Australia: New Zealand – Amendments to the Patents Regulations 2014 clear up a few uncertainties

Last Updated: 12 March 2018
Article by Gareth Dixon

New Zealand's new Patents Act 2013 commenced on 13 September 2014, and was given effect by the accompanying Patents Regulations 2014. Over the ensuing 3½ years, a few "uncertainties" (unintended consequences/drafting errors) have come to light. On balance, none were deemed significant enough to warrant immediate amendment to the Regulations and indeed only one (micro-organism deposit receipts, see below) prompted the release of a Practice Note. Rather, IPONZ collated the required changes as they came to light and has now gazetted them in the Patents Amendment Regulations 2018; these come into effect as of 5 April 2018.

Overview of the changes

At the outset, we should make it clear that any changes stand to affect attorneys, not New Zealand patent applicants. Even then, to the extent that the changes do affect attorneys, they are fairly minor in nature – in large measure, all they do is clarify a few instances of day-to-day New Zealand practice that some may have had cause to question in view of the original wording of the Regulations.

Substance of the changes

As per the explanatory note, the Patents Amendment Regulations 2018 provide that:

  • An address for service may be an Australian or a New Zealand address

This is fairly inconsequential given that most Trans-Tasman firms maintain an address for service in both Australia and New Zealand anyway. That said, it is in keeping with what remains of (from a patents point-of-view) the Single Economic Market (SEM) reforms between the Australian and New Zealand Governments, which commenced in 2009. Readers may recall that other aspects of the SEM patent reforms such as the Single Application Process (SAP) and Single Examination Process (SEP) were culled back in 2016. Our article can be found here.

  • Regulation 19(2)(b) is revoked so that only form requirements need to be satisfied for documents to be considered "filed"

This change merely removes any uncertainty as to whether a document is taken to have been properly "filed" if it fails to comply with the Act and Regulations. Previously, there had been some concern that a document falling foul of any one (even relatively minor) provision of the Act or Regulations may not be taken to have been properly "filed"; this seemed excessive and clearly was not the intent of the original legislation which, we believe, had a duty to promote accessibility over formality in respect of the New Zealand patent system.

  • Regulation 52(3) is revoked and Regulation 82 is amended to apply requirements regarding the respective content of divisional and parent patent applications at the acceptance of specification stage, rather than the application stage

Commonsense prevails. New Zealand's approach to double patenting, paraphrased heavily, is that parent/child/grandchild(ren) should not claim substantially the same subject matter (the degree of overlap permissible, of course, being somewhat subjective). The original wording of the Regulations had caused concern that a divisional filed with claims that overlapped its parent may be invalid (or more correctly, "never filed" such that it did not comply with the Regulations – see, Regulation 19(2)(b), above). However, the amendments make it clear that the critical time for comparison of the claim scope of a parent and its divisional is at acceptance, not at filing. Accordingly, a divisional is allowed to overlap with its parent at the time of filing, but any "substantial" overlap should be removed during prosecution. Many had felt that this was always the intent of the legislation – and, indeed, IPONZ had acknowledged this informally in the past. However, the longer we went without a Practice Note having issued from IPONZ, the more concerned some had become. This clears things up nicely and ensures that the claims of a divisional application can be settled during its prosecution phase, rather than at the time of filing.

  • Regulation 59 (which relates to deposit requirements for micro-organisms) is amended to provide that the prescribed period for the purposes of section 43(1)(b) is the same as the period prescribed for the purpose of section 71(1) of that Act (which relates to the time for putting an application in order for acceptance), namely, 12 months after the date of issue of the first examination report under section 65

My colleagues had flagged this potential issue within two days of the new legislation taking effect. The original text required that a patent applicant provide a micro-organism deposit receipt potentially years before filing their patent application in New Zealand. Of course, this was wholly impractical and IPONZ moved quickly to remedy the situation by way of Practice Note 2014/01, which provided interim relief to applicants and attorneys alike. The deadline for providing the deposit receipt is now the same as the deadline for placing the application in condition for acceptance – namely, 12 months from the date of the first examination report. As such, the deposit receipt is merely now a formality that must be satisfied prior to formal acceptance being recorded.

  • The time limit in regulation 61 for amending documents forming part of the complete specification is changed from 19 months to 22 months in line with revised international requirements

Regulation 61 amendments (for the purposes of this provision) are the same as PCT Article 34 amendments. The previous situation was unworkable where IPONZ' internal deadline (19) months was shorter than WIPO's (22 months). In effect, this provided an incentive for wary Trans-Tasman attorneys to file their international applications with IP Australia as the receiving office (or WIPO, etc.) rather than IPONZ. This has now been rectified, making IPONZ an equally attractive RO.

  • Regulations 103, 104, and 161 are amended to clarify that the period for filing a counter-statement to an application for revocation of a patent may also be extended under regulation 161 in certain situations. The effect of the amendments, in summary, is that extensions will be possible under both regulations 103 and 161 in certain circumstances, and either one or two extensions are possible depending on which regulation the first extension application is made under

These changes relate to the very rare circumstances in which revocation before the Commissioner is sought by a third party. In respect of its counterstatement (reply to the petitioner's statement of case), a patentee is now afforded up to two extensions of time, provided certain criteria are met. Regulation 161 was not previously available to patentees requiring an extension of time within which to file their counterstatement.

Net effect of the changes

Day-to-day patent practice before IPONZ will be largely unaffected by these changes. Over the past 3½ years, attorneys had been well aware of the need to "tread carefully" in some of these areas and IPONZ had been accommodating to the extent possible such that few, if indeed any, cautionary tales emerged. That said, what the changes have achieved is to dispel (or at least lessen) the urban myth that New Zealand had become a somewhat patentee-unfriendly jurisdiction since the new legislation took effect. Provided that attorneys and applicants abide by the revised Regulations, there should be very few unintended consequences of the new legislation going forward.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Shelston IP ranked one of Australia's leading Intellectual Property firms in 2015.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions