Patents Regulations 2014

2014/275

Patents Regulations 2014

Jerry Mateparae, Governor-General

Order in Council

At Wellington this 11th day of August 2014

Present:
The Right Hon John Key presiding in Council

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

1 Title

2 Commencement

3 Interpretation

4 Application

Part 1
Preliminary

Subpart 1Fees 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

Subpart 2Forms 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 3Addresses

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 4Agents

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 5Interpretation

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 1Patent 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 2Treaty 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 3Convention applications

68 Convention applicants may make convention applications

69 Convention application for patent

70 Evidence in support of convention applications

Subpart 4Rest 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 1Patents 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 2Miscellaneous 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

177 Transitional provision as to statutory references to corresponding matters

Schedule
Fees and penalties

Explanatory note

Administrative information