The fees and penalties set out in Schedule 1 are payable in respect of the matters set out in that schedule.

The fees and penalties are exclusive of goods and services tax.

Fees and penalties, other than an excess claims fee, must be paid at the time of making an application or a request, or on giving notice or filing information or a document, in respect of which a fee or penalty is payable, unless an arrangement acceptable to the Commissioner has been made for payment at another time.

Any excess claims fee payable under regulation 11A must be paid after the Commissioner has informed the applicant that it is payable.

Fees and penalties must be paid by electronic means.

On the fourth and each subsequent anniversary of the filing date of a complete specification (the anniversary date), either a maintenance fee or a renewal fee becomes due.

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

A renewal fee becomes due on each anniversary date, until the 19th anniversary date, that occurs on or after the date on which the patent is granted.

The prescribed periods within which a maintenance fee under section 35(1) of the Act must be paid are—

A maintenance fee that is paid before the anniversary date on which it becomes due must be treated as a renewal fee if the patent is granted before the anniversary date.

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

After receipt of a maintenance fee or renewal fee, the Commissioner must issue a certificate to the applicant or patentee (as the case requires) that specifies—

This regulation applies if—

The applicant must pay an excess claims fee for the examination.

After accepting the specification, the Commissioner must—

However, the Commissioner must waive the excess claims fee, or refund it at the applicant’s request, if—

A waiver or refund under subclause (4)(b) no longer applies (and the applicant must repay any refunded excess claims fee) if the application is restored by order under section 128 of the Act.

In this regulation, specification includes a specification as amended under section 40 of the Act.

Any information or a document that the Act or these regulations requires to be given to or by the Commissioner in the prescribed manner must be given—

Anything that is given using the case management facility must be treated as having been received—

Only the Commissioner may use the case management facility to give information or a document to a person other than the Commissioner.

The case management facility is—

The following information must be given to the Commissioner, to the extent that the case management facility requires, when any information or a document is first given to the Commissioner in respect of a matter through the case management facility:

All information or documents given to the Commissioner under the Act or these regulations must contain, or be filed with, the number of the patent application or patent (if any) that is the subject of the application, request, assertion, opposition, or other matter in respect of which the information or document is given.

Despite regulation 12, the Commissioner may allow information or documents to be given to the Commissioner by an alternative delivery method listed in subclause (2) if the Commissioner is satisfied that a person is unable to access the case management facility because of any exceptional circumstances beyond the person’s control.

Alternative delivery method means delivery by 1 or more of the following methods:

The same rules that apply in respect of service of notices in section 233 of the Act apply to the giving of information and documents by post, electronic mail, or fax.

To avoid doubt, any requirement in these regulations that a document must be in writing is satisfied if the document complies with section 222 of the Contract and Commercial Law Act 2017.

The Commissioner may require an additional copy, or additional copies, of any information or document that is filed.

The requirement in subclause (1) may include a requirement for 1 or more documents that are filed electronically to be provided on paper or in a different format.

A document is filed when it is received in proper form.

A document is in proper form only if—

If a document is received on a day that is not a working day, the document is treated as having been filed on the next working day.

All documents filed must be in English or Māori.

However,—

In the following cases, a document must be signed for the purposes of these regulations as follows:

To avoid doubt, a document may be signed in accordance with section 226 of the Contract and Commercial Law Act 2017.

All complete specifications and copies of complete specifications, except drawings, that are filed must—

The minimum margins of all complete specifications, except drawings, when printed on A4 paper are as follows:

All margins of a complete specification must be blank when the complete specification is filed.

However, if a complete specification contains line numbers, the numbers must appear in the right half of the left-side margin.

Each page of a complete specification must be numbered consecutively with Arabic numerals.

Page numbers must be at the top or bottom of each page.

The Commissioner may request fresh copies of a complete specification, or any amended page or pages of a complete specification, as specified by the Commissioner.

If a request is made by the Commissioner under subclause (3), the applicant must renumber the amended page or pages if necessary and submit a copy of the amended complete specification to the Commissioner.

Graphic symbols and characters, and chemical or mathematical formulas, may be written or drawn by hand, provided that—

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

The size of the text in each complete specification, except drawings, must be such that the capital letters are at least 0.28 centimetres in height when printed on A4 paper.

Drawings must be made on a white background and be capable of being printed on A4 paper.

The minimum margins on each page of drawings, when printed on A4 paper, are as follows:

All margins must be blank when the drawings are filed.

No more pages than are necessary may be used for any drawings.

Drawings must be numbered consecutively in Arabic or Roman numerals without regard to the number of pages and must, as far as possible, be arranged in numerical order.

If a page contains more than 1 drawing, the drawings must be separated by sufficient space to keep them distinct.

An exceptionally large drawing may be continued on subsequent pages.

If drawings on 2 or more pages in effect form a single complete drawing, the drawings must be so arranged that the complete drawing can be assembled without concealing any part of another drawing.

All drawings must comply with the following requirements:

Descriptive matter must not appear on drawings, but drawings in the nature of flow sheets may bear descriptive matter to show the materials used and any chemical or other reactions or treatments effected in carrying out the invention.

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

Descriptive matter must be black, and the letters must not be less than 0.4 centimetres in height when printed on A4 paper.

No drawing or sketch, other than a graphic chemical formula or a mathematical formula, symbol, or equation, may appear in the description or claims of the specification.

All drawings—

The Commissioner may accept drawings that do not comply with subclause (1) if the Commissioner is satisfied that the drawings—

Line drawings, including flow sheets and diagrams, must comply with the following requirements:

In a complete specification,—

An abstract must consist of the following:

The summary referred to in subclause (1)(a) must—

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

The abstract must not contain statements on the alleged merits or value of the claimed invention or on its speculative application.

The following persons must give the Commissioner an address for service at the time when the person first gives any information or a document to the Commissioner in respect of a matter:

For the purpose of any communication with the Commissioner in the name of 2 or more persons with different addresses, the Commissioner may require 1 address for service to be given.

A person must give the Commissioner notice of a communication address at the time when the person first gives any information or a document to the Commissioner in respect of a matter.

For the purpose of any communication with the Commissioner in the name of 2 or more persons with different addresses, the Commissioner may require 1 communication address to be given.

A person who gives the Commissioner an address for service or a communication address must, if the address changes, give the Commissioner a notice of change of address as soon as practicable after the change occurs.

If the address of an agent changes, the agent must give the Commissioner a notice of change of address as soon as practicable after the change occurs.

An address that is given to the Commissioner under these regulations must be sufficiently detailed to enable the Commissioner to contact the addressee at that address.

Subject to the scope of the agent’s authority, an agent may act for the agent’s principal (X) in any proceeding in accordance with these regulations or take any step (including the signing of documents) on X’s behalf under these regulations.

However, the Commissioner may in any case require that a document that must be signed for the purposes of these regulations be signed by the principal and not by the agent.

The Commissioner satisfies any requirement under these regulations to give documents or notice to, or correspond with, a person by giving documents or notice to, or corresponding with, that person’s agent.

Subclause (1) does not apply to the extent that any written authority that is filed by the agent’s principal expressly excludes the authority of the agent for any of the matters specified in subclause (1).

This regulation applies if—

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

The written authority must—

In subclause (2),—

The Commissioner must refuse to recognise as an agent in respect of any proceedings a person who neither resides nor carries on business in New Zealand or Australia.

If the Commissioner becomes aware that a person is not entitled to act as an agent, the Commissioner must, as soon as practicable, notify that person and that person’s principal.

A principal (X) must, as soon as practicable, give written notice to the Commissioner of the revocation or alteration of the authority of X’s agent (A).

The notice must—

The notice must contain the following information:

Notice to the Commissioner of the revocation or alteration of the authority of an agent is effective—

An agent (A) of a principal (X) may give written notice to the Commissioner of the revocation of A’s authority as X’s agent.

The notice must be signed by A and contain the information described in regulation 43(3)(a) to (d).

Notice to the Commissioner of the revocation of the agent’s authority is effective—

A person who is responsible for an exhibition may request the Commissioner to declare that exhibition to be an international or industrial exhibition under section 9(2) of the Act.

The request must be made before the opening date of the exhibition and include—

The prescribed manner for making a patent application is as follows:

If the name, address, nationality, or principal place of business of an applicant changes from that notified, the applicant must give the Commissioner a notice of the change as soon as practicable after the change occurs.

A request to post-date an application under section 33 of the Act must contain the date to which the applicant requests that the application be post-dated.

If an applicant makes a divisional application under section 34 of the Act, the applicant must state that the application is a divisional application within the meaning of section 34 and give the application number of the parent application.

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

This regulation applies if a patent application, other than a convention application, is made by the personal representative of a deceased person or the assignee of the personal representative of a deceased person who, in either case, would have been the nominated person in respect of the patent application.

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

This regulation does not apply if the Commissioner has dispensed with probate and letters of administration under section 167 of the Act.

Every provisional specification under section 38 of the Act—

Every complete specification under section 39 of the Act—

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

This regulation applies if the Commissioner gives leave for a single complete specification to be proceeded with under section 37(4)(b) of the Act in respect of 2 or more patent applications for which 2 or more complete specifications have been filed (the previous specifications).

The single complete specification—

An amendment of a complete specification before acceptance under section 40 of the Act must include—

The prescribed period for the purposes of section 43(1)(b) of the Act is 12 months after the date of issue of the first examination report under section 65 of the Act.

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

In this regulation, Budapest Regulations—

The provisions prescribed for the purpose of section 44(2)(b) of the Act are the same as the provisions prescribed by regulation 121 for the purpose of section 128 of the Act, with any necessary modifications.

The prescribed time limit for the purposes of section 50(3)(b) of the Act is 22 months after the earliest priority date accorded to the international application.

The prescribed time limit for the purposes of sections 51(1)(d) and (e) and 52(1)(b) of the Act is 31 months after the earliest priority date accorded to the international application.

An application for entry to the national phase must be accompanied by the international application number.

The prescribed documents for the purposes of section 52(1)(d) of the Act are the complete specification and any amendments proposed to be made to the complete specification during the international phase.

A request for examination under section 52(2)(a) of the Act in relation to a Treaty application must include—

If any document or documents forming part of a Treaty application have been filed in a language other than English, the applicant must, within 3 months after the commencement date of the national phase, file a verified translation of that document or those documents.

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

The Commissioner may grant an extension under subclause (2) even if the time for the filing of the verified translation has expired under subclause (1).

Part 2 of Schedule 1 sets out the amount of certain fees that must be paid in respect of an international application or a Treaty application.

The fees are exclusive of goods and services tax.

All fees collected by the Commissioner on behalf of the International Bureau or any international searching authority must be paid into a trust fund established for the benefit of those organisations and administered in accordance with Part 7 of the Public Finance Act 1989.

The Commissioner acting as trustee of the trust fund may expend the money held in trust for the purposes of the Patent Cooperation Treaty, including the refunds and the remission of fees to the International Bureau and any international searching authority.

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

The prescribed manner for making a convention application, and the information that must be included under section 54(2)(a) of the Act, is as follows:

This regulation applies if the Commissioner has given written notice to a convention applicant requiring that the convention applicant file a copy or verified translation of any or all of the documents filed in relation to the relevant basic application.

The convention applicant may file the copy or verified translation by—

A request under section 64(1) of the Act for an examination of a patent application and the complete specification relating to the application must be made as follows:

The prescribed grounds for the purpose of section 64(2) of the Act are as follows:

The period prescribed for the purpose of section 64(2) and (6) of the Act is 2 months after the day on which the direction is given.

The prescribed manner in which a person may require the Commissioner under section 64(3) of the Act to give a direction under section 64(2) of the Act is as follows:

If the Commissioner requires an applicant to amend a patent application or any specification before the Commissioner proceeds with the application, the applicant must comply with regulation 58.

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

The Commissioner must examine a patent application and the complete specification relating to the application, and report in accordance with section 65 of the Act, in the order in which the Commissioner is asked for an examination under section 64 of the Act.

The Commissioner may advance the order of examination, despite regulation 76,—

A request to advance an application under this regulation must be accompanied by evidence in support of the request.

The prescribed manner in which the Commissioner must set a deadline under section 67 of the Act is that the deadline must be stated in the examination report issued under section 65 of the Act.

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

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

The prescribed searches to which section 70(1) of the Act does not apply are searches that are both—

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

The prescribed manner for informing the Commissioner of the results of any documentary search under section 70(1) of the Act is—

The period prescribed for the purpose of section 71(1) of the Act is 12 months after the date of issue of the first examination report under section 65 of the Act.

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

A notice filed in accordance with section 73 of the Act must identify which of the classes of person identified in section 22(1) of the Act applies to the nominated person.

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

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

The requirements prescribed for the purpose of section 74(1)(b) of the Act are—

A notice under section 75 of the Act requesting the Commissioner to postpone acceptance of the complete specification must be filed before the complete specification is accepted.

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

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

The notice must include—

The other documents that are prescribed for the purpose of section 78(1) of the Act are all documents, other than documents referred to in subclause (2), that are—

The documents prescribed for the purposes of section 78(2)(a) to (c) of the Act are documents—

The documents prescribed for the purpose of section 79(2) of the Act are—

However, subclause (1) does not apply to documents—

A request for leave to amend a specification after acceptance under section 85 of the Act must include—

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

The person must, within 3 months after receiving that notice, satisfy the Commissioner that the amendment should be allowed.

The period may be extended by the Commissioner by up to 1 month on the request of the person who received the notice or on the Commissioner’s own initiative.

The period prescribed for the purpose of section 87(1) of the Act for giving notice to the Commissioner of opposition to a proposed amendment is 2 months after the date of the publication in the journal under section 86 of the Act of the request for leave to amend the specification under section 85 of the Act.

The Commissioner may, on the request of a person wishing to oppose the proposed amendment, extend the period for filing a notice of opposition—

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

A notice of opposition to a proposed amendment under section 87 of the Act—

The Commissioner must give a copy of the notice and statement of case to the applicant or patentee (as the case may be) who made the request for leave to amend the specification under section 85 of the Act.

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

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

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

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

The opponent may, within 3 months after receiving the copy of the applicant’s evidence, file evidence confined to matters strictly in reply.

The period prescribed for the purpose of section 90(1) of the Act for notifying the Commissioner of an assertion is the period that commences when the complete specification becomes open for public inspection and ends when the complete specification is accepted.

An assertion made under section 90(1) of the Act must include—

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

The Commissioner may, but is not required to, seek and receive further information or submissions from the person who made the assertion.

The prescribed manner in which a person may oppose the grant of a patent under section 92(1) of the Act is by filing a notice of opposition that—

The Commissioner must give the applicant a copy of the notice of opposition and statement of case.

A notice of opposition made under section 92(1) of the Act must be filed within 3 months after the date of the publication of the accepted complete specification.

The Commissioner may, on the request of a person wishing to oppose the grant of patent, extend the period for filing a notice of opposition—

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

The applicant must file a counter-statement within 2 months after receiving a copy of the notice of opposition and of the statement of case filed under section 92(1) of the Act.

The counter-statement must set out the grounds on which the opposition is contested.

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

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

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

The opponent may, within 3 months after receiving the copy of the applicant’s evidence, file evidence confined to matters strictly in reply.

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

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

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

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

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

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

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

The circumstances in which the Commissioner may postpone the grant of a patent under section 101(3) of the Act are—

An application under section 105 of the Act for the amendment of a patent must include—

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

A request for revocation made under section 107(2) of the Act must include the following information:

The prescribed manner in which a person may apply to the Commissioner for the revocation of a patent under section 112 of the Act is that the application—

The Commissioner must give the patentee a copy of the application and of the statement of case.

The patentee must file a counter-statement to an application for revocation of a patent, within 2 months after receiving a copy of the application and of the statement of case, setting out the grounds on which the application for revocation is contested.

The Commissioner may extend the time limit for filing a counter-statement by up to 2 months if—

A time limit may be extended under subclause (2) only once.

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

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

The applicant may, within 3 months after receiving the copy of the patentee’s evidence, file evidence confined to matters strictly in reply.

This regulation applies if the patentee fails to file a counter-statement to an application for revocation within the period during which the counter-statement is required to be filed.

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

The Commissioner may determine the application for revocation under sections 112 to 114 of the Act after considering the application for revocation and any evidence filed in support of the application.

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

The notification must—

The Commissioner must, as soon as practicable, hold a hearing if a party requests it.

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

In that case, the Commissioner may either direct a hearing on the papers or treat the request for a hearing as having been withdrawn.

A notice of an offer by a patentee under section 116 of the Act to surrender a patent must include—

In regulations 107 to 109, opponent means the person who gives to the Commissioner a notice of opposition to the surrender under section 116(3) of the Act.

The period prescribed for the purpose of section 116(3) of the Act for giving to the Commissioner a notice of opposition to the surrender of a patent is 2 months after the publication in the journal of the offer to surrender the patent.

The notice of opposition—

The Commissioner must give a copy of the notice of opposition and of the statement of case to the patentee.

The patentee must file a counter-statement within 2 months after receiving a copy of the notice of opposition and of the statement of case under regulation 107.

The counter-statement must set out the grounds on which the opposition is contested.

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

The opponent may, within 2 months after receiving the copy of the counter-statement under regulation 108, file evidence in support of the opponent’s case.

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

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

A request under section 117(2) of the Act for restoration of a patent and any patent of addition must include the date the renewal fee was due and evidence in support of the request.

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

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

In this regulation and regulations 111 to 114, patentee means a person referred to in section 119 of the Act who makes a request for an order under section 117 of the Act.

For the purpose of section 120 of the Act, the prescribed period within which a request under section 117 of the Act may be made is 12 months after the date on which the renewal fee becomes due under regulation 8(3).

If the request under section 117 of the Act is made after the period referred to in subclause (1) expires, the request must be accompanied by—

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

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

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

For the purpose of section 123(1) of the Act, the prescribed period within which notice of opposition to an order being made under section 117 of the Act may be given to the Commissioner is 2 months after the date on which the request made in accordance with sections 117 to 120 of the Act is published in the journal under section 122 of the Act.

The notice of opposition—

The Commissioner must give a copy of the notice of opposition and of the statement of case to the patentee.

In this regulation and regulation 114, opponent means the person who gives notice to the Commissioner of opposition to an order being made under section 117 of the Act.

The patentee must file a counter-statement within 2 months after receiving a copy of the notice of opposition and of the statement of case under regulation 112.

The counter-statement must set out the grounds on which the opposition is contested.

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

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

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

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

Every order under section 124 of the Act must contain or be subject to the provisions prescribed in this regulation.

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

However, subclause (2) applies only to the extent that the person—

To avoid doubt, the protection in subclause (2) applies to activities undertaken at any time after the patent ceases to have effect.

A request under section 125 of the Act for an order to restore a patent application and to extend the period for complying with the requirements imposed on the applicant by or under the Act or the Patent Cooperation Treaty (as the case may be) must include evidence in support of the request.

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

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

If the Commissioner requires further evidence under subclause (3), the applicant must file that evidence within 3 months after the date that the request for restoration is made.

The prescribed period for the purpose of section 126(1) of the Act within which a request under section 125 of the Act may be made is,—

If the request under section 125 of the Act is made after the period referred to in subclause (1) expires, the request must be accompanied by—

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

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

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

The period prescribed for the purpose of section 127(1) of the Act for giving notice to the Commissioner of opposition to an order being made under section 128 of the Act is 2 months after the date on which the request for the order is published in the journal under section 125(4) of the Act.

The notice of opposition—

The Commissioner must give a copy of the notice of opposition and statement of case to the applicant.

In this regulation and regulation 120, opponent means the person who has given notice to the Commissioner of opposition to an order being made under section 128 of the Act.

The applicant must file a counter-statement within 2 months after receiving a copy of the notice of opposition and of the statement of case under regulation 118.

The counter-statement must set out the grounds on which the opposition is contested.

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

The opponent may, within 2 months after receiving the copy of the counter-statement under regulation 119, file evidence in support of the opponent’s case.

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

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

Every order under section 128 of the Act must contain or be subject to the provisions prescribed in this regulation.

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

However, subclause (2) applies only to the extent that the person—

To avoid doubt, the protection in subclause (2) applies to activities undertaken at any time after the patent application becomes void or is abandoned.

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

The Commissioner may also require that the person who makes the request produce the original copy of the assignment, agreement, or other document and any other evidence.

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

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

The Commissioner may give any directions regarding the subsequent procedure that are consistent with the requirement in section 131(3) of the Act.

The Commissioner must ensure that the information required by section 197(1) of the Act is entered in the patents register in respect of patents in force in New Zealand as soon as practicable after the date that a patent is granted or, in the case of information filed after the grant of a patent, as soon as practicable after the information is filed.

The information that must be entered in the patents register under section 197(1)(f) of the Act is all documents that are open to public inspection (for example, see section 78 of the Act and regulation 85).

The Commissioner must enter, under section 197(1)(f) of the Act, the following information in the patents register when the Commissioner issues a certificate of payment under regulation 11:

The patents register must be available for access and searching by members of the public at all times unless subclause (2) applies.

The Commissioner may refuse access to the patents register or suspend its operation, in whole or in part,—

A request under section 199(c) of the Act for information relating to a patent or patent application may be made—

A request under section 199 of the Act must contain the purpose for which copies of documents (if sought) or information is required.

A request by a patentee to alter a name, nationality, principal place of business, address, or address for service entered in the patents register in respect of the patentee’s patent must include—

Before acting on a request to alter a name or nationality, the Commissioner may require any further evidence in support of the alteration that the Commissioner thinks fit.

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

If the Commissioner is satisfied that the request may be allowed, the Commissioner must ensure that the patents register is altered accordingly.

This regulation applies in respect of orders made by the court under the Act that—

A person in whose favour an order to which this regulation applies is made must give notice of the order to the Commissioner.

The notice must include—

An application under section 202(2) of the Act for a correction of an error or omission must include—

The Commissioner may require the applicant to file further evidence in support of the application.

If the Commissioner requires further evidence under subclause (2), the applicant must file that evidence within 3 months after the date that the application is made.

In this regulation and in regulations 137 to 140,—

The period prescribed for the purpose of section 202(4) of the Act is 2 months after the date on which the proposed correction is published in the journal.

A notice of opposition under section 202(4) of the Act must include—

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

The Commissioner must give a copy of the notice of opposition and of the statement of case to the applicant.

The applicant must file a counter-statement within 2 months after receiving a copy of the notice of opposition under section 202(4) of the Act and of the statement of case under regulation 137.

The counter-statement must set out the grounds on which the opposition is contested.

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

The opponent may, within 4 months after receiving the copy of the counter-statement filed under regulation 138, file evidence in support of the opponent’s case.

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

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

Any person may oppose a correction proposed by the Commissioner on his or her own initiative under section 202 of the Act by filing a notice within 2 months after the date on which the proposed correction is published in the journal.

The notice must include—

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

The opponent may, within 4 months after filing the notice, file evidence in support of his or her case.

Following consideration of the notice and any evidence filed, the Commissioner must notify the opponent of the decision he or she intends to make.

Any notice given to the Commissioner under section 203(3) of the Act must include a copy of the application for rectification.

The Commissioner must enter a notice of application under section 203(3) of the Act in the patents register as soon as practicable after receiving the notice.

Any notice served on the Commissioner under section 203(5) of the Act must include—

The Commissioner must publish in the journal under section 206 of the Act the following particulars about patent applications as soon as practicable, so far as the particulars are known to the Commissioner:

If these regulations require or permit evidence to be filed, it must be by statutory declaration or affidavit unless otherwise expressly provided in these regulations.

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

Any action taken by the Commissioner under this regulation may be on any terms as he or she may direct.

An application under section 232 of the Act for an extension of a time limit under section 231 of the Act must—

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

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

The Commissioner may, in exceptional circumstances, extend a time limit prescribed by these regulations for filing information or a document or for taking a step in respect of a matter.

However, this regulation does not apply—

The Commissioner may grant the extension even if either or both of the following apply:

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

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

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

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

A waiver is granted by giving notice to the persons known to the Commissioner to be affected by the waiver, and may be on any terms that the Commissioner thinks fit.

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

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

The Commissioner must maintain electronic copies of all provisional and complete specifications, drawings, and other information or documents associated with a patent application or patent, including filing dates, priority dates, and the names of the inventors and applicants, that are filed under the Act or these regulations.