Patents (United States of America) Regulations 1956 (reprint as at 03 September 2007), New Zealand

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1

These regulations may be cited as the Patents (United States of America) Regulations 1956.

2

Where an invention has been communicated to the New Zealand Government or any individual, firm, or corporation in New Zealand at the request of that Government under the conditions set out in an agreement between New Zealand and the United States of America for the security of military information, and an application for a patent for the same inventionismadebythepersonfromwhomtheinventionhas been so communicated or by the personal representative or assignee of that person, then—

(a)

The communication, or the publication, making, use, exercise,orvendingoftheinventionsinconsequenceof the communication, shall not prejudice the application for a patent or invalidate the grant of a patent thereon; and

(b)

The application, and any patent granted thereon, shall havepriorityoveranyotherapplicationforapatentfor

Note These regulations are administered in the Department of Justice.

1

Patents (United States of America)Reprinted as atr3 Regulations 1956 3 September 2007

theinventionoranypartthereofifthatotherapplication was made by a person who obtained the invention or part thereof in consequence of such communication as aforesaid, in the manner and to the extent set out in regulation 4 hereof.

3

A claim to protection and priority under regulation 2 of these regulationsshallbeaddressedinwritingtotheCommissioner of Patents, and may be made at any time before the acceptanceofthecompletespecificationfiledinconnectionwiththe application for a patent but not later than 12 months from the date ofthefilingofthe applicationforthepatent,andshall be accompanied by a statutory declaration giving information as tothedateonwhichandthepersontowhomtheinventionwas communicated and a description of the information or article so communicated. The claim and declaration shall be open to public inspection on acceptance of the complete specification,asanoticethatpriorityasofthedateofcommunicationis claimed,butthenoticeshallnotinitselfbedeemedtoindicate thattheclaimtopriorityhasbeenprovedtothesatisfactionof the Commissioner; and in any proceedings under the Patents Act 1953 or the Patents Regulations 1954 the Commissioner or the Court may require the applicant or the patentee, as the casemaybe,tofurnishsuchfurtherproofasheoritmaydeem necessary. When the claim is laid open to public inspection, the date of communication claimed shall be advertised in the Journal and, on the grant of a patent on the application, shall be entered on the register of patents.

4

When a claim to priority is made pursuant to regulation 3 hereof and any claim of the specification of the invention formingthesubjectoftheapplicationorpatentisforthesame subjectmatterasthatclaimedinaclaimofthespecificationof any other application for a patent which when granted would have a priority date within the meaning of section 11 of the PatentsAct1953 laterthanthedateofthecommunicationbut notlaterthantheprioritydateofanyclaimofthespecification of the patent applied for with the said claim to priority the Commissioner or the Court, as the case may be, may on

Reprinted as atPatents (United States of America) 3 September 2007 Regulations 1956 r5

satisfactoryproofofcommunicationoftheinvention,treatthe dateofcommunicationastheprioritydateinanyproceedings underthe PatentsAct1953 orthe PatentsRegulations1954 —

(a)

Based on prior publication of or claiming of the invention in such other application or patent; or

(b)

Based on prior claiming in the application or patent in respect of which the claim to priority has been made of the invention claimed in the other application or patent—

iftheinventionorpartthereofclaimedintheotherapplication

orpatentwasobtainedinconsequenceofthatcommunication: Provided that the invention or part shall be presumed to have been obtained in consequence of the communication unless the applicant or the patentee of the other application or patent proves that the inventionorpartwasmadeinNewZealandbeforethedateofcommunication or was independently devised in New Zealand.

5

(1)

In the case of an application by any individual, firm, or corporation resident or carrying on business in the United States of America at any time subsequent to the 2nd day of September1952,orthepersonalrepresentativeorassigneeofsuchan individual, firm, or corporation, for a patent which if granted wouldhaveclaimsintherelativespecificationhavingapriority date subsequent to the 2nd day of September 1952, there shall be included, among the grounds upon which notice of oppositiontothegrantofthepatentmaybegivenoranapplicationforrevocationofapatentgrantedthereonmaybemade thegroundthattheinventionorsomepartthereofwasobtained inconsequenceofacommunicationbyorattherequestofthe New Zealand Government to the Government of the United StatesofAmericaortoanyperson,firm,orcorporationinthe UnitedStatesofAmericaunderanagreementbetweenthetwo Governments.

(2)

For the purposes of this regulation an invention shall be presumed to have been obtained in consequence of the communication if the priority date of any claim of the specification filed in relation thereto is later than the date of the communicationunlesstheapplicantorthepatentee,asthecasemaybe, proves that he or the person from whom his title to the inven

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Patents (United States of America)Reprinted as atExplanatory Note Regulations 1956 3 September 2007

tion is derived introduced the invention or a part thereof into NewZealandbeforethedateofthecommunicationordevised the invention or a part thereof in New Zealand.

T J SHERRARD, Clerk of the Executive Council.

Explanatory Note

This note is not part of the regulations, but is intended to indicate their general effect.

These regulations provide for the protection of inventions communicated in New Zealand in accordance with an agreement between the Government of New Zealand and the Government of the United States of America for the security of military information.

Issued under the authority of the Regulations Act 1936. Date of notification in Gazette: 4 October 1956.