Patent opposition and rectification proceedings

Regulation 53 – Supply of Documents, etc., for Use of the Commissioner
This Regulation provides that :

“Copies of all documents, other than New Zealand specifications, referred to in the notice of opposition or in any statement or evidence filed in connection with the opposition, authenticated to the satisfaction of the Commissioner, shall be furnished (in duplicate) for the Commissioner’s use, unless he otherwise directs.”

In practice, opponents often supply one copy of such documents direct to the applicant (and one to the Commissioner); the duplicate copy referred to in the Regulation is usually sent to the applicant. Office practice is that the pleadings are not finalised until copies of cited documents are in the hands of the applicant.

Recently there has been a growing trend for some attorneys to file copies of cited documents electronically – i.e. copies of documents in (usually) PDF format, on CD Rom.

We wish to make it clear that in accordance with section 28 of the Electronic Transactions Act 2002 this is an acceptable practice – indeed desirable from the Office’s point of view. Any steps we can take to reduce the volume of paper are welcomed.

There is no intention to amend the Regulation – it can be taken that “copies” referred to means electronic as well as paper copies. In the unlikely event that an applicant or their agent needs paper copies, the Office will be pleased to arrange for these.