(SR 1954/211)
PURSUANTtothe PatentsAct1953 ,HisExcellencytheGovernorGeneral, actingby and with the advice andconsent ofthe Executive Council, hereby makes the following regulations.
Contents
Note These regulations are administered in the Department of Justice.
Part 4 Agency and correspondence
Agents may act for applicants Authorization of agent Revocation of agent’s authority Refusal to recognize agent Addressing of correspondence Address for service required in all cases
Part 5 Applications for patents, and specifications
Appropriate application forms to be used Personal representative to establish right to act Declaration of inventorship in certain cases Cognate applications Date of divisional application Division of applications if not cognate Evidence in support of convention applications Division of convention application Extension of period for filing complete specification Request for postdating an application
When supplied, drawings to accompany specification Drawing paper Size of sheets, etc. Preparation of drawings Identification of drawings Descriptive matter Drawings not to be creased Drawings filed with provisional specification
Part 7 Examination of applications
Order of examination Examination may be advanced Examination procedure under section 13 of the Act Procedure under section 14 of the Act Periods in regulation 40 hereof may be extended Application for result of search Reference to prior specification Reference to prior patent Reference to applicant includes patentee
Part 8 Putting applications in order and acceptance of complete specifications
Extension of time under section 19(2) of the Act
Extension of time under section 20(1) of the Act
Part 9 Opposition to grant of patent
Notice of opposition Counterstatement Filing of evidence by opponent Filing of evidence by applicant Closing of evidence Supply of documents, etc, for use of Commissioner Hearing Insertion of reference Costs
Part 10 Refusal of patent without opposition
Notice to applicant Hearing Extension of time
Part 11 Mention of inventor as such
Application under section 23(3) of the Act Application under section 23(4) of the Act Extension of time Application for certificate under section 23(8) of the Act Manner of mention of inventor
Part 12 Substitution of applicants, etc
Procedure under section 24(1) of the Act
Procedure under section 24(5) of the Act
Part 13 Sealing and form of patent
Request for sealing Time for sealing under section 27(2) of the Act Time for sealing under section 27(3) of the Act Time for sealing under section 27(4) of the Act Form of patent Amendment of patent
When payable Renewal fees may be paid in advance Extension of time for payment Certificate of payment Notice that renewal fee due Inventions relating to defence or atomic energy
Part 15 Extension of term of patent
Application Advertisement of application Opposition and evidence Hearing Unopposed application Reference of application to the Court
Part 16 Restoration of lapsed patents
Application Preliminary consideration by Commissioner Opposition Action on decision in favour of applicant Order of Commissioner restoring patent to be subject to
Part 17 Restoration of lapsed applications for patents where patent not sealed
Application Preliminary consideration by Commissioner Opposition Action on decision in favour of applicant Order of Commissioner for sealing patent to be subject
Part 18 Restorationofapplicationwherecompletespecification not accepted
Application Preliminary consideration by Commissioner Opposition Order of Commissioner restoring application to be subject
Part 19 Amendment of specification or application for patent
Application to amend accepted complete specification Opposition Application to amend unaccepted complete specification Application to amend application for patent New specification and drawings as amended may be
Part 20 Revocation and surrender of patent
Application for revocation Opposition procedure Application for surrender Form of offer to surrender a patent Opposition
Part 21 Voluntary endorsement of patents “ licences ofright ”
Application under section 44(1) of the Act Applications under section 44(2)(a) and (b) of the Act Cancellation of endorsement under section 45(1) of the
Act Cancellation of endorsement under section 45(2) of the Act Advertisement and opposition Balance of renewal fees payable on cancellation
Part 22 Compulsory licence, compulsory endorsement of patent “ licences of right ” , and revocation
Application under section 46 of the Act Application under section 49(1) of the Act Application under section 50 of the Act Evidence Preliminary consideration by Commissioner Opposition Application under section 51 of the Act
Part 23 Directions to coowners
Application under section 64(1) of the Act
Application under section 64(2) of the Act
Part 24 Disputes as to inventions made by employees
Application under section 65(1) of the Act
Part 29 Applications to and orders of Court
Service of copy of application on Commissioner Action consequent upon Court order
Register of patent attorneys Publication of entries Qualification for registration Examination Persons entitled to sit examination Entries for examination and appointment of examiners
157 Entries for examination and appointment of examiners 58 158 Subjects of examination 59 159 Rules for examination 60
Requirements for pass Renewal of registration Amendment of entries in register of patent attorneys Evidence
Part 31 Miscellaneous provisions
Particulars of patent applications which may be published Signature of documents Exercise of discretionary power by Commissioner Amendment of documents Power of Commissioner to extend times Power of Commissioner to waive requirements Destruction of records Part 32 Revocations and savings Revocations and savings Schedule 1 65 Fees
Schedule 3 111 Forms of patent and patent of addition
Schedule 4 114 Renewal fees payable
Schedule 5 115 Regulations revoked
Title, commencement, and arrangement
(3) Section 1(3) (Analysis) has been omitted.
Interpretation
2 In these regulations, unless the contextotherwise requires,— The Act means the Patents Act 1953 Agent means a registered patent attorney, or a solicitor so far
as he is entitled to practise under the Act, who is duly autho
rized to the satisfaction of the Commissioner Commonwealth country means a country that is a member of the British Commonwealth of Nations; and includes every territory for whose international relations the Government of that country is responsible
Theregister meanstheregisterofpatentskeptunderthepro
visions of section 83 of the Act A reference to a numbered form is a reference to the patents form so numbered in Schedule 2 to these regulations.
Fees payable according to Schedule 1
3
ment Regulations 1999 (SR 1999/154).
Time of payment
4
Fees and charges payable to the Patent Office shall be paid at the time of making an application or request or upon giving notice or filing any instrument in respect of which a fee or charge is payable under these regulations.
5
All fees shall be paid in cash at the Patent Office. The Commissioner may, however, accept payments made in any other form, but in such case he may delay or cancel the credit until collection is made.
Payments by post
6
Money sent by mail to the Patent Office shall be at the risk of the sender.
Payments from beyond New Zealand
7
Remittances from beyond New Zealand shall be payable and immediatelynegotiableinNewZealandforthefullamountof the prescribed fee.
Notice of fees due
8
The Commissioner may give notice of any fee due or becoming due, but no liability shall be incurred by him if he fails to do so, or if for any reason the notice, if given, is incorrect in any particular or fails to reach the person for whom it is intended.
Forms prescribed in Schedule 2
9
TheformssetoutinSchedule 2 heretoshallbeusedinallcases towhichtheyareapplicable,andmaybemodifiedasdirected by the Commissioner.
Size, etc, of documents
10 Form and size of documents All documents and copies of documents (except drawings) filedatthePatentOfficeshall,unlesstheCommissionerotherwise directs, be typewritten, lithographed, or printed, in the English language—
Regulation10wassubstituted,asfrom27March1975,byregulation2Patents Regulations 1954, Amendment No 3 (SR 1975/58).
Duplicate documents
11
Duplicate documents, other than drawings, required under these regulations may be carbon copies of the original documents:
Provided that they shall be on paper of good quality and the typing
shall be black and distinct.
Numbering of pages
12
The pages of complete specifications shall be numbered consecutively;andtheapplicantshall,whenrequestedsotodoby the Commissioner, supply fresh copies of any amended page or pages specified by him, and shall, if necessary, renumber the pages of the specification.
Agents may act for applicants
13
Any application, request, or notice which is required or permitted by the Act or these regulations to be made or given to the Commissioner, and all other communications between an applicant or a person making a request or giving a notice and theCommissioner,andbetweenthepatenteeandtheCommissioner or any other person, may be signed, made, or given by or through an agent:
Providedthatwhereanapplicationforapatentissignedbyanagent
afurtherapplicationsignedbytheapplicantshallbefiledwithinfour
months.
Authorization of agent
14
Anyapplicant,personmakingarequestorgivingnotice,orpatentee,mayappointanagenttoactforhiminanyproceedings or matter before or affecting the Commissioner under the Act or these regulations by signing and sending to the Commissioner an authority to that effect in such written form as the Commissioner may deem sufficient. In the case of any such appointment,serviceupontheagentofanydocumentrelating totheproceedingormattershallbedeemedtobeserviceupon the person so appointing him, all communications directed to be made to the person in respect of the proceeding or matter may be addressed to the agent, and all attendances upon the Commissionerrelatingtheretomaybemadebyorthroughthe agent.
Revocation of agent’s authority
15
An authorization of an agent may be revoked at any stage in theproceedings,andanagentmaywithdraw,ongivingnotice to the Commissioner; and when any such authorization is so revoked, or the agent has withdrawn, the Patent Office shall communicate directly with the applicant or with such other agent as he may appoint. The Commissioner shall notify an agent of the revocation of his authority or the applicant of the withdrawal of his agent.
Refusal to recognize agent
16
TheCommissionershallrefusetorecognizeasagentinrespect ofanyproceedingsundertheActapersonwhoneitherresides nor carries on business in New Zealand.
17
All letters and other communications relating to matters arising under the Act or these regulations and intended for the Patent Office shall be addressed to the Commissioner of Patents, Wellington C1. When appropriate, a letter may be marked for the attention of a particular officer.
Address for service required in all cases
18
Every person concerned in any proceedings to which these regulationsrelateandeverypatenteeshallfurnishtotheCommissioneranaddressforserviceinNewZealand,andthataddress may be treated for all purposes connected with the proceedings or patent as the address of the person concerned in the proceedings or of the patentee.
Appropriate application forms to be used
19
an independent patent shall be made in form 3. Every application (other than a convention application) shall beaccompaniedbyeither aprovisionalspecification induplicateinform 4 oracompletespecificationinduplicateinform 5 ; and every convention application shall be accompanied by a complete specification in duplicate in form 5.
Personal representative to establish right to act
20
In the case of an application, other than a convention application, by the personal representative of a deceased person or the assignee of the personal representative of a deceased person who, ineithercase,wasentitledtomake suchan application, the probate of the will of the deceased, or the letters of administration of his estate, or an official copy of the probate orlettersofadministration,shallbeproducedatthePatentOffice in proof of the personal representative’s right to act:
Provided that this regulation shall not apply in any case where the
Commissionerhasdispensedwiththeproductionofprobateorletters
of administration pursuant to section 86 of the Act.
Declaration of inventorship in certain cases
21
Cognate applications
22
Where, in pursuance of section 9(3) of the Act, the Commis sioner allows a single complete specification to be proceeded withinrespectoftwoormoreapplicationsinrespectofwhich two or more complete specifications have been filed, the singlecompletespecificationmayincludeanymatterdisclosedin anyofthesaidspecificationsandshallbedeemedtohavebeen filed on such date, not earlier than the earliest date on which all the matter disclosed in the said single complete specificationhasbeendisclosedtothePatentOfficeinorinconnection with the applications, as the Commissioner may direct.
Date of divisional application
23
(1) Whereanapplicanthasmadeanapplicationforapatent,and, before the acceptance of the complete specification, makes a fresh application for a patent for matter included in the first mentioned application or in any specification filed in pursuancethereof,theCommissionermaydirectthatthefresh application or any specification filed in pursuance thereof
15
shallbeantedatedtoadatenotearlierthanthedateoffilingof thefirstmentionedapplicationorspecificationiftheapplicant includes in the fresh application a request to that effect.
(2) The Commissioner may require such amendment of the completespecificationfiledinpursuanceofeitherofthesaidapplications as may be necessary to ensure that neither of the said completespecificationsincludesaclaimformatterclaimedin the other.
Division of applications if not cognate
24
Whereacompletespecificationhasbeenfiledpursuanttotwo or more applications accompanied by provisional specifications for inventions which the applicant believes to be cognate or modificationsone of anotherand theCommissioneris of opinion that such inventions are not cognate or modifications one of another, the Commissioner may allow the completespecificationtobedividedintosuchnumberofcomplete specifications as may be necessary to enable the applications to be proceeded with as two or more separate applications for patents.
Evidence in support of convention applications
25
26
Where a single convention application has been made in respect of all or part of the inventions in respect of which two or more applications for protection have been made in one or more convention countries, and the Examiner reports that the claims of the specification filed with the said convention applicationrelatetomorethanoneinvention,theCommissioner mayallowoneormorefurtherapplicationstobefiledandthe specification to be divided into such number of specifications as may be necessary to enable two or more separate conventionapplicationstobeproceededwith,andmaydirectthatthe said applications be deemed to have been filed on the date of filing of the original application.
Extension of period for filing completespecification
27
Arequestforanextensionoftimeforfilingacompletespecification up to a period not exceeding fifteen months from the date of filing of the application shall be made in form 7.
Request for postdating an application
28
Where an applicant for a patent desires that his application shall be postdated in pursuance of the provisions of section 12(3) of the Act, he shall make a request in form 8.
When supplied, drawings to accompanyspecification
29
Drawings,whensupplied,shallaccompanytheprovisionalor complete specification to which they refer, except in the case provided for by regulation 36 hereof. A true copy of the ori ginal drawings shall be filed at the same time as the original drawings.
30
Regulation30(1)wasamended,asfrom27March1975,byregulation3Patents Regulations 1954, Amendment No 3 (SR1975/58), by substitutingtheexpression“40sheets to thecentimetre”for the expression “100 sheetstotheinch”.
Size of sheets, etc.
31
Patents Regulations 1954, Amendment No 3 (SR 1975/58).
Preparation of drawings
32
Drawings shall be prepared in accordance with the following requirements:
Regulation32(i)wasamended,asfrom27March1975,byregulation5Patents Regulations 1954, Amendment No 3 (SR1975/58), by substitutingtheexpression“0.3 cm”for the expression “oneeighth of an inch”.
Identification of drawings
33
Descriptive matter
34
19
bolically, may bear such descriptive matter as is necessary to identify the instruments or units or their interconnections.
Regulations 1954, Amendment No 3 (SR1975/58), by substitutingtheexpression“0.4 cm”for the expression “onequarter of an inch”.
Drawings not to be creased
35
Drawings shall be delivered at the Patent Office free from folds, breaks, or creases which would render them unsuitable for reproduction by photography.
Drawings filed with provisional specification
36
Ifanapplicantdesirestoadoptthedrawingsfiledwithhisprovisional specification as the drawings or part of the drawings for his complete specification, he shall refer to them in the complete specification as those filed with the provisional specification.
Order of examination
37
Applications withtheirspecificationorspecificationsshallbe referred by the Commissioner to an examiner in the order in which the complete specifications are filed and, except as otherwise provided in these regulations, shall be taken up by the examiner for examination and investigation in that order.
38
An application and its specification or specifications may be advanced out of turn for examination and investigation at the direction of the Commissioner—
Examination procedure under section 13 of the Act
39
21
andtheapplicantshallassoonaspossiblenotifytheCommissioner whether he will attend the hearing.
(6) After hearing the applicant, or without a hearing if the applicant has not attended or has notified that he does not desire to be heard, the Commissioner may prescribe or permit such amendment of the specification as will be to his satisfaction, and may refuse to accept the specification unless the amendment is made within such period as he may fix.
Procedure under section 14 of the Act
40
and may direct that a reference to such other specification as he shall mention shall be inserted in the applicant’s specification unless the amendment is made or agreed to within such period as he may fix.
Periods in regulation 40 hereof may be extended
41
The periods mentioned in regulation 40 hereof may be ex tended if a request for such extension is made in form 10 at any time within the extended period specifiedin the request:
Provided that the total extension of either period allowed under this
provision shall not exceed six months.
Application for result of search
42
An application under the proviso to section 91(2) of the Act for disclosure of the result of a search made under sections 13 and 14 oftheActorofinformationfurnishedundersection 15(b)(i) of the Act shall be made in form 11.
Reference to prior specification
43
When, in pursuance of regulation 40(5) hereof, the Commis sioner directs that reference to another specification shall be insertedintheapplicant’scompletespecification,thereference shall be inserted after the claims and shall be in the following form: “Reference has been directed, in pursuance of section 14 of the Patents Act 1953, to specification No ...........”
Reference to prior patent
44
23
completespecification,thereferenceshallbeinsertedafterthe claims and shall be in the following form: “Referencehasbeendirected,inpursuanceofsection 16(1) of the Patents Act 1953, to patent No ...........”
(3) An application under subsection (2) of section 16 of the Act for the deletion of a reference inserted pursuant to a direction under subsection (1) of that section shall be made in form 12, and shall state fully the facts relied upon in support of the application.
Reference to applicant includes patentee
45
In the application of regulations 40, 43, and 44 hereof to pro ceedingssubsequenttothegrantofthepatent,referencestothe patentee shall be substituted for references to the applicant.
Extension of time under section 19(2) of the Act
46
A notice under subsection (2) of section 19 of the Act re questing an extension of the period allowable under subsection (1) ofthatsectionforputtinganapplicationinordershall be given in form 13.
Extension of time under section 20(1) of the Act
47
AnoticeundertheprovisotoSection 20(1) oftheActrequesting postponement of the acceptance of a complete specification to a date later than fifteen months from its date of filing shall be given in form 14.
Part 9 Opposition to grant of patent
Notice of opposition
48
Counterstatement
49
Iftheapplicantdesirestoproceedwithhisapplicationheshall, withintwomonthsofthereceiptbyhimofthecopiesspecified inregulation 48 hereof,fileacounterstatementsettingoutfully thegroundsuponwhichtheoppositioniscontestedanddeliver totheopponent a copy thereof. If the applicantdoesnot filea counterstatementwithinthetimeallowed,heshallbedeemed to have abandoned his application.
Filing of evidence by opponent
50
The opponent may within two months from the receipt of the copy of the counterstatement file evidence in support of his case and shall deliver to the applicant a copy of the evidence.
Filing of evidence by applicant
51
Within two months from the receipt of the copy of the opponent’sevidenceor,if theopponentdoesnotfileanyevidence, within two months from the expiration of the time within which the opponent’s evidence might have been filed, the applicant may file evidence in support of his case and shall deliver to the opponent a copy of the evidence; and within two months from the receipt of the copy of the applicant’s evidence the opponent may file evidence confined to matters strictlyinreplyandshalldelivertotheapplicantacopyofthe evidence.
52
No further evidence shall be filed by either party except by leave or direction of the Commissioner.
Supply of documents, etc, for use of Commissioner
53
Hearing
54
55
IfinconsequenceoftheproceedingstheCommissionerdirects thatareferencetoanotherpatentshallbeinsertedintheappli cant’s specification under section 16(1) of the Act, the refer ence shall be as prescribed by regulation 44(2) hereof.
Costs
56
If the applicant notifies the Commissioner that he does not desire to proceed with the application, the Commissioner (in deciding whether costs should be awarded to the opponent) shall consider whether proceedings might have been avoided if the opponent had given reasonable notice to the applicant before the opposition was filed.
Notice to applicant
57
If at any time after the acceptance of a complete specification and beforethe grant of thepatentit comes to the notice of the Commissioner,otherwisethaninconsequenceofproceedings in opposition to the grant, that the invention so far as claimed in any claim of the complete specification has been published in any specification or other document falling within section 22(1) of the Act, the applicant shall be so informed and shall be allowed a period of two months within which to submit such amendment of his specification as will be to the Commissioner’s satisfaction.
Hearing
58
Extension of time
59
Theperiodsmentionedinregulations 57 and 58 hereofmaybe extendedifarequestfor suchextension is made inform10at any time within the extended period specifiedin the request:
Provided that the total extension of either period allowed under this
provision shall not exceed six months.
Application under section 23(3) of the Act
60
Arequestbytheapplicantforapatent,or,iftheactualdeviser of the invention or of a substantial part thereof is not the applicant or one of the applicants, by the applicant and the said deviser, under section 23(3) of the Act shall be made in form 18 and shall be accompanied by a statement setting out fully the facts relied upon.
Application under section 23(4) of the Act
61
62
Anapplicationundersection 23(5) oftheActforanextension of the period for making a request or claim shall be made in form 20.
Application for certificate under section 23(8)of the Act
63
Manner of mention of inventor
64
Any mention of an actual deviser as inventor under section 23(1) of the Act may be made in the patent after the name oftheCommissioner,andonthecompletespecificationatthe head of form 5, and may be in the form “The inventor of this inventioninthesenseofbeingtheactualdeviserthereofwithin the meaning of section 23 of the Patents Act 1953 is ..........., of ..........”,or“Theinventorofasubstantialpartofthisinvention in the sense ofbeingthe actual deviserthereof within the meaning of section 23 of the Patents Act 1953 is ..........., of ...........”, as the case may require.
Part 12 Substitution of applicants, etc
Procedure under section 24(1) of the Act
65
(1) Aclaimundersection 24(1) oftheActthatanapplicationfora patentshallproceedinthenameoftheclaimantorinthenames
29
oftheclaimantandtheapplicantortheotherjointapplicantor applicantsshallbemadeinform 22,andshallbeaccompanied byacertifiedcopyofanyassignmentoragreementuponwhich the claim is based.
(2) The original assignment or agreement shall also be produced for the Commissioner’s inspection, and the Commissioner may call for such other proof of title or written consent as he may require.
Procedure under section 24(5) of the Act
66
Request for sealing
67
Arequestforthesealingofapatentonanapplicationshallbe made in form 24.
Time for sealing under section 27(2) of the Act
68
The period within which a request for the sealing of a patent maybemadeunderproviso(a)tosection 27(2) oftheActshall be two months from the date of the final determination of the proceedings.
69
Time for sealing under section 27(4) of the Act
70
Form of patent
71
A patent shall be in the form A or form B (whichever is ap plicable) set out in Schedule 3 to these regulations, or such modification of eitherof theseformsasthe Commissionerdirects.
Amendment of patent
72
Anapplicationundersection 28 oftheActfortheamendment ofapatentshallbemadeinform 27 ,andshallbeaccompanied byevidenceverifyingthestatementsthereinandbytheletters patent.
When payable
73
A person who desires to keep a patent in force shall file a requestinform 28 beforetheexpirationoftheperiodprescribed in the first column of Schedule 4 hereto and shall pay the re newal fee prescribed in the secondcolumn of that Schedule:
Provided that, where a patent is sealed after the expiration of the
first period or any succeeding period (except in cases mentioned in
regulation 78 hereof), a request in form 28 in respect of the second
Renewal fees may be paid in advance
74
All or any of the prescribed renewal fees may be paid in advance.
Extension of time for payment
75
A request for extension of the period for payment of any re newal fee shall be made in form 29.
Certificate of payment
76
On due compliance with the terms of regulation 73 hereof, the Commissioner shall issue a certificate in form 30 that the prescribed fee has been duly paid.
Notice that renewal fee due
77
Where any renewal fee is due or becomes due in respect of any patent the Commissioner may send to the patentee at his addressforserviceandtothepersonwhopaidthelastrenewal fee a notice of the date when the payment is due, and of the consequences of nonpayment.
Inventions relating to defence or atomic energy
78
Where directions given by the Commissioner under section 25(1) or under section 26(1) of the Act prohibiting the publi cationofinformationwithrespecttoaninventionformingthe subject of an application for a patent have been revoked and a patent is granted on the application, no renewal fees shall be payable in respect of any period which commenced in the period during which the directions were in force.
Application
79
Advertisement of application
80
The Commissioner shall forthwith advertise an application under regulation 79 hereof in two issues of the Journal, and theapplicantshallnotifyregisteredlicensees,and(inthecase of an application under section 33 of the Act) the patentee, of the advertisement:
Providedthatwherethesupportingevidenceisnotfiledwiththeapplication, the second advertisement of the application shall be made after the evidence has been filed.
Opposition and evidence
81
Hearing
82
Unopposed application
83
IfnonoticeofoppositiontotheapplicationisgiventheCommissioner shall, on the expiration of the period prescribed by regulation 82(1) hereof, after hearing the applicant if desiring to be heard, decide the case and notify his decision to the applicant.
Reference of application to the Court
84
IfatanystageoftheapplicationtheCommissionerdecidesto refer the application for decision by the Court, he shall notify every party to the proceedings accordingly.
Application
85
Preliminary consideration by Commissioner
86
Opposition
87
88
IftheCommissionerdecidesinfavouroftheapplicant,heshall notify him accordingly, and require him to file memoranda in forms 28 and 35.
Order of Commissioner restoring patent to besubject to provisions
89
For the protection of persons who have begun to avail themselves of the patented invention between the date when the patent ceased to have effect and the date of the application, every order of the Commissioner restoring a patent shall be subject to the following provisions:
Application
Preliminary consideration by Commissioner
91
Opposition
92
Action on decision in favour of applicant
93
If the Commissioner decides in favour of the applicant, he shall notify the applicant accordingly and require him to file amemoranduminform 38 togetherwitharequestinform 24 .
Order of Commissioner for sealing patent to besubject to provision
94
Every order of the Commissioner under section 36 of the Act for the sealing of a patent shall be subject to the same provision for the protection of persons who have begun to avail themselves of the invention between the date when the time allowed by or under section 27 of the Act for makingthe pre scribed request for sealing expired, and the date of the application for an order for sealing, as are specified in regulation 89 hereoffortheprotectionofpersonswhohavebeguntoavail themselvesofapatentedinventionbetweenthedatewhenthe patentceasedtohaveeffectandthedateoftheapplicationfor restoration, there being substituted for references to the date when the patent ceased to have effect references to the date when the time allowed by or under section 27 of the Act for making the request for sealing expired.
Application
95
Preliminary consideration by Commissioner
96
97
Order of Commissioner restoring application tobe subject to provisions
98
Every order of the Commissioner under section 37 of the Act fortherestorationofanapplicationandextensionoftheperiod forcomplyingwiththerequirementsimposedontheapplicant byorundertheActshallbesubjecttothesameprovisionsfor the protectionofpersonswhohavebegun to avail themselves of the invention between the date when the period prescribed by section 19 of the Act, and every extension of that period granted under that section or under section 93 of the Act for complyingwithalltherequirementsimposedontheapplicant byorundertheActexpired,andthedateoftheapplicationfor an order under section 37 of the Act, as are specified in regu lation 89 hereoffortheprotectionofpersonswhohavebegun to avail themselves of a patented invention between the date when the patent ceased to have effect and the date of the applicationforrestoration,therebeingsubstitutedforreferences tothedatewhenthepatentceasedtohaveeffectreferencesto the date when the period prescribed by section 19 of the Act andeveryextensionofthatperiodgrantedunderthatsectionor undersection 93 oftheActforcomplyingwithalltherequirements imposed on the applicant by or under the Act expired.
Application to amend accepted completespecification
99
Opposition
100
Application to amend unaccepted completespecification
101
An application for leave to amend a complete specification which has not been accepted, except when the amendment is
41
made to meet an objection contained in an examiner’s report, shall be made in form 43.
Application to amend application for patent
102
An application for leave to amend an application for a patent, except when the amendment is made to meet an objection made by the Patent Office, shall be made in form 44.
New specification and drawings as amendedmay be required
103
Where leave to amend a specification is given, the applicant shall, if the Commissioner so requires and within a time to be fixed by him, file a new specification and drawings as amended, which shall be prepared in accordance with regulations 10 and 30 to 35 hereof.
Application for revocation
104
Opposition procedure
105
Uponanysuchapplicationbeingmadeandacopythereofsent to the patentee, the provisions of regulations 49 to 54 hereof shall apply with the substitution of references to the patentee for references to the applicant and of references to the applicant for references to the opponent.
106
If the patentee offers under section 43 of the Act to surren der his patent, the Commissioner, in deciding whether costs should be awarded to the applicant for revocation, shall consider whether proceedings might have been avoided ifthe applicant had given reasonable notice to the patentee before the application was filed.
Form of offer to surrender a patent
107
A notice of an offer by a patentee under section 43 of the Act to surrender his patent shall be given in form 46, and shall be advertised by the Commissioner in the Journal.
Opposition
108
Application under section 44(1) of the Act
109
Anapplicationundersection 44(1) oftheActforendorsement of a patent “licences of right” shall be made in form 48, and shall be accompanied by evidence verifying the statement in the application, and by the letters patent.
110
Cancellation of endorsement under section 45(1) of the Act
111
An application under section 45(1) of the Act for the cancel lation of an endorsement shall be made in form 50, and shall beaccompaniedbyevidenceverifyingthestatementintheap plication, and by a memorandum in form 28 with fees to the amount of the balance of all renewal fees which would have been payable if the patent had not been endorsed.
Cancellation of endorsement under section 45(2) of the Act
112
Anapplicationundersection 45(2) oftheActforthecancella tion of an endorsement shall be made in form 51 two months after the patent has been endorsed, and shall be accompanied by a copy and a statement (in duplicate) setting out fully the nature of the applicant’s interest and the facts upon which he relies.
113
Balance of renewal fees payable on cancellation
114
WheretheCommissionercancelstheendorsementpursuantto section 45(3) of the Act, the patentee shall within one month from the cancellation of the endorsement file a memorandum inform 28 withfeestotheamountofthebalanceofallrenewal feeswhichwouldhavebeenpayableifthepatenthadnotbeen endorsed.
Application under section 46 of the Act
115
Anapplicationundersection 46 oftheActforalicenceunder apatentorforendorsementofapatent“licencesofright”shall be made in form 53.
116
Anapplicationundersection 49(1) oftheActfortheendorsementofapatent“licencesofright”orforthegrantofalicence under a patent to a specified person shallbemade in form 54.
Application under section 50 of the Act
117
An application under section 50 of the Act for the revocation of a patent shall be made in form 55.
Evidence
118
An application under section 46, section 49, or section 50 of the Actshall be accompanied byevidence verifying the statements in the application.
Preliminary consideration by Commissioner
119
Opposition
120
Application under section 51 of the Act
121
Application under section 64(1) of the Act
122
Application under section 64(2) of the Act
123
Application under section 65(1) of the Act
124
Register to record grant of patents
125
126
Registration of assignments, etc
127
Copies of documents
128
129 There shall be open for inspection without fee at any convenient time,
Payment of renewal fees to be entered
130
Upon the issue of a certificate of payment under regulation 76 hereof,theCommissionershallenterintheregisterthefact that the fee has been paid, and the date of payment as stated on the certificate.
Entry of claim arising from special provision inorder for extension of term of patent
131
Whereanorderfortheextensionofthetermofapatentunder section 31 ,section 32 ,orsection 33 oftheActcontainsaprovision that persons claiming to be deemed to have acted with the licence of the patentee or exclusive licensee shall make application for entry of their claim upon the register, the ap plication shall be made in form 67.
Application for dispensing with probate orletters of administration
132
An application under section 86 of the Act for leave to dis pense with the production of probate or letters of administra
Application
133
A request under section 88(3) of the Act for the correction of a mistake in the register, in any patent, or application for a patent,oranydocumentfiledinpursuanceofsuchanapplication,orin proceedingsinconnectionwithanypatent, shall be made in form 69.
Advertisement
134
Where the Commissioner requires notice of the nature of the proposed correction to be advertised, the advertisement shall be made by publication of the request and the nature of the proposed correction in the Journal, and in such other manner (if any) as the Commissioner may direct.
Opposition
135
Hearing
136
Where in accordance with section 88(4) of the Act a hearing isappointed,atleastfourteendays’noticeoftheappointment shall be given to the patentee or the applicant for a patent and
51
Request for certificate
137
A request for a certificate of the Commissioner for the pur poses of section 89(1) of the Act shall be made in form 71.
Certified copies of entries, etc.
138
The Commissioner may, on payment of the prescribed fees, furnishcertifiedcopiesofanyentryintheregister,orcertified copies of, or extracts from, patents, specifications, and other public documents in the Patent Office, or of or from registers and other records kept there, and may give certificates as to any matter relating to the Act or these regulations.
Request for information
139
Lost patent
140
Anapplicationundersection 92 oftheActforafurtherpatent tobesealedshallbemadeinform 73 andshallbeaccompanied by evidence setting out fully and verifying the circumstances in which the patent was lost or destroyed, or cannot be produced.
Form of evidence
141
Whereundertheseregulationsevidenceisrequiredtobefiled itshallbebystatutorydeclarationoraffidavitunlessotherwise expressly provided in these regulations.
Preparation
142
Manner of making declarations, etc.
143
(1) The statutory declarations and affidavits shall be made and subscribed as follows:
53
missioner of Oaths, Justice of the Peace, or any person authorized by law to administer an oath there for the purpose of a legal proceeding, or before any Commonwealth representative; and
(c) Ifmadeelsewhere,beforeaCommonwealthrepresentativeoraNotaryPublic,orbeforeaJudgeorMagistrate.
(2) For the purposes of this regulation the expression Commonwealth representative means any Ambassador, High Commissioner,Minister,Charged’Affaires,ConsularOfficer, TradeCommissioner,orTouristCommissionerofaCommonwealth country (including New Zealand); and includes any person lawfully acting for any such officer; and also includes anydiplomaticsecretaryonthestaffofanysuchAmbassador, High Commissioner, Minister, or Charge d’Affaires.
Recognition of signatures on documents
144
Any document purporting to have affixed, impressed, or subscribed thereto or thereon the seal or signature of any person authorizedbyregulation 143 hereoftotakeadeclarationoraffidavit,intestimonythatthedeclarationoraffidavitwasmade and subscribed before him, may be admitted by the Commissionerwithoutproofofthegenuinenessofthesealorsignature oroftheofficialcharacterofthepersonorhisauthoritytotake the declaration or affidavit.
Further evidence
145
At any stage of any proceedings before the Commissioner he may direct that such documents, information, or evidence as hemayrequireshallbefurnishedwithinsuchperiodashemay fix.
Issue of summons
146
InanyproceedingsbeforetheCommissionerundertheActor these regulations, the Commissioner may summon any person to appear and give evidence before him, or to appear and produceanybooks,deeds,papers,orotherwritingsinhispossession or under his control relating to the matter of the said proceedings. Everysummonsissuedinpursuanceofthisregu lation shall be in form 74.
Penalty for noncompliance with summons
147
Any person upon whom any such summons is served, and to whom at the same time payment or tender of his expenses is made in accordance with the scale referred to in regulation 148 hereof and who fails to attend or to give evidence or to produce any such books, deeds, papers, or other writings in accordance with the terms of the summons, shall be liable on summaryconvictiontoafinenotexceeding£20foreachsuch default.
Expenses of witness
148
Witnessesin anysuch proceedingsshallbe entitledtoreceive payment for expenses in accordance with the scale of allowances for the time being payable to witnesses for attendance inproceedingsinaMagistrate’sCourt. Allpaymentsmadein pursuance of this regulation shall be payable by the party on whosebehalfthewitnessissummoned,orbyanyorallofthe partiestotheproceedingsinsuchproportionsastheCommissioner decides.
Place of hearings
149
Service of copy of application on Commissioner
150
Whereanapplication totheCourtundersection87oftheAct for rectification of the register has been made, the applicant shall forthwith serve an office copy of the application on the Commissioner, who shall enter a notice of the application in the register.
Action consequent upon Court order
151
WhereanyorderhasbeenmadebytheCourtundertheActrevokingapatentorextendingthetermofapatent,orallowinga patenteetoamendhisspecificationoraffectingthevalidityor proprietorship of a patent or any rights thereunder, the person inwhosefavourtheorderhasbeenmadeshallfileanapplicationinform 75 accompaniedbyasealedduplicateoftheorder oracertifiedcopyoftheorder,andthereuponthespecification shallbeamendedortheregisterrectifiedoraltered,asthecase may be.
Register of patent attorneys
152
A register of patent attorneys shall be kept by the Commissioner subject to the provisions of the Act and these regulations and shall contain the full names of all patent attorneys whoareregisteredundertheAct,andinrespectofeachpatent attorney so registered shall, in addition, record—
Publication of entries
153
The Commissioner shall publish in the Journal at least once in each year a list of all patent attorneys who have paid for thatyeartheprescribedannualrenewalfee,togetherwiththeir business addresses.
Qualification for registration
154
(1) Any person shall be entitled to be registered as a patent attorney who,—
(iii) In some other employment which, in any particular case in the opinion of the Commissioner and the Council of the New Zealand Institute of Patent Attorneys Incorporated, affords substantiallysimilarpracticalexperiencetothatgivenby eitherofthelasttwomentionedformsofemployment:
ProvidedthatiftheCommissionerandtheCouncil are unable to agree, the Minister shall decide as to the adequacy of the employment.
(2) On being satisfied that an applicant for registration possesses the required qualifications and on payment of the prescribed registrationfee,theCommissionershallenterthenameof the applicant in the register of patent attorneys with other appro
57
priate entries, and shall issue to the applicant a certificate of
his registration as a patent attorney.
Subclause (1)(e) was amended, as from 1 January 2004, by section 48(3) Supreme Court Act 2003 (2003 No 53) by substituting the word “High” for the word “Supreme”. See sections 50 to 55 of that Act for the transitional and savings provisions.
Examination
155
An examination to be called the Patent Attorneys Examination shall be conducted when required as hereinafter set forthjointlybytheCommissionerandtheCounciloftheNew Zealand Institute of Patent Attorneys Incorporated.
Persons entitled to sit examination
156
No person shall present himself for the examination unless he satisfies the Commissioner and the Council of the New ZealandInstituteofPatentAttorneys Incorporated thathehas passedtheNewZealandSchoolCertificateExaminationorthe NewZealandUniversityEntranceExaminationoranexaminationwhichintheopinionoftheCommissionerandtheCouncil is equivalent thereto or hasbeen accredited for entrance to the University of New Zealand:
Provided that if the Commissioner and the Council are unable to
agree whether an examination is equivalent, the Minister shall de
cide.
Entries for examination and appointment ofexaminers
157 Entries for examination and appointment of examiners
Regulations 1954, Amendment No 2 (SR 1972/259).
158 Subjects of examination
Regulations 1954, Amendment No 2 (SR 1972/259).
159 Rules for examination
Regulations 1954, Amendment No 2 (SR 1972/259).
Requirements for pass
160
To pass in a subject having only one paper a candidate must obtainnotlessthan50percentofthemarksforthatpaper,and to pass in a subject having two papers he must obtain not less than50percentoftheaggregateofthemarksforbothpapers.
Renewal of registration
161
Every patent attorney shall on the 1st day of January in each year pay to the Commissioner the prescribed fee for the renewal of his registration. If the fee is not paid within one month from the date aforesaid, the Commissioner may send tothepatentattorneyat his registered address anoticerequiringhim,onorbeforeadaytobenamedinthenotice,topayhis annualrenewalfee;and,ifthepatentattorneydoesnotwithin one month from the day named in the notice pay the renewal fee so due from him, the Commissioner may delete his name
from the register of patent attorneys:
Provided that the name of the person deleted from the register of
patentattorneysunderthisregulation maybe restored totheregister
on payment of the fee due from him together with the additional fee
prescribed in Schedule 1 hereto.
Amendment of entries in register of patent attorneys
162
The Commissioner may from time to time amend the register of patent attorneys by—
Provided that the name of any person deleted from the registerofpatentattorneyspursuanttothisparagraphof this regulation may be restored to that register, subject to the payment of the prescribed registration fee, when that person satisfies the Commissioner that he has resumed the practice of a patent attorney.
Evidence
163
Intheexecutionofhisdutieswithreferencetotheregistration of patent attorneys the Commissioner shall, subject to these regulations, in each case act on such evidence as appears to him sufficient.
Particulars of patent applications which maybe published
TheCommissionershall,inrespectofapplicationsforpatents (whether filed before or after the commencement of the Act), publish in the Journal as soon as convenient the following particulars so far as they are known to him:
Signature of documents
165
Exercise of discretionary power by Commissioner
166
The Commissioner shall, before exercising adversely to any party any discretionary power given him by the Act or these regulations,affordtothatpartyanopportunityofbeingheard. In such a case the Commissioner may require the party to put his case before the Commissioner in writing. Thereupon the Commissioner shall give not less than ten days’ notice to the party of the time when he may be heard, and shall hear the party, if he so desires. The decision or determination of the Commissionerintheexerciseofanysuchdiscretionarypower as aforesaid shall be notified by him to the party, and to any other person who appears to him to be affected thereby.
Amendment of documents
167
Patents Regulations 1954, Amendment No 10 (SR 1986/206), by substituting the expression “$45”for the expression “$35”.
It was further amended, as from 1 October 1987, by regulation 2(1) Patents Regulations 1954, Amendment No 11 (SR 1987/227), by substituting the expression “$50”for the expression “$45”.
Power of Commissioner to extend times
168
The times prescribed by these regulations for doing any act, ortakinganyproceedingthereunder,otherthanthetimespre scribed by regulations 68, 81(1), 87(1), 92(1), 97(1), 108(1), 113(1) , and 135(1) hereof, may be extended by the Commis sioner, if he thinks fit, upon such notice to the parties and upon such terms as he may direct, and such extension may be granted although the time has expired for doing the act or takingtheproceeding. Anapplicationforanextensionoftime under this regulation shall be made in form 76.
Power of Commissioner to waive requirements
169
(1) Where, under these regulations, any person is required to do anyactorthing,oranydocumentorevidenceisrequiredtobe producedorfiled,theCommissionermay,upontheproduction of such evidence and subject to such terms and conditions as he thinks fit, modify or dispense with the doing of the act or
63
thing or the production or filing of the document or evidence if he is satisfied that it is reasonable so to do.
Destruction of records
170
Revocations and savings
171
Schedule 1 was substituted, as from 1 March 1992, by regulation 2 Patents Regulations 1954, Amendment No 13 (SR 1991/270).
Item 55 of the previous Schedule 1 was amended, as from 1 March 1992, by regulation 2 Patents Regulations 1954, Amendment No 14 (SR 1992/18) by substituting the words “For photographic copies of patent specifications” for the words “For typed or photographic copy of documents”.
Schedule1wassubstituted,asfrom1July1999,byregulation 3 PatentsAmendment Regulations 1999 (SR 1999/154).
Statutory Regulations 1951, Serial number 1951/185, page 631.
Schedule 1 | Patents Regulations 1954 | Reprinted as at3 September 2007 |
---|---|---|
Fee | ||
Item | Matter | $ |
1 | On filing provisional specification...... | 50.00 |
2 | On filing complete specification......... | 250.00 |
3 | Applicationtoamendcompletespecification (whether before or after acceptance).................................................... | 60.00 |
4 | Amendment of patent under section 28 of Act............................................. | 60.00 |
5 | Application to renew patent: fourth year...................................................... | 170.00 |
6 | Application to renew patent: seventh year...................................................... | 340.00 |
7 | Applicationtorenewpatent: tenthyear | 540.00 |
8 | Applicationtorenewpatent: thirteenth year...................................................... | 1,000.00 |
9 | Sealing of further patent under section 92 of Act............................................. | 30.00 |
10 | Registration as patent attorney............ | 65.00 |
11 | Annual renewal of registration as patent attorney..................................... | 65.00 |
12 | Restoration of registration as patent attorney.................................................. | 65.00 |
13 | Examination for registration as patent attorney — per paper.......................... | 25.00 |
14 | On all notices of opposition, by opponent...................................................... | 300.00 |
Fee | ||
---|---|---|
15 | On hearing by Commissioner, for each party.................................................... | 750.00 |
16 | For all certificates, certified copies or extracts from the register.................... | 30.00 |
17 | Photocopying—per page (copy by office)..................................................... | 0.89 |
0.18 |
Patents Form No 1
Patents Form No 4
Forms 4 and 5 of Schedule 2 were amended, as from 27 March 1975, by regulations 7(a) and (b) Patents Regulations 1954, Amendment No 3 (SR 1975/58) respectively,bysubstitutingtheexpression “2.5cm”fortheexpression “1 1/2 in”.
Forms 4 and 5 of Schedule 2 were amended, as from 27 March 1975, by regulations 7(a) and (b) Patents Regulations 1954, Amendment No 3 (SR 1975/58) respectively,bysubstitutingtheexpression “2.5cm”fortheexpression “1 1/2 in”.
Patents Form No 7
Patents Form No 8 Patents Form No 10
Patents Form No 13 Patents Form No 15 Patents Form No 17
Patents Form No 20
Forms 22, 62, 63, 64, 65, and 66 were amended, as from 27 March 1975, by regulation 7(c) Patents Regulations 1954, Amendment No 3 (SR 1975/58), by substituting the words “A4 international standard size” for the word “foolscap”.
Patents Form No 24
Patents Form No 25 Patents Form No 27 Patents Form No 29
Patents Form No 30 Patents Form No 32 Patents Form No 34 Patents Form No 36 Patents Form No 38 Patents Form No 40 Patents Form No 42 Patents Form No 44 Patents Form No 46 Patents Form No 48
Patents Form No 51 Patents Form No 53 Patents Form No 55 Patents Form No 57 Patents Form No 59 Patents Form No 61
Forms 22, 62, 63, 64, 65, and 66 were amended, as from 27 March 1975, by regulation 7(c) Patents Regulations 1954, Amendment No 3 (SR 1975/58), by substituting the words “A4 international standard size” for the word “foolscap”.
Forms 22, 62, 63, 64, 65, and 66 were amended, as from 27 March 1975, by regulation 7(c) Patents Regulations 1954, Amendment No 3 (SR 1975/58), by substituting the words “A4 international standard size” for the word “foolscap”.
Forms 22, 62, 63, 64, 65, and 66 were amended, as from 27 March 1975, by regulation 7(c) Patents Regulations 1954, Amendment No 3 (SR 1975/58), by substituting the words “A4 international standard size” for the word “foolscap”.
Forms 22, 62, 63, 64, 65, and 66 were amended, as from 27 March 1975, by regulation 7(c) Patents Regulations 1954, Amendment No 3 (SR 1975/58), by substituting the words “A4 international standard size” for the word “foolscap”.
Forms 22, 62, 63, 64, 65, and 66 were amended, as from 27 March 1975, by regulation 7(c) Patents Regulations 1954, Amendment No 3 (SR 1975/58), by substituting the words “A4 international standard size” for the word “foolscap”.
Patents Form No 67
Patents Form No 70 Patents Form No 72 Patents Form No 74 Patents Form No 76 Patents Form A
Schedule 4 Reg 73 Renewal fees payable
Schedule4wassubstituted,asfrom1January1989,byregulation2(2)Patents
Regulations 1954, Amendment No 12 (SR 1989/278). | |
---|---|
Before the expiration of the — | $ |
Fourth year.................................................................. | 170 |
Seventh year................................................................ | 340 |
Tenth year.................................................................... | 540 |
Thirteenth year............................................................ | 1000 |
from the date of the patent. |
Date of Order in Council Title or Subject Matter 26 June 1922 Regulations under the Patents, Designs, and Trade Marks Act 192122 relating to patents 26 June 1922 Regulations as to patent agents under the Patents, Designs, and Trade Marks Act 192122 26 June 1922 Regulations under section 129 of the Patents, Designs, andTradeMarksAct192122 7 June 1923 Amendment of regulations under the Patents, Designs, andTradeMarksAct192122 relating to patents 12 December 1924 Regulations under the Patents, Designs, and Trade Marks Act 192122 6 April 1925 Regulations under the Patents, Designs, and Trade Marks Act 192122 | Published in Gazette Year Page 1922 Vol II, p 1669 1922 Vol II, p 1694 1922 Vol II, p 1695 1923 Vol II, p 1634 1924 Vol III, p 2972 1925 Vol I, p 1041 Published in Statutory Regulations Year Serial Number |
---|
29 August 1945 | The Patents Amending Regulations 1945 | Published in Gazette | |
---|---|---|---|
1945 | 1945/121 | ||
14 August 1946 | The Patents, Designs, and Trade Marks Amending Regulations 1946 (in their application to patents) | 1946 | 1946/143 |
23 January 1947 | The Patents Amending Regulations 1947 | 1947 | 1947/2 |
14 May 1947 | The Patents and Designs (United States of America) Regulations 1947 in their application to patents | 1947 | 1947/70 |
17 September 1947 | The Patents (Canada) Regulations 1947 | 1947 | 1947/134 |
17 September 1947 | The Patents Amending Regulations 1947, No 2 | 1947 | 1947/136 |
3 October 1947 | The Patents (Union of South Africa) Regulations 1947 | 1947 | 1947/150 |
3 October 1947 | The Patents and Designs (United States of America) Regulations 1947, Amendment No 1, in their application to patents | 1947 | 1947/151 |
17 December 1947 | The Patents, Designs, and Trade Marks (Neuchatel Agreement) Regulations 1947 in their application to patents | 1947 | 1947/197 |
17 March 1948 | The Patents Amending Regulations 1948 | 1948 | 1948/39 |
11 August 1948 | The Patents, Designs, Trade Marks, and Copyright (Treaties of Peace with Italy, Roumania, Bulgaria, Hungary, and Finland) Regulations 1948 in their application to patents | Published in Gazette | |
---|---|---|---|
1948 | 1948/136 | ||
13 October 1948 | ThePatents(LondonAccord) Regulations 1948 | 1948 | 1948/164 |
7 September 1949 | The Patents Amending Regulations 1949 | 1949 | 1949/139 |
19 July 1950 | The Patents Amending Regulations 1950 | 1950 | 1950/124 |
8 May 1951 | The Patents Extension of Time (Germany) Regulations 1951 | 1951 | 1951/106 |
15 August 1951 | The Patents Amending Regulations 1951 | 1951 | 1951/185 |
T J SHERRARD, Clerk of the Executive Council.
[This note is not part of the regulations, but is intended to indicate
their general effect.] Theseregulationsreplacetheexistinggeneralregulationsrelatingto patents. Therevisionoftheregulationsisconsequentialonthepass ing of the Patents Act 1953. The regulations cover various matters which are left by the Act to be prescribed by regulations.
Issued under the authority of the Regulations Act 1936.