Revocation of a patent

Transitional provisions

Section 254(e) and 260(1)

The Patents Act 2013 came into force on 13 September 2014. However, the Patents Act 1953 still applies in certain situations. It is therefore important to understand how the transitional provisions under the Patents Act 2013 affect revocation proceedings.

• Applications for revocation that were commenced before 13 September 2014 continue to run under the Patents Act 1953.
  
  
• Where an application for revocation is filed after 13 September 2014, but it relates to a patent granted under the Patents Act 1953, the revocation process is that prescribed under the Patents Act 2013. However, the grounds for revocation are those available under the Patents Act 1953.
  
  
• Where an application for revocation is filed after 13 September 2014, and relates to a patent granted under the Patents Act 2013, the revocation is run entirely under the Patents Act 2013, including the grounds available. 

See Which Act applies: Transitional provisions for hearing proceedings for more information.

About this information

The following information is intended to guide and inform parties involved in IP hearings. It reflects the current accepted practice of IPONZ and is to be read in conjunction with the:

• Patents Act 2013; and
• Patent Regulations 2014; and
• Patents Act 1953 (grounds where applicable).

As any application for revocation filed after the publication of this information will be run under the Patents Act 2013, the process described is limited to that Act.

Notification to Solicitor-General

Under section 76(2) of the Patents Act 1953 and section 164 of the Patents Act 2013, a party who intends to question the validity of a patent must give notice of that intention to the Solicitor-General at least 21 days before the substantive hearing. If the notification is not made within 21 days, the substantive hearing may be vacated.

Section 164 of the Patents Act 2013 — New Zealand Legislation

Section 76(2) of the Patents Act 1953 — New Zealand Legislation

Notification can be sent to service@crownlaw.govt.nz.

Revocation process overview

1. At any time after a patent has been granted the applicant files its application to revoke patent and statement of case.
2. Within 2 months patentee files their counter-statement. 
3. Within 4 months applicant files evidence in support of their case.
4. Within 4 months patentee files evidence in support of their case.
5. Within 3 months applicant files evidence strictly in reply to the patentee’s evidence.
6. Once the evidential stages are complete the Commissioner asks the parties how they wish to be heard, and confirms the hearing date and venue.
7. Following the hearing before the Assistant Commissioner, or any other way the parties elected to be heard, the Commissioner issues a formal written decision.
8. The Commissioner’s decision may be appealed to the High Court.

1. Application for revocation

Regulation 102

If you want to revoke a patent, you must file an Application for Revocation, and pay the application fee using IPONZ’s case management facility.

Your Application for Revocation must:

• identify the grounds of revocation,
• include a statement confirming that there are no relevant proceedings before the Court,
• be accompanied by a statement of case,
• pay the application for revocation fee.

Grounds of revocation

Section 114

The grounds for revocation include:

a) not an invention under section 14

b) lack of entitlement

c) non-compliance with subpart 2 of the Patents Act 2013 (for specification requirements)

d) obtaining by fraud, false suggestion, or a misrepresentation

e) secret use

f) contrary to law.

Statement of case

The statement of case must fully set out the facts on which the opponent relies to support their grounds of revocation, and the relief sought.

For example:

• For the ground of obtaining by fraud, false suggestion, or a misrepresentation, the statement of case must set out in detail how, when and where the obtaining took place.
• For the ground of prior publication (Section 14) it should specify how each item of prior art anticipates the claimed invention.
• For relief sought, that the grant of the patent be revoked and an award of costs is made.

2. Commissioner may refuse application for revocation

Section 113

The Commissioner may refuse the application if:

• it is considered frivolous or vexatious; or
• the issues raised have previously been considered under an opposition proceeding or re-examination proceeding, or where they have been considered in any other previous proceeding before the Commissioner or Court.

3. Counter-statement

Regulation 103(1)

Once an application for revocation has been filed, the Commissioner will notify the patentee, and provide them with a copy of the application and statement of case.

The patentee then has 2 months to file a counter-statement if it wishes to defend its patent. The Counter-statement must set out the grounds upon which the patentee contests the application for revocation.

The purpose of the patentee’s counterstatement (also referred to as the patentee’s pleadings) is to clarify which assertions in the application for revocation the patentee either accepts or denies. This process is used to determine which matters are actually in contention so the parties can focus their efforts on these contentious matters when preparing and filing their evidence, as opposed to wasting time and effort filing evidence for matters that are not in dispute.

At this stage, the applicant may amend their patent specification to address matters raised in the application for registration under Section 83 of the Patents Act 2013. The amendment request should be filed on the revocation case file and will be referred to the IPONZ Patents examination team for consideration.

Extension of time for filing a counterstatement

Regulation 161

If the time for filing a counterstatement has not yet passed, the patentee may request an extension of time in the usual manner, under regulation 161.

Regulations 103(2) and 103(3)

If the time for filing a counterstatement has already expired, the patentee may request one further extension to file a counterstatement under regulation 103(2).

The request must be made within 2 months of the expired deadline. The request must include detailed reasons, and if necessary evidence, satisfying the Commissioner that there are exceptional circumstances that justify the extension. The Commissioner may extend the deadline by a maximum of 2 months beyond the expired deadline.

An extension under regulation 103(2) is only available once, and is only available in revocation proceedings. If the deadline for filing a counterstatement is extended under regulation 103(2), the Commissioner cannot grant any further extensions for filing a counterstatement beyond this.

Consequences of not filing a Counterstatement

Regulation 104

It is important that the patentee files a valid counter-statement on or before the deadline, or within any extended deadline, as failure to do so will result in the patentee being precluded from taking any further part in the proceedings.

Instead, the Commissioner will invite the applicant to file evidence in support of their case. This evidence must be filed within 4 months from when the patentee was required to file its counter-statement. The Commissioner will then determine the application on the basis of the applicant’s application for revocation and evidence only.

4. Applicant’s evidence in chief

Regulations 103(4) and 144

Within 4 months of receiving a copy of the patentee’s counter-statement, the applicant may file evidence in chief to support their grounds of revocation.

The applicant’s evidence must be in the form of a statutory declaration or affidavit. If evidence is not in the proper form, it won’t be admitted into the proceeding.

5. Patentee’s evidence in chief

Regulation 103(5) and 144

The patentee may file evidence within 4 months from either:

• receiving a copy of the applicant’s evidence, or
• if the applicant does not file any evidence from the expiry of the deadline the applicant had been set for filing its evidence. 

The patentee’s evidence must be in the form of a statutory declaration or affidavit. If evidence is not in the proper form, it won’t be admitted into the proceeding.

6. Applicant’s evidence in reply

Regulation 103(6) and 144

Within 3 months after the patentee files their evidence in chief, the applicant may file evidence strictly in reply. This evidence can only address issues raised in the patentee’s evidence in chief.

The applicant’s evidence must be in the form of a statutory declaration or affidavit. If evidence is not in the proper form, it won’t be admitted into the proceeding.

7. Evidence out of time

Regulations 165 and 166

After the completion of the evidential steps above, no further evidence may be filed unless a party makes a formal application to the Commissioner to file evidence out of time.

The Commissioner will only admit the evidence out of time where:

• there are genuine and exceptional circumstances justifying the late filing of the evidence; or
• the evidence could not have been filed earlier.

8. Supply of documents for use of the Commissioner

Regulation 163

All information and documents referenced by the parties in a proceeding must be provided unless otherwise directed, except for New Zealand patent specifications and frequently cited Court or Commissioner decisions.

A verified English translation must be provided if any specification or any other document relied upon is in another language.

9. Extensions of time and halts

Regulations 159 and 161

At any stage in a revocation proceeding after the application for revocation has been filed, a party may request an extension of time to complete their task or request that the proceeding be halted while another matter is resolved or concluded, for example where the parties have entered into settlement negotiations or where there is another co-pending proceeding between the parties that needs to be determined first.

It is important to note that under the 2013 Act a request for an extension or halt must be requested on or before the applicable deadline for doing the current step in the proceeding.

See extensions and halts for more information.

10. Hearing

Regulations 169 and 172

Form of hearing

Once the evidential stages of the revocation proceeding are complete, the IPONZ Hearings Office will ask the parties how they wish to be heard. The parties may elect one of the following options:

(a) On the papers already filed (no hearing fee).

• Parties choosing this option are not required to do anything further and will be notified through the case management system when the Assistant Commissioner has decided the case.

(b) By filing written submissions to be considered by the Assistant Commissioner hearing the case (hearing fee required).

• Parties choosing this option will be set a task through the case management system to file their written submissions.
• Payment of the hearing fee is due at the time of filing the written submissions.

(c) By attendance at a hearing in person before the Assistant Commissioner (hearing fee required).

• Parties choosing this option will be notified of a hearing date no less than one month in advance.
• A task will be set to file hearing submissions prior to the hearing date.
• Payment of the hearing fee is due 10 working days before the hearing date.

See patent hearing fees< for more information.

Wellington is the primary venue for hearings by appearance. However, the IPONZ Hearings Office will consider requests by the parties to hold hearings in either Christchurch or Auckland if this better suits them. The IPONZ Hearings Office will also consider requests for a party to appear at the hearing via a video link from another MBIE site. While the Hearings Office will attempt to accommodate these requests, it is entirely at the discretion of the IPONZ Hearings Office.

Once the parties have advised how they wish to be heard, a hearing date and venue will be set and the case file including both parties pleadings, evidence, and hearing submissions (if any) will be passed over to the Assistant Commissioner hearing the case.

11. Hearings decision

Following the hearing (either by appearance, written submissions, or on the papers filed) the Assistant Commissioner will issue a written decision, including any award of costs. The decision will normally be issued within 30 working days from the hearing.

The decision of the Assistant Commissioner will be sent to both parties via the IPONZ case management facility.

See award of costs for more information on costs.

All IPONZ hearings decisions are published on NZLII.

12. Appeal to the High Court

Section 214  — New Zealand Legislation

Parties may appeal the Assistant Commissioner’s decision within 20 working days by:

(a) filing a notice of appeal and application for stay of proceedings in the High Court, and

(b) notifying the Commissioner.

If no appeal is filed, the decision of the Commissioner is final, and the Commissioner will alter any entry on the register accordingly to give effect to the decision.

Please see our guidelines on appeals and stays of proceeding for more information.

Patents hearing decisions: Appeals and Stay of Proceedings

13. Withdrawing from the revocation

The applicant may withdraw their revocation at any time before the Commissioner issues a decision.

If the applicant withdraws, the Commissioner will ensure that any amendments proposed during the revocation procedure prior to the withdrawal have been approved by IPONZ and incorporated into the complete specification. The Hearings Office will then formally close off the proceeding. Amendments proposed by the patentee and approved by IPONZ during a revocation proceeding are unconditional.

If the applicant withdraws without making any prior arrangement as to costs with the patentee, costs may be awarded against the applicant.

14. Surrendering a patent

Section 116 and regulation 106

A patentee may offer to surrender a patent. The notice of an offer to surrender a patent must include the reasons for making the offer and the full particulars of any relevant proceedings before the court.

If the patentee surrenders its patent during a revocation proceeding without making any prior arrangement as to costs with the applicant, costs may be awarded against the patentee.