Patents Regulations 2014

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Reprint as at 13 February 2020

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.

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

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