Extensions of time

Both the opponent and applicant can apply for an extension of time for any of the above time requirements (with restrictions) under regulation 168 using a patents form 76. When you request an extension of time you must give full and detailed reasons why you need the extension and must convince the Commissioner that the extension of time is justified. In most cases the consent of the other party will be justification for the grant of an extension of time.

When determining whether the grant of an extension of time is reasonable the Commissioner will take into account the circumstances of each request. Guidelines as to what the Commissioner considers to be reasonable extensions of time at each stage of the opposition process are as follows:

• Opposing a patent – a period not exceeding one month.
• For filing a statement of case or counterstatement in patent proceedings – two months, or with consent - four months.
• For filing evidence in patent proceedings – a period not exceeding four months, unless there is evidence of exceptional circumstances.

The parties can withdraw from the proceedings at any time, and if this happens then the Commissioner may decide the case in the public interest. If a party withdraws from the proceeding without making any prior arrangement as to costs, costs may be awarded against them.

An overriding requirement of IPONZ is that any party corresponding with IPONZ in connection with an opposition proceeding should always copy that correspondence to the other party. This is so that all parties are informed of developments, and the proceedings are open and transparent. For the same reason any correspondence IPONZ has with any party will be copied to the other party as a matter of course.

In dealing with IPONZ in connection with opposition proceedings, parties should note that the Hearings Office section of IPONZ will hold the files whilst under opposition, and accordingly any correspondence in connection with the proceeding should be addressed for the attention of the Hearings Office. The E-mail address of the Hearings Office is hearings@iponz.govt.nz.