Fixes to the New Zealand Patents Regulations

On 5 March 2018 the Patents Amendment Regulations 2018 were issued by Order in Council. The regulations will correct some errors in the Patents Regulations (NZ) 2014 and come into force on 5 April 2018.

The following changes will be made to the Patents Regulations (NZ) 2014:

  • Moving the prohibition on double patenting between parent and divisional applications to be a requirement of acceptance, rather than being a requirement at filing of a divisional application.
  • Deleting the requirement that a document is considered filed only when all of the requirements of the Act and Regulations are met.
  • Amending the requirement for a microorganism deposit from a date three months after the micro-organism is deposited to the end of the examination/acceptance period.
  • Extending the time period during which amendments made under Articles 19 and 34 of the PCT will automatically form part of the New Zealand specification from 19 to 22 months.
  • Clarifying the situations where extensions to the time period for filing a counter-statement in opposition proceedings are available.

Although practical interpretations and work-arounds meant that the issues created by the regulations never became a substantial problem, in some cases the work-arounds could be time consuming and costly. It is therefore pleasing to see the regulations corrected to reflect the intent of the legislature.

In addition to the above changes amendments have been made to the Patents Regulations (NZ) 2014, Trade Mark Regulations (NZ) 2003, Trade Mark (International Registration) Regulations (NZ) 2012 and the Design Regulations (NZ) 1954 to allow an address for service to be either a New Zealand or Australian address.

8 March 2018

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