Patents Regulations 2014

Reprint as at 1 September 2017

Coat of Arms of New Zealand

Patents Regulations 2014

(LI 2014/275)

Jerry Mateparae, Governor-General

Order in Council

At Wellington this 11th day of August 2014

Present:
The Right Hon John Key presiding in Council

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

Contents

1Title
2Commencement
3Interpretation
4Application
5Amount of fees and penalties
6Time of payment of fees and penalties
7Form of payment of fees and penalties
8When maintenance and renewal fees become due
9Periods within which maintenance fees must be paid
10Period within which renewal fees must be paid
11Certificate of payment of maintenance and renewal fees
12Certain information or documents must be given electronically through case management facility
13Case management facility is prescribed electronic delivery method for certain purposes
14Information that must be given when case management facility first used
15Number of patent application or patent must be given when all information or documents filed under Act or regulations
16Information or documents may be given by alternative delivery method
17Electronic documents
18Number of copies
19Document filed when received in proper form
20Filing date of document if not received on working day
21Documents must be in English or Māori
22Signatures
23Form and size of complete specifications
24Numbering of pages of complete specifications
25Text
26Form and size of drawings
27Arrangement of drawings
28Preparation of drawings
29Descriptive matter
30Alterations
31Preparation of line drawings
32Terminology and signs
33Form and content of abstracts
34Address for service must be given
35Communication address must be given
36Change of address notice must be given
37Sufficiency of address
38Agent may act on behalf of principal for purposes of regulations
39Commissioner may give notices to agent
40Commissioner may require principal of agent to file authority with Commissioner in certain cases
41Commissioner must refuse to recognise certain persons as agent
42Commissioner must notify refusal to recognise person as agent
43Notice to Commissioner of revocation or alteration of authority
44Notice of revocation of authority may be given by agent
45Specified exhibitions
46Form of patent under section 19 of Act
47Request for directions to co-owners under section 26(1) of Act
48Request for directions to co-owners under section 26(3) of Act
49Request for determination of dispute under section 28 of Act
50Application for patent
51Requests for post-dating
52Divisional applications
53Personal representative must establish right to be granted patent
54Requirements for provisional specification
55Requirements for complete specification
56Extension of period for filing complete specification
57Cognate applications
58Amendment of complete specification before acceptance
59Deposit requirements for micro-organisms
60Deposit requirements treated as satisfied in certain circumstances
61Amendments to documents forming part of complete specification
62Time limit specified for sections 51 and 52 of Act
63Application for entry to national phase
64Request for examination of Treaty application
65English translation of documents as required
66Fees payable for international applications and Treaty applications
67Trust fund
68Convention applicants may make convention applications
69Convention application for patent
70Evidence in support of convention applications
71Manner of making request for examination of patent application
72Grounds on which Commissioner may direct applicant to request examination of patent application
73Period within which applicant may be directed to request examination
74Manner in which person may require Commissioner to give direction
75Commissioner may refuse to proceed with application or require application or specification to be amended
76Applications must be examined in order in which request for examination is made
77Examination may be advanced out of turn
78Deadlines by which applicants must act if Commissioner refuses to proceed with application, etc
79Duty to inform Commissioner of search results
80Time for putting application in order for acceptance
81Manner of filing notice of entitlement before acceptance
82Acceptance of complete specification
83Applicant may request Commissioner to postpone acceptance
84Notice that complete specification open to public inspection following request by applicant
85Documents open to public inspection
86Treaty application documents open for public inspection
87Amendment of specification after acceptance with leave of Commissioner
88Commissioner must consider request for leave to amend complete specification
89Requirements for notice of opposition to proposed amendment
90Assertions by third parties on novelty and inventive step
91Manner in which Commissioner must consider and deal with notice of assertion under section 90 of Act
92Matters that must be included in notice of opposition
93Period within which notice of opposition may be filed
94Counter-statement to notice of opposition
95Requests for re-examination
96Commissioner must give notice of re-examination requests
97Re-examination reports and amendment of complete specification
98Circumstances in which grant of patent may be postponed
99Amendment of patent under section 105 of Act
100Application for patent of addition
101Commissioner may revoke patent for improvement or modification and grant patent of addition
102Application to Commissioner for revocation of patent
103Counter-statement to application and evidence for revocation of patent
104Procedure if no counter-statement to application for revocation of patent is filed
105Refusal of applications for revocation of patent
106Notice of offer to surrender patent
107Opposition to surrender of patent
108Patentee must file counter-statement
109Filing of evidence
110Manner in which request to restore lapsed patent may be made
111When request for restoration of patent may be made
112Opposition to restoration of patent
113Patentee must file counter-statement
114Filing of evidence
115Protection of persons who avail themselves of invention if Commissioner restores lapsed patent
116Request for restoration of void or abandoned patent applications
117When request for restoration of application may be made
118Opposition to restoration of patent application
119Applicant must file counter-statement
120Filing of evidence
121Protection of persons who avail themselves of invention if Commissioner restores patent application
122Request for direction under section 129 of Act
123Request for directions under section 131 of Act
124Application under section 165 of Act
125Application to vest patent or patent application without probate or letters of administration
126Request or claim under section 190(1) of Act to be mentioned as inventor
127Application for certificate under section 193(1) of Act concerning mention of inventor
128Patents register must record grant of patents
129Other patents information that must be entered in patents register
130Payment of renewal fees must be entered in patents register
131Search of patents register
132Information concerning patent or patent application that may be requested
133How request for patent information and certified copies must be made
134Request to alter entries on patents register
135Notice of court orders must be given for entry on patents register
136Application to correct other persons’ mistakes in patents register, etc
137Opposition to proposed correction
138Applicant must file counter-statement
139Filing of evidence
140Opposition to Commissioner-initiated correction
141Notice of application to court to rectify patents register
142Notice of order of court to rectify patents register
143Particulars of patent applications that must be published
144Form of evidence
145Amendment of documents
146Requirements for applying and granting extensions of time limits under section 231 of Act
147General power of Commissioner to extend time limits in exceptional circumstances
148Ability to request extension under other regulations must be exhausted
149Power of Commissioner to waive requirements in exceptional circumstances
150Power to waive requirements for patent applications and specifications temporarily
151Maintenance of certain records
152Application of this Part
153Extra information that must be contained in documents filed in proceedings
154Hearing before exercise of Commissioner’s discretion
155Commissioner may require parties to attend case management conference
156Commissioner may give directions
157Parties must comply with Commissioner’s directions
158Non-compliance with Commissioner’s directions
159Commissioner may halt proceeding
160Commissioner may consolidate proceedings
161Commissioner may extend time limits in proceedings
162Evidence restricted to particulars filed
163Supply of documents for use of Commissioner
164Party filing documents must copy documents to opposite party
165Evidence out of time
166Application for permission to file evidence out of time
167Right to file evidence in reply if evidence in chief permitted out of time
168Evidence from another proceeding
169Form of hearing
170Commissioner may determine form of hearing, etc
171Notice of hearing by appearance
172Hearing fee
173Venue for hearing by appearance
174Conduct of hearing by appearance
175Costs
176Amendment to Patents Regulations 1954
2AApplication of these regulations for transitional purposes
177Transitional provision as to statutory references to corresponding matters
Gazette Information
Reprint notes