Amended Patents, Trade Mark and Design Regulations enter into force

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Amended Patents, Trade Mark and Design Regulations enter into force

Amendments to the Patents Regulations 2014, the Trade Mark Regulations 2003, the Trade Marks (International Registration) Regulations 2012, and the Design Regulations 1954 will enter into force on 5 April 2018.

Address for service

Address for service requirements for patents, trade marks and designs will permit an address for service in either New Zealand or Australia. This change is part of the Single Economic Market agenda announced by New Zealand and Australia in 2009.

Micro-organism deposit requirements for patent applications

In cases where an invention is a micro-organism, the timeframe for providing a deposit receipt for the purposes of section 43(1)(b) of the Patents Act 2013 is now within 12 months of the date of issue of the first examination report.

Divisional patent applications

The requirements for the acceptance of a complete specification now include the following:

  • Divisional applications must not include a claim or claims for substantially the same matter that has been accepted in their parent applications;
  • Parent applications must not include a claim or claims for substantially the same matter that has been accepted in their divisional applications.

Counterstatements in Patent revocation proceedings

Amended regulation 161 no longer prevents the Commissioner from granting an extension for patent owners to file their counterstatement in revocation proceedings in ‘reasonable circumstances’ provided (1) the extension request is received on or before the deadline for filing the counterstatement and (2) they have not already had an extension under reg 103(2), as amended, which allows for extensions in ‘exceptional circumstances’ for up to 2 months after the deadline has already passed.

For more information, please refer to the following: