Maintain a patent

Maintain a patent

Once you have filed a patent application, there are a number of things you can do to maintain your application or registration.

You can make changes to your patent application through our online case management facility. Some changes may incur fees.

If you wish to renew a patent, or pay a maintenance fee for a patent application, please visit our Renewal page.

Change ownership

When ownership of a patent or application changes, the previous or new owner can request that the new details are recorded on the register.

It is a requirement that new owners have a valid address for service in New Zealand or Australia. Owners may designate agents to manage the change in ownership of a patent and receive correspondence from us.

To file a change of ownership request, you must have a digital or scanned document that provides evidence supporting the change in ownership. This could be a deed of assignment or a verified copy, for example.

  1. You will need to be logged on as a registered user of the website.
  2. Under Patent, select Maintain a Patent from the left hand menu of your Inbox. The Patent Change Request(s) page will display.
  3. Under Change Owner, click the Select case(s) for Assignment button. The Search Patent Case(s) page will display.
  4. Search for and select one or more Patents for which you wish to change the ownership. The Request a Change of Ownership on Patent(s) form will display.
  5. Enter your Client Reference.
  6. Select whether you are:
    • The owner (new owner). This option will list you as the new owner of the case. You may change this listing by clicking on the Search button and searching for the correct new owner from our database.
    • Acting on behalf of the owner. This option will allow you to facilitate the transfer of this case to a new owner, and list you as the new agent for this case. You will need to search for the new owner for this patent from our database, and provide documentation indicating that you have been authorised to act as the agent for this new owner.
    • Acting on behalf of the owner for this request only.This option will allow you to facilitate the transfer of this case to a new owner, but will not list you as the new agent for this case. You will need to search for the new owner for this patent from our database, and provide documentation indicating that you have been authorised to facilitate this transfer. If this case has an existing agent, this agent will be retained, and your documentation should include an agreement between the new owner and this existing agent.
  7. Add your documentary evidence and/or agent authority to support your request, then click the Submit button to complete the form.

Change an address

When an address for service, business or residential address, or, a communication address has changed, a notice of change of address must be filed with the Commissioner of patents, trade marks and designs.

In order to update the address of an owner or agent, you must make the change to the register entry for that owner or agent – not to the patent case itself. Once the address of that entity has been updated, it will propagate across all cases where that owner or agent is involved.

Note – to own a patent you must have an address in New Zealand or Australia.

  1. You will need to be logged on as a registered user of the website.
  2. Select Maintain Client from the My Account menu of your inbox. The Search IPONZ Client Database page displays.
  3. On the Search IPONZ Client Database screen, search for your client record and select Edit to modify it.
  4. Add, edit or remove addresses as needed, then Save your changes.
  5. Select Submit to complete your changes.

At the individual IP level users can nominate which of their addresses to use for the purpose of communication on that case. Principally, as communication with the Office is electronic, that will be a system user’s details, and their associated email and address for service.

Change a name

In order to update the name of an owner or agent, you must make the change to the register entry for that owner or agent – not to the patent case itself. Once the name of that entity has been updated, it will propagate across all cases where that owner or agent is involved.

You must provide supporting documentation confirming the name change, for example, a certificate from the Registrar of Companies.

  1. You will need to be logged on as a registered user of the website.
  2. Select Maintain Client from the My Account menu of your inbox. The Search IPONZ Client Database page displays.
  3. On the Search IPONZ Client Database screen, search for your client record and select Edit to modify it. This will bring you to a Maintain Client screen.
  4. If you are a New Zealand company, search for your name or NZBN number in the Search NZBN Register field. Otherwise, modify your name in the Name field.
  5. Upload your supporting documentation by selecting Add Document and then selecting Continue once you have uploaded your documents.
  6. Select Submit to complete your request.

Change an agent

You can make an online request to change (or add) your professional representative (agent).

You can request to add or change an agent for a case through our Maintain a Case facility. There is no charge for this service.

  1. You will need to be logged on as a registered user of the website.
  2. For example, a request to enter a new agent for a patent:
  3. Login and select Maintain a Patent from the left hand menu of your Inbox. The Request Patent Change page will display.
  4. Click Select cases for Change Agent from the Change Agent section to Search Patent Case(s).
  5. Search for one or more patent/s. Once you have identified the correct cases tick the check box to select. Then click the Select button. The Request Change of Agent screen displays with the case(s) listed.
  6. Enter your Client Reference.
  7. Select whether you are replacing the current agent or adding an agent.
    Note - if the new agent is not the same for each of the cases you will need to make a separate request for each case.
  8. To enter the new agent details for the case(s), select Search in the Agents section, you will be taken to the Search Client screen to search for your details. When adding an agent, check Change Contact Details to become the new contact.
  9. Select the Add button in the Documentary Evidence section to upload your Agent Authorisation documentation.
  10. Select Submit to complete your request.

What happens next?

We will either accept or refuse your request and you'll receive email notification within one working day.

Removing an agent

If you are already the agent for an IP case you will be given the additional option to remove yourself as the agent.

Change inventor

You can make an online request for inventor details to be changed for a patent, e.g. a change of address, or a change of legal name.

Note that if you wish to make a correction to the list of inventors for a patent (e.g. add an inventor that should have been named at filing), or correct any of the details for these inventors that are in error, you will need to request a correction of error instead.

To alter inventors' details:

Change of legal name 

  1. You will need to be logged on as a registered user of the website. Find out more about becoming a registered user.
  2. Select Maintain Client from the My Account menu of your Inbox. The Search IPONZ Client Database page will display.
  3. On the Search IPONZ Client Database screen, search for the record of your inventor and select Edit to modify it. This will bring you to a Maintain Client screen.
  4. Update the name of the inventor in the Name field.
  5. Upload your supporting documentation by selecting Add Document and then selecting Continue once you have updated your documents.
  6. Select Submit to complete your request.

Note: You must provide supporting documentation confirming the name change, such as a deed poll or marriage certificate. If there is an error in the inventor’s name, see Request a correction of error

Change of address of inventors

  1. You will need to be logged on as a registered user of the website. Find out more about becoming a registered user.
  2. Select Maintain Client from the My Account menu of your Inbox. The Search IPONZ Client Database page will display.
  3. On the Search IPONZ Client Database screen, search for your client record and select Edit to modify it. The Maintain Client page will display.
  4. Add, edit or remove addresses as needed. Note that if you are adding or editing an address, you will need to save the new address details first before you submit your request.
  5. To upload your supporting documentation, select the Add Document button to attach your documents.
  6. Select Submit to complete your changes.

Note: You must provide supporting documentation confirming the address change, such as a statutory declaration.

Change licensee/mortgagee/financial interest

Patents can be bought, sold and licensed by way of a contract that defines the terms and conditions upon which you change ownership. You are advised to seek professional legal advice when drafting your contract. IPONZ does not assist in the drafting of contracts between parties, nor does it provide forms for the licensing of patents.

You can make an online request for an interest to be recorded on the register of patent.

  1. You will need to be logged on as a registered user of the website.
  2. Select Maintain a Patent from the left hand menu of your Inbox. The Request Patent Change page will display.
  3. Select Change or Add Licensee/Mortgagee/Financial Interest. The Search for Patent(s) screen displays.
  4. Search for the patent that you wish to amend. Once you have identified the correct case check the radio button to select. Then click the Select button.
  5. Enter your Client Reference and make the changes following the onscreen help.
  6. You must upload evidence supporting these agreements by selecting Add in the document section.
  7. Select Submit.
  8. You will return to the Request Patent Change screen and a confirmation Info box will appear. Click OK to close the box.

 

Request an amendment

You can make an online request to change the details of your patent case. This includes but is not limited to the following:

  • Amending the title of your patent application.
  • Submitting a document (such as a notice of entitlement, or a verified English translation).
  • Requesting the postponement of an application’s acceptance.

Your ability to change details will depend on the current status of your application.

  • If you have already requested examination for your patent application, an examiner will review your requested amendments before the corresponding changes are made to your application’s details.
  • If your patent has been granted, you will only be able to request a limited range of amendments to it. Your requested amendments will be subject to review by an examiner.
  • If your patent application is abandoned or closed, or if your granted patent has lapsed or expired, you will not be able to request amendments to it.

To request an amendment for a patent case:

  1. You will need to be logged on as a registered user of the website. Find out more about becoming a registered user.
  2. Select Maintain a Patent from the left hand menu of your Inbox. The Request Patent Change page will display. Select Amendment/Correction of Error.
  3. The Search Patent Cases screen displays. Search for the patent that you wish to amend, which will bring you to the Enter Voluntary Amendment on Patent(s) page.
    - If your search produces multiple results, tick the box to the left of the correct case number/s, then click the Select button to proceed.
  4. In the Type of Amendment field select Voluntary Amendment.
  5. Make the changes following the onscreen help.
    - If you wish to request for expedited examination, tick the appropriate box in the amendment form. This will prompt you to upload a corresponding set of justification documents.
  6. Select Submit.
  7. You will return to the Patent Change Requests screen and a confirmation Info box will appear. Click OK to close the box.

Below is the list of document types that can be uploaded in the Additional Document(s) field.

Document type

Description

Request for sealing

This provides the option to file a request for sealing if it wasn’t provided at the time of filing. IPONZ will advise if this is required during examination.

Agent authority

A request by an applicant or patentee appointing an agent to act for them e.g. this may be requested in a letter.

Application form

A request to apply for a patent and includes application forms signed by applicants

Verified English translation of the priority document

A verified English translation of a convention priority document(s), PCT amendment(s), or voluntary amendments(s). The verification/certification may be made by the person who translated the relevant document. The verification/certification may alternatively be made by a person who did not prepare the translation but verifies the accuracy and correctness of the translation and takes responsibility for the translation.

Evidence

A document including evidence relating to a patent application or granted patent.

Foreign search report

Patent search and/or examination reports issued from any foreign country.

Notice of entitlement

A notice of the grounds under which the applicant is entitled to be granted a patent.

Prior art

A document including prior art or detailing prior art known which is relevant to the application.

Declaration of inventorship

A declaration the inventors named are the first and true inventors. e.g. this may be declared in a letter

WIPO PCT documentation

Any type of PCT documentation. e.g. International Search Report (ISR), International Preliminary Report on Patentability (IPRP), IB 306.  

Sequence listing

A document containing the sequence listing for a patent application

Micro-organism deposit receipt

A document issued as a receipt by an international depositary institution where a deposit of a micro-organism has been made under the Budapest Treaty.

Request extension of time, Reg.147

A request to extend a regulated time period to file information or a document or for taking a step in respect of a matter where exceptional circumstances exist.

Applicant request OPI

A request to make the complete specification, all documents and information associated with an application visible to public inspection.

Statutory Declarations and Affidavits

These are forms of evidence which are declared, sworn or affirmed before an authorised person such as a solicitor or Justice of the Peace.

Priority Document

A copy of the specification of the basic application for protection in respect of an invention that has been made in a convention country.

Request a correction of error

You can make an online request for the following:

  • correction of an error to an application that has not yet been accepted, an accepted application, or a granted patent.

You can make an online request for a correction of error under section 201 or section 202.

As per section 202(2) of the Patents Act 2013, you can make an online request for a correction of error even if you are not the current owner or designated agent for the patent case. Please note that a correction of error in a patent specification may not be requested using section 202(2).

  1. You will need to be logged on as a registered user of the website.
  2. Select Maintain a Patent from the left hand menu of your Inbox. The Patent Change Request(s) page will display. Select Amendment/Correction of Error.
  3. The Search Patent Cases screen displays. Search for the patent that you wish to amend. Once you have identified the correct case check the radio button to select. Then click the Select button.
  4. In the Type of Amendment field select Corrections of Error. Then select which Section of the act applies to the correction.
  5. You must upload a document detailing your correction request in the Correction of Error Request field.
  6. Select Submit.
  7. You will return to the Patent Change Request(s) screen and a confirmation Info box will appear. Click OK to close the box. 

Pay an excess claims fee

If an excess claims fee is due, you will receive a “Pay fee” task in your case management facility inbox once your application has been accepted.

  1. You will need to be logged on as a registered user of the website.
  2. Under the Tasks section of your Inbox, select the Pay fee task for your patent application. The Pay fee page will display.
  3. Confirm the details of the excess claims fee, then click the Submit button. This will bring you to a payment screen that will allow you to confirm your payment.

Your application will not proceed to grant until you have paid the excess claims fee.

Surrender

You can make an online offer to surrender your in-force patent at any time. Prior to granting of a patent an application may be withdrawn – see Withdrawal.

To offer to surrender a patent:

  1. You will need to be logged on as a registered user of the website.
  2. Select Maintain a Patent from the left hand menu of your Inbox. The Request Patent Change page will display.
  3. To Search Patent Case(s) click Select cases(s) for Surrender from the Surrender Patent section. You can search for one or more patents that you wish to surrender. Once you have identified the cases you wish to surrender tick the check box to select. Then click the Select button.
  4. Check the Confirm offer to surrender Patent(s).
  5. Add your cover letter and documentary evidence (if any) to support your request prior to selecting Submit. You will return to the Request Patent Change and a confirmation Info box will display. Select OK to close the box. 

Withdrawal

Once a Patent application is Withdrawn, it may not be possible to reinstate the application.

You may choose to withdraw an application to explicitly leave no rights outstanding, including the right to claim priority under the Paris Convention on the basis of the application.

Applications withdrawn before they become open to public inspection are not published. Applications withdrawn after becoming open to public inspection remain published as part of the public record. Applications filed in more than one country may be published in other countries even if they are withdrawn in New Zealand.

  1. You will need to be logged on as a registered user of the website.
  2. Select Maintain a Patent from the left hand menu of your Inbox. The Request Patent Change page will display.
  3. Select cases(s) for Withdrawal from the Withdrawal section to Search Patent Case(s). Search for one or more Patents that you want to withdraw, and then Select correct cases.
  4. Tick the Confirm withdrawal of patent application(s).
  5. Submit.
  6. You will return to the Request Patent Change and a confirmation Info box will display. Select OK to close the box.

Restoration

To restore your patent or patent application you will have to:

  • apply for restoration through the online system;
  • provide evidence, in the form of a statutory declaration or sworn affidavit, that the failure to pay a renewal fee or place the application in order for acceptance was unintentional and that there was no undue delay in making the application for restoration.

See our guidelines for restoration requests under the Patents Act 2013.

  1. You will need to be logged on as a registered user of the website.
  2. Select Maintain a Patent from the left hand menu of your Inbox. The Request Patent Change page will display.
  3. To Search Patent Case(s) click Select cases(s) for Restoration from theRestoration section. You can search for one or more patent or patent applications that you wish to restore.
  4. Once you have identified the patent or patent applications that you wish to restore tick the check box to select. Then click the Select button.
  5. Complete the mandatory fields
  6. Add your documentary evidence to support your request.
  7. Select Submit. You will return to the Request Patent Change and a confirmationInfo box will display.
  8. Select OK to close the box.

Evidence must be supplied with a request for restoration.

If no evidence is supplied for the restoration of a lapsed patent or a patent application then your request will be refused.

Evidence must be in the form of a statutory declaration or affidavit (reg 144). When a request is refused for no evidence, the applicant will have to file another request for restoration. A request made to restore a lapsed patent must also include the date the renewal fee was due.

If a request for restoration of an abandoned patent application is successful, then the request will be advertised in the Journal for opposition purposes. If no opposition is lodged during the two month opposition period following the advertisement, then you will receive an order for restoration. The order for restoration will require that the applicant place the application in order for acceptance. A Respond to examination report task will be sent to your inbox and you will have one month to place the application in order for acceptance and to respond to this task. 

If the request for restoration of a lapsed patent is successful, then the request will be advertised in the Journal for opposition purposes. If no opposition is lodged during the two month opposition period following the advertisement, then a notification will be sent to you requiring that you pay all outstanding renewal and late fees. Following payment of the renewal and late fees, an order for restoration will be issued.

Request for expedited examination

If examination has not already begun for your patent application, you can make an online request for us to expedite its examination.

  • You may request for us to examine your application ahead of its expected schedule.
  • You may request for an expedited examination under a Patent Prosecution Highway (PPH) programme.

In all instances, you must provide documentation to justify your request.

If you have not yet requested examination for your patent application, your request for expedited examination will automatically do so. You will be charged the corresponding examination fee as part of your request.

For more information on the requirements you must provide as part of an expedited examination request, please see the reference below.

To request that your application be examined out of turn:

  1. Log on as a registered user of the website.
  2. Select Maintain a Patent from the left-hand menu of your Inbox. The Request Patent Change page will display. Select Amendment/Correction of Error.
  3. The Search Patent Cases screen displays. Search for the patent that you wish to amend, which will bring you to the Enter Voluntary Amendment on Patent(s) form.
    • If your search produces multiple results, tick the box to the left of the correct case number/s, then click the Select button to proceed.
  4. In the Type of Amendment field select Voluntary Amendment.
  5. Select your preferred option for expedited examination.
    • To enter a PPH request, tick the appropriate Patent Prosecution Highway box in the amendment request form. This will prompt you to provide additional details and upload your supporting documentation.
    • To request expedited examination under Regulation 77, tick the Request examination of an application be advanced out of turn in accordance with regulation 77(1)(b) box in the amendment request form. This will prompt you to upload your supporting documentation.
  6. If you are requesting expedited examination for a PCT national phase entry application, you can ask us to examine this ahead of its eligibility date. To do this, tick the Request examination of a Treaty application prior to examination eligibility.
  7. Select Submit.
  8. You will return to the Patent Change Requests screen and a confirmation Info box will appear. Click OK to close the box.

Remove the postponement of acceptance period

You can remove the postponement of acceptance by following these steps:

  1. You will need to be logged on as a registered user of the website.
  2. Select Maintain a Patent from the left hand menu of your Inbox. The Request Patent Change page will display. Select Amendment/Correction of Error.
  3. The Search Patent Cases screen displays. Search for the patent case that you wish to remove the postponement of acceptance from. Once you have identified the correct case check the radio button to select (do not click on the case number itself). Then click the Select button.
  4. Set the postponement value to zero.
  5. Select Submit.

Request a re-examination/submit a third party assertion

You can submit a third-party assertion online, or make an online request to the Commissioner to re-examine a patent application under sections 90, 94 and/or 95 of the Patents Act 2013.

  1. You will need to be logged on as a registered user of the website.
  2. Select Maintain a Patent from the left hand menu of your Inbox. The Request Patent Change page will display. Select Request a Re-Examination/Submit a Third Party Assertion.
  3. The Search Patent Cases screen displays. Search for the patent that you wish to amend. Once you have identified the correct case check the radio button to select. Then click the Select button.
  4. Based on the status of the case you have selected you will take you to the relevant screen either Request a Re-examination or Submit a Third Party Assertion.
  5. Enter your Client Reference.
  6. Add your documentary evidence to support your request then select Submit to complete your request.
  7. If you are requesting re-examination, you will be taken to a payment screen to pay the fee

Regenerate a certificate of grant

If you are the owner or the agent for an in-force patent, you can regenerate its certificate of grant and have the new copy added to your case. This may be useful if the rights to your patent have recently changed ownership, or if the patent has had any updated information that would be reflected in its certificate.

The regenerated certificate of grant will reflect your patent as it is currently recorded in the register.

  1. Log on as a registered user of the website. See becoming a registered user.
  2. Select Maintain a Patent from the left hand menu of your Inbox. The Request Patent Change page displays.
  3. To Search Patent Case(s) click Select case for Regeneration of Grant Certificate from the Regenerate Grant Certificate section. You can search for one or more patents whose certificates you wish to regenerate.
  4. Once you have identified the patents whose certificates you wish to regenerate, tick the check box to select. Then click the Select button.
  5. Select Submit. You will return to the Request Patent Change screen, and a confirmation Info box will display.
  6. Select OK to close the box.

A regenerated certificate of grant will be produced and added to the documents for your patent case. A corresponding email notification and discussion will then be sent to the user in charge for that case.

Request the Commissioner to Direct Examination of a patent application

You can make an online request to the Commissioner to direct an applicant to request examination of their application under section 64(3) of the Patents Act 2013.

You do not need to be logged on to access this online form.

If you are logged in:

  1. From the left side menu of you user inbox select the Information Requests tab
  2. Then select Request for Information/Direction
  3. Enter your Client Reference
  4. Enter your name and email, if you are logged in this will be automatically entered from your login details
  5. From the option under Declaration/Type of Request select I am requesting the Commissioner to direct examination of a patent application.
  6. Ensure you add the relevant case number
  7. In Request Details field add the information for why the Commissioner should direct examination
  8. Select Submit to complete your request.

If you are not logged in:

Go to Request for Information/Direction and complete the online form starting from Step 3 above.

Also see renewal of a patent.