Changes introduced with the Patents Amendment Regulations 2018 have clarified New Zealand patent practice
The New Zealand Patents Regulations 2014 were amended on 8 March 2018 to correct some of the problems caused by the original regulations.
Changes to Microorganism Deposit Requirements
As noted
previously, a copy of the microorganism deposit receipt was
required to be filed within 3 months of the date the deposit was
made. In most circumstances, patent applicants could not
reasonably be expected to satisfy this deposit requirement, as a
micro-organism deposit is likely to have been made several months
or years in advance of filing a New Zealand application.
Under the previous New Zealand regulations most patent applicants
were required to request an extension of time in order to meet the
filing requirements in respect of the deposit receipt. As
result of the Patents Amendment Regulations 2018, the
deadline for filing a copy of a micro-organism deposit receipt is
now 12 months after the date of issuance of the first examination
report. This change ensures patent applicants are readily
able to meet the requirements without the need for an extension of
time.
Changes to Divisional Application Practice
The provisions governing the assessment of double patenting
between a parent application and its divisional have also been
updated. A quirk of the language of the original Patents
Act 2013 and Patent Regulations 2014 resulted in a
lack of clarity regarding the date on which the double patenting
prohibition must be avoided. Specifically, under the original
legislation and regulations it was understood that at the time a
divisional application was filed it must not include a claim or
claims for substantially the same matter as the parent application,
and thus failure to meet this requirement on the date the
divisional is filed could subsequently result in the application
being held to have been invalidly filed as a divisional. The
newly amended regulations now prescribe that the double patenting
requirements must be met at acceptance, rather than at filing.
Other Changes
Another change introduced is to permit an address for service to
be in either New Zealand or Australia. This change gives
effect to the Single Economic Market agenda announced by New
Zealand and Australia in 2009 and is consistent with the recently
introduced
Patents (Trans-Tasman Patent Attorneys and Other Matters)
Amendment Bill. Additionally, the extension of time
provisions for filing a counterstatement in patent revocation
proceedings has been clarified.
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