Regulation 105: Procedure for opposing revocation

Once an application to revoke the patent has been made and a copy has been sent to the patentee the provisions of regulations 49 to 54 apply to the revocation proceedings with the substitution of references to the patentee for references to the applicant and of references to the applicant for references to the opponent.

Any decision on the revocation application may be appealed to the High Court.

(B) Revocation by the court (section 41):

Any person interested can apply to the High Court to have the patent revoked at any time after the patent is granted.

The grounds for revocation by the Court are:

• Prior publication: The invention claimed in the patent has been claimed in a prior granted New Zealand patent application published before the priority date of the patent.
• Applicant not entitled to apply: The patent has been granted to a patentee who is not entitled to the patent under section 7.
• Obtaining: The patentee has obtained the patent in contravention of the rights of the person who had the actual right to apply.
• Not an invention: The patent is not for an invention i.e. not a manner of new manufacture as defined in section 2.
• Not new: The invention claimed in the patent is known or has been used (not including secret use) before its priority date.
• Obviousness: The invention claimed in the patent is obvious i.e. “clearly doesn’t involve an inventive step” with regard to prior publication with regard to prior use.
• Inutility: The invention claimed in the patent is not useful.
• Insufficiency: The complete specification of the patent does not sufficiently describe either the invention, the method of performing the invention, or the best method of performing the invention
• Not fairly based: The claims of the patent are not clearly defined, sufficient or are not fairly based on the description in the complete specification.
• False suggestion: The patent has been obtained on false suggestion or representation.
• Secret use: The invention of the patent has been secretly used in New Zealand before its priority date, provided the use was not
  • a trial or experimental use;
  • use by a government department (where the invention has been disclosed to them); or
  • use by someone who did not have inventor’s consent.
• Contrary to law: The patent granted is contrary to law.