PATENTS REGULATIONS 1991
- made under the Patents Act 1990Table 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
- 3.12 What this Division is about
- 3.13 Priority date for application by person declared under section 36 of the Act
- 3.13A Priority date for PCT application
- 3.13B Priority date for Convention application
- 3.13C Priority date for complete application associated with provisional application
- 3.13D Priority date for divisional application filed prior to grant of patent
- 3.13E Priority date for divisional application after grant of innovation patent
- 3.14 Priority dates: certain amended claims
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
- 5.1 What this Chapter is about
- 5.2 Definitions
PART 5.2----FILING OF OPPOSITION DOCUMENTS
Division 5.2.1--Substantive opposition
- 5.4 Notice of opposition--standard patent opposition
- 5.5 Statement of grounds and particulars--standard patent opposition
- 5.6 Notice of opposition and statement of grounds and particulars--section 101M opposition
- 5.7 Filing of evidence
- 5.8 Evidentiary periods
- 5.9 Extension of time for filing evidence
Division 5.2.2--Procedural opposition
- 5.10 Notice of opposition
- 5.11 Statement of grounds and particulars
- 5.12 Practice and procedure
PART 5.3----AMENDMENTS TO OPPOSITION DOCUMENTS
- 5.13 Application of regulation 22.22
- 5.14 Notice of opposition--correction of errors or mistake
- 5.15 Notice of opposition--change of opponent
- 5.16 Statement of grounds and particulars
PART 5.4----DISMISSAL OF OPPOSITION
PART 5.5----HEARING OF OPPOSITION
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)
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
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
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
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
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
- 20.53 Lien
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
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
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
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
- 23.52 Application of amendments