Evidence

Evidence may be filed to provide support for your case (see below). For example for the ground of obtaining the opponent should provide evidence, in the form of statutory declaration or affidavit, to support their contention that the patent application was obtained without permission.

For the ground of prior use the opponent should provide evidence to support their contention that the invention has been prior used detailing where the use occurred, when the use occurred, who was involved and what was the nature of the use (for more guidance on this please see Practice Notes entitled Patent: Oppositions: Section 21., Applications for Revocation (Belated Oppositions): Section 42 in Patent Office Journals 1287 and 1367).

For the grounds of prior publication, obviousness and prior claiming, any documents cited in a statutory declaration or affidavit should be provided along with the date of publication and evidence to show that the prior document was published on that date or was publicly available before the priority date of the patent application.

Regulation 50: Evidence by the Opponent

The opponent may file evidence in support of the opposition within 2 months of receiving the applicant’s counterstatement. A copy of this evidence must be sent to the applicant also. The evidence can be affidavits and/or statutory declarations. (See Practice Note Journal 1292 for more detail).

Regulation 51: Evidence of the Applicant

After the opponent files their evidence or advises that they are not filing evidence, the applicant has two months in which to file evidence in support of their application if they wish to. This can be in response to the opponent’s evidence. After the applicant files their evidence or advises that they are not filing evidence the opponent has two months to file evidence strictly in reply to the applicant’s evidence if they wish to. A copy of this evidence must be sent to the applicant also.

If at the evidence stage the applicant or opponent does not wish to file evidence in support of their case then they must advise IPONZ that no evidence will be filed.

Regulation 52: Closing of Evidence

It is expected that after evidence has been filed by the opponent and applicant, and the opponent has filed any evidence in reply, no further evidence will be filed. However, Regulation 52 does allow the Commissioner to grant leave to file further evidence on specific request.

Regulation 53: Supply of Documents to the Commissioner

Copies of all documents referred in the notice of opposition or the statement of case, counterstatement and evidence must be filed in duplicate. If any of these documents are in a foreign language then a translation verified with a statutory declaration must also be filed in duplicate.

Regulation 54: Hearing

After all the evidence has been filed the Commissioner will write to both parties seeking their wishes as to the manner in which a decision is to be made which can be:

• Consideration of the material filed in proceeding (i.e. notice of opposition, counterstatement and evidence) without any submission from the parties, or
• As above, but with the addition of a hearing on the papers, involving the consideration of written submissions from any party who wishes to be heard, or
• As above, but with the addition of formal hearing in person before the Commissioner of Patents where the Commissioner listens to the submissions of any party wishing to be heard.

If any party requests to make written submissions or to attend a formal hearing they will be required to pay a hearing fee of $NZ 750 plus GST at the time they inform IPONZ of their wish to be heard. A written decision will be issued after the hearing and may include an order as to the payment of costs. Either party may appeal this decision within 20 working days to the High Court.