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.

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