Amendments Clarify New Zealand Patent Practice

Amendments Clarify New Zealand Patent Practice

Amendments Clarify New Zealand Patent Practice

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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