Amendments to New Zealand’s patent regulations

The Intellectual Property Office of New Zealand (IPONZ) has announced that the New Zealand Patent Regulations will be amended and will come into force on 5 April 2018.

We briefly summarise the changes in this article.

Address for service

Reg. 3(1) will be amended to specify that an address for service may be an Australian or a New Zealand address. Currently only a New Zealand address could be the address for service. This will allow Australian attorneys to act in New Zealand while maintaining an address in only one country.

MBIP’s attorneys are registered to act in both Australia and New Zealand.

Divisional patent application-content

Reg. 52(3), which requires that a divisional application must not be filed with claims for substantially the same matter as claimed in the parent application, will be revoked.  In its place, Reg. 82 will be amended to specify that a divisional application or parent application must not be accepted (analogous to allowance in some major jurisdictions) with claims for substantially the same matter as claimed in the parent application.

This amendment addresses the question of whether or not a divisional application filed with claims overlapping with the claims of the parent application is a validly filed application. The upcoming amendment clarifies that a divisional application filed with claims overlapping with the claims of the parent application is validly filed.

Micro-organism deposit requirements

Reg. 59 will be amended to specify that the prescribed period for fulfilling the deposit requirements for micro-organisms is 12 months after the date of issue of a first examination report (i.e., submission of a receipt for the deposit from the prescribed depositary institution to which the deposit was made). Currently this period is 3 months after the date that the micro-organism is deposited with the depositary institution.

MBIP welcomes these changes because the additional time provided to applicants will be less onerous for Applicants, who may now wait until examination of their New Zealand application before submitting their deposit receipt.

Form requirements for filed documents

Reg. 19(2)(b) will be revoked so that the only requirements that need to be satisfied to obtain a filing date for a document are that the document is legible and is accompanied by any prescribed fee or penalty. Currently, a document must also comply with the requirements of the Act and Regulations to be considered filed. This requirement will no longer apply.

We believe that this amendment is aimed at making it easier to obtain a filing date and satisfy relevant deadlines, without the need for fulfilling all formalities requirements set by the Act and Regulations.

Amendments to the complete specification of a PCT application

Reg. 61 will be amended to specify a 22 month period after the earliest priority date for amending documents forming part of the complete specification of a PCT application (Article 34 PCT). Currently, the prescribed time limit is 19 months.

This change is made to bring the Regulations in line with revised international requirements.

 

 



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