- Patents Regulations 1954
- Contents
- Part 1 Preliminary
- Part 2 Fees
- Part 3 Forms and documents
- Part 4 Agency and correspondence
- Part 5 Applications for patents, and specifications
- Part 6 Drawings
- Part 7 Examination of applications
- Part 8 Putting applications in order and acceptance of complete specifications
- Part 9 Opposition to grant of patent
- Part 10 Refusal of patent without opposition
- Part 11 Mention of inventor as such
- Part 12 Substitution of applicants, etc
- Part 13 Sealing and form of patent
- Part 14 Renewal fees
- Part 15 Extension of term of patent
- Part 16Restoration of lapsed patents
- Part 16 Restoration of lapsed patents
- Part 17 Restoration of lapsed applications for patents where patent not sealed
- Part 18 Restoration of application where complete specification not accepted
- Part 19 Amendment of specification or application for patent
- Part 20 Revocation and surrender of patent
- Part 21 Voluntary endorsement of patents “licences of right”
- Part 22 Compulsory licence, compulsory endorsement of patent “licences of right”, and revocation
- Part 23 Directions to coowners
- Part 24 Disputes as to inventions made by employees
- Part 25 Register of patents
- Part 26 Correction of errors
- Part 27 Certificates and information
- Part 28 Evidence and attendance of witnesses before Commissioner
- Part 29 Applications to and orders of Court
- Part 30 Patent attorneys
- Part 31 Miscellaneous provisions
- Part 32 Revocations and savings
- Schedule 1 Fees
- Schedule 2 Forms
- Schedule 3 Forms of patent and patent of addition
- Schedule 4 Renewal fees payable
- Schedule 5 Regulations revoked
- Part 1 Preliminary
- Part 2 Fees
- Part 3 Forms and documents
- Part 4 Agency and correspondence
- Part 5 Applications for patents, and specifications
- 20 Personal representative to establish right to act
- 21 Declaration of inventorship in certain cases
- 22 Cognate applications
- 23 Date of divisional application
- 24 Division of applications if not cognate
- 25 Evidence in support of convention applications
- 26 Division of convention application
- 27 Extension of period for filing complete specification
- 28 Request for postdating an application
- Part 6 Drawings
- Part 7 Examination of applications
- 37 Order of examination
- 38 Examination may be advanced
- 39 Examination procedure under section 13 of the Act
- 40 Procedure under section 14 of the Act
- 41 Periods in regulation 40 hereof may be extended
- 42 Application for result of search
- 43 Reference to prior specification
- 44 Reference to prior patent
- 45 Reference to applicant includes patentee
- Part 8 Putting applications in order and acceptance of complete specifications
- Part 9 Opposition to grant of patent
- Part 10 Refusal of patent without opposition
- Part 11 Mention of inventor as such
- Part 12 Substitution of applicants, etc
- Part 13 Sealing and form of patent
- Part 14 Renewal fees
- Part 15 Extension of term of patent
- Part 16 Restoration of lapsed patents
- Part 17 Restoration of lapsed applications for patents where patent not sealed
- Part 18 Restoration of application where complete specification not accepted
- Part 19 Amendment of specification or application for patent
- Part 20 Revocation and surrender of patent
- Part 21 Voluntary endorsement of patents“licences of right”
- 109 Application under section 44(1) of the Act
- 110 Applications under section 44(2)(a) and (b) of the Act
- 111 Cancellation of endorsement under section 45(1) of the Act
- 112 Cancellation of endorsement under section 45(2) of the Act
- 113 Advertisement and opposition
- 114 Balance of renewal fees payable on cancellation
- Part 22 Compulsory licence, compulsory endorsement of patent “licences of right”, and revocation
- Part 23 Directions to coowners
- Part 24 Disputes as to inventions made by employees
- Part 25 Register of patents
- 125 Register to record grant of patents
- 126 Alteration of entries
- 127 Registration of assignments, etc
- 128 Copies of documents
- Public inspection of register, etc.
- 130 Payment of renewal fees to be entered
- 131 Entry of claim arising from special provision in order for extension of term of patent
- 132 Application for dispensing with probate or letters of administration
- Part 26 Correction of errors
- Part 27 Certificates and information
- Part 28 Evidence and attendance of witnesses before Commissioner
- Part 29 Applications to and orders of Court
- Part 30 Patent attorneys
- 152 Register of patent attorneys
- 153 Publication of entries
- 154 Qualification for registration
- 155 Examination
- 155 Examination
- 156 Persons entitled to sit examination
- Entries for examination and appointment of examiners
- 158 Subjects of examination
- 159 Rules for examination
- 160 Requirements for pass
- 161 Renewal of registration
- 162 Amendment of entries in register of patent attorneys
- 163 Evidence
- Part 31 Miscellaneous provisions
- Part 32 Revocations and savings
- Schedule 1 Fees
- Schedule 2 Forms
- Patents Form No 1
- Patents Form No 2
- Patents Form No 3
- Patents Form No 4
- Patents Form No 5
- Patents Form No 6
- Patents Form No 7
- Patents Form No 8
- Patents Form No 9
- Patents Form No 10
- Patents Form No 11
- Patents Form No 12
- Patents Form No 13
- Patents Form No 14
- Patents Form No 15
- Patents Form No 16
- Patents Form No 17
- Patents Form No 18
- Patents Form No 19
- Patents Form No 20
- Patents Form No 21
- Patents Form No 22
- Patents Form No 23
- Patents Form No 24
- Patents Form No 25
- Patents Form No 26
- Patents Form No 27
- Patents Form No 28
- Patents Form No 29
- Patents Form No 30
- Patents Form No 31
- Patents Form No 32
- Patents Form No 33
- Patents Form No 34
- Patents Form No 35
- Patents Form No 36
- Patents Form No 37
- Patents Form No 38
- Patents Form No 39
- Patents Form No 40
- Patents Form No 41
- Patents Form No 42
- Patents Form No 43
- Patents Form No 44
- Patents Form No 45
- Patents Form No 46
- Patents Form No 47
- Patents Form No 48
- Patents Form No 49
- Patents Form No 50
- Patents Form No 51
- Patents Form No 52
- Patents Form No 53
- Patents Form No 54
- Patents Form No 55
- Patents Form No 56
- Patents Form No 57
- Patents Form No 58
- Patents Form No 59
- Patents Form No 60
- Patents Form No 61
- Patents Form No 62
- Patents Form No 63
- Patents Form No 64
- Patents Form No 65
- Patents Form No 66
- Patents Form No 67
- Patents Form No 68
- Patents Form No 69
- Patents Form No 70
- Patents Form No 71
- Patents Form No 72
- Patents Form No 73
- Patents Form No 74
- Patents Form No 75
- Patents Form No 76
- Schedule 3 Forms of patent and patent of addition
- Schedule 4 Renewal fees payable
- Schedule 5 Regulations revoked
- Explanatory note
Patents Regulations 1954
(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
Part 1 Preliminary
Title, commencement, and arrangement
- (1)
- These regulations may be cited as the Patents Regulations 1954.
- (2)
- These regulations shall come into force immediately after the commencement of the Patents Act 1953.
(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.
Part 2 Fees
Fees payable according to Schedule 1
3
- (1)
- The fees to be paid in respect of the grant of patents and applications therefor and in respect of other matters relating to patents arising under the Act and these regulations shall be those prescribed in Schedule 1 hereto.
- (2)
- Thefeesprescribedbytheseregulationsareexclusiveofgoods and services tax. Subclause(2)wasinserted,asfrom1July1999,byregulation 2 PatentsAmend
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.
Part 3 Forms and documents
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—
- (a)
- On strong white paper of approximately A4 international size; and
- (b)
- In legible characters with a permanent deep black ink; and
- (c)
- With a space of approximately 0.6 cm between each line; and
- (d)
- Except in the case of statutory declarations and affidavits, on one side only; and
- (e)
- With a margin of at least 2.5 cm on the lefthand side; and
- (f)
- In the case of provisional and complete specifications, leavingaspaceofapproximately13cmblankatthetop of the form.
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.
Part 4 Agency and correspondence
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.
Part 5 Applications for patents, and specifications
Appropriate application forms to be used
19
- (1)
- An application, other than a convention application, shall be made in form 1.
- (2)
- A convention application shall be made in form 2.
- (3)
- An application for the grant of a patent of addition instead of
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
- (1)
- Inthecaseofaconventionapplication,andinthecaseofanapplicationaccompaniedbyaprovisionalspecification,adeclarationinform 6 astotheinventorshipoftheinventiondisclosed in the complete specification shall be filed with the complete specificationorsubsequentlyatanytimebeforetheexpiration of the period allowed by or under section 19 of the Act for putting the application in order.
- (2)
- On request by the applicant, the Commissioner may if he thinks fit dispense with the declaration.
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
- (1)
- Inadditiontothespecificationfiledwitheveryconventionapplication, there shall be filed with the application, or within three months thereafter, a copy of the specification and drawings or documents filed in respect of the relevant application for protection in a convention country or of each such application,dulycertifiedbytheofficialchieforheadofthePatent Office of the convention country, or otherwise verified to the satisfaction of the Commissioner.
- (2)
- If any specification or other document relating to the application is in a foreign language, it shall be accompanied by a translationthereofintotheEnglishlanguageverifiedbystatutory declaration or otherwise to the satisfaction of the Commissioner.
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.
Part 6 Drawings
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
- (1)
- Drawings shall be made on pure white tough drawing paper, notthinnerthan40sheetstothecentimetre,ofsmoothsurface and good quality, and without colour or washes.
- (2)
- Mounted drawings may not be used.
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
- (1)
- DrawingsshallbeonsheetsofapproximatelyA4international size, and a clear margin of at least 1.5 cm shall be left at the edges of the sheet.
- (2)
- Anexceptionallylargefiguremaybecontinuedonsubsequent sheets.
- (3)
- No more sheets shall be employed than are necessary.
- (4)
- Thefiguresshallbenumberedconsecutivelywithoutregardto thenumberofsheets,andshallasfaraspossiblebearrangedin numerical order, separated by a sufficient space to keep them distinct.
- (5)
- Where figures on a number of sheets form in effect a single complete figure, they shall be so arranged that the complete figurecanbeassembledwithoutconcealinganypartofanother figure. Regulation 31(1) was substituted, as from 27 March 1975, by regulation 4
Patents Regulations 1954, Amendment No 3 (SR 1975/58).
Preparation of drawings
32
Drawings shall be prepared in accordance with the following requirements:
- (a)
- They shall be executed with absolutely black ink:
- (b)
- Eachlineshallbefirmlyandevenlydrawn,sharplydefined, and of the same strength throughout:
- (c)
- Sectionlines,linesforeffect,andshadinglinesshallbe as few as possible, and shall not be closely drawn:
- (d)
- Shadinglinesshallnotcontrastexcessivelyinthickness with the general lines of the drawing:
- (e)
- Sections and shading shall not be represented by solid black or washes:
- (f)
- They shall be on a scale sufficiently large to show the invention clearly, and only so much of the apparatus, machine, or article may appear as effects this purpose:
- (g)
- If the scale is given, it shall be drawn and not denoted by words, and no dimensions may be marked on the drawings:
- (h)
- Where convenient, the figures shall be drawn in an upright position in regard to the top and bottom of the sheet:
- (i)
- SubjecttoanyspecialdirectionsoftheCommissionerin any particular case, reference letters and numerals and index letters and numerals used in conjunction therewith shall be bold, distinct, and not less than 0.3 cm in height;thesamelettersornumeralsshallbeusedindifferentviewsofthesameparts; andwherethereference letters or numerals areshown outside the parts referred to they shall be connected with the said parts by fine lines.
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
- (1)
- Drawings shall bear in the right hand bottom corner particularssufficienttoidentifytheapplicantandthesignatureofthe applicant or his agent.
- (2)
- The title of the invention shall not appear on the drawings.
Descriptive matter
34
- (1)
- Nodescriptivemattershallappearonconstructionaldrawings, butdrawingsinthenatureofflowsheetsmaybeardescriptive matter to show the materials used and the chemical or other reactions or treatments effected in carrying out the invention.
- (2)
- Drawings showing a number of instruments or units of apparatusandtheirinterconnections,eithermechanicalorelectrical, where eachsuch instrument orunitisshownonly sym
19
bolically, may bear such descriptive matter as is necessary to identify the instruments or units or their interconnections.
- (3)
- Such descriptive matter shall be in absolutely black ink, and the letters shall not be less than 0.4 cm in height.
- (4)
- No drawing or sketch, other than a graphic chemical formula or a mathematical formula, symbol, or equation, shall appear in the verbal part of the specification, and if such a formula, symbol,orequationisusedthereinacopythereof,preparedin the same manner as drawings, shall be furnished if the Commissioner so directs. Regulation34(3)wasamended,asfrom27March1975,byregulation6Patents
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.
Part 7 Examination of applications
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—
- (a)
- To expedite the business of the Office; or
- (b)
- For good and substantial reasons at the request of the applicant made in form 9.
Examination procedure under section 13 of the Act
39
- (1)
- Whentheexaminer,inmakingtheinvestigationundersection 13 of the Act, reports 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 subsection (1) or subsection (2) of that section, the applicant shall be so informedandshallbeaffordedanopportunityofamendinghis specification.
- (2)
- Iftheexaminerfindsthatsubstantiallythewholeoftheinvention claimed has been published in one or more such specifications or documents he may, without continuing the investigation, make a provisional report to that effect.
- (3)
- Iftheapplicantrepliestotheexaminer’sobjectionsoramends hisspecificationandtheexaminerisnotsatisfiedeitherthatthe inventionsofarasclaimedinanyclaimhasnotbeenpublished in any specification or other document cited by the examiner or that the priority date of the claim is not later than the date on which the relevant document was published, the applicant shallbegivenanopportunitytobeheardinthematterifheso requests.
- (4)
- Whether or not the applicant has replied or amended his specification,theCommissionermayappointahearingifheconsidersitdesirabletodoso,havingregardtothetimeremaining for putting the application in order or other circumstances of the case.
- (5)
- When a hearing is appointed, the applicant shall be given not less than ten days’ notice of the appointment, unless in the opinion of the Commissioner a shorter notice is reasonable,
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
- (1)
- Whentheexaminerreportsthattheinventionsofarasclaimed in any claim of the complete specification is claimed in any claim of any other complete specification falling within subsection (1) orsubsection (3) ofsection14oftheActtheapplicantshallbesoinformedandshallbeaffordedanopportunity of amending, orsubmitting amendmentsof, his specification.
- (2)
- If, when the applicant’s specification is otherwise in order for acceptance, an objection under section 14 of the Act is out standing, the Commissioner may accept the specification and fix a period (being not less than two months from the date of its publication) for removing the objection.
- (3)
- Ifanobjectionundersection 14 oftheActiscommunicatedto the applicant after acceptance of the specification, the Commissioner shall fix a period (being not less than two months from the date of the communication) for removing the objection.
- (4)
- If the applicant so requests at any time, or if the examiner is not satisfied that the objection has been met within the period prescribed by this regulation, including any extension thereof which the Commissioner may allow, a time for hearing the applicant shall be appointed and the applicant shall be given not less than ten days’ notice of the appointment and shall as soon as possible notify the Commissioner whether he will attend the hearing.
- (5)
- 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 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
- (1)
- Wheninmakingtheinvestigationsundersections 13 and 14 of theActitappearstotheexaminerthattheapplicant’sinvention cannot be performed without substantial risk of infringement ofaclaimofanotherpatent,theapplicantshallbesoinformed and the procedure provided in regulations 40 and 41 hereof shall apply.
- (2)
- When, pursuant to that procedure, the Commissioner directs that reference to a patent shall be inserted in the applicant’s
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.
Part 8 Putting applications in order and acceptance of complete specifications
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
- (1)
- A notice of opposition to the grant of a patent—
- (a)
- Shall be given in form 15;
- (b)
- Shallstatethegroundorgroundsonwhichtheopponent intends to oppose the grant; and
- (c)
- Shallbeaccompaniedbyacopythereofandastatement (in duplicate) setting out fully the nature of the opponent’s interest, the facts upon which he relies, and the relief which he seeks.
- (2)
- A copy of the notice and of the statement shall be sent by the Commissioner to the applicant.
- (3)
- An application under the proviso to section 21(2) of the Act for an extension of the period for filing a notice of opposition shall be in form 16.
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
- (1)
- Copies of all documents, other than New Zealand specifications, referred to in the notice of opposition or in any statement or evidence filed in connection with the opposition, authenticated to the satisfaction of the Commissioner, shall be furnished(induplicate)fortheCommissioner’suse,unlesshe otherwise directs.
- (2)
- Whereaspecificationorotherdocumentinaforeignlanguage is referred to, a translation thereof, verified by statutory declaration or otherwise to the satisfaction of the Commissioner, and two copies of the translation, shall also be furnished.
Hearing
54
- (1)
- Oncompletionoftheevidence(ifany),orifanypartyhasnot compliedwiththeprovisionsofregulations 49to51 hereofat suchothertime(whetherbeforeoraftertheevidencehasbeen filed) as the Commissioner thinks fit, the Commissioner shall appoint a time for the hearing of the case, and shall give the partiesnotlessthanfourteen days’ noticeoftheappointment.
- (2)
- Ifeitherpartydesirestobeheard,heshallnotifytheCommis sioner in form 17, and the Commissioner may refuse to hear either party who has not filed notice in the said form prior to the time of the hearing.
- (3)
- Ifeitherpartyintendstoreferatthehearingtoanypublication not already mentioned in the proceedings, he shall give to the other party and to the Commissioner not less than ten days’ noticeofhisintention,togetherwithdetailsofeachpublication to which he intends to refer.
- (4)
- After hearing the party or parties desiring to be heard or, if neither party desires to be heard, then without a hearing, the Commissioner shall decidethe caseand notifyhisdecision to the parties.
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.
Part 10 Refusal of patent without opposition
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
- (1)
- If the specification has not been amended to the Commissioner’s satisfaction within the period allowed under regulation 57 hereofincludinganyextensionthereofwhichtheCommissionermayallow, a timeforhearingthe applicantshallbe appointed, and the applicant shall be given at least ten days’ noticeoftheappointment,andshallassoonaspossiblenotify the Commissioner whether he will attend the hearing.
- (2)
- 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 andmayrefusetograntapatentunlesstheamendmentismade or agreed to within such period as he may fix.
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.
Part 11 Mention of inventor as such
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
- (1)
- A claim under section 23(4) of the Act shall be made in form 19 , and shall be accompanied by a statement setting out fully the facts relied upon.
- (2)
- A copy of the claim and of the statement shall be sent by the Commissioner to everyapplicant forthe patent(not beingthe claimant) and to any other person whom the Commissioner may consider to be interested;and theclaimant shall supply a sufficient number of copies for that purpose.
- (3)
- TheCommissionermaygivesuchdirections(ifany)ashemay think fit with regard to the subsequent procedure.
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
- (1)
- An application under section 23(8) of the Act for a certificate shallbemadeinform 21 ,andshallbeaccompaniedbyastatement setting out fully the facts relied upon.
- (2)
- Acopyoftheapplicationandofthestatementshallbesentby the Commissioner to each patentee (not being the applicant), tothepersonmentionedastheactualdeviser,andtoanyother personwhomtheCommissionermayconsidertobeinterested, andtheapplicantshallsupplyasufficientnumberofcopiesfor that purpose.
- (3)
- TheCommissionermaygivesuchdirection(ifany)ashemay think fit with regard to the subsequent procedure.
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
- (1)
- Anapplicationundersection 24(5) oftheActbyajointapplicantforthedirectionsoftheCommissionerastothenamesor mannerinwhichanapplicationforapatentshallbeproceeded withshallbemadeinform 23 ,andshallbeaccompaniedbya statement setting out fully the facts upon which the applicant relies and the directions which he seeks.
- (2)
- A copy of the application and statement shall be sent by the Commissioner to each other joint applicant; and the person making the application under section 24(5) of the Act shall supply a sufficient number of copies for that purpose.
- (3)
- The Commissioner may give such directions as he may think fit with regard to the subsequent procedure.
Part 13 Sealing and form of patent
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
- (1)
- Anapplicationundersection 27(3) oftheActfortheextension of the period for making a request for the sealing of a patent shall be made in form 25.
- (2)
- The extension shall not be more than three months.
Time for sealing under section 27(4) of the Act
70
- (1)
- Anapplicationundersection 27(4) oftheActforextensionof theperiodformakingarequestforthesealingofapatentshall be made in form 26.
- (2)
- The extension shall not be more than six months on any one application under section 27(4) of the Act.
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.
Part 14 Renewal fees
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
- (1)
- AnapplicationtotheCommissionerundersection 31 ,section 32 ,orsection 33 oftheActforanorderextendingthetermof a patent shall be made in form 31.
- (2)
- The application shall state the period of the extension which is sought and shall be supported by evidence setting out fully thefactsreliedupon,suchevidencebeingfiledeitherwiththe application or at any time within three months from the date thereof.
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
- (1)
- At any time within two months from the date of the second advertisementoftheapplicationintheJournal anypersonmay give notice of opposition.
- (2)
- Such notice shall be in form 32, and shall be accompanied by a copy thereof together with a statement (in duplicate) setting out fully the nature of the opponent’s interest, the grounds of opposition, and the relief which he seeks.
- (3)
- Evidence(induplicate)ofthefactsuponwhichhereliesshall be filed within one month of the filing of the notice.
- (4)
- A copy of the notice, the statement, and the evidence, shall besentbytheCommissionertotheapplicant,whowithintwo months from the receipt thereof may file evidence confined to matters strictly in reply and shall deliver to the opponent a copy of the evidence.
- (5)
- No further evidence shall be filed by either party except by leave or direction of the Commissioner.
- (6)
- An opponent shall be entitled at his own expense to be supplied by the applicant with a copy of the application and of any evidence filed in support.
Hearing
82
- (1)
- Oncompletionoftheevidenceoratsuchothertimeashemay see fit, the Commissioner shall appoint a time for the hearing of the case, and shall give the parties at least fourteen days’ notice of the appointment.
- (2)
- If either part desires to be heard he shall notify the Commis sioner in form 17, and the Commissioner may refuse to hear anypartywhohasnotfilednoticeinthesaidformpriortothe time of the hearing.
- (3)
- After hearing the party or parties desiring to be heard or, if neither party desires to be heard, then without a hearing, the Commissioner shall decidethe caseand notifyhisdecision to the parties.
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
- (1)
- Anapplicationundersection 35 oftheActforrestorationofa patent shall be made in form 33.
- (2)
- Evidenceinsupportofthestatementsmadeintheapplication shallbefiledwithinthreemonthsofthedateoftheapplication.
Preliminary consideration by Commissioner
86
- (1)
- IfuponconsiderationoftheevidencetheCommissionerisnot satisfiedthataprima facie caseforanorderundersection 35 of the Act has been made out, he shall notify the applicant accordinglyand,unlesswithinonemonththeapplicantrequests to be heard in the matter, the Commissioner shall refuse the application.
- (2)
- If the applicant requests a hearing within the time allowed, the Commissioner (after giving the applicant an opportunity of being heard) shall determine whether the application may proceed to advertisement or whether it shall be refused.
Opposition
87
- (1)
- At any time within two months of the advertisement of the application under section 35(4) of the Act, any person may give notice of opposition thereto in form 34.
- (2)
- The notice shall be accompanied by a copy thereof together with a statement (in duplicate) setting out fully the nature of the opponent’s interest and the facts upon which he relies.
- (3)
- A copy of the notice and of the statement shall be sent by the Commissioner to the applicant.
- (4)
- Uponnoticeofoppositionbeinggiventheprovisionsofregu lations 49 to 54 hereof shall apply.
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:
- (a)
- No action or other proceeding shall be commenced or prosecutednoranydamagesrecoveredinrespectofany manufacture,use,orsaleoftheinventionthesubjectof thepatentintheinterimperiodashereinafterdefinedby any person (not being a licensee under the patent at the datewhenitceasedtohaveeffect),whoaftersuchdate and before the date of the application has made, used, exercised,orsoldtheinventionthesubjectofthepatent or has manufactured or installed any plant, machinery, or apparatus claimed in the specification of the patent orforcarryingoutamethodorprocesssoclaimed;and any such person shall be deemed to have so acted with the licence of the patentee and shall thereafter be entitled to continue to make, use exercise, or sell the inventionwithoutinfringementofthepatenttotheextent hereinafter specified, that it to say:
- (i)
- In so far as the complete specification of the patentclaimsanarticle(otherthanplant,machinery, or apparatus or part thereof as specified in subparagraph (ii) of this paragraph) and any art icle so claimed has been manufactured by him duringthesaidinterimperiod,thatparticulararticle may at all times be used or sold:
- (ii)
- Insofarasthecompletespecificationclaimsany plant,machinery,orapparatusorpartthereoffor the production of an article, then any particu
- (b)
- Inthisregulationtheterm article has the meaningspe cified in section 2 of the Patents Act 1953, and the terminterimperiodmeanstheperiodbetweenthedate whenthepatentceasedtohaveeffectandthedateofthe Order.
Part 17 Restoration of lapsed applications for patents where patent not sealed
Application
- (1)
- Anapplicationundersection 36 oftheActforthesealingofa patent shall be made in form 36.
- (2)
- Evidenceinsupportofthestatementsmadeintheapplication shallbefiledwithinthreemonthsofthedateoftheapplication.
Preliminary consideration by Commissioner
91
- (1)
- IfuponconsiderationoftheevidencetheCommissionerisnot satisfiedthataprima facie caseforanorderundersection 36 of theActhasbeenmadeoutheshallnotifytheapplicantaccordingly, and unless within one month from the notification the applicantrequeststobeheardinthematter,theCommissioner shall refuse the application.
- (2)
- If the applicant requests a hearing within the time allowed, the Commissioner, after giving the applicant an opportunity of being heard, shall determine whether the application may proceed to advertisement or whether it shall be refused.
Opposition
92
- (1)
- Atanytimewithintwomonthsoftheadvertisementofanap plication under section 36(3) of the Act any person may give notice of opposition thereto in form 37.
- (2)
- Such notice shall be accompanied by a copy thereof together with a statement (in duplicate) setting out fully the nature of the opponent’s interest and the facts upon which he relies.
- (3)
- A copy of the notice and statement shall be sent by the Commissioner to the applicant.
- (4)
- Uponnoticeofoppositionbeinggiventheprovisionsofregu lations 49 to 54 hereof shall apply.
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.
Part 18 Restorationofapplicationwherecomplete specification not accepted
Application
95
- (1)
- An application under section 37 of the Act for restoration of anapplicationandextensionoftheperiodforcomplyingwith therequirementsimposedontheapplicantbyorundertheAct shall be made in form 39.
- (2)
- Evidenceinsupportofthestatementsmadeintheapplication shallbefiledwithinthreemonthsofthedateoftheapplication.
Preliminary consideration by Commissioner
96
- (1)
- IfuponconsiderationoftheevidencetheCommissionerisnot satisfiedthataprima facie caseforanorderundersection 37 of theActhasbeenmadeout,heshallnotifytheapplicantaccordingly; and unless within one month from the notification the applicantrequeststobeheardinthematter,theCommissioner shall refuse the application.
- (2)
- If the applicant requests a hearing within the time allowed, the Commissioner, after giving the applicant an opportunity of being heard, shall determine whether the application may proceed to advertisement or whether it shall be refused.
97
- (1)
- At any time within two months of the advertisement of the applicationundersection 37(3) oftheActanypersonmaygive notice of opposition thereto in form 40.
- (2)
- Such notice shall be accompanied by a copy thereof together with a statement (in duplicate) setting out fully the nature of the opponent’s interest and the facts upon which he relies.
- (3)
- A copy of the notice and of the statement shall be sent by the Commissioner to the applicant.
- (4)
- Uponnoticeofoppositionbeinggiventheprovisionsofregu lations 49 to 54 hereof shall apply.
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.
Part 19 Amendmentofspecificationorapplication for patent
Application to amend accepted completespecification
99
- (1)
- An application to the Commissioner for leave to amend an accepted complete specification under section 38 of the Act shall be made in form 41 and, subject to the proviso to sec tion 38(3) oftheAct,shallbeadvertisedbypublicationofthe application and the nature of the proposed amendment in the Journal,andinsuchothermanner,ifany,astheCommissioner may in each case direct.
- (2)
- Unless the Commissioner otherwise directs, an application or proposalforamendmentofanacceptedcompletespecification shallbeaccompaniedbyacopyofthespecificationanddrawings clearly showing in red ink the amendment sought.
Opposition
100
- (1)
- Any person wishing to oppose the application shall, within one month from the date of the advertisement in the Journal, or such further period not exceeding three months from the saiddateastheCommissionermayinspecialcasesallow,give notice to the Commissioner in form 42.
- (2)
- Such notice shall be accompanied by a copy thereof and a statement (in duplicate) setting out fully the nature of the opponent’sinterest,thefactsuponwhichherelies,andtherelief whichheseeks. Acopyofthenoticeandofthestatementshall be sent by the Commissioner to the applicant.
- (3)
- Upon such notice of opposition being given and a copy thereof sent to the applicant the provisions of regulations 49 to 54 hereof shall apply.
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.
Part 20 Revocation and surrender of patent
Application for revocation
104
- (1)
- An application for the revocation of a patent under section 42 of the Act shall be made in form 45, and shall be accom paniedbyacopythereofandastatement(induplicate)setting out fully the nature of the applicant’s interest, the facts upon which he relies, and the relief which he seeks.
- (2)
- Acopyoftheapplicationandofthestatementshallbesentby the Commissioner to the patentee.
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
- (1)
- AtanytimewithinonemonthfromtheadvertisementanypersonmaygivenoticeofoppositiontotheCommissionerinform 47 ,whichshallbeaccompaniedbyacopythereofandastatement (in duplicate) setting out fully the nature of the opponent’s interest, the facts upon which he relies, and the relief which he seeks.
- (2)
- A copy of the notice and of the statement shall be sent by the Commissioner to the patentee.
- (3)
- Upon such notice of opposition being given and a copy thereof sent 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.
Part 21 Voluntary endorsement of patents “licences of right”
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
- (1)
- Anapplicationunderparagraph(a)orparagraph(b)ofsection 44(2) ofthe Act for settlement of the terms of a licence under apatentendorsed“licencesofright”shallbemadeinform 49 , and shall be accompanied by a copy thereof and a statement (in duplicate) setting out fully the facts upon which the applicantreliesandthetermsofthelicencewhichheispreparedto accept or grant.
- (2)
- A copy of the application and statement shall be sent by the Commissioner to the patentee or the person requiring a licence, as the case may be, who, if he does not agree to the terms set out in the statement, shall within six weeks of the receiptofthosecopiesfileacounterstatementsettingoutfully thegroundsoftheobjectionandsendacopythereoftotheapplicant.
- (3)
- The Commissioner shall give such directions as he may think fit with regard to the filing of evidence and the hearing of the parties.
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
- (1)
- Every application under subsection (1) or subsection (2) of section 45 oftheActshallbeadvertisedintheJournal,andthe periodwithinwhichnoticeofoppositiontothecancellationof an endorsement may be given under section 45(5) of the Act shall be three months after the advertisement.
- (2)
- Suchnoticeshallbegiveninform 52 ,andshallbeaccompaniedbyacopythereofandastatement(induplicate)settingout fullythefactsuponwhichtheopponentreliesand,inthecase ofoppositiontoanapplicationundersection 45(1) oftheAct, the nature of his interest.
- (3)
- A copy of the notice and of the statement shall be sent by the Commissionertotheapplicantforcancellationoftheendorsement, and thereafter the Commissioner may give such directionsashemaythinkfitwithregardtothesubsequentprocedure.
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.
Part 22 Compulsory licence, compulsory endorsement of patent “licences of right”, and revocation
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
- (1)
- IfuponconsiderationoftheevidencetheCommissionerisnot satisfied that a prima facie case has been made out for the making of an order, he shall notify the applicant accordingly, andunlesswithinonemonththeapplicantrequeststobeheard in the matter the Commissioner shall refuse the application.
- (2)
- If the applicant requests a hearing within the time allowed, the Commissioner, after giving the applicant an opportunity of being heard, shall determine whether the application may proceed to advertisement or whether it shall be refused.
- (3)
- If the Commissioner allows the application to proceed to advertisement,heshalldirecttheapplicanttoservecopiesofthe application and of the evidence filed in support thereof upon the patentee and any other persons appearing from the registertobeinterestedinthepatentanduponanyotherpersonon whom, in his opinion, copies should be so served.
Opposition
120
- (1)
- The time within which notice of opposition under subsection (3) ofsection52oftheActmaybegivenshallbetwomonths after the advertisement of the application under subsection (2) of that section.
- (2)
- Suchnoticeshallbegiveninform 56 ,andevidenceverifying thestatementsmadethereinshallbefiledwithinonemonthof the filing of the opposition.
- (3)
- The opponent shall serve a copy of the notice and of the evidence on the applicant.
- (4)
- Thereafter the Commissioner may give such directions as he may think fit with regard to the subsequent procedure.
Application under section 51 of the Act
121
- (1)
- Anapplicationundersection 51 oftheActforalicenceunder a patent shall be made in form 57.
- (2)
- Theproceduretobefollowedinconnectionwithanysuchapplicationshallbethesameasthatprescribedinregulations 118 to 120 hereof for an application under section 46 of the Act.
Part 23 Directions to coowners
Application under section 64(1) of the Act
122
- (1)
- Anapplicationfordirectionsundersection 64(1) oftheActby acogranteeorcoproprietorofapatentshallbemadeinform 58 , and shall be accompanied by a statement setting out fully the facts upon which the applicant relies and the directions which he seeks.
- (2)
- Acopyoftheapplicationandofthestatementshallbesentby the Commissioner to each other person registered as grantee or proprietor of the patent, and the applicant shall supply a sufficient number of copies for that purpose.
- (3)
- Thereafter the Commissioner may give such directions as he may think fit with regard to the subsequent procedure
Application under section 64(2) of the Act
123
- (1)
- An application for directions under section 64(2) of the Act by a cograntee or coproprietor of a patent shall be made in form 59, and shall be accompanied by a copy thereof and a statement (in duplicate) setting out fully the facts upon which the applicant relies, and the directions which he seeks.
- (2)
- Acopyoftheapplicationandofthestatementshallbesentby the Commissioner to the person in default.
- (3)
- Thereafter the Commissioner may give such directions as he may think fit with regard to the subsequent procedure.
Part 24 Disputes as to inventions made by employees
Application under section 65(1) of the Act
124
- (1)
- An application under section 65(1) of the Act to determine a dispute as to rights in an invention shall be made in form 60, and shall be accompanied by a copy thereof together with a statement(induplicate)settingoutfullythefactsofthedispute and the relief which is sought.
- (2)
- Acopyoftheapplicationandofthestatementshallbesentby theCommissionertotheotherpartytothedispute,whowithin threemonthsafterreceiptthereofshallfileacounterstatement (in duplicate) setting out fully the grounds on which he disputes the right of the applicant to the relief sought.
- (3)
- TheCommissionershallsendacopyofthiscounterstatement totheapplicant,andthereafter,subjecttosuchdirectionsasthe Commissioner may think fit to give, the provisions of regulations 50to54 hereofshallapplywiththesubstitutionofreferences to the applicant for references to the opponent and references to the other party for references to the applicant.
Part 25 Register of patents
Register to record grant of patents
125
- (1)
- Upon the sealing of a patent the Commissioner shall cause to beenteredintheregisterthename,address,andnationalityof thepatenteeasthegranteethereof,thetitleoftheinvention,the dateofthepatent,andthedateofthesealingthereof,together with the address for service.
- (2)
- The Commissioner may at any time enter in the register such other particulars as he may deem necessary.
126
- (1)
- A request by a patentee for the alteration of a name, nationality, or address, or address for service entered in the register in respect of his patent shall be made in form 61.
- (2)
- Before acting on a request to alter a name or nationality, the Commissioner may require such proof of the alteration as he may think fit.
- (3)
- If the Commissioner is satisfied that the request may be allowed he shall cause the register to be altered accordingly.
Registration of assignments, etc
127
- (1)
- An application for the registration of the title of any person becoming entitled by assignment, transmission, or operation oflawtoapatentortoashareinapatent,orbecomingentitled by virtue of a mortgage, licence, or other instrument to any other interest in a patent, shall be made,—
- (a)
- In the case of an application under section 84(1) of the Act, by the person becoming so entitled, in form 62 or form 63, as the case may be:
- (b)
- In the case of an application under section 84(2) of the Act,bytheassignor,mortgagor,licensor,orotherparty conferring the interest, in form 64 or form 65, as the case may be.
- (2)
- Application may be made in form 66 for entry in the register of notification of any other document purporting to affect the proprietorship of a patent.
Copies of documents
128
- (1)
- Anofficialorcertifiedcopyofadocumentwhichisreferredto inanapplicationunderregulation 127 hereofandisamatterof recordinNewZealandshallbeproducedtotheCommissioner with the application.
- (2)
- UnlesstheCommissionerotherwisedirects,theoriginalofany other document so referred to shall be produced to him with theapplicationandacertifiedcopyofanysuchdocumentshall be filed therewith.
129 There shall be open for inspection without fee at any convenient time,
- (a)
- The register;
- (b)
- Copies of deeds, licences, and other documents affecting the proprietorship in any Patent, or in any licence thereunder, which are supplied to the Commissioner under regulations 127 and 128 hereof;
- (c)
- Specifications and abridgments of specifications (New Zealand and foreign) filed in the Patent Office library;
- (d)
- The register of patent attorneys; and
- (e)
- Except as otherwise provided in the Act or these regulations, all applications, specifications, drawings, requests, notices, and other documents filed, made, or given under the Act or these regulations in respect of any patent, any application for patent, or in any proceedings relating to any such matters.
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
Part 26 Correction of errors
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
- (1)
- Any person may, at any time within one month from the date of the advertisement in the Journal, give notice to the Commissionerofoppositiontotheproposedcorrectioninform 70 .
- (2)
- Everysuchnoticeshallbeaccompaniedbyacopythereofand a statement (in duplicate) setting out fully the nature of the opponent’sinterest,thefactsonwhichherelies,andtherelief which he seeks.
- (3)
- A copy of the notice and of the statement shall be sent by the Commissionertothepersonmakingtherequest,andthereafter the provisions of regulations 49 to 54 hereof shall apply.
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
Part 27 Certificates and information
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
- (1)
- Arequestundersection 90 oftheActforinformationrelating to any patent or application for a patent may be made—
- (a)
- Astowhenacompletespecificationfollowingaprovisional specification has been filed or when a period of fifteen months from the date of the application has expired and a complete specification has not been filed;
- (b)
- As to when a complete specification is or will be published, or when an application for a patent has become void;
- (c)
- As to when a patent has been sealed or when the time for requesting sealing has expired;
- (d)
- As to when a renewal fee has been paid;
- (e)
- As to when a patent has expired;
- (f)
- As to when an entry has been made in the register or application has been made for the making of the entry; or
- (g)
- As to when any application is made or action taken involving an entry in the register or advertisement in the Journal.
- (2)
- Any such request shall be made in form 72, and a separate form shall be used in respect of each of the said matters.
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.
Part 28 Evidence and attendance of witnesses before Commissioner
Form of evidence
141
Whereundertheseregulationsevidenceisrequiredtobefiled itshallbebystatutorydeclarationoraffidavitunlessotherwise expressly provided in these regulations.
Preparation
142
- (1)
- The statutory declarations and affidavits required by these regulations, or used in any proceedings thereunder, shall be headedin the matterormatterstowhich they relate, andshall bedividedintoparagraphsconsecutivelynumbered,andeach paragraph shall so far as possible be confinedto one subject.
- (2)
- Everystatutorydeclarationoraffidavitshallstatethedescription and true place of abode of the person making the same, and shall be written, typed, lithographed, or printed.
Manner of making declarations, etc.
143
(1) The statutory declarations and affidavits shall be made and subscribed as follows:
- (a)
- If made in New Zealand, in the manner prescribed by the Justices of the Peace Act 1927 or by the Evidence Act 1908, as the case may be;
- (b)
- If made in any other part of the Commonwealth or in theRepublicofIreland,beforeanyCourt,Judge,Com
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
- (1)
- Except as provided in subclause (2) of this regulation, every hearing before the Commissioner shall be at Wellington.
- (2)
- One or more of the parties may, not later than fourteen days before the date appointed for the hearing, apply to the Commissioner to conduct the hearing at some other place in New Zealand. The Commissioner may in his discretion, on paymentbythepartymakingtheapplicationofsuchsumtocover expensesand subjecttosuchconditionsasto noticeand costs astheCommissionerthinksfit,conductthehearingattheplace named in the application.
- (3)
- Whereanapplicationundersubclause (2) ofthisregulationis not made by all the parties to the proceedings, the Commis
Part 29 Applications to and orders of Court
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.
Part 30 Patent attorneys
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—
- (a)
- His business address;
- (b)
- The date of registration;
- (c)
- Anyhonours,degrees,memberships,orotheradditions whichtheCommissionermayconsiderworthyofmention; and
- (d)
- The payment of the prescribed annual practising fees.
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,—
- (a)
- Is a British subject or a citizen of the Republic of Ireland;
- (b)
- Is not less than twentyone years of age;
- (c)
- Is of good character;
- (d)
- Has passed the Patent Attorneys Examination as hereinafter prescribed; and
- (e)
- NotbeingasolicitoroftheHighCourtofNewZealand or a patent agent or patent attorney registered in the UnitedKingdomorintheCommonwealthofAustralia, has been employed for a period or periods totalling not less than three years—
- (i)
- By a patent attorney in New Zealand; or
- (ii)
- In the Patent Office; or
(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
- (1)
- Anypersondesiringtopresenthimselfforexaminationinany subject shall notify the Commissioner and pay the fee prescribedinSchedule 1 totheseregulationsnotlaterthanthe1st day of February in the year in which he desires to be examined, or not later than such other day in that year (not being a dayearlierthanthe1stdayofFebruary)astheCommissioner may advertise in the Journal.
- (2)
- On receiving such notice the Commissioner shall inform the Council of the New Zealand Institute of Patent Attorneys Incorporated, and the Commissioner and the Council shall jointly arrange the time and conduct of the examination.
- (3)
- The papers for the examination shall be set and marked by 2 examiners, of whom 1 shall be the Commissioner and 1 a registered patent attorney nominated by the Council.
- (4)
- If the 2 examiners cannot agree on any matter, the Commissioner and the Council shall jointly appoint a third examiner in respect of that matter, which shall be determined by the 3 examiners or by a majority of them.
- (5)
- If the Commissioner and the Council cannot agree on the appointmentofathirdexaminer,theMinistershallappointhim. Regulation157wassubstituted,asfrom1January1973,byregulation2Patents
Regulations 1954, Amendment No 2 (SR 1972/259).
158 Subjects of examination
- (1)
- The examination shall be conducted by means of written papers on the following subjects:
- (a)
- The New Zealand law and practice relating to patents and designs—2 papers each of 3 hours:
- (b)
- The New Zealand law and practice relating to trade marks—1 paper of 3 hours:
- (c)
- Foreign patent law—1 paper of 3 hours:
- (d)
- The preparation of specifications for New Zealand patents—1 paper of 4 hours:
- (e)
- Patent attorney practice in New Zealand, including the interpretation and criticism of patent specifications—1 paper of 4 hours.
- (2)
- Everycandidatewhobeforethecommencementofthisregulationhasbeencreditedwithapassinthesubjectforeignpatent lawandpracticeshallbedeemedtohavebeencreditedwitha pass in the subject specified in paragraph (c) of subclause (1) of this regulation.
- (3)
- Everycandidatewhobeforethecommencementofthisregulationhasbeencreditedwithapassinthesubjectpatentattorney practice shall be deemed to have been credited with a pass in eachofthesubjectsspecifiedinparagraphs (d) and (e) ofsubclause (1) of this regulation. Regulation158wassubstituted,asfrom1January1973,byregulation3Patents
Regulations 1954, Amendment No 2 (SR 1972/259).
159 Rules for examination
- (1)
- No candidate shall present himself for examination in more than 3 subjects in any one year.
- (2)
- Where a candidate has been credited with a pass in a single subject only in any one year, that credit shall lapse if the candidate fails to complete all the subjects of the examination by theendofthefifthyearinwhichhewascreditedwiththatsubject.
- (3)
- Notwithstandingsubclause (2) ofthisregulation,theCommissionermayallowthecandidatetobecreditedwiththatsubject for a further period not exceeding 2 years if the candidate appliesfor thecredit beforetheendoftheseventhyearafterthe year in which he was credited with that subject and the Commissionerissatisfiedthatthecandidatehaspursuedhisstudies with diligence.
- (4)
- Nocandidateshallpresenthimselfforexaminationinthesub jects specified in paragraphs (d) and (e) of subclause (1) of regulation 158 of these regulations until he has been credited withapassinthesubjectspecifiedinparagraph (a) ofthatsubclause. Regulation159wassubstituted,asfrom1January1973,byregulation4Patents
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—
- (a)
- Deleting the name of any person who is dead:
- (b)
- Inserting any alteration in the name or address of any person:
- (c)
- Deletinganyentrywhichisprovedtohissatisfactionto have been incorrectly or fraudulently inserted therein:
- (d)
- Deleting the name of any person who has ceased to practice as a patent attorney, upon request by that person:
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:
- (a)
- The number and date of the application;
- (b)
- The name of the applicant;
- (c)
- The name of the inventor, if known;
- (d)
- The short title of the invention, with the provisional classification thereof; and
- (e)
- The convention date and country, if applicable.
Signature of documents
165
- (1)
- Adocumentpurportingtobesignedfororonbehalfofapartnership shall contain the names of all the partners in full and shall be signed by any qualified partner, or by any other person who satisfies the Commissioner that he is authorized to sign the document.
- (2)
- Adocumentpurportingtobesignedfororonbehalfofabody corporate shall be signed by a director or by the secretary or other principal officer of the body corporate, or by any other personwhosatisfiestheCommissionerthatheisauthorizedto sign the document.
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
- (1)
- InanyproceedingsbeforetheCommissioner,ifhethinksfit,—
- (a)
- Any document filed in the proceedings for the amendment of which no express provision is made in the Act orthese regulationsmay beamendedduringthecourse of the proceedings:
- (b)
- Any irregularity in procedure may be rectified.
- (2)
- Any approval given by the Commissioner under this section maybeonsuchtermsashemaydirect,including,ifhethinks fit, the payment of a fee not exceeding $50. Regulation 167(2) was amended, as from 1 October 1986, by regulation 2(1)
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.
- (2)
- The Commissioner may allow an application for a patent or a provisional or complete specification, although not in accordancewiththeseregulations,tobeleftonsuchtermsandconditionsashethinksfit. InanysuchcasetheCommissionershall require the applicant to comply with these regulations within the time specified by him. Until the prescribed requirements arecompliedwithnofurtheractionshallbetakenbytheCommissioner in respect of the application.
- (3)
- The Commissioner may dispense with any fee payable in respect of any application under this regulation if he is satisfied that the necessity for the application arises out of the coming into force of the Act or of these regulations.
Destruction of records
170
- (1)
- Whereundersection 9(2) oftheActanapplicationforapatent has been deemed to be abandoned for a continuous period of six years, the Commissioner may, at the expiration of that period,destroytheapplicationandalloranyofthefilerecords in respect of the said application, including the specification anddrawings(ifany)accompanyingorleftinconnectionwith the said application.
- (2)
- Where under section 19 of the Act an application for a patent remains void for a continuous period of six years, or where a patent remains unsealed for a period of six years after the last date on which it could lawfully be sealed, or where the prescribed renewal fees in respect of a patent remain unpaid for a period of six years after the due date of payment, or where a period of six years has elapsed since the expiration of the patentandanyextensionthereof,theCommissioner,attheexpiration in each case of the said period of six years, may destroy therelevantapplicationand all or anyofthe filerecords in respect of the said application or patent except, in the case ofan applicationwhichisopen topublicinspectionunder the Act, the specifications, drawings, and office search data inrespect thereof.
Revocations and savings
171
- (1)
- The regulations specified in Schedule 5 hereto are hereby re voked.
- (2)
- Without limiting the provisions of the Acts Interpretation Act 1924 it is hereby declared that the revocation of any provision by these regulations shall not affect any document made or any thing whatsoever done under the provision so revoked or under any corresponding former provision, and every such document or thing, so far as it is subsisting or in force at the timeoftherevocationandcouldhavebeenmadeordoneunder these regulations, shall continue and have effect as if it had beenmadeordoneunderthecorrespondingprovisionofthese regulationsandasifthatprovisionhadbeeninforcewhenthe document was made or the thing was done.
- (3)
- Notwithstandinganythinginregulation 73 hereoforinSched ule 4 to these regulations, and notwithstanding the revocation ofthePatentsAmendingRegulations19511therenewalfeesto keepinforceforthefulltermthereofpatentsgranteduponapplicationsmadebeforethe1stdayofSeptember1951shallbe inaccordancewithregulation 3ofthesaid Patents Amending Regulations 1951, and the provisions of that regulation shall continue to apply to the said patents.
Schedule 1 Reg 3 Fees
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 | ||
Schedule 2 Forms
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.
Explanatory note
[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.