hearing before the Commissioner will be attended

Patents Act 1953

I (or We), [state name and address], hereby give notice that the hearing fixed for the [insert date of hearing] in reference to [give particulars (ie, number of application or patent, names of parties and nature of proceedings)] will be attended by myself (or ourselves) or by some person on my (or our) behalf.

Signature:

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 18 Request under section 23(3)

Patents Act 1953

I (or We), [state (in full) name, address, and nationality of applicant or applicants for the patent], who made application No [specify] on [date] for the grant of a patent for an invention the title of which is [insert title of invention] and I (or we), [state the name, address, and nationality of the deviser or devisers if inventor is not the applicant], hereby declare that the said [insert name of deviser or devisers] is (or are) the inventor(s) in the sense of being the actual deviser(s) of (a substantial part of) the invention, and that the application for the patent is a direct consequence of his (or their) being such inventor(s), and we hereby request that the said [insert name of deviser or devisers] be mentioned as such inventor(s) in accordance with section 23 of the Patents Act 1953.

A statement setting out the circumstances upon which we rely to justify this request is attached.

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for us.

[To be signed by all the persons making the request.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 19 Claim under section 23(4)

Patents Act 1953

(To be accompanied by copy or copies as required by regulation 61 of the Patents Regulations 1954)

I, [state (in full) name, address, and nationality of the claimant], hereby declare that I am the inventor in the sense of being the actual deviser of (a substantial part of) the invention entitled [insert title of invention] in respect of which application No [specify] for a patent was made by [insert name and address of applicant or applicants for the patent] on [date], and that the application for the patent is a direct consequence of my being such inventor, and I hereby claim to be mentioned as such inventor in accordance with section 23(4) of the Patents Act 1953.

A statement setting out the circumstances upon which I rely to justify this claim is attached together with a copy (or copies) thereof as required by regulation 61 of the Patents Regulations 1954.

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me.

[To be signed by the claimant.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 20 Application under section 23(5)

Patents Act 1953

I (or We), [state (in full) name, address, and nationality of the person or persons making this application], hereby apply for an extension of time (not exceeding 1 month) for making a request under section 23(3) of the Patents Act 1953 (or a claim under section 23(4) of the Patents Act 1953) in respect of application No [specify] for a patent made by [insert name, address, and nationality of applicant or applicants for the patent] on [date] in respect of an invention the title of which is [insert title of the invention].

Communications should be sent to [specify] at [the address must be within New Zealand].

[To be signed by the person or all the persons making the application or by his or their duly authorized agent.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 21 Application under section 23(8)

Patents Act 1953

(To be accompanied by copies as required by regulation 63 of the Patents Regulations 1954)

I (or We), [state (in full) name, address, and nationality of the person or persons making this application], hereby declare that [insert the name of the person mentioned as the actual deviser] ought not to have been mentioned under section 23 of the Patents Act 1953 as the inventor in the sense of being the actual deviser of (a substantial part of) the invention covered by application No [specify] dated [specify], and entitled [insert title of invention], and I (or we) hereby apply for a certificate to that effect.

A statement setting out the circumstances upon which I (or we) rely to justify this application is attached together with copies thereof as required by regulation 63 of the Patents Regulations 1954.

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

[To be signed by all the persons making the application.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 22 Claim under section 24(1) to proceed as an applicant or co-applicant

Patents Act 1953

I (or We), [state name of claimant(s)], hereby request that the patent application No [state the number and date of the application for patent] dated [specify] made by [state name of the applicant or applicants for patent] may proceed in the name(s) of [insert (in full) name, address, and nationality of the person or persons in whose name(s) it is requested that the application shall proceed].

I (or We) claim to be entitled to proceed as applicant(s) for the patent by virtue of [give the particulars of the document, giving its date and the parties thereto, and showing how the claim here made is substantiated].

And in proof whereof I (or we) transmit the accompanying [State the nature of the document. The certified copy should be written, typewritten, or printed on A4 international standard size paper].

My (or Our) address for service in New Zealand is:

[To be signed by claimant(s).]

I (or We) [to be signed by the applicant(s)] consent to the above request.

To the Commissioner
The Patent Office
Wellington C 1

Schedule 2 form 22: amended, on 27 March 1975, by regulation 7(c) of the Patents Regulations 1954, Amendment No 3 (SR 1975/58).

Patents Form No 23 Application for directions under section 24(5) as to proceeding with an application for a patent in case of dispute between joint applicants

Patents Act 1953

(To be accompanied by a statement of case and by copies of the application and statement as required by regulation 66 of the Patents Regulations 1954)

I, [state name and address], being a joint applicant with [state name and address of other applicant(s)] in the application for a patent numbered [specify], hereby declare that a dispute has arisen between us and request that an order of the Commissioner be made giving directions for enabling that application to proceed.

Particulars of the matters in dispute are given in the annexed statement setting out the facts upon which I rely, and the relief which I seek.

Communications should be sent to [specify] at [the address must be within New Zealand], who is hereby appointed to act for me.

Signature:

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 24 Request for the sealing of a patent

Patents Act 1953

I (or We), [state name of applicant or applicants], request that a patent may be sealed on my (or our) application No [specify] and that the following may be entered on the register as my (or our) address for service:

Signature:

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 25 Application under section 27(3) for extension of the period for making a request for the sealing of a patent

Patents Act 1953

I (or We) hereby apply for [number] month(s) [specify] extension of the period for making a request for the sealing of a patent upon application No [specify].

Signature:

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 26 Application under section 27(4) for an extension of the period for making a request for the sealing of a patent

Patents Act 1953

I (or We) hereby apply for [not more than 6 months’ extension may be applied for at one time] month(s) extension of the period for making a request for the sealing of a patent upon application No [specify].

The circumstances in and grounds upon which this extension is applied for are as follows: [The circumstances and grounds must be stated in detail.]

I (or We) hereby declare that—

an extension of time of 3 months for making a request for sealing has been allowed under section 27(3) and has not yet expired.
curly bracket
[Delete the words which are not applicable.]
an extension of time of [number] months for making a request for sealing has been allowed under section 27(4) and has not yet expired.

Signature:

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 27 Application under section 28 for amendment of letters patent

Patents Act 1953

(To be accompanied by evidence verifying the statements made in this application)

I (or We), [state name and address], hereby request that letters patent No [specify] granted to [specify] may be amended by substituting the name of [state name, address and nationality of person to whom patent should have been granted] for the name of the grantee.

My (or Our) address for service in New Zealand is:

Signature:

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 28 Payment of renewal fee

Patents Act 1953

I (or We), [state name of person tendering the fee], hereby transmit the fee prescribed for the continuation in force of [insert name of patentee(s)] patent No [specify] for a further period of [specify] and request that the certificate of payment may be sent to me (or us) at [insert full address].

Signature:

Note: If the address given above is not that entered in the register of patents as the patentee’s address for service and it is desired to amend the entry in the register, application therefor must be made on patents form 62.

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 29 Request for extension of the period for payment of renewal fee

Patents Act 1953

I (or We) hereby apply for an extension of [number] months(s) of the period prescribed for payment of the renewal fee of [amount] upon my (or our) patent No [specify].

[State name and full address to which receipt is to be sent.]

Signature:

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 30 Certificate of payment of renewal fee

Patents Act 1953

Letters Patent No:

This is to certify that [specify] did this [date] make the prescribed payment of $[amount] in respect of a period of [specify] from [specify].

[Signature]
Commissioner of Patents

The Patent Office
Wellington C 1

Patents Form No 31 Application under section 31, section 32, or section 33 for extension of term of patent

Patents Act 1953

(To be accompanied by evidence in support of the application)

I (or We), [state (in full) name, address, and nationality of applicant or applicants], hereby apply for extension of the term of patent No [specify] for [insert period for which extension is sought].

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

[To be signed by the applicant or applicants.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 32 Notice of opposition to application for extension of term of patent

Patents Act 1953

(To be accompanied by a copy, and evidence (in duplicate) in support of the opposition)

I (or We), [state (in full) name, address, and nationality of opponent or opponents], hereby give notice of opposition to the application for extension of the term of patent No [specify].

Communications should be sent to [specify] at [the address must be within New Zealand] who is (or are) hereby appointed to act for me (or us).

[To be signed by the opponent or opponents.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 33 Application under section 35 for the restoration of a patent

Patents Act 1953

(To be accompanied by evidence verifying the statements made in this application)

I (or We), [state name and address], hereby apply for an order for the restoration of patent No [specify].

The circumstances which led to the failure to pay the renewal fee of [state amount of fee] on or before the [state date when fee was due] are as follows: [the circumstances must be stated in detail].

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

[To be signed by applicant.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 34 Notice of opposition to an application under section 35 for the restoration of a patent

Patents Act 1953

(To be accompanied by a copy, and a statement of case in duplicate)

I (or We), [state name and address], hereby give notice of opposition to the application for restoration of patent No [specify] for the following reason:

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

Signature of opponent:

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 35 Additional fee on an application under section 35 for restoration of a patent

Patents Act 1953

I (or We), [state name and address], the applicant(s) for the restoration of patent No [specify], hereby transmit the prescribed additional fee, together with a memorandum in form 28 in respect of the unpaid renewal fee(s).

Signature of applicant(s):

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 36 Application under section 36 for the sealing of a patent

Patents Act 1953

(To be accompanied by evidence verifying the statements made in this application)

I (or We), [state name and address], the applicant(s) for a patent numbered [specify], hereby apply for an order for a patent to be sealed thereon.

The circumstances which led to the failure to make the prescribed request for sealing on or before the [state date when request was due] are as follows: [the circumstances must be stated in detail].

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

Signature:

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 37 Notice of opposition to an application under section 36 for the sealing of a patent

Patents Act 1953

(To be accompanied by a copy, and a statement of case in duplicate)

I (or We), [state name and address], hereby give notice of opposition to the application for the sealing of a patent on application No [specify] for the following reasons:

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

Signature:

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 38 Additional fee on an application under section 36 for the sealing of a patent

Patents Act 1953

I (or We), [state name and address], the applicant(s) for the sealing of a patent on application No [specify], hereby transmit the prescribed additional fee, together with a request in form 24 bearing the fee prescribed in respect of the making of the request for sealing.

Signature of applicants for sealing:

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 39 Application under section 37 for restoration of an application

Patents Act 1953

(To be accompanied by evidence verifying the statements made in this application)

I (or We), [state name and address], the applicant(s) for a patent numbered [specify], hereby apply for an order of the Commissioner restoring the application and extending the period for complying with the requirements imposed on me (or us) by or under the Patents Act 1953 to [date].

The circumstances which led to the failure to comply with the requirements imposed on me (or us) under that Act are as follows: [the circumstances must be stated in detail].

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

Signature:

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 40 Notice of opposition to an application under section 37 for restoration of an application

Patents Act 1953

(To be accompanied by a copy, and a statement of case in duplicate)

I (or We), [state name and address] hereby give notice of opposition to the application for restoration of the application for a patent numbered [specify] for the following reasons:

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

Signature:

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 41 Application under section 38 for amendment of a complete specification after acceptance

Patents Act 1953

I (or We), [state full name and address of applicant or patentee], seek leave to amend the complete specification No [specify] as shown in red ink in the copy of the printed specification hereunto annexed.

I (or We) declare that no action for infringement or proceeding before the court for revocation of the patent is pending. [These words are to be struck out when a patent has not been sealed.]

My (or Our) reasons for making this amendment are in detail as follows: [State full particulars of the reasons for seeking amendment. If this space is not sufficient the particulars may be continued on a separate sheet].

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

[To be signed by applicant or patentee.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 42 Notice of opposition to amendment of specification under section 38

Patents Act 1953

(To be accompanied by a copy, and a statement of case in duplicate)

I (or We), [state full name and address], hereby give notice of opposition to the proposed amendment of specification No [specify] for the following reason:

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

[To be signed by the opponent.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 43 Application for amendment of a complete specification not yet accepted

Patents Act 1953

I (or We), [state (in full) name and address of applicant or applicants], seek leave to amend the specification of application No [specify] of [specify] as shown in red ink in the copy of the original specification hereunto annexed.

My (or Our) reasons for making this amendment are as follows: [state reasons for seeking amendment].

[To be signed by applicant or applicants, or his or their agent.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 44 Application for amendment of an application for a patent

Patents Act 1953

I (or We), [state full name and address of applicant or applicants], seek leave to amend my (or our) application No [specify] of [specify] as shown in red ink in the copy the original application hereunto annexed.

My (or Our) reasons for making this amendment are as follows: [state reasons for seeking amendment].

[To be signed by applicant or applicants.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 45 Application under section 42 for the revocation of a patent

Patents Act 1953

(To be accompanied by a copy, and a statement of case in duplicate)

I (or We), [state full name and address], hereby apply for an order for the revocation of patent No [specify] on the following grounds: [The ground or grounds of the application can only be 1 or more of the grounds on which the grant of the patent could have been opposed under section 21.] I (or We) declare that no action for infringement or proceeding in any court for the revocation of the patent is pending. [If such action or proceeding is pending in any court the application cannot be made without the leave of the court.]

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

[To be signed by applicant.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 46 Offer under section 43 to surrender a patent

Patents Act 1953

I (or We), [state full name and address], hereby offer to surrender patent No [specify].

I (or We) declare that no action for infringement or proceeding in any court for the revocation of the patent is pending. [Delete if any action or proceeding is pending, and furnish full particulars of the action or proceeding.]

My (or Our) reasons for making this offer are as follows:

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

[To be signed by the patentee.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 47 Notice of opposition under section 43 to offer to surrender a patent

Patents Act 1953

(To be accompanied by a copy, and a statement of case in duplicate)

I (or We), [state full name and address], hereby give notice of opposition to the offer to surrender patent No [specify] for the following reason:

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

[To be signed by the opponent.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 48 Voluntary application for endorsement of patent licences of right

Patents Act 1953

(To be accompanied by evidence verifying the statement in the application and by the letters patent)

I (or We), [state name and address], hereby request that patent No [specify] may be endorsed “licences of right”.

I am (or We are) not precluded by contract from granting licences under the patent.

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

[To be signed by the patentee.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 49 Application under section 44(2) for settlement of terms of licence under patent endorsed licences of right

Patents Act 1953

(To be accompanied by a copy, and a statement of case in duplicate)

I (or We), [state name and address], hereby apply for settlement of the terms of a licence to be granted under patent No:

I am (or We are) the—

patentee(s).
curly bracket
[Delete the 2 categories not applicable.]
person(s) requiring a licence.
holder(s) of a licence under the patent granted before endorsement.

I (or We) request that an order may be made entitling me (or us) to exchange my (or our) existing licence for a licence to be granted upon the terms as settled. [Delete if the applicant is not the holder of a licence.]

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

Signature of applicant:

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 50 Application under section 45(1) by patentee for cancellation of endorsement of a patent licences of right

Patents Act 1953

(To be accompanied by evidence in support of the application)

I (or We), [state name and address], hereby request that the endorsement of patent No [specify] “licences of right” may be cancelled, and I (or we) enclose memorandum in patents form 28 forwarding the balance of all renewal fees which would have been payable if the patent had not been endorsed.

I am (or We) declare—

that there is no existing licence under the patent; or
curly bracket
[Delete whichever is not applicable.]
all the licensees consent to this application.

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

[To be signed by the patentee.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 51 Application under section 45(2) by any person interested for cancellation of endorsement of patent licences of right

Patents Act 1953

(To be accompanied by a copy, and a statement of case in duplicate)

I (or We), [state name and address], hereby claim that the endorsement of patent No [specify] “licences of right” is and was at the time of the endorsement contrary to a contract in which I am (or we are) interested and I (or we) request that the endorsement may be cancelled.

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

[To be signed by the applicant(s).]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 52 Notice of opposition by patentee or by any person interested to cancellation of endorsement of a patent licences of right

Patents Act 1953

(To be accompanied by a copy, and a statement of a case in duplicate)

I (or We), [state name and address], hereby give notice of opposition to the application for the cancellation of the endorsement “licences of right” in respect of patent No [specify].

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

[To be signed by the opponent]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 53 Application for compulsory licence or for compulsory endorsement licences of right

Patents Act 1953

I (or We), [state name and address], hereby apply for an order of the Commissioner in respect of patent No [specify]—

for a licence under the patent to be granted to me (or us); or
curly bracket
[Delete whichever is not applicable.]
for the endorsement of the patent “licences of right”,—

for the following reasons: [state the nature of the applicant’s interest, the facts upon which he relies, and the grounds upon which the application is made].

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

[To be signed by the applicant(s).]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 54 Application by government department under section 49(1)

Patents Act 1953

The [state name and address of department] hereby applies for an order of the Commissioner in respect of patent No [specify]—

for the endorsement of the patent “licences of right”; or
curly bracket
[Delete whichever is not applicable.]
for the grant of a licence under the patent to [insert name, address, and nationality of person to whom licence is to be granted],—

for the following reasons: [State the facts and grounds on which the case is based.]

The address for service in New Zealand of the said [state name of department] is:

Signature of applicant:

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 55 Application under section 50 for revocation of a patent

Patents Act 1953

I (or We), [state name and address], hereby apply for the revocation of patent No [specify] for the following reasons: [state the nature of applicant’s interest, the facts upon which he relies, and the grounds upon which the application is made].

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

Signature:

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 56 Notice of opposition under section 52 to an application for an order under section 46, 49, 50, or 51

Patents Act 1953

(To be accompanied by evidence verifying the statement below of grounds on which application is opposed)

I (or We), [state name and address], hereby give notice of opposition to the application made in respect of patent No [specify] by [specify]—

for a licence under the patent.
curly bracket
[Delete whichever is not applicable.]
for the endorsement of the patent “licences of right”.
for the grant of a licence to the person specified in the application.
for the revocation of the patent under section 50 of the Patents Act 1953.

My (or Our) grounds for opposing are [insert statement of grounds on which application is opposed].

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

Signature:

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 57 Application under section 51 for licence

Patents Act 1953

I (or We), [state name and address], hereby apply for a licence under patent No [specify] for the making, using, exercising, and vending the invention—

as food or medicine;
curly bracket
[Delete whichever is not applicable.]
for the purposes of the production of food or medicine; or
as or as part of a surgical or curative device,—

for the following reasons: [state nature of applicant’s interest, and the facts relied upon].

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

Signature of applicant:

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 58 Application for directions under section 64(1)

Patents Act 1953

(To be accompanied by a statement of case and by copies of the application and statement as required by regulation 122)

I (or We), [state name and address], hereby apply for the following directions in respect of patent No [specify]: [state the directions sought].

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

[To be signed by the patentee seeking directions.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 59 Application for directions under section 64(2)

Patents Act 1953

(To be accompanied by a copy and a statement of case in duplicate)

I (or We), [state name and address of patentee or joint patentees], hereby apply for directions in respect of the failure of [state name of person in default] to comply with the directions of the Commissioner given under section 64(1) of the Patents Act 1953 on the [specify] in the following matter: [state the directions sought].

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

[To be signed by the patentee.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 60 Application under section 65(1) to determine a dispute between employer and employee as to rights in an invention

Patents Act 1953

(To be accompanied by a copy and a statement in duplicate setting out the facts of the dispute and the relief sought)

I (or We), [state name and address], hereby declare that in respect of the rights in the invention for which an application for a patent was made by [specify] and numbered [specify] (and upon which a patent has been granted*), a dispute has arisen between me (or us) and [state name and address of other party to dispute] and I (or we) hereby apply to the Commissioner to determine the dispute.

The facts of the dispute, and the relief which I (or we) seek are set out fully in the accompanying statement.

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

Signature:

*Delete if a patent has not been granted.

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 61 Request for alteration of a name or nationality or an address or an address for service in the register of patents

Patents Act 1953

In the matter of Patent No:

I (or We), [state (in full) name and address of applicant or applicants], hereby request that the name (or nationality or address or address for service) now upon the register of patents may be altered to [insert name, nationality, or address or address for service, as the case may be].

Signature of applicant or applicants:

Note: Where the request is for alteration in a name or nationality, evidence of the alteration must be furnished.

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 62 Application for entry of name of proprietor or co-proprietor in the register of patents

Patents Act 1953

I (or We), [insert (in full) name, address, and nationality], hereby apply that you will enter my (or our) name in the register of patents as proprietor(s) (or co-proprietor(s)) of patent No [specify] at present registered in the name of [give name of registered proprietor].*

I (or We) claim to be so entitled by virtue of [specify the particulars of the document, giving its date and the parties thereto, and showing how the claim here made is substantiated].

And in proof whereof I (or we) transmit the accompanying [Insert the nature of the document. The certified copy should be written, typewritten, or printed on A4 international standard size paper on one side only] with a certified copy thereof.

My (or Our) address for service in New Zealand is:

Signature:

[State in what capacity the signatory is acting.]

*If the application is in respect of more than 1 patent, the numbers thereof, as well as the particulars required above as to the registered proprietor, should be given in a separate schedule, which should be attached to this form.

To the Commissioner
The Patent Office
Wellington C 1

Schedule 2 form 62: amended, on 27 March 1975, by regulation 7(c) of the Patents Regulations 1954, Amendment No 3 (SR 1975/58).

Patents Form No 63 Application for entry of notice of a mortgage or licence in the register of patents

Patents Act 1953

I (or We), [insert (in full) name, address, and nationality] hereby apply that you will enter in the register of patents a notice of the following interest in a patent:

I (or We) claim to be entitled [insert the nature of the claim, whether by way of mortgage or licence] to an interest in patent No [specify],* at present registered in the name of [give name of registered proprietor] by virtue of [specify the particulars of the document, giving its date and the parties thereto].

And in proof whereof I (or we) transmit the accompanying [Insert the nature of the document. The certified copy should be written, typewritten, or printed on A4 international standard size paper on one side only] with a certified copy thereof.

My (or Our) address for service in New Zealand is:

Signature:

[State in what capacity the signatory is acting.]

*If the application is in respect of more than 1 patent, the numbers thereof, as well as the particulars required above in respect of the nature of the claim and the document, should be given in a separate schedule, which should be attached to this form.

To the Commissioner
The Patent Office
Wellington C 1

Schedule 2 form 63: amended, on 27 March 1975, by regulation 7(c) of the Patents Regulations 1954, Amendment No 3 (SR 1975/58).

Patents Form No 64 Application under section 84(2) by assignor for entry of name of proprietor or co-proprietor in the register of patents

Patents Act 1953

I (or We), [insert (in full) name and address], hereby apply that you will enter the name(s) of [insert name, address, and nationality of person(s) to be registered] in the register of patents as proprietor (or part proprietor) of patent No [specify],* of which I am (or we) are the registered proprietor(s).

He is (or They are) entitled to the said patent or to a share therein by virtue of [specify the particulars of the document, giving its date and the parties thereto, and showing how the claim here made is substantiated].

And in proof whereof I (or we) transmit the accompanying [Insert the nature of the document. The certified copy should be written, typewritten, or printed on A4 international standard size paper on one side only] with a certified copy thereof.

My (or Our) address for service in New Zealand is:

The address for service in New Zealand of the person(s) to be registered as proprietor or co-proprietor is:

Signature:

[State in what capacity the signatory is acting.]

*If the application is in respect of more than 1 patent, the numbers thereof, as well as the particulars required above in respect of the person(s) to be registered and the document, should be given in a separate schedule, which should be attached to this form.

To the Commissioner
The Patent Office
Wellington C 1

Schedule 2 form 64: amended, on 27 March 1975, by regulation 7(c) of the Patents Regulations 1954, Amendment No 3 (SR 1975/58).

Patents Form No 65 Application under section 84(2) by mortgagor or licensor for entry of notice of a mortgage or licence in the register of patents

Patents Act 1953

I (or We), [insert (in full) name and address], hereby apply that you will enter in the register of patents a notice of the following interest in a patent: [Insert name, address, and nationality of mortgagee or licensee.]

He is (or They are) entitled [insert the nature of the claim, whether by way of mortgage or licence] to an interest in patent No [specify],* of which I am (or we are) the registered proprietor(s), by virtue of [specify the particulars of the document, giving its date and the parties to the same.]

*If the application is in respect of more than 1 patent, the numbers thereof, as well as the particulars required above in respect of the nature of the claim and the document, should be given in a separate schedule, which should be attached to this form.

And in proof whereof I (or we) transmit the accompanying [Insert the nature of the document. The certified copy should be written, typewritten, or printed on A4 international standard size paper on one side only] with a certified copy thereof.

My (or Our) address for service in New Zealand is:

The address for service in New Zealand of the person(s) to be registered as mortgagee or licensee is:

Signature:

[State in what capacity the signatory is acting.]

To the Commissioner
The Patent Office
Wellington C 1

Schedule 2 form 65: amended, on 27 March 1975, by regulation 7(c) of the Patents Regulations 1954, Amendment No 3 (SR 1975/58).

Patents Form No 66 Application for entry of notification of document in register of patents

Patents Act 1953

I (or We), [insert (in full) name, address, and nationality of the party who benefits under the document], transmit the accompanying [specify the particulars of the document, giving its nature, date, and the parties thereto] (together with a certified copy thereof) [the certified copy should be written, typewritten, or printed on A4 international standard size paper on one side only] affecting the proprietorship of patent No [specify],* at present registered in the name of [state name of registered proprietor], and request that a notification thereof may be entered in the register of patents.

Signature:

[State in what capacity the signatory is acting.]

*If the application is in respect of more than 1 patent, the numbers and particulars thereof should be given in a separate schedule, which should be attached to this form.

To the Commissioner
The Patent Office
Wellington C 1

Schedule 2 form 66: amended, on 27 March 1975, by regulation 7(c) of the Patents Regulations 1954, Amendment No 3 (SR 1975/58).

Patents Form No 67 Application for entry in the register of patents of a claim to be deemed a licensee

Patents Act 1953

I (or We), [state name, address, and nationality], hereby apply that you will enter my (or our) claim to be deemed to have acted with the licence of the patentee (exclusive licensee) in accordance with the conditions in the order dated [specify] extending the term of patent No [specify].

Evidence in support of my (or our) claim accompanies this application.

My (or Our) address for service in New Zealand is:

Signature:

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 68 Application under section 86 for leave to dispense with production of probate or letters of administration

Patents Act 1953

I (or We), [state (in full) name, address, occupation, and nationality], hereby apply for leave to dispense with the production of probate of the will (or letters of administration in the estate) of [name of deceased, in full], deceased (hereinafter referred to as the deceased), who was the [inventor, applicant, or patentee] of the invention entitled [short title of invention] the subject of application for the grant of letters patent No [specify] in New Zealand.

The circumstances in and the grounds upon which this application is made are as follows:

1

The deceased died testate (or intestate) at [place] on [date], and at his death was domiciled in [state country of domicile].

2

I am entitled to obtain probate of the will of the deceased (or letters of administration in the deceased’s estate).

or

I am the legal representative of the deceased in the country of his domicile by virtue of probate (or letters of administration) granted to me by [title of official or name of court making] at [place] on [date].

3

Probate of the will of the deceased has (or letters of administration in the deceased’s estate have) not been granted or resealed in New Zealand.

4

No duty is payable in New Zealand in the estate of the deceased, as is evidenced by the certificate by the Commissioner of Inland Revenue annexed hereto.

5

The interests of the creditors of the deceased and of all persons beneficially interested under his will or in his estate will be adequately safeguarded in the manner following:  

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

[To be signed by all persons making the application.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 69 Request for correction of error (section 88)

Patents Act 1953

I (or We), [state full name and address], hereby request that the clerical error(s) in the [state whether in application, specification, entry in register, patent, or the particular relevant document] relating to application (or patent) No [specify] indicated in red ink in the annexed copy of the said [state whether in application, specification, entry in register, patent, or the particular relevant document] or shown as follows [specify] may be corrected.

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

[To be signed by applicant or his authorized agent.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 70 Notice of opposition to the correction of a clerical error

Patents Act 1953

(To be accompanied by a copy and a statement of case in duplicate)

I (or We), [state (in full) name and address], hereby give notice of opposition to the correction of an alleged clerical error in [specify], which said correction has been applied for by [specify].

The grounds upon which the said correction is opposed are as follows:

Communications should be sent to [specify] at [the address must be within New Zealand], who is (or are) hereby appointed to act for me (or us).

[To be signed by opponent or opponents.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 71 Request for certificate of Commissioner

Patents Act 1953

Patent (or Application) No [specify] of [year]

I (or We), [specify], of [specify] hereby request you to furnish me (or us) with your certificate to the effect that [Set out the particulars which the Commissioner is requested to certify, and of any copies of documents which are to be annexed to the certificate, stating also the purpose for which the copies are required. Give the name and full address to which certificate is to be sent.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 72 Request for information as to a matter affecting a patent or an application therefor

Patents Act 1953

Patent (or Application) No [specify] of [year]

I (or We), [specify], of [specify], hereby request you to furnish me (or us) with the following information affecting the patent (or application) aforesaid: [set out particulars as to the matter in respect of which information is sought].

[To be signed by the person or persons seeking information, or by their agent.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 73 Application under section 92 for letters patent

Patents Act 1953

I (or We), have to inform you that the letters patent dated [state date, number, and full name and address of grantee or grantees], No [specify] granted to [specify] for an invention the title of which is [insert title of invention] has been lost or destroyed, or cannot be produced in the following circumstances: [state (in full) the circumstances of the case, which must be verified by evidence].

I (or We) beg therefore to apply for the reissue of the letters patent. [State interest possessed by applicant or applicants in the patent.]

[Signature of patentee or patentees and full address to which the duplicate is to be sent.]

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 74

Patents Act 1953

In the matter of [specify]

To [state name, address, and occupation]

Summons to witness

In pursuance of the powers conferred upon me by section 96 of the Patents Act 1953 and by the regulations in force thereunder, I hereby require you to attend before me at [place], on [date] at [time], to give evidence on behalf of [specify] in the above-mentioned proceedings (and then and there to have and produce [state any particular documents required], and all other books, deeds, papers, or other writings in your possession or under your control relating to the said proceedings.)* If you fail to comply with the provisions of this summons you are liable to a fine of £20.

Given under my hand at [place], [date].

[Signature]

Commissioner of Patents.

*Delete if not applicable.

Patents Form No 75 Application for entry of order of court in the register

Patents Act 1953

I (or We), [state (in full) name and address of applicant or applicants], hereby transmit a sealed duplicate (or certified copy) of an order of the court with reference to [state the purport of the order].

Signature:

To the Commissioner
The Patent Office
Wellington C 1

Patents Form No 76 Application under regulation 168 for extension of time

Patents Act 1953

I (or We), [state name and address], hereby apply for an extension of the time for [state matter in respect of which extension of time sought] in respect of application No [specify].

The circumstances in and grounds upon which this application is made are as follows: [the circumstances and grounds must be stated in detail].

Communications should be sent to [specify] at [the address must be in New Zealand].

Signature:

To the Commissioner
The Patent Office
Wellington C 1

Schedule 3 Forms of patent and patent of addition

Patents Form A Form of patent

(New Zealand Arms) Letters patent

Elizabeth the Second, by the Grace of God of the United Kingdom, New Zealand and Her Other Realms and Territories Queen, Head of the Commonwealth, Defender of the Faith:

To all to whom these presents shall come, Greeting:

Whereas pursuant to the Patents Act 1953 an application has been made for a patent of an invention for [specify] (more particularly described in the complete specification relating to the application)

And whereas [specify] of [specify] (hereinafter together with his or their successors and assigns or any of them called “the patentee”) is entitled to be registered as the proprietor of the patent hereinafter granted:

Now, Therefore, We by these letters patent give and grant to the patentee our special licence, full power, sole privilege, and authority, that the patentee by himself, his agents, or licensees and no others, may subject to the provisions of any statute or regulation for the time being in force make, use, exercise, and vend the said invention within New Zealand and its dependencies during a term of 16 years from the date hereunder written and that the patentee shall have and enjoy the whole profit and advantage from time to time accruing by reason of the said invention during the said term:

And we strictly command all our subjects whomsoever within New Zealand and its dependencies that they do not at any time during the said term either directly or indirectly make use of or put into practice the said invention, nor in any way imitate the said invention without the consent, licence, or agreement of the patentee in writing under his hand, on pain of incurring such penalties as are prescribed by law and of being answerable to the patentee according to law for his damages thereby occasioned:

Provided always:

(1)

that these letters patent shall determine and become void if the patentee does not from time to time pay the renewal fees prescribed by law in respect of the patent:

(2)

that these letters patent are revocable on any of the grounds prescribed by the Patents Act 1953 as grounds for revoking letters patent:

(3)

that nothing in these letters patent shall prevent the granting of licences in the manner in which and for the considerations on which they may by law be granted:

(4)

that these letters patent shall be construed in the most beneficial sense for the advantage of the patentee.

In witness whereof We have caused these letters patent to be signed and sealed as of [date].

[Signature]
Commissioner of Patents

[Seal of Patent Office]

Patents Form B Form of patent of addition

(New Zealand Arms) Letters patent

Elizabeth the Second, by the Grace of God of the United Kingdom, New Zealand and Her Other Realms and Territories Queen, Head of the Commonwealth, Defender of the Faith:

To all to whom these presents shall come, Greeting:

Whereas pursuant to the Patents Act 1953 an application has been made for a patent of an invention for [specify] (more particularly described in the complete specification relating to the application)

And whereas it has been requested that the patent may be granted as a patent of addition to patent No [specify] dated [specify], (hereinafter called “the main patent”)

And whereas [specify] of [specify] (hereinafter together with his or their successors and assigns or any of them called “the patentee”) is entitled to be registered as the proprietor of the patent hereinafter granted:

Now, Therefore, We by these letters patent give and grant to the patentee our special licence, full power, sole privilege, and authority, that the patentee by himself, his agents, or licensees and no others, may subject to the provisions of any statute or regulation for the time being in force make, use, exercise, and vend the said invention within New Zealand and its dependencies during a term beginning on [date] and ending at the expiration of 16 years from [date], the date of the said main patent and that the patentee shall have and enjoy the whole profit and advantage from time to time accruing by reason of the said invention during the said term:

And we strictly command all our subjects whomsoever within New Zealand and its dependencies that they do not at any time during the said term either directly or indirectly make use of or put into practice the said invention, nor in any way imitate the said invention without the consent, licence, or agreement of the patentee in writing under his hand, on pain of incurring such penalties as are prescribed by law and of being answerable to the patentee according to law for his damages thereby occasioned:

Provided always:

(1)

that these letters patent are revocable on any of the grounds prescribed by the Patents Act 1953 as grounds for revoking letters patent:

(2)

that nothing in these letters patent shall prevent the granting of licences in the manner in which and for the considerations on which they may by law be granted:

(3)

that these letters patent shall be construed in the most beneficial sense for the advantage of the patentee.

In witness whereof We have caused these letters patent to be signed and sealed as of [date].

[Signature]
Commissioner of Patents

[Seal of Patent Office]

Schedule 4 Renewal fees payable

r 73

Schedule 4: replaced, on 1 January 1989, by regulation 2(2) of the Patents Regulations 1954, Amendment No 12 (SR 1988/278).

Before the expiration of the—$
fourth year170
seventh year340
tenth year540
13th year1,000
from the date of the patent.

Schedule 5 Regulations revoked

Published in Gazette
Date of Order in CouncilTitle or subject matterYearPage
26 June 1922Regulations under the Patents, Designs, and Trade Marks Act 1921–22 relating to patents1922Vol II, p 1669
26 June 1922Regulations as to patent agents under the Patents, Designs, and Trade Marks Act 1921–221922Vol II, p 1694
26 June 1922Regulations under section 129 of the Patents, Designs, and Trade Marks Act 1921–221922Vol II, p 1695
7 June 1923Amendment of regulations under the Patents, Designs, and Trade Marks Act 1921–22 relating to patents1923Vol II, p 1634
12 December 1924Regulations under the Patents, Designs, and Trade Marks Act 1921–221924Vol III, p 2972
6 April 1925Regulations under the Patents, Designs, and Trade Marks Act 1921–221925Vol I, p 1041
Published in Statutory Regulations
YearSerial Number
29 August 1945The Patents Amending Regulations 194519451945/121
14 August 1946The Patents, Designs, and Trade Marks Amending Regulations 1946 (in their application to patents)19461946/143
23 January 1947The Patents Amending Regulations 194719471947/2
14 May 1947The Patents and Designs (United States of America) Regulations 1947 in their application to patents19471947/70
17 September 1947The Patents (Canada) Regulations 194719471947/134
17 September 1947The Patents Amending Regulations 1947, No 219471947/136
3 October 1947The Patents (Union of South Africa) Regulations 194719471947/150
3 October 1947The Patents and Designs (United States of America) Regulations 1947, Amendment No 1, in their application to patents19471947/151
17 December 1947The Patents, Designs, and Trade Marks (Neuchatel Agreement) Regulations 1947 in their application to patents19471947/197
17 March 1948The Patents Amending Regulations 194819481948/39
11 August 1948The Patents, Designs, Trade Marks, and Copyright (Treaties of Peace with Italy, Roumania, Bulgaria, Hungary, and Finland) Regulations 1948 in their application to patents19481948/136
13 October 1948The Patents (London Accord) Regulations 194819481948/164
7 September 1949The Patents Amending Regulations 194919491949/139
19 July 1950The Patents Amending Regulations 195019501950/124
8 May 1951The Patents Extension of Time (Germany) Regulations 195119511951/106
15 August 1951The Patents Amending Regulations 195119511951/185

T J Sherrard,
Clerk of the Executive Council.

Issued under the authority of the Legislation Act 2012.

Date of notification in Gazette: 9 December 1954.

Reprints notes
1 General

This is a reprint of the Patents Regulations 1954 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 electronic version also has official status.

3 Editorial and format changes

Editorial and format changes to reprints are made using the powers under sections 24 to 26 of the Legislation Act 2012. See also http://www.pco.parliament.govt.nz/editorial-conventions/.

4 Amendments incorporated in this reprint

Patents Regulations 2014 (LI 2014/275): regulation 176

Criminal Procedure Act 2011 (2011 No 81): section 413

Evidence Act 2006 (2006 No 69): section 216

Supreme Court Act 2003 (2003 No 53): section 48(3)

Interpretation Act 1999 (1999 No 85): section 38(1)

Patents Amendment Regulations 1999 (SR 1999/154)

Patents Regulations 1954, Amendment No 12 (SR 1988/278)

Patents Regulations 1954, Amendment No 11 (SR 1987/227)

District Courts Amendment Act 1979 (1979 No 125): section 18(2)

Patents Regulations 1954, Amendment No 3 (SR 1975/58)

Patents Regulations 1954, Amendment No 2 (SR 1972/259)