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PATENTS REGULATIONS 1991

- made under the Patents Act 1990

Table of Provisions

CHAPTER 1--Introductory

  • 1.1 Name of Regulations
  • 1.3 Interpretation
  • 1.3A Meaning of completed in relation to a search
  • 1.4 Meaning of Convention country
  • 1.4A Meaning of eligible importing country
  • 1.5 Deposit requirements: prescribed period
  • 1.6 Secret use--prescribed period
  • 1.8 Completion of applications

CHAPTER 2--Patent rights, ownership and validity

  • 2.1 Applications by co - owners for directions
  • 2.2 Information made publicly available--recognised exhibitions
  • 2.2A Information made publicly available--learned societies
  • 2.2B Information made publicly available--reasonable trial of invention
  • 2.2C Information made publicly available--other circumstances
  • 2.2D Information made publicly available without consent--period
  • 2.3 Divisional applications--period
  • 2.4 Prescribed period: patents of addition
  • 2.5 Prescribed period: assertion that invention is not a patentable invention
  • 2.6 Prescribed period: notification of assertion of invalidity of innovation patent
  • 2.7 Documents to accompany notice of assertion of invalidity

CHAPTER 3--From application to acceptance

PART 1--INVENTIONS--GENERALLY

Division 1--Applications

  • 3.1 Prescribed documents: patent applications
  • 3.1A Applicant taken to be nominated person
  • 3.2 Provisional application--direction to meet formalities requirements
  • 3.2A Complete application for standard patent--direction to meet formalities requirements
  • 3.2AB PCT application--title of specification
  • 3.2B Specifications: formalities check for innovation patents
  • 3.2C Specifications--formalities check for PCT application
  • 3.3 Abstracts
  • 3.4 Substitute abstracts
  • 3.5 Filing date--patent applications other than PCT applications
  • 3.5AA Filing date--PCT applications
  • 3.5A Filing date: incomplete specifications
  • 3.5AB PCT applications--international applications taken to be applications under the Act
  • 3.5AC PCT applications--amendment
  • 3.5AD PCT applications--prescribed requirements
  • 3.5AE PCT applications--prescribed period
  • 3.5AF PCT applications--translations and prescribed documents
  • 3.5AG Convention application--prescribed particulars
  • 3.5B Filing of documents outside business hours
  • 3.6 Requests to make determinations between interested parties
  • 3.7 Form of certain applications
  • 3.8 Time within which applications are to be made following certain decisions and declarations
  • 3.9 Prescribed period: treatment of complete application as provisional
  • 3.10 Prescribed period: making of complete applications
  • 3.11 Prescribed period--making Convention application

Division 2--Priority date of claim

Division 3--Examination

  • 3.14A Request for international - type search relating to provisional application
  • 3.14B Request for preliminary search and opinion relating to complete application
  • 3.14C Priority dates--Convention applications and PCT applications: prescribed period for disregarding earlier applications
  • 3.14D Prescribed documents: basic application
  • 3.15 Requirements of request for examination
  • 3.16 Prescribed grounds and period for examination
  • 3.17 Requirement for Commissioner to direct or expedite examination
  • 3.17A PCT applications--Commissioner not to give certain directions
  • 3.17B PCT applications--examination requirements
  • 3.17C PCT applications--notice if examination declined
  • 3.18 Report of Commissioner: examination
  • 3.19 Conduct of examination: standard patents
  • 3.22 Disclosure of patent documents and information to International Bureau etc

PART 2--INVENTIONS--THAT ARE MICRO-ORGANISMS

  • 3.23 Documents in accepted applications and patents involving micro - organisms
  • 3.24 Commissioner may request samples and viability statement
  • 3.25 Request for Commissioner's certification authorising release of sample of a micro - organism
  • 3.25A Request for certification--micro - organism subject of application for standard patent
  • 3.25B Grant of certification--when Commissioner must grant certification
  • 3.25C Grant of certification--limited use undertaking
  • 3.25D Grant of certification--order under section 133 of Act
  • 3.25E Grant of certification--exploitation for Crown purposes
  • 3.25F Grant of certification--expired patent etc.
  • 3.25G Imposing conditions on certification
  • 3.25H Notice of decision on certification request
  • 3.26 Breach of undertakings given in respect of micro - organisms
  • 3.27 Procedure in proceedings for breach of an undertaking
  • 3.28 Relief in proceedings for breach of undertakings
  • 3.29 Notification that a deposit requirement has ceased to be satisfied
  • 3.30 Prescribed period: deposit requirements taken to be satisfied
  • 3.31 Application for declaration that deposit requirements are not satisfied
  • 3.32 Provisional specifications--prescribed circumstances

CHAPTER 4--Publication

  • 4.1 Prescribed information: applicants and applications
  • 4.2 Notice that specification is open to public inspection
  • 4.3 Prescribed documents: public inspection
  • 4.4 Publication and inspection of PCT applications

CHAPTER 5--Opposition

PART 5.1----PRELIMINARY

PART 5.2----FILING OF OPPOSITION DOCUMENTS

Division 5.2.1--Substantive opposition

Division 5.2.2--Procedural opposition

PART 5.3----AMENDMENTS TO OPPOSITION DOCUMENTS

PART 5.4----DISMISSAL OF OPPOSITION

  • 5.17 Dismissal on request
  • 5.18 Dismissal on initiative of Commissioner

PART 5.5----HEARING OF OPPOSITION

  • 5.19 Hearing and decision--re - examination
  • 5.20 Hearing and decision--other circumstances

PART 5.6----MISCELLANEOUS

  • 5.21 Opposition to amendment--grounds
  • 5.22 Commissioner may give directions
  • 5.23 Commissioner may consult documents
  • 5.24 Representations to Commissioner--formal requirements
  • 5.25 Extension of time for filing--amendment at Commissioner's direction
  • 5.26 Withdrawal of opposition

CHAPTER 6--Grant and term of patents

PART 1--PATENTS--GENERALLY

  • 6.1 Publication of notice of grant of standard patent
  • 6.1A Prescribed particulars--grant of standard patent
  • 6.2 Prescribed period: grant of standard patent
  • 6.2A Prescribed particulars--grant of innovation patent
  • 6.3 Date of patent

PART 2--EXTENSION--OF PHARMACEUTICAL PATENTS

  • 6.7 Definitions
  • 6.8 Information to accompany application
  • 6.9 Application without pre - TGA marketing approval
  • 6.10 Application with pre - TGA marketing approval
  • 6.11 Further information

CHAPTER 6A--Divisional applications

  • 6A.1 Divisional applications before grant--standard and innovation patents
  • 6A.2 Divisional applications after grant--innovation patents

CHAPTER 7--Patents of addition

  • 7.1 Form of application for grant of patent of addition etc
  • 7.2 Form of application for revocation of patent and grant of patent of addition instead

CHAPTER 9--Re-examination

  • 9.1 Notice of Commissioner's decision to re - examine complete specification
  • 9.2 Request for re - examination of complete specification
  • 9.3 Copy of report on re - examination
  • 9.4 Prescribed period: statement disputing report by Commissioner
  • 9.5 Completion of re - examination

CHAPTER 9A--Examination of innovation patents

  • 9A.1 Request for examination
  • 9A.2 Examination of complete specification
  • 9A.3 Conduct of examination
  • 9A.4 Period for examination
  • 9A.5 Validity of innovation patent

CHAPTER 10--Amendments

  • 10.1 Form of amendments
  • 10.2 Commissioner to consider and deal with requests for leave to amend
  • 10.2A Documents considered for determining whether amendment allowed
  • 10.2B Amendments not allowable for patent requests
  • 10.2C Amendments not allowable for complete specifications
  • 10.3 Amendments not allowable for other documents
  • 10.4 Commissioner to refuse request for leave to amend
  • 10.5 Commissioner to grant leave to amend
  • 10.6 Time for allowance of amendments
  • 10.6A Deferred consideration of request for amendment
  • 10.6B Revocation of grant of leave
  • 10.7 Rectification of Register
  • 10.8 Prescribed decisions: appeal to Federal Court
  • 10.10 Prescribed period: filing of court order
  • 10.11 Form of direction by Commissioner: patents
  • 10.12 Form of direction by Commissioner: applications
  • 10.14 Form of request: claim under assignment or agreement

CHAPTER 11--Infringement

  • 11.1 Infringement exemptions: prescribed foreign countries

CHAPTER 12--Compulsory licences and revocation of patents

PART 1--COMPULSORY--LICENCES (GENERAL)

  • 12.1 Applications for orders for compulsory licences
  • 12.2 Prescribed period: revocation of patent

PART 2--PATENTED--PHARMACEUTICAL INVENTION COMPULSORY LICENCES (FOR MANUFACTURE AND EXPORT TO ELIGIBLE IMPORTING COUNTRIES)

  • 12.2A Applications for PPI orders
  • 12.2B PPI compulsory licences--notification requirements
  • 12.2C PPI compulsory licences--labelling and marking of product
  • 12.2D PPI compulsory licences--shipment information
  • 12.2E PPI compulsory licences--giving information to the Commissioner
  • 12.2F Dealing with information provided under regulation 12.2E

PART 3--SURRENDER--AND REVOCATION OF PATENTS

  • 12.3 Form of notice: offer to surrender patent
  • 12.4 Applications to revoke patents

CHAPTER 13--Withdrawal and lapsing of applications and ceasing of patents

  • 13.1 Publication of notice of withdrawal of application
  • 13.1A Period in which standard patent applications may not be withdrawn
  • 13.1B Period in which innovation patent applications may not be withdrawn
  • 13.1C PCT applications--prescribed circumstances in which application may be withdrawn or taken to be withdrawn
  • 13.3 Prescribed period: continuation fees
  • 13.4 Prescribed period: acceptance of request and specification
  • 13.5 If applications lapse
  • 13.5A PCT application--prescribed circumstances for lapsing of application
  • 13.6 Time for payment of renewal fee for patent
  • 13.7 Prescribed period: ceasing of innovation patents

CHAPTER 15--Special provisions relating to associated technology

  • 15.1 Time for restoration of application for patent
  • 15.2 Requirements for reinstatement of international applications
  • 15.3 Prescribed period: order relating to standard patent

CHAPTER 17--The Crown

  • 17.1A Prescribed period: order relating to standard patent
  • 17.2 Prescribed period, document and fee: filing of international applications

CHAPTER 19--The register and official documents

  • 19.1 Particulars to be registered
  • 19.2 Request for information from Commissioner

CHAPTER 20--Individual Patent Attorneys

PART 1--INTRODUCTION

  • 20.1A Application of this Chapter
  • 20.1B Performance of functions and exercise of powers
  • 20.1C Conduct in New Zealand does not constitute an offence under this Chapter
  • 20.1 Interpretation

PART 2--OBTAINING--REGISTRATION FOR FIRST TIME

  • 20.2 Form of application
  • 20.3 Evidence that applicant meets registration requirements
  • 20.4 Certificate of registration
  • 20.5 Evidence of academic qualifications
  • 20.6 Academic qualifications
  • 20.7 Evidence of knowledge requirements
  • 20.8 Knowledge requirements
  • 20.9 Exemption from a requirement in Schedule 5
  • 20.10 Employment requirements
  • 20.11 Statements of skill
  • 20.12 Prescribed offences

PART 3--ACCREDITATION--OF COURSES OF STUDY

  • 20.13 Accreditation of courses of study
  • 20.14 Provisional accreditation

PART 4--BOARD--EXAMINATIONS

  • 20.15 Board examinations
  • 20.16 Time for holding Board examinations
  • 20.17 Examinable subject matter
  • 20.18 Admission to sit for a Board examination
  • 20.19 Notification of Board examination results
  • 20.20 Reasons for failure of Board examination
  • 20.21 Supplementary Board examination

PART 5--MAINTAINING--REGISTRATION

  • 20.22 Requirements for remaining on Register of Patent Attorneys
  • 20.23 Payment of annual registration fee
  • 20.24 Continuing professional education -- number of hours
  • 20.25 Method of demonstrating that continuing professional education has been undertaken

PART 6--REMOVAL--OF ATTORNEY'S NAME FROM REGISTER OF PATENT ATTORNEYS

  • 20.26 Voluntary removal of name from Register of Patent Attorneys
  • 20.27 Failure to pay annual registration fee
  • 20.28 Failure to comply with continuing professional education requirements

PART 6A--SUSPENSION--OF REGISTRATION

  • 20.28A Requirement to notify of serious offence
  • 20.28B Suspension of registration--serious offence

PART 7--RESTORING--ATTORNEY'S NAME TO REGISTER OF PATENT ATTORNEYS

  • 20.29 Restoring attorney's name to Register of Patent Attorneys
  • 20.30 Restoring attorney's name to Register of Patent Attorneys following payment of unpaid fee
  • 20.31 Restoring attorney's name to Register of Patent Attorneys in other circumstances

PART 8--DISCIPLINE

Division 1--General

  • 20.32 Definitions
  • 20.33 Role of Board in disciplinary proceedings
  • 20.34 Board may require attorney to cooperate with investigation
  • 20.35 Commencing disciplinary proceedings

Division 2--Proceedings in Disciplinary Tribunal

  • 20.36 Panel of the Disciplinary Tribunal to be constituted
  • 20.36A Meetings of Panel of Disciplinary Tribunal
  • 20.36B Procedure of Panel of Disciplinary Tribunal
  • 20.36C Panel Chair unavailable to complete hearing
  • 20.36D Member other than the Panel Chair unavailable to complete hearing
  • 20.36E No member ordinarily resident in same country as registered patent attorney subject to proceedings
  • 20.37 Notification of hearing of disciplinary proceedings
  • 20.38 Hearings to be public except in special circumstances
  • 20.39 Representation before Panel of Disciplinary Tribunal
  • 20.40 Summoning of witnesses
  • 20.41 Offences by persons appearing before a Panel of Disciplinary Tribunal
  • 20.42 Protection of certain persons
  • 20.43 Decision of Panel of Disciplinary Tribunal
  • 20.44 Penalties -- professional misconduct
  • 20.45 Penalties -- unsatisfactory professional conduct
  • 20.46 Finding that attorney was unqualified at time of registration
  • 20.47 Finding that registration obtained by fraud
  • 20.48 Matters that may be considered in determining penalties
  • 20.49 Findings of Panel of Disciplinary Tribunal
  • 20.50 Notification and publication of decisions of Panel of Disciplinary Tribunal
  • 20.51 Completion of outstanding business
  • 20.52 Former attorney may be required to provide assistance

PART 9--RIGHTS--OF REGISTERED PATENT ATTORNEYS

PART 10--ADMINISTRATION

Division 1--Trans-Tasman IP Attorneys Board

  • 20.56 Resignation and removal of members from Board
  • 20.57 Meetings of Board
  • 20.58 Member presiding at meetings of Board
  • 20.59 Quorum for Board meetings

Division 2--Trans-Tasman IP Attorneys Disciplinary Tribunal

  • 20.61 Establishment of the Trans - Tasman IP Attorneys Disciplinary Tribunal
  • 20.61A Functions of Disciplinary Tribunal
  • 20.62 Membership of the Disciplinary Tribunal etc.
  • 20.63 Eligibility for appointment as Tribunal member
  • 20.63A Acting President
  • 20.63B Acting Tribunal members
  • 20.64 Disclosure of interests

CHAPTER 20A--Incorporated Patent Attorney

PART 1--INTRODUCTION

  • 20A.1 Application of Chapter 20A
  • 20A.1A Performance of functions and exercise of powers
  • 20A.1B Conduct in New Zealand does not constitute an offence under this Chapter
  • 20A.2 Definitions

PART 2--OBTAINING--REGISTRATION FOR FIRST TIME

  • 20A.3 Form of application
  • 20A.4 Certificate of registration

PART 3--MAINTAINING--REGISTRATION

  • 20A.5 Requirements for remaining on Register of Patent Attorneys

PART 4--REMOVAL--FROM REGISTER OF PATENT ATTORNEYS

  • 20A.6 Voluntary removal of name from Register of Patent Attorneys
  • 20A.7 Failure to pay annual registration fee
  • 20A.8 Failure to maintain professional indemnity insurance

PART 5--DISCIPLINE

Division 1--General

  • 20A.9 Definitions
  • 20A.10 Board may apply for cancellation or suspension of incorporated patent attorney's registration

Division 2--Proceedings in Disciplinary Tribunal

  • 20A.11 Panel of the Disciplinary Tribunal to be constituted
  • 20A.11A Meetings of Panel of Disciplinary Tribunal
  • 20A.11B Procedure of Panel of Disciplinary Tribunal
  • 20A.11C Panel Chair unavailable to complete hearing
  • 20A.11D Member other than the Panel Chair unavailable to complete hearing
  • 20A.11E No member ordinarily resident in same country in which incorporated patent attorney subject to proceedings is registered
  • 20A.12 Notification of hearing
  • 20A.13 Hearings to be public except in special circumstances
  • 20A.14 Representation before a Panel of Disciplinary Tribunal
  • 20A.15 Summoning of witnesses
  • 20A.16 Offences by persons appearing before a Panel of Disciplinary Tribunal
  • 20A.17 Protection of certain persons
  • 20A.18 Decision of Panel of Disciplinary Tribunal
  • 20A.19 Notification and publication of decisions of Panel of Disciplinary Tribunal
  • 20A.20 Completion of outstanding business
  • 20A.21 Former attorney may be required to provide assistance

PART 6--RESTORING--ATTORNEY'S NAME TO REGISTER OF PATENT ATTORNEYS

  • 20A.22 Restoring name to Register of Patent Attorneys

CHAPTER 21--Administration

  • 21.1 Patent Office and sub - offices
  • 21.2 Employees to whom Commissioner may delegate (Act s 209(1))

CHAPTER 22--Miscellaneous

PART 1--FEES--AND COSTS

Division 1--Fees

  • 22.1 Complete applications treated as provisional applications
  • 22.2 General fees
  • 22.2A Failure to pay: patent attorneys fees
  • 22.2B Failure to pay: filing fees for patent requests
  • 22.2C Failure to pay: certain other filing fees etc
  • 22.2D Failure to pay: fees payable by patentee for requests under s 101A(b) of the Act
  • 22.2EA Failure to pay: fee for grant of leave to amend specification (person invited to pay)
  • 22.2F Consequence if Commissioner does not invite payment
  • 22.2G Failure to pay: hearing fees
  • 22.2H Failure to pay: certain fees for actions by Commissioner
  • 22.2HA Failure to pay: fees for requesting expedited dispatch
  • 22.2I Failure to pay: acceptance fee
  • 22.3 General fees for international applications
  • 22.4 Fees for international applications payable for the benefit of the International Bureau
  • 22.5 PCT Fund
  • 22.6 Exemption from fees
  • 22.7 Refund of certain fees

Division 2--Costs

  • 22.7A Proceedings to which this Division applies
  • 22.8 Costs

PART 2--OTHER--MATTERS

  • 22.9 Death of applicant or nominated person
  • 22.10 Address for service
  • 22.10AA Period for doing certain acts -- office not open for business
  • 22.10AB Days when office not open for business
  • 22.10AC Prescribed acts
  • 22.11 Extension of time
  • 22.12 Giving of oral evidence
  • 22.13 Declarations
  • 22.14 Directions not otherwise prescribed
  • 22.15 Requirements for filing documents
  • 22.15A Certificate of verification and corrected translation
  • 22.16 Consequences for certain documents not meeting filing requirements
  • 22.16A Consequences for evidence not meeting filing requirements
  • 22.17 Incapacity of certain persons
  • 22.19 Copies of certain documents to be supplied
  • 22.20 International applications and the Patent Office
  • 22.21 Protection or compensation of certain persons
  • 22.22 Exercise of discretionary powers by Commissioner
  • 22.23 Written submissions and oral hearings
  • 22.24 Practice and procedure other than for opposition proceedings
  • 22.25 Requirements cannot be complied with for reasonable cause
  • 22.26 Review of decisions
  • 22.27 Documents not to infringe copyright--prescribed documents

CHAPTER 23--Application, saving and transitional provisions

PART 1--GENERAL

  • 23.1 Saving: prohibition orders
  • 23.2 Delegation: certain matters referred to in this Chapter
  • 23.3 Opposition to grant: practice and procedure
  • 23.4 Certain opposition: practice and procedure
  • 23.5 Fees payable for certain matters relating to opposition
  • 23.6 Certain delegations: opposition
  • 23.7 Certain undertakings
  • 23.8 Restoration of lapsed applications or ceased patents
  • 23.9 Certain continuation and renewal fees
  • 23.10 Fee taken to have been paid
  • 23.11 Supply of product referred to in section 117 of the Act
  • 23.12 Certain withdrawn, abandoned or refused applications
  • 23.13 Certain certificates of validity
  • 23.14 Certain action under the 1952 Act
  • 23.15 Amendment of petty patents
  • 23.16 Certain applications under 1952 Act: time for acceptance
  • 23.17 PCT applications to which subsection 89(5) of the Act does not apply
  • 23.18 Certain priority dates: saving
  • 23.25 Fees
  • 23.26 Certain actions and proceedings
  • 23.32 Transitional: priority date and date of patent for innovation patent application that is a divisional application of a petty patent or petty patent application
  • 23.33 Transitional: examination of innovation patents converted from petty patent applications
  • 23.34 Transitional: certain PCT applications
  • 23.35 Transitional: payment of fees for petty patents

PART 2--AMENDMENTS--MADE BY PARTICULAR INSTRUMENTS

  • 23.36 Amendments made by Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1)
  • 23.37 Amendments made by Intellectual Property Legislation Amendment (TRIPS Protocol and Other Measures) Regulation 2015

PART 3--TRANSITIONAL--PROVISIONS FOR SCHEDULE 4 TO THE INTELLECTUAL PROPERTY LAWS AMENDMENT ACT 2015 AND SCHEDULE 1 TO THE INTELLECTUAL PROPERTY LEGISLATION AMENDMENT (SINGLE ECONOMIC MARKET AND OTHER MEASURES) REGULATION 2016

  • 23.38 Definitions
  • 23.39 Removal of name from Register if New Zealand court determines person should not practise as a patent attorney in New Zealand
  • 23.40 Restoring attorney's name after advice from New Zealand Commissioner of Patents
  • 23.41 Transitional--registration as a patent attorney
  • 23.42 Continuation of certain disciplinary proceedings--individuals
  • 23.43 Continuation of certain disciplinary proceedings--incorporated patent attorneys
  • 23.44 Termination of appointment of Patents and Trade Marks Attorneys Disciplinary Tribunal upon completion of all proceedings
  • 23.45 Transitional--exemptions from patents knowledge requirements

PART 4--AMENDMENTS--MADE BY THE INTELLECTUAL PROPERTY LAWS AMENDMENT (PRODUCTIVITY COMMISSION RESPONSE PART 1 AND OTHER MEASURES)REGULATIONS 2018

  • 23.46 Amendments made by Part 2 of Schedule 2
  • 23.47 Amendments made by Part 3 of Schedule 2
  • 23.48 Amendments made by Part 5 of Schedule 2
  • 23.49 Amendments made by Part 7 of Schedule 2

PART 5--AMENDMENTS--MADE BY THE INTELLECTUAL PROPERTY LAWS AMENDMENT (PCT TRANSLATIONS AND OTHER MEASURES)REGULATIONS 2019

  • 23.50A Amendments made by Schedule 1
  • 23.50 Amendment made by Part 3 of Schedule 2

PART 6--AMENDMENTS--MADE BY THE INTELLECTUAL PROPERTY LAWS AMENDMENT (PRODUCTIVITY COMMISSION RESPONSE PART 2 AND OTHER MEASURES)REGULATIONS 2020

  • 23.51 Application of amendments

PART 7--AMENDMENTS--MADE BY THE INTELLECTUAL PROPERTY LAWS AMENDMENT (FEE AMOUNTS AND OTHER MEASURES)REGULATIONS 2020

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