Update to Hearings Guidelines

Update to Hearings Guidelines

IPONZ has recently updated its pre-hearing directions, and processes relating to patent oppositions.

Following a recent review, the IPONZ Hearings Office has updated its practices for pre-hearings directions and patent oppositions.

Clarification of standard pre-hearing directions for trade marks

IPONZ’s guidance on pre-hearing directions for trade marks has now been updated to note the following:

  • The trade mark pre-hearing directions now clarify that the page limit for written submissions applies to all trade mark hearings (i.e. both attended and heard only by written submissions).
  • The directions now note that hard copies of common bundles and bundles of authorities should be addressed to the IPONZ Hearings Office, rather than individual case officers.
  • The directions now note that the IPONZ Hearings Office will now propose only a single hearing date to parties who wish to attend a hearing. This is a change from our previous practice to initially offer two possible dates.

Our updated trade mark pre-hearing directions may be found on the Pre-Hearing Directions page on our website.

Update to process following the withdrawal of a patent opposition

An opponent in a patent opposition proceeding may withdraw from their case after filing prior art documents. Previously, this would still result in an Assistant Commissioner reviewing the case and rendering a decision in the public interest.

Following discussions with the Hearings Technical Focus Group, IPONZ will now no longer refer cases in this particular scenario to an Assistant Commissioner. Instead, following the withdrawal by the opponent, IPONZ will progress the patent application to grant – based on either the claim set accepted by the examiner, or the amended claim set deemed allowable by the examiner during the opposition.

Third parties will still retain the ability to request re-examination of any patent under Section 95 of the Patents Act 2013.

Our updated guidance on this matter may be found on our website:

Published on March 24, 2021