Noteworthy New Zealand IP regulation changes for 2018

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Amendments to the Patents Regulations 2014, the Trade Mark Regulations 2003, the Trade Marks (International Registration) Regulations 2012 and the Design Regulations 1954 entered into force on 5 April 2018. We summarise the most material changes here.

Address for service

A New Zealand or Australian address for service is now accepted by the Intellectual Property Office of New Zealand (“IPONZ”) for patents, trade marks and designs. 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

Where an invention for a patent is a micro-organism, the time frame for providing a deposit receipt from the relevant depository institution is now within 12 months of the date of issue of the first examination report.

Divisional patent applications

The following requirements have been added for the acceptance of a complete specification in a patent application:

  • 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.

Counter-statements in patent revocation proceedings

The Commissioner is no longer prevented from granting an extension for reasonable circumstances for patent owners to file their counter-statement in revocation proceedings provided where:

  • The extension request is received on or before the deadline for filing the counter-statement.
  • Patent owners have not already received an extension for exceptional circumstances for up to 2 months after the deadline has already passed.