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Reprint as at 1 January 2011 Patents Act 1953 Public Act Date of assent Commencement 1953 No 64 26 November 1953 see section 1(2) Contents Title Short Title and commencement Interpretation Commissioner of Patents Assistant Commissioners of Patents and other officers Patent Office Closing of Patent Office at short notice Officers and employees of Patent Office not to acquire interest in any patent or prepare specifications Application, investigation, opposition, etc Persons entitled to make application Application Complete and provisional specifications Contents of specification Priority date of claims of complete specification Examination of application Search for anticipation by previous publication 5A Page 6 6 6 10 10 11 12 Note Changes authorised by section 17C of the Acts and Regulations Publication Act 1989 have been made in this reprint.
A general outline of these changes is set out in the notes at the end of this reprint, together with other explanatory material about this reprint.

This Act is administered by the Ministry of Business, Innovation and Employment.
1 Patents Act 1953 Reprinted as at 1 January 2011 Search for anticipation by prior claim Commissioner may require information as to corresponding applications overseas Reference in case of potential infringement Refusal of application in certain cases Supplementary provisions as to examination, etc Time for putting application in order for acceptance Acceptance and publication of complete specification Opposition to grant of patent Refusal of patent without opposition Mention of inventor as such in patent Substitution of applicants, etc Provisions for secrecy of certain inventions Inventions relating to atomic energy Treaty application Treaty application deemed to be application accompanied by complete specification Description, claims, and drawings International filing date Commissioner to provide international filing date Amendments to documents forming part of complete specification Treaty application void Requirements for examination of Treaty application Publication of Treaty applications Grant, effect, and term of patent Grant and sealing of patent Amendment of patent granted to deceased applicant Extent, effect, and form of patent Date and term of patent Extension on ground of inadequate remuneration [Repealed] Extension on ground of war loss [Repealed] Extension on ground of war loss of licensee [Repealed] Patents of addition Restoration of lapsed patents and patent applications Restoration of lapsed patents Restoration of applications where patent not sealed Restoration of application where complete specification not accepted 26A 26B 26C 26D 26E 26F 26G 26H 27 28 29 30 31 32 33 34 35 36 37 2 Reprinted as at 1 January 2011 Patents Act 1953 Amendment of specifications Amendment of specification with leave of Commissioner Amendment of specification with leave of court Supplementary provisions as to amendment of specification Revocation and surrender of patents Revocation of
 patent by court Revocation of patent by Commissioner Surrender of patent Voluntary endorsement of patent Endorsement of patent “licences of right” Cancellation of endorsement under section 44 Compulsory licences, etc Compulsory licence Provisions as to licences under section 46 [Repealed] Exercise of powers on applications under section 46 Endorsement, etc, on application of Crown [Repealed] Revocation of patent [Repealed] Inventions relating to food or medicine, etc [Repealed] Procedure on application under sections 46 to 50 [Repealed] Appeal and references to arbitrator [Repealed] Supplementary provisions Use of patented inventions for services of the Crown Use of patented inventions for services of the Crown Rights of third parties in respect of Crown use Reference of disputes as to Crown use Special provisions as to Crown use during emergency Nature and scope of rights under section 55 Duty to inform owner Patentee entitled to remuneration Anticipation, etc Previous publication Previous communication, display, or working Use and publication after provisional specification or foreign application Priority date in case of obtaining 38 39 40 41 42 43 44 45 46 47 48 49 50 51 52 53 54 55 56 57 58 58A 58B 58C Patents Act 1953 Reprinted as at 1 January 2011 Miscellaneous provisions as to rights in inventions Co-ownership of patents Power of Commissioner to give directions to co-owners Disputes as to inventions made by employees Avoidance of certain restrictive conditions Determination of certain contracts Proceedings for infringement, etc Restrictions on recovery of damages for infringement Burden of proof for infringement of process patent Regulatory review exception Order for account in action for infringement Counterclaim for revocation in action for infringement Relief for infringement of partially valid specification Proceedings for infringement by exclusive
 licensee Certificate of contested validity of specification Remedy for groundless threats of infringement proceedings Power of court to make declaration as to non-infringement Attorney-General may appear in patent proceedings International agreements, etc Orders in Council as to convention countries Supplementary provisions as to convention applications Special provisions as to vessels, aircraft, and land vehicles Extension of time for certain convention applications Protection of inventions communicated under international agreements Regulations under section 80 or section 81 Register of patents, etc Register of patents Registration of assignments, etc Limitation of proceedings Application of Personal Property Securities Act 1999 Commissioner may dispense with production of probate or letters of administration in certain cases Rectification of register of patents by court Correction of errors Evidence of entries, documents, etc Requests for information as to patent or patent application Restriction upon publication of specifications, etc Loss or destruction of patent 68A 68B 69 70 71 72 73 74 75 76 77 78 79 80 81 82 83 84 85 85A 86 87 88 89 90 91 92 4 Reprinted as at 1 January 2011 Patents Act 1953 93 93A Commissioner may grant extension of time Additional provisions for extending time limits 94 95 96 97 98 99 100 101 102 103 104 105 106 107 108 109 110 111 112 113 114 115 116 117 118 119 Proceedings before Commissioner Exercise of discretionary powers of Commissioner Costs and security for costs Evidence before Commissioner Appeals Appeals to High Court Appeals to Court of Appeal Costs of Commissioner in proceedings before court Patent attorneys Registration of patent attorneys Powers of patent attorneys Cancellation of registration of patent attorneys Restrictions on practice as patent attorney Recovery of patent attorney’s charges Offences
 Falsification of register, etc Unauthorised claim of patent rights Protection of Royal Arms, etc Offences by companies Certain offences may be dealt with summarily [Repealed] Miscellaneous Service of notices, etc, by post Declaration by person under disability Journal, indexes, etc Rules of court Regulations Fees Annual report of Commissioner Saving for Royal prerogative, etc Application of Act to Tokelau Repeals and savings Schedule 1 Enactments repealed Schedule 2 Regulations revoked Patents Act 1953 Schedule 3 Transitional provisions Reprinted as at 1 January 2011 112 An Act to consolidate and amend certain enactments relating to patents Short Title and commencement This Act may be cited as the Patents Act 1953.
This Act shall come into force on a day to be appointed for the commencement thereof by the Governor-General by Proclam- ation.

Section 1(2): this Act brought into force, on 1 January 1955, by the Patents Act Commencement Order 1954 (SR 1954/220).
Interpretation In this Act, unless the context otherwise requires,— applicant includes a person in whose favour a direction has been given under section 24 and the personal representative of a deceased applicant article includes any substance or material, and any plant, ma- chinery, or apparatus, whether affixed to land or not assignee includes the personal representative of a deceased as- signee; and references to the assignee of any person include references to the assignee of the personal representative or as- signee of that person Commissioner means the Commissioner of Patents convention application has the meaning assigned to it by sub- section (4) of section 7 convention country, in any provision of this Act, means an entity for the time being declared by an order under section 77 to be a convention country for the purposes of that provision court means the High Court date of filing, in relation to any document filed under this Act, means the date on which the document is filed or, where it is deemed by virtue of any provision of this Act or of regula- 1 (1) (2) 2 (1) 6 Reprinted as at 1 January 2011 Patents Act 1953 s 2 tions made thereunder to have been filed on any different date, means the date on which it is deemed to be filed exclusive licence means a licence from a patentee which con- fers on the licensee, or on the licensee and persons authorised by him, to the exclusion of all other persons (including the patentee), any right in respect of the patented invention; and exclusive licensee shall be construed accordingly government department means any department or instru- ment of the Executive Government of New Zealand integrated circuit means a circuit, in its final or an intermedi- ate form, in which the elements, at least one of which is an active element, and some or all of the interconnections are in- tegrally formed in or on a piece of material and that is intended to perform an electronic function international application means an application made under the Patent Cooperation Treaty for the
 protection of an inven- tion International Bureau means the International Bureau of the World Intellectual Property Organization international filing date means the international filing date given to an international application under Article 11 or Article 14(2) of the Patent Cooperation Treaty invention means any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies and any new method or process of test- ing applicable to the improvement or control of manufacture; and includes an alleged invention Journal means the Patent Office Journal published under sub- section (1) of section 112 Minister means the Minister of Commerce patent means letters patent for an invention Patent Cooperation Treaty— (a) means the Patent Cooperation Treaty, signed at Wash- ington on 19 June 1970, the text of which, as amended on 2 October 1979 and modified on 3 February 1984, is set out in Schedule 1 of the Patents Amendment Act 1992; and 7 s 2 Patents Act 1953 Reprinted as at 1 January 2011 (b) includes any amendments, modifications, and revisions from time to time made to the Treaty, being amend- ments, modifications, and revisions to which New Zealand is a party and by which New Zealand is bound patent of addition means a patent granted in accordance with section 34 Patent Attorney means a person carrying on for gain in New Zealand the business of acting as agent for other persons for the purpose of applying for or obtaining patents in New Zealand or elsewhere patentee, in relation to any patent, means the person or per- sons for the time being entered on the register of patents as grantee or proprietor of the patent prescribed means prescribed by this Act or by regulations made under this Act priority date has the meaning assigned to it by section 11 published, except in relation to a complete specification, means made available to the public; and without prejudice to the generality of the foregoing provision a
 document shall be deemed for the purposes of this Act to be published— (a) if it can be inspected as of right at any place in New Zealand by members of the public whether upon pay- ment of a fee or otherwise; or if it can be inspected in a library of a government de- partment or of any institution or public authority and the library is one which is open generally to members of the public who are interested in matters to which the document relates and is a library in which members of the public in search of information related to the sub- ject of the document would ordinarily seek and do in fact seek the information (b) receiving Office has the same meaning as in Article 2(xv) of the Patent Cooperation Treaty the Statute of Monopolies means the Act of the 21st year of the reign of King James the First, chapter 3, intituled “An Act concerning monopolies and dispensations with penal laws and the forfeiture thereof” 8 Reprinted as at 1 January 2011 Patents Act 1953 s 2 (2) (3) Treaty application means an international application— (a) which contains a request specifying New Zealand as a designated State under Article 4(1)(ii) of the Patent Cooperation Treaty; and (b) which has been given an international filing date Treaty regulations— (a) means the regulations made under the Patent Cooper- ation Treaty and set out in Schedule 2 of the Patents Amendment Act 1992; and includes any amendments from time to time made to those regulations.
(b) For the purposes of subsection (3) of section 7, so far as it re- lates to a convention application, and for the purposes of sec- tion 81, the expression personal representative, in relation to a deceased person, includes the legal representative of the de- ceased appointed in any country outside New Zealand.
In the case of an entity that is a convention country but is not a State, part of a State, or a territory for whose international relations a State is responsible,— a reference in this Act to— (a) (i) (ii) application for protection in a country; or application for protection in respect of a coun- try,— (b) (c) (d) must be read as a reference to application for protection under the rules of the entity: a reference in this Act to filing a specification in a con- vention country must be read as a reference to filing a specification under the rules of the entity: a reference in this Act to the law of a convention country must be read as a reference to the rules of the entity: a reference in this Act to the Government of a conven- tion country must be read as a reference to the governing body of the entity.
Compare: 1921–22 No 18 s 2; Patents Act 1949 s 101 (UK) Section 2(1) Commonwealth: repealed, on 2 September 1996, by section 2 of the Patents Amendment Act 1996 (1996 No 139).

Section 2(1) convention country: section 3(2) of the Patents Amendment Act 1999 (1999 No 119).

replaced, on 14 October 1999, by Section 2(1) court: amended, on 1 April 1980, pursuant to section 12 of the Judicature Amendment Act 1979 (1979 No 124).
9 s 3 Patents Act 1953 Reprinted as at 1 January 2011 Section 2(1) integrated circuit: inserted, on 1 January 1995, by section 2 of the Patents Amendment Act 1994 (1994 No 122).

Section 2(1) international application: section 2 of the Patents Amendment Act 1992 (1992 No 81).

inserted, on 1 December 1992, by Section 2(1) International Bureau: inserted, on 1 December 1992, by section 2 of the Patents Amendment Act 1992 (1992 No 81).
Section 2(1) international filing date: section 2 of the Patents Amendment Act 1992 (1992 No 81).

inserted, on 1 December 1992, by Section 2(1) Minister: replaced, on 1 December 1988, by section 4(1) of the Trade and Industry Act Repeal Act 1988 (1988 No 156).

Section 2(1) Patent Cooperation Treaty: inserted, on 1 December 1992, by section 2 of the Patents Amendment Act 1992 (1992 No 81).
Section 2(1) receiving Office: inserted, on 1 December 1992, by section 2 of the Patents Amendment Act 1992 (1992 No 81).

Section 2(1) Treaty application: inserted, on 1 December 1992, by section 2 of the Patents Amendment Act 1992 (1992 No 81).

Section 2(1) Treaty regulations: inserted, on 1 December 1992, by section 2 of the Patents Amendment Act 1992 (1992 No 81).

Section 2(3): Amendment Act 1999 (1999 No 119).


inserted, on 14 October 1999, by section 3(3) of the Patents Commissioner of Patents There may from time to time be appointed under the State Sector Act 1988 some fit person to be the Commissioner of Patents.
The person who at the commencement of this Act holds the office of Commissioner of Patents, Designs, and Trade Marks under the Patents, Designs, and Trade Marks Act 1921–22 shall be deemed to have been appointed as Commissioner of Patents under this Act.

Compare: 1921–22 No 18 s 113 Section 3(1): amended, on 1 April 1988, pursuant to section 88(2) of the State Sector Act 1988 (1988 No 20).
Assistant Commissioners of Patents and other officers There may from time to time be appointed under the State Sector Act 1988— (a) 1 or more fit persons to be Assistant Commissioners of Patents: such other officers and employees as may be necessary for carrying out the provisions of this Act.
(b) 3 (1) (2) 4 (1) 10 Reprinted as at 1 January 2011 Patents Act 1953 s 5 (2) (3) 5 (1) (2) Every Assistant Commissioner of Patents so appointed, while he remains in office, shall have and may exercise, subject to the control and direction of the Commissioner, all the powers, duties, and functions of the Commissioner, and all references in this or any other Act to the Commissioner shall, so far as may be necessary for the purpose of giving effect to the provi- sions of this section, be deemed to include a reference to every Assistant Commissioner of Patents.
The person who at the commencement of this Act holds the office of Deputy Commissioner of Patents, Designs, and Trade Marks under the Patents, Designs, and Trade Marks Act 1921–22 shall be deemed to have been appointed an Assistant Commissioner of Patents under this Act.

Compare: 1921–22 No 18 ss 114, 115 Section 4(1): amended, on 1 April 1988, pursuant to section 88(2) of the State Sector Act 1988 (1988 No 20).
Patent Office The Minister may from time to time, by notice in the Jour- nal, appoint a place to be the Patent Office.

The place at the commencement of this Act used as the Patent Office shall be deemed to have been appointed to be the Patent Office under this Act.
The Commissioner, from time to time by notice in the Journal, may fix the hours during which the Patent Office shall be open for the transaction of public business under this Act, and may declare the Patent Office closed for the transaction of public business on any day.
(3) Where the time prescribed for doing any act or taking any pro- ceeding expires on a day on which the Patent Office is not open and by reason thereof the act or proceeding cannot be done or taken on that day, the act or proceeding shall be deemed to be in time if done or taken on the next day on which the Patent Office is open.

There shall be a seal of the Patent Office and impressions thereof shall be judicially noticed.
Compare: 1921–22 No 18 ss 113, 116, 133; Patents Act 1949 s 98 (UK) (4) Section 5(2): replaced, on 9 December 1976, by section 2(1) of the Patents Amendment Act 1976 (1976 No 112).
11 s 5A Patents Act 1953 Reprinted as at 1 January 2011 5A Closing of Patent Office at short notice (1) Notwithstanding subsection (2) of section 5, where, because of an emergency or other temporary circumstances, the Com- missioner is satisfied that it is or will be necessary or desirable to close the Patent Office on any day and it is not practicable to give notice of the closure in the Journal as required by that subsection, the Commissioner may, without giving that notice, declare the Patent Office closed for the transaction of public business on that day in accordance with the provisions of this section.
In every case where the Commissioner proposes to declare or has declared the Patent Office closed under subsection (1) he shall, if practicable, display a public notice of that fact in or on the building in which the Patent Office is situated.

(2) (3) As soon as practicable thereafter the Commissioner shall also cause a copy of the public notice, or (if no such notice was displayed) a notice of the exercise of his powers under this section, to be published in the Journal.
Section 5A: inserted, on 9 December 1976, by section 2(2) of the Patents Amendment Act 1976 (1976 No 112).
Officers and employees of Patent Office not to acquire interest in any patent or prepare specifications Every officer and employee of the Patent Office shall be inca- pable, during the period for which he holds his appointment and for 1 year thereafter, of applying in New Zealand for a patent or of acquiring directly or indirectly, except under a will or on an intestacy, any right or interest in any patent granted or to be granted in New Zealand.
Every officer and employee of the Patent Office commits an offence, and shall be liable on summary conviction to a fine not exceeding 50 pounds, if, during the period for which he holds his appointment and for 1 year thereafter, he applies in any country other than New Zealand for a patent or acquires directly or indirectly, except under a will or on an intestacy, any right or interest in any patent granted or to be granted in any country other than New Zealand.
Every officer and employee of the Patent Office commits an offence, and shall be liable on summary conviction to a fine not 6 (1) (2) (3) 12 Reprinted as at 1 January 2011 Patents Act 1953 s 7 exceeding 20 pounds, if, outside the scope of his official duties, he drafts or prepares a specification or drawing or any part of a specification or drawing or makes a search of the records of the Patent Office for the use or information of any applicant or intending applicant for a patent under this Act.
(4) Nothing in subsections (1) and (2) shall prevent any former officer or employee of the Patent Office who is practising as a solicitor or patent attorney from lawfully carrying out, within the period of 1 year specified in those subsections, any function that is merely incidental to that practice.
Compare: 1947 No 37 s 4 Application, investigation, opposition, etc Persons entitled to make application 7 (1) An application for a patent for an invention may be made by any of the following persons, that is to say: (a) by any person claiming to be the true and first inventor of the invention: by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application,— (b) and may be made by that person either alone or jointly with any other person.
(2) Without prejudice to the foregoing provisions of this section, an application for a patent for an invention in respect of which protection has been applied for in a convention country (whether before or after it became a convention country) may be made by the person by whom the application for protection was made or by the assignee of that person; and for the purposes of this Act the filing in any convention country of a complete specification after the filing of a provisional specification or provisional specifications in respect of any such application shall be deemed to be an application for protection in that country: provided that no application shall be made by virtue of this subsection after the expiration of 12 months from the date of the application for protection in a convention country or, where more than 1 such application for protection has been made, from the date of the first application.
13 s 8 Patents Act 1953 Reprinted as at 1 January 2011 (2A) For the purposes of this section, where more than 1 applica- tion for protection in a convention country has been made, the first application may be disregarded and the second applica- tion shall be substituted for the first application where— (a) (b) the first application was made in or in respect of the same convention country and by the same applicant as the second application; and not later than the date of filing of the second appli- cation, the first application was unconditionally with- drawn, abandoned, or refused; and— (i) the first application had not been made available to the public in New Zealand or elsewhere before its unconditional withdrawal, abandonment, or refusal; and no rights remain outstanding in respect of the first application; and the first application has not served to establish a priority date (as defined in section 2) in relation to another application in any country.
(ii) (iii) (3) An application for a patent may be made under subsection (1) or subsection (2) by the personal representative or the assignee of the personal representative of any deceased person who, immediately before his death was entitled to make such an application.

(4) An application for a patent made by virtue of subsection (2) is in this Act referred to as a convention application.
Compare: 1921–22 No 18 ss 3, 48; Patents Act 1949 s 1 (UK) Section 7(2): amended, on 14 October 1999, by section 2(1) of the Patents Amendment Act 1999 (1999 No 119).

Section 7(2A): inserted, on 19 August 1992, by section 3 of the Patents Amendment Act 1992 (1992 No 81).

Application Every application for a patent shall be made in the prescribed form and shall be filed at the Patent Office in the prescribed manner.
Every application (other than a convention application) shall state that the applicant is in possession of the invention and shall name the person claiming to be the true and first inventor; 8 (1) (2) 14 Reprinted as at 1 January 2011 Patents Act 1953 s 9 (3) and where the person so claiming is not the applicant or one of the applicants, the application shall contain a declaration that the applicant believes him to be the true and first inventor.
Every convention application shall specify the date on which and the convention country in which the application for pro- tection, or the first such application, was made, and shall state that no application for protection in respect of the invention had been made in a convention country before that date by the applicant or any person from whom he derives title.
(4) Where applications for protection have been made in 1 or more convention countries in respect of 2 or more inventions which are cognate or of which one is a modification of another, a single convention application may, subject to the provisions of section 10, be made in respect of those inventions at any time within 12 months from the date of the earliest of the said applications for protection: provided that the fee payable on the making of any such ap- plication shall be the same as if separate applications had been made in respect of each of the said inventions; and the require- ments of subsection (3) shall in the case of any such applica- tion apply separately to the applications for protection in re- spect of each of the said inventions.
Compare: 1921–22 No 18 s 3; Patents Act 1949 s 2 (UK) 9 (1) Complete and provisional specifications Every application for a patent (other than a convention appli- cation) shall be accompanied by either a complete specifica- tion or a provisional specification; and every convention ap- plication shall be accompanied by a complete specification.
(2) Where an application for a patent is accompanied by a pro- visional specification, a complete specification shall be filed within 12 months from the date of filing of the application, and if the complete specification is not so filed the application shall be deemed to be abandoned: provided that the complete specification may be filed at any time after 12 months but within 15 months from the date afore- said if a request to that effect is made to the Commissioner and the prescribed fee paid on or before the date on which the spe- cification is filed.
15 s 10 Patents Act 1953 Reprinted as at 1 January 2011 (3) Where 2 or more applications accompanied by provisional specifications have been filed in respect of inventions which are cognate or of which one is a modification of another, a single complete specification may, subject to the provisions of this section and of section 10, be filed in pursuance of those ap- plications, or, if more than 1 complete specification has been filed, may with the leave of the Commissioner be proceeded with in respect of those applications.
(4) Where an application for a patent (not being a convention ap- plication) is accompanied by a specification purporting to be a complete specification, the Commissioner may, if the appli- cant so requests at any time before the acceptance of the spe- cification, direct that it shall be treated for the purposes of this Act as a provisional specification, and proceed with the appli- cation accordingly.
(5) Where a complete specification has been filed in pursuance of an application for a patent accompanied by a provisional spe- cification or by a specification treated by virtue of a direction under subsection (4) as a provisional specification, the Com- missioner may, if the applicant so requests at any time before the acceptance of the complete specification, cancel the pro- visional specification and post-date the application to the date of filing of the complete specification.
Compare: 1921–22 No 18 ss 4, 7, 18; 1939 No 26 s 73; Patents Act 1949 s 3 (UK) Contents of specification Every specification, whether complete or provisional, shall de- scribe the invention, and shall begin with a title indicating the subject to which the invention relates.
Subject to any regulations made under this Act, drawings may, and shall if the Commissioner so requires, be supplied for the purposes of any specification, whether complete or pro- visional; and any drawings so supplied shall, unless the Com- missioner otherwise directs, be deemed to form part of the spe- cification, and references in this Act to a specification shall be construed accordingly.
Every complete specification— 10 (1) (2) (3) 16 Reprinted as at 1 January 2011 Patents Act 1953 s 11 (4) (5) (6) (a) (b) (c) shall particularly describe the invention and the method by which it is to be performed; and shall disclose the best method of performing the inven- tion which is known to the applicant and for which he is entitled to claim protection; and shall end with a claim or claims defining the scope of the invention claimed.
The claim or claims of a complete specification must relate to a single invention, must be clear and succinct, and must be fairly based on the matter disclosed in the specification.
Regulations made under this Act may require that in such cases as may be prescribed by the regulations a declaration as to the inventorship of the invention, in such form as may be so prescribed, shall be furnished with the complete specification or within such period as may be so prescribed after the filing of that specification.
Subject to the foregoing provisions of this section, a com- plete specification filed after a provisional specification, or filed with a convention application, may include claims in re- spect of developments of or additions to the invention which was described in the provisional specification or, as the case may be, the invention in respect of which the application for protection was made in a convention country, being develop- ments or additions in respect of which the applicant would be entitled under the provisions of section 7 to make a separate application for a patent.
(7) Where a complete specification claims a new substance, the claim shall be construed as not extending to that substance when found in nature.
Compare: 1921–22 No 18 ss 3, 4; Patents Act 1949 s 4 (UK) 11 (1) Priority date of claims of complete specification Every claim of a complete specification shall have effect from the date prescribed by this section in relation to that claim (in this Act referred to as the priority date); and a patent shall not be invalidated by reason only of the publication or use of the invention, so far as claimed in any claim of the complete specification, on or after the priority date of that claim, or by 17 s 12 Patents Act 1953 Reprinted as at 1 January 2011 the grant of another patent upon a specification claiming the same invention in a claim of the same or later priority date.
(2) Where the complete specification is filed in pursuance of a single application accompanied by a provisional specification or by a specification which is treated by virtue of a direction under subsection (4) of section 9 as a provisional specification, and the claim is fairly based on the matter disclosed in that specification, the priority date of that claim shall be the date of filing of the application.
(3) Where the complete specification is filed or proceeded with in pursuance of 2 or more applications accompanied by such spe- cifications as are mentioned in subsection (2), and the claim is fairly based on the matter disclosed in one of those specifica- tions, the priority date of that claim shall be the date of filing of the application accompanied by that specification.
(4) Where the complete specification is filed in pursuance of a convention application and the claim is fairly based on the matter disclosed in the application for protection in a conven- tion country or, where the convention application is founded upon more than 1 such application for protection, in one of those applications, the priority date of that claim shall be the date of the relevant application for protection.
(5) Where, under the foregoing provisions of this section, any claim of a complete specification would, but for this provi- sion, have 2 or more priority dates, the priority date of that claim shall be the earlier or earliest of those dates.

In any case to which subsections (2) to (5) do not apply, the priority date of a claim shall be the date of filing of the com- plete specification.
Compare: 1921–22 No 18 s 8; Patents Act 1949 s 5 (UK) (6) Examination of application Subject to section 26G, when the complete specification has been filed in respect of an application for a patent, the appli- cation and specification or specifications shall be referred by the Commissioner to an examiner.
If the examiner reports that the application or any specifica- tion filed in pursuance thereof does not comply with the re- 12 (1) (2) 18 Reprinted as at 1 January 2011 Patents Act 1953 s 12 quirements of this Act or of any regulations made thereunder, or that there is lawful ground of objection to the grant of a patent in pursuance of the application, the Commissioner may either— (a) (b) refuse to proceed with the application; or require the application or any such specification as aforesaid to be amended before he proceeds with the application.
(3) At any time after an application has been filed under this Act and before acceptance of the complete specification, the Com- missioner may, at the request of the applicant and upon pay- ment of the prescribed fee, direct that the application shall be post-dated to such date as may be specified in the request: provided that— (a) no application shall be post-dated under this subsection to a date later than 6 months from the date on which it was actually made or would, but for this subsection, be deemed to have been made; and a convention application shall not be post-dated under this subsection to a date later than the last date on which, under the foregoing provisions of this Act, the applica- tion could have been made.
(b) (5) (4) Where an application or specification filed under this Act is amended before acceptance of the complete specification, the Commissioner may direct that the application or specification shall be post-dated to the date on which the amendment is first filed.
Regulations made under this Act may make provision for se- curing that where, at any time after an application or speci- fication has been filed under this Act and before acceptance of the complete specification, a fresh application or specifica- tion is filed in respect of any part of the subject matter of the first-mentioned application or specification, the Commissioner may on request direct that the fresh application or specification shall be ante-dated to a date not earlier than the date of filing of the first-mentioned application or specification.
(6) An appeal to the court shall lie from any decision of the Com- missioner under subsection (2) or subsection (4).

Compare: 1921–22 No 18 s 5; Patents Act 1949 s 6 (UK) 19 s 13 13 (1) (2) (3) Patents Act 1953 Reprinted as at 1 January 2011 Section 12(1): amended, on 1 December 1992, by section 4 of the Patents Amendment Act 1992 (1992 No 81).
Search for anticipation by previous publication Subject to the provisions of section 12, the examiner to whom an application for a patent is referred under this Act shall make investigation for the purpose of ascertaining whether the in- vention, so far as claimed in any claim of the complete spe- cification, has been published before the date of filing of the applicant’s complete specification in any specification filed in pursuance of an application for a patent made in New Zealand and dated within 50 years next before that date.
The examiner shall, in addition, make such investigation as the Commissioner may direct for the purpose of ascertaining whether the invention, so far as claimed in any claim of the complete specification, has been published in New Zealand before the date of filing of the applicant’s complete specifica- tion in any other document (not being a document of any class described in subsection (1) of section 59).
If it appears to the Commissioner that the invention, so far as claimed in any claim of the complete specification, has been published as aforesaid, he may refuse to accept the specifica- tion unless the applicant either— (a) shows to the satisfaction of the Commissioner that the priority date of the claim of his complete specification is not later than the date on which the relevant document was published; or amends his complete specification to the satisfaction of the Commissioner.
(b) (4) An appeal to the court shall lie from any decision of the Com- missioner under this section.
Compare: 1921–22 No 18 s 10; Patents Act 1949 s 7 (UK) Search for anticipation by prior claim In addition to the investigation required by section 13, the examiner shall make investigation for the purpose of ascer- taining whether the invention, so far as claimed in any claim of the complete specification, is claimed in any claim of any other complete specification published on or after the date of 14 (1) 20 Reprinted as at 1 January 2011 Patents Act 1953 s 14 filing of the applicant’s complete specification, being a speci- fication filed— (a) in pursuance of an application for a patent made in New Zealand and dated before that date; or in pursuance of a convention application founded upon an application for protection made in a convention country before that date.
(b) (2) (3) (4) If it appears to the Commissioner that the said invention is claimed in a claim of any such other specification as aforesaid, he may, subject to the provisions of this section, direct that a reference to that other specification shall be inserted by way of notice to the public in the applicant’s complete specification unless within such time as may be prescribed either— (a) the applicant shows to the satisfaction of the Commis- sioner that the priority date of his claim is not later than the priority date of the claim of the said other specifica- tion; or the complete specification is amended to the satisfaction of the Commissioner.
(b) If in consequence of the investigation under section 13 or otherwise it appears to the Commissioner— (a) that the invention, so far as claimed in any claim of the applicant’s complete specification, has been claimed in any such specification as is mentioned in subsection (1) of that section; and that the other specification was published on or after the priority date of the applicant’s claim,— (b) then, unless it has been shown to the satisfaction of the Com- missioner under that section that the priority date of the appli- cant’s claim is not later than the priority date of claim of that other specification, the provisions of subsection (2) shall apply as they apply in relation to a specification published on or after the date of filing of the applicant’s complete specification.
The powers of the Commissioner under this section to direct the insertion of a reference to another specification may be exercised either before or after a patent has been granted for the invention claimed in that other specification, but any directions given before the grant of such a patent shall be of no effect unless and until such a patent is granted.

21 s 15 Patents Act 1953 Reprinted as at 1 January 2011 (5) An appeal to the court shall lie from any decision of the Com- missioner under this section.
Compare: 1921–22 No 18 s 10; Patents Act 1949 s 8 (UK) Commissioner may require information as to corresponding applications overseas Subject to subsection (2), for the purposes of the investiga- tion required under this Act an applicant, if so required by the Commissioner shall,— (a) state whether a corresponding or substantially corres- ponding application has been filed in any of the follow- ing countries, namely,— (i) the United Kingdom, Canada, Australia, or the United States of America; or any other country for the time being declared by Order in Council to be a country to which this paragraph applies: (ii) (b) with respect to any such application in any such coun- try, furnish (so far as it is reasonably available to the applicant) the following information: (i) (ii) the number and filing date of the application; and particulars sufficient to identify the prior art cited against the application; and the number allotted to the patent when granted on the application and the form of the claims al- lowed; and particulars of any other application or patent with which the corresponding application is or has been involved in opposition, conflict, interfer- ence, or similar proceedings.
(iii) (iv) This section shall not apply to Treaty applications.

Section 15(1): amended, on 1 December 1992, by section 5(1) of the Patents Amendment Act 1992 (1992 No 81).

Section 15(2): inserted, on 1 December 1992, by section 5(2) of the Patents Amendment Act 1992 (1992 No 81).
Reference in case of potential infringement If, in consequence of the investigations required by the forego- ing provisions of this Act or of proceedings under section 21 or 15 (1) (2) 16 (1) 22 Reprinted as at 1 January 2011 Patents Act 1953 s 17 section 42, it appears to the Commissioner that an invention in respect of which application for a patent has been made can- not be performed without substantial risk of infringement of a claim of any other patent, he may direct that a reference to that other patent shall be inserted in the applicant’s complete specification by way of notice to the public unless within such time as may be prescribed either— (a) the applicant shows to the satisfaction of the Commis- sioner that there are reasonable grounds for contesting the validity of the said claim of the other patent; or the complete specification is amended to the satisfaction of the Commissioner.
(b) (2) Where, after a reference to another patent has been inserted in a complete specification in pursuance of a direction under the foregoing subsection— (a) (b) (c) that other patent is revoked or otherwise ceases to be in force; or the specification of that other patent is amended by the deletion of the relevant claim; or it is found, in proceedings before the court or the Com- missioner, that the relevant claim of that other patent is invalid or is not infringed by any working of the appli- cant’s invention,— the Commissioner may, on the application of the applicant, delete the reference to that other patent.
(3) An appeal to the court shall lie from any decision or direction of the Commissioner under this section.

Compare: Patents Act 1949 s 9 (UK) 17 (1) Refusal of application in certain cases If it appears to the Commissioner in the case of any application for a patent that the use of the invention in respect of which the application is made would be contrary to morality, the Com- missioner may refuse the application.
(2) An appeal to the court shall lie from any decision of the Com- missioner under this section.

Section 17: replaced, on 1 January 1995, by section 3 of the Patents Amendment Act 1994 (1994 No 122).
23 s 18 18 (1) Patents Act 1953 Reprinted as at 1 January 2011 Supplementary provisions as to examination, etc The powers of the Commissioner under section 14 or section 16 may be exercised either before or after the complete speci- fication has been accepted or a patent granted to the applicant, and references in those sections to the applicant shall accord- ingly be construed as including references to the patentee.
(3) (2) Where a complete specification is amended under the fore- going provisions of this Act before it has been accepted, the amended specification shall be examined and investigated in like manner as the original specification.
The examination and investigations required by the foregoing provisions of this Act shall not be deemed to warrant the val- idity of any patent, and no liability shall be incurred by the Patent Office or any officer thereof by reason of or in connec- tion with any such examination or investigation or any report or other proceedings consequent thereon.
Compare: 1921–22 No 18 s 10; Patents Act 1949 s 11 (UK) 19 (1) Time for putting application in order for acceptance Subject to subsection (1A), an application for a patent shall be void unless within 15 months from the date of filing of the complete specification, or within such longer period as may be allowed under the following provisions of this section, the applicant has complied with all requirements imposed on him by or under this Act, whether in connection with the complete specification or otherwise in relation to the application.
(1A) The time period allowed in subsection (1), in relation to a Treaty application, shall commence on the day on which the applicant fulfils the applicant’s obligations under Article 22(1) or Article 39(1) of the Patent Cooperation Treaty, as the case may require.
The period allowed by subsection (1) shall be extended to such period, not exceeding 18 months from the date of filing of the complete specification, as may be specified in a notice given by the applicant to the Commissioner, if the notice is given and the prescribed fee paid before the expiration of the period so specified.
(2) 24 Reprinted as at 1 January 2011 Patents Act 1953 s 20 (3) If at the expiration of the period allowed under the forego- ing provisions of this section an appeal to the court is pending under any of the provisions of this Act in respect of the appli- cation (or, in the case of an application for a patent of addition, either in respect of that application or in respect of the appli- cation for the patent for the main invention) or the time within which such an appeal could be brought in accordance with the rules of court (apart from any future extension of time there- under) has not expired, then— (a) where such an appeal is pending or is brought within the time aforesaid or before the expiration of any extension of that time granted (in the case of a first extension) on an application made within that time or (in the case of a subsequent extension) on an application made before the expiration of the last previous extension, the said period shall be extended until such date as the court may determine: (b) where no such appeal is pending or is so brought, the said period shall continue until the end of the time afore- said, or, if any extension of that time is granted as afore- said, until the expiration of the extension or last exten- sion so granted.
Compare: 1939 No 26 s 72; Patents Act 1949 s 12 (UK) Section 19(1): amended, on 1 December 1992, by section 6(1) of the Patents Amendment Act 1992 (1992 No 81).

Section 19(1A): inserted, on 1 December 1992, by section 6(2) of the Patents Amendment Act 1992 (1992 No 81).
20 (1) Acceptance and publication of complete specification Subject to the provisions of section 19, the complete specifi- cation filed in pursuance of an application for a patent may be accepted by the Commissioner at any time after the applicant has complied with the requirements mentioned in subsection (1) of that section, and if not so accepted within the period allowed under that section for compliance with those require- ments, shall be accepted as soon as may be thereafter: provided that the applicant may give notice to the Commis- sioner requesting him to postpone acceptance until such date, not being later than 18 months from the date of filing of the complete specification, as may be specified in the notice; and 25 s 21 Patents Act 1953 Reprinted as at 1 January 2011 if such notice is given and, where the notice requests a post- ponement to a date later than 15 months from the date afore- said, the prescribed fee is paid, the Commissioner may post- pone acceptance accordingly.
(2) On the acceptance of a complete specification the Commis- sioner shall give notice to the applicant, and shall advertise in the Journal the fact that the specification has been accepted, and thereupon the application and the specification or specifi- cations filed in pursuance thereof shall be open to public in- spection.
(3) Any reference in this Act to the date of the publication of a complete specification shall be construed as a reference to the date of issue of the Journal containing the advertisement as aforesaid.
(4) After the date of the publication of a complete specification and until the sealing of a patent in respect thereof, the applicant shall have the like privileges and rights as if a patent for the invention had been sealed on the date of the publication of the complete specification, except that the applicant shall not be entitled to institute any proceedings for infringement until the patent has been sealed.
[Repealed] Compare: 1921–22 No 18 ss 11, 12; 1946 No 32 s 5; Patents Act 1949 s 13 (UK) (5) Section 20(4): replaced, on 2 September 1996, by section 3 of the Patents Amendment Act 1996 (1996 No 139).

Section 20(5): repealed, on 1 January 2011, by section 58 of the Limitation Act 2010 (2010 No 110).
Opposition to grant of patent 21 (1) At any time within the period prescribed by subsection (2) any person interested may give notice to the Commissioner of opposition to the grant of the patent on any of the following grounds: (a) that the applicant for the patent, or the person described in the application as the true and first inventor, obtained the invention or any part thereof from him, or from a person of whom he is the personal representative: 26 Reprinted as at 1 January 2011 (b) Patents Act 1953 s 21 that the invention, so far as claimed in any claim of the complete specification, has been published in New Zealand before the priority date of the claim— (i) in any specification filed in pursuance of an ap- plication for a patent made in New Zealand and dated within 50 years next before the date of fil- ing of the applicant’s complete specification: in any other document (not being a document of any class described in subsection (1) of section 59): (ii) (c) (d) (e) (f) (g) (h) (i) that the invention, so far as claimed in any claim of the complete specification, is claimed in any claim of a complete specification published on or after the prior- ity date of the applicant’s claim and filed in pursuance of an application for a patent in New Zealand, being a claim of which the priority date is earlier than that of the applicant’s claim: that the invention, so far as claimed in any claim of the complete specification, was used in New Zealand before the priority date of that claim: that the invention, so far as claimed in any claim of the complete specification, is obvious and clearly does not involve any inventive step having regard to matter pub- lished as mentioned in paragraph (b), or having regard to what was used in New Zealand before the priority date of the applicant’s claim: that the subject of any claim of the complete specifica- tion is not an invention within the meaning of this Act: that the complete specification does not sufficiently and fairly describe the invention or the method by which it is
 to be performed: that, in the case of a convention application, the applica- tion was not made within 12 months from the date of the first application for protection for the invention made in a convention country by the applicant or a person from whom he derives title: that, in the case of an application to which an order under section 37 applies, the failure of the applicant to comply with the requirements imposed on him by or 27 s 22 Patents Act 1953 Reprinted as at 1 January 2011 under this Act within the period prescribed by section 19 and every extension of that period granted under that section or under section 93 was not unintentional: that in the case of an application to which an order under section 37 applies, there was undue delay in applying for the order: that, in the case of an application under section 93A, an extension of time granted by the Commissioner was unwarranted,— (j) (k) (2) but on no other ground.
Every such notice shall be given within 3 months from the date of the publication of the complete specification under this Act: provided that on application made to him in that behalf within the said 3 months the Commissioner may extend the prescribed period to 4 months.

(4) (3) Where any such notice is given, the Commissioner shall give notice of the opposition to the applicant, and shall give to the applicant and the opponent an opportunity to be heard before he decides on the case.
The grant of a patent shall not be refused on the ground spe- cified in paragraph (c) of subsection (1) if no patent has been granted in pursuance of the application mentioned in that para- graph; and for the purposes of paragraph (d) or paragraph (e) of the said subsection (1) no account shall be taken of any se- cret use.

(5) An appeal to the court shall lie from any decision of the Com- missioner under this section.

Compare: 1939 No 26 s 57; Patents Act 1949 s 14 (UK).
Section 21(1)(k): Amendment Act 1972 (1972 No 91).
inserted, on 20 October 1972, by section 3 of the Patents Refusal of patent without opposition If at any time after the acceptance of the complete specifica- tion filed in pursuance of an application for a patent and before the grant of a patent thereon it comes to the notice of the Com- missioner, otherwise than in consequence of proceedings in opposition to the grant under section 21, that the invention, so far as claimed in any claim of the complete specification, has 22 (1) 28 Reprinted as at 1 January 2011 Patents Act 1953 s 23 been published in New Zealand before the priority date of the claim— (a) in any specification filed in pursuance of an application for a patent made in New Zealand and dated within 50 years next before the date of filing of the applicant’s complete specification; or in any other document (not being a document of any class described in subsection (1) of section 59),— the Commissioner may refuse to grant the patent unless within such time as may be prescribed the complete specification is amended to his satisfaction.
(b) (2) An appeal to the court shall lie from any decision of the Com- missioner under this section.
Compare: Patents Act 1949 s 15 (UK) 23 Mention of inventor as such in patent (1) If the Commissioner is satisfied, upon a request or claim made in accordance with the provisions of this section,— (a) that the person in repect of or by whom the request or claim is made is the inventor of an invention in respect of which application for a patent has been made, or of a substantial part of that invention; and that the application for the patent is a direct conse- quence of his being the inventor,— (b) the Commissioner shall, subject to the provisions of this sec- tion, cause him to be mentioned as inventor in any patent granted in pursuance of the application, in the complete speci- fication, and in the register of patents: provided that the mention of any person as inventor under this section shall not confer or derogate from any rights under the patent.
For the purposes of this section the actual deviser of an inven- tion or a part of an invention shall be deemed to be the inventor, notwithstanding that any other person is for any of the other purposes of this Act treated as the true and first inventor; and no person shall be deemed to be the inventor of an invention or a part of an invention by reason only that it was imported by him into New Zealand.
(2) 29 s 23 Patents Act 1953 Reprinted as at 1 January 2011 (4) (3) A request that any person shall be mentioned as aforesaid may be made in the prescribed manner by the applicant for the patent or (where the person alleged to be the inventor is not the applicant or one of the applicants) by the applicant and that person.
If any person (other than a person in respect of whom a request in relation to the application in question has been made under subsection (3)) desires to be mentioned as aforesaid, he may make a claim in the prescribed manner in that behalf.
(5) A request or claim under the foregoing provisions of this sec- tion must be made not later than 2 months after the date of the publication of the complete specification, or within such further period (not exceeding 1 month) as the Commissioner may, on an application made to him in that behalf before the expiration of the said period of 2 months and subject to pay- ment of the prescribed fee, allow.
(7) (6) No request or claim under the foregoing provisions of this sec- tion shall be entertained if it appears to the Commissioner that the request or claim is based upon facts which, if proved in the case of an opposition under the provisions of paragraph (a) of subsection (1) of section 21 by the person in respect of or by whom the request or claim is made, would have entitled him to relief under that section.
Subject to the provisions of subsection (6), where a claim is made under subsection (4), the Commissioner shall give notice of the claim to every applicant for the patent (not being the claimant) and to any other person whom the Commissioner may consider to be interested; and before deciding upon any request or claim made under subsection (3) or subsection (4), the Commissioner shall, if required, hear the person in respect of or by whom the request or claim is made, and, in the case of a claim under the said subsection (4) any person to whom notice of the claim has been given as aforesaid.
(8) Where any person has been mentioned as inventor in pur- suance of this section, any other person who alleges that he ought not to have been so mentioned may at any time apply to the Commissioner for a certificate to that effect, and the Com- missioner may, after hearing (if required) any person whom he may consider to be interested, issue such a certificate, and 30 Reprinted as at 1 January 2011 Patents Act 1953 s 24 if he does so, he shall rectify the specification and the register accordingly.
(9) An appeal to the court shall lie from any decision of the Com- missioner under this section.
Compare: 1939 No 26 s 58; Patents Act 1949 s 16 (UK) 24 (1) Substitution of applicants, etc If the Commissioner is satisfied, on a claim made in the pre- scribed manner at any time before a patent has been granted, that by virtue of any assignment or agreement made by the ap- plicant or one of the applicants for the patent, or by operation of law, the claimant would, if the patent were then granted, be entitled thereto or to the interest of the applicant therein, or to an undivided share of the patent or of that interest, the Com- missioner may, subject to the provisions of this section, direct that the application shall proceed in the name of the claimant or in the names of the claimant and the applicant or the other joint applicant or applicants, according as the case may require.
(2) No such direction as aforesaid shall be given by virtue of any assignment or agreement made by one of 2 or more joint ap- plicants for a patent except with the consent of the other joint applicant or applicants.
(3) No such direction as aforesaid shall be given by virtue of any assignment or agreement for the assignment of the benefit of an invention unless either— (a) (b) (c) the invention is identified therein by reference to the number of the application for the patent; or there is produced to the Commissioner an acknowledg- ment by the person by whom the assignment or agree- ment was made that the assignment or agreement relates to the invention in respect of which that application is made; or the rights of the claimant in respect of the invention have been finally established by a decision of any court or by a determination of the Commissioner under the following provisions of this Act.
(4) Where one of 2 or more joint applicants for a patent dies at any time before the patent has been granted, the Commissioner may, upon a request in that behalf made by the survivor or 31 s 25 Patents Act 1953 Reprinted as at 1 January 2011 (5) survivors, and with the consent of the personal representative of the deceased, direct that the application shall proceed in the name of the survivor or survivors alone.
If any dispute arises between joint applicants for a patent whether or in what manner the application should be pro- ceeded with, the Commissioner may, upon application made to him in the prescribed manner by any of the parties, and after giving to all parties concerned an opportunity to be heard, give such directions as he thinks fit for enabling the applica- tion to proceed in the name of 1 or more of the parties alone or for regulating the manner in which it shall be proceeded with, or for both those purposes, according as the case may require.
In any such case the Commissioner may authorise the application to proceed in the name of 1 or more of the parties.

(6) An appeal to the court shall lie from any decision of the Com- missioner under this section.
Compare: Patents Act 1949 s 17 (UK) Provisions for secrecy of certain inventions 25 (1) Where, either before or after the commencement of this Act, an application for a patent has been made in respect of an in- vention, and it appears to the Commissioner that the invention is one of a class notified to him by the Minister of Defence as relevant for defence purposes, or is in the opinion of the Com- missioner likely to be valuable for defence purposes, he may give directions for prohibiting or restricting the publication of information with respect to the invention, or the communica- tion of such information to any person or class of persons spe- cified in the directions; and while such directions are in force the application may, subject to the directions, proceed up to the acceptance of the complete specification, but the accept- ance shall not be advertised nor the specification published, and no patent shall be granted in pursuance of the application.
(2) Where the Commissioner gives any such directions as afore- said, he shall give notice of the application and of the direc- tions to the Minister of Defence, and thereupon the following provisions shall have effect, that is to say: (a) the Minister of Defence shall, upon receipt of the notice, consider whether the publication of the invention would 32 Reprinted as at 1 January 2011 Patents Act 1953 s 25 be prejudicial to the defence of New Zealand, and un- less a notice under paragraph (c) has previously been given by the Minister of Defence to the Commissioner, shall reconsider that question before the expiration of 9 months from the date of filing of the application for the patent and at least once in every subsequent year: for the purpose aforesaid, the Minister of Defence may, at any time after the complete specification has been ac- cepted or, with the consent of the applicant, at any time before the complete specification has been accepted, in- spect the application and any documents furnished to the Commissioner in connection therewith: if upon consideration of the invention at any time it ap- pears to the Minister of Defence that the publication of the invention would not, or would no longer, be preju- dicial to the defence of New Zealand, the Minister of Defence shall give notice to the Commissioner to that effect: on receipt of any such notice the Commissioner shall revoke the directions and may, subject to such condi- tions, if any, as he thinks fit, extend the time for doing anything required or authorised to be done by or under this Act in connection with the application, whether or not that time has previously expired.
(b) (c) (d) (3) Where a complete specification filed in pursuance of an appli- cation for a patent for an invention in respect of which direc- tions have been given under this section or under section 26 is accepted during the continuance in force of the directions, then— (a) if any use of the invention is made during the continu- ance in force of the directions by or on behalf of or to the order of a government department, the provisions of sections 55 to 58 shall apply in relation to that use as if the patent had been granted for the invention; and if it appears to the Minister of Defence that the applicant for the patent has suffered hardship by reason of the continuance in force of the directions, the Minister of Finance may make to him such payment (if any) by way of compensation as appears to him to be reasonable, (b) 33 s 26 Patents Act 1953 Reprinted as at 1 January 2011 having regard to the novelty and utility of the invention and the purpose for which it is designed, and to any other relevant circumstances.
(4) Where a patent is granted in pursuance of an application in respect of which directions have been given under this section or under section 26, no renewal fees shall be payable in respect of any period during which those directions were in force.
(b) (5) No person resident in New Zealand shall, except under the au- thority of a written permit granted by or on behalf of the Com- missioner, make or cause to be made any application outside New Zealand for the grant of a patent for an invention unless— an application for a patent for the same invention or (a) substantially the same invention has been made in New Zealand not less than 6 weeks before the application outside New Zealand; and either no directions have been given under subsection (1) or under section 26 in relation to the application in New Zealand, or all such directions have been revoked: provided that this subsection shall not apply in relation to an invention for which an application for protection has first been filed in a country outside New Zealand by a person resident outside New Zealand.
If any person fails to comply with any direction given under this section or makes or causes to be made an application for the grant of a patent in contravention of this section, he shall be guilty of an offence and shall be liable on conviction on in- dictment, to imprisonment for a term not exceeding 2 years or to a fine not exceeding 500 pounds, or to both such imprison- ment and such fine.
Compare: 1921–22 No 18 s 33; Patents Act 1949 s 18 (UK) (6) Inventions relating to atomic energy 26 (1) Where an application has been made to the Commissioner for the grant of a patent, and it appears to the Commissioner that the invention which is the subject matter of the application re- lates to the production or use of energy derived from the atomic nucleus or research into matters connected therewith he shall serve a notice in writing on the Minister of Defence to that effect, and may, notwithstanding anything in this Act or any 34 Reprinted as at 1 January 2011 Patents Act 1953 s 26 other Act, omit or delay the doing of anything which he would otherwise be required to do in relation to the application, and give directions for prohibiting or restricting the publication of information with respect to the subject matter of the applica- tion or the communication of that information to particular per- sons or classes of persons; and any person who contravenes any such direction commits an offence against this section.
(2) Where the Minister of Defence is notified as aforesaid, he shall forthwith consider whether the invention which is the subject matter of the application in question is of importance for pur- poses of defence, and may inspect all documents and infor- mation furnished to the Commissioner in connection with the application, and if he is satisfied either then or subsequently that the invention is not of importance for purposes of defence he shall serve a notice in writing on the Commissioner to that effect, and thereupon the Commissioner shall cease to exercise his powers under subsection (1) in relation to that application and shall forthwith revoke any directions given under those powers in relation thereto.
(3) Where any notice is given by or to the Commissioner under the foregoing provisions of this section in relation to any ap- plication, he shall serve a copy of the notice on the applicant.
(4) Where, on an application to the Commissioner for the grant of a patent, a notice has been served under subsection (1) and 6 months have elapsed from the date of the service of that notice without the service of a notice under subsection (2) in relation to that application, any person who has, before the date of the application, incurred expense or done work in connection with the discovery or development of the invention concerned shall be entitled to be paid such compensation in respect of that expense or work as the Minister of Defence may, with the approval of the Minister of Finance, determine, and the compensation shall not in any case be less than the amount of the expense reasonably so incurred, and the amount of that expense shall, in default of agreement between the Minister of Defence and that person, be settled by arbitration: provided that, if a notice is subsequently served by the Minister of Defence under subsection (2) in relation to the application, there shall be recoverable by the Minister of Defence as a debt 35 s 26 Patents Act 1953 Reprinted as at 1 January 2011 due to the Crown such part of the compensation paid to any person under this subsection in connection with the invention concerned as may be reasonable, having regard to the length of the period during which powers were exercised under subsec- tion (1) in relation to the application and all the other circum- stances of the case; and the amount to be so recovered shall, in default of agreement between the Minister of Defence and the said person, be settled by arbitration.
(6) (5) Where the Commissioner in the exercise of powers under sub- section (1) omits or delays the doing of anything or gives di- rections for prohibiting or restricting the publication or com- munication of information, he may, subject to such conditions, if any, as he thinks fit to impose, extend the time limited by or under this Act for doing any act where he is satisfied that an extension ought to be granted by reason of the exercise of the powers aforesaid.
The right of a person to apply for, or obtain, a patent in respect of an invention shall not be prejudiced by reason only of the fact that the invention has previously been communicated to the Minister of Defence under this section, and a patent in respect of an invention shall not be held to be invalid by reason only that the invention has been communicated as aforesaid.
The power of a government department and persons author- ised by a government department under section 55 shall in- clude power to make, use, exercise, or vend an invention for such purposes relating to the production or use of atomic en- ergy or research into matters connected therewith as the Min- ister of Defence thinks necessary or expedient, and any refer- ence in that section or in sections 56 and 57 to the services of the Crown shall be construed as including a reference to those purposes.
Every person who commits an offence against this section shall be liable on conviction on indictment, to imprisonment for a term not exceeding 2 years or to a fine not exceeding 500 pounds, or to both such imprisonment and such fine.

Compare: 1947 No 37 s 6; Patents Act 1949 s 106(3) (UK) (8) (7) 36 Reprinted as at 1 January 2011 Patents Act 1953 s 26D Treaty application Heading: inserted, on 1 December 1992, by section 7 of the Patents Amendment Act 1992 (1992 No 81).
26A Treaty application deemed to be application accompanied by complete specification For the purposes of this Act, a Treaty application shall be deemed to be an application for a patent for an invention ac- companied by a complete specification.

Section 26A: inserted, on 1 December 1992, by section 7 of the Patents Amendment Act 1992 (1992 No 81).
26B Description, claims, and drawings (1) The description, claims, and drawings (if any) contained in a Treaty application shall be deemed to be a complete specifica- tion for the purposes of this Act.
(2) Any indications, being indications referred to in Rule 13bis.3(a) of the Treaty regulations, that are contained in a reference to a deposited micro-organism,— (a) shall be deemed to form part of the description con- tained in an international application; and shall accordingly, pursuant to subsection (1), form part of the complete specification, even if such indications are contained in another document.
(b) Section 26B: inserted, on 1 December 1992, by section 7 of the Patents Amendment Act 1992 (1992 No 81).

26C International filing date A Treaty application shall be deemed to have been filed in New Zealand on its international filing date.

Section 26C: inserted, on 1 December 1992, by section 7 of the Patents Amendment Act 1992 (1992 No 81).
26D Commissioner to provide international filing date (1) Subject to subsections (2) and (3), where— (a) a request contained in an international application spe- cifies New Zealand as a designated State under Article 4(1)(ii) of the Patent Cooperation Treaty; and either— (b) 37 s 26E Patents Act 1953 Reprinted as at 1 January 2011 (i) (ii) the receiving Office has refused to accord the international application an international filing date under Article 11(1) of the Patent Cooper- ation Treaty or has declared that the international application is considered withdrawn; or the International Bureau has made a finding under Article 12(3) of the Patent Cooperation Treaty that the international application is con- sidered withdrawn; and (c) the Commissioner has decided under Article 25(2)(a) of the Patent Cooperation Treaty that the refusal or the declaration or the finding was the result of an error or omission on the part of the receiving Office or the Inter- national Bureau,— the Commissioner shall give the application an international filing date, which date shall be the date of receipt of the appli- cation by the receiving Office under Article 11(1) of the Patent Cooperation Treaty, and the provisions of this Act shall apply to the application accordingly.
(3) (2) Where, for the purposes of subsection (1), the date of receipt of the application by the receiving Office cannot be ascertained, the Commissioner may give the application an international filing date, and the provisions of this Act shall apply to the application accordingly.
This section shall not apply to an international application that has been filed in a receiving Office in a language other than the English language, unless a translation of that application into the English language, verified in accordance with regulations made under this Act, has been furnished to the Commissioner.

Section 26D: inserted, on 1 December 1992, by section 7 of the Patents Amendment Act 1992 (1992 No 81).
26E Amendments to documents forming part of complete specification (1) Where an English translation of a Treaty application has been filed with the Commissioner, or has been published under Art- icle 21 of the Patent Cooperation Treaty by the International Bureau, the description, claims, and any matter associated with the drawings, contained in the application, are deemed 38 Reprinted as at 1 January 2011 Patents Act 1953 s 26F for the purposes of this Act, to have been amended, on the day the translation was filed, by substituting the translated docu- ments for those originally filed.
(2) Where— (a) (b) a Treaty application has been amended under Article 19(1) of the Patent Cooperation Treaty; or a Treaty application has been amended under Article 34 of the Patent Cooperation Treaty, and New Zealand has been chosen by the applicant to be an elected State under Article 31(4)(a) of the Patent Cooperation Treaty within the prescribed time limit,— the description, claims, and drawings contained in that Treaty application shall be deemed, for the purposes of this Act, to have been amended on the day on which the amendment was made.
(3) Where a Treaty application has been rectified under Rule 91 of the Treaty regulations, the description, claims, and draw- ings contained in that Treaty application shall be deemed, for the purposes of this Act, to have been amended on the appli- cation’s international filing date.

Section 26E: inserted, on 1 December 1992, by section 7 of the Patents Amendment Act 1992 (1992 No 81).
26F Treaty application void A Treaty application shall be deemed to be void for the pur- poses of this Act where— (a) an applicant withdraws his or her international appli- cation, or withdraws the application in relation to New Zealand as a designated State; or subject to Article 25 of the Patent Cooperation Treaty, an international application is considered to be with- drawn pursuant to Article 12(3) or Article 14(1)(b) or Article 14(3)(a) or Article 14(4) of the Patent Cooper- ation Treaty; or subject to Article 25 of the Patent Cooperation Treaty, the designation of New Zealand as a designated State is considered to be withdrawn pursuant to Article 14(3)(b) of the Patent Cooperation Treaty; or (b) (c) 39 s 26G Patents Act 1953 Reprinted as at 1 January 2011 (d) (e) the applicant fails to fulfil the applicant’s obligations under Article 22(1) of the Patent Cooperation Treaty within the prescribed time limit; or the applicant fails to fulfil the applicant’s obligations under Article 39(1)(a) of the Patent Cooperation Treaty within the prescribed time limit.
Section 26F: inserted, on 1 December 1992, by section 7 of the Patents Amendment Act 1992 (1992 No 81).
26G Requirements for examination of Treaty application (1) Subject to the provisions of subsection (2), and notwithstand- ing section 26A, the Commissioner shall not exercise his or her powers under section 12 until— (a) the applicant has fulfilled the applicant’s obligations under Article 22(1) or Article 39(1) of the Patent Co- operation Treaty; and the prescribed time limit has expired; and where applicable, a translation of the international ap- plication into the English language has been filed with the Commissioner and verified in accordance with regu- lations made under this Act; and all documents required to be filed pursuant to this Act and any regulations made under this Act have been filed; and all fees required to be paid pursuant to this Act and any regulations made under this Act have been paid.
(b) (c) (d) (e) (2) Notwithstanding the provisions of subsection (1), the Com- missioner may, on the express request of the applicant, exer- cise his or her powers under section 12 at any time.

Section 26G: inserted, on 1 December 1992, by section 7 of the Patents Amendment Act 1992 (1992 No 81).
26H Publication of Treaty applications The publication of a Treaty application, pursuant to Article 21 of the Patent Cooperation Treaty, shall confer no rights or privileges on the applicant under this Act, and shall have no effect other than to confer upon the application the status of a published document for the purpose of any investigation under this Act.
40 Reprinted as at 1 January 2011 Patents Act 1953 s 27 27 (1) (2) (3) Section 26H: inserted, on 1 December 1992, by section 7 of the Patents Amendment Act 1992 (1992 No 81).
Grant, effect, and term of patent Grant and sealing of patent Subject to the provisions of this Act with respect to oppos- ition, and to any other power of the Commissioner to refuse the grant, a patent sealed with the seal of the Patent Office shall, if the prescribed request is made within the time allowed under this section, be granted to the applicant or applicants within that time or as soon as may be thereafter; and the date on which the patent is sealed shall be entered in the register of patents.
Subject to the following provisions of this Act with respect to patents of addition, a request under this section for the seal- ing of a patent shall be made not later than the expiration of 4 months from the date of the publication of the complete spe- cification: provided that— (a) where at the expiration of the said 4 months any pro- ceeding in relation to the application for the patent is pending in any court or before the Commissioner, the request may be made within the prescribed period after the final determination of that proceeding: (b) where the applicant or one of the applicants has died be- fore the expiration of the time within which under the provisions of this subsection the request could other- wise be made, the said request may be made at any time within 12 months after the date of the death or at such later time as the Commissioner may allow.
The period within which under subsection (2) a request for the sealing of a patent may be made may from time to time be extended by the Commissioner to such longer period as may be specified in an application made to him in that behalf, if the application is made and the prescribed fee paid within that longer period: provided that the first-mentioned period shall not be extended under this subsection by more than 6 months or such shorter period as may be prescribed.
41 s 28 Patents Act 1953 Reprinted as at 1 January 2011 (4) Where in any case the longest period for making a request for the sealing of a patent allowable in that case by or under the foregoing provisions of this section has been allowed, and it is proved to the satisfaction of the Commissioner that hardship would arise in connection with the prosecution by an appli- cant of an application for a patent in any country outside New Zealand unless that period is extended, that period may be ex- tended from time to time to such longer period as appears to the Commissioner to be necessary in order to prevent that hardship arising if an application in that behalf is made to him, and the prescribed fee is paid, within the first-mentioned period, or in the case of a second or subsequent application under this sub- section, within the period to which that period was extended on the last preceding application thereunder.
For the purposes of this section a proceeding shall be deemed to be pending so long as the time for any appeal therein (apart from any future extension of that time) has not expired, and a proceeding shall be deemed to be finally determined when the time for any appeal therein (apart from any such extension) has expired without the appeal being brought.
Compare: 1939 No 26 s 59; Patents Act 1949 s 19 (UK) (5) Amendment of patent granted to deceased applicant Where, at any time after a patent has been sealed in pursuance of an application under this Act, the Commissioner is satisfied that the person to whom the patent was granted had died, or (in the case of a body corporate) had ceased to exist, before the patent was sealed, he may amend the patent by substituting for the name of that person the name of the person to whom the patent ought to have been granted; and the patent shall have effect, and shall be deemed always to have had effect, accordingly.
Compare: Patents Act 1949 s 20 (UK) 28 42 Reprinted as at 1 January 2011 Patents Act 1953 s 30 Extent, effect, and form of patent 29 (1) A patent sealed with the seal of the Patent Office shall have the same effect as if it were sealed with the Seal of New Zealand, and shall have effect throughout New Zealand: provided that a patent may be assigned for any place in or part of New Zealand as effectually as if it were granted so as to extend to that place or part only.
Subject to the provisions of this Act and of subsection (3) of section 7 of the Crown Proceedings Act 1950, a patent shall have the same effect against the Crown as it has against a sub- ject.

(2) (3) A patent shall be in such form as may be prescribed.

(4) A patent shall be granted for 1 invention only; but it shall not be competent for any person in an action or other proceeding to take any objection to a patent on the ground that it has been granted for more than 1 invention.
Compare: 1921–22 No 18 s 16; Patents Act 1949 s 21 (UK) Section 29(1): amended, on 28 February 1977, by section 8 of the Seal of New Zealand Act 1977 (1977 No 1).

30 (1) (2) (3) Date and term of patent Every patent shall be dated with the date of filing of the com- plete specification: provided that no proceeding shall be taken in respect of an infringement committed before the date of the publication of the complete specification.

The date of every patent shall be entered in the register of patents.
The term of every patent shall be 20 years from the date of the patent.
(4) A patent shall cease to have effect, notwithstanding anything therein or in this Act, on the expiration of the period prescribed for the payment of any renewal fee if that fee is not paid within the prescribed period or within that period as extended under this section: provided that, where the period prescribed for the payment of a renewal fee expires before the date 4 months after the date of the sealing of the patent, the period for payment of the renewal 43 Patents Act 1953 Reprinted as at 1 January 2011 fee shall be extended to the date 4 months after the date of the sealing of the patent.
The period prescribed for the payment of any renewal fee (in- cluding any extension of the period under subsection (4)) shall be extended to such period, not being more than 6 months longer than the prescribed period, as may be specified in a re- quest made to the Commissioner if the request is made and the renewal fee and the prescribed additional fee are paid before the expiration of the period so specified.
Compare: 1921–22 No 18 ss 15, 19; 1939 No 26 s 60; Patents Act 1949 s 22 (UK) Section 30(3): replaced, on 1 January 1995, by section 4(1) of the Patents Amendment Act 1994 (1994 No 122).

Section 30(5): amended, on 1 January 1995, by section 4(2) of the Patents Amendment Act 1994 (1994 No 122).

Extension on ground of inadequate remuneration [Repealed] Section 31: repealed, on 1 January 1995, by section 5 of the Patents Amendment Act 1994 (1994 No 122).
Extension on ground of war loss [Repealed] Section 32: repealed, on 1 January 1995, by section 5 of the Patents Amendment Act 1994 (1994 No 122).

Extension on ground of war loss of licensee [Repealed] Section 33: repealed, on 1 January 1995, by section 5 of the Patents Amendment Act 1994 (1994 No 122).
Patents of addition Subject to the provisions of this section, where application is made for a patent in respect of any improvement in or modi- fication of an invention (in this Act referred to as the main invention) and the applicant also applies or has applied for a patent for that invention or is the patentee in respect thereof, the Commissioner may, if the applicant so requests, grant the patent for the improvement or modification as a patent of add- ition.
s 31 (5) 31 32 33 34 (1) 44 Reprinted as at 1 January 2011 Patents Act 1953 s 34 (2) Subject to the provisions of this section, where an invention, being an improvement in or modification of another invention, is the subject of an independent patent and the patentee in re- spect of that patent is also the patentee in respect of the patent for the main invention, the Commissioner may, if the patentee so requests, by order revoke the patent for the improvement or modification and grant to the patentee a patent of addition in respect thereof bearing the same date as the date of the patent so revoked.
(3) A patent shall not be granted as a patent of addition unless the date of filing of the complete specification was the same as or later than the date of filing of the complete specification in respect of the main invention.
(4) A patent of addition shall not be sealed before the sealing of the patent for the main invention; and if the period within which, but for this provision, a request for the sealing of a patent of addition could be made under section 27 expires before the period within which a request for the sealing of the patent for the main invention may be so made, the request for the sealing of the patent of addition may be made at any time within the last-mentioned period.
(5) A patent of addition shall be granted for a term equal to that of the patent for the main invention, or so much thereof as is unexpired, and shall remain in force during that term or until the previous cesser of the patent for the main invention and no longer: provided that— (a) (b) if the term of the patent for the main invention is ex- tended under the foregoing provisions of this Act, the term of the patent of addition may also be extended ac- cordingly; and if the patent for the main invention is revoked under this Act, the court or Commissioner, as the case may be, may order that the patent of addition shall become an independent patent for the remainder of the term of the patent for the main invention, and thereupon the patent shall continue in force as an independent patent accordingly.
45 s 35 Patents Act 1953 Reprinted as at 1 January 2011 (6) No renewal fees shall be repayable in respect of a patent of addition; but, if any such patent becomes an independent patent by virtue of an order under subsection (5), the same fees shall thereafter be payable, upon the same dates, as if the patent had been originally granted as an independent patent.
The grant of a patent of addition shall not be refused, and a patent granted as a patent of addition shall not be revoked or invalidated, on the ground only that the invention claimed in the complete specification does not involve any inventive step having regard to any publication or use of— (a) (7) the main invention described in the complete specifica- tion relating thereto; or any improvement in or modification of the main inven- tion described in the complete specification of a patent of addition to the patent for the main invention or of an application for such a patent of addition,— (b) and the validity of a patent of addition shall not be questioned on the ground that the invention ought to have been the subject of an independent patent.
(8) An appeal to the court shall lie from any decision of the Com- missioner under this section.
Compare: 1921–22 No 18 s 21; Patents Act 1949 s 26 (UK) Restoration of lapsed patents and patent applications Restoration of lapsed patents 35 (1) Where a patent has ceased to have effect by reason of a failure to pay any renewal fee within the prescribed period or within that period as extended under section 30, and the Commis- sioner is satisfied upon application that the failure was unin- tentional and that no undue delay has occurred in the making or prosecution of the application, he shall by order restore the patent and any patent of addition specified in the application which has ceased to have effect on the cesser of that patent.
(2) An application under this section may be made by the person who was the patentee or by his personal representative; and where the patent was held by 2 or more persons jointly, the 46 Reprinted as at 1 January 2011 Patents Act 1953 s 35 application may, with the leave of the Commissioner, be made by 1 or more of them without joining the others.
(4) (3) An application under this section shall contain a statement (to be verified in such manner as may be prescribed) fully set- ting out the circumstances which led to the failure to pay the renewal fee; and the Commissioner may require from the ap- plicant such further evidence as he may think necessary.
If after hearing the applicant (if the applicant so requires or the Commissioner thinks fit) the Commissioner is satisfied that a prima facie case has been made out for an order under this section, he shall advertise the application in the Journal; and within the prescribed period any person may give notice to the Commissioner of opposition thereto on either or both of the following grounds, that is to say,— (a) that the failure to pay the renewal fee was not uninten- tional; or that there has been undue delay in the making of the application.
(b) (5) (6) If notice of opposition is given within the period aforesaid, the Commissioner shall notify the applicant, and shall give to him and to the opponent an opportunity to be heard before he decides the case.
If no notice of opposition is given within the period aforesaid or if, in the case of opposition, the decision of the Commis- sioner is in favour of the applicant, the Commissioner shall, upon payment of any unpaid renewal fee and such additional fee as may be prescribed, make the order in accordance with the application.
(7) An order under this section for the restoration of a patent— (a) may be made subject to such conditions as the Com- missioner thinks fit, including in particular a condition requiring the registration in the register of patents of any matter in respect of which the provisions of this Act as to entries in that register have not been complied with; and shall contain or be subject to such provision as may be prescribed for the protection of persons who may have begun to avail themselves of the patented invention be- (b) 47 s 36 Patents Act 1953 Reprinted as at 1 January 2011 tween the date when the patent ceased to have effect and the date of the application under this section,— and if any condition of an order under this section is not com- plied with by the patentee, the Commissioner may, after giv- ing to the patentee an opportunity to be heard, revoke the order and give such directions consequential on the revocation as he thinks fit.
(8) An appeal to the court shall lie from any decision of the Com- missioner under this section.
Compare: 1921–22 No 18 s 22; Patents Act 1949 s 27 (UK) Restoration of applications where patent not sealed 36 (1) Where a patent has not been sealed by reason only that the prescribed request was not made within the time allowed for that purpose by or under section 27, then if the Commissioner is satisfied, upon application made by the applicant for the patent, that the failure to make the request was unintentional and that no undue delay has occurred in making the application he may order the patent to be sealed notwithstanding that the prescribed request was not made as aforesaid.
(3) (2) An application under this section shall contain a statement (to be verified in such manner as may be prescribed) fully setting out the circumstances which led to the failure to make the pre- scribed request; and the Commissioner may require from the applicant such further evidence as he may think necessary.
If the Commissioner (after hearing the applicant, if the appli- cant so requires or the Commissioner thinks fit) is satisfied that a prima facie case has been made out for an order under this section, he shall advertise the application in the Journal; and within the prescribed period any person may give notice to the Commissioner of opposition thereto on the ground that the failure to make the prescribed request was not unintentional or that undue delay has occurred in making the application.
If notice of opposition is given within the period aforesaid, the Commissioner shall notify the applicant and shall give to him and to the opponent an opportunity to be heard before he decides the case.
(4) 48 Reprinted as at 1 January 2011 Patents Act 1953 s 37 (5) If no notice of opposition is given within the period aforesaid, or if in the case of opposition the decision of the Commis- sioner is in favour of the applicant, the Commissioner shall, upon payment of the fee prescribed in respect of the making of the request for sealing and of such additional fee as may be prescribed, make the order in accordance with the application.
(6) An order under this section for the sealing of a patent shall con- tain or be subject to such provision as may be prescribed for the protection of persons who may have begun to avail them- selves of the invention between the date when the time allowed by or under section 27 for making the prescribed request ex- pired and the date of the application under this section.

(7) An appeal to the court shall lie from any decision of the Com- missioner under this section.
Compare: 1921–22 No 18 s 22; Patents Act 1949 s 28 (UK) 37 Restoration of application where complete specification not accepted (1) Where an applicant has not complied with all the requirements imposed on him by or under this Act within the period pre- scribed by section 19, or within any extension of the period granted by the Commissioner under that section or under sec- tion 93, and the application has accordingly become void, the applicant may apply to the Commissioner in the prescribed manner for an order restoring the application and extending the period for complying with the requirements imposed on the applicant by or under this Act to such date as may be spe- cified in that behalf in the order.
Every such application shall contain a statement of the circum- stances which led to the failure of the applicant to comply with the requirements imposed on him by or under this Act.

If it appears from that statement that any omission on the part of the applicant was unintentional and that no undue delay has occurred in the making of the application, the Commissioner shall advertise the application and within such period as may be prescribed any person may give notice of opposition at the Patent Office.
(3) (2) 49 s 38 Patents Act 1953 Reprinted as at 1 January 2011 (4) Where any such notice is given the Commissioner shall notify the applicant thereof.

(5) After the expiration of the prescribed period the Commissioner shall hear the case, and issue an order which shall either— (a) restore the application and extend the period for com- plying with the requirements imposed on the applicant by or under this Act to a period to be specified in that behalf in the order; or dismiss the application.
(b) (6) An order under this section shall contain or be subject to such provisions as may be prescribed for the protection of persons who may have availed themselves of the invention the sub- ject of the application for a patent between the date when the period prescribed by section 19, and every extension of that period granted under that section or under section 93, for com- plying with all the requirements imposed on the applicant by or under this Act expired and the date of the application under this section.
(7) An appeal to the court shall lie from the decision of the Com- missioner under this section.
Compare: 1924 No 40 s 4 Amendment of specifications Amendment of specification with leave of Commissioner Subject to the provisions of section 40, the Commissioner may, upon application made under this section by a patentee, or by an applicant for a patent at any time after the acceptance of the complete specification, allow the complete specification to be amended subject to such conditions, if any, as the Commis- sioner thinks fit: provided that the Commissioner shall not allow a specification to be amended under this section upon an application made while any action before the court for infringement of the patent or any proceeding before the court for the revocation of the patent is pending.
Every application for leave to amend a specification under this section shall state the nature of the proposed amendment and 38 (1) (2) 50 Reprinted as at 1 January 2011 Patents Act 1953 s 39 shall give full particulars of the reasons for which the applica- tion is made.
(3) Any application for leave to amend a specification under this section, and the nature of the proposed amendment, shall be advertised in the prescribed manner: provided that where the application is made before the publi- cation of the complete specification, the Commissioner may, if he thinks fit, dispense with advertisement under this subsec- tion or direct that advertisement shall be postponed until the complete specification is published.
(4) Within the prescribed period after the advertisement of an ap- plication under this section, any person may give notice to the Commissioner of opposition thereto; and where such a notice is given within the period aforesaid, the Commissioner shall notify the person by whom the application under this section is made and shall give to that person and to the opponent an opportunity to be heard before he decides the case.
(5) An appeal to the court shall lie from any decision of the Com- (6) 39 (1) missioner under this section.
This section shall not apply in relation to any amendment of a specification effected in proceedings in opposition to the grant of a patent or on a reference to the Commissioner of a dispute as to the infringement or validity of a claim, or effected in pur- suance of any provision of this Act authorising the Commis- sioner to direct a reference to another specification or patent to be inserted, or to refuse to grant a patent, or to revoke a patent, unless the specification is amended to his satisfaction.
Compare: 1921–22 No 18 s 23; Patents Act 1949 s 29 (UK) Amendment of specification with leave of court In any action for infringement of a patent or any proceeding before the court for the revocation of a patent, the court may, subject to the provisions of section 40, by order allow the pa- tentee to amend his complete specification in such manner and subject to such terms as to costs, advertisements, or otherwise, as the court may think fit; and if in any such proceedings for revocation the court decides that the patent is invalid, the court may allow the specification to be amended under this section instead of revoking the patent.
51 s 40 Patents Act 1953 Reprinted as at 1 January 2011 (2) Where an application for an order under this section is made to the court, the applicant shall give notice of the application to the Commissioner, and the Commissioner shall be entitled to appear and be heard, and shall appear if so directed by the court.
Compare: 1921–22 No 18 s 24; Patents Act 1949 s 30 (UK) 40 Supplementary provisions as to amendment of specification (1) After the acceptance of a complete specification, no amend- ment thereof shall be effected except by way of disclaimer, correction, or explanation, and no amendment thereof shall be allowed, except for the purpose of correcting an obvious mistake, the effect of which would be that the specification as amended would claim or describe matter not in substance dis- closed in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.
(2) Where, after the date of the publication of a complete specifi- cation, any amendment of the specification is allowed or ap- proved by the Commissioner or the court, the right of the pa- tentee or applicant to make the amendment shall not be called in question except on the ground of fraud; and the amendment shall in all courts and for all purposes be deemed to form part of the specification: provided that in construing the specification as amended refer- ence may be made to the specification as originally published.
(3) Where, after the date of the publication of a complete specifi- cation, any amendment of the specification is allowed or ap- proved as aforesaid, the fact that the specification has been amended shall be advertised in the Journal.
Compare: 1921–22 No 18 ss 23(6), 24(1); Patents Act 1949 s 31 (UK) 52 Reprinted as at 1 January 2011 Patents Act 1953 s 41 Revocation and surrender of patents 41 (1) Revocation of patent by court Subject to the provisions of this Act, a patent may, on the ap- plication of any person interested, be revoked by the court on any of the following grounds, that is to say,— (a) that the invention, so far as claimed in any claim of the complete specification, was claimed in a valid claim of earlier priority date contained in the complete specifi- cation of another patent granted in New Zealand: that the patent was granted on the application of a per- son not entitled under the provisions of this Act to apply therefor: that the patent was obtained in contravention of the rights of the person who makes the application to the court or any person under or through whom he claims: that the subject of any claim of the complete specifica- tion is not an invention within the meaning of this Act: that the invention, so far as claimed in any claim of the complete specification, is not new having regard to what was known or used before the priority date of the claim in New Zealand: that the invention, so far as claimed in any claim of the complete specification, is obvious and does not involve any inventive step having regard to what was known or used before the priority date of the claim in New Zealand: that the invention, so far as claimed in any claim of the complete specification, is not useful: that the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed, or does not disclose the best method of performing it which was known to the applicant for the patent and for which he was entitled to claim pro- tection: that the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of the complete specification is not fairly based on the matter disclosed in the specification: (b) (c) (d) (e) (f) (g) (h) (i) 53 s 41
 Patents Act 1953 Reprinted as at 1 January 2011 (2) (j) (k) (l) that the patent was obtained on a false suggestion or representation: [Repealed] that the invention, so far as claimed in any claim of the complete specification, was secretly used in New Zealand, otherwise than as mentioned in subsection (2), before the priority date of that claim: that the patent has been granted contrary to law.
(m) For the purposes of paragraph (l) of subsection (1), no account shall be taken of any use of the invention— (a) for the purpose of reasonable trial or experiment only; or by a government department or any person authorised by a government department, in consequence of the ap- plicant for the patent or any person from whom he de- rives title having communicated or disclosed the inven- tion directly or indirectly to a government department or person authorised as aforesaid; or by any other person, in consequence of the applicant for the patent or any person from whom he derives title having communicated or disclosed the invention, and without the consent or acquiescence of the applicant or of any person from whom he derives title,— (b) (c) and for the purposes of paragraph (e) or paragraph (f) of the said subsection (1) no account shall be taken of any secret use.
(3) Without prejudice to the provisions of subsection (1), a patent may be revoked by the court,— (a) on the application of a government department, if the court is satisfied that the patentee has without reason- able cause failed to comply with a request of the depart- ment to make, use, or exercise the patented invention for the services of the Crown upon reasonable terms; or on the application, with the written consent of the At- torney-General, of any person not otherwise entitled to apply under this section.
(b) Every ground on which a patent may be revoked shall be avail- able as a ground of defence in any proceeding for the infringe- ment of the patent.

Compare: 1921–22 No 18 s 27; 1939 No 26 s 61; Patents Act 1949 s 32 (UK) (4) 54 Reprinted as at 1 January 2011 Patents Act 1953 s 43 Section 41(1)(k): repealed, on 1 January 1995, by section 6 of the Patents Amendment Act 1994 (1994 No 122).
Revocation of patent by Commissioner 42 (1) At any time within 12 months after the sealing of a patent, any person interested who did not oppose the grant of the patent may apply to the Commissioner for an order revoking the patent on any 1 or more of the grounds upon which the grant of the patent could have been opposed: provided that when an action for infringement, or proceedings for the revocation, of a patent are pending in any court, an application to the Commissioner under this section shall not be made except with the leave of the court.
(3) (2) Where an application is made under this section, the Commis- sioner shall notify the patentee and shall give to the applicant and the patentee an opportunity to be heard before deciding the case.
If on an application under this section the Commissioner is satisfied that any of the grounds aforesaid are established, he may by order direct that the patent shall be revoked either un- conditionally or unless within such time as may be specified in the order the complete specification is amended to his sat- isfaction: provided that the Commissioner shall not make an order for the unconditional revocation of a patent under this section un- less the circumstances are such as would have justified him in refusing to grant the patent in proceedings under section 21.
(4) An appeal to the court shall lie from any decision of the Com- missioner under this section.

Compare: 1921–22 No 18 s 28; 1939 No 26 s 62; Patents Act 1949 s 33 (UK) Surrender of patent 43 (1) A patentee may at any time by notice given to the Commis- sioner offer to surrender his patent.
(2) Where such an offer is made, the Commissioner shall adver- tise the offer in the prescribed manner; and within the pre- scribed period after such advertisement any person interested may give notice to the Commissioner of opposition to the sur- render.

55 s 44 Patents Act 1953 Reprinted as at 1 January 2011 (3) Where any such notice of opposition is duly given, the Com- (4) missioner shall notify the patentee.
If the Commissioner (after hearing the patentee and any oppo- nent, if desirous of being heard) is satisfied that the patent may properly be surrendered, he may accept the offer and by order revoke the patent.

(5) An appeal to the court shall lie from any decision of the Com- missioner under this section.
Compare: 1921–22 No 18 s 28(3); Patents Act 1949 s 34 (UK) Voluntary endorsement of patent Endorsement of patent “licences of right” 44 (1) At any time after the sealing of a patent the patentee may apply to the Commissioner for the patent to be endorsed with the words “licences of right”; and where such an application is made, the Commissioner shall notify the application to any person entered on the register as entitled to an interest in the patent, and if satisfied, after giving any such person an oppor- tunity to be heard, that the patentee is not precluded by contract from granting licences under the patent, cause the patent to be endorsed accordingly.
(2) Where a patent is endorsed under this section— (a) (b) (c) any person shall, at any time thereafter, be entitled as of right to a licence under the patent upon such terms as may, in default of agreement, be settled by the Commis- sioner on the application of the patentee or the person requiring the licence: the Commissioner may, on the application of the holder of any licence granted under the patent before the en- dorsement, order the licence to be exchanged for a li- cence to be granted by virtue of the endorsement upon terms to be settled as aforesaid: if in proceedings for infringement of the patent (other- wise than by the importation of goods) the defendant undertakes to take a licence upon terms to be settled by the Commissioner as aforesaid, no injunction shall be granted against him, and the amount (if any) recover- able against him by way of damages shall not exceed 56 Reprinted as at 1 January 2011 Patents Act 1953 s 44 (3) (d) double the amount which would have been payable by him as licensee if such a licence had been granted be- fore the earliest infringement: the renewal fees payable in respect of the patent after the date of the endorsement shall be one-half of the renewal fees which would be payable if the patent were not so endorsed.
The licensee under any licence granted by virtue of the en- dorsement of a patent under this section shall (unless, in the case of a licence the terms of which are settled by agreement, the licence otherwise expressly provides) be entitled to call upon the patentee to take proceedings to prevent any infringe- ment of the patent; and if the patentee refuses or neglects to do so within 2 months after being so called upon, the licensee may institute proceedings for the infringement in his own name as if he were patentee, making the patentee a defendant: provided that a patentee so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.
(4) An application for the endorsement of a patent under this sec- tion shall contain a statement (to be verified in such manner as may be prescribed) that the patentee is not precluded by con- tract from granting licences under the patent; and the Commis- sioner may require from the applicant such further evidence as he may think necessary.
(5) An application made under this section for the endorsement of a patent of addition shall be treated as an application for the endorsement of the patent for the main invention also, and an application made under this section for the endorsement of a patent in respect of which a patent of addition is in force shall be treated as an application for the endorsement of the patent of addition also; and where a patent of addition is granted in respect of a patent already endorsed under this section, the patent of addition shall also be so endorsed.
(6) All endorsements of patents under this section shall be entered in the register of patents and shall be published in the Journal and in such other manner as the Commissioner thinks desirable for bringing the endorsement to the notice of manufacturers.

57 s 45 Patents Act 1953 Reprinted as at 1 January 2011 (7) An appeal to the court shall lie from any decision of the Com- missioner under this section.
Compare: 1921–22 No 18 s 26; Patents Act 1949 s 35 (UK) Cancellation of endorsement under section 44 45 (1) At any time after a patent has been endorsed under section 44, the patentee may apply to the Commissioner for cancellation of the endorsement; and where such an application is made and the balance paid of all renewal fees which would have been payable if the patent has not been endorsed, the Commis- sioner may, if satisfied that there is no existing licence under the patent or that all licensees under the patent consent to the application, cancel the endorsement accordingly.
(2) Within the prescribed period after a patent has been endorsed as aforesaid, any person who claims that the patentee is, and was at the time of the endorsement, precluded by a contract in which the claimant is interested from granting licences under the patent may apply to the Commissioner for cancellation of the endorsement.
(3) Where the Commissioner is satisfied, on application made under subsection (2), that the patentee is and was precluded as aforesaid, he shall cancel the endorsement; and thereupon the patentee shall be liable to pay, within such period as may be prescribed, a sum equal to the balance of all renewal fees which would have been payable if the patent had not been endorsed, and if that sum is not paid within that period the patent shall cease to have effect at the expiration of that period.
(5) (4) Where the endorsement of a patent is cancelled under this sec- tion, the rights and liabilities of the patentee shall thereafter be the same as if the endorsement had not been made.
The Commissioner shall advertise in the prescribed manner any application made to him under this section; and within the prescribed period after such advertisement,— (a) in the case of an application under subsection (1), any person interested; and in the case of an application under subsection (2), the patentee,— (b) 58 Reprinted as at 1 January 2011 Patents Act 1953 s 46 may give notice to the Commissioner of opposition to the can- cellation.
(6) Where any such notice of opposition is given, the Commis- sioner shall notify the applicant, and shall give to the applicant and the opponent an opportunity to be heard before deciding the case.
(7) An application under this section for the cancellation of the endorsement of a patent of addition shall be treated as an ap- plication for the cancellation of the endorsement of the patent for the main invention also, and an application made under this section for the cancellation of the endorsement of a patent in respect of which a patent of addition is in force shall be treated as an application for the cancellation of the endorsement of the patent of addition also.
(8) An appeal to the court shall lie from any decision of the Com- missioner under this section.

Compare: 1921–22 No 18 s 26(5); Patents Act 1949 s 36 (UK) Compulsory licences, etc (2) Compulsory licence 46 (1) At any time after the expiration of 3 years from the date of the sealing of a patent or 4 years from the date of the patent, whichever is the later, any person interested may apply to the court for the grant of a licence under the patent upon any of the grounds specified in subsection (2).
The grounds upon which a licence may be granted under this section are that a market for the patented invention is not being supplied, or is not being supplied on reasonable terms, in New Zealand.

Subject to subsections (4), (5), (6), and (7), if the court is sat- isfied that either of the grounds referred to in subsection (2) are established, the court may make an order for the grant of a licence in accordance with the application upon such terms as the court thinks fit.
(3) (4) A licence granted under this section— (a) is not exclusive: 59 s 47 Patents Act 1953 Reprinted as at 1 January 2011 (b) must not be assigned otherwise than in connection with the goodwill of the business in which the patented in- vention is used: is limited to the supply of the patented invention pre- dominantly in New Zealand.
(c) (5) Any licence granted under this section may, on the application of any interested party, be terminated by the court, where the court is satisfied that the grounds on which the licence was granted have ceased to exist.
(6) Where a licence is granted under this section to any person, that person shall pay such remuneration to the patentee as may be agreed, or as may be determined by a method agreed, be- tween that person and the patentee or, in default of agreement, as is determined by the court on the application of that person or the patentee.
(7) No licence shall be granted under this section unless the person applying for the licence, having taken all reasonable steps to do so, has been unable to obtain a licence, or to obtain a licence on reasonable terms, from the patentee.

(8) No licence shall be granted under this section in respect of a patent relating to an integrated circuit.

Section 46: replaced, on 1 January 1995, by section 7 of the Patents Amendment Act 1994 (1994 No 122).
Provisions as to licences under section 46 [Repealed] Section 47: repealed, on 1 January 1995, by section 8 of the Patents Amendment Act 1994 (1994 No 122).

Exercise of powers on applications under section 46 The powers of the court on an application under section 46 shall be exercised with a view to securing that the inventor or other person beneficially entitled to a patent shall receive reasonable remuneration having regard to the nature of the in- vention.
Section 48: replaced, on 1 January 1995, by section 9 of the Patents Amendment Act 1994 (1994 No 122).

47 48 60 Reprinted as at 1 January 2011 Patents Act 1953 s 54 49 50 51 52 53 Endorsement, etc, on application of Crown [Repealed] Section 49: Amendment Act 1994 (1994 No 122).

repealed, on 1 January 1995, by section 10(1) of the Patents Revocation of patent [Repealed] Section 50: Amendment Act 1994 (1994 No 122).
repealed, on 1 January 1995, by section 10(1) of the Patents Inventions relating to food or medicine, etc [Repealed] Section 51: Amendment Act 1992 (1992 No 81).

repealed, on 19 August 1992, by section 8(1) of the Patents Procedure on application under sections 46 to 50 [Repealed] Section 52: Amendment Act 1994 (1994 No 122).

repealed, on 1 January 1995, by section 10(2) of the Patents Appeal and references to arbitrator [Repealed] Section 53: Amendment Act 1994 (1994 No 122).
repealed, on 1 January 1995, by section 10(2) of the Patents Supplementary provisions 54 (1) Any order under this Act for the grant of a licence shall, with- out prejudice to any other method of enforcement, have effect as if it were a deed, executed by the patentee and all other ne- cessary parties, granting a licence in accordance with the order.
[Repealed] (2) (3) No order shall be made in pursuance of any application under section 46 which would be at variance with any treaty, conven- tion, arrangement, or engagement applying to New Zealand and any convention country.

Compare: 1921–22 No 18 s 30; Patents Act 1949 s 45 (UK) Section 54(2): repealed, on 1 January 1995, by section 11(1) of the Patents Amendment Act 1994 (1994 No 122).

Section 54(3): amended, on 1 January 1995, by section 11(2) of the Patents Amendment Act 1994 (1994 No 122).
61 s 55 55 (1) (2) Patents Act 1953 Reprinted as at 1 January 2011 Use of patented inventions for services of the Crown Use of patented inventions for services of the Crown Subject to sections 58A to 58C, but notwithstanding any other provision of this Act, any government department, and any person authorised in writing by a government department, may make, use, exercise, and vend any patented invention for the services of the Crown and anything done by virtue of this sub- section shall not amount to an infringement of the patent con- cerned.
For the purposes of this section and section 56,— (a) any use of an invention for the supply to the Govern- ment of any country outside New Zealand, in pursuance of any agreement or arrangement between the Govern- ment of New Zealand and the Government of that coun- try, of articles required for the defence of that country shall be deemed to be a use of the invention for the ser- vices of the Crown: the power of a government department or a person au- thorised by a government department under this section to make, use, exercise, and vend a patented invention shall include power to sell to any person any articles made in the exercise of the powers conferred by this section that are no longer required for the purpose for which they were made: the power of a government department or a person au- thorised by a government department under this section to vend a patented invention shall not, in the case of a patent relating to an integrated circuit, extend to sale of the invention to the public.
(b) (c) (3) Where the Governor-General, by Order in Council, declares that the use of any patented invention by any person or by any class of persons engaged in a particular industry is necessary or desirable to enable full benefit to be derived by the members of the public in New Zealand of any enterprise or undertak- ing in which the Crown or any government department has a complete or almost complete monopoly, any such use of the invention or inventions shall for the purposes of this section 62 Reprinted as at 1 January 2011 Patents Act 1953 s 56 (4) 56 (1) (2) (3) (4) and sections 56 and 57 be deemed to be a use for the services of the Crown.
The purchaser of any articles sold in the exercise of powers conferred by this section, and any person claiming through the purchaser, shall have power to deal with them in the same manner as if the patent were held on behalf of the Crown.

Section 55: Amendment Act 1994 (1994 No 122).
replaced, on 1 January 1995, by section 12 of the Patents Rights of third parties in respect of Crown use In relation to any use of a patented invention, or an invention in respect of which an application for a patent is pending, made for the services of the Crown— (a) by a government department or a person authorised by a government department under section 55; or by the patentee or applicant for the patent to the order of a government department,— (b) the provisions of any licence, assignment, or agreement made, whether before or after the commencement of this Act, be- tween the patentee or applicant for the patent, or any person who derives title from him or from whom he derives title, and any person other than a government department shall, subject to sections 58A and 58C, be of no effect so far as those provi- sions restrict or regulate the use of the invention, or any model, document, or information, relating thereto, or provide for mak- ing of payments in respect of any such use, or calculated by reference thereto; and the reproduction or publication of any model or document in connection with the said use shall not be deemed to be an infringement of any copyright subsisting in the model or document.
[Repealed] [Repealed] [Repealed] Compare: 1921–22 No 18 s 32(1); 1943 No 6 s 4; Patents Act 1949 s 47 (UK) Section 56(1): amended, on 1 January 1995, by section 13(1) of the Patents Amendment Act 1994 (1994 No 122).

Section 56(2): repealed, on 1 January 1995, by section 13(2) of the Patents Amendment Act 1994 (1994 No 122).

Section 56(3): repealed, on 1 January 1995, by section 13(2) of the Patents Amendment Act 1994 (1994 No 122).
63 s 57 Patents Act 1953 Reprinted as at 1 January 2011 Section 56(4): repealed, on 1 January 1995, by section 13(2) of the Patents Amendment Act 1994 (1994 No 122).
Reference of disputes as to Crown use 57 (1) Any dispute as to the exercise by a government department or a person authorised by a government department of the powers conferred by section 55, or as to the terms for the use of an invention for the services of the Crown thereunder may be re- ferred to the court by either party to the dispute in such manner as may be prescribed by rules of the court.
In any proceedings under this section to which a government department is a party, the department may,— (a) (2) if the patentee is a party to the proceedings, apply for revocation of the patent upon any ground upon which a patent may be revoked under section 41; in any case, put in issue the validity of the patent without applying for its revocation.
(b) In determining any dispute referred to the court under this sec- tion, the court shall have regard to— (a) any benefit or compensation that the patentee of the patented invention may have received, or may be en- titled to receive, directly or indirectly from any govern- ment department or person authorised by a government department in respect of the invention in question: the need to ensure that the patentee shall receive rea- sonable remuneration having regard to the nature of the patented invention.
(b) In any proceedings under this section, the court may at any time order the whole proceedings or any question or issue of fact arising therein to be referred to a special or official referee or an arbitrator on such terms as the court may direct; and ref- erences to the court in the foregoing provisions of this section shall be construed accordingly.

Section 57: Amendment Act 1994 (1994 No 122).
replaced, on 1 January 1995, by section 14 of the Patents Special provisions as to Crown use during emergency Subject to sections 58A to 58C, the powers exercisable in re- lation to an invention by a government department or a person (3) (4) 58 64 Reprinted as at 1 January 2011 Patents Act 1953 s 58A authorised by a government department under section 55, shall include power to make, use, exercise, and vend the patented invention for any purpose which appears to the department ne- cessary or expedient— (a) to avoid prejudice to the security or defence of New Zealand; or to assist in the exercise of powers and the implemen- tation of civil defence emergency management during a state of emergency declared under the Civil Defence Emergency Management Act 2002.
(b) Section 58: Amendment Act 1994 (1994 No 122).

replaced, on 1 January 1995, by section 15 of the Patents Section 58(b): replaced, on 1 December 2002, by section 117 of the Civil Defence Emergency Management Act 2002 (2002 No 33).
58A Nature and scope of rights under section 55 (1) is not exclusive: The right to use a patented invention under section 55— (a) (b) must not be assigned otherwise than in connection with the goodwill of the business in which the patented in- vention is used: is, notwithstanding subsection (2)(a) of that section, limited to the supply of the patented invention predom- inantly in New Zealand by a government department or a person authorised by a government department under that section.
(c) (2) (3) The right to use a patented invention under section 55 may, on the application of any interested party, be terminated by the court, where the court is satisfied that the circumstances that gave rise to the right to use the patented invention have ceased to exist and are unlikely to recur.
Except in a case to which section 58 applies, the right to use a patented invention under section 55 is subject to the govern- ment department or person authorised by a government depart- ment under section 55 having first taken all reasonable steps to obtain the consent of the patentee to the use of the patented in- vention on reasonable terms and conditions, and having failed to obtain such consent within a reasonable period of time.
Section 58A: inserted, on 1 January 1995, by section 15 of the Patents Amendment Act 1994 (1994 No 122).
65 s 58B Patents Act 1953 Reprinted as at 1 January 2011 58B Duty to inform owner (1) Where any use of a patented invention is made by or with the authority of a government department under section 55, the department shall, as soon as practicable after the use of the patented invention has begun, notify and furnish the patentee with such information as to the extent of the use as the patentee may from time to time require.
(2) Nothing in subsection (1) requires the government department to notify or disclose information to the patentee if to do so would, or might reasonably be expected to, prejudice the se- curity or defence of New Zealand.

Section 58B: inserted, on 1 January 1995, by section 15 of the Patents Amendment Act 1994 (1994 No 122).
58C Patentee entitled to remuneration Where an act is done under section 55, the Crown shall pay such remuneration to the patentee as may be agreed, or as may be determined by a method agreed, between the Crown and the patentee or as may, in default of agreement, be determined by the court under section 57.

Section 58C: inserted, on 1 January 1995, by section 15 of the Patents Amendment Act 1994 (1994 No 122).
Anticipation, etc Previous publication 59 (1) An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only that the in- vention was published in New Zealand— (a) in a specification filed in pursuance of an application for a patent made in New Zealand and dated more than 50 years before the date of filing of the first-mentioned specification; or in a specification describing the invention for the pur- poses of an application for protection in any country outside New Zealand made more than 50 years before that date; or in any abridgment of or extract from any such speci- fication published under the authority of the Commis- (b) (c) 66 Reprinted as at 1 January 2011 Patents Act 1953 s 59 (2) sioner or of the Government of any country outside New Zealand.
Subject as hereinafter provided, an invention claimed in a complete specification shall not be deemed to have been anticipated by reason only that the invention was published before the priority date of the relevant claim of the specifica- tion, if the patentee or applicant for the patent proves— (a) that the matter published was obtained from him or (where he himself is not the true and first inventor) from any person from whom he derives title, and was pub- lished without his consent or the consent of any such person; and (b) where the patentee or applicant for the patent or any per- son from whom he derives title learned of the publica- tion before the date of the application for the patent or (in the case of a convention application) before the date of the application for protection in a convention coun- try, that the application or the application in a conven- tion country, as the case may be, was made as soon as reasonably practicable thereafter: provided that this subsection shall not apply if the invention was before the priority date of the claim commercially worked in New Zealand, otherwise than for the purpose of reasonable trial, either by the patentee or applicant for the patent or any person from whom he derives title or by any other person with the consent of the patentee or applicant for the patent or any person from whom he derives title.
(3) Where a complete specification is filed in pursuance of an ap- plication for a patent made by a person being the true and first inventor or deriving title from him, an invention claimed in that specification shall not be deemed to have been anticipated by reason only of any other application for a patent in respect of the same invention, made in contravention of the rights of that person, or by reason only that after the date of filing of that other application the invention was used or published, without the consent of that person, by the applicant in respect of that other application, or by any other person in consequence of any disclosure of the invention by that applicant.
67 s 60 Patents Act 1953 Reprinted as at 1 January 2011 (4) Notwithstanding anything in this Act, the Commissioner shall not refuse to accept a complete specification or to grant a patent, and a patent shall not be revoked or invalidated, by reason only of any circumstances which, by virtue of this sec- tion, do not constitute an anticipation of the invention claimed in the specification.
Compare: 1921–22 No 18 s 46; Patents Act 1949 s 50 (UK) Previous communication, display, or working 60 (1) An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only of the commu- nication of the invention to a government department or to any person authorised by a government department to investigate the invention or its merits, or of anything done, in consequence of such a communication, for the purpose of the investigation.
(2) An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only of— (a) the display of the invention with the consent of the true and first inventor at an international or industrial exhib- ition declared as such by the Commissioner by notice in the Journal (whether the exhibition is held in New Zealand or elsewhere), or the use thereof with the con- sent of the true and first inventor for the purposes of such an exhibition in the place where it is held; or the publication of any description of the invention in consequence of the display or use of the invention at any such exhibition as aforesaid; or the use of the invention, after it has been displayed or used at any such exhibition as aforesaid and during the period of the exhibition, by any person without the con- sent of the true and first inventor; or the description of the invention in a paper read by the true and first inventor before a learned society or pub- lished with his consent in the transactions of such a so- ciety,— (b) (c) (d) if the application for the patent is made by the true and first inventor or a person deriving title from him not later than 6 months after the opening of the exhibition or the reading or publication of the paper, as the case may be.
68 Reprinted as at 1 January 2011 Patents Act 1953 s 61 (3) An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only that, at any time within 1 year before the priority date of the relevant claim of the specification, the invention was publicly worked in New Zealand— (a) by the patentee or applicant for the patent or any person from whom he derives title; or by any other person with the consent of the patentee or applicant for the patent or any person from whom he derives title,— (b) if the working was effected for the purpose of reasonable trial only and if it was reasonably necessary, having regard to the nature of the invention, that the working for that purpose should be effected in public.
(4) Notwithstanding anything in this Act, the Commissioner shall not refuse to accept a complete specification or to grant a patent, and a patent shall not be revoked or invalidated, by reason only of any circumstances which, by virtue of this sec- tion, do not constitute an anticipation of the invention claimed in the specification.

Compare: 1921–22 No 18 ss 33(5), 50; Patents Act 1949 s 51 (UK) Section 60(2)(a): amended, on 2 September 1996, by section 4 of the Patents Amendment Act 1996 (1996 No 139).
Section 60(2)(a): amended, on 12 November 1980, by section 5(3) of the Shop Trading Hours Amendment Act 1980 (1980 No 36).
61 Use and publication after provisional specification or foreign application (1) Where a complete specification is filed or proceeded with in pursuance of an application which was accompanied by a pro- visional specification or by a specification treated by virtue of a direction under subsection (4) of section 9 as a provisional specification, then, notwithstanding anything in this Act, the Commissioner shall not refuse to grant the patent, and the patent shall not be revoked or invalidated by reason only that any matter described in the provisional specification or in the specification treated as aforesaid as a provisional specification was used or published at any time after the date of filing of that specification.
69 s 62 Patents Act 1953 Reprinted as at 1 January 2011 (2) Where a complete specification is filed in pursuance of a convention application, then, notwithstanding anything in this Act, the Commissioner shall not refuse to grant the patent, and the patent shall not be revoked or invalidated by reason only that any matter disclosed in any application for protection in a convention country upon which the convention application is founded was used or published at any time after the date of that application for protection.
Compare: 1939 No 26 ss 55(6), 56; Patents Act 1949 s 52 (UK) (c) (b) Priority date in case of obtaining Where an application is made for a patent for an invention which has been claimed in a complete specification filed in pursuance of any other such application, then, if— (a) the Commissioner has refused to grant a patent in pur- suance of that other application on the ground specified in paragraph (a) of subsection (1) of section 21; or a patent granted in pursuance of that other application has been revoked by the court or the Commissioner on the ground specified in paragraph (a) of subsection (1) of section 21 or paragraph (c) of subsection (1) of sec- tion 41; or the complete specification filed in pursuance of the said other application has, in proceedings under section 21 or section 42, been amended by the exclusion of the claim relating to the said invention in consequence of a finding by the Commissioner that the invention was obtained by the applicant or patentee from any other person,— the Commissioner may direct that the first-mentioned applica- tion and any specification filed in pursuance thereof shall be deemed, for the purposes of the provisions of this Act relat- ing to the priority date of claims of complete specifications, to have been filed on the date on which the corresponding docu- ment was or was deemed to have been filed in the proceedings upon the said other application.
Compare: 1921–22 No 18 s 17; Patents Act 1949 s 53 (UK) 62 70 Reprinted as at 1 January 2011 Patents Act 1953 s 64 Miscellaneous provisions as to rights in inventions (2) (3) Co-ownership of patents 63 (1) Where after the commencement of this Act a patent is granted to 2 or more persons, each of those persons shall, unless an agreement to the contrary is in force, be entitled to an equal undivided share in the patent.
Subject to the provisions of this section and section 64, where 2 or more persons are registered as grantee or proprietor of a patent, then, unless an agreement to the contrary is in force, each of those persons shall be entitled, by himself or his agents, to make, use, exercise, and vend the patented invention for his own benefit without accounting to the other or others.
Subject to the provisions of section 64, and to any agreement for the time being in force, a licence under a patent shall not be granted, and a share in a patent shall not be assigned, except with the consent of all persons, other than licensor or assignor, who are registered as grantee or proprietor of the patent.
(4) Where an article is sold by one of 2 or more persons registered as grantee or proprietor of a patent, the purchaser and any per- son claiming through him shall be entitled to deal with it in the same manner as if the article has been sold by a sole patentee.
Subject to the provisions of this section, the rules of law ap- plicable to the ownership and devolution of personal property generally shall apply in relation to patents as they apply in re- lation to other choses in action; and nothing in subsection (1) or subsection (2) shall affect the mutual rights or obligations of trustees or of the personal representatives of a deceased per- son, or their rights or obligations as such.
Compare: 1921–22 No 18 s 42; 1939 No 26 s 66; Patents Act 1949 s 54 (UK) (5) Power of Commissioner to give directions to co-owners 64 (1) Where 2 or more persons are registered as grantee or proprietor of a patent, the Commissioner may, upon application made to him in the prescribed manner by any of those persons, give such directions in accordance with the application as to the sale or lease of the patent or any interest therein, the grant of 71 s 65 (2) (3) Patents Act 1953 Reprinted as at 1 January 2011 licences under the patent, or the exercise of any right under section 63 in relation thereto, as he thinks fit.
If any person registered as grantee or proprietor of the patent fails to execute any instrument or to do any other thing re- quired for the carrying out of any direction given under this section within 14 days after being requested in writing so to do by any of the other persons so registered, the Commissioner may, upon application made to him in the prescribed manner by any such other person, give directions empowering any per- son to execute that instrument or to do that thing in the name and on behalf of the person in default.
Before giving directions in pursuance of an application under this section, the Commissioner shall give an opportunity to be heard,— (a) in the case of an application under subsection (1), to the other person or persons registered as grantee or propri- etor of the patent: in the case of an application under subsection (2), to the person in default.

(b) (4) An appeal to the court shall lie from any decision or direction of the Commissioner under this section.
(5) No directions shall be given under this section so as to affect the mutual rights or obligations of trustees or of the personal representatives of a deceased person, or their rights or obliga- tions as such.
Compare: 1921–22 No 18 s 42; 1939 No 26 s 66; Patents Act 1949 s 55 (UK) Disputes as to inventions made by employees 65 (1) Where a dispute arises between an employer and a person who is or was at the material time his employee as to the rights of the parties in respect of an invention made by the employee either alone or jointly with other employees or in respect of any patent granted or to be granted in respect thereof, the Com- missioner may, upon application made to him in the prescribed manner by either of the parties, and after giving to each of them an opportunity to be heard, determine the matter in dispute, 72 Reprinted as at 1 January 2011 Patents Act 1953 s 66 (2) and may make such orders for giving effect to his decision as he considers expedient: provided that if it appears to the Commissioner upon any ap- plication under this section that the matter in dispute involves questions which would more properly be determined by the court, he may decline to deal therewith.
In proceedings before the court between an employer and a person who is or was at the material time his employee, or upon application made to the Commissioner under subsection (1), the court or Commissioner may, unless satisfied that one or other of the parties is entitled, to the exclusion of the other, to the benefit of an invention made by the employee, by order provide for the apportionment between them of the benefit of the invention, and of any patent granted or to be granted in respect thereof, in such manner as the court or Commissioner considers just.
(3) A decision of the Commissioner under this section shall have the same effect as between the parties and persons claiming under them as a decision of the court.

(4) An appeal to the court shall lie from any decision of the Com- missioner under this section.
Compare: Patents Act 1949 s 56 (UK) 66 (1) Avoidance of certain restrictive conditions Subject to the provisions of this section, any condition of a contract for the sale or lease of a patented article or of an article made by a patented process or for licence to use or work a patented article or process, or relating to any such sale, lease, or licence, shall be void in so far as it purports— (a) to require the purchaser, lessee, or licensee to acquire from the vendor, lessor, or licensor, or his nominees, or prohibit him from acquiring from any specified per- son, or from acquiring except from the vendor, lessor, or licensor, or his nominees, any articles other than the patented article or an article made by the patented process: to prohibit the purchaser, lessee, or licensee from using articles (whether patented or not) which are not supplied by, or any patented process which does not belong to, (b) 73 s 66 (2) Patents Act 1953 Reprinted as at 1 January 2011 the vendor, lessor, or licensor, or his nominees, or to restrict the right of the purchaser, lessee, or licensee to use any such articles or process.
In proceedings against any person for infringement of a patent, it shall be a defence to prove that at the time of the infringe- ment there was in force a contract relating to the patent made by or with the consent of the plaintiff and containing a condi- tion void by virtue of this section.
(3) A condition of a contract shall not be void by virtue of this section if— (a) (b) at the time of the making of the contract the vendor, lessor, or licensor was willing to sell or lease the article, or grant a licence to use or work the article or process, as the case may be, to the purchaser, lessee, or licensee, on reasonable terms specified in the contract and without any such condition as is mentioned in subsection (1); and the purchaser, lessee, or licensee is entitled under the contract to relieve himself of his liability to observe the condition upon giving to the other party 3 months’ no- tice in writing and subject to payment to him of such compensation (being, in the case of a purchase a lump sum, and in the case of a lease or licence a rent or roy- alty for the residue of the term of the contract) as may be determined by an arbitrator appointed by the Minis- ter.
(4) If in any proceeding it is alleged that any condition of a con- tract is void by virtue of this section, it shall lie on the vendor, lessor, or licensor to prove the matters set out in paragraph (a) of subsection (3).
(5) A condition of a contract shall not be void by virtue of this section by reason only that it prohibits any person from selling goods other than those supplied by a specified person, or, in the case of a contract for the lease of or licence to use a patented article, that it reserves to the lessor or licensor or his nominees the right to supply such new parts of the patented article as may be required to put or keep it in repair.
Compare: 1921–22 No 18 s 43; Patents Act 1949 s 57 (UK) 74 Reprinted as at 1 January 2011 Patents Act 1953 s 68 Determination of certain contracts 67 (1) Any contract for the sale or lease of a patented article or for licence to manufacture, use, or work a patented article or process, or relating to any such sale, lease, or licence, whether made before or after the commencement of this Act, may at any time after the patent or all the patents by which the article or process was protected at the time of the making of the contract has or have ceased to be in force, and notwithstanding anything to the contrary in the contract or in any other contract, be determined by either party on giving 3 months’ notice in writing to the other party.
The provisions of this section shall be without prejudice to any right of determining a contract exercisable apart from this section.
Compare: 1921–22 No 18 s 43(3); Patents Act 1949 s 58 (UK) (2) 68 (1) (2) Proceedings for infringement, etc Restrictions on recovery of damages for infringement In proceedings for the infringement of a patent, damages or ac- count of profits shall not be awarded against a defendant who proves that at the date of the infringement he was not aware, and had no reasonable ground for supposing, that the patent existed; and a person shall not be deemed to have been aware or to have had reasonable grounds for supposing as aforesaid by reason only of the application to an article of the word “patent”, “patented”, or any word or words expressing or im- plying that a patent has been obtained for the article, unless the word or words are accompanied by the words “New Zealand” or the letters “N.Z.” and by the number of the patent.
In any proceeding for infringement of a patent the court may, if it thinks fit, refuse to award any damages in respect of any infringement committed after a failure to pay any renewal fee within the prescribed period and before any extension of that period.
(3) Where an amendment of a specification by way of disclaimer, correction, or explanation has been allowed under this Act after the publication of the specification, no damages shall be awarded in any proceeding in respect of the use of the inven- 75 s 68A Patents Act 1953 Reprinted as at 1 January 2011 tion before the date of the decision allowing the amendment, unless the court is satisfied that the specification as originally published was framed in good faith and with reasonable skill and knowledge.
(4) Nothing in this section shall affect the power of the court to grant an injunction in any proceedings for infringement of a patent.
Compare: 1921–22 No 18 ss 25, 38; Patents Act 1949 s 59 (UK) 68A Burden of proof for infringement of process patent (1) If the invention for which a patent is granted is a process for obtaining a new product, the same product produced by a per- son other than the patentee or a licensee of the patentee shall, unless the contrary is proved, be taken in any proceedings for infringement of the patent to have been obtained by that process.
In applying subsection (1), the court shall not require any per- son to disclose any manufacturing or commercial secrets if it appears to the court that it would be unreasonable to do so.

Compare: Patents Act 1977 s 100 (UK) (2) Section 68A: inserted, on 1 January 1995, by section 16 of the Patents Amendment Act 1994 (1994 No 122).
68B Regulatory review exception It is not an infringement of a patent for a person to make, use, exercise, or vend the invention concerned solely for uses reasonably related to the development and submission of in- formation required under New Zealand law or the law of any other country that regulates the manufacture, construction, use, or sale of any product.

Section 68B: inserted, on 19 December 2002, by section 3 of the Patents Amendment Act 2002 (2002 No 72).
Order for account in action for infringement In an action for infringement of a patent the plaintiff shall be entitled, at his option, to an account of profits instead of dam- ages.
Compare: 1921–22 No 18 s 39; Patents Act 1949 s 60 (UK) 69 76 Reprinted as at 1 January 2011 Patents Act 1953 s 72 70 71 (1) Counterclaim for revocation in action for infringement A defendant in an action for infringement of a patent may, without obtaining the consent of the Attorney-General under paragraph (b) of subsection (3) of section 41, apply in accord- ance with rules of court by way of counterclaim in the action for revocation of the patent.
Compare: 1921–22 No 18 s 36; 1939 No 26 s 64(1); Patents Act 1949 s 61 (UK) Relief for infringement of partially valid specification If in proceedings for infringement of a patent it is found that any claim of the specification, being a claim in respect of which infringement is alleged, is valid, but that any other claim is invalid, the court may grant relief in respect of any valid claim which is infringed: provided that the court shall not grant relief by way of dam- ages, or account of profits, or costs except in the circumstances mentioned in subsection (2).
(2) Where the patent is dated before 1 January 1940 or the plaintiff proves that the invalid claim was framed in good faith and with reasonable skill and knowledge, the court shall grant relief in respect of any valid claim which is infringed subject to the discretion of the court as to costs and as to the date from which damages should be reckoned.
(3) As a condition of relief under subsection (1) or subsection (2) the court may direct that the specification shall be amended to its satisfaction upon an application made for that purpose under section 39, and such an application may be made ac- cordingly whether or not all other issues in the proceedings have been determined.

In relation to a patent which is dated before 1 January 1940 the provisions of this section shall have effect notwithstanding anything in subsection (3) of section 68.
Compare: 1939 No 26 s 64(2), (3); Patents Act 1949 s 62 (UK) (4) 72 (1) Proceedings for infringement by exclusive licensee Subject to the provisions of this section and of section 85, the holder of an exclusive licence under a patent shall have the like right as the patentee to take proceedings in respect of any infringement of the patent committed after the date of the li- 77 s 73 Patents Act 1953 Reprinted as at 1 January 2011 cence, and in awarding damages or granting any other relief in any such proceedings, the court shall take into consideration any loss suffered or likely to be suffered by the exclusive li- censee as such or, as the case may be, the profits earned by means of the infringement so far as it constitutes an infringe- ment of the rights of the exclusive licensee as such.
In any proceedings taken by the holder of an exclusive licence by virtue of this section, the patentee shall, unless he is joined as plaintiff in the proceedings, be added as defendant: provided that a patentee so added as defendant shall not be liable for any costs unless he defends the proceedings.
Compare: Patents Act 1949 s 63 (UK) Certificate of contested validity of specification If in any proceedings before the court the validity of any claim of a specification is contested, and that claim is found by the court to be valid, the court may certify that the validity of that claim was contested in those proceedings.
(2) 73 (1) (2) Where any such certificate has been granted, then, if in any subsequent proceedings before the court for infringement of the patent or for revocation of the patent, a final order or judg- ment is made or given in favour of the party relying on the validity of the patent, that party shall, unless the court other- wise directs, be entitled to his costs as between solicitor and client so far as concerns the claim in respect of which the cer- tificate was granted: provided that this subsection shall not apply to the costs of any appeal in any such proceedings as aforesaid.
Compare: 1921–22 No 18 s 40; Patents Act 1949 s 64 (UK) 74 Remedy for groundless threats of infringement proceedings (1) Where any person (whether entitled to or interested in a patent or an application for a patent or not) by circulars, advertise- ments, or otherwise threatens any other person with proceed- ings for infringement of a patent, any person aggrieved thereby may bring action against him for any such relief as is men- tioned in subsection (2).
78 Reprinted as at 1 January 2011 Patents Act 1953 s 75 (2) Unless in any action brought by virtue of this section the de- fendant proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute an in- fringement of a patent or of rights arising from the publication of a complete specification in respect of a claim of the speci- fication not shown by the plaintiff to be invalid, the plaintiff shall be entitled to the following relief, that is to say: (a) a declaration to the effect that the threats are unjustifi- able; and an injunction against the continuance of the threats; and (b) (c) such damages, if any, as he has sustained thereby.
For the avoidance of doubt it is hereby declared that a mere notification of the existence of a patent does not constitute a threat of proceedings within the meaning of this section.

It is hereby declared that a notice given under section 85 does not constitute a threat of proceedings within the meaning of this section.
Compare: 1939 No 26 s 65; Patents Act 1949 s 65 (UK) (3) (4) 75 Power of court to make declaration as to non-infringement (1) A declaration that the use by any person of any process, or the making or use or sale by any person of any article, does not or would not constitute an infringement of a claim of a patent may be made by the court in proceedings between that person and the patentee or the holder of an exclusive licence under the patent, notwithstanding that no assertion to the contrary has been made by the patentee or licensee, if it is shown— (a) that the plaintiff has applied in writing to the patentee or licensee for a written acknowledgment to the effect of the declaration claimed, and has furnished him with full particulars in writing of the process or article in question; and that the plaintiff has undertaken to pay a reasonable sum for expenses of the patentee or licensee in obtaining advice in respect of the declaration sought; and that the patentee or licensee has refused or neglected to give such an acknowledgment.
(b) (c) (2) The costs of all parties in proceedings for a declaration brought by virtue of this section shall be in the discretion of the court.

79 Patents Act 1953 Reprinted as at 1 January 2011 The validity of a claim of the specification of a patent shall not be called in question in proceedings for a declaration brought by virtue of this section, and accordingly the making or refusal of such a declaration in the case of a patent shall not be deemed to imply that the patent is valid.
Proceedings for a declaration may be brought by virtue of this section at any time after the date of the publication of the com- plete specification in pursuance of an application for a patent, and references in this section to the patentee shall be construed accordingly.
Compare: Patents Act 1949 s 66 (UK) Attorney-General may appear in patent proceedings The Attorney-General, if in his opinion the public interest is or may be involved, may do all or any of the following things: institute proceedings to test the validity of any patent: (a) join the plaintiff in an action brought under section 74: (b) apply for the revocation of a patent: (c) appear and be heard in any proceedings before the court (d) or the Commissioner for the grant, extension, amend- ment, or revocation of a patent, or where the validity of a patent is in question, or for a licence under a patent, or for the endorsement of a patent with the words “licences of right”, or for a declaration of non-infringement, and take any steps which he considers desirable as if he were a party to the proceedings: intervene in and take over the control and conduct of any proceedings in which he may appear and be heard as aforesaid on behalf and with the consent of a party thereto.
(e) In any proceedings before the court or the Commissioner (other than proceedings under section 16) any party who intends to question the validity of a patent shall give notice of that intention to the Solicitor-General at least 21 days before the hearing, and shall supply the Solicitor-General with a copy of such papers filed in the proceedings by himself and by any other party as the Solicitor-General requires.
s 76 (3) (4) 76 (1) (2) 80 Reprinted as at 1 January 2011 Patents Act 1953 s 78 (3) 77 In any proceedings in which the Attorney-General appears in accordance with this section, costs may be awarded either to or against the Attorney-General.
Compare: 1947 No 37 s 3 International agreements, etc Orders in Council as to convention countries For the purpose of giving effect to any international agreement or arrangement to which New Zealand is a party or that applies to New Zealand, the Governor-General may by Order in Coun- cil declare that any entity specified in the order that is a party to the agreement or arrangement or to which the agreement or arrangement applies (whether a State, part of a State, a terri- tory for whose international relations a State is responsible, a political union, an international organisation, or any other en- tity) is, for the purposes of all or any of the provisions of this Act, a convention country.
Section 77: Amendment Act 1999 (1999 No 119).
replaced, on 14 October 1999, by section 3(1) of the Patents Supplementary provisions as to convention applications 78 (1) Where a person has applied for protection for an invention by an application which,— (a) in accordance with the terms of a treaty subsisting be- tween any 2 or more convention countries, is equivalent to an application duly made in any one of those conven- tion countries; or in accordance with the law of any convention country, is equivalent to an application duly made in that con- vention country,— (b) (2) he shall be deemed for the purposes of this Act to have applied in that convention country.
For the purpose of this Act, matter shall be deemed to have been disclosed in an application for protection in a convention country if it was claimed or disclosed (otherwise than by way of disclaimer or acknowledgment of prior art) in that applica- tion or in documents submitted by the applicant for protection in support of and at the same time as that application; but no account shall be taken of any disclosure effected by any such 81 s 79 Patents Act 1953 Reprinted as at 1 January 2011 document unless a copy of the document is filed at the Patent Office with the convention application or within such period as may be prescribed after the filing of that application.
Compare: 1939 No 26 s 55(4), (8); Patents Act 1949 s 69 (UK) Special provisions as to vessels, aircraft, and land vehicles Where a vessel or aircraft registered in a convention country, or a land vehicle owned by a person ordinarily resident in such a country, comes into New Zealand (including the territor- ial waters thereof) temporarily or accidentally only, the rights conferred by a patent for an invention shall not be deemed to be infringed by the use of the invention— (a) in the body of the vessel or in the machinery, tackle, apparatus, or other accessories thereof, so far as the in- vention is used on board the vessel and for its actual needs only; or in the construction or working of the aircraft or land vehicle or of the accessories thereof,— (b) as the case may be.
Compare: 1939 No 26 s 68; Patents Act 1949 s 70 (UK) Extension of time for certain convention applications If the Governor-General is satisfied that provision substan- tially equivalent to the provision to be made by or under this section has been or will be made under the law of any conven- tion country, he may, by Order in Council, make regulations empowering the Commissioner to extend the time for making application under subsection (2) of section 7 for a patent for an invention in respect of which protection has been applied for in that country in any case where the period specified in the proviso to that subsection expires during a period prescribed by the regulations.
Regulations made under this section— (a) may, where any agreement or arrangement has been made between Her Majesty’s Government in New Zealand and the Government of the convention country for the supply or mutual exchange of information or articles, provide, either generally or in any class of case specified in the regulations, that an extension of 79 80 (1) (2) 82 Reprinted as at 1 January 2011 Patents Act 1953 s 81 time shall not be granted under this section unless the invention has been communicated in accordance with the agreement or arrangement: (b) may, either generally or in any class of case specified in the regulations, fix the maximum extension which may be granted under this section and provide for reducing the term of any patent granted on an application made by virtue of this section, and (notwithstanding anything in section 115) vary the time for the payment of renewal fees in respect of such a patent and the amount of such fees: (c) may prescribe or allow any special procedure in connec- tion with applications made by virtue of this section: (d) may empower the Commissioner to extend, in relation to an application made by virtue of this section, the time limited by or under the foregoing provisions of this Act for doing any act, subject to such conditions, if any, as may be imposed by or under the regulations: (e) may provide for securing that the rights conferred by a patent granted on an application made by virtue of this section shall be subject to such restrictions or con- ditions as may be specified by or under the regulations and in particular to restrictions and conditions for the protection of persons (including persons acting on be- half of Her Majesty) who, otherwise than as the result of a communication made in accordance with such an agreement or arrangement as is mentioned in paragraph (a), and before the date of the application in question or such later date as may be allowed by the regulations, may have made, used, exercised, or vended the inven- tion or may have applied for a patent in respect thereof.
Compare: 1943 No 6 s 5; 1946 No 32 s 3; Patents Act 1949 s 71 (UK) 81 (1) Protection of inventions communicated under international agreements Subject to the provisions of this section, the Governor-Gen- eral may, by Order in Council, make regulations for securing that, where an invention has been communicated in accord- ance with an agreement or arrangement made between Her 83 s 81 Patents Act 1953 Reprinted as at 1 January 2011 Majesty’s Government in New Zealand and the Government of any other country for the supply or mutual exchange of in- formation or articles,— (a) an application for a patent made by the person from whom the invention was communicated or his personal representative or assignee shall not be prejudiced, and a patent granted on such an application shall not be invali- dated, by reason only that the invention has been com- municated as aforesaid or that in consequence thereof— the invention has been published, made, used, (i) exercised, or vended; or an application for a patent has been made by any other person, or a patent has been granted on such an application: (ii) (b) any application for a patent made in consequence of such a communication as aforesaid may be refused and any patent granted on such an application may be re- voked.
Regulations made under subsection (1) may provide that the publication, making, use, exercise, or vending of an invention, or the making of any application for a patent in respect thereof, shall, in such circumstances and subject to such conditions or exceptions as may be prescribed by the regulations, be pre- sumed to have been in consequence of such a communication as is mentioned in that subsection.
The powers of the Governor-General under this section, so far as they are exercisable for the benefit of persons from whom inventions have been communicated to Her Majesty’s Govern- ment in New Zealand by the Government of any other coun- try, shall only be exercised if and to the extent that the Gov- ernor-General is satisfied that substantially equivalent provi- sions has been or will be made under the law of that country for the benefit of persons for whom inventions have been com- municated by Her Majesty’s Government in New Zealand to the Government of that country.
References in subsection (3) to the communication of an in- vention to or by Her Majesty’s Government in New Zealand or the Government of any other country shall be construed as including references to the communication of the invention by (2) (3) (4) 84 Reprinted as at 1 January 2011 Patents Act 1953 s 83 or to any person authorised in that behalf by the Government in question.
Compare: 1946 No 32 s 4; Patents Act 1949 s 72 (UK) Regulations under section 80 or section 81 Any regulations made under section 80 or section 81, and any order made, direction given, or other action taken under the regulations by the Commissioner, may be made, given, or taken so as to have effect as respects things done or omitted to be done on or after such date, whether before or after the commencement of the regulations or of this Act, as may be specified in the regulations.
Compare: 1943 No 6 s 7; Patents Act 1949 s 95(2) (UK) Register of patents, etc Register of patents There shall be kept at the Patent Office a register of patents, in which there shall be entered particulars of patents in force, of assignments and transmissions of patents and of licences under patents, and notice of all matters which are required by or under this Act to be entered in the register and of such other matters affecting the validity or proprietorship of patents as the Commissioner thinks fit.
Subject to the provisions of this Act and to regulations made thereunder, on payment of the prescribed fee the register of patents shall, at all convenient times, be open to inspection by the public; and certified copies, sealed with the seal of the Patent Office, of any entry in the register shall be given to any person requiring them.

The register of patents shall be prima facie evidence of any matters required or authorised by or under this Act to be en- tered therein.
82 83 (1) (2) (3) (4) No notice of any trust, whether expressed, implied, or con- structive, shall be entered in the register of patents, and the Commissioner shall not be affected by any such notice.
Compare: 1921–22 No 18 ss 31, 118, 119; Patents Act 1949 s 73 (UK) 85 s 84 Patents Act 1953 Reprinted as at 1 January 2011 Registration of assignments, etc 84 (1) Where any person becomes entitled by assignment, transmis- sion, or operation of law to a patent or to a share in a patent, or becomes entitled as mortgagee, licensee, or otherwise to any other interest in a patent, he shall apply to the Commissioner in the prescribed manner for the registration of his title as pro- prietor or co-proprietor, or, as the case may be, of notice of his interest, in the register of patents.
(2) Without prejudice to the provisions of subsection (1), an appli- cation for the registration of the title of any person becoming entitled by assignment to a patent or a share in a patent, or becoming entitled by virtue of a mortgage, licence, or other instrument to any other interest in a patent, may be made in the prescribed manner by the assignor, mortgagor, licensor, or other party to that instrument, as the case may be.
(3) Where application is made under this section for the registra- tion of the title of any person, the Commissioner shall, upon proof of title to his satisfaction,— (a) where that person is entitled to a patent or a share in a patent, register him in the register of patents as pro- prietor or co-proprietor of the patent, and enter in that register particulars of the instrument or event by which he derives title; or (b) where that person is entitled to any other interest in the patent, enter in that register and on any patent produced to the Commissioner notice of his interest.
Subject to the provisions of this Act relating to co-ownership of patents, and subject also to any rights vested in any other person of which notice is entered in the register of patents, the person or persons registered as grantee or proprietor of a patent shall have power to assign, grant licences under, or otherwise deal with the patent, and to give effectual receipts for any con- sideration for any such assignment, licence, or dealing: provided that any equities in respect of the patent may be en- forced in like manner as in respect of any other personal prop- erty.
(4) 86 Reprinted as at 1 January 2011 Patents Act 1953 s 85 (5) 85 (1) Regulations made under this Act may require the supply to the Commissioner for filing at the Patent Office of copies of such deeds, licences, and other documents as may be prescribed.
Compare: 1921–22 No 18 s 122; Patents Act 1949 s 74 (UK) Limitation of proceedings Except where the court (on application in that behalf) in any case otherwise authorises, no person shall bring any proceed- ings (other than criminal proceedings) in respect of any inter- est to which he may be entitled as owner, mortgagee, licensee, or otherwise in a patent unless— (a) in the case of an interest which is not registered under this Act at the time of the commencement of the pro- ceedings and which is capable of being so registered,— he has by notice in writing given to the proposed (i) defendant at least 1 month before the date of the commencement of the proceedings advised his intention to bring the proceedings and furnished an address for service in New Zealand; and no notice under subsection (2) requiring him to register the interest under this Act has been given to him within 1 month after he gave notice under subparagraph (i); or (ii) (b) (c) in the case of an interest which is registered under this Act, the interest was so registered,— (i) before the right to commence proceedings was barred under this section; and at least 1 month before the date of the commence- ment of the proceedings; or (ii) in the case of any other interest, he has, by notice in writ- ing given to the proposed defendant at least 1 month be- fore the date of the commencement of the proceedings, advised his intention to bring the proceedings.
(2) Where any person makes any claim, or threatens to bring or gives notice of his intention to bring any proceedings (other than criminal proceedings), against any other person in respect of any interest as owner, mortgagee, licensee, or otherwise in a patent, being an interest which is not registered under this Act and which is capable of being so registered, that other 87 s 85A Patents Act 1953 Reprinted as at 1 January 2011 person may, at any time within 1 month thereafter by notice in writing given to the maker of the claim or threat or the giver of the notice of intention to bring the proceedings, require him to register under this Act the interest in respect of which the claim or threat is made or the notice of intention to bring the proceedings is given, and if he fails to do so within 6 months after the giving of the notice under this subsection he shall not thereafter be entitled to bring any proceedings in respect of the claim or interest against the person who has given the notice to register.
(3) Nothing in this section enables a person to obtain any relief the granting of which is prevented by the Limitation Act 2010, and nothing in section 40 of that Act excludes the operation of that Act in any case where proceedings may be barred under this section.

Section 85(3): replaced, on 1 January 2011, by section 58 of the Limitation Act 2010 (2010 No 110).
85A Application of Personal Property Securities Act 1999 Nothing in sections 83 to 85 affects the operation of the Per- sonal Property Securities Act 1999.

Section 85A: inserted, on 1 May 2002, by section 191(1) of the Personal Property Securities Act 1999 (1999 No 126).
Commissioner may dispense with production of probate or letters of administration in certain cases For the purposes of this section, unless the context otherwise requires,— deceased proprietor means a registered proprietor of any patent who has died, whether before or after the commence- ment of this Act; and includes any applicant for a patent who has died before it is granted, whether before or after the commencement of this Act; and also includes an inventor of any invention who has died before or after the commencement of this Act without making an application for a patent for the invention 86 (1) 88 Reprinted as at 1 January 2011 Patents Act 1953 s 86 qualified person, means a person who satisfies the Commissioner— (a) in relation to any deceased proprietor, that he has obtained or is entitled to obtain probate of the will of the deceased proprietor or letters of administra- tion in his estate in the place where the deceased propri- etor was domiciled at his death, or that he is the personal representative of the deceased proprietor in that place: that probate of the will of the deceased proprietor or let- ters of administration in his estate have not been granted or resealed in New Zealand: [Repealed] that the interests of the creditors of the deceased propri- etor, and of all persons beneficially interested under his will or on his intestacy, will be adequately safeguarded if the Commissioner of Patents registers the qualified person as the proprietor of the patent.
(b) (c) (d) (2) Upon application in the prescribed manner and payment of the prescribed fees, the Commissioner in his discretion and with- out requiring the production of probate or letters of adminis- tration may— (a) where the registered proprietor of any patent has died before or after the commencement of this Act, register any qualified person as the proprietor of the patent: (b) where an applicant for any patent has died before the grant of the patent (whether before or after the com- mencement of this Act), allow any qualified person to complete the application and may register that person as the proprietor of the patent, or may accept the consent of that person for the purposes of section 24 as if that person were the personal representative of the deceased applicant: allow an application under section 9 to be made by and may grant a patent to any qualified person as if he were the personal representative of the deceased inventor.
(c) (3) Every qualified person who is registered under this section as the proprietor of a patent shall hold it subject to all existing interests and equities affecting it.

89 s 87 Patents Act 1953 Reprinted as at 1 January 2011 (4) Nothing in section 70 or in section 73 of the Administration Act 1969 shall be deemed to restrict the operation of this sec- tion.
Compare: 1947 No 37 s 5 Section 86(1) qualified person paragraph (c): repealed, on 24 May 1999, by section 15(1) of the Estate Duty Repeal Act 1999 (1999 No 64).

Section 86(4): amended, on 1 January 1971, pursuant to section 84(1) of the Administration Act 1969 (1969 No 52).
87 (1) (2) Rectification of register of patents by court The court may, on the application of any person aggrieved, order the register of patents to be rectified by the making of any entry therein or the variation or deletion of any entry therein.

In proceedings under this section the court may determine any question which it may be necessary or expedient to decide in connection with the rectification of the register of patents.
(3) Notice of any application to the court under this section shall be given in the prescribed manner to the Commissioner, who shall be entitled to appear and be heard on the application, and shall appear if so directed by the court.

(4) Any order made by the court under this section shall direct that notice of the order shall be served on the Commissioner in the prescribed manner; and the Commissioner shall, on the receipt of the notice, rectify the register of patents accordingly.
Compare: 1921–22 No 18 ss 123, 141; Patents Act 1949 s 75 (UK) Correction of errors 88 (1) Where a mistake exists in the register of patents, in any patent, or in any other document issued under this Act, by reason of an error or omission on the part of the Patent Office, the Commis- sioner may, in accordance with the provisions of this section, correct the mistake, and for that purpose may require the pro- duction of the patent or other document.
(2) Where the Commissioner proposes to make any such correc- tion as aforesaid, he shall give notice of the proposal to the persons who appear to him to be concerned, and shall give them an opportunity to be heard before making the correction.
(3) Where a mistake exists in the register of patents, in any patent or application for patent or any document filed in pursuance 90 Reprinted as at 1 January 2011 Patents Act 1953 s 89 of such an application, or in proceedings in connection with any patent, by reason of an error or an omission on the part of the patentee or of the applicant for the patent or of any other person concerned, a correction may be made in accordance with the provisions of this section upon a request in writing by any person interested and payment of the prescribed fee.
If it appears to the Commissioner that the correction would materially alter the meaning or scope of the document to which the request relates and ought not to be made without notice to persons likely to be affected thereby, he shall require notice of the nature of the proposed correction to be advertised in the prescribed manner.
(4) Within the prescribed time after any such advertisement as aforesaid, any person interested may give notice to the Com- missioner of opposition to the request, and where any such no- tice of opposition is given the Commissioner shall give notice thereof to the person by whom the request was made, and shall give to him and to the opponent an opportunity to be heard be- fore he decides the case.

(5) An appeal to the court shall lie from any decision of the Com- missioner under this section.
Compare: 1921–22 No 18 s 121; 1946 No 32 s 7; Patents Act 1949 s 76 (UK) Evidence of entries, documents, etc 89 (1) A certificate sealed with the seal of the Patent Office and pur- porting to be signed by the Commissioner certifying that any entry which he is authorised by or under this Act to make has or has not been made, or that any other thing which he is so authorised to do has or has not been done, shall be prima facie evidence of the matters so certified.
(2) A copy of any entry in any register or of any document kept in the Patent Office or of any patent, or an extract from any such register or document, sealed with the seal of the Patent Office, and purporting to be certified by the Commissioner, shall be admitted in evidence without further proof and without pro- duction of the original.
(3) Where by this Act or otherwise by law the Commissioner is di- rected, authorised, or empowered to do, exercise, or perform any act, power, function, or duty, any notification in the Jour- 91 s 90 Patents Act 1953 Reprinted as at 1 January 2011 nal of the doing, exercise, or performance of any such act, power, function, or duty shall be prima facie evidence that it was lawfully done, exercised, or performed.
Compare: 1921–22 No 18 ss 130, 131; 1946 No 32 s 6(3); Patents Act 1949 s 77 (UK) 90 Requests for information as to patent or patent application The Commissioner shall, on request made to him in the pre- scribed manner by any person and on payment of the pre- scribed fee, furnish the person making the request with such information relating to any patent or application for a patent as may be specified in the request, being information in respect of any such matters as may be prescribed.
Compare: Patents Act 1949 s 78 (UK) Restriction upon publication of specifications, etc 91 (1) An application for a patent, and any specification filed in pur- suance thereof, shall not, except with the consent of the appli- cant, be published by the Commissioner or be open to public inspection at any time before the date advertised in the Jour- nal in pursuance of subsection (2) of section 20: provided that nothing in this subsection shall preclude the Commissioner from publishing the date and number of an application and such details of the application and invention as are required to be given in the application form.
The reports of examiners made under this Act shall not be open to public inspection or be published by the Commissioner; and such reports shall not be liable to production or inspection in any legal proceeding unless the court or officer having power to order discovery in the proceeding certifies that the produc- tion or inspection is desirable in the interests of justice, and ought to be allowed: provided that the Commissioner may, on application made in the prescribed manner by any person, disclose the result of any search made under section 13 or section 14 or any information furnished under subparagraph (i) of paragraph (b) of section 15 (2) 92 Reprinted as at 1 January 2011 Patents Act 1953 s 93 in respect of any application for a patent where the complete specification has been published.
Compare: 1921–22 No 18 ss 11, 120; 1946 No 32 s 5; Patents Act 1949 s 79 (UK) 92 Loss or destruction of patent Where the Commissioner is satisfied that a patent has been lost or destroyed or cannot be produced, he may at any time, on application made to him in the prescribed manner and on payment of the prescribed fee, cause a further patent to be sealed.
Compare: 1921–22 No 18 s 49; Patents Act 1949 s 80 (UK) Commissioner may grant extension of time 93 (1) Where by this Act anything is required to be done within a prescribed time, and by reason of delay in the Patent Office the thing is not so done, the Commissioner may extend the time for the doing of the thing.
(2) Where, having regard to the procedure specified and the in- formation required under sections 12 to 16 or any regulations under those sections, the Commissioner is satisfied that the cir- cumstances warrant an extension or extensions of the period specified in subsection (1) of section 19, the Commissioner may extend the period prescribed therein for complying with any requirement imposed on the applicant by or under this Act; and the said subsection shall then be read as if the period so ex- tended had been substituted for the period of 15 months therein mentioned.
(3) Where an extension of period has been allowed under subsec- tion (2), the period so allowed shall be extended by the Com- missioner to such further period, not exceeding 3 months, as may be specified in a notice given by the applicant to the Com- missioner, if the notice is given and the prescribed fee is paid before the expiration of the further period so specified.

(4) No fees shall be payable in respect of any extension of time granted under subsection (1) or subsection (2).
93 s 93A (5) Patents Act 1953 Reprinted as at 1 January 2011 The powers conferred on the Commissioner by this section may be exercised notwithstanding that in any case the time limited may have expired.
Compare: 1921–22 No 18 s 125 93A Additional provisions for extending time limits (1) The Commissioner may extend— (a) the time prescribed in subsection (2) of section 7 for the filing of a convention application; or the time prescribed in subsection (2) of section 9 for the filing of a complete specification— (b) on such terms (if any) as he thinks fit where he is satisfied that the circumstances warrant the extension.
(2) Where by this Act any thing is required to be done within a prescribed time, and by reason of failure of or delay in the delivery of mail by any postal official or postal carrier that thing is not done within such time, the Commissioner may extend the time for the doing of the thing on such terms (if any) as he thinks fit.
(3) Notwithstanding subsection (1) or subsection (2), the Com- missioner shall refuse to grant an extension of time under that subsection if in his opinion— (a) the applicant or his agent has not allowed a reasonable margin of time for the delivery to the Patent Office, by post or otherwise, of any documents relating to the mat- ter in respect of which the application for the extension of time is made; or the applicant or his agent has in any other way failed to act with due diligence and prudence in respect of such manner; or there has been undue delay in bringing the application for the extension of time or in prosecuting the applica- tion.
(b) (c) (4) Every extension of time granted under this section shall be advertised in the Journal in the prescribed manner.
(5) Where an application is made for an extension of time under this section by an agent on behalf of any applicant, the Com- missioner may require as a condition of granting the applica- tion that written confirmation that the application is authorised 94 Reprinted as at 1 January 2011 Patents Act 1953 s 94 shall be signed or executed by the applicant and lodged with the Commissioner within such time as the Commissioner spe- cifies.
(6) Any extension of time under this section, and any requirement given or other action taken by the Commissioner under this section, may be granted, given, or taken so as to have effect in respect of things done or omitted to be done before the com- mencement of this section, as long as the application for the extension of time has been made before acceptance of the com- plete specification of the application for a patent in respect of which the application under this section has been made.
The Governor-General may from time to time, by Order in Council, make regulations for all or any of the following pur- poses: (a) (7) for the protection of persons who at any time in good faith have begun to avail themselves of any invention that is the subject matter of a matter in respect of which any application under this section is made: prescribing the evidence that the Commissioner may ac- cept in support of applications under this section: prescribing the manner of advertising in the Journal ex- tensions of time granted under this section: prescribing the grounds of opposition to applications under this section: regulating the procedure to be followed in relation to applications under this section and opposition to such applications: prescribing the fees to be paid in respect of applications under this section.
(b) (c) (d) (e) (f) Section 93A: inserted, on 20 October 1972, by section 2 of the Patents Amendment Act 1972 (1972 No 91).
Proceedings before Commissioner 94 Exercise of discretionary powers of Commissioner Without prejudice to any provisions of this Act requiring the Commissioner to hear any party to proceedings thereunder, or to give to any such party an opportunity to be heard, the Com- missioner shall give to any applicant for a patent, or for amend- ment of a specification, an opportunity to be heard before ex- 95 s 95 Patents Act 1953 Reprinted as at 1 January 2011 ercising adversely to the applicant any discretion vested in the Commissioner by or under this Act.
Compare: 1921–22 No 18 s 124; Patents Act 1949 s 81 (UK) Costs and security for costs The Commissioner may, in any proceedings before him under this Act, by order award to any party such costs as he may con- sider reasonable, and direct how and by what parties they are to be paid; and any such order may be entered as a judgment of the court and with the leave of the court may be enforced accordingly.
If any party by whom notice of any opposition is given under this Act or by whom application is made to the Commissioner for the revocation of a patent or for the grant of a licence under a patent or for the determination of a dispute as to an inven- tion under section 65, or by whom notice of appeal is given from any decision of the Commissioner under this Act, neither resides nor carries on business in New Zealand, the Commis- sioner, or in the case of appeal, the court, may require him to give security for the costs of the proceedings or appeal, and in default of such security being given may treat the opposition, application, or appeal as abandoned.
Compare: 1921–22 No 18 ss 45, 127; Patents Act 1949 s 82 (UK) Evidence before Commissioner Subject to regulations made under this Act, the evidence to be given in any proceedings before the Commissioner under this Act may be given by affidavit or statutory declaration; but the Commissioner may if he thinks fit in any particular case take oral evidence instead of or in addition to such evidence as aforesaid, and may allow any witness to be cross-examined on his affidavit or declaration.
Any such statutory declaration may, in the event of an appeal under this Act, be used before the court instead of evidence by affidavit, and when so used shall have all the incidents and consequences of evidence by affidavit.
In any proceedings under this Act before the Commissioner, he may administer oaths to any witness, and may in the prescribed 95 (1) (2) 96 (1) (2) 96 Reprinted as at 1 January 2011 Patents Act 1953 s 97 manner require the attendance of any witness and discovery and production of documents.

(4) (3) Any evidence given on oath before the Commissioner shall be deemed to be given in a judicial proceeding for the purposes of sections 108 and 109 of the Crimes Act 1961.
Section 111 of the Crimes Act 1961 shall apply to every affi- davit and statutory declaration made for the purposes of this Act.
The Governor-General may from time to time, by Order in Council, make regulations— (a) (5) prescribing the manner in which statutory declarations in respect of proceedings under this Act may be made and subscribed: prescribing the manner in which witnesses may be re- quired to attend and to give evidence in any proceedings before the Commissioner: (b) (c) making provision for the payment of the expenses of (d) witnesses: imposing fines not exceeding 20 pounds for failure or refusal of any person so to attend and give evidence.
Compare: 1921–22 No 18 s 129; Patents Act 1949 s 83 (UK) Section 96(3): amended, on 1 January 1962, pursuant to section 412(2) of the Crimes Act 1961 (1961 No 43).

Section 96(4): amended, on 1 January 1962, pursuant to section 412(2) of the Crimes Act 1961 (1961 No 43).

Appeals 97 (1) Appeals to High Court Every appeal under this Act against a decision of the Commis- sioner shall be to the High Court.
(3) (2) Notice of every such appeal shall be filed in the court within 28 days after the day on which the decision appealed against was given.

In any such appeal the court shall have and may exercise the same discretionary powers as are conferred upon the Commis- sioner.
Subject to the provisions of section 98, the decision of the court shall be final— (4) 97 s 98 Patents Act 1953 Reprinted as at 1 January 2011 on any appeal against a decision of the Commissioner: on any application under section 31 or section 32.

(a) (b) Compare: 1921–22 No 18 s 140 Section 97 heading: amended, on 1 April 1980, pursuant to section 12 of the Judicature Amendment Act 1979 (1979 No 124).
Section 97(1): amended, on 1 April 1980, pursuant to section 12 of the Judicature Amendment Act 1979 (1979 No 124).

Section 97(2): amended, on 9 December 1976, by section 3 of the Patents Amendment Act 1976 (1976 No 112).
98 Appeals to Court of Appeal An appeal shall lie to the Court of Appeal— (a) (b) (c) from any decision of the court on an appeal under sec- tion 42 or section 50, where the effect of the decision is the revocation of a patent: from any decision of the court under section 64: with the leave of the High Court or of the Court of Ap- peal, from any decision of the High Court on any appeal against a decision of the Commissioner or on any appli- cation under section 31 or section 32.
Compare: Patents Act 1949 s 87 (UK) Section 98(c): amended, on 1 April 1980, pursuant to section 12 of the Judicature Amendment Act 1979 (1979 No 124).

99 Costs of Commissioner in proceedings before court In all proceedings before the court under this Act the costs of the Commissioner shall be in the discretion of the court.

Compare: 1921–22 No 18 s 142 Patent attorneys 100 Registration of patent attorneys (1) There shall be kept at the Patent Office a register of patent attorneys.
The Commissioner may register as a patent attorney any per- son who,— (a) is a British subject or a citizen of the Republic of Ire- land; and is not less than 21 years of age; and (b) (2) 98 Reprinted as at 1 January 2011 Patents Act 1953 s 102 (c) (d) (e) has passed in all subjects of the prescribed examination; and if so required by regulations made under this Act, has been employed for the period specified in the regula- tions in the manner specified in the regulations; and possesses such other qualifications as may be pre- scribed.
Regulations made under this Act may provide for the appoint- ment of a person or persons to conduct the examinations re- ferred to in subsection (2).

Every person who was registered as a patent agent under the Patents, Designs, and Trade Marks Act 1921–22 immediately before the commencement of this Act shall be deemed to be registered as a patent attorney under this Act.
Compare: 1921–22 No 18 s 135 (3) (4) 101 Powers of patent attorneys (1) A patent attorney— (a) (b) shall be entitled to prepare all documents, transact all business, and conduct all proceedings for the purposes of this Act; and shall have such other rights and privileges as may be prescribed.

(2) Nothing in this section shall authorise a patent attorney to transact business or conduct proceedings in a court.
(3) A person who is registered under section 100 as a patent at- torney is not guilty of an offence against section 32 or section 33 or section 35 of the Lawyers and Conveyancers Act 2006 by reason only of exercising any of the powers conferred on patent attorneys by this section.

Compare: Patents Act 1949 s 88(5) (UK) Section 101(3): replaced, on 1 August 2008, by section 348 of the Lawyers and Conveyancers Act 2006 (2006 No 1).
102 Cancellation of registration of patent attorneys (1) The court, on application made by the Commissioner or by the New Zealand Institute of Patent Attorneys Incorporated with the leave in writing of the Attorney-General, may order the removal from the register of patent attorneys of the name of 99 s 103 Patents Act 1953 Reprinted as at 1 January 2011 any patent attorney or the suspension from practice before the Patent Office of any patent attorney who— (a) is convicted of a crime involving dishonesty within the meaning of section 2 of the Crimes Act 1961; or has been guilty of misconduct in his professional cap- acity and by reason thereof is not a fit and proper person to practise as a patent attorney; or has otherwise been guilty of grave impropriety or in- famous conduct and by reason thereof is not a fit and proper person to practise as a patent attorney.
(b) (c) (2) The Commissioner and the New Zealand Institute of Patent Attorneys Incorporated shall be entitled to appear and be heard on any such application.

(3) No person whose name has been removed from the register of patent attorneys under this section shall be again entered thereon except by direction of the court.

Section 102(1)(a): amended, on 1 January 1962, by section 411(1) of the Crimes Act 1961 (1961 No 43).
103 Restrictions on practice as patent attorney (1) No person either alone or in partnership shall carry on busi- ness, practise, act, describe himself or hold himself out, or permit himself to be described or held out, as a patent attor- ney or patent agent unless he is registered as a patent attorney, or, as the case may be, unless he and all his partners are so registered.
(2) No company shall carry on business, practise, act, describe itself or hold itself out, or permit itself to be described or held out, as a patent attorney or patent agent: provided that this subsection shall not apply in the case of any company which was immediately before the commencement of this Act carrying on business as a patent attorney during any period or periods while a manager or director of the company is registered as a patent attorney.
For the purposes of this section a person who or a company which undertakes for gain in New Zealand— (a) to apply for or obtain patents in New Zealand or else- where; or (3) 100 Reprinted as at 1 January 2011 Patents Act 1953 s 104 (b) (c) to prepare specifications or other documents for the pur- poses of this Act or of the patent law of any country; or to give advice other than of a scientific or technicial na- ture as to the validity of patents or their infringement— shall be deemed to carry on business as a patent attorney.
(4) Any person who or company which fails to comply with or acts in contravention of the provisions of this section commits an offence, and shall be liable on summary conviction to a fine not exceeding 100 pounds.

(5) Nothing in this section shall be construed as prohibiting bar- risters or solicitors of the High Court of New Zealand from giving professional advice or taking such part in proceedings under this Act as has heretofore been taken by them.
(6) Nothing in this section shall prevent the personal representa- tive of a deceased patent attorney from carrying on the busi- ness or practice of the deceased patent attorney for a period not exceeding 3 years from the date of the death of the patent attorney, or for such further period (if any) as the court may allow, if the personal representative is himself registered as a patent attorney or employs a person who is registered as a patent attorney to manage the business or practice.
Compare: 1921–22 No 18 s 135 Section 103(5): amended, on 1 April 1980, pursuant to section 12 of the Judicature Amendment Act 1979 (1979 No 124).
104 Recovery of patent attorney’s charges (1) No patent attorney shall commence or maintain any action for the recovery of any fees, charges, or disbursements paid or incurred or made by him for any business done by him as a patent attorney until the expiration of 7 days after a bill of the fees, charges, and disbursements, signed by him (or, in the case of a partnership, by any of the partners with the name of the partnership), or enclosed in or accompanied by a letter signed in like manner referring to the bill, has been delivered to the party chargeable.
The delivery may be effected either by personal delivery to the party chargeable or by leaving the bill or letter for him at his place of business, or dwellinghouse, or last known place of abode, or by forwarding it to him by post in a registered (2) 101 s 105 Patents Act 1953 Reprinted as at 1 January 2011 letter addressed to him as aforesaid.
Where it is forwarded by post as aforesaid, it shall be deemed to have been delivered at the time at which the letter would have been delivered in the ordinary course of post.
Compare: 1921–22 No 18 s 137 105 Falsification of register, etc Offences Every person who makes or causes to be made a false entry in any register kept under this Act, or a writing falsely purporting to be a copy of an entry in any such register, or produces or tenders or causes to be produced or tendered in evidence any such writing, knowing the entry or writing to be false, commits an offence, and shall be liable on conviction on indictment to imprisonment for any term not exceeding 2 years.
Compare: 1921–22 No 18 s 143; Patents Act 1949 s 90 (UK) 106 Unauthorised claim of patent rights (1) Every person who falsely represents that he or another person is the patentee of an invention or that he or another person has applied for a patent for an invention commits an offence and shall be liable on summary conviction to a fine not exceeding 100 pounds.
Every person who falsely represents that an article sold by him is patented in New Zealand or is the subject of an application for a patent in New Zealand commits an offence and shall be li- able on summary conviction to a fine not exceeding 50 pounds.
For the purposes of this section— (a) a person shall be deemed to represent that an article is patented in New Zealand if there is stamped, engraved, or impressed on, or otherwise applied to, the article the word “patent” or “patented”, the words “provisional patent”, or some other word or words expressing or im- plying that a patent for the article has been obtained in New Zealand; and a person shall be deemed to represent that an article is the subject of an application for a patent in New Zealand if there are stamped, engraved, or impressed on or other- (b) (2) (3) 102 Reprinted as at 1 January 2011 Patents Act 1953 s 108 wise applied to the article the words “patent applied for” or “patent pending” or some other word or words im- plying that an application for a patent for the article has been made in New Zealand: provided that it shall be sufficient defence to any prosecution under this subsection to show that the article was patented or was the subject of an application for a patent at the time when and in the country where the words were stamped, engraved, or impressed on or otherwise applied to it.
Every person who uses on his place of business or on any docu- ment issued by him or otherwise the words “Patent Office”, or any other words suggesting that his place of business is or is officially connected with the Patent Office, commits an of- fence and shall be liable on summary conviction to a fine not exceeding 50 pounds.
Compare: 1921–22 No 18 s 143; Patents Act 1949 s 91 (UK) (4) 107 Protection of Royal Arms, etc The grant of a patent under this Act shall not in itself authorise the patentee to use or place on any patented article any repre- sentation specified in sections 12 to 15 of the Flags, Emblems, and Names Protection Act 1981.

Section 107: Emblems, and Names Protection Act 1981 (1981 No 47).
replaced, on 1 January 1982, by section 27(1) of the Flags, 108 Offences by companies Where an offence against section 25, section 26, section 103, or section 105 is committed by a body corporate, every person who at the time of the commission of the offence is a director, general manager, secretary, or other similar officer of the body corporate, or is purporting to act in any such capacity, shall be deemed to be guilty of that offence unless he proves that the offence was committed without his consent or connivance and that he exercised all such diligence to prevent the commission of the offence as he ought to have exercised having regard to the nature of his functions in that capacity and to all the circumstances.
Compare: Patents Act 1949 s 93 (UK) 103 s 109 Patents Act 1953 Reprinted as at 1 January 2011 109 Certain offences may be dealt with summarily [Repealed] Section 109: repealed, on 1 April 1958, by section 214(1) of the Summary Proceedings Act 1957 (1957 No 87).
Miscellaneous Service of notices, etc, by post 110 (1) Any notice required or authorised to be given by or under this Act, and any application or other document so authorised or required to be made or filed, may be given, made, or filed by sending it by post in a letter addressed to the person concerned at his usual or last known address.
(2) Where any notice is sent by the Commissioner to any person by post as aforesaid the notice shall be deemed to have been given at the time when the letter containing it would have been delivered in the ordinary course of post.
Compare: 1921–22 No 18 s 132; Patents Act 1949 s 97 (UK) 111 Declaration by person under disability (1) If any person is incapable of making any declaration, or doing anything required or permitted by or under this Act because he is not of full age and capacity, the guardian, committee, or statutory administrator (if any) of the person subject to the disability, or (if there is none) any person appointed by any court possessing jurisdiction in respect of his property, may make that declaration, or a declaration as nearly corresponding thereto as circumstances permit, and do that thing in the name and on behalf of the person subject to the disability.
(2) An appointment may be made by the court for the purposes of this section upon the application of any person acting on behalf of the person subject to the disability, or of any other person interested in the making of the declaration or the doing of the thing.
Compare: 1921–22 No 18 s 134 Journal, indexes, etc The Commissioner shall issue periodically a journal to be called the Patent Office Journal, and, subject to the provisions 112 (1) 104 Reprinted as at 1 January 2011 Patents Act 1953 s 113 of subsection (1) of section 91, shall publish therein all such particulars of applications for patents (whether filed before or after the commencement of this Act) as are prescribed by regulations made under this Act and all such other matters as are directed by this Act or otherwise by law to be published therein and such other matters and information as may appear to him to be useful or important to proprietors of patents registered or subsisting in New Zealand.
The Commissioner may prepare and publish in such form as he deems expedient indexes, specifications, abridgments of spe- cifications, catalogues, and other works relating to inventions and patents as he thinks fit.
The Commissioner may maintain and revise from time to time a classification by subject matter of specifications filed in New Zealand and open to public inspection and of such printed pub- lications relating to patents published in New Zealand as may be necessary or useful for the purpose of determining with readiness and accuracy the novelty of inventions for which ap- plications for patents are filed.
Compare: 1946 No 32 s 6 (2) (3) 113 Rules of court (1) Rules regulating the practice and procedure of the court in proceedings under this Act may be made in accordance with the provisions of section 3 of the Judicature Amendment Act 1930.

Subject thereto, such proceedings shall be taken in ac- cordance with the practice and procedure of the court in like cases.
(2) Any such rules may make provision for the appointment of sci- entific advisers to assist the court in proceedings for infringe- ment of patents and in proceedings under this Act and for regu- lating the functions and remuneration of those advisers.

(3) Any action for infringement of a patent shall be tried without a jury, unless the court otherwise directs.
Compare: 1921–22 No 18 s 139; Patents Act 1949 s 84 (UK) 105 s 114 Patents Act 1953 Reprinted as at 1 January 2011 114 Regulations (1) Subject to the provisions of this Act, the Governor-General may from time to time, by Order in Council, make all such regulations as may in his opinion be necessary or expedient for giving effect to the provisions of this Act and for the due administration thereof.
(2) Without limiting the general power conferred by subsection (1), it is hereby declared that regulations may be made under this section for all or any of the following purposes: (a) for regulating the business of the Patent Office in rela- tion to patents: for regulating all matters by this Act placed under the direction or control of the Commissioner: for prescribing the form and manner of execution of ap- plications for patents and of any specifications, draw- ings, or other documents which may be filed at the Patent Office, and for requiring copies to be furnished of any such documents: for regulating the procedure to be followed in connec- tion with any application or request to the Commis- sioner or in connection with any proceeding before the Commissioner and for authorising the rectification of ir- regularities of procedure: for regulating the keeping of the register of patent attor- neys: for regulating the registration of patent attorneys, and for prescribing the terms and conditions of their regis- tration: for regulating the procedure for removing the names of patent attorneys from the register of patent attorneys and for suspending patent attorneys from practice be- fore the Patent Office: prescribing classes of persons whom the Commissioner may refuse to recognise as agents in respect of proceed- ings under this Act: for authorising the preparation, publication, sale, and exchange of copies of specifications, drawings, and other documents in the Patent Office and of indexes to and abridgments of them: (b) (c) (d) (e) (f) (g) (h) (i) 106 Reprinted as at 1 January 2011 Patents Act 1953 s 115 (j) (k) (l) for prescribing the mode of advertising any matter which by this Act is required to be advertised: for prescribing anything authorised or required by this Act to be prescribed by regulations: for the carrying out, or giving effect to, New Zealand’s obligations under the Patent Cooperation Treaty.
(3) [Repealed] Compare: 1921–22 No 18, s 138; Patents Act 1949 s 94 (UK) Section 114(2)(l): inserted, on 1 December 1992, by section 9 of the Patents Amendment Act 1992 (1992 No 81).

Section 114(3): Regulations (Disallowance) Act 1989 (1989 No 143).
repealed, on 19 December 1989, by section 11 of the 115 Fees (1) Subject to the provisions of this Act, there shall be paid in respect of the grant of patents and applications therefor, and in respect of other matters relating to patents arising under this Act, such fees as may be from time to time prescribed by regulations made under this Act, and all such fees shall be paid into a Departmental Bank Account.
(3) (2) Any sum paid to the Commissioner by mistake, or any sum the payment of which is not required by the regulations made under this Act, may be refunded by the Commissioner, and all moneys so refunded shall be paid out of public money without further appropriation than this Act.
Fees in respect of international applications may, in accord- ance with New Zealand’s obligations under the Patent Cooper- ation Treaty, be collected by the Commissioner on behalf of— (a) (b) the International Bureau; or any international search authority that has been ap- proved, for the purposes of this subsection, by the Minister as an appropriate authority on whose behalf the Commissioner may collect such fees.
Compare: 1921–22 No 18 s 117; Patents Act 1949 s 99 (UK) Section 115(1): amended (with effect on 1 July 1989), on 26 July 1989, by section 86(1) of the Public Finance Act 1989 (1989 No 44).

Section 115(2): amended (with effect on 1 July 1989), on 26 July 1989, by section 86(1) of the Public Finance Act 1989 (1989 No 44).

Section 115(3): inserted, on 1 December 1992, by section 10 of the Patents Amendment Act 1992 (1992 No 81).
107 s 116 Patents Act 1953 Reprinted as at 1 January 2011 116 Annual report of Commissioner (1) (2) (3) The Commissioner shall, in July of each year, furnish to the Minister a report on the operation of this Act during the year ended on the immediately preceding 30 June.

The report shall include an account of fees, salaries, allow- ances, and other money received and paid under this Act dur- ing that year.
The Minister shall lay a copy of the report before the House of Representatives within 28 sitting days of receiving it.

Section 116: replaced, on 19 August 1992, by section 11(1) of the Patents Amendment Act 1992 (1992 No 81).

Saving for Royal prerogative, etc 117 (1) Nothing in this Act shall take away, abridge, or prejudicially affect the prerogative of the Crown in relation to the granting of letters patent or to the withholding of a grant thereof.
(2) Nothing in this Act shall affect the right of the Crown or of any person deriving title directly or indirectly from the Crown to sell or use articles forfeited under the laws relating to Customs or excise.

Compare: 1921–22 No 18 ss 32(4), 145; Patents Act 1949 s 102 (UK) 118 Application of Act to Tokelau This Act shall be in force in Tokelau.

Section 118 heading: amended, on 9 December 1976, pursuant to section 3(8) of the Tokelau Amendment Act 1976 (1976 No 122).
Section 118: amended, on 9 December 1976, pursuant to section 3(8) of the Tokelau Amendment Act 1976 (1976 No 122).

119 Repeals and savings (1) (2) (3) Without limiting the provisions of the Acts Interpretation Act The enactments specified in Schedule 1 are hereby repealed.

The regulations specified in Schedule 2 are hereby revoked.
1924, it is hereby declared that— (a) the repeal or revocation of any provision by this Act shall not affect any document made or any thing what- soever done under the provision so repealed or revoked or under any corresponding former provision, and every such document or thing, so far as it is subsisting or in 108 Reprinted as at 1 January 2011 Patents Act 1953 s 119 force at the time of the repeal or revocation and could have been made or done under this Act, shall continue and have effect as if it had been made or done under the corresponding provision of this Act and as if that pro- vision had been in force when the document was made or the thing was done: the transitional provisions set out in Schedule 3 shall have effect for the purposes of the transition to the pro- visions of this Act from the law in force before the com- mencement of this Act.
(b) Compare: Patents Act 1949 s 106 (UK) 109 Schedule 1 Patents Act 1953 Schedule 1 Enactments repealed Reprinted as at 1 January 2011 s 119(1) Emergency Regulations Continuance Act 1947 (1947 No 66) Amendment(s) incorporated in the Act(s).

Patents, Designs, and Trade Marks Act 1908 (1908 No 140) Amendment(s) incorporated in the Act(s).

Patents, Designs, and Trade Marks Act 1921–22 (1921–22 No 18) (Reprint of Statutes, Vol VI, p 656) Amendment(s) incorporated in the Act(s).
Patents, Designs, and Trade Marks Amendment Act 1924 (1924 No 40) (Reprint of Statutes, Vol VI, p 736) Patents, Designs, and Trade Marks Amendment Act 1929 (1929 No 14) (Reprint of Statutes, Vol VI, p 738) Patents, Designs, and Trade Marks Amendment Act 1939 (1939 No 26) Amendment(s) incorporated in the Act(s).

Patents, Designs, and Trade Marks Amendment Act 1943 (1943 No 6) Amendment(s) incorporated in the Act(s).
Patents, Designs, and Trade Marks Amendment Act 1946 (1946 No 32) Amendment(s) incorporated in the Act(s).

Patents, Designs, and Trade Marks Amendment Act 1947 (1947 No 37) Amendment(s) incorporated in the Act(s).

Stamp Duties Amendment Act 1953 (1953 No 54) Amendment(s) incorporated in the Act(s).
110 Reprinted as at 1 January 2011 Patents Act 1953 Schedule 2 Schedule 2 Regulations revoked s 119(2) Title Patents, Designs, Trade Marks, and Copyright Emer- gency Regulations 1940 Serial number 1940/60 Amendment No 1 Amendment No 2 Amendment No 3 Amendment No 4 1943/91 1947/198 1948/43 1948/118 111 Schedule 3 Patents Act 1953 Schedule 3 Transitional provisions Reprinted as at 1 January 2011 s 119(3)(b) Subject to the provisions of this schedule, any Order in Coun- cil, regulation, order, requirement, certificate, notice, decision, direction, authorisation, consent, application, request, or thing made, issued, given, or done under any enactment repealed by this Act shall, if in force at the commencement of this Act, and so far as it could have been made, issued, given, or done under this Act, continue in force and have effect as if made, issued, given, or done under the corresponding enactment of this Act.
Section 11 shall apply in relation to a complete specification filed before the commencement of this Act as it applies to a complete specification filed after the commencement of this Act: provided that for the purposes of the said section 11 a claim of any such specification filed after a provisional specification shall be deemed to be fairly based on the matter disclosed in the provisional specification unless the claim is for a further invention or an invention different from that contained in the provisional specification.
Notwithstanding anything in subsection (2) of section 9, a complete specification shall not be filed in pursuance of an ap- plication which, by virtue of section 7 of the Patents, Designs, and Trade Marks Act 1921–22 was deemed to be abandoned at any time before the commencement of this Act.
Where a complete specification has been filed before the com- mencement of this Act but has not been accepted, then, in re- lation to matters arising before the acceptance or refusal of ac- ceptance of the complete specification, the provisions of this Act shall not apply, but the provisions of the Patents, Designs, and Trade Marks Act 1921–22 shall continue to apply, not- withstanding the repeal thereof.
The provisions of sections 21 and 42 relating to the grounds on which the grant of a patent may be opposed or on which a 112 Reprinted as at 1 January 2011 Patents Act 1953 Schedule 3 patent may be revoked by the Commissioner shall not apply in any case where the complete specification was accepted be- fore the commencement of this Act, but the provisions of the Patents, Designs, and Trade Marks Act 1921–22, relating to those matters shall continue to apply in any such case notwith- standing the repeal thereof.
The power of the Commissioner under section 22 to refuse the grant of a patent unless the complete specification is amended to his satisfaction shall not be exercisable in relation to any complete specification which was accepted before the com- mencement of this Act.

The provisions of section 62 shall apply in relation to any ap- plication for a patent made before the commencement of this Act as they apply in relation to such an application made after the commencement of this Act.
Where, in relation to any invention, the time for giving notice to the Commissioner under section 50 of the Patents, Designs, and Trade Marks Act 1921–22 expired before the commence- ment of this Act and the notice was not given, subsections (2) and (4) of section 60 of this Act shall not apply in relation to that invention or any patent for that invention.
In relation to a complete specification which was accepted be- fore the commencement of this Act, this Act shall have effect as if for the words “the date of the publication”, wherever those words occur, there were substituted the words “the date of the acceptance”.

6 7 8 9 10 Where a specification filed before the commencement of this Act has become open to public inspection, it shall continue to be open to public inspection notwithstanding anything in section 91.
11 Where a specification which, before the commencement of this Act, has become open to public inspection under paragraph (a) 113 Schedule 3 Patents Act 1953 Reprinted as at 1 January 2011 of subsection (3) of section 144 of the Patents, Designs, and Trade Marks Act 1921–22, the proviso to subsection (7) of section 55 of the Patents, Designs, and Trade Marks Amend- ment Act 1939, or section 5 of the Patents, Designs, and Trade Marks Amendment Act 1946 has been amended before accept- ance, nothing in subsection (2) of section 40 of this Act shall be construed as authorising reference to be made, in constru- ing the specification, to the specification as it subsisted before acceptance.
12 Where 2 or more persons are registered as grantee or proprietor in respect of a patent which was granted or for which applica- tion was made before the commencement of this Act, the right of each of those persons to assign the whole or part of his in- terest in the patent shall not be restricted by reason only of the provisions of section 63.

A condition of any contract in force immediately before the commencement of this Act shall not be invalidated by reason only of the provisions of section 66.
Notwithstanding the repeal of section 44 of the Patents, De- signs, and Trade Marks Act 1921–22, subsection (1A) of that section, as set out in section 67 of the Patents, Designs, and Trade Marks Act 1939, shall continue to apply in any case where the complete specification was filed before the com- mencement of this Act.

Subsections (1) and (3) of section 30 shall not apply to any patent granted before the commencement of this Act.
Subsection (1) of section 34 shall apply in relation to any appli- cation made before the commencement of this Act as it applies in relation to an application made after the commencement of this Act.
Section 35 shall have effect, in relation to a patent which has ceased to have effect before the commencement of this Act, as 114 Reprinted as at 1 January 2011 Patents Act 1953 Schedule 3 if for the reference to section 30 there were substituted a ref- erence to section 19 of the Patents, Designs, and Trade Marks Act 1921–22.
18 Where the time allowed under section 59 of the Patents, De- signs, and Trade Marks Amendment Act 1939 for the sealing of a patent has expired before the commencement of this Act and the patent has not been sealed, section 36 of this Act shall have effect in relation to the application for the patent as if for the reference to section 27 of this Act there were substituted a reference to section 59 of the Patents, Designs, and Trade Marks Amendment Act 1939.
19 Where the time allowed under section 72 of the Patents, De- signs, and Trade Marks Amendment Act 1939 for the accept- ance of a complete specification has expired before the com- mencement of this Act and the complete specification has not been accepted, section 37 of this Act shall have effect in rela- tion to the application for the patent as if for every reference to section 19 or section 93 of this Act there were substituted a reference to section 72 of the Patents, Designs, and Trade Marks Amendment Act 1939.
20 21 22 In relation to any proceedings pending at the commencement of this Act the provisions of sections 39 and 71 shall not apply, but the provisions of section 24 of the Patents, Designs, and Trade Marks Act 1921–22 and of subsection (2) of section 64 of the Patents, Designs, and Trade Marks Amendment Act 1939 shall continue to apply notwithstanding the repeal of those enactments.

Section 72 shall not apply in relation to any infringement of a patent committed before the commencement of this Act.
Nothing in this Act shall affect the term of any patent granted before the commencement of this Act.

115 Schedule 3 Patents Act 1953 Reprinted as at 1 January 2011 23 Any document referring to any enactment repealed by this Act shall be construed as referring to the corresponding enactment of this Act.
24 Where any application or proceeding under the regulations re- voked by Schedule 2 has been filed or commenced before the commencement of this Act, or where any application or pro- ceeding could (if those regulations remained in force) be filed or commenced after the commencement of this Act and be ac- corded a date before the commencement of this Act, the ap- plication or proceeding may be filed, commenced, continued, and completed as if the said regulations continued in force.
Any patent granted before or after the commencement of this Act with an extension under regulation 8 of the Patents, De- signs, Trade Marks, and Copyright Emergency Regulations 1940 shall be subject to the conditions which would be im- posed by that regulation if it continued in force.
116 Reprinted as at 1 January 2011 Patents Act 1953 Patents Amendment Act 1992 Public Act Date of assent Commencement 1992 No 81 18 August 1992 see section 1 1 (1) (2) (3) Short Title and commencement This Act may be cited as the Patents Amendment Act 1992, and shall be read together with and deemed part of the Patents Act 1953 (hereinafter referred to as “the principal Act”).

Except as provided in subsection (3), this Act shall come into force on 1 December 1992.
Sections 3, 8, and 11 shall come into force on the day after the date on which this Act receives the Royal assent.
117 Patents Act 1953 Reprinted as at 1 January 2011 s 2 Schedule 1 Patent Cooperation Treaty Done at Washington on June 19, 1970, amended on October 2, 1979, and modified on February 3, 1984 The Contracting States, Desiring to make a contribution to the progress of science and tech- nology, Desiring to perfect the legal protection of inventions, Desiring to simplify and render more economical the obtaining of protection for inventions where protection is sought in several coun- tries, Desiring to facilitate and accelerate access by the public to the tech- nical information contained in documents describing new inventions, Desiring to foster and accelerate the economic development of de- veloping countries through the adoption of measures designed to in- crease the efficiency of their legal systems, whether national or re- gional, instituted for the protection of inventions by providing easily accessible information on the availability of technological solutions applicable to their special needs and by facilitating access to the ever expanding volume of modern technology, Convinced that cooperation among nations will greatly facilitate the attainment of these aims, Have concluded the present Treaty.
Introduction Provisions Article 1—Establishment of a Union (1) The States party to this Treaty (hereinafter called “the Con- tracting States”) constitute a Union for cooperation in the fil- ing, searching, and examination, of applications for the protec- tion of inventions, and for rendering special technical services.

The Union shall be known as the International Patent Cooper- ation Union.
(2) No provision of this Treaty shall be interpreted as diminish- ing the rights under the Paris Convention for the Protection of Industrial Property of any national or resident of any country party to that Convention.
118 Reprinted as at 1 January 2011 Patents Act 1953 (ii) Article 2—Definitions For the purposes of this Treaty and the Regulations and unless ex- pressly stated otherwise: (i) “application” means an application for the protection of an in- vention; references to an “application” shall be construed as references to applications for patents for inventions, inven- tors’ certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, and utility certificates of addition; references to a “patent” shall be construed as references to patents for inventions, inventors’ certificates, utility certifi- cates, utility models, patents or certificates of addition, inven- tors’ certificates of addition, and utility certificates of addition; “national patent” means a patent granted by a national author- ity; “regional patent” means a patent granted by a national or an intergovernmental authority having the power to grant patents effective in more than one State; “regional application” means an application for a regional patent; references to a “national application” shall be construed as references to applications for national patents and regional patents, other than applications filed under this Treaty; (vii) “international application” means an application filed under (iii) (iv) (vi) (v) this Treaty; (x) (ix) (viii) references to an “application” shall be construed as references to international applications and national applications; references to a “patent” shall be construed as references to national patents and regional patents; references to “national law” shall be construed as references to the national law of a Contracting State or, where a regional application or a regional patent is involved, to the treaty pro- viding for the filing of regional applications or the granting of regional patents; “priority date,” for the purposes of computing time limits, means: (a) where the international application contains a priority claim under Article 8, the filing date
 of the application whose priority is so claimed; (xi) 119 Patents Act 1953 Reprinted as at 1 January 2011 Article 2—continued (b) where the international application consists several pri- ority claims under Article 8, the filing date of the earliest application whose priority is so claimed; where the international application does not contain any priority claim under Article 8, the international filing date of such application; (c) (xii) “national Office” means the government authority of a Con- tracting State entrusted with the granting of patents; references to a “national Office” shall be construed as referring also to any intergovernmental authority which several States have en- trusted with the task of granting regional patents, provided that at least one of those States is a Contracting State, and provided that the said States have authorized that authority to assume the obligations and exercise the powers which this Treaty and the Regulations provide for in respect of national Offices; (xiii) “designated Office” means the national Office of or acting for the State designated by the applicant under Chapter I of this Treaty; (xv) (xiv) “elected Office” means the national Office of or acting for the State elected by the applicant under Chapter II of this Treaty; “receiving Office” means the national Office or the intergov- ernmental organization with which the international applica- tion has been filed; (xvi) “Union” means the International Patent Cooperation Union; (xvii) “Assembly” means the Assembly of the Union; (xviii) “Organization” means the World Intellectual Property Organ- ization; (xix) “International Bureau” means the International Bureau of the Organization and, as long as it subsists, the United Inter- national Bureaux for the Protection of Intellectual Property (BIRPI); “Director General” means the Director General of the Organ- ization and, as long as BIRPI subsists, the Director of BIRPI.
(xx) 120 Reprinted as at 1 January 2011 Patents Act 1953 Chapter I International Application and International Search Article 3—The International Application (1) Applications for the protection of inventions in any of the Con- tracting States may be filed as international applications under this Treaty.

(3) (2) An international application shall contain, as specified in this Treaty and the Regulations, a request, a description, one or more claims, one or more drawings (where required), and an abstract.
The abstract merely serves the purpose of technical informa- tion and cannot be taken into account for any other purpose, particularly not for the purpose of interpreting the scope of the protection sought.

The international application shall: be in a prescribed language; (i) comply with the prescribed physical requirements; (ii) comply with the prescribed requirement of unity of in- (iii) vention; be subject to the payment of the prescribed fees.
(iv) (4) Article 4—The Request (1) The request shall contain: (i) (ii) a petition to the effect that the international application be processed according to this Treaty; the designation of the Contracting State or States in which protection for the invention is desired on the basis of the international application (“designated States”); if for any designated State a regional patent is avail- able and the applicant wishes to obtain a regional patent rather than a national patent, the request shall so indi- cate; if, under a treaty concerning a regional patent, the applicant cannot limit his application to certain of the States party to that treaty, designation of one of those States and the indication of the wish to obtain the re- gional patent shall be treated as designation of all the States party to that treaty; if, under the national law of 121 Patents Act 1953 Reprinted as at 1 January 2011 Chapter I—continued Article 4—continued (iii) (iv) (v) the designated State, the designation of that State has the effect of an application for a regional patent, the desig- nation of the said State shall be treated as an indication of the wish to obtain the regional patent; the name of and other prescribed data concerning the applicant and the agent (if any); the title of the invention; the name of and other prescribed data concerning the inventor where the national law of at least one of the designated States requires that these indications be fur- nished at the time of filing a national application.
Other- wise, the said indications may be furnished either in the request or in separate notices addressed to each desig- nated Office whose national law requires the furnishing of the said indications but allows that they be furnished at a time later than that of the filing of a national appli- cation.

(2) Every designation shall be subject to the payment of the pre- scribed fee within the prescribed time limit.
(4) (3) Unless the applicant asks for any of the other kinds of protec- tion referred to in Article 43, designation shall mean that the desired protection consists of the grant of a patent by or for the designated State.

For the purposes of this paragraph, Article 2(ii) shall not apply.
Failure to indicate in the request the name and other prescribed data concerning the inventor shall have no consequence in any designated State whose national law requires the furnishing of the said indications but allows that they be furnished at a time later than that of the filing of a national application.

Failure to furnish the said indications in a separate notice shall have no consequence in any designated State whose national law does not require the furnishing of the said indications.
Article 5—The Description The description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art.

122 Reprinted as at 1 January 2011 Patents Act 1953 Chapter I—continued Article 6—The Claims The claim or claims shall define the matter for which protection is sought.

Claims shall be clear and concise.

They shall be fully sup- ported by the description.
Article 7—The Drawings (1) Subject to the provisions of paragraph (2)(ii), drawings shall be required when they are necessary for the understanding of the invention.

(2) Where, without being necessary for the understanding of the invention, the nature of the invention admits of illustration by drawings: (i) the applicant may include such drawings in the inter- national application when filed, any designated Office may require that the applicant file such drawings with it within the prescribed time limit.
(ii) Article 8—Claiming Priority (1) The international application may contain a declaration, as prescribed in the Regulations, claiming the priority of one or more earlier applications filed in or for any country party to the Paris Convention for the Protection of Industrial Property.
(2)(a) Subject to the provisions of subparagraph (b), the conditions for, and the effect of, any priority claim declared under para- graph (1) shall be as provided in Article 4 of the Stockholm Act of the Paris Convention for the Protection of Industrial Property.

The international application for which the priority of one or more earlier applications filed in or for a Contracting State is claimed may contain the designation of that State.
Where, in the international application, the priority of one or more na- tional applications filed in or for a designated State is claimed, or where the priority of an international application having designated only one State is claimed, the conditions for, and the effect of, the priority claim in that State shall be governed by the national law of that State.
(b) 123 Patents Act 1953 Reprinted as at 1 January 2011 Chapter I—continued Article 9—The Applicant (1) Any resident or national of a Contracting State may file an (2) (3) international application.

The Assembly may decide to allow the residents and the na- tionals of any country party to the Paris Convention for the Protection of Industrial Property which is not party to this Treaty to file international applications.
The concepts of residence and nationality, and the application of those concepts in cases where there are several applicants or where the applicants are not the same for all the designated States, are defined in the Regulations.

Article 10—The Receiving Office The international application shall be filed with the prescribed receiv- ing Office, which will check and process it as provided in this Treaty and the Regulations.
Article 11—Filing Date and Effects of the International Application (ii) (iii) The receiving Office shall accord as the international filing date the date of receipt of the international application, pro- vided that that Office has found that, at the time of receipt: (i) the applicant does not obviously lack, for reasons of residence or nationality, the right to file an international application with the receiving Office, the international application is in the prescribed lan- guage, the international application contains at least the follow- ing elements: (a) an indication that it is intended as an international application, the designation of at least one Contracting State, the name of the applicant, as prescribed, a part which on the face of it appears to be a description, (b) (c) (d) (1) 124 Reprinted as at 1 January 2011 Patents Act 1953 Chapter I—continued Article 11—continued (e) a part which on the face of it appears to be a claim or claims.
(b) (2)(a) If the receiving Office finds that the international application did not, at the time of receipt, fulfil the requirements listed in paragraph (1), it shall, as provided in the Regulations, invite the applicant to file the required correction.

If the applicant complies with the invitation, as provided in the Regulations, the receiving Office shall accord as the inter- national filing date the date of receipt of the required correc- tion.
Subject to article 64(4), any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) and accorded an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.
(3) (4) Any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) shall be equivalent to a regular national filing within the meaning of the Paris Con- vention for the Protection of Industrial Property.
Article 12—Transmittal of the International Application to the International Bureau and the International Searching Authority (1) One copy of the international application shall be kept by the receiving Office (“home copy”), one copy (“record copy”) shall be transmitted to the International Bureau, and another copy (“search copy”) shall be transmitted to the competent International Searching Authority referred to in Article 16, as provided in the Regulations.
The record copy shall be considered the true copy of the inter- national application.

The international application shall be considered withdrawn if the record copy has not been received by the International Bureau within the prescribed time limit.
(2) (3) 125 Patents Act 1953 Reprinted as at 1 January 2011 Chapter I—continued Article 13—Availability of Copy of the International Application to Designated Offices (1) Any designated Office may ask the International Bureau to transmit to it a copy of the international application prior to the communication provided for in Article 20, and the Inter- national Bureau shall transmit such copy to the designated Of- fice as soon as possible after the expiration of one year from the priority date.
(2)(a) The applicant may, at any time, transmit a copy of his inter- (b) (c) national application to any designated Office.

The applicant may, at any time, ask the International Bureau to transmit a copy of his international application to any desig- nated Office, and the International Bureau shall transmit such copy to the designated Office as soon as possible.
Any national Office may notify the International Bureau that it does not wish to receive copies as provided for in subpara- graph (b), in which case that subparagraph shall not be applic- able in respect of that Office.
Article 14—Certain Defects in the International Application (1)(a) The receiving Office shall check whether the international ap- plication contains any of the following defects, that is to say: it is not signed as provided in the Regulations; (i) it does not contain the prescribed indications concern- (ii) ing the applicant; it does not contain a title; it does not contain an abstract; it does not comply to the extent provided in the Regu- lations with the prescribed physical requirements.
If the receiving Office finds any of the said defects, it shall in- vite the applicant to correct the international application within the prescribed time limit, failing which that application shall be considered withdrawn and the receiving Office shall so de- clare.
(iii) (iv) (v) (b) 126 Reprinted as at 1 January 2011 Patents Act 1953 Chapter I—continued Article 14—continued (2) If the international application refers to drawings which, in fact, are not included in that application, the receiving Of- fice shall notify the applicant accordingly and he may furnish them within the prescribed time limit and, if he does, the inter- national filing date shall be the date on which the drawings are received by the receiving Office.
Otherwise, any reference to the said drawings shall be considered non-existent.

(b) (3)(a) If the receiving Office finds that, within the prescribed time limits, the fees prescribed under Article 3(4)(iv) have not been paid, or no fee prescribed under Article 4(2) has been paid in respect of any of the designated States, the international application shall be considered withdrawn and the receiving Office shall so declare.
If the receiving Office finds that the fee prescribed under Art- icle 4(2) has been paid in respect of one or more (but less than all) designated States within the prescribed time limit, the des- ignation of those States in respect of which it has not been paid within the prescribed time limit shall be considered withdrawn and the receiving Office shall so declare.
If, after having accorded an international filing date to the international application, the receiving Office finds, within the prescribed time limit, that any of the requirements listed in items (i) to (iii) of Article 11(1) was not complied with at that date, the said application shall be considered withdrawn and the receiving Office shall so declare.

(4) Article 15—The International Search (1) (2) (3) (4) Each international application shall be the subject of inter- national search.
The objective of the international search is to discover relevant prior art.

International search shall be made on the basis of the claims, with due regard to the description and the drawings (if any).
The International Searching Authority referred to in Article 16 shall endeavor to discover as much of the relevant prior 127 Patents Act 1953 Reprinted as at 1 January 2011 Chapter I—continued Article 15—continued art as its facilities permit, and shall, in any case, consult the documentation specified in the Regulations.
(c) (b) (5)(a) If the national law of the Contracting State so permits, the applicant who files a national application within the national Office of or acting for such State may, subject to the condi- tions provided for in such law, request that a search similar to an international search (“international-type search”) be carried out on such application.
If the national law of the Contracting State so permits, the na- tional Office of or acting for such State may subject any na- tional application filed with it to an international-type search.

The international-type search shall be carried out by the Inter- national Searching Authority referred to in Article 16 which would be competent for an international search if the national application were an international application and were filed with the Office referred to in subparagraphs (a) and (b).
If the national application is in a language which the International Searching Authority considers it is not equipped to handle, the international-type search shall be carried out on a trans- lation prepared by the applicant in a language prescribed for international applications and which the International Search- ing Authority has undertaken to accept for international ap- plications.
The national application and the translation, when required, shall be presented in the form prescribed for inter- national applications.
Article 16—The International Searching Authority International search shall be carried out by an International Searching Authority, which may be either a national Office or an intergovernmental organization, such as the International Patent Institute, whose tasks include the establishing of docu- mentary search reports on prior art with respect to inventions which are the subject of applications.
If, pending the establishment of a single International Search- ing Authority, there are several International Searching Au- (1) (2) 128 Reprinted as at 1 January 2011 Patents Act 1953 Chapter I—continued Article 16—continued thorities, each receiving Office shall, in accordance with the provisions of the applicable agreement referred to in paragraph (3)(b), specify the International Searching Authority or Au- thorities competent for the searching of international applica- tions filed with such Office.
(3)(a) International Searching Authorities shall be appointed by the Assembly.

Any national Office and any intergovernmental or- ganization satisfying the requirements referred to in subpara- graph (c) may be appointed as International Searching Author- ity.
(b) Appointment shall be conditional on the consent of the intergovernmental organization to be national Office or appointed and the conclusion of an agreement, subject to ap- proval by the Assembly, between such Office or organization and the International Bureau.

The agreement shall specify the rights and obligations of the parties, in particular, the formal undertaking by the said Office or organization to apply and observe all the common rules of international search.
The Regulations prescribe the minimum requirements, partic- ularly as to manpower and documentation, which any Office or organization must satisfy before it can be appointed and must continue to satisfy while it remains appointed.

(c) (d) Appointment shall be for a fixed period of time and may be (e) extended for further periods.
Before the Assembly makes a decision on the appointment of any national Office or intergovernmental organization, or on the extension of its appointment, or before it allows any such appointment to lapse, the Assembly shall hear the interested Office or organization and seek the advice of the Committee for Technical Cooperation referred to in Article 56 once that Committee has been established.
Article 17—Procedure before the International Searching Authority (1) Procedure before the International Searching Authority shall be governed by the provisions of this Treaty, the Regulations, 129 Patents Act 1953 Reprinted as at 1 January 2011 Chapter I—continued Article 17—continued and the agreement which the International Bureau shall con- clude, subject to this Treaty and the Regulations, with the said Authority.
(2)(a) If the International Searching Authority considers (i) (ii) that the international application relates to a subject matter which the International Searching Authority is not required, under the Regulations, to search, and in the particular case decides not to search, or that the description, the claims, or the drawings, fail to comply with the prescribed requirements to such an extent that a meaningful search could not be carried out, the said Authority shall so declare and shall notify the appli- cant and the International Bureau that no international search report will be established.
If any of the situations referred to in subparagraph (a) is found to exist in connection with certain claims only, the international search report shall so indicate in respect of such claims, whereas, for the other claims, the said report shall be established as provided in Article 18.
(b) (3)(a) If the International Searching Authority considers that the international application does not comply with the require- ment of unity of invention as set forth in the Regulations, it shall invite the applicant to pay additional fees.
The Inter- national Searching Authority shall establish the international search report on those parts of the international application which relate to the invention first mentioned in the claims (“main invention”) and, provided the required additional fees have been paid within the prescribed time limit, on those parts of the international application which relate to inventions in respect of which the said fees were paid.
The national law of any designated State may provide that, where the national Office of that State finds the invitation, re- ferred to in subparagraph (a), of the International Searching Authority justified and where the applicant has not paid all ad- ditional fees, those parts of the international application which consequently have not been searched shall, as far as effects in that State are concerned, be considered withdrawn unless a (b) 130 Reprinted as at 1 January 2011 Patents Act 1953 Chapter I—continued Article 17—continued special fee is paid by the applicant to the national Office of that State.
Article 18—The International Search Report The international search report shall be established within the prescribed time limit and in the prescribed form.

The international search report shall, as soon as it has been established, be transmitted by the International Searching Au- thority to the applicant and the International Bureau.

The international search report or the declaration referred to in Article 17(2)(a) shall be translated as provided in the Regu- lations.
The translations shall be prepared by or under the re- sponsibility of the International Bureau.

Article 19—Amendment of the Claims before the International Bureau The applicant shall, after having received the international search report, be entitled to one opportunity to amend the claims of the international application by filing amendments with the International Bureau within the prescribed time limit.
He may, at the same time, file a brief statement, as provided in the Regulations, explaining the amendments and indicating any impact that such amendments might have on the descrip- tion and the drawings.

The amendments shall not go beyond the disclosure in the international application as filed.

If the national law of any designated State permits amend- ments to go beyond the said disclosure, failure to comply with paragraph (2) shall have no consequence in that State.
(1) (2) (3) (1) (2) (3) Article 20—Communication to Designated Offices (1)(a) The international application, together with the international search report (including any indication referred to in Article 17(2)(b)) or the declaration referred to in Article 17(2)(a), shall 131 Patents Act 1953 Reprinted as at 1 January 2011 Chapter I—continued Article 20—continued (b) (2) be communicated to each designated Office, as provided in the Regulations, unless the designated Office waives such require- ment in its entirety or in part.
The communication shall include the translation (as pre- scribed) of the said report or declaration.

If the claims have been amended by virtue of Article 19(1), the communication shall either contain the full text of the claims both as filed and as amended or shall contain the full text of the claims as filed and specify the amendments, and shall include the statement, if any, referred to in Article 19(1).
(3) At the request of the designated Office or the applicant, the International Searching Authority shall send to the said Office or the applicant, respectively, copies of the documents cited in the international search report, as provided in the Regulations.

Article 21—International Publication (1) The International Bureau shall publish international applica- tions.
(b) (2)(a) Subject to the exceptions provided for in subparagraph (b) and in Article 64(3), the international publication of the inter- national application shall be effected promptly after the expir- ation of 18 months from the priority date of that application.

The applicant may ask the International Bureau to publish his international application any time before the expiration of the time limit referred to in subparagraph (a).
The International Bureau shall proceed accordingly, as provided in the Regula- tions.

The international search report or the declaration referred to in Article 17(2)(a) shall be published as prescribed in the Regu- lations.

The language and form of the international publication and other details are governed by the Regulations.
There shall be no international publication if the international application is withdrawn or is considered withdrawn before the technical preparations for publication have been com- pleted.
(3) (4) (5) 132 Reprinted as at 1 January 2011 Patents Act 1953 Chapter I—continued Article 21—continued (6) (1) If the international application contains expressions or draw- ings which, in the opinion of the International Bureau, are contrary to morality or public order, or if, in its opinion, the international application contains disparaging statements as defined in the Regulations, it may omit such expressions, drawings, and statements, from its publications, indicating the place and number of words or drawings omitted, and furnishing, upon request, individual copies of the passages omitted.
Article 22—Copy, Translation, and Fee, to Designated Offices The applicant shall furnish a copy of the international applica- tion (unless the communication provided for in Article 20 has already taken place) and a translation thereof (as prescribed), and pay the national fee (if any), to each designated Office not later than at the expiration of 20 months from the priority date.
Where the national law of the designated State requires the in- dication of the name of and other prescribed data concerning the inventor but allows that these indications be furnished at a time later than that of the filing of a national application, the applicant shall, unless they were contained in the request, fur- nish the said indications to the national Office of or acting for the State not later than at the expiration of 20 months from the priority date.
(2) Where the International Searching Authority makes a declar- ation, under Article 17(2)(a), that no international search re- port will be established, the time limit for performing the acts referred to in paragraph (1) of this Article shall be the same as that provided for in paragraph (1).

(3) Any national law may, for performing the acts referred to in paragraphs (1) or (2), fix time limits which expire later than the time limit provided for in those paragraphs.
133 Patents Act 1953 Reprinted as at 1 January 2011 Chapter I—continued Article 23—Delaying of National Procedure (1) No designated Office shall process or examine the inter- national application prior to the expiration of the applicable time limit under Article 22.

(2) Notwithstanding the provisions of paragraph (1), any des- ignated Office may, on the express request of the applicant, process or examine the international application at any time.
Article 24—Possible Loss of Effect in Designated States (1) (ii) Subject, in case (ii) below, to the provisions of Article 25, the effect of the international application provided for in Article 11(3) shall cease in any designated State with the same conse- quences as the withdrawal of any national application in that State: (i) if the applicant withdraws his international application or the designation of that State; if the international application is considered withdrawn by virtue of Articles 12(3), 14(1)(b), 14(3)(a), or 14(4), or if the designation of that State is considered with- drawn by virtue of Article 14(3)(b); if the applicant fails to perform the acts referred to in Article 22 within the applicable time limit.
(2) Notwithstanding the provisions of paragraph (1), any desig- nated Office may maintain the effect provided for in Article 11(3) even where such effect is not required to be maintained by virtue of Article 25(2).
(iii) Article 25—Review by Designated Offices (1)(a) Where the receiving Office has refused to accord an inter- national filing date or has declared that the international appli- cation is considered withdrawn, or where the International Bu- reau has made a finding under Article 12(3), the International Bureau shall promptly send, at the request of the applicant, copies of any document in the file to any of the designated Of- fices named by the applicant.
134 Reprinted as at 1 January 2011 Patents Act 1953 Chapter I—continued Article 25—continued (b) Where the receiving Office has declared that the designation of any given State is considered withdrawn, the International Bureau shall promptly send, at the request of the applicant, copies of any document in the file to the national Office of such State.

The request under subparagraphs (a) or (b) shall be presented within the prescribed time limit.
(c) (2)(a) Subject to the provisions of subparagraph (b), each designated Office shall, provided that the national fee (if any) has been paid and the appropriate translation (as prescribed) has been furnished within the prescribed time limit, decide whether the refusal, declaration, or finding, referred to in paragraph (1) was justified under the provisions of this Treaty and the Regula- tions, and, if it finds that the refusal or declaration was the result of an error or omission on the part of the receiving Of- fice or that the finding was the result of an error or omission on the part of the International Bureau, it shall, as far as effects in the State of the designated Office are concerned, treat the international application as if such error or omission had not occurred.
(b) Where the record copy has reached the International Bureau after the expiration of the time limit prescribed under Article 12(3) on account of any error or omission on the part of the applicant, the provisions of subparagraph (a) shall apply only under the circumstances referred to in Article 48(2).
Article 26—Opportunity to Correct before Designated Offices No designated Office shall reject an international application on the grounds of non-compliance with the requirements of this Treaty and the Regulations without first giving the applicant the opportunity to correct the said application to the extent and according to the pro- cedure provided by the national law for the same or comparable situ- ations in respect of national applications.
135 Patents Act 1953 Reprinted as at 1 January 2011 Chapter I—continued Article 27—National Requirements (1) No national law shall require compliance with requirements relating to the form or contents of the international application different from or additional to those which are provided for in this Treaty and the Regulations.
The provisions of paragraph (1) neither affect the application of the provisions of Article 7(2) nor preclude any national law from requiring, once the processing of the international appli- cation has started in the designated Office, the furnishing: (i) (2) when the applicant is a legal entity, of the name of an officer entitled to represent such legal entity, of documents not part of the international application but which constitute proof of allegations or statements made in that application, including the confirmation of the international application by the signature of the ap- plicant when that application, as filed, was signed by his representative or agent.
(ii) (3) Where the applicant, for the purposes of any designated State, is not qualified according to the national law of that State to file a national application because he is not the inventor, the inter- national application may be rejected by the designated Office.
(4) Where the national law provides, in respect of the form or con- tents of national applications, for requirements which, from the viewpoint of applicants, are more favorable than the re- quirements provided for by this Treaty and the Regulations in respect of international applications, the national Office, the courts and any other competent organs of or acting for the designated State may apply the former requirements, in- stead of the latter requirements, to international applications, except where the applicant insists that the requirements pro- vided for by this Treaty and the Regulations be applied to his international application.
(5) Nothing in this Treaty and the Regulations is intended to be construed as prescribing anything that would limit the free- dom of each Contracting State to prescribe such substantive conditions of patentability as it desires.
In particular, any pro- vision in this Treaty and the Regulations concerning the def- 136 Reprinted as at 1 January 2011 Patents Act 1953 Chapter I—continued Article 27—continued inition of prior art is exclusively for the purposes of the inter- national procedure and, consequently, any Contracting State is free to apply, when determining the patentability of an in- vention claimed in an international application, the criteria of its national law in respect of prior art and other conditions of patentability not constituting requirements as to the form and contents of applications.
The national law may require that the applicant furnish evi- dence in respect of any substantive condition of patentability prescribed by such law.
(6) (7) Any receiving Office or, once the processing of the inter- national application has started in the designated Office, that Office may apply the national law as far as it relates to any requirement that the applicant be represented by an agent having the right to represent applicants before the said Office and/or that the applicant have an address in the designated State for the purpose of receiving notifications.
(8) Nothing in this Treaty and the Regulations is intended to be construed as limiting the freedom of any Contracting State to apply measures deemed necessary for the preservation of its national security or to limit, for the protection of the general economic interests of that State, the right of its own residents or nationals to file international applications.
Article 28—Amendment of the Claims, the Description, and the Drawings, before Designated Offices (1) (2) The applicant shall be given the opportunity to amend the claims, the description, and the drawings, before each desig- nated Office within the prescribed time limit.

No designated Office shall grant a patent, or refuse the grant of a patent, be- fore such time limit has expired except with the express con- sent of the applicant.
The amendments shall not go beyond the disclosure in the international application as filed unless the national law of the 137 Patents Act 1953 Reprinted as at 1 January 2011 Chapter I—continued Article 28—continued (3) designated State permits them to go beyond the said disclos- ure.

The amendments shall be in accordance with the national law of the designated State in all respects not provided for in this Treaty and the Regulations.
(4) Where the designated Office requires a translation of the inter- national application, the amendments shall be in the language of the translation.
Article 29—Effects of the International Publication (1) As far as the protection of any rights of the applicant in a des- ignated State is concerned, the effects, in that State, of the international publication of an international application shall, subject to the provisions of paragraphs (2) to (4), be the same as those which the national law of the designated State pro- vides for the compulsory national publication of unexamined national applications as such.
If the language in which the international publication has been effected is different from the language in which publications under the national law are effected in the designated State, the said national law may provide that the effects provided for in paragraph (1) shall be applicable only from such time as: (i) (2) a translation into the latter language has been published as provided by the national law, or a translation into the latter language has been made available to the public, by laying open for public inspec- tion as provided by the national law, or a translation into the latter language has been transmit- ted by the applicant to the actual or prospective un- authorized user of the invention claimed in the inter- national application, or both the acts described in (i) and (iii), or both the acts described in (ii) and (iii), have taken place.
(ii) (iii) (iv) The national law of any designated State may provide that, where the international publication has been effected, on the (3) 138 Reprinted as at 1 January 2011 Patents Act 1953 Chapter I—continued Article 29—continued (4) request of the applicant, before the expiration of 18 months from the priority date, the effects provided for in paragraph (1) shall be applicable only from the expiration of 18 months from the priority date.
The national law of any designated State may provide that the effects provided for in paragraph (1) shall be applicable only from the date on which a copy of the international application as published under Article 21 has been received in the national Office of or acting for such State.

The said Office shall publish the date of receipt in its gazette as soon as possible.
Article 30—Confidential Nature of the International Application (1)(a) Subject to the provisions of subparagraph (b), the Inter- national Bureau and the International Searching Authorities shall not allow access by any person or authority to the international application before the international publication of that application, unless requested or authorized by the applicant.
The provisions of subparagraph (a) shall not apply to any transmittal to the competent International Searching Au- thority, to transmittals provided for under Article 13, and to communications provided for under Article 20.
(b) (2)(a) No national Office shall allow access to the international ap- plication by third parties, unless requested or authorized by the applicant, before the earliest of the following dates: (i) date of the international publication of the international application, date of the receipt of the communication of the inter- national application under Article 20, date of the receipt of a copy of the international appli- cation under Article 22.
(ii) (iii) (b) The provisions of subparagraph (a) shall not prevent any na- tional Office from informing third parties that it has been des- ignated, or from publishing that fact.
Such information or pub- lication may, however, contain only the following data: iden- 139 Patents Act 1953 Reprinted as at 1 January 2011 Chapter I—continued Article 30—continued (c) (3) (4) tification of the receiving Office, name of the applicant, inter- national filing date, international application number, and title of the invention.
The provisions of subparagraph (a) shall not prevent any des- ignated Office from allowing access to the international appli- cation for the purposes of the judicial authorities.

The provisions of paragraph (2)(a) shall apply to any receiving Office except as far as transmittals provided for under Article 12(1) are concerned.
For the purposes of this Article, the term “access” covers any means by which third parties may acquire cognizance, includ- ing individual communication and general publication, pro- vided, however, that no national Office shall generally pub- lish an international application or its translation before the international publication or, if international publication has not taken place by the expiration of 20 months from the priority date, before the expiration of 20 months from the said priority date.
Chapter II International Preliminary Examination Article 31—Demand for International Preliminary Examination (1) On the demand of the applicant, his international application shall be the subject of an international preliminary examin- ation as provided in the following provisions and the Regula- tions.
(2)(a) Any applicant who is a resident or national, as defined in the Regulations, of a Contracting State bound by Chapter II, and whose international application has been filed with the receiv- ing Office of or acting for such State, may make a demand for international preliminary examination.
The Assembly may decide to allow persons entitled to file international applications to make a demand for international (b) 140 Reprinted as at 1 January 2011 Patents Act 1953 Chapter II—continued Article 31—continued (3) preliminary examination even if they are residents or nationals of a State not party to this Treaty or not bound by Chapter II.

The demand for international preliminary examination shall be made separately from the international application.
The demand shall contain the prescribed particulars and shall be in the prescribed language and form.

(4)(a) The demand shall indicate the Contracting State or States in which the applicant intends to use the results of the inter- national preliminary examination (“elected States”).

Addi- tional Contracting States may be elected later.

Election may relate only to Contracting States already designated under Art- icle 4.
(b) Applicants referred to in paragraph (2)(a) may elect any Con- tracting State bound by Chapter II.

Applicants referred to in paragraph (2)(b) may elect only such Contracting States bound by Chapter II as have declared that they are prepared to be elected by such applicants.

The demand shall be subject to the payment of the prescribed fees within the prescribed time limit.

(5) (6)(a) The demand shall be submitted to the competent International Preliminary Examining Authority referred to in Article 32.
(b) Any later election shall be submitted to the International Bu- reau.

Each elected Office shall be notified of its election.

(7) (1) (2) Article 32—The International Preliminary Examining Authority International preliminary examination shall be carried out by the International Preliminary Examining Authority.
In the case of demands referred to in Article 31(2)(a), the re- ceiving Office, and, in the case of demands referred to in Art- icle 31(2)(b), the Assembly, shall, in accordance with the ap- plicable agreement between the interested International Pre- liminary Examining Authority or Authorities and the Inter- national Bureau, specify the International Preliminary Exam- 141 Patents Act 1953 Reprinted as at 1 January 2011 Chapter II—continued Article 32—continued ining Authority or Authorities competent for the preliminary examination.
The provisions of Article 16(3) shall apply, murtatis mutandis, in respect of International Preliminary Examining Authorities.

Article 33—The International Preliminary Examination The objective of the international preliminary examination is to formulate a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be in- dustrially applicable.
For the purposes of the international preliminary examination, a claimed invention shall be considered novel if it is not an- ticipated by the prior art as defined in the Regulations.

For the purposes of the international preliminary examination, a claimed invention shall be considered to involve an inventive step if, having regard to the prior art as defined in the Regu- lations, it is not, at the prescribed relevant date, obvious to a person skilled in the art.
For the purposes of the international preliminary examination, a claimed invention shall be considered industrially applicable if, according to its nature, it can be made or used (in the tech- nological sense) in any kind of industry.

“Industry” shall be understood in its broadest sense, as in the Paris Convention for the Protection of Industrial Property.

The criteria described above merely serve the purposes of international preliminary examination.
Any Contracting State may apply additional or different criteria for the purpose of deciding whether, in that State, the claimed invention is patentable or not.

The international preliminary examination shall take into con- sideration all the documents cited in the international search It may take into consideration any additional docu- report.

ments considered to be relevant in the particular case.
(3) (1) (2) (3) (4) (5) (6) 142 Reprinted as at 1 January 2011 Patents Act 1953 Chapter II—continued Article 34—Procedure before the International Preliminary Examining Authority (1) Procedure before the International Preliminary Examining Authority shall be governed by the provisions of this Treaty, the Regulations, and the agreement which the International Bureau shall conclude, subject to this Treaty and the Regula- tions, with the said Authority.
(b) (2)(a) The applicant shall have a right to communicate orally and in writing with the International Preliminary Examining Author- ity.

The applicant shall have a right to amend the claims, the description, and the drawings, in the prescribed manner and within the prescribed time limit, before the international preliminary examination report is established.

The amend- ment shall not go beyond the disclosure in the international application as filed.
The applicant shall receive at least one written opinion from the International Preliminary Examining Authority unless such Authority considers that all of the following conditions are fulfilled: (i) (c) the invention satisfies the criteria set forth in Article 33(1), the international application complies with the require- ments of this Treaty and the Regulations in so far as checked by that Authority, no observations are intended to be made under Article 35(2), last sentence.
(ii) (iii) The applicant may respond to the written opinion.

(d) (3)(a) If the International Preliminary Examining Authority consid- ers that the international application does not comply with the requirement of unity of invention as set forth in the Regula- tions, it may invite the applicant, at his option, to restrict the claims so as to comply with the requirement or to pay addi- tional fees.
The national law of any elected State may provide that, where the applicant chooses to restrict the claims under subparagraph (b) 143 Patents Act 1953 Reprinted as at 1 January 2011 Chapter II—continued Article 34—continued (c) (a), those parts of the international application which, as a con- sequence of the restriction, are not to be the subject of inter- national preliminary examination shall, as far as effects in that State are concerned, be considered withdrawn unless a special fee is paid by the applicant to the national Office of that State.
If the applicant does not comply with the invitation referred to in subparagraph (a) within the prescribed time limit, the International Preliminary Examining Authority shall establish an international preliminary examination report on those parts of the international application which relate to what appears to be the main invention and shall indicate the relevant facts in the said report.
The national law of any elected State may provide that, where its national Office finds the invitation of the International Preliminary Examining Authority justified, those parts of the international application which do not relate to the main invention shall, as far as effects in that State are concerned, be considered withdrawn unless a special fee is paid by the applicant to that Office.
(4)(a) If the International Preliminary Examining Authority consid- ers— (i) (ii) that the international application relates to a subject matter on which the International Preliminary Examin- ing Authority is not required, under the Regulations, to carry out an international preliminary examination, and in the particular case decides not to carry out such exam- ination, or that the description, the claims, or the drawings, are so unclear, or the claims are so inadequately supported by the description, that no meaningful opinion can be formed on the novelty, inventive step (non-obvious- ness), or industrial applicability, of the claimed inven- tion, the said Authority shall not go into the questions referred to in Article 33(1) and shall inform the applicant of this opinion and the reasons therefor.
144 Reprinted as at 1 January 2011 Patents Act 1953 Chapter II—continued Article 34—continued (b) If any of the situations referred to in subparagraph (a) is found to exist in, or in connection with, certain claims only, the provi- sions of that subparagraph shall apply only to the said claims.

(1) (2) Article 35—The International Preliminary Examination Report The international preliminary examination report shall be es- tablished within the prescribed time limit and in the prescribed form.
The international preliminary examination report shall not contain any statement on the question whether the claimed invention is or seems to be patentable or unpatentable accord- ing to any national law.
It shall state, subject to the provisions of paragraph (3), in relation to each claim, whether the claim appears to satisfy the criteria of novelty, inventive step (non-obviousness), and industrial applicability, as defined for the purposes of the international preliminary examination in Article 33(1) to (4).

The statement shall be accompanied by the citation of the documents believed to support the stated conclusion with such explanations as the circumstances of the case may require.
The statement shall also be accompanied by such other observations as the Regulations provide for.

(3)(a) If, at the time of establishing the international preliminary examination report, the International Preliminary Examining Authority considers that any of the situations referred to in Art- icle 34(4)(a) exists, that report shall state this opinion and the reasons therefor.

It shall not contain any statement as provided in paragraph (2).
If a situation under Article 34(4)(b) is found to exist, the inter- national preliminary examination report shall, in relation to the claims in question, contain the statement as provided in sub- paragraph (a), whereas, in relation to the other claims, it shall contain the statement as provided in paragraph (2).
(b) 145 Patents Act 1953 Reprinted as at 1 January 2011 Chapter II—continued Article 36—Transmittal, Translation, and Communication, of the International Preliminary Examination Report (1) The international preliminary examination report, together with the prescribed annexes, shall be transmitted to the appli- cant and to the International Bureau.

(2)(a) The international preliminary examination report and its an- nexes shall be translated into the prescribed languages.
(b) Any translation of the said report shall be prepared by or under the responsibility of the International Bureau, whereas any translation of the said annexes shall be prepared by the ap- plicant.

(b) (3)(a) The international preliminary examination report, together with its translation (as prescribed) and its annexes (in the ori- ginal language), shall be communicated by the International Bureau to each elected Office.
The prescribed translation of the annexes shall be transmitted within the prescribed time limit by the applicant to the elected Offices.

The provisions of Article 20(3) shall apply, mutatis mutandis, to copies of any document which is cited in the international preliminary examination report and which was not cited in the international search report.

(4) Article 37—Withdrawal of Demand or Election (1) (2) The applicant may withdraw any or all elections.
If the election of all elected States is withdrawn, the demand shall be considered withdrawn.

(3)(a) Any withdrawal shall be notified to the International Bureau.

The elected Offices concerned and the International Prelimin- (b) ary Examining Authority concerned shall be notified accord- ingly by the International Bureau.
(4)(a) Subject to the provisions of subparagraph (b), withdrawal of the demand or of the election of a Contracting State shall, un- less the national law of that State provides otherwise, be con- 146 Reprinted as at 1 January 2011 Patents Act 1953 Chapter II—continued Article 37—continued sidered to be withdrawal of the international application as far as that State is concerned.
(b) Withdrawal of the demand or of the election shall not be con- sidered to be withdrawal of the international application if such withdrawal is effected prior to the expiration of the ap- plicable time limit under Article 22; however, any Contract- ing State may provide in its national law that the aforesaid shall apply only if its national Office has received, within the said time limit, a copy of the international application, together with a translation (as prescribed), and the national fee.
Article 38—Confidential Nature of the International Preliminary Examination (1) Neither the International Bureau nor the International Prelim- inary Examining Authority shall, unless requested or autho- rized by the applicant, allow access within the meaning, and with the proviso, of Article 30(4) to the file of the international preliminary examination by any person or authority at any time, except by the elected Offices once the international pre- liminary examination report has been established.
Subject to the provisions of paragraph (1) and Articles 36(1) and (3) and 37(3)(b), neither the International Bureau nor the International Preliminary Examining Authority shall, unless requested or authorized by the applicant, give information on the issuance or non-issuance of an international preliminary examination report and on the withdrawal or nonwithdrawal of the demand or of any election.
(2) Article 39—Copy, Translation, and Fee, to Elected Offices (1)(a) If the election of any Contracting State has been effected prior to the expiration of the 19th month from the priority date, the provisions of Article 22 shall not apply to such State and the applicant shall furnish a copy of the international application (unless the communication under Article 20 has already taken place) and a translation thereof (as prescribed), and pay the 147 Patents Act 1953 Reprinted as at 1 January 2011 Chapter II—continued Article 39—continued national fee (if any), to each elected Office not later than at the expiration of 30 months from the priority date.
(2) (b) Any national law may, for performing the acts referred to in subparagraph (a), fix time limits which expire later than the time limit provided for in that subparagraph.

The effect provided for in Article 11(3) shall cease in the elected State with the same consequences as the withdrawal of any national application in that State if the applicant fails to perform the acts referred to in paragraph (1)(a) within the time limit applicable under paragraph (1)(a) or (b).
(3) Any elected Office may maintain the effect provided for in Article 11(3) even where the applicant does not comply with the requirements provided for in paragraph (1)(a) or (b).
Article 40—Delaying of National Examination and Other Processing (1) If the election of any Contracting State has been effected prior to the expiration of the 19th month from the priority date, the provisions of Article 23 shall not apply to such State and the national Office of or acting for that State shall not proceed, subject to the provisions of paragraph (2), to the examination and other processing of the international application prior to the expiration of the applicable time limit under Article 39.
(2) Notwithstanding the provisions of paragraph (1), any elected Office may, on the express request of the applicant, proceed to the examination and other processing of the international application at any time.

Article 41—Amendment of the Claims, the Description, and the Drawings, before Elected Offices The applicant shall be given the opportunity to amend the claims, the description, and the drawings, before each elected Office within the prescribed time limit.
No elected Office shall grant a patent, or refuse the grant of a patent, before such time (1) 148 Reprinted as at 1 January 2011 Patents Act 1953 Chapter II—continued Article 41—continued (2) (3) limit has expired, except with the express consent of the ap- plicant.

The amendments shall not go beyond the disclosure in the international application as filed, unless the national law of the elected State permits them to go beyond the said disclosure.
The amendments shall be in accordance with the national law of the elected State in all respects not provided for in this Treaty and the Regulations.

(4) Where an elected Office requires a translation of the inter- national application, the amendments shall be in the language of the translation.
Article 42—Results of National Examination in Elected Offices No elected Office receiving the international preliminary examin- ation report may require that the applicant furnish copies, or informa- tion on the contents, of any papers connected with the examination relating to the same international application in any other elected Of- fice.
Chapter III Common Provisions Article 43—Seeking Certain Kinds of Protection In respect of any designated or elected State whose law provides for the grant of inventors’ certificates, utility certificates, utility models, patents or certificates of addition, inventors’ certificates of addition, or utility certificates of addition, the applicant may indicate, as pre- scribed in the Regulations, that his international application is for the grant, as far as that State is concerned, of an inventor’s certificate, a utility certificate, or a utility model, rather than a patent, or that it is for the grant of a patent or certificate of addition, an inventor’s cer- tificate of addition, or a utility certificate of addition, and the ensuing effect shall be governed by the applicant’s choice.
For the purposes of this Article and any Rule thereunder, Article 2(ii) shall not apply.
149 Patents Act 1953 Reprinted as at 1 January 2011 Chapter III—continued Article 44—Seeking Two Kinds of Protection In respect of any designated or elected State whose law permits an application, while being for the grant of a patent or one of the other kinds of protection referred to in Article 43, to be also for the grant of another of the said kinds of protection, the applicant may indicate, as prescribed in the Regulations, the two kinds of protection he is seeking, and the ensuing effect shall be governed by the applicant’s indications.
For the purposes of this Article, Article 2(ii) shall not apply.
Article 45—Regional Patent Treaties (1) Any treaty providing for the grant of regional patents (“re- gional patent treaty”), and giving to all persons who, accord- ing to Article 9, are entitled to file international applications the right to file applications for such patents, may provide that international applications designating or electing a State party to both the regional patent treaty and the present Treaty may be filed as applications for such patents.
The national law of the said designated or elected State may provide that any designation or election of such State in the international application shall have the effect of an indication of the wish to obtain a regional patent under the regional patent treaty.
(2) Article 46—Incorrect Translation of the International Application If, because of an incorrect translation of the international application, the scope of any patent granted on that application exceeds the scope of the international application in its original language, the competent authorities of the Contracting State concerned may accordingly and retroactively limit the scope of the patent, and declare it null and void to the extent that its scope has exceeded the scope of the international application in its original language.
150 Reprinted as at 1 January 2011 Patents Act 1953 Chapter III—continued Article 47—Time Limits (1) The details for computing time limits referred to in this Treaty are governed by the Regulations.

(2)(a) All time limits fixed in Chapters I and II of this Treaty may, outside any revision under Article 60, be modified by a deci- sion of the Contracting States.

Such decisions shall be made in the Assembly or through vot- ing by correspondence and must be unanimous.
The details of the procedure are governed by the Regulations.

(b) (c) Article 48—Delay in Meeting Certain Time Limits (1) Where any time limit fixed in this Treaty or the Regulations is not met because of interruption in the mail service or unavoid- able loss or delay in the mail, the time limit shall be deemed to be met in the cases and subject to the proof and other con- ditions prescribed in the Regulations.
(2)(a) Any Contracting State shall, as far as that State is concerned, excuse, for reasons admitted under its national law, any delay in meeting any time limit.

(b) Any Contracting State may, as far as that State is concerned, excuse, for reasons other than those referred to in subpara- graph (a), any delay in meeting any time limit.
Article 49—Right to Practice before International Authorities Any attorney, patent agent, or other person, having the right to prac- tice before the national Office with which the international applica- tion was filed, shall be entitled to practice before the International Bu- reau and the competent International Searching Authority and com- petent International Preliminary Examining Authority in respect of that application.
151 Patents Act 1953 Reprinted as at 1 January 2011 Chapter IV Technical Services Article 50—Patent Information Services The International Bureau may furnish services by providing technical and any other pertinent information available to it on the basis of published documents, primarily patents and pub- lished applications (referred to in this Article as “the informa- tion services”).
The International Bureau may provide these information services either directly or through one or more International Searching Authorities or other national or international spe- cialized institutions, with which the International Bureau may reach agreement.

The information services shall be operated in a way particu- larly facilitating the acquisition by Contracting States which are developing countries of technical knowledge and technol- ogy, including available published know-how.
The information services shall be available to Governments of Contracting States and their nationals and residents.

The Assembly may decide to make these services available also to others.
(1) (2) (3) (4) (b) (5)(a) Any service to Governments of Contracting States shall be furnished at cost, provided that, when the Government is that of a Contracting State which is a developing country, the ser- vice shall be furnished below cost if the difference can be covered from profit made on services furnished to others than Governments of Contracting States or from the sources re- ferred to in Article 51(4).
The cost referred to in subparagraph (a) is to be understood as cost over and above costs normally incident to the perform- ance of the services of a national Office or the obligations of an International Searching Authority.

The details concerning the implementation of the provisions of this Article shall be governed by decisions of the Assembly and, within the limits to be fixed by the Assembly, such work- ing groups as the Assembly may set up for that purpose.
The Assembly shall, when it considers it necessary, recom- mend methods of providing financing supplementary to those referred to in paragraph (5).

(6) (7) 152 Reprinted as at 1 January 2011 Patents Act 1953 Chapter IV—continued Article 51—Technical Assistance (1) The Assembly shall establish a Committee for Technical As- sistance (referred to in this Article as “the Committee”).
(2)(a) The members of the Committee shall be elected among the Contracting States, with due regard to the representation of developing countries.

The Director General shall, on his own initiative or at the re- quest of the Committee, invite representatives of intergovern- mental organizations concerned with technical assistance to developing countries to participate in the work of the Com- mittee.
(b) (b) (4) (3)(a) The task of the Committee shall be to organize and supervise technical assistance for Contracting States which are develop- ing countries in developing their patent systems individually or on a regional basis.

The technical assistance shall comprise, among other things, the training of specialists, the loaning of experts, and the sup- ply of equipment both for demonstration and for operational purposes.
The International Bureau shall seek to enter into agreements, on the one hand, with international financing organizations and intergovernmental organizations, particularly the United Na- tions, the agencies of the United Nations, and the Specialized Agencies connected with the United Nations concerned with technical assistance, and, on the other hand, with the Govern- ments of the States receiving the technical assistance, for the financing of projects pursuant to this Article.
The details concerning the implementation of the provisions of this Article shall be governed by decisions of the Assembly and, within the limits to be fixed by the Assembly, such work- ing groups as the Assembly may set up for that purpose.

(5) Article 52—Relations with Other Provisions of the Treaty Nothing in this Chapter shall affect the financial provisions contained in any other Chapter of this Treaty.

Such provisions are not applic- able to the present Chapter or to its implementation.
153 Patents Act 1953 Reprinted as at 1 January 2011 Chapter V Administrative Provisions Article 53—Assembly (1)(a) The Assembly shall, subject to Article 57(8), consist of the (b) Contracting States.

The Government of each Contracting State shall be repre- sented by one delegate, who may be assisted by alternate delegates, advisors, and experts.
(2)(a) The Assembly shall: (i) (v) (ii) (iv) (iii) deal with all matters concerning the maintenance and development of the union and the implementation of this Treaty; perform such tasks as are specifically assigned to it under other provisions of this Treaty; give directions to the International Bureau concerning the preparation for revision conferences; review and approve the reports and activities of the Director General concerning the Union, and give him all necessary instructions concerning matters within the competence of the Union; review and approve the reports and activities of the Ex- ecutive Committee established under paragraph (9), and give instructions to such Committee; determine the program and adopt the triennial1 budget of the Union, and approve its final accounts; (vii) adopt the financial regulations of the Union; (viii) establish such committees and working groups as it deems appropriate to achieve the objectives of the Union; determine which States other than Contracting States and, subject to the provisions of paragraph (8), which intergovernmental and international non-governmental organizations shall be admitted to its meetings as ob- servers; take any other appropriate action designed to further the objectives of the Union and perform such other func- tions as are appropriate under this Treaty.
(vi) (ix) (x) 1 Editor’s Note: Since 1980, the budget of the Union is biennial.

154 Reprinted as at 1 January 2011 Patents Act 1953 Chapter V—continued Article 53—continued (b) With respect to matters which are of interest also to other Unions administered by the Organization, the Assembly shall make its decisions after having heard the advice of the Coord- ination Committee of the Organization.

(3) A delegate may represent, and vote in the name of, one State only.
Each Contracting State shall have one vote.

(4) (5)(a) One-half of the Contracting States shall constitute a quorum.

In the absence of the quorum, the Assembly may make deci- (b) sions but, with the exception of decisions concerning its own procedure, all such decisions shall take effect only if the quo- rum and the required majority are attained through voting by correspondence as provided in the Regulations.
(6)(a) Subject to the provisions of Articles 47(2)(b), 58(2)(b), 58(3) and 61(2)(b), the decisions of the Assembly shall require two- thirds of the votes cast.

(b) Abstentions shall not be considered as votes.

(7) In connection with matters of exclusive interest to States bound by Chapter II, any reference to Contracting States in paragraphs (4), (5), and (6), shall be considered as applying only to States bound by Chapter II.
(8) Any intergovernmental organization appointed as Inter- national Searching or Preliminary Examining Authority shall be admitted as observer to the Assembly.

(9) When the number of Contracting States exceeds forty, the As- sembly shall establish an Executive Committee.

Any refer- ence to the Executive Committee in this Treaty and the Regula- tions shall be construed as references to such Committee once it has been established.
(10) Until the Executive Committee has been established, the As- sembly shall approve, within the limits of the program and tri- ennial budget, the annual programs and budgets prepared by the Director General.2 (11)(a) The Assembly shall meet in every second calendar year in ordinary session upon convocation by the Director General 2 Editor’s Note: Since 1980, the program and budget of the Union are biennial.
155 Patents Act 1953 Reprinted as at 1 January 2011 Chapter V—continued Article 53—continued (b) and, in the absence of exceptional circumstances, during the same period and at the same place as the General Assembly of the Organization.

The Assembly shall meet in extraordinary session upon convo- cation by the Director General, at the request of the Executive Committee, or at the request of one-fourth of the Contracting States.

(12) The Assembly shall adopt its own rules of procedure.
Article 54—Executive Committee (1) When the Assembly has established an Executive Committee, that Committee shall be subject to the provisions set forth here- inafter.

(b) (2)(a) The Executive Committee shall, subject to Article 57(8), consist of States elected by the Assembly from among States members of the Assembly.

The Government of each State member of the Executive Com- mittee shall be represented by one delegate, who may be as- sisted by alternate delegates, advisors, and experts.
The number of States members of the Executive Committee shall correspond to one-fourth of the number of States mem- bers of the Assembly.

In establishing the number of seats to be filled, remainders after division by four shall be disregarded.

In electing the members of the Executive Committee, the As- sembly shall have due regard to an equitable geographical dis- tribution.
(4) (3) (5)(a) Each member of the Executive Committee shall serve from the close of the session of the Assembly which elected it to the close of the next ordinary session of the Assembly.

(b) Members of the Executive Committee may be re-elected but only up to a maximum of two-thirds of such members.

The Assembly shall establish the details of the rules governing the election and possible re-election of the members of the Executive Committee.
(c) (6)(a) The Executive Committee shall: (i) prepare the draft agenda of the Assembly; 156 Reprinted as at 1 January 2011 Patents Act 1953 Chapter V—continued Article 54—continued (ii) (iii) (iv) (v) (vi) submit proposals to the Assembly in respect of the draft program and biennial budget of the Union prepared by the Director General; [deleted] submit, with appropriate comments, to the Assembly the periodical reports of the Director General and the yearly audit reports on the accounts; take all necessary measures to ensure the execution of the program of the Union by the Director General, in ac- cordance with the decisions of the Assembly and having regard to circumstances arising between two ordinary sessions of the Assembly; perform such other functions as are allocated to it under this Treaty.
(b) With respect to matters which are of interest also to other Unions administered by the Organization, the Executive Com- mittee shall make its decisions after having heard the advice of the Coordination Committee of the Organization.

(7)(a) The Executive Committee shall meet once a year in ordinary session upon convocation by the Director General, preferably during the same period and at the same place as the Coordin- ation Committee of the Organization.
The Executive Committee shall meet in extraordinary session upon convocation by the Director General, either on his own initiative or at the request of its Chairman or one-fourth of its members.

(b) (8)(a) Each State member of the Executive Committee shall have one vote.

(b) One-half of the members of the Executive Committee shall constitute a quorum.

Decisions shall be made by a simple majority of the votes cast.

(c) (d) Abstentions shall not be considered as votes.
(e) A delegate may represent, and vote in the name of, one State only.

Contracting States not members of the Executive Commit- tee shall be admitted to its meetings as observers, as well as (9) 157 Patents Act 1953 Reprinted as at 1 January 2011 Chapter V—continued Article 54—continued any intergovernmental organization appointed as International Searching or Preliminary Examining Authority.

(10) The Executive Committee shall adopt its own rules of proced- ure.
Article 55—International Bureau (1) Administrative tasks concerning the Union shall be performed (2) (3) (4) (5) (6) by the International Bureau.

The International Bureau shall provide the secretariat of the various organs of the Union.

The Director General shall be the chief executive of the Union and shall represent the Union.

The International Bureau shall publish a Gazette and other publications provided for by the Regulations or required by the Assembly.
The Regulations shall specify the services that national Offices shall perform in order to assist the International Bureau and the International Searching and Preliminary Examining Au- thorities in carrying out their tasks under this Treaty.

The Director General and any staff member designated by him shall participate, without the right to vote, in all meetings of the Assembly, the Executive Committee and any other com- mittee or working group established under this Treaty or the Regulations.
The Director General, or a staff member desig- nated by him, shall be ex officio secretary of these bodies.

(b) (7)(a) The International Bureau shall, in accordance with the di- rections of the Assembly and in cooperation with the Execu- tive Committee, make the preparations for the revision confer- ences.

The International Bureau may consult with intergovernmental and international non-governmental organizations concerning preparations for revision conferences.
The Director General and persons designated by him shall take part, without the right to vote, in the discussions at revision conferences.

The International Bureau shall carry out any other tasks as- signed to it.

(8) (c) 158 Reprinted as at 1 January 2011 Patents Act 1953 Chapter V—continued Article 56—Committee for Technical Cooperation (1) The Assembly shall establish a Committee for Technical Co- operation (referred to in this Article as “the Committee”).
(c) (b) (2)(a) The Assembly shall determine the composition of the Com- mittee and appoint its members, with due regard to an equit- able representation of developing countries.

The International Searching and Preliminary Examining Au- thorities shall be ex officio members of the Committee.

In the case where such an Authority is the national Office of a Con- tracting State, that State shall not be additionally represented on the Committee.
If the number of Contracting States so allows, the total number of members of the Committee shall be more than double the number of ex officio members.

The Director General shall, on his own initiative or at the re- quest of the Committee, invite representatives of interested or- ganizations to participate in discussions of interest to them.
The aim of the Committee shall be to contribute, by advice and recommendations: (i) (3) (d) (ii) (iii) to the constant improvement of the services provided for under this Treaty, to the securing, so long as there are several International Searching Authorities and several International Prelim- inary Examining Authorities, of the maximum degree of uniformity in their documentation and working methods and the maximum degree of uniformly high quality in their reports, and on the initiative of the Assembly or the Executive Com- mittee, to the solution of the technical problems specif- ically involved in the establishment of a single Inter- national Searching Authority.
(4) Any Contracting State and any interested international organ- ization may approach the Committee in writing on questions which fall within the competence of the Committee.
The Committee may address its advice and recommendations to the Director General or, through him, to the Assembly, the (5) 159 Patents Act 1953 Reprinted as at 1 January 2011 Chapter V—continued Article 56—continued Executive Committee, all or some of the International Search- ing and Preliminary Examining Authorities, and all or some of the receiving Offices.
(b) (6)(a) In any case, the Director General shall transmit to the Execu- tive Committee the texts of all the advice and recommenda- tions of the Committee.

He may comment on such texts.

The Executive Committee may express its views on any ad- vice, recommendation, or other activity of the Committee, and may invite the Committee to study and report on questions falling within its competence.
The Executive Committee may submit to the Assembly, with appropriate comments, the ad- vice, recommendations and report of the Committee.

(7) Until the Executive Committee has been established, refer- ences in paragraph (6) to the Executive Committee shall be construed as references to the Assembly.

The details of the procedure of the Committee shall be gov- erned by the decisions of the Assembly.

(8) Article 57—Finances (1)(a) The Union shall have a budget.
(b) The budget of the Union shall include the income and expenses proper to the Union and its contribution to the budget of ex- penses common to the Unions administered by the Organiza- tion.

Expenses not attributable exclusively to the Union but also to one or more other Unions administered by the Organization shall be considered as expenses common to the Unions.

The share of the Union in such common expenses shall be in pro- portion to the interest the Union has in them.
The budget of the Union shall be established with due regard to the requirements of coordination with the budgets of the other Unions administered by the Organization.
Subject to the provisions of paragraph (5), the budget of the Union shall be financed from the following sources: (i) fees and charges due for services rendered by the Inter- national Bureau in relation to the Union; (c) (2) (3) 160 Reprinted as at 1 January 2011 Patents Act 1953 Chapter V—continued Article 57—continued (4) (ii) sale of, or royalties on, the publications of the Inter- national Bureau concerning the Union; gifts, bequests, and subventions; (iii) (iv) rents, interests, and other miscellaneous income.
The amounts of fees and charges due to the International Bu- reau and the prices of its publications shall be so fixed that they should, under normal circumstances, be sufficient to cover all the expenses of the International Bureau connected with the administration of this Treaty.

(c) (d) (b) (5)(a) Should any financial year close with a deficit, the Contracting States shall, subject to the provisions of subparagraphs (b) and (c), pay contributions to cover such deficit.
The amount of the contribution of each Contracting State shall be decided by the Assembly with due regard to the number of international applications which has emanated from each of them in the relevant year.

If other means of provisionally covering any deficit or any part thereof are secured, the Assembly may decide that such deficit be carried forward and that the Contracting States should not be asked to pay contributions.
If the financial situation of the Union so permits, the Assembly may decide that any contributions paid under subparagraph (a) be reimbursed to the Contracting States which have paid them.

A Contracting State which has not paid, within two years of the due date as established by the Assembly, its contribution under subparagraph (b) may not exercise its right to vote in any of the organs of the Union.
However, any organ of the Union may allow such a State to continue to exercise its right to vote in that organ so long as it is satisfied that the delay in payment is due to exceptional and unavoidable circumstances.

If the budget is not adopted before the beginning of a new financial period, it shall be at the same level as the budget of the previous year, as provided in the financial regulations.
(6) (e) (7)(a) The Union shall have a working capital fund which shall be constituted by a single payment made by each Contracting If the fund becomes insufficient, the Assembly shall State.

161 Patents Act 1953 Reprinted as at 1 January 2011 Chapter V—continued Article 57—continued (b) arrange to increase it.

If part of the fund is no longer needed, it shall be reimbursed.
The amount of the initial payment of each Contracting State to the said fund or of its participation in the increase thereof shall be decided by the Assembly on the basis of principles similar to those provided for under paragraph (5)(b).

The terms of payment shall be fixed by the Assembly on the proposal of the Director General and after it has heard the ad- vice of the Coordination Committee of the Organization.
(d) Any reimbursement shall be proportionate to the amounts paid by each Contracting State, taking into account the dates at which they were paid.

(c) (8)(a) In the headquarters agreement concluded with the State on the territory of which the Organization has its headquarters, it shall be provided that, whenever the working capital fund is insuf- ficient, such State shall grant advances.
The amount of these advances and the conditions on which they are granted shall be the subject of separate agreements, in each case, between such State and the Organization.

As long as it remains under the obligation to grant advances, such State shall have an ex officio seat in the Assembly and on the Executive Committee.

The State referred to in subparagraph (a) and the Organization shall each have the right to denounce the obligation to grant advances, by written notification.
Denunciation shall take ef- fect three years after the end of the year in which it has been notified.

The auditing of the accounts shall be effected by one or more of the Contracting States or by external auditors, as provided in the financial regulations.

They shall be designated, with their agreement, by the Assembly.
(9) (b) Article 58—Regulations The Regulations annexed to this Treaty provide Rules: (i) concerning matters in respect of which this Treaty ex- pressly refers to the Regulations or expressly provides that they are or shall be prescribed, (1) 162 Reprinted as at 1 January 2011 Patents Act 1953 Chapter V—continued Article 58—continued (ii) (iii) concerning any administrative requirements, matters, or procedures, concerning any details useful in the implementation of the provisions of this Treaty.
(2)(a) The Assembly may amend the Regulations.

(b) Subject to the provisions of paragraph (3), amendments shall require three-fourths of the votes cast.
(3)(a) The Regulations specify the Rules which may be amended (i) (ii) (b) (c) only by unanimous consent, or only if none of the Contracting States whose national Office acts as an International Searching or Prelimin- ary Examining Authority dissents, and, where such Au- thority is an intergovernmental organization, if the Con- tracting State member of that organization authorized for that purpose by the other member States within the competent body of such organization does not dissent.
Exclusion, for the future, of any such Rules from the ap- plicable requirement shall require the fulfillment of the conditions referred to in subparagraph (a)(i) or (a)(ii), respectively.

Inclusion, for the future, of any Rule in one or the other of the requirements referred to in subparagraph (a) shall require unanimous consent.

(4) (5) The Regulations provide for the establishment, under the con- trol of the Assembly, of Administrative Instructions by the Dir- ector General.
In the case of conflict between the provisions of the Treaty and those of the Regulations, the provisions of the Treaty shall prevail.
Chapter VI Disputes Article 59—Disputes Subject to Article 64(5), any dispute between two or more Contract- ing States concerning the interpretation or application of this Treaty or the Regulations, not settled by negotiation, may, by any one of 163 Patents Act 1953 Reprinted as at 1 January 2011 Chapter VI—continued Article 59—continued the States concerned, be brought before the International Court of Justice by application in conformity with the Statute of the Court, unless the States concerned agree on some other method of settle- ment.
The Contracting State bringing the dispute before the Court shall inform the International Bureau; the International Bureau shall bring the matter to the attention of the other Contracting States.

Chapter VII Revision and Amendment Article 60—Revision of the Treaty (1) (2) This Treaty may be revised from time to time by a special conference of the Contracting States.

The convocation of any revision conference shall be decided by the Assembly.
(3) Any intergovernmental organization appointed as Inter- national Searching or Preliminary Examining Authority shall be admitted as observer to any revision conference.

(4) Articles 53(5), (9) and (11), 54, 55(4) to (8), 56, and 57, may be amended either by a revision conference or according to the provisions of Article 61.
Article 61—Amendment of Certain Provisions of the Treaty (1)(a) Proposals for the amendment of Articles 53(5), (9) and (11), 54, 55(4) to (8), 56, and 57, may be initiated by any State member of the Assembly, by the Executive Committee, or by the Director General.

Such proposals shall be communicated by the Director Gen- eral to the Contracting States at least six months in advance of their consideration by the Assembly.
(b) (2)(a) Amendments to the Articles referred to in paragraph (1) shall be adopted by the Assembly.

(b) Adoption shall require three-fourths of the votes cast.
(3)(a) Any amendment to the Articles referred to in paragraph (1) shall enter into force one month after written notifications of 164 Reprinted as at 1 January 2011 Patents Act 1953 Chapter VII—continued Article 61—continued acceptance, effected in accordance with their respective con- stitutional processes, have been received by the Director Gen- eral from three-fourths of the States members of the Assembly at the time it adopted the amendment.
(b) Any amendment to the said Articles thus accepted shall bind all the States which are members of the Assembly at the time the amendment enters into force, provided that any amend- ment increasing the financial obligations of the Contracting States shall bind only those States which have notified their acceptance of such amendment.
Any amendment accepted in accordance with the provisions of subparagraph (a) shall bind all States which become mem- bers of the Assembly after the date on which the amendment entered into force in accordance with the provisions of sub- paragraph (a).
(c) Chapter VIII Final Provisions Article 62—Becoming Party to the Treaty (1) Any State member of the International Union for the Protec- tion of Industrial Property may become party to this Treaty by: signature followed by the deposit of an instrument of (i) ratification, or deposit of an instrument of accession.

(ii) Instruments of ratification or accession shall be deposited with the Director General.
The provisions of Article 24 of the Stockholm Act of the Paris Convention for the Protection of Industrial Property shall apply to this Treaty.

Paragraph (3) shall in no way be understood as implying the recognition or tacit acceptance by a Contracting State of the factual situation concerning a territory to which this Treaty is made applicable by another Contracting State by virtue of the said paragraph.
(2) (3) (4) 165 Patents Act 1953 Reprinted as at 1 January 2011 Chapter VIII—continued Article 63—Entry into Force of the Treaty (1)(a) Subject to the provisions of paragraph (3), this Treaty shall enter into force three months after eight States have deposited their instruments of ratification of accession, provided that at least four of those States each fulfill any of the following con- ditions: (i) (ii) (iii) the number of applications filed in the State has ex- ceeded 40,000 according to the most recent annual statistics published by the International Bureau, the nationals or residents of the State have filed at least 1,000 applications in one foreign country according to the most recent annual statistics published by the Inter- national Bureau, the national Office of the State has received at least 10,000 applications from nationals or residents of foreign countries according to the most recent annual statistics published by the International Bureau.
For the purposes of this paragraph, the term “applications” does not include applications for utility models.

Subject to the provisions of paragraph (3), any State which does not become party to this Treaty upon entry into force under paragraph (1) shall become bound by this Treaty three months after the date on which such State has deposited its instrument of ratification or accession.
The provisions of Chapter II and the corresponding provisions of the Regulations annexed to this Treaty shall become applic- able, however, only on the date on which three States each of which fulfill at least one of the three requirements specified in paragraph (1) have become party to this Treaty without declar- ing, as provided in Article 64(1), that they do not intend to be bound by the provisions of Chapter II.
That date shall not, however, be prior to that of the initial entry into force under paragraph (1).

(b) (2) (3) Article 64—Reservations (1)(a) Any State may declare that it shall not be bound by the provi- sions of Chapter II.

166 Reprinted as at 1 January 2011 Patents Act 1953 Chapter VIII—continued Article 64—continued (b) States making a declaration under subparagraph (a) shall not be bound by the provisions of Chapter II and the corresponding provisions of the Regulations.
(2)(a) Any State not having made a declaration under paragraph (1)(a) may declare that: (i) (ii) it shall not be bound by the provisions of Article 39(1) with respect to the furnishing of a copy of the inter- national application and a translation thereof (as pre- scribed), the obligation to delay national processing, as provided for under Article 40, shall not prevent publication, by or through its national Office, of the international ap- plication or a translation thereof, it being understood, however, that it is not exempted from the limitations provided for in Articles 30 and 38.
(b) States making such a declaration shall be bound accordingly.

(3)(a) Any State may declare that, as far as it is concerned, inter- international applications is not national publication of required.

(b) Where, at the expiration of 18 months from the priority date, the international application contains the designation only of such State as have made declarations under subparagraph (a), the international application shall not be published by virtue of Article 21(2).
(c) Where the provisions of subparagraph (b) apply, the inter- national application shall nevertheless be published by the International Bureau: (i) at the request of the applicant, as provided in the Regu- lations, (ii) when a national application or a patent based on the international application is published by or on behalf of the national Office of any designated State having made a declaration under subparagraph (a), promptly after such publication but not before the expiration of 18 months from the priority date.
(4)(a) Any State whose national law provides for prior art effect of its patents as from a date before publication, but does not 167 Patents Act 1953 Reprinted as at 1 January 2011 Chapter VIII—continued Article 64—continued equate for prior art purposes the priority date claimed under the Paris Convention for the Protection of Industrial Property to the actual filing date in that State, may declare that the fil- ing outside that State of an international application designat- ing that State is not equated to an actual filing in that State for prior art purposes.
(c) (5) (b) Any State making a declaration under subparagraph (a) shall to that extent not be bound by the provisions of Article 11(3).

Any State making a declaration under subparagraph (a) shall, at the same time, state in writing the date from which, and the conditions under which, the prior art effect of any inter- national application designating that State becomes effective in that State.

This statement may be modified at any time by notification addressed to the Director General.
Each State may declare that it does not consider itself bound by Article 59.

With regard to any dispute between any Con- tracting State having made such a declaration and any other Contracting State, the provisions of Article 59 shall not apply.

(6)(a) Any declaration made under this Article shall be made in writ- ing.
It may be made at the time of signing this Treaty, at the time of depositing the instrument of ratification or accession, or, except in the case referred to in paragraph (5), at any later time by notification addressed to the Director General.

In the case of the said notification, the declaration shall take effect six months after the day on which the Director General has received the notification, and shall not affect international ap- plications filed prior to the expiration of the said six-month period.
(b) Any declaration made under this Article may be withdrawn at any time by notification addressed to the Director General.

Such withdrawal shall take effect three months after the day on which the Director General has received the notification and, in the case of the withdrawal of a declaration made under paragraph (3), shall not affect international applications filed prior the expiration of the said three-month period.
(7) No reservations to this Treaty other than the reservations under paragraphs (1) to (5) are permitted.
168 Reprinted as at 1 January 2011 Patents Act 1953 Chapter VIII—continued (1) (2) Article 65—Gradual Application If the agreement with any International Searching or Prelim- inary Examining Authority provides, transitionally, for limits on the number or kind of international applications that such Authority undertakes to process, the Assembly shall adopt the measures necessary for the gradual application of this Treaty and the Regulations in respect of given categories of inter- national applications.
This provision shall also apply to re- quests for an international-type search under Article 15(5).

The Assembly shall fix the dates from which, subject to the provision of paragraph (1), international applications may be filed and demands for international preliminary examination may be submitted.

Such dates shall not be later than six months after this Treaty has entered into force according to the provisions of Article 63(1), or after Chapter II has become applicable under Article 63(3), respectively.
Article 66—Denunciation (1) Any Contracting State may denounce this Treaty by notifica- tion addressed to the Director General.

(2) Denunciation shall take effect six months after receipt of the said notification by the Director General.

It shall not affect the effects of the international application in the denouncing State if the international application was filed, and, where the de- nouncing State has been elected, the election was made, prior to the expiration of the said six-month period.
Article 67—Signature and Languages (1)(a) This Treaty shall be signed in a single original in the English and French languages, both texts being equally authentic.

(b) Official texts shall be established by the Director General, after consultation with the interested Governments, in the German, Japanese, Portuguese, Russian and Spanish languages, and such other languages as the Assembly may designate.

This Treaty shall remain open for signature at Washington until December 31, 1970.
(2) 169 Patents Act 1953 Reprinted as at 1 January 2011 Chapter VIII—continued (1) (2) (3) (4) Article 68—Depositary Functions The original of this Treaty, when no longer open for signature, shall be deposited with the Director General.
The Director General shall transmit two copies, certified by him, of this Treaty and the Regulations annexed hereto to the Governments of all States party to the Paris Convention for the Protection of Industrial Property and, on request, to the Government of any other State.

The Director General shall register this Treaty with the Secre- tariat of the United Nations.
The Director General shall transmit two copies, certified by him, of any amendment to this Treaty and the Regulations to the Governments of all Contracting States and, on request, to the Government of any other State.
Article 69—Notifications The Director General shall notify the Governments of all States party to the Paris Convention for the Protection of Industrial Property of: (i) (ii) signatures under Article 62, deposits of instruments of ratification or accession under Art- icle 62, the date of entry into force of this Treaty and the date from which Chapter II is applicable in accordance with Article 63(3), any declarations made under Article 64(1) to (5), (iv) (v) withdrawals of any declarations made under Article 64(6)(b), (vi) (vii) any declarations made under Article 31(4).
denunciations received under Article 66, and (iii) 170 Reprinted as at 1 January 2011 Patents Act 1953 Schedule 2 Regulations under the Patent Cooperation Treaty (as in force from 1 July 1992) Part A Introductory Rules Rule 1—Abbreviated Expressions s 2 1.1 Meaning of Abbreviated Expressions (a) In these Regulations, the word “Treaty” means the Patent Co- operation Treaty.

In these Regulations, the words “Chapter” and “Article” refer to the specified Chapter or Article of the Treaty.
(b) Rule 2—Interpretation of Certain Words “Applicant” 2.1 Whenever the word “applicant” is used, it shall be construed as mean- ing also the agent or other representative of the applicant, except where the contrary clearly follows from the wording or the nature of the provision, or the context in which the word is used, such as, in particular, where the provision refers to the residence or nationality of the applicant.
“Agent” 2.2 Whenever the word “agent” is used, it shall be construed as meaning an agent appointed under Rule 90.1, unless the contrary clearly fol- lows from the wording or the nature of the provision, or the context in which the word is used.

2.2bis “Common Representative” Whenever the expression “common representative” is used, it shall be construed as meaning an applicant appointed as, or considered to be, the common representative under Rule 90.2.
“Signature” 2.3 Whenever the word “signature” is used, it shall be understood that, if the national law applied by the Receiving Office or the competent International Searching or Preliminary Examining Authority require 171 Patents Act 1953 Reprinted as at 1 January 2011 Part A—continued Rule 2—continued the use of a seal instead of a signature, the word, for the purposes of that Office or Authority, shall mean seal.
Part B Rules Concerning Chapter I of the Treaty Rule 3—The Request (Form) Form of Request 3.1 The request shall be made on a printed form or be presented as a computer print-out.

3.2 Availability of Forms Copies of the printed form shall be furnished free of charge to the ap- plicants by the receiving Office, or, if the receiving Office so desires, by the International Bureau.
3.3 Check List (a) The request shall contain a list indicating: (i) the total number of sheets constituting the international application and the number of the sheets of each elem- ent of the international application (request, description, claims, drawings, abstract); (ii) whether or not the international application as filed is accompanied by a power of attorney (i.e., a document appointing an agent or a common representative), a copy of a general power of attorney, a priority docu- ment, a document relating to the payment of fees, and any other document (to be specified in the check list); the number of that figure of the drawings which the ap- plicant suggest should accompany the abstract when the abstract is published; in exceptional cases, the applicant may suggest more than one figure.
(iii) The list shall be completed by the applicant, failing which the receiving Office shall make the necessary indications, except that the number referred to in paragraph (a)(iii) shall not be indicated by the receiving Office.

(b) 172 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 3—continued Particulars 3.4 Subject to Rule 3.3, particulars of the printed request form and of a request presented as a computer print-out shall be prescribed by the Administrative Instructions.
Rule 4—The Request (Contents) 4.1 Mandatory and Optional Contents; Signature (a) The request shall contain: (i) (ii) (iii) a petition, the title of the invention, indications concerning the applicant and the agent, if there is an agent, the designation of States, indications concerning the inventor where the national law of at least one of the designated States requires that the name of the inventor be furnished at the time of filing a national application.
(iv) (v) (b) (c) (d) The request shall, where applicable, contain: (i) (ii) a priority claim, a reference to any earlier international, international- type or other search, choices of certain kinds of protection, an indication that the applicant wishes to obtain a re- gional patent, a reference to a parent application or parent patent.
(iii) (iv) (v) The request may contain: (i) (ii) indications concerning the inventor where the national law of none of the designated States requires that the name of the inventor be furnished at the time of filing a national application, a request to the receiving Office to transmit the prior- ity document to the International Bureau where the ap- plication whose priority is claimed was filed with the national Office or intergovernmental authority which is the receiving Office.
The request shall be signed.
173 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 4—continued The Petition 4.2 The petition shall be to the following effect and shall preferably be worded as follows: “The undersigned requests that the present inter- national application be processed according to the Patent Cooper- ation Treaty.” Title of the Invention 4.3 The title of the invention shall be short (preferably from two to seven words when in English or translated into English) and precise.
4.4 Names and Addresses (a) Names of natural persons shall be indicated by the person’s family name and given name(s), the family name being indi- cated before the given name(s).

(b) Names of legal entities shall be indicated by their full, official designations.
Addresses shall be indicated in such a way as to satisfy the customary requirements for prompt postal delivery at the indi- cated address and, in any case, shall consist of all the relevant administrative units up to, and including, the house number, if any.

Where the national law of the designated State does not require the indication of the house number, failure to indi- cate such number shall have no effect in that State.
In order to allow rapid communication with the applicant, it is recom- mended to indicate any teleprinter address, telephone and fac- simile machine numbers, or corresponding data for other like means of communication, of the applicant or, where applic- able, the agent or the common representative.
For each applicant, inventor, or agent, only one address may be indicated, except that, if no agent has been appointed to represent the applicant, or all of them if more than one, the applicant or, if there is more than one applicant, the common representative, may indicate, in addition to any other address given in the request, an address to which notifications shall be sent.
(c) (d) 174 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 4—continued 4.5 (a) (b) (c) (d) The Applicant The request shall indicate the name, address, nationality and residence of the applicant or, if there are several applicants, of each of them.

The applicant’s nationality shall be indicated by the name of the State of which he is a national.

The applicant’s residence shall be indicated by the name of the State of which he is a resident.
The request may, for different designated States, indicate dif- ferent applicants.

In such a case, the request shall indicate the applicant or applicants for each designated State or group of designated States.

(b) The Inventor 4.6 (a) Where Rule 4.1(a)(v) applies, the request shall indicate the name and address of the inventor or, if there are several in- ventors, of each of them.
If the applicant is the inventor, the request, in lieu of the in- dication under paragraph (a), shall contain a statement to that effect.

The request may, for different designated States, indicate dif- ferent persons as inventors where, in this respect, the require- ments of the national laws of the designated States are not the same.
In such a case, the request shall contain a separate state- ment for each designated State or group of States in which a particular person, or the same person, is to be considered the inventor, or in which particular persons, or the same persons, are to be considered the inventors.

(c) The Agent 4.7 If agents are designated, the request shall so indicate, and shall state their names and addresses.
175 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 4—continued 4.8 Common Representative If a common representative is designated, the request shall so indi- cate.
4.9 Designation of States (a) (ii) Contracting States shall be designated in the request: (i) in the case of designations for the purpose of obtain- ing national patents, by an indication of each State con- cerned; in the case of designations for the purpose of obtaining a regional patent, by an indication that a regional patent is desired either for all Contracting States which are party to the regional patent treaty concerned or only for such Contracting States as are specified.
(ii) The request may contain an indication that all designations which would be permitted under the Treaty, other than those made under paragraph (a), are also made, provided that: (i) at least one Contracting State is designated under para- graph (a), and the request also contains a statement that any designa- tion made under this paragraph is subject to confirm- ation as provided in paragraph (c) and that any desig- nation which is not so confirmed before the expiration of 15 months from the priority date is to be regarded as withdrawn by the applicant at the expiration of that time limit.
The confirmation of any designation made under paragraph (b) shall be effected by (i) filing with the receiving Office a written notice contain- ing an indication as referred to in paragraph (a)(i) or (ii), and paying to the receiving Office the designation fee and the confirmation fee referred to in Rule 15.5 (ii) within the time limit under paragraph (b)(ii).
(b) (c) 176 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 4—continued 4.10 Priority Claim (a) The declaration referred to in Article 8(1) shall be made in the request; it shall consist of a statement to the effect that the priority of an earlier application is claimed and shall indicate: when the earlier application is not a regional or an inter- (i) national application, the country in which it was filed; when the earlier application is a regional or an inter- national application, the country or countries for which it was filed, the date on which it was filed, the number under which it was filed, and (ii) (iii) (iv) when the earlier application is a regional or an inter- national application, the national Office or intergovern- mental organization with which it was filed.
(b) If the request does not indicate both (i) when the earlier application is not a regional or an inter- national application, the country in which such earlier application was filed; when the earlier application is a regional or an international application, at least one country for which such earlier application was filed, and (ii) the date on which the earlier application was filed, the priority claim shall, for the purposes of the procedure under the Treaty, be considered not to have been made.
However, where, resulting from an obvious error, the indication of the said country or the said date is missing or is erroneous, the re- ceiving Office may, at the request of the applicant, make the necessary correction.

The error shall be considered as an obvi- ous error whenever the correction is obvious from a compari- son with the earlier application.
Where the error consists of the omission of the indication of the said date, the correction can only be made before the transmittal of the record copy to the International Bureau.

In the case of any other error relat- ing to the indication of the said date or in the case of any error relating to the indication of the said country, the correction can only be made before the expiration of the time limit under Rule 17.1(a) computed on the basis of the correct priority date.
177 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 4—continued (c) (d) If the application number of the earlier application is not in- dicated in the request but is furnished by the applicant to the International Bureau or to the receiving Office prior to the ex- piration of the 16th month from the priority date, it shall be considered by all designated States to have been furnished in time.
If the filing date of the earlier application as indicated in the request does not fall within the period of one year preceding the international filing date, the receiving Office, or, if the re- ceiving Office has failed to do so, the International Bureau, shall invite the applicant to ask either for the cancellation of the declaration made under Article 8(1) or, if the date of the earlier application was indicated erroneously, for the correc- tion of the date so indicated.
If the applicant fails to act ac- cordingly within one month from the date of the invitation, the declaration made under Article 8(1) shall be cancelled ex officio.

(e) Where the priorities of several earlier applications are claimed, the provisions of paragraphs (a) to (d) shall apply to each of them.
4.11 Reference to Earlier Search If an international or international-type search has been requested on an application under Article 15(5) or if the applicant wishes the Inter- national Searching Authority to base the international search report wholly or in part on the results of a search, other than an international or international-type search, made by the national Office or intergov- ernmental organization which is the International Searching Author- ity competent for the international application, the request shall con- tain a reference to that fact.
Such reference shall either identify the application (or its translation, as the case may be) in respect of which the earlier search was made by indicating country, date and number, or the said search by indicating, where applicable, date and number of the request for such search.
178 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 4—continued 4.12 Choice of Certain Kinds of Protection (a) If the applicant wishes his international application to be treated, in any designated State, as an application not for a patent but for the grant of any of the other kinds of protection specified in Article 43, he shall so indicate in the request.

For the purposes of this paragraph, Article 2(ii) shall not apply.
In the case provided for in Article 44, the applicant shall indi- cate the two kinds of protection sought, or, if one of two kinds of protection is primarily sought, he shall indicate which kind is sought primarily and which kind is sought subsidiarily.
(b) 4.13 Identification of Parent Application or Parent Grant If the applicant wishes his international application to be treated, in any designated State, as an application for a patent or certificate of addition, inventor’s certificate of addition, or utility certificate of add- ition, he shall identify the parent application or the parent patent, parent inventor’s certificate, or parent utility certificate to which the patent or certificate of addition, inventor’s certificate of addition, or utility certificate of addition, if granted, relates.
For the purposes of this paragraph Article 2(ii) shall not apply.

4.14 Continuation or Continuation-in-Part If the applicant wishes his international application to be treated, in any designated State, as an application for a continuation or a con- tinuation-in-part of an earlier application, he shall so indicate in the request and shall identify the parent application involved.
4.15 Signature (a) Subject to paragraph (b), the request shall be signed by the applicant or, if there is more than one applicant, by all of them.
(b) Where two or more applicants file an international application which designates a State whose national law requires that na- tional applications be filed by the inventor and where an ap- plicant for that designated State who is an inventor refused to sign the request or could not be found or reached after diligent 179 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 4—continued effort, the request need not be signed by that applicant if it is signed by at least one applicant and a statement is furnished explaining, to the satisfaction of the receiving Office, the lack of the signature concerned.
4.16 Transliteration or Translation of Certain Words (a) Where any name or address is written in characters other than those of the Latin alphabet, the same shall also be indicated in characters of the Latin alphabet either as a mere transliteration or through translation into English.

The applicant shall decide which words will be merely transliterated and which words will be so translated.
The name of any country written in characters other than those of the Latin alphabet shall also be indicated in English.

(b) 4.17 Additional Matter (a) The request shall contain no matter other than that specified in Rules 4.1 to 4.16, provided that the Administrative Instruc- tions may permit, but cannot make mandatory, the inclusion in the request of any additional matter specified in the Adminis- trative Instructions.
If the request contains matter other than that specified in Rules 4.1 to 4.16 or permitted under paragraph (a) by the Adminis- trative Instructions, the receiving Office shall ex officio delete the additional matter.
(b) Rule 5—The Description 5.1 Manner of the Description (a) The description shall first state the title of the invention as appearing in the request and shall: (i) (ii) specify the technical field to which the invention relates; indicate the background art which, as far as known to the applicant, can be regarded as useful for the under- standing, searching and examination of the invention, and, preferably, cite the documents reflecting such art; 180 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 5—continued (iii) (iv) (v) (vi) disclose the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood, and state the advan- tageous effects, if any, of the invention with reference to the background art; briefly describe the figures in the drawings, if any; set forth at least the best mode contemplated by the ap- plicant for carrying out the invention claimed; this shall be done in terms of examples, where appropriate, and with reference to the drawings, if any; where the na- tional law of the designated State does not require the description of the best mode but is satisfied with the de- scription of any mode (whether it is the best contem- plated or not), failure to describe the best mode con- templated shall have no effect in that State; indicate explicitly, when it is not obvious from the de- scription or nature of the invention, the way in which the invention is capable of exploitation in industry and the way in which it can be made and used, or, if it can only be used, the way in which it can be used; the term “industry” is to be understood in its broadest sense as in the Paris Convention for the Protection of Industrial Property.
(b) (c) The manner and order specified in paragraph (a) shall be fol- lowed except when, because of the nature of the invention, a different manner or a different order would result in a better understanding and a more economic presentation.

Subject to the provisions of paragraph (b), each of the parts referred to in paragraph (a) shall preferably be preceded by an appropriate heading as suggested in the Administrative In- structions.
5.2 Nucleotide and/or Amino Acid Sequence Disclosure Where the international application contains disclosure of a nu- cleotide and/or amino acid sequence, the description shall contain a listing of the sequence complying with the standard prescribed by the Administrative Instructions.
181 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 6—The Claims 6.1 Number and Numbering of Claims (a) The number of the claims shall be reasonable in consideration of the nature of the invention claimed.

If there are several claims, they shall be numbered consecu- tively in Arabic numerals.

The method of numbering in the case of the amendment of claims shall be governed by the Administrative Instructions.
(b) (c) 6.2 References to Other Parts of the International Application Claims shall not, except where absolutely necessary, rely, in (a) respect of the technical features of the invention, on references In particular, they shall not to the description or drawings.
rely on such references as: “as described in part … of the description,” or “as illustrated in figure … of the drawings.” (b) Where the international application contains drawings, the technical features mentioned in the claims shall preferably be followed by the reference signs relating to such features.

When used, the reference signs shall preferably be placed between parentheses.

If inclusion of reference signs does not particularly facilitate quicker understanding of a claim, it should not be made.
Reference signs may be removed by a designated Office for the purposes of publication by such Office.

6.3 Manner of Claiming (a) The definition of the matter for which protection is sought shall be in terms of the technical features of the invention.
(b) Whenever appropriate, claims shall contain: (i) (ii) a statement indicating those technical features of the invention which are necessary for the definition of the claimed subject matter but which, in combination, are part of the prior art, a characterizing portion—preceded by the words “char- acterized in that,” “characterized by,” “wherein the im- provement comprises,” or any other words to the same effect—stating concisely the technical features which, 182 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 6—continued in combination with the features stated under (i), it is desired to protect.
(c) Where the national law of the designated State does not require the manner of claiming provided for in paragraph (b), failure to use that manner of claiming shall have no effect in that State provided the manner of claiming actually used satisfies the national law of that State.
6.4 Dependent Claims (a) Any claim which includes all the features of one or more other claims (claim in dependent form, hereinafter referred to as “de- pendent claim”) shall do so by a reference, if possible at the be- ginning, to the other claim or claims and shall then state the ad- ditional features claimed.

Any dependent claim which refers to more than one other claim (“multiple dependent claim”) shall refer to such claims in the alternative only.
Multiple de- pendent claims shall not serve as a basis for any other multiple dependent claim.

Where the national law of the national Of- fice acting as International Searching Authority does not allow multiple dependent claims to be drafted in a manner different from that provided for in the preceding two sentences, fail- ure to use that manner of claiming may result in an indication under Article 17(2)(b) in the international search report.
Fail- ure to use the said manner of claiming shall have no effect in a designated State if the manner of claiming actually used sat- isfies the national law of that State.

(b) Any dependent claim shall be construed as including all the limitations contained in the claim to which it refers or, if the dependent claim is a multiple dependent claim, all the limita- tions contained in the particular claim in relation to which it is considered.
All dependent claims referring back to a single previous claim, and all dependent claims referring back to several previous claims, shall be grouped together to the extent and in the most practical way possible.
(c) 183 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 6—continued 6.5 Utility Models Any designated State in which the grant of a utility model is sought on the basis of an international application may, instead of Rules 6.1 to 6.4, apply in respect of the matters regulated in those Rules the provisions of its national law concerning utility models once the pro- cessing of the international application has started in that State, pro- vided that the applicant shall be allowed at least two months from the expiration of the time limit applicable under Article 22 to adapt his application to the requirements of the said provisions of the national law.
Rule 7—The Drawings Flow Sheets and Diagrams 7.1 Flow sheets and diagrams are considered drawings.

Time Limit 7.2 The time limit referred to in Article 7(2)(ii) shall be reasonable under the circumstances of the case and shall, in no case, be shorter than two months from the date of the written invitation requiring the filing of drawings or additional drawings under the said provision.
Rule 8—The Abstract 8.1 Contents and Form of the Abstract (a) The abstract shall consist of the following: (i) a summary of the disclosure as contained in the descrip- tion, the claims, and any drawings; the summary shall indicate the technical field to which the invention per- tains and shall be drafted in a way which allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention; (ii) where applicable, the chemical formula which, among all the formulae contained in the international applica- tion, best characterizes the invention.
184 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 8—continued (b) (c) (d) 8.2 (a) (b) The abstract shall be as concise as the disclosure permits (preferably 50 to 150 words if it is in English or when trans- lated into English).

The abstract shall not contain statements on the alleged merits or value of the claimed invention or on its speculative appli- cation.
Each main technical feature mentioned in the abstract and il- lustrated by a drawing in the international application shall be followed by a reference sign, placed between parentheses.
Figure If the applicant fails to make the indication referred to in Rule 3.3(a)(iii), or if the International Searching Authority finds that a figure or figures other than that figure or those figures sug- gested by the applicant would, among all the figures of all the drawings, better characterize the invention, it shall, subject to paragraph (b), indicate the figure or figures which should ac- company the abstract when the latter is published by the Inter- national Bureau.
In such case, the abstract shall be accompan- ied by the figure or figures so indicated by the International Searching Authority.

Otherwise, the abstract shall, subject to paragraph (b), be accompanied by the figure or figures sug- gested by the applicant.

If the International Searching Authority finds that none of the figures of the drawings is useful for the understanding of the abstract, it shall notify the International Bureau accordingly.
In such case, the abstract, when published by the International Bureau, shall not be accompanied by any figure of the draw- ings even where the applicant has made a suggestion under Rule 3.3(a)(iii).
8.3 Guiding Principles in Drafting The abstract shall be so drafted that it can efficiently serve as a scan- ning tool for purposes of searching in the particular art, especially by assisting the scientist, engineer or researcher in formulating an 185 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 8—continued opinion on whether there is a need for consulting the international application itself.
Rule 9—Expressions, Etc., Not to Be Used 9.1 Definition The international application shall not contain: (i) (ii) (iii) expressions or drawings contrary to morality; expressions or drawings contrary to public order; statements disparaging the products or processes of any par- ticular person other than the applicant, or the merits or validity of applications or patents of any such person (mere compari- sons with the prior art shall not be considered disparaging per se); any statement or other matter obviously irrelevant or unneces- sary under the circumstances.
(iv) 9.2 Noting of Lack of Compliance The receiving Office and the International Searching Authority may note lack of compliance with the prescriptions of Rule 9.1 and may suggest to the applicant that he voluntarily correct his international application accordingly.
If the lack of compliance was noted by the receiving Office, that Office shall inform the competent International Searching Authority and the International Bureau; if the lack of com- pliance was noted by the International Searching Authority, that Au- thority shall inform the receiving Office and the International Bureau.

9.3 Reference to Article 21(6) “Disparaging statements,” referred to in Article 21(6), shall have the meaning as defined in Rule 9.1(iii).
Rule 10—Terminology and Signs 10.1 Terminology and Signs (a) Units of weights and measures shall be expressed in terms of the metric system, or also expressed in such terms if first ex- pressed in terms of a different system.

186 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 10—continued (b) (c) (d) (e) Temperatures shall be expressed in degrees Celsius, or also expressed in degrees Celsius, if first expressed in a different manner.
[Deleted] For indications of heat, energy, light, sound, and magnetism, as well as for mathematical formulae and electrical units, the rules of international practice shall be observed; for chemical formulae, the symbols, atomic weights, and molecular formu- lae, in general use, shall be employed.

In general, only such technical terms, signs and symbols should be used as are generally accepted in the art.
(f) When the international application or its translation is in En- glish or Japanese, the beginning of any decimal fraction shall be marked by a period, whereas, when the international appli- cation or its translation is in a language other than English or Japanese, it shall be marked by a comma.

10.2 Consistency The terminology and the signs shall be consistent throughout the international application.
Rule 11—Physical Requirements of the International Application 11.1 Number of Copies (a) Subject to the provisions of paragraph (b), the international application and each of the documents referred to in the check list (Rule 3.3(a)(ii)) shall be filed in one copy.
(b) Any receiving Office may require that the international appli- cation and any of the documents referred to in the check list (Rule 3.3(a)(ii)), except the receipt for the fees paid or the check for the payment of the fees, be filed in two or three copies.

In that case, the receiving Office shall be responsible for verifying the identity of the second and the third copies with the record copy.
187 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 11—continued 11.2 Fitness for Reproduction (a) All elements of the international application (i.e., the request, the description, the claims, the drawings, and the abstract) shall be so presented as to admit of direct reproduction by pho- tography, electrostatic processes, photo offset, and microfilm- ing, in any number of copies.

(b) All sheets shall be free from creases and cracks; they shall not (c) (d) be folded.
Only one side of each sheet shall be used.

Subject to Rule 11.10(d) and Rule 11.13(j), each sheet shall be used in an upright position (i.e., the short sides at the top and bottom).

11.3 Material to Be Used All elements of the international applications shall be on paper which shall be flexible, strong, white, smooth, non-shiny, and durable.

11.4 Separate Sheets, Etc.

(a) Each element (request, description, claims, drawings, ab- stract) of the international application shall commence on a new sheet.
(b) All sheets of the international application shall be so connected that they can be easily turned when consulted, and easily sep- arated and joined again if they have been separated for repro- duction purposes.

11.5 Size of Sheets The size of the sheets shall be A4(29.7 cm × 21 cm).
However, any receiving Office may accept international applications on sheets of other sizes provided that the record copy, as transmitted to the Inter- national Bureau, and, if the competent International Searching Au- thority so desires, the search copy, shall be of A4 size.
188 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 11—continued 11.6 Margins (a) top: 4 cm left side: 4 cm right side: 3 cm bottom: 3 cm top: 2 cm left side: 2.5 cm right side: 2 cm bottom: 2 cm The minimum margins of the sheets containing the descrip- tion, the claims, and the abstract, shall be as follows: – – – – The recommended maximum, for the margins provided for in paragraph (a), is as follows: – – – – On sheets containing drawings, the surface usable shall not exceed 26.2 cm × 17.0 cm.
The sheets shall not contain frames around the usable or used surface.

The minimum margins shall be as follows: – – – – The margins referred to in paragraphs (a) to (c) apply to A4-size sheets, so that, even if the receiving Office accepts other sizes, the A4-size record copy and, when so required, the A4-size search copy shall leave the aforesaid margins.

Subject to paragraph (f) and to Rule 11.8(b), the margins of the international application, when submitted, must be completely blank.
The top margin may contain in the left-hand comer an indi- cation of the applicant’s file reference, provided that the ref- erence appears within 1.5 cm from the top of the sheet.

The number of characters in the applicant’s file reference shall not exceed the maximum fixed by the Administrative Instructions.
top: 2.5 cm left side: 2.5 cm right side: 1.5 cm bottom: 1.0 cm (b) (c) (d) (e) (f) 189 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 11—continued (b) (b) 11.7 Numbering of Sheets (a) All the sheets contained in the international application shall be numbered in consecutive Arabic numerals.

The numbers shall be centred at the top or bottom of the sheet, but shall not be placed in the margin.
11.8 Numbering of Lines (a) It is strongly recommended to number every fifth line of each sheet of the description, and of each sheet of claims.

The numbers should appear in the right half of the left margin.

11.9 Writing of Text Matter (a) The request, the description, the claims and the abstract shall be typed or printed.

(b) Only graphic symbols and characters, chemical or mathemat- ical formulae, and certain characters in the Japanese language may, when necessary, be written by hand or drawn.
The typing shall be 1½-spaced.

(c) (d) All text matter shall be in characters the capital letters of which are not less than 0.21 cm high, and shall be in a dark, indelible color, satisfying the requirements specified in Rule 11.2.

As far as the spacing of the typing and the size of the characters are concerned, paragraphs (c) and (d) shall not apply to texts in the Japanese language.
(e) 11.10 Drawings, Formulae, and Tables, in Text Matter (a) The request, the description, the claims and the abstract shall not contain drawings.

The description, the claims and the abstract may contain chem- ical or mathematical formulae.

The description and the abstract may contain tables; any claim may contain tables only if the subject matter of the claim makes the use of tables desirable.
Tables and chemical or mathematical formulae may be placed sideways on the sheet if they cannot be presented satisfactorily (b) (c) (d) 190 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 11—continued in an upright position thereon; sheets on which tables or chem- ical or mathematical formulae are presented sideways shall be so presented that the tops of the tables or formulae are at the left side of the sheet.
11.11 Words in Drawings (a) The drawings shall not contain text matter, except a sin- gle word or words, when absolutely indispensable, such as “water,” “steam,” “open,” “closed,” “section on AB,” and, in the case of electric circuits and block schematic or flow sheet diagrams, a few short catchwords indispensable for understanding.

(b) Any words used shall be so placed that, if translated, they may be pasted over without interfering with any lines of the draw- ings.

11.12 Alterations, Etc.


Each sheet shall be reasonably free from erasures and shall be free from alterations, overwritings, and interlineations.

Non-compliance with this Rule may be authorised if the authenticity of the content is not in question and the requirements for good reproduction are not in jeopardy.

11.13 Special Requirements for Drawings (a) Drawings shall be executed in durable, black, sufficiently dense and dark, uniformly thick and well-defined, lines and strokes without colorings.
Cross-sections shall be indicated by oblique hatching which should not impede the clear reading of the reference signs and leading lines.

The scale of the drawings and the distinctness of their graph- ical execution shall be such that a photographic reproduction with a linear reduction in size to two-thirds would enable all details to be distinguished without difficulty.

(b) (c) (d) When, in exceptional cases, the scale is given on a drawing, it shall be represented graphically.
191 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 11—continued (e) (f) (g) (h) (i) (j) (k) (l) All numbers, letters and reference lines, appearing on the drawings, shall be simple and clear.

Brackets, circles or in- verted commas shall not be used in association with numbers and letters.

All lines in the drawings shall, ordinarily, be drawn with the aid of drafting instruments.
Each element of each figure shall be in proper proportion to each of the other elements in the figure, except where the use of a different proportion is indispensable for the clarity of the figure.

The height of the numbers and letters shall not be less than 0.32 cm.

For the lettering of drawings, the Latin and, where customary, the Greek alphabets shall be used.

The same sheet of drawings may contain several figures.
Where figures on two or more sheets form in effect a single complete figure, the figures on the several sheets shall be so arranged that the complete figure can be assembled without concealing any part of any of the figures appearing on the various sheets.

The different figures shall be arranged on a sheet or sheets without wasting space, preferably in an upright position, clearly separated from one another.
Where the figures are not arranged in an upright position, they shall be presented sideways with the top of the figures at the left side of the sheet.

The different figures shall be numbered in arabic numerals consecutively and independently of the numbering of the sheets.

Reference signs not mentioned in the description shall not ap- pear in the drawings, and vice versa.

(m) The same features, when denoted by reference signs, shall, throughout the international application, be denoted by the same signs.
If the drawings contain a large number of reference signs, it is strongly recommended to attach a separate sheet listing all reference signs and the features denoted by them.

(n) 192 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 11—continued 11.14 Later Documents Rules 10, and 11.1 to 11.13, also apply to any document — for ex- ample, corrected pages, amended claims — submitted after the filing of the international application.
Rule 12—Language of the International Application 12.1 Admitted Languages (a) Any international application shall be filed in the language, or one of the languages, specified in the agreement concluded be- tween the International Bureau and the International Search- ing Authority competent for the international searching of that application, provided that, if the agreement specifies several languages, the receiving Office may prescribe among the spe- cified languages that language in which or those languages in one of which the international application must be filed.
(b) Notwithstanding paragraph (a), the request, any text matter of the drawings, and the abstract need not be in the same lan- guage as other elements of the international application, pro- vided that: (i) the request is in a language admitted under paragraph (a) or in the language in which the international appli- cation is to be published; the text matter of the drawings is in the language in which the international application is to be published; the abstract is in the language in which the international application is to be published.
(ii) (iii) (c) Subject to paragraph (d), where the official language of the receiving Office is one of the languages referred to in Rule 48.3(a) but is a language not specified in the agreement re- ferred to in paragraph (a), the international application may be filed in the said official language.
If the international applica- tion is filed in the said official language, the search copy trans- mitted to the International Searching Authority under Rule 23.1 shall be accompanied by a translation into the language, or one of the languages, specified in the agreement referred to 193 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 12—continued (d) in paragraph (a); such translation shall be prepared under the responsibility of the receiving Office.
Paragraph (c) shall apply only where the International Search- ing Authority has declared, in a notification addressed to the International Bureau, that it accepts to search international ap- plications on the basis of the translation referred to in para- graph (c).

12.2 Language of Changes in the International Application Any changes in the international application, such as amendments and corrections, shall, subject to Rules 46.3 and 66.9, be in the same language as the said application.
Rule 13—Unity of Invention 13.1 Requirement The international application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”).
13.2 Circumstances in Which the Requirement of Unity of Invention Is to Be Considered Fulfilled Where a group of inventions is claimed in one and the same inter- national application, the requirement of unity of invention referred to in Rule 13.1 shall be fulfilled only when there is a technical rela- tionship among those inventions involving one or more of the same or corresponding special technical features.
The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
13.3 Determination of Unity of Invention Not Affected by Manner of Claiming The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard 194 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 13—continued to whether the inventions are claimed in separate claims or as alter- natives within a single claim.
13.4 Dependent Claims Subject to Rule 13.1, it shall be permitted to include in the same inter- national application a reasonable number of dependent claims, claim- ing specific forms of the invention claimed in an independent claim, even where the features of any dependent claim could be considered as constituting in themselves an invention.
13.5 Utility Models Any designated State in which the grant of a utility model is sought on the basis of an international application may, instead of Rules 13.1 to 13.4, apply in respect of the matters regulated in those Rules the provisions of its national law concerning utility models once the pro- cessing of the international application has started in that State, pro- vided that the applicant shall be allowed at least two months from the expiration of the time limit applicable under Article 22 to adapt his application to the requirements of the said provisions of the national law.
Rule 13bis—Microbiological Inventions 13bis.1 Definition For the purposes of this Rule, “reference to a deposited microorgan- ism” means particulars given in an international application with re- spect to the deposit of a microorganism with a depositary institution or to the microorganism so deposited.
13bis.2 References (General) Any reference to a deposited microorganism shall be made in accord- ance with this Rule and, if so made, shall be considered as satisfying the requirements of the national law of each designated State.
195 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 13bis—continued 13bis.3 References: Contents; Failure to Include Reference or (a) (b) (ii) (iii) (iv) Indication A reference to a deposited microorganism shall indicate, (i) the name and address of the depositary institution with which the deposit was made; the date of deposit of the microorganism with that insti- tution; the accession number given to the deposit by that insti- tution; and any additional matter of which the International Bu- reau has been notified pursuant to Rule 13bis.7(a)(i), provided that the requirement to indicate that matter was published in the Gazette in accordance with Rule 13bis.7(c) at least two months before the filing of the international application.
Failure to include a reference to a deposited microorganism or failure to include, in a reference to a deposited microorganism, an indication in accordance with paragraph (a), shall have no consequence in any designated State whose national law does not require such reference or such indication in a national ap- plication.
13bis.4 References: Time of Furnishing Indications If any of the indications referred to in Rule 13bis.3(a) is not included in a reference to a deposited microorganism in the international ap- plication as filed but is furnished by the applicant to the International Bureau within 16 months after the priority date, the indication shall be considered by any designated Office to have been furnished in time unless its national law requires the indication to be furnished at an earlier time in the case of a national application and the International Bureau has been notified of such requirement pursuant to Rule 13bis.7(a)(ii), provided that the International Bureau has published such requirement in the Gazette in accordance with Rule 13bis.7(c) at least two months before the filing of the international application.
In the event that the applicant makes a request for early publication under Article 21(2)(b), however, any designated 196 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 13bis—continued Office may consider any indication not furnished by the time such request is made as not having been furnished in time.
Irrespective of whether the applicable time limit under the preceding sentences has been observed, the International Bureau shall notify the applicant and the designated Offices of the date on which it has received any indication not included in the international application as filed.
The International Bureau shall indicate that date in the international publication of the international application if the indication has been furnished to it before the completion of technical preparations for international publication.
(a) 13bis.5 References and Indications for the Purposes of One or More Designated States: Different Deposits for Different Designated States; Deposits with Depositary Institutions Other Than Those Notified A reference to a deposited microorganism shall be considered to be made for the purposes of all designated States, unless it is expressly made for the purposes of certain of the designated States only; the same applies to the indications included in the reference.
References to different deposits of the microorganism may be made for different designated States.

Any designated Office shall be entitled to disregard a deposit made with a depositary institution other than one notified by it under Rule 13bis.7(b).
(b) (c) 13bis.6 Furnishing of Samples (a) Where the international application contains a reference to a deposited microorganism, the applicant shall, upon the request of the International Searching Authority or the International Preliminary Examining Authority, authorize and assure the furnishing of a sample of that microorganism by the deposit- ary institution to the said Authority, provided that the said Au- thority has notified the International Bureau that it may require the furnishing of samples and that such samples will be used solely for the purposes of international search or international 197 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 13bis—continued (b) preliminary examination, as the case may be, and such notifi- cation has been published in the Gazette.
Pursuant to Articles 23 and 40, no furnishing of samples of the deposited microorganism to which a reference is made in an international application shall, except with the authorization of the applicant, take place before the expiration of the applicable time limits after which national processing may start under the said Articles.
However, where the applicant performs the acts referred to in Articles 22 or 39 after international publication but before the expiration of the said time limits, the furnishing of samples of the deposited microorganism may take place, once the said acts have been performed.
Notwithstanding the previous provision, the furnishing of samples of the deposited microorganism may take place under the national law applic- able for any designated Office as soon as, under that law, the international publication has the effects of the compulsory na- tional publication of an unexamined national application.
13bis.7 National Requirements: Notification and Publication (a) Any national Office may notify the International Bureau of any requirement of the national law, (i) (ii) that any matter specified in the notification, in addition to those referred to in Rule 13bis.3(a)(i), (ii) and (iii), is required to be included in a reference to a deposited microorganism in a national application; that one or more of the indications referred to in Rule 13bis.3(a) are required to be included in a national ap- plication as filed or are required to be furnished at a time specified in the notification which is earlier than 16 months after the priority date.
Each national Office shall notify the International Bureau of the depositary institutions with which the national law permits deposits of microorganisms to be made for the purposes of patent procedure before that Office or, if the national law does not provide for or permit such deposits, of that fact.
(b) 198 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 13bis—continued (c) The International Bureau shall promptly publish in the Gazette requirements notified to it under paragraph (a) and information notified to it under paragraph (b).
Rule 13ter—Nucleotide and/or Amino Acid Sequence Listings 13ter.1 Sequence Listing for International Authorities (a) If the International Searching Authority finds that a nucleotide and/or amino acid sequence listing does not comply with the standard prescribed in the Administrative Instructions under Rule 5.2, and/or is not in a machine readable form provided for in those Instructions, it may invite the applicant, within a time limit fixed in the invitation, as the case may be: (i) to furnish to it a listing of the sequence complying with the prescribed standard, and/or to furnish to it a listing of the sequence in a machine readable form provided for in the Administrative In- structions or, if that Authority is prepared to transcribe the sequence listing into such a form, to pay for the cost of such transcription.
(ii) (c) (b) Any sequence listing furnished under paragraph (a) shall be accompanied by a statement to the effect that the listing does not include matter which goes beyond the disclosure in the international application as filed.
If the applicant does not comply with the invitation within the time limit fixed in the invitation, the International Searching Authority shall not be required to search the international ap- plication to the extent that such non-compliance has the result that a meaningful search cannot be carried out.
If the International Searching Authority chooses, under para- graph (a)(ii), to transcribe the sequence listing into a machine readable form, it shall send a copy of such transcription in ma- chine readable form to the applicant.
The International Searching Authority shall, upon request, make available to the International Preliminary Examining (d) (e) 199 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 13ter—continued (f) Authority a copy of any sequence listing furnished to it, or as transcribed by it, under paragraph (a).

A sequence listing furnished to the International Searching Authority, or as transcribed by it, under paragraph (a) shall not form part of the international application.
(b) 13ter.2 Sequence Listing for Designated Office (a) Once the processing of the international application has started before a designated Office, that Office may require the appli- cant to furnish to it a copy of any sequence listing furnished to the International Searching Authority, or as transcribed by that Authority, under Rule 13ter.1(a).
If a designated Office finds that a nucleotide and/or amino acid sequence listing does not comply with the standard prescribed in the Administrative Instructions under Rule 5.2, and/or is not in a machine readable form provided for in those Instructions, and/or no listing of the sequence was furnished to the Inter- national Searching Authority, or transcribed by that Authority, under Rule 13ter.1(a), that Office may require the applicant; (i) to furnish to it a listing of the sequence complying with the prescribed standard, and/or to furnish to it a listing of the sequence in a machine readable form provided for in the Administrative In- structions or, if that Office is prepared to transcribe the sequence listing into such a form, to pay for the cost of such transcription.
(ii) Rule 14—The Transmittal Fee 14.1 The Transmittal Fee (a) Any receiving Office may require that the applicant pay a fee to it, for its own benefit, for receiving the international appli- cation, transmitting copies to the International Bureau and the component International Searching Authority, and performing all the other tasks which it must perform in connection with the international application in its capacity of receiving Office (“transmittal fee”).
200 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 14—continued (b) The amount and the due date of the transmittal fee, if any, shall be fixed by the receiving Office.
Rule 15—The International Fee 15.1 Basic Fee and Designation Fee Each international application shall be subject to the payment of a fee for the benefit of the International Bureau (“international fee”) to be collected by the receiving Office and consisting of, (i) (ii) a “basic fee,” and as many “designation fees” as there are national patents and regional patents sought under Rule 4.9(a) by the applicant in the international application, except that, where Article 44 ap- plies in respect of a designation, only one designation fee shall be due for that designation.
15.2 Amounts (a) (b) The amounts of the basic fee and of the designation fee are as set out in the Schedule of Fees.

The amounts of the basic fee and of the designation fee shall be established, for each receiving Office which, under Rule 15.3, prescribes the payment of those fees in a currency or currencies other than Swiss currency, by the Director General after consultation with that Office and in the currency or cur- rencies prescribed by that Office (“prescribed currency”).
The amounts in each prescribed currency shall be the equivalent, in round figures, of the amounts in Swiss currency set out in the Schedule of Fees.

They shall be published in the Gazette.

(c) Where the amounts of the fees set out in the Schedule of Fees are changed, the corresponding amounts in the prescribed cur- rencies shall be applied from the same date as the amounts set out in the amended Schedule of Fees.
(d) Where the exchange rate between Swiss currency and any pre- scribed currency becomes different from the exchange rate last applied, the Director General shall establish new amounts in the prescribed currency according to directives given by the 201 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 15—continued Assembly.
The newly established amounts shall become ap- plicable two months after the date of their publication in the Gazette, provided that the interested Office and the Director General may agree on a date falling during the said two-month period in which case the said amounts shall become applicable for that Office from that date.
15.3 Mode of Payment The international fee shall be payable in the currency or currencies prescribed by the receiving Office, it being understood that, when transferred by the receiving Office to the International Bureau, the amount transferred shall be freely convertible into Swiss currency.

15.4 Time of Payment (a) (b) The basic fee shall be paid within one month from the date of receipt of the international application.
The designation fee shall be paid: (i) where the international application does not contain a priority claim under Article 8, within one year from the date of receipt of the international application, (ii) where the international application contains a priority claim under Article 8, within one year from the priority date or within one month from the date of receipt of the international application if that month expires after the expiration of one year from the priority date.
(c) Where the basic fee or the designation fee is paid later than the date on which the international application was received and where the amount of that fee is, in the currency in which it is payable, higher on the date of payment (“the higher amount”) than it was on the date on which the international application was received (“the lower amount”), (i) the lower amount shall be due if the fee is paid within one month from the date of receipt of the international application, 202 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 15—continued (ii) the higher amount shall be due if the fee is paid later than one month from the date of receipt of the inter- national application.
15.5 Fees Under Rule 4.9(c) (a) Notwithstanding Rule 15.4(b), the confirmation under Rule 4.9(c) of any designations made under Rule 4.9(b) shall be subject to the payment to the receiving Office of as many des- ignation fees (for the benefit of the International Bureau) as there are national patents and regional patents sought by the applicant by virtue of the confirmation, together with a con- firmation fee (for the benefit of the receiving Office), as set out in the Schedule of Fees.
(b) Where moneys paid by the applicant within the time limit under Rule 4.9(b)(ii) are not sufficient to cover the fees due under paragraph (a), the receiving Office shall allocate any moneys paid as specified by the applicant or, in the absence of such specification, as prescribed by the Administrative In- structions.
15.6 Refund The receiving Office shall refund the international fee to the appli- cant: (i) (ii) if the determination under Article 11(1) is negative, or if, before the transmittal of the record copy to the International Bureau, the international application is withdrawn or consid- ered withdrawn.
Rule 16—The Search Fee 16.1 Right to Ask for a Fee (a) Each International Searching Authority may require that the applicant pay a fee (“search fee”) for its own benefit for carry- ing out the international search and for performing all other tasks entrusted to International Searching Authorities by the Treaty and these Regulations.

203 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 16—continued (b) The search fee shall be collected by the receiving Office.
The said fee shall be payable in the currency or currencies pre- scribed by that Office (“the receiving Office currency”), it be- ing understood that, if any receiving Office currency is not that, or one of those, in which the International Searching Au- thority has fixed the said fee (“the fixed currency or curren- cies”), it shall, when transferred by the receiving Office to the International Searching Authority, be freely convertible into the currency of the State in which the International Searching Authority has its headquarters (“the headquarters currency”).
The amount of the search fee in any receiving Office currency, other than the fixed currency or currencies, shall be established by the Director General after consultation with that Office.

The amounts so established shall be the equivalents, in round figures, of the amount established by the International Search- ing Authority in the headquarters currency.

They shall be pub- lished in the Gazette.


(c) Where the amount of the search fee in the headquarters cur- rency is changed, the corresponding amounts in the receiving Office currencies, other than the fixed currency or currencies, shall be applied from the same date as the changed amount in the headquarters currency.
(d) Where the exchange rate between the headquarters currency and any receiving Office currency, other than the fixed cur- rency or currencies, becomes different from the exchange rate last applied, the Director General shall establish the new amount in the said receiving Office currency according to directives given by the Assembly.
The newly established amount shall become applicable two months after its publi- cation in the Gazette, provided that any interested receiving Office and the Director General may agree on a date falling during the said two-month period in which case the said amount shall become applicable for that Office from that date.
(e) Where, in respect of the payment of the search fee in a receiv- ing Office currency, other than the fixed currency or curren- cies, the amount actually received by the International Search- ing Authority in the headquarters currency is less than that 204 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 16—continued fixed by it, the difference will be paid to the International Searching Authority by the International Bureau, whereas, if the amount actually received is more, the difference will be- long to the International Bureau.
As to the time of payment of the search fee, the provisions of Rule 15.4 relating to the basic fee shall apply.

(f) 16.2 Refund The receiving Office shall refund the search fee to the applicant: (i) (ii) if the determination under Article 11(1) is negative, or if, before the transmittal of the search copy to the Inter- national Searching Authority, the international application is withdrawn or considered withdrawn.
16.3 Partial Refund Where the international application claims the priority of an ear- lier international application which has been the subject of an inter- national search by the same International Searching Authority, that Authority shall refund the search fee paid in connection with the later international application to the extent and under the conditions pro- vided for in the agreement under Article 16(3)(b), if the international search report on the later international application could wholly or partly be based on the results of the international search effected on the earlier international application.
Rule 16bis—Extension of Time Limits for Payment of Fees 16bis.1 Invitation by the Receiving Office (a) Where, by the time they are due under Rule 14.1(b), Rule 15.4(a) and Rule 16.1(f), the receiving Office finds that in re- spect of an international application no fees were paid to it by the applicant, or that the amount paid to it by the applicant is less than what is necessary to cover the transmittal fee, the basic fee and search fee, the receiving Office shall invite the applicant to pay to it the amount required to cover those fees, 205 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 16bis—continued together with, where applicable, the late payment fee under Rule 16bis.2, within one month from the date of the invita- tion.
(b) Where, by the time they are due under Rule 15.4(b), the receiv- ing Office finds that in respect of an international application the payment made by the applicant is insufficient to cover the designation fees necessary to cover all the designations under Rule 4.9(a), the receiving Office shall invite the applicant to pay to it the amount required to cover those fees, together with, where applicable, the late payment fee under Rule 16bis.2, within one month from the date of the invitation.
(c) Where the receiving Office has sent to the applicant an invi- tation under paragraph (a) or (b) and the applicant has not, within one month from the date of the invitation, paid in full the amount due, including, where applicable, the late payment fee under Rule 16bis.2, the receiving Office shall: (i) allocate any moneys paid as specified by the applicant or, in the absence of such specification, as prescribed by the Administrative Instructions.
(ii) make the applicable declaration under Article 14(3), and proceed as provided in Rule 29.

(iii) 16bis.2 Late Payment Fee (a) The payment of fees in response to an invitation under Rule 16bis.1(a) or (b) may be subjected by the receiving Office to the payment to it of a late payment fee.
The amount of that fee shall be: (i) 50% of the amount of unpaid fees which is specified in the invitation, or, if the amount calculated under item (i) is less than the transmittal fee, an amount equal to the transmittal fee.

The amount of the late payment fee shall not, however, exceed the amount of the basic fee.
(ii) (b) 206 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 17—The Priority Document 17.1 Obligation to Submit Copy of Earlier National Application (a) Where the priority of an earlier national application is claimed under Article 8 in the international application, a copy of the said national application, certified by the authority with which it was filed (“the priority document”), shall, unless already filed with the receiving Office together with the international application, be submitted by the applicant to the International Bureau or to the receiving Office not later than 16 months after the priority date or, in the case referred to in Article 23(2), not later than at the time the processing or examination is re- quested.
(b) Where the priority document is issued by the receiving Office, the applicant may, instead of submitting the priority document, request the receiving Office to transmit the priority document to the International Bureau.

Such request shall be made not later than the expiration of the applicable time limit referred to under paragraph (a) and may be subjected by the receiving Office to the payment of a fee.
If the requirements of neither of the two preceding paragraphs are complied with, any designated State may disregard the pri- ority claim.

(c) 17.2 Availability of Copies (a) The International Bureau shall, at the specific request of the designated Office, promptly but not before the expiration of the time limit fixed in Rule 17.1(a), furnish a copy of the pri- ority document to that Office.
No such Office shall ask the applicant himself to furnish it with a copy, except where it re- quires the furnishing of a copy of the priority document to- gether with a certified translation thereof.

The applicant shall not be required to furnish a certified translation to the desig- nated Office before the expiration of the applicable time limit under Article 22.
207 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 17—continued (b) The International Bureau shall not make copies of the prior- ity document available to the public prior to the international publication of the international application.
(c) Where the international application has been published under Article 21, the International Bureau shall furnish a copy of the priority document to any person upon request and subject to reimbursement of the cost unless, prior to that publication: the international application was withdrawn, (i) the relevant priority claim was withdrawn or was con- (ii) sidered, under Rule 4.10(b), not to have been made, or the relevant declaration under Article 8(1) was can- celled under Rule 4.10(d).
(iii) (d) Paragraphs (a) to (c) shall apply also to any earlier inter- national application whose priority is claimed in the subse- quent international application.

Rule 18—The Applicant 18.1 Residence (a) to the provisions of paragraph (b), the question Subject whether an applicant is a resident of the Contracting State of which he claims to be a resident shall depend on the national law of that State and shall be decided by the receiving Office.
In any case, possession of a real and effective industrial or commercial establishment in a Contracting State shall be con- sidered residence in that State.

(b) to the provisions of paragraph (b), 18.2 Nationality Subject the question (a) whether an applicant is a national of the Contracting State of which he claims to be a national shall depend on the national law of that State and shall be decided by the receiving Office.
In any case, a legal entity constituted according to the national law of a Contracting State shall be considered a national of that State.

(b) 208 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 18—continued 18.3 Two or More Applicants If there are two or more applicants, the right to file an international application shall exist if at least one of them is entitled to file an international application according to Article 9.
18.4 Information on Requirements Under National Law as (a) (b) (c) to Applicants [Deleted] [Deleted] The International Bureau shall, from time to time, publish in- formation on the various national laws in respect of the ques- tion who is qualified (inventor, successor in title of the inven- tor, owner of the invention, or other) to file a national appli- cation and shall accompany such information by a warning that the effect of the international application in any desig- nated State may depend on whether the person designated in the international application as applicant for the purposes of that State is a person who, under the national law of that State, is qualified to file a national application.
Rule 19—The Competent Receiving Office 19.1 Where to File (a) Subject to the provisions of paragraph (b), the international application shall be filed, at the option of the applicant, with the national Office of or acting for the Contracting State of which the applicant is a resident or with the national Office of or acting for the Contracting State of which the applicant is a national.
(b) Any Contracting State may agree with another Contracting State or any intergovernmental organization that the national Office of the latter State or the intergovernmental organization shall, for all or some purposes, act instead of the national Of- fice of the former State as receiving Office for applicants who are residents or nationals of that former State.
Notwithstand- ing such agreement, the national Office of the former State 209 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 19—continued (c) shall be considered the competent receiving Office for the pur- poses of Article 15(5).
In connection with any decision made under Article 9(2), the Assembly shall appoint the national Office or the intergovern- mental organization which will act as receiving Office for ap- plications of residents or nationals of States specified by the Assembly.

Such appointment shall require the previous con- sent of the said national Office or intergovernmental organiza- tion.
19.2 Two or More Applicants If there are two or more applicants, the requirements of Rule 19.1 shall be considered to be met if the national Office with which the international application is filed is the national Office of or acting for a Contracting State of which at least one of the applicants is a resident or national.
19.3 Publication of Fact of Delegation of Duties of Receiving (a) (b) Office Any agreement referred to in Rule 19.1(b) shall be promptly notified to the International Bureau by the Contracting State which delegates the duties of the receiving Office to the na- tional Office of or acting for another Contracting State or an intergovernmental organization.

The International Bureau shall, promptly upon receipt, publish the notification in the Gazette.
Rule 20—Receipt of the International Application 20.1 Date and Number (a) Upon receipt of papers purporting to be an international ap- plication, the receiving Office shall indelibly mark the date of actual receipt on the request of each copy received and the international application number on each sheet of each copy received.
210 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 20—continued (b) The place on each sheet where the date or number shall be marked, and other details, shall be specified in the Adminis- trative Instructions.
20.2 Receipt on Different Days (a) In cases where all the sheets pertaining to the same purported international application are not received on the same day by the receiving Office, that Office shall correct the date marked on the request (still leaving legible, however, the earlier date or dates already marked) so that it indicates the day on which the papers completing the international application were received, provided that (i) where no invitation under Article 11(2)(a) to correct was sent to the applicant, the said papers are received within 30 days from the date on which sheets were first received; (iii) (ii) where an invitation under Article 11(2)(a) to correct was sent to the applicant, the said papers are received within the applicable time limit under Rule 20.6; in the case of Article 14(2), the missing drawings are received within 30 days from the date on which the in- complete papers were filed; the absence or later receipt of any sheet containing the abstract or part thereof shall not, in itself, require any correction of the date marked on the request.
(iv) (b) Any sheet received on a date later than the date on which sheets were first received shall be marked by the receiving Office with the date on which it was received.

20.3 Corrected International Application In the case referred to in Article 11(2)(b), the receiving Office shall correct the date marked on the request (still leaving legible, however, the earlier date or dates already marked) so that it indicates the day on which the last required correction was received.
211 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 20—continued 20.4 Determination under Article 11(1) (a) Promptly after receipt of the papers purporting to be an international application, the receiving Office shall determine whether the papers comply with the requirements of Article 11(1).
For the purposes of Article 11(1)(iii)(c), it shall be sufficient to indicate the name of the applicant in a way which allows his identity to be established even if the name is misspelled, the given names are not fully indicated, or, in the case of legal en- tities, the indication of the name is abbreviated or incomplete.

For the purposes of Article 11(1)(ii), it shall be sufficient that the elements referred to in Article 11(1)(iii)(d) and (e) be in a language admitted under Rule 12.1(a) or (c).
If, on July 12, 1991, paragraph (c) is not compatible with the national law applied by the receiving Office, paragraph (c) shall not apply to that receiving Office for as long as it con- tinues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by De- cember 31, 1991.

The information received shall be promptly published by the International Bureau in the Gazette.
20.5 Positive Determination (a) If the determination under Article 11(1) is positive, the receiv- ing Office shall stamp on the request the name of the receiving Office and the words “PCT International Application,” or “De- mande internationale PCT.” If the official language of the re- ceiving Office is neither English nor French, the words “Inter- national Application” or “Demande internationale” may be ac- companied by a translation of these words in the official lan- guage of the receiving Office.
The copy whose request has been so stamped shall be the record copy of the international application.

The receiving Office shall promptly notify the applicant of the international application number and the international filing date.
At the same time, it shall send to the International Bureau a copy of the notification sent to the applicant, except where (b) (c) (d) (b) (c) 212 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 20—continued it has already sent, or is sending at the same time, the record copy to the International Bureau under Rule 22.1(a).
20.6 Invitation to Correct (a) (b) The invitation to correct under Article 11(2) shall specify the requirement provided for under Article 11(1) which, in the opinion of the receiving Office, has not been fulfilled.

The receiving Office shall promptly mail the invitation to the applicant and shall fix a time limit, reasonable under the cir- cumstances of the case, for filing the correction.

The time limit shall not be less than 10 days, and shall not exceed one month, from the date of the invitation.
If such time limit expires after the expiration of one year from the filing date of any applica- tion whose priority is claimed, the receiving Office may call this circumstance to the attention of the applicant.
20.7 Negative Determination If the receiving Office does not, within the prescribed time limit, re- ceive a reply to its invitation to correct, or if the correction offered by the applicant still does not fulfill the requirements provided for under Article 11(1), it shall: (i) promptly notify the applicant that his application is not and will not be treated as an international application and shall indicate the reasons therefor, notify the International Bureau that the number it has marked on the papers will not be used as an international application number, keep the papers constituting the purported international appli- cation and any correspondence relating thereto as provided in Rule 93.1, and send a copy of the said papers to the International Bureau where, pursuant to a request by the applicant under Article 25(1), the International Bureau needs such a copy and spe- cially asks for it.
(ii) (iii) (iv) 213 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 20—continued 20.8 Error by the Receiving Office If the receiving Office later discovers, or on the basis of the appli- cant’s reply realizes, that it has erred in issuing an invitation to correct since the requirements provided for under Article 11(1) were fulfilled when the papers were received, it shall proceed as provided in Rule 20.5.
20.9 Certified Copy for the Applicant Against payment of a fee, the receiving Office shall furnish to the applicant, on request, certified copies of the international application as filed and of any corrections thereto.

Rule 21—Preparation of Copies 21.1 Responsibility of the Receiving Office (a) Where the international application is required to be filed in one copy, the receiving Office shall be responsible for prepar- ing the home copy and the search copy required under Article 12(1).
(c) (b) Where the international application is required to be filed in two copies, the receiving Office shall be responsible for preparing the home copy.

If the international application is filed in less than the number of copies required under Rule 11.1(b), the receiving Office shall be responsible for the prompt preparation of the number of copies required, and shall have the right to fix a fee for performing that task and to collect such fee from the applicant.
Rule 22—Transmittal of the Record Copy 22.1 Procedure (a) If the determination under Article 11(1) is positive, and unless prescriptions concerning national security prevent the inter- national application from being treated as such, the receiving Office shall transmit the record copy to the International Bu- reau.
Such transmittal shall be effected promptly after receipt 214 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 22—continued of the international application or, if a check to preserve na- tional security must be performed, as soon as the necessary clearance has been obtained.

In any case, the receiving Office shall transmit the record copy in time for it to reach the Inter- national Bureau by the expiration of the 13th month from the priority date.
If the transmittal is effected by mail, the receiv- ing Office shall mail the record copy not later than five days prior to the expiration of the 13th month from the priority date.

If the International Bureau has received a copy of the noti- fication under Rule 20.5(c) but is not, by the expiration of 13 months from the priority date, in possession of the record copy, it shall remind the receiving Office that it should transmit the record copy to the International Bureau promptly.
If the International Bureau has received a copy of the noti- fication under Rule 20.5(c) but is not, by the expiration of 14 months from the priority date, in possession of the record copy, it shall notify the applicant and the receiving Office accord- ingly.
(b) (c) (d) After the expiration of 14 months from the priority date, the applicant may request the receiving Office to certify a copy of his international application as being identical with the inter- national application as filed and may transmit such certified copy to the International Bureau.
Any certification under paragraph (d) shall be free of charge and may be refused only on any of the following grounds: (i) (e) (ii) (iii) the copy which the receiving Office has been requested to certify is not identical with the international applica- tion as filed; prescriptions concerning national security prevent the international application from being treated as such; the receiving Office has already transmitted the record copy to the International Bureau and that Bureau has informed the receiving Office that it has received the record copy.
(f) Unless the International Bureau has received the record copy, or until it receives the record copy, the copy certified under 215 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 22—continued (g) paragraph (e) and received by the International Bureau shall be considered to be the record copy.
If, by the expiration of the time limit applicable under Article 22, the applicant has performed the acts referred to in that Art- icle but the designated Office has not been informed by the International Bureau of the receipt of the record copy, the des- ignated Office shall inform the International Bureau.

If the International Bureau is not in possession of the record copy, it shall promptly notify the applicant and the receiving Office unless it has already notified them under paragraph (c).
22.2 [Deleted] 22.3 Time Limit under Article 12(3) The time limit referred to in Article 12(3) shall be three months from the date of the notification sent by the International Bureau to the applicant under Rule 22.1(c) or (g).
Rule 23—Transmittal of the Search Copy 23.1 Procedure (a) The search copy shall be transmitted by the receiving Office to the International Searching Authority at the latest on the same day as the record copy is transmitted to the International Bureau unless no search fee has been paid.

In the latter case, it shall be transmitted promptly after payment of the search fee.
[Deleted] (b) Rule 24—Receipt of the Record Copy by the International Bureau 24.1 [Deleted] 24.2 Notification of Receipt of the Record Copy (a) The International Bureau shall promptly notify: (i) the applicant, 216 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 24—continued (ii) (iii) the receiving Office, and the International Searching Authority (unless it has in- formed the International Bureau that it wishes not to be so notified), (b) of the fact and the date of receipt of the record copy.
The notification shall identify the international application by its number, the international filing date and the name of the ap- plicant, and shall indicate the filing date of any earlier appli- cation whose priority is claimed.

The notification sent to the applicant shall also contain a list of the States designated under Rule 4.9(a) and, where applicable, of those States whose des- ignations have been confirmed under Rule 4.9(c).
Each designated Office which has informed the International Bureau that it wishes to receive the notification under para- graph (a) prior to the communication under Rule 47.1 shall be so notified by the International Bureau: (i) if the designation concerned was made under Rule 4.9(a), promptly after the receipt of the record copy; if the designation concerned was made under Rule 4.9(b), promptly after the International Bureau has been informed by the receiving Office of the confirmation of that designation.
(ii) (c) If the record copy is received after the expiration of the time limit fixed in Rule 22.3, the International Bureau shall promptly notify the applicant, the receiving Office, and the International Searching Authority, accordingly.
Rule 25—Receipt of the Search Copy by the International Searching Authority 25.1 Notification of Receipt of the Search Copy The International Searching Authority shall promptly notify the International Bureau, the applicant, and — unless the International Searching Authority is the same as the receiving Office — the receiving Office, of the fact and the date of receipt of the search copy.
217 Patents Act 1953 Part B—continued Reprinted as at 1 January 2011 Rule 26—Checking by, and Correcting before, the Receiving Office of Certain Elements of the International Application 26.1 Time Limit for Check (a) The receiving Office shall issue the invitation to correct pro- vided for in Article 14(1)(b) as soon as possible, preferably within one month from the receipt of the international appli- cation.
If the receiving Office issues an invitation to correct the de- fect referred to in Article 14(1)(a)(iii) or (iv) (missing title or missing abstract), it shall notify the International Searching Authority accordingly.

(b) 26.2 Time Limit for Correction The time limit referred to in Article 14(1)(b) shall be reasonable under the circumstances and shall be fixed in each case by the re- ceiving Office.

It shall not be less than one month from the date of the invitation to correct.
It may be extended by the receiving Office at any time before a decision is taken.

26.3 Checking of Physical Requirements under Article 14(1)(a)(v) The physical requirements referred to in Rule 11 shall be checked only to the extent that compliance therewith is necessary for the pur- pose of reasonably uniform international publication.
26.3bis Invitation to Correct Defects under Article 14(1)(b) The receiving Office shall not be required to issue the invitation to correct a defect under Article 14(1)(a)(v) where the physical require- ments referred to in Rule 11 are complied with to the extent necessary for the purpose of reasonably uniform international publication.
26.3ter Invitation to Correct Defects under Article 3(4)(i) (a) Where any element of the international application, other than those referred to in Article 11(1)(iii)(d) and (e), does not com- ply with Rule 12.1, the receiving Office shall invite the appli- 218 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 26—continued (b) cant to file the required correction.

Rules 26.1(a), 26.2, 26.5 and 29.1 shall apply mutatis mutandis.
If, on July 12, 1991, paragraph (a) is not compatible with the national law applied by the receiving Office, paragraph (a) shall not apply to that receiving Office for as long as it con- tinues not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by De- cember 31, 1991.

The information received shall be promptly published by the International Bureau in the Gazette.
26.4 Procedure (a) Any correction offered to the receiving Office may be stated in a letter addressed to that Office if the correction is of such a nature that it can be transferred from the letter to the record copy without adversely affecting the clarity and the direct re- producibility of the sheet on to which the correction is to be transferred; otherwise, the applicant shall be required to sub- mit a replacement sheet embodying the correction and the let- ter accompanying the replacement sheet shall draw attention to the differences between the replaced sheet and the replace- ment sheet.
(b) to (d) [Deleted] 26.5 Decision of the Receiving Office (a) The receiving Office shall decide whether the applicant has submitted the correction within the time limit under Rule 26.2 and, if the correction has been submitted within that time limit, whether the international application so corrected is or is not to be considered withdrawn, provided that no international appli- cation shall be considered withdrawn for lack of compliance with the physical requirements referred to in Rule 11 if it com- plies with those requirements to the extent necessary for the purpose of reasonably uniform international publication.
[Deleted] (b) 219 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 26—continued 26.6 Missing Drawings (a) If, as provided in Article 14(2), the international application refers to drawings which in fact are not included in that appli- cation, the receiving Office shall so indicate in the said appli- cation.

The date on which the applicant receives the notification pro- vided for in Article 14(2) shall have no effect on the time limit fixed under Rule 20.2(a)(iii).
Rule 27—Lack of Payment of Fees 27.1 Fees (a) For the purposes of Article 14(3)(a), “fees prescribed under Article 3(4)(iv)” means: the transmittal fee (Rule 14), the basic fee part of the international fee (Rule 15.1(i)), the search fee (Rule 16), and, where required, the late payment fee (Rule 16bis.2).
For the purposes of Article 14(3)(a) and (b), “the fee pre- scribed under Article 4(2)” means the designation fee part of the international fee (Rule 15.1(ii)) and, where required, the late payment fee (Rule 16bis.2).
Rule 28—Defects Noted by the International Bureau 28.1 Note on Certain Defects (a) If, in the opinion of the International Bureau, the international application contains any of the defects referred to in Article 14(1)(a)(i), (ii) or (v), the International Bureau shall bring such defects to the attention of the receiving Office.

The receiving Office shall, unless it disagrees with the said opinion, proceed as provided in Article 14(1)(b) and Rule 26.
(b) (b) (b) 220 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 29—International Applications or Designations Considered Withdrawn under Article 14(1), (3) or (4) 29.1 Finding by Receiving Office (a) (ii) If the receiving Office declares, under Article 14(1)(b) and Rule 26.5 (failure to correct certain defects), or under Article 14(3)(a) (failure to pay the prescribed fees under Rule 27.1(a)), or under Article 14(4) (later finding of non-compliance with the requirements listed in items (i) to (iii) of Article 11(1)), that the international application is considered withdrawn: (i) the receiving Office shall transmit the record copy (un- less already transmitted), and any correction offered by the applicant, to the International Bureau; the receiving Office shall promptly notify both the ap- plicant and the International Bureau of the said declar- ation, and the International Bureau shall in turn notify each designated Office which has already been notified of its designation; the receiving Office shall not transmit the search copy as provided in Rule 23, or, if such copy has already been transmitted, it shall notify the International Search Authority of the said declaration; the International Bureau shall not be required to notify the applicant of the receipt of the record copy.
If the receiving Office declares under Article 14(3)(b) (failure to pay the prescribed designation fee under Rule 27.1(b)) that the designation of any given State is considered withdrawn, the receiving Office shall promptly notify both the applicant and the International Bureau of the said declaration.

The Inter- national Bureau shall in turn notify each designated Office which has already been notified of its designation.
(iii) (iv) (b) 221 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 29—continued 29.2 [Deleted] 29.3 Calling Certain Facts to the Attention of the Receiving Office If the International Bureau or the International Searching Authority considers that the receiving Office should make a finding under Art- icle 14(4), it shall call the relevant facts to the attention of the receiv- ing Office.
29.4 Notification of Intent to Make Declaration under Article 14(4) Before the receiving Office issues any declaration under Article 14(4), it shall notify the applicant of its intent to issue such declar- ation and the reasons therefor.

The applicant may, if he disagrees with the tentative finding of the receiving Office, submit arguments to that effect within one month from the notification.
Rule 30—Time Limit under Article 14(4) 30.1 Time Limit The time limit referred to in Article 14(4) shall be four months from the international filing date.

Rule 31—Copies Required under Article 13 31.1 Request for Copies (a) Requests under Article 13(1) may relate to all, some kinds of, or individual international applications in which the national Office making the request is designated.
Requests for all or some kinds of such international applications must be renewed for each year by means of a notification addressed by that Of- fice before November 30 of the preceding year to the Inter- national Bureau.

Requests under Article 13(2)(b) shall be subject to the pay- ment of a fee covering the cost of preparing and mailing the copy.
(b) 222 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 31—continued 31.2 Preparation of Copies The preparation of copies required under Article 13 shall be the re- sponsibility of the International Bureau.
[Deleted] [Deleted] Rule 32 Rule 32bis Rule 33—Relevant Prior Art for the International Search 33.1 Relevant Prior Art for the International Search (a) For the purposes of Article 15(2), relevant prior art shall con- sist of everything which has been made available to the public anywhere in the world by means of written disclosure (includ- ing drawings and other illustrations) and which is capable of being of assistance in determining that the claimed invention is or is not new and that it does or does not involve an inventive step (i.e., that it is or is not obvious), provided that the making available to the public occurred prior to the international filing date.
(b) When any written disclosure refers to an oral disclosure, use, exhibition, or other means whereby the contents of the written disclosure were made available to the public, and such mak- ing available to the public occurred on a date prior to the inter- national filing date, the international search report shall sep- arately mention that fact and the date on which it occurred if the making available to the public of the written disclosure oc- curred on a date which is the same as, or later than, the inter- national filing date.
Any published application or any patent whose publication date is the same as, or later than, but whose filing date, or, where applicable, claimed priority date, is earlier than the international filing date of the international application (c) 223 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 33—continued searched, and which would constitute relevant prior art for the purposes of Article 15(2) had it been published prior to the international filing date, shall be specially mentioned in the international search report.
33.2 Fields to Be Covered by the International Search (a) The international search shall cover all those technical fields, and shall be carried out on the basis of all those search files, which may contain material pertinent to the invention.

Consequently, not only shall the art in which the invention is classifiable be searched but also analogous arts regardless of where classified.
The question what arts are, in any given case, to be regarded as analogous shall be considered in the light of what appears to be the necessary essential function or use of the invention and not only the specific functions expressly indicated in the international application.
The international search shall embrace all subject matter that is generally recognized as equivalent to the subject matter of the claimed invention for all or certain of its features, even though, in its specifics, the invention as described in the international application is different.
33.3 Orientation of the International Search (a) International search shall be made on the basis of the claims, with due regard to the description and the drawings (if any) and with particular emphasis on the inventive concept towards which the claims are directed.

In so far as possible and reasonable, the international search shall cover the entire subject matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended.
(b) (c) (d) (b) 224 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 34—Minimum Documentation 34.1 Definition (a) (b) (c) The definitions contained in Article 2(i) and (ii) shall not apply for the purposes of this Rule.
The documentation referred to in Article 15(4) (“minimum documentation”) shall consist of: (i) the “national patent documents” as specified in para- graph (c), the published international (PCT) applications, the pub- lished regional applications for patents and inventors’ certificates, and the published regional patents and in- ventors’ certificates, such other published items of non-patent literature as the International Searching Authorities shall agree upon and which shall be published in a list by the International Bureau when agreed upon for the first time and whenever changed.
(ii) (iii) Subject to paragraphs (d) and (e), the “national patent docu- ments” shall be the following: (i) the patents issued in and after 1920 by France, the for- mer Reichspatentamt of Germany, Japan, the Soviet Union, Switzerland (in French and German languages only), the United Kingdom, and the United States of America, the patents issued by the Federal Republic of Germany, the patent applications, if any, published in and after 1920 in the countries referred to in items (i) and (ii), the inventors’ certificates issued by the Soviet Union, the utility certificates issued by, and the published ap- plications for utility certificates of, France, such patents issued by, and such patent applications published in, any other country after 1920 as are in the English, French, German or Spanish language and in which no priority is claimed, provided that the national Office of the interested country sorts out these docu- ments and places them at the disposal of each Inter- national Searching Authority.
(ii) (iii) (iv) (v) (vi) 225 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 34—continued (e) (d) Where an application is republished once (for example, an Of- fenlegungsschrift as an Auslegeschrift) or more than once, no International Searching Authority shall be obliged to keep all versions in its documentation; consequently, each such Au- thority shall be entitled not to keep more than one version.
Furthermore, where an application is granted and is issued in the form of a patent or a utility certificate (France), no Inter- national Searching Authority shall be obliged to keep both the application and the patent or utility certificate (France) in its documentation; consequently, each such Authority shall be en- titled to keep either the application only or the patent or utility certificate (France) only.
Any International Searching Authority whose official lan- guage, or one of whose official languages, is not Japanese, Russian or Spanish is entitled not to include in its documen- tation those patent documents of Japan and the Soviet Union as well as those patent documents in the Spanish language, respectively, for which no abstracts in the English language are generally available.
English abstracts becoming generally available after the date of entry into force of these Regulations shall require the inclusion of the patent documents to which the abstracts refer no later than six months after such abstracts become generally available.
In case of the interruption of abstracting services in English in technical fields in which English abstracts were formerly generally available, the Assembly shall take appropriate measures to provide for the prompt restoration of such services in the said fields.

For the purposes of this Rule, applications which have only been laid open for public inspection are not considered pub- lished applications.
(f) 226 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 35—The Competent International Searching Authority 35.1 When Only One International Searching Authority is Competent Each receiving Office shall, in accordance with the terms of the ap- plicable agreement referred to in Article 16(3)(b), inform the Inter- national Bureau which International Searching Authority is compe- tent for the searching of the international applications filed with it, and the International Bureau shall promptly publish such informa- tion.
35.2 When Several International Searching Authorities Are (a) (ii) Competent Any receiving Office may, in accordance with the terms of the applicable agreement referred to in Article 16(3)(b), specify several International Searching Authorities: (i) by declaring all of them competent for any international application filed with it, and leaving the choice to the applicant, or by declaring one or more competent for certain kinds of international applications filed with it, and declar- ing one or more others competent for other kinds of international applications filed with it, provided that, for those kinds of international applications for which sev- eral International Searching Authorities are declared to be competent, the choice shall be left to the applicant.
(b) Any receiving Office availing itself of the faculty provided in paragraph (a) shall promptly inform the International Bureau, and the International Bureau shall promptly publish such in- formation.
227 Patents Act 1953 Part B—continued Reprinted as at 1 January 2011 Rule 36—Minimum Requirements for International Searching Authorities 36.1 Definition of Minimum Requirements The minimum requirements referred to in Article 16(3)(c) shall be the following: (i) the national Office or intergovernmental organization must have at least 100 full-time employees with sufficient technical qualifications to carry out searches; that Office or organisation must have in its possession, or have access to, at least the minimum documentation referred to in Rule 34, properly arranged for search purposes, on paper, in microform or stored on electronic media; that Office or organization must have a staff which is capable of searching the required technical fields and which has the language facilities to understand at least those languages in which the minimum documentation referred to in Rule 34 is written or is translated.
(ii) (iii) Rule 37—Missing or Defective Title 37.1 Lack of Title If the international application does not contain a title and the re- ceiving Office has notified the International Searching Authority that it has invited the applicant to correct such defect, the International Searching Authority shall proceed with the international search un- less and until it receives notification that the said application is con- sidered withdrawn.
37.2 Establishment of Title If the international application does not contain a title and the Inter- national Searching Authority has not received a notification from the receiving Office to the effect that the applicant has been invited to furnish a title, or if the said Authority finds that the title does not comply with Rule 4.3, it shall itself establish a title.
228 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 38—Missing or Defective Abstract 38.1 Lack of Abstract If the international application does not contain an abstract and the re- ceiving Office has notified the International Searching Authority that it has invited the applicant to correct such defect, the International Searching Authority shall proceed with the international search un- less and until it receives notification that the said application is con- sidered withdrawn.
38.2 Establishment of Abstract (a) If the international application does not contain an abstract and the International Searching Authority has not received a notifi- cation from the receiving Office to the effect that the applicant has been invited to furnish an abstract, or if the said Author- ity finds that the abstract does not comply with Rule 8, it shall itself establish an abstract (in the language in which the inter- national application is published).
The applicant may, within one month from the date of mail- ing of the international search report, submit comments on the abstract established by the International Searching Authority.

Where that Authority amends the abstract established by it, it shall notify the amendment to the International Bureau.
(b) Rule 39—Subject Matter under Article 17(2)(a)(i) 39.1 Definition No International Searching Authority shall be required to search an international application if, and to the extent to which, its subject matter is any of the following: (i) (ii) scientific and mathematical theories, plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbio- logical processes and the products of such processes, schemes, rules or methods of doing business, performing purely mental acts or playing games, (iii) 229 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 39—continued (iv) methods of treatment of the human or animal body by surgery or therapy, as well as diagnostic methods, (v) mere presentations of information, (vi) computer programs to the extent that the International Search- ing Authority is not equipped to search prior art concerning such programs.
Rule 40—Lack of Unity of Invention (International Search) 40.1 Invitation to Pay The invitation to pay additional fees provided for in Article 17(3)(a) shall specify the reasons for which the international application is not considered as complying with the requirement of unity of invention and shall indicate the amount to be paid.

40.2 Additional Fees (a) The amount of the additional fee due for searching under Article 17(3)(a) shall be determined by the competent Inter- national Searching Authority.
The additional fee due for searching under Article 17(3)(a) shall be payable direct to the International Searching Author- ity.

Any applicant may pay the additional fee under protest, that is, accompanied by a reasoned statement to the effect that the international application complies with the requirement of unity of invention or that the amount of the required ad- ditional fee is excessive.
Such protest shall be examined by a three-member board or other special instance of the Inter- national Searching Authority or any competent higher author- ity, which, to the extent that it finds the protest justified, shall order the total or partial reimbursement to the applicant of the additional fee.

On the request of the applicant, the text of both the protest and the decision thereon shall be notified to the designated Offices together with the international search re- port.
The applicant shall submit any translation thereof with (b) (c) 230 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 40—continued (d) the furnishing of the translation of the international applica- tion required under Article 22.

The three-member board, special instance or competent higher authority, referred to in paragraph (c), shall not comprise any person who made the decision which is the subject of the protest.
(e) Where the applicant has, under paragraph (c), paid an addi- tional fee under protest, the International Searching Authority may, after a prior review of the justification for the invitation to pay an additional fee, require that the applicant pay a fee for the examination of the protest (“protest fee”).

The protest fee shall be paid within one month from the date of the notifica- tion to the applicant of the result of the review.
If the protest fee is not so paid, the protest shall be considered withdrawn.

The protest fee shall be refunded to the applicant where the three-member board, special instance or higher authority re- ferred to in paragraph (c) finds that the protest was entirely justified.
40.3 Time Limit The time limit provided for in Article 17(3)(a) shall be fixed, in each case, according to the circumstances of the case, by the International Searching Authority; it shall not be shorter than 15 or 30 days, re- spectively, depending on whether the applicant’s address is in the same country as or in a different country from that in which the Inter- national Searching Authority is located, and it shall not be longer than 45 days, from the date of the invitation.
Rule 41—Earlier Search Other Than International Search 41.1 Obligation to Use Results; Refund of Fee If reference has been made in the request, in the form provided for in Rule 4.11, to an international-type search carried out under the condi- tions set out in Article 15(5) or to a search other than an international or international-type search, the International Searching Authority 231 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 41—continued shall, to the extent possible, use the results of the said search in es- tablishing the international search report on the international appli- cation.
The International Searching Authority shall refund the search fee, to the extent and under the conditions provided for in the agree- ment under Article 16(3)(b) or in a communication addressed to and published in the Gazette by the International Bureau, if the inter- national search report could wholly or partly be based on the results of the said search.
Rule 42—Time Limit for International Search 42.1 Time Limit for International Search The time limit for establishing the international search report or the declaration referred to in Article 17(2)(a) shall be three months from the receipt of the search copy by the International Searching Author- ity, or nine months from the priority date, whichever time limit ex- pires later.
Rule 43—The International Search Report 43.1 Identifications The international search report shall identify the International Searching Authority which established it by indicating the name of such Authority, and the international application by indicating the international application number, the name of the applicant, and the international filing date.

43.2 Dates The international search report shall be dated and shall indicate the date on which the international search was actually completed.
It shall also indicate the filing date of any earlier application whose pri- ority is claimed or, if the priority of more than one earlier application is claimed, the filing date of the earliest among them.

232 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 43—continued 43.3 Classification (a) The international search report shall contain the classification of the subject matter at least according to the International Patent Classification.
Such classification shall be effected by the International Searching Authority.

(b) 43.4 Language Every international search report and any declaration made under Article 17(2)(a) shall be in the language in which the international application to which it relates is published.

43.5 Citations (a) The international search report shall contain the citations of the documents considered to be relevant.

The method of identifying any cited document shall be regu- lated by the Administrative Instructions.
Citations of particular relevance shall be specially indicated.

Citations which are not relevant to all the claims shall be cited in relation to the claim or claims to which they are relevant.

If only certain passages of the cited document are relevant or particularly relevant, they shall be identified, for example, by indicating the page, the column, or the lines, where the passage appears.
If the entire document is relevant but some passages are of particular relevance, such passages shall be identified unless such identification is not practicable.

43.6 Fields Searched (a) The international search report shall list the classification iden- If that identification is ef- tification of the fields searched.

fected on the basis of a classification other than the Inter- national Patent Classification, the International Searching Au- thority shall publish the classification used.
If the international search extended to patents, inventors’ cer- tificates, utility certificates, utility models, patents or certifi- (b) (c) (d) (e) (b) 233 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 43—continued cates of addition, inventors’ certificates of addition, utility cer- tificates of addition, or published applications for any of those kinds of protection, of States, periods, or languages, not in- cluded in the minimum documentation as defined in Rule 34, the international search report shall, when practicable, iden- tify the kinds of documents, the States, the periods, and the languages to which it extended.
For the purposes of this para- graph, Article 2(ii) shall not apply.

If the international search was based on, or was extended to, any electronic data base, the international search report may indicate the name of the data base and, where considered use- ful to others and practicable, the search terms used.

(c) 43.7 Remarks Concerning Unity of Invention If the applicant paid additional fees for the international search, the international search report shall so indicate.
Furthermore, where the international search was made on the main invention only or on less than all the inventions (Article 17(3)(a)), the international search re- port shall indicate what parts of the international application were and what parts were not searched.

43.8 Authorised Officer The international search report shall indicate the name of the officer of the International Searching Authority responsible for that report.
43.9 Additional Matter The international search report shall contain no matter other than that specified in Rules 33.1(b) and (c), 43.1 to 43.3, 43.5 to 43.8, and 44.2(a), and the indication referred to in Article 17(2)(b), provided that the Administrative Instructions may permit the inclusion in the international search report of any additional matter specified in the Administrative Instructions.
The international search report shall not contain, and the Administrative Instructions shall not permit the in- clusion of, any expressions of opinion, reasoning, arguments, or ex- planations.

234 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 43—continued 43.10 Form The physical requirements as to the form of the international search report shall be prescribed by the Administrative Instructions.

Rule 44—Transmittal of the International Search Report, Etc.
44.1 Copies of Report or Declaration The International Searching Authority shall, on the same day, trans- mit one copy of the international search report or the declaration re- ferred to in Article 17(2)(a) to the International Bureau and one copy to the applicant.
44.2 Title or Abstract (a) The international search report shall either state that the Inter- national Searching Authority approves the title and the ab- stract as submitted by the applicant or be accompanied by the text of the title and/or abstract as established by the Inter- national Searching Authority under Rules 37 and 38.
[Deleted] [Deleted] 44.3 Copies of Cited Documents (a) The request referred to in Article 20(3) may be presented any time during seven years from the international filing date of the international application to which the international search report relates.

The International Searching Authority may require that the party (applicant or designated Office) presenting the request pay to it the cost of preparing and mailing the copies.
The level of the cost of preparing copies shall be provided for in the agreements referred to in Article 16(3)(b) between the Inter- national Searching Authorities and the International Bureau.

[Deleted] (b) (c) (b) (c) 235 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 44—continued (d) Any International Searching Authority may perform the obli- gations referred to in paragraphs (a) and (b) through another agency responsible to it.
Rule 45—Translation of the International Search Report 45.1 Languages International search reports and declarations referred to in Article 17(2)(a) shall, when not in English, be translated into English.
Rule 46—Amendment of Claims before the International Bureau 46.1 Time Limit The time limit referred to in Article 19 shall be two months from the date of transmittal of the international search report to the Inter- national Bureau and to the applicant by the International Searching Authority or 16 months from the priority date, whichever time limit expires later, provided that any amendment made under Article 19 which is received by the International Bureau after the expiration of the applicable time limit shall be considered to have been received by that Bureau on the last day of that time limit if it reaches it before the technical preparations for international publication have been com- pleted.
46.2 Where to File Amendments made under Article 19 shall be filed directly with the International Bureau.

46.3 Language of Amendments If the international application has been filed in a language other than the language in which it is published, any amendment made under Article 19 shall be in the language of publication.
236 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 46—continued 46.4 Statement (a) The statement referred to in Article 19(1) shall be in the lan- guage in which the international application is published and shall not exceed 500 words if in the English language or if translated into that language.

The statement shall be identified as such by a heading, preferably by using the words “State- ment under Article 19(1)” or their equivalent in the language of the statement.
The statement shall contain no disparaging comments on the international search report or the relevance of citations con- tained in that report.

Reference to citations, relevant to a given claim, contained in the international search report may be made only in connection with an amendment of that claim.
(b) 46.5 Form of Amendments (a) The applicant shall be required to submit a replacement sheet for every sheet of the claims which, on account of an amend- ment or amendments under Article 19, differs from the sheet originally filed.

The letter accompanying the replacement sheets shall draw attention to the differences between the replaced sheets and the replacement sheets.

To the extent that any amendment results in the cancellation of an entire sheet, that amendment shall be communicated in a letter.
(b) and (c) [Deleted] Rule 47—Communication to Designated Offices 47.1 Procedure (a) The communication provided for in Article 20 shall be effected by the International Bureau.

(abis) The International Bureau shall notify each designated Office, at the time of the communication provided for in Article 20, of the fact and date of receipt of the record copy and of the fact and date of receipt of any priority document.
Such noti- fication shall also be sent to any designated Office which has 237 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 47—continued (c) (b) waived the communication provided for in Article 20, unless such Office has also waived the notification of its designation.

Such communication shall be effected promptly after the inter- national publication of the international application and, in any event, by the end of the 19th month after the priority date.
Any amendment received by the International Bureau within the time limit under Rule 46.1 which was not included in the com- munication shall be communicated promptly to the designated Offices by the International Bureau, and the latter shall notify the applicant accordingly.

The International Bureau shall send a notice to the applicant indicating the designated Offices to which the communication has been effected and the date of such communication.
Such notice shall be sent on the same day as the communication.

Each designated Office shall be informed, separately from the communication, about the sending and the date of mailing of the notice.

The notice shall be accepted by all designated Of- fices as conclusive evidence that the communication has duly taken place on the date specified in the notice.
Each designated Office shall, when it so requires, receive the international search reports and the declarations referred to in Article 17(2)(a) also in the translation referred to in Rule 45.1.

(e) Where any designated Office has waived the requirement pro- vided under Article 20, the copies of the documents which otherwise would have been sent to that Office shall, at the re- quest of that Office or the applicant, be sent to the applicant at the time of the notice referred to in paragraph (c).
(d) 47.2 Copies (a) (b) (c) 238 The copies required for communication shall be prepared by the International Bureau.

They shall be on sheets of A4 size.

Except to the extent that any designated Office notifies the International Bureau otherwise, copies of the pamphlet under Rule 48 may be used for the purposes of the communication of the international application under Article 20.
Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 47—continued 47.3 Languages The international application communicated under Article 20 shall be in the language in which it is published provided that if that language is different from the language in which it was filed it shall, on the request of the designated Office, be communicated in either or both of these languages.
47.4 Express Request under Article 23(2) Where the applicant makes an express request to a designated Office under Article 23(2) before the communication provided for in Art- icle 20 has taken place, the International Bureau shall, upon request of the applicant or the designated Office, promptly effect that com- munication to that Office.

Rule 48—International Publication 48.1 Form (a) (b) The international application shall be published in the form of a pamphlet.
The particulars regarding the form of the pamphlet and the method of reproduction shall be governed by the Administra- tive Instructions.
48.2 Contents (a) The pamphlet shall contain: (i) (ii) (iii) (iv) (v) a standardized front page, the description, the claims, the drawings, if any, subject to paragraph (g), the international search report or the declaration under Article 17(2)(a); the publica- tion of the international search report in the pamphlet shall, however, not be required to include the part of the international search report which contains only mat- ter referred to in Rule 43 already appearing on the front page of the pamphlet, 239 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 48—continued (vi) any statement filed under Article 19(1), unless the Inter- national Bureau finds that the statement does not com- ply with the provisions of Rule 46.4, (vii) any request for rectification referred to in the third sen- tence of Rule 91.1(f), (viii) any indications in relation to a deposited microorganism furnished under Rule 13bis separately from the descrip- tion, together with an indication of the date on which the International Bureau received such indications.
Subject to paragraph (c), the front page shall include: (i) data taken from the request sheet and such other data as are prescribed by the Administrative Instructions, a figure or figures where the international application contains drawings, unless Rule 8.2(b) applies, the abstract; if the abstract is both in English and in another language, the English text shall appear first.
(ii) (iii) (b) (e) (d) (c) Where a declaration under Article 17(2)(a) has issued, the front page shall conspicuously refer to that fact and need in- clude neither a drawing nor an abstract.

The figure or figures referred to in paragraph (b)(ii) shall be selected as provided in Rule 8.2.

Reproduction of such figure or figures on the front page may be in a reduced form.
If there is not enough room on the front page for the totality of the abstract referred to in paragraph (b)(iii), the said abstract shall appear on the back of the front page.

The same shall apply to the translation of the abstract when such translation is required to be published under Rule 48.3(c).
If the claims have been amended under Article 19, the publi- cation shall contain either the full text of the claims both as filed and as amended or the full text of the claims as filed and specify the amendments.

Any statement referred to in Article 19(1) shall be included as well, unless the International Bureau finds that the statement does not comply with the provisions of Rule 46.4.

The date of receipt of the amended claims by the International Bureau shall be indicated.
If, at the time of the completion of the technical preparations for international publication, the international search report is (g) (f) 240 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 48—continued not yet available (for example, because of publication on the request of the applicant as provided in Articles 21(2)(b) and 64(3)(c)(i), the pamphlet shall contain, in place of the inter- national search report, an indication to the effect that that re- port was not available and that either the pamphlet (then also including the international search report) will be republished or the international search report (when it becomes available) will be separately published.
If, at the time of the completion of the technical preparations for international publication, the time limit for amending the claims under Article 19 has not expired, the pamphlet shall re- fer to that fact and indicate that, should the claims be amended under Article 19, then, promptly after such amendments, either the pamphlet (containing the claims as amended) will be re- published or a statement reflecting all the amendments will be published.
In the latter case, at least the front page and the claims shall be republished and, if a statement under Article 19(1) has been filed, that statement shall be published as well, unless the International Bureau finds that the statement does not comply with the provisions of Rule 46.4.

The Administrative Instructions shall determine the cases in which the various alternatives referred to in paragraphs (g) and (h) shall apply.
Such determination shall depend on the volume and complexity of the amendments and/or the volume of the international application and the cost factors.

(h) (i) 48.3 Languages (a) (b) If the international application is filed in English, French, Ger- man, Japanese, Russian or Spanish, that application shall be published in the language in which it was filed.
If the international application is filed in a language other than English, French, German, Japanese, Russian or Spanish, that application shall be published in English translation.
The translation shall be prepared under the responsibility of the International Searching Authority, which shall be obliged to have it ready in time to permit international publication 241 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 48—continued by the prescribed date, or, where Article 64(3)(b) applies, to permit the communication under Article 20 by the end of the 19th month after the priority date.
Notwithstanding Rule 16.1(a), the International Searching Authority may charge a fee for the translation to the applicant.

The International Searching Authority shall give the applicant an opportunity to comment on the draft translation.

The International Searching Authority shall fix a time limit reasonable under the circum- stances of the case for such comments.
If there is no time to take the comments of the applicant into account before the translation is communicated or if there is a difference of opinion between the applicant and the said Authority as to the correct translation, the applicant may send a copy of his comments, or what remains of them, to the International Bureau and each designated Office to which the translation was communicated.
The International Bureau shall publish the essence of the comments together with the translation of the International Searching Authority or subsequently to the publication of such translation.
If the international application is published in a language other than English, the international search report to the extent that it is published under Rule 48.2(a)(v), or the declaration referred to in Article 17(2)(a), the title of the invention, the abstract and any text matter pertaining to the figure or figures accom- panying the abstract shall be published both in that language and in English.

The translations shall be prepared under the responsibility of the International Bureau.
(c) 48.4 Earlier Publication on the Applicant’s Request (a) Where the applicant asks for publication under Articles 21(2)(b) and 64(3)(c)(i) and the international search report, or the declaration referred to in Article 17(2)(a), is not yet available for publication together with the international ap- the International Bureau shall collect a special plication, publication fee whose amount shall be fixed in the Adminis- trative Instructions.
242 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 48—continued (b) Publication under Articles 21(2)(b) and 64(3)(c)(i) shall be ef- fected by the International Bureau promptly after the applicant has asked for it and, where a special fee is due under paragraph (a), after receipt of such fee.
48.5 Notification of National Publication Where the publication of the international application by the Inter- national Bureau is governed by Article 64(3)(c)(ii), the national Of- fice concerned shall, promptly after effecting the national publication referred to in the said provision, notify the International Bureau of the fact of such national publication.
48.6 Announcing of Certain Facts (a) If any notification under Rule 29.1(a)(ii) reaches the Inter- national Bureau at a time later than that at which it was able to prevent the international publication of the international ap- plication, the International Bureau shall promptly publish a notice in the Gazette reproducing the essence of such notifi- cation.
[Deleted] If the international application, the designation of any desig- nated State or the priority claim is withdrawn under Rule 90bis after the technical preparations for international publication have been completed, notice of the withdrawal shall be pub- lished in the Gazette.
(b) (c) Rule 49—Copy, Translation and Fee under Article 22 49.1 Notification (a) Any Contracting State requiring the furnishing of a translation or the payment of a national fee, or both, under Article 22, shall notify the International Bureau of: (i) the languages from which and the language into which it requires translation, the amount of the national fee.
(ii) 243 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 49—continued (abis) Any Contracting State not requiring the furnishing, under Art- icle 22, by the applicant of a copy of the international applica- tion (even though the communication of the copy of the inter- national application by the International Bureau under Rule 47 has not taken place by the expiration of the time limit ap- plicable under Article 22) shall notify the International Bureau accordingly.
(ater) Any Contracting State which, pursuant to Article 24(2), main- tains, if it is a designated State, the effect provided for in Art- icle 11(3) even though a copy of the international application is not furnished by the applicant by the expiration of the time limit applicable under Article 22 shall notify the International Bureau accordingly.
(c) (b) Any notification received by the International Bureau under paragraphs (a), (abis) or (ater) shall be promptly published by the International Bureau in the Gazette.

If the requirements under paragraph (a) change later, such changes shall be notified by the Contracting State to the Inter- national Bureau and that Bureau shall promptly publish the notification in the Gazette.
If the change means that transla- tion is required into a language which, before the change, was not required, such change shall be effective only with respect to international applications filed later than two months after the publication of the notification in the Gazette.

Otherwise, the effective date of any change shall be determined by the Contracting State.

49.2 Languages The language into which translation may be required must be an of- ficial language of the designated Office.
If there are several of such languages, no translation may be required if the international appli- cation is in one of them.

If there are several official languages and a translation must be furnished, the applicant may choose any of those languages.
Notwithstanding the foregoing provisions of this para- graph, if there are several official languages but the national law pre- 244 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 49—continued scribes the use of one such language for foreigners, a translation into that language may be required.
49.3 Statements under Article 19; Indications under Rule 13bis.4 For the purposes of Article 22 and the present Rule, any statement made under Article 19(1) and any indication furnished under Rule 13bis.4 shall, subject to Rule 49.5(c) and (h), be considered part of the international application.

49.4 Use of National Form No applicant shall be required to use a national form when perform- ing the acts referred to in Article 22.
49.5 Contents of and Physical Requirements for the (a) Translation For the purposes of Article 22, the translation of the inter- national application shall contain the description, the claims, any text matter of the drawings and the abstract.
If required by the designated Office, the translation shall also, subject to paragraphs (b), (cbis) and (e), (i) (ii) contain the request, if the claims have been amended under Article 19, con- tain both the claims as filed and the claims as amended, and be accompanied by a copy of the drawings.

(b) Any designated Office requiring the furnishing of a transla- tion of the request shall furnish copies of the request form in the language of the translation free of charge to the applicants.
The form and contents of the request form in the language of the translation shall not be different from those of the request under Rules 3 and 4; in particular, the request form in the lan- guage of the translation shall not ask for any information that is not in the request as filed.

The use of the request form in the language of the translation shall be optional.
(iii) 245 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 49—continued (c) Where the applicant did not furnish a translation of any state- ment made under Article 19(1), the designated Office may dis- regard such statement.
(cbis) Where the applicant furnishes, to a designated Office which requires under paragraph (a)(ii) a translation of both the claims as filed and the claims as amended, only one of the required two translations, the designated Office may disregard the claims of which a translation has not been furnished or invite the applicant to furnish the missing translation within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation.
Where the designated Office chooses to invite the applicant to furnish the missing translation and the latter is not furnished within the time limit fixed in the invitation, the designated Office may disregard those claims of which a translation has not been furnished or consider the international application withdrawn.
If any drawing contains text matter, the translation of that text matter shall be furnished either in the form of a copy of the original drawing with the translation pasted on the original text matter or in the form of a drawing executed anew.
Any designated Office requiring under paragraph (a) the fur- nishing of a copy of the drawings shall, where the applicant failed to furnish such copy within the time limit applicable under Article 22, invite the applicant to furnish such copy within a time limit which shall be reasonable under the cir- cumstances and shall be fixed in the invitation.

The expression “Fig.” does not require translation into any language.
(d) (e) (f) (g) Where any copy of the drawings or any drawing executed anew which has been furnished under paragraph (d) or (e) does not comply with the physical requirements referred to in Rule 11, the designated Office may invite the applicant to correct the defect within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation.
(h) Where the applicant did not furnish a translation of the abstract or of any indication furnished under Rule 13bis.4, the desig- nated Office shall invite the applicant to furnish such transla- 246 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 49—continued (i) (j) tion, if it deems it to be necessary, within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation.
Information on any requirement and practice of designated Of- fices under the second sentence of paragraph (a) shall be pub- lished by the International Bureau in the Gazette.

No designated Office shall require that the translation of the international application comply with physical requirements other than those prescribed for the international application as filed.
(l) (k) Where a title has been established by the International Search- ing Authority pursuant to Rule 37.2, the translation shall con- tain the title as established by that Authority.
If, on July 12, 1991, paragraph (cbis) or paragraph (k) is not compatible with the national law applied by the designated Of- fice, the paragraph concerned shall not apply to that designated Office for as long as it continues not to be compatible with that law, provided that the said Office informs the International Bu- reau accordingly by December 31, 1991.

The information re- ceived shall be promptly published by the International Bureau in the Gazette.
Rule 50—Faculty under Article 22(3) 50.1 Exercise of Faculty (a) Any Contracting State allowing a time limit expiring later than the time limits provided for in Article 22(1) or (2) shall notify the International Bureau of the time limits so fixed.
(c) (b) Any notification received by the International Bureau under paragraph (a) shall be promptly published by the International Bureau in the Gazette Notifications concerning the shortening of the previously fixed time limit shall be effective in relation to international applica- tions filed after the expiration of three months computed from the date on which the notification was published by the Inter- national Bureau.
247 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 50—continued (d) Notifications concerning the lengthening of the previously fixed time limit shall become effective upon publication by the International Bureau in the Gazette in respect of inter- national applications pending at the time or filed after the date of such publication, or, if the Contracting State effecting the notification fixes some later date, as from the latter date.
Rule 51—Review by Designated Offices 51.1 Time Limit for Presenting the Request to Send Copies The time limit referred to in Article 25(1)(c) shall be two months computed from the date of the notification sent to the applicant under Rules 20.7(i), 24.2(c), 29.1(a)(ii), or 29.1(b).
51.2 Copy of the Notice Where the applicant, after having received a negative determination under Article 11(1), requests the International Bureau, under Article 25(1), to send copies of the file of the purported international appli- cation to any of the named Offices he has attempted to designate, he shall attach to his request a copy of the notice referred to in Rule 20.7(i).
51.3 Time Limit for Paying National Fee and Furnishing Translation The time limit referred to in Article 25(2)(a) shall expire at the same time as the time limit prescribed in Rule 51.1.
Rule 51bis—Certain National Requirements Allowed under Article 27(1), (2), (6) and (7) 51bis.1 Certain National Requirements Allowed (a) The documents referred to in Article 27(2)(ii), or the evidence referred to in Article 27(6), which the applicant may be re- quired to furnish under the national law applicable by the des- ignated Office include, in particular: (i) any document relating to the identity of the inventor, 248 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 51bis—continued (ii) (iii) (iv) (v) (vi) any document relating to any transfer or assignment of the right to the application, any document containing an oath or declaration by the inventor alleging his inventorship, any document containing a declaration by the applicant designating the inventor or alleging the right to the ap- plication, any document containing any proof of the right of the applicant to claim priority where he is different from the applicant having filed the earlier application the priority of which is claimed, any evidence concerning non-prejudicial disclosures or exceptions to lack of novelty, such as disclosures result- ing from abuse, disclosures at certain exhibitions and disclosures by the applicant during a certain period of time.
(b) (c) (d) The national law applicable by the designated Office may, in accordance with Article 27(7), require that (i) the applicant be represented by an agent having the right to represent applicants before that Office and/or have an address in the designated State for the purpose of receiving notifications, the agent, if any, representing the applicant be duly ap- pointed by the applicant.
(ii) The national law applicable by the designated Office may, in accordance with Article 27(1), require that the international application, the translation thereof or any document relating thereto be furnished in more than one copy.
The national law applicable by the designated Office may, in accordance with Article 27(2)(ii), require that the transla- tion of the international application furnished by the applicant under Article 22 be verified by the applicant or the person hav- ing translated the international application in a statement to the effect that, to the best of his knowledge, the translation is com- plete and faithful.
249 Patents Act 1953 Reprinted as at 1 January 2011 Part B—continued Rule 51bis—continued 51bis.2 Opportunity to Comply with National Requirements (a) Where any of the requirements referred to in Rule 51bis.1, or any other requirement of the national law applicable by the designated Office which that Office may apply under Article 27(1), (2), (6) or (7), is not already fulfilled during the same period within which the requirements under Article 22 must be complied with, the applicant shall have an opportunity to comply with the requirement after the expiration of that period.
The national law applicable by the designated Office may, in accordance with Article 27(2)(ii), require that the applicant, upon invitation by the designated Office, furnish a certifica- tion of the translation of the international application by a public authority or a sworn translator, if the designated Of- fice deems such certification to be necessary under the circum- stances, within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation.
(b) Rule 52—Amendment of the Claims, the Description, and the Drawings, before Designated Offices 52.1 Time Limit (a) In any designated State in which processing or examination starts without special request, the applicant shall, if he so wishes, exercise the right under Article 28 within one month from the fulfillment of the requirements under Article 22, provided that, if the communication under Rule 47.1 has not been effected by the expiration of the time limit applicable under Article 22, he shall exercise the said right not later than four months after such expiration date.
In either case, the applicant may exercise the said right at any other time if so permitted by the national law of the said State.
In any designated State in which the national law provides that examination starts only on special request, the time limit within or the time at which the applicant may exercise the right under Article 28 shall be the same as that provided by the na- tional law for the filing of amendments in the case of the exam- (b) 250 Reprinted as at 1 January 2011 Patents Act 1953 Part B—continued Rule 52—continued ination, on special request, of national applications, provided that such time limit shall not expire prior to, or such time shall not come before, the expiration of the time limit applicable under paragraph (a).
Part C Rules Concerning Chapter II of the Treaty Rule 53—The Demand 53.1 Form (a) The demand shall be made on a printed form or be presented as a computer print-out.

The particulars of the printed form and of a demand presented as a computer print-out shall be prescribed by the Administrative Instructions.

Copies of printed demand forms shall be furnished free of charge by the receiving Office or by the International Prelim- inary Examining Authority.
53.2 Contents (a) The demand shall contain: (i) (ii) a petition, indications concerning the applicant and the agent if there is an agent, indications concerning the international application to which it relates, election of States, (iv) (v) where applicable, a statement concerning amendments.

The demand shall be signed.
(iii) (b) (b) 53.3 The Petition The petition shall be to the following effect and shall preferably be worded as follows: “Demand under Article 31 of the Patent Cooper- ation Treaty: The undersigned requests that the international applica- tion specified below be the subject of international preliminary exam- ination according to the Patent Cooperation Treaty.” 251 Patents Act 1953 Reprinted as at 1 January 2011 Part C—continued Rule 53—continued 53.4 The Applicant As to the indications concerning the applicant, Rules 4.4 and 4.16 shall apply, and Rule 4.5 shall apply mutatis mutandis.
Only appli- cants for the elected States are required to be indicated in the demand.

53.5 Agent or Common Representative If an agent or common representative is designated, the demand shall so indicate.

Rules 4.4 and 4.16 shall apply, and Rule 4.7 shall apply mutatis mutandis.
53.6 Identification of the International Application The international application shall be identified by the name and ad- dress of the applicant, the title of the invention, the international fil- ing date (if known to the applicant) and the international application number or, where such number is not known to the applicant, the name of the receiving Office with which the international applica- tion was filed.
53.7 Election of States (a) The demand shall indicate at least one Contracting State from among those States which are designated and are bound by Chapter II of the Treaty (“eligible States”), as an elected State.
Election of Contracting States in the demand shall be made: by an indication that all eligible States are elected, or, (i) in the case of States which have been designated for the (ii) purpose of obtaining national patents, by an indication of those eligible States that are elected, and, in the case of States which have been designated for the purpose of obtaining a regional patent, by an indication of the regional patent concerned together with either an indi- cation that all eligible States party to the regional patent treaty concerned are elected or an indication of those among the said States that are elected.
(b) 252 Reprinted as at 1 January 2011 Patents Act 1953 Part C—continued Rule 53—continued 53.8 Signature (a) Subject to paragraph (b), the demand shall be signed by the applicant or, if there is more than one applicant, by all appli- cants making the demand.
(b) Where two or more applicants file a demand which elects a State whose national law requires that national applications be filed by the inventor and where an applicant for that elected State who is an inventor refused to sign the demand or could not be found or reached after diligent effort, the demand need not be signed by that applicant (“the applicant concerned”) if it is signed by at least one applicant and (i) a statement is furnished explaining, to the satisfaction of the International Preliminary Examining Authority, the lack of signature of the applicant concerned, or the applicant concerned did not sign the request but the requirements of Rule 4.15(b) were complied with.
(ii) 53.9 Statement Concerning Amendments (a) If amendments under Article 19 have been made, the state- ment concerning amendments shall indicate whether, for the purposes of the international preliminary examination, the ap- plicant wishes those amendments (i) to be taken into account, in which case a copy of the amendments shall preferably be submitted with the de- mand, or to be considered as reversed by an amendment under Article 34.
(ii) (b) (c) If no amendments under Article 19 have been made and the time limit for filing such amendments has not expired, the statement may indicate that the applicant wishes the start of the international preliminary examination to be postponed in accordance with Rule 69.1(d).

If any amendments under Article 34 are submitted with the demand, the statement shall so indicate.
253 Patents Act 1953 Part C—continued Reprinted as at 1 January 2011 Rule 54—The Applicant Entitled to Make a Demand 54.1 Residence and Nationality The residence or nationality of the applicant shall, for the purposes of Article 31(2), be determined according to Rules 18.1 and 18.2.
54.2 Two or More Applicants If there are two or more applicants, the right to make a demand under Article 31(2) shall exist if at least one of the applicants making the demand is (i) a resident or national of a Contracting State bound by Chapter II and the international application has been filed with a re- ceiving Office of or acting for a Contracting State bound by Chapter II, or a person entitled to make a demand under Article 31(2)(b) and the international application has been filed as provided in the decision of the Assembly.
(ii) 54.3 [Deleted] 54.4 Applicant Not Entitled to Make a Demand (a) If the applicant does not have the right to make a demand or, in the case of two or more applicants, if none of them has the right to make a demand under Rule 54.2, the demand shall be considered not to have been submitted.
[Deleted] (b) Rule 55—Languages (International Preliminary Examination) 55.1 The Demand The demand shall be in the language of the international application or, if the international application has been filed in a language other than the language in which it is published, in the language of publi- cation.
254 Reprinted as at 1 January 2011 Patents Act 1953 Part C—continued Rule 56—Later Elections 56.1 Elections Submitted Later Than the Demand (a) The election of States subsequent to the submission of the de- mand (“later election”) shall be effected by a notice submit- ted to the International Bureau.

The notice shall identify the international application and the demand, and shall include an indication as referred to in Rule 53.7(b)(ii).
Subject to paragraph (c), the notice referred to in paragraph (a) shall be signed by the applicant for the elected States con- cerned or, if there is more than one applicant for those States, by all of them.
(b) (c) Where two or more applicants file a notice effecting a later election of a State whose national law requires that national applications be filed by the inventor and where an applicant for that elected State who is an inventor refused to sign the notice or could not be found or reached after diligent effort, the notice need not be signed by that applicant (“the applicant concerned”) if it is signed by at least one applicant and (i) a statement is furnished explaining, to the satisfaction of the International Bureau, the lack of signature of the applicant concerned, or the applicant concerned did not sign the request but the requirements of Rule 4.15(b) were complied with, or did not sign the demand but the requirements of Rule 53.8(b) were complied with.
(ii) (d) An applicant for a State elected by a later election need not (e) (f) have been indicated as an applicant in the demand.
If a notice effecting a later election is submitted after the expir- ation of 19 months from the priority date, the International Bu- reau shall notify the applicant that the election does not have the effect provided for under Article 39(1)(a) and that the acts referred to in Article 22 must be performed in respect of the elected Office concerned within the time limit applicable under Article 22.
If, notwithstanding paragraph (a), a notice effecting a later election is submitted by the applicant to the International Pre- liminary Examining Authority rather than the International 255 Patents Act 1953 Reprinted as at 1 January 2011 Part C—continued Rule 56—continued Bureau, that Authority shall mark the date of receipt on the notice and transmit it promptly to the International Bureau.

The notice shall be considered to have been submitted to the International Bureau on the date marked.
56.2 Identification of the International Application The international application shall be identified as provided in Rule 53.6.

56.3 Identification of the Demand The demand shall be identified by the date on which it was submitted and by the name of the International Preliminary Examining Author- ity to which it was submitted.
56.4 Form of Later Elections The notice effecting the later election shall preferably be worded as follows: “In relation to the international application filed with … on … under No.

… by … (applicant) (and the demand for inter- national preliminary examination submitted on … to …), the under- signed elects the following additional State(s) under Article 31 of the Patent Cooperation Treaty: …” 56.5 Language of Later Elections The later election shall be in the language of the demand.
Rule 57—The Handling Fee 57.1 Requirement to Pay (a) Each demand for international preliminary examination shall be subject to the payment of a fee for the benefit of the Inter- national Bureau (“handling fee”) to be collected by the Inter- national Preliminary Examining Authority to which the de- mand is submitted.
[Deleted] (b) 256 Reprinted as at 1 January 2011 Patents Act 1953 Part C—continued Rule 57—continued 57.2 Amount (a) (b) (c) The amount of the handling fee is as set out in the Schedule of Fees.
[Deleted] The amount of the handling fee shall be established, for each International Preliminary Examining Authority which, under Rule 57.3(c), prescribes the payment of the handling fee in a currency or currencies other than Swiss currency, by the Director General after consultation with that Authority and in the currency or currencies prescribed by that Authority (“pre- scribed currency”).
The amount in each prescribed currency shall be the equivalent, in round figures, of the amount of the handling fee in Swiss currency set out in the Schedule of Fees.

The amounts in the prescribed currencies shall be published in the Gazette.

(d) Where the amount of the handling fee set out in the Schedule of Fees is changed, the corresponding amounts in the prescribed currencies shall be applied from the same date as the amount set out in the amended Schedule of Fees.
(e) Where the exchange rate between Swiss currency and any pre- scribed currency becomes different from the exchange rate last applied, the Director General shall establish the new amount in the prescribed currency according to directives given by the Assembly.
The newly established amount shall become ap- plicable two months after its publication in the Gazette, pro- vided that the interested International Preliminary Examin- ing Authority and the Director General may agree on a date falling during the said two-month period in which case the said amount shall become applicable for that Authority from that date.

57.3 Time and Mode of Payment (a) The handling fee shall be due at the time the demand is sub- mitted.
[Deleted] (b) 257 Patents Act 1953 Reprinted as at 1 January 2011 Part C—continued Rule 57—continued (c) The handling fee shall be payable in the currency or currencies prescribed by the International Preliminary Examining Au- thority to which the demand is submitted, it being understood that, when transferred by that Authority to the International Bureau, it shall be freely convertible into Swiss currency.
57.4 Failure to Pay (a) Where the handling fee is not paid as required, the Inter- national Preliminary Examining Authority shall invite the applicant to pay the fee within one month from the date of the invitation.

If the applicant complies with the invitation within the one- month time limit, the handling fee shall be considered as if it had been paid on the due date.
If the applicant does not comply with the invitation within the prescribed time limit, the demand shall be considered as if it had not been submitted.

(b) (c) 57.5 [Deleted] 57.6 Refund The International Preliminary Examining Authority shall refund the handling fee to the applicant: (i) if the demand is withdrawn before the demand has been sent by that Authority to the International Bureau, or if the demand is considered, under Rule 54.4(a), not to have been submitted.
(ii) Rule 58—The Preliminary Examination Fee 58.1 Right to Ask for a Fee (a) Each International Preliminary Examining Authority may require that the applicant pay a fee (“preliminary examination fee”) for its own benefit for carrying out the international preliminary examination and for performing all other tasks 258 Reprinted as at 1 January 2011 Patents Act 1953 Part C—continued Rule 58—continued (b) (c) entrusted to International Preliminary Examining Authorities under the Treaty and these Regulations.
The amount and the due date of the preliminary examination fee, if any, shall be fixed by the International Preliminary Examining Authority, provided that the said due date shall not be earlier than the due date of the handling fee.

The preliminary examination fee shall be payable directly to the International Preliminary Examining Authority.
Where that Authority is a national Office, it shall be payable in the currency prescribed by that Office, and where the Authority is an intergovernmental organization, it shall be payable in the currency of the State in which the intergovernmental organ- ization is located or in any other currency which is freely con- vertible into the currency of the said State.
58.2 Failure to Pay (a) Where the preliminary examination fee fixed by the Inter- national Preliminary Examining Authority under Rule 58.1(b) is not paid as required under that Rule, the International Preliminary Examining Authority shall invite the applicant to pay the fee or the missing part thereof within one month from the date of the invitation.
If the applicant complies with the invitation within the pre- scribed time limit, the preliminary examination fee will be considered as if it had been paid on the due date.

If the applicant does not comply with the invitation within the prescribed time limit, the demand shall be considered as if it had not been submitted.
(b) (c) 58.3 Refund The International Preliminary Examining Authorities shall inform the International Bureau of the extent, if any, to which, and the con- ditions, if any, under which, they will refund any amount paid as a preliminary examination fee where the demand is considered as if it had not been submitted, and the International Bureau shall promptly publish such information.
259 Patents Act 1953 Part C—continued Reprinted as at 1 January 2011 Rule 59—The Competent International Preliminary Examining Authority 59.1 Demands under Article 31(2)(a) For demands made under Article 31(2)(a), each receiving Office of or acting for a Contracting State bound by the provisions of Chapter II shall, in accordance with the terms of the applicable agreement re- ferred to in Article 32(2) and (3), inform the International Bureau which International Preliminary Examining Authority is or which International Preliminary Examining Authorities are competent for the international preliminary examination of international applica- tions filed with it.
The International Bureau shall promptly publish such information.

Where several International Preliminary Examin- ing Authorities are competent, the provisions of Rule 35.2 shall apply mutatis mutandis.
59.2 Demands under Article 31(2)(b) As to demands made under Article 31(2)(b), the Assembly, in speci- fying the International Preliminary Examining Authority competent for international applications filed with a national Office which is an International Preliminary Examining Authority, shall give preference to that Authority; if the national Office is not an International Pre- liminary Examining Authority, the Assembly shall give preference to the International Preliminary Examining Authority recommended by that Office.
Rule 60—Certain Defects in the Demand or Elections 60.1 Defects in the Demand (a) If the demand does not comply with the requirements speci- fied in Rules 53.1, 53.2(a)(i) to (iv), 53.2(b), 53.3 to 53.8 and 55, the International Preliminary Examining Authority shall invite the applicant to correct the defects within a time limit which shall be reasonable under the circumstances.

That time limit shall not be less than one month from the date of the in- vitation.
It may be extended by the International Preliminary Examining Authority at any time before a decision is taken.
260 Reprinted as at 1 January 2011 Patents Act 1953 Part C—continued Rule 60—continued (b) (c) If the applicant complies with the invitation within the time limit under paragraph (a), the demand shall be considered as if it had been received on the actual filing date, provided that the demand as submitted contained at least one election and permitted the international application to be identified; other- wise, the demand shall be considered as if it had been received on the date on which the International Preliminary Examining Authority receives the correction.
Subject to paragraph (d), if the applicant does not comply with the invitation within the time limit under paragraph (a), the demand shall be considered as if it had not been submitted.

(f) (e) (d) Where, after the expiration of the time limit under paragraph (a), a signature required under Rule 53.8 or a prescribed indi- cation is lacking in respect of an applicant for a certain elected State, the election of that State shall be considered as if it had not been made.
If the defect is noticed by the International Bureau, it shall bring the defect to the attention of the International Prelim- inary Examining Authority, which shall then proceed as pro- vided in paragraphs (a) to (d).

If the demand does not contain a statement concerning amend- ments, the International Preliminary Examining Authority shall proceed as provided for in Rules 66.1 and 69.1(a) or (b).
(g) Where the statement concerning amendments contains an in- dication that amendments under Article 34 are submitted with the demand (Rule 53.9(c)) but no such amendments are, in fact, submitted, the International Preliminary Examining Au- thority shall invite the applicant to submit the amendments within a time limit fixed in the invitation and shall proceed as provided for in Rule 69.1(e).
60.2 Defects in Later Elections (a) If the notice effecting a later election does not comply with the requirements of Rule 56, the International Bureau shall invite the applicant to correct the defects within a time limit which shall be reasonable under the circumstances.

That time limit 261 Patents Act 1953 Reprinted as at 1 January 2011 Part C—continued Rule 60—continued (b) shall not be less than one month from the date of the invitation.
It may be extended by the International Bureau at any time before a decision is taken.
If the applicant complies with the invitation within the time limit under paragraph (a), the notice shall be considered as if it had been received on the actual filing date, provided that the notice as submitted contained at least one election and permit- ted the international application to be identified; otherwise, the notice shall be considered as if it had been received on the date on which the International Bureau receives the correction.
Subject to paragraph (d), if the applicant does not comply with the invitation within the time limit under paragraph (a), the notice shall be considered as if it had not been submitted.

(d) Where, in respect of an applicant for a certain elected State, the signature required under Rule 56.1(b) and (c) or the name or address is lacking after the expiration of the time limit under paragraph (a), the later election of that State shall be consid- ered as if it had not been made.
(c) Rule 61—Notification of the Demand and Elections 61.1 Notification to the International Bureau and the Applicant The International Preliminary Examining Authority shall in- (a) dicate on the demand the date of receipt or, where applicable, the date referred to in Rule 60.1(b).

The International Prelim- inary Examining Authority shall promptly send the demand to the International Bureau, and shall prepare and keep a copy in its file.
The International Preliminary Examining Authority shall promptly inform the applicant in writing of the date of receipt of the demand.

Where the demand has been considered under Rules 54.4(a), 57.4(c), 58.2(c), or 60.1(c) as if it had not been submitted or where an election has been considered under Rule 60.1(d) as if it had not been made, the International Preliminary Examining Authority shall notify the applicant and the International Bureau accordingly.
(b) 262 Reprinted as at 1 January 2011 Patents Act 1953 Part C—continued Rule 61—continued (c) The International Bureau shall promptly notify the applicant of the receipt, and the date of receipt, of any notice effecting a later election.

That date shall be the actual date of receipt by the International Bureau or, where applicable, the date referred to in Rule 56.1(f) or 60.2(b).
Where the notice has been con- sidered under Rule 60.2(c) as if it had not been submitted or where a later election has been considered under Rule 60.2(d) as if it had not been made, the International Bureau shall no- tify the applicant accordingly.

61.2 Notification to the Elected Offices (a) (b) (c) The notification provided for in Article 31(7) shall be effected by the International Bureau.
The notification shall indicate the number and filing date of the international application, the name of the applicant, the filing date of the application whose priority is claimed (where prior- ity is claimed), the date of receipt by the International Prelim- inary Examining Authority of the demand, and—in the case of a later election—the date of receipt of the notice effecting the later election.
The latter date shall be the actual date of receipt by the International Bureau or, where applicable, the date re- ferred to in Rule 56.1(f) or 60.2(b).

The notification shall be sent to the elected Office together with the communication provided for in Article 20.

Elections effected after such communication shall be notified promptly after they have been made.
(d) Where the applicant makes an express request to an elected Office under Article 40(2) before the communication provided for in Article 20 has taken place, the International Bureau shall, upon request of the applicant or the elected Office, promptly effect that communication to that Office.

61.3 Information for the Applicant The International Bureau shall inform the applicant in writing of the notification referred to in Rule 61.2 and of the elected Offices notified under Article 31(7).
263 Patents Act 1953 Reprinted as at 1 January 2011 Part C—continued Rule 61—continued 61.4 Publication in the Gazette Where a demand has been filed prior to the expiration of the 19th month from the priority date, the International Bureau shall publish a notice of that fact in the Gazette promptly after the filing of the de- mand, but not before the international publication of the international application.

The notice shall indicate all designated States bound by Chapter II which have not been elected.
Rule 62—Copy of Amendments Under Article 19 for the International Preliminary Examining Authority 62.1 Amendments Made before the Demand is Filed Upon receipt of a demand from the International Preliminary Exam- ining Authority, the International Bureau shall promptly transmit a copy of any amendments under Article 19 to that Authority, unless that Authority has indicated that it has already received such a copy.
62.2 Amendments Made after the Demand is Filed (a) If, at the time of filing any amendments under Article 19, a de- mand has already been submitted, the applicant shall prefer- ably, at the same time as he files the amendments with the International Bureau, also file a copy of such amendments with the International Preliminary Examining Authority.

In any case, the International Bureau shall promptly transmit a copy of such amendments to that Authority.
[Deleted] (b) 264 Reprinted as at 1 January 2011 Patents Act 1953 Part C—continued Rule 63—Minimum Requirements for International Preliminary Examining Authorities 63.1 Definition of Minimum Requirements The minimum requirements referred to in Article 32(3) shall be the following: (i) the national Office or intergovernmental organization must have at least 100 full-time employees with sufficient technical qualifications to carry out examinations; that Office or organization must have at its ready disposal at least the minimum documentation referred to in Rule 34, prop- erly arranged for examination purposes; that Office or organization must have a staff which is capable of examining in the required technical fields and which has the language facilities to understand at least those languages in which the minimum documentation referred to in Rule 34 is written or is translated.
(ii) (iii) Rule 64—Prior Art for International Preliminary Examination 64.1 Prior Art (a) (b) For the purposes of Article 33(2) and (3), everything made available to the public anywhere in the world by means of written disclosure (including drawings and other illustrations) shall be considered prior art provided that such making avail- able occurred prior to the relevant date.
For the purposes of paragraph (a), the relevant date will be: (i) subject to item (ii), the international filing date of the international application under international prelimin- ary examination; (ii) where the international application under international preliminary examination validly claims the priority of an earlier application, the filing date of such earlier ap- plication.
265 Patents Act 1953 Reprinted as at 1 January 2011 Part C—continued Rule 64—continued 64.2 Non-Written Disclosures In cases where the making available to the public occurred by means of an oral disclosure, use, exhibition or other non-written means (“non-written disclosure”) before the relevant date as defined in Rule 64.1(b) and the date of such non-written disclosure is indicated in a written disclosure which has been made available to the public on a date which is the same as, or later than, the relevant date, the non-written disclosure shall not be considered part of the prior art for the purposes of Article 33(2) and (3).
Nevertheless, the inter- national preliminary examination report shall call attention to such non-written disclosure in the manner provided for in Rule 70.9.
64.3 Certain Published Documents In cases where any application or any patent which would constitute prior art for the purposes of Article 33(2) and (3) had it been pub- lished prior to the relevant date referred to in Rule 64.1 was published on a date which is the same as, or later than, the relevant date but was filed earlier than the relevant date or claimed the priority of an earlier application which had been filed prior to the relevant date, such pub- lished application or patent shall not be considered part of the prior art for the purposes of Article 33(2) and (3).
Nevertheless, the inter- national preliminary examination report shall call attention to such application or patent in the manner provided for in Rule 70.10.

Rule 65—Inventive Step or Non-Obviousness 65.1 Approach to Prior Art For the purposes of Article 33(3), the international preliminary exam- ination shall take into consideration the relation of any particular claim to the prior art as a whole.
It shall take into consideration the claim’s relation not only to individual documents or parts thereof taken separately but also its relation to combinations of such docu- ments or parts of documents, where such combinations are obvious to a person skilled in the art.
266 Reprinted as at 1 January 2011 Patents Act 1953 Part C—continued Rule 65—continued 65.2 Relevant Date For the purposes of Article 33(3), the relevant date for the consid- eration of inventive step (non-obviousness) is the date prescribed in Rule 64.1.
Rule 66—Procedure before the International Preliminary Examining Authority 66.1 Basis of the International Preliminary Examination (a) Subject to paragraphs (b) to (d), the international preliminary examination shall be based on the international application as filed.

The applicant may submit amendments under Article 34 at the time of filing the demand or, subject to Rule 66.4bis until the international preliminary examination report is established.
Any amendments under Article 19 made before the demand was filed shall be taken into account for the purposes of the international preliminary examination unless superseded, or considered as reversed, by an amendment under Article 34.
(b) (c) (d) Any amendments under Article 19 made after the demand was filed and any amendments under Article 34 submitted to the International Preliminary Examining Authority shall, subject to Rule 66.4bis be taken into account for the purposes of the international preliminary examination.

Claims relating to inventions in respect of which no inter- national search report has been established need not be the subject of international preliminary examination.
(e) 66.2 First Written Opinion of the International Preliminary (a) Examining Authority If the International Preliminary Examining Authority (i) considers that any of the situations referred to in Article 34(4) exists, considers that the international preliminary examin- ation report should be negative in respect of any of the claims because the invention claimed therein does (ii) 267 Patents Act 1953 Reprinted as at 1 January 2011 Part C—continued Rule 66—continued not appear to be novel, does not appear to involve an inventive step (does not appear to be non-obvious), or does not appear to be industrially applicable, notices that there is some defect in the form or contents of the international application under the Treaty or these Regulations, considers that any amendment goes beyond the disclos- ure in the international application as filed, (iii) (iv) (v) wishes to accompany the international preliminary examination report by observations on the clarity of the claims, the description, and the drawings, or the question whether the claims are fully supported by the description, considers that a claim relates to an invention in respect of which no international search report has been estab- lished and has decided not to carry out the international preliminary examination in respect of that claim, or (vi) (vii) considers that a nucleotide and/or amino acid sequence listing is not available to it in such a form that a mean- ingful international preliminary examination can be car- ried out, the said Authority shall notify the applicant accordingly in writing.
Where the national law of the national Office acting as International Preliminary Examining Authority does not al- low multiple dependent claims to be drafted in a manner dif- ferent from that provided for in the second and third sentences of Rule 6.4(a), the International Preliminary Examining Au- thority may, in case of failure to use that manner of claiming, apply Article 34(4)(b).

In such case, it shall notify the appli- cant accordingly in writing.
The notification shall fully state the reasons for the opinion of the International Preliminary Examining Authority.

The notification shall invite the applicant to submit a written reply together, where appropriate, with amendments.

The notification shall fix a time limit for the reply.

The time limit shall be reasonable under the circumstances.
It shall nor- (b) (c) (d) 268 Reprinted as at 1 January 2011 Patents Act 1953 Part C—continued Rule 66—continued mally be two months after the date of notification.

In no case shall it be shorter than one month after the said date.

It shall be at least two months after the said date where the international search report is transmitted at the same time as the notification.

It shall not be more than three months after the said date but may be extended if the applicant so requests before its expir- ation.
66.3 Formal Response to the International Preliminary (a) Examining Authority The applicant may respond to the invitation referred to in Rule 66.2(c) of the International Preliminary Examining Authority by making amendments or — if he disagrees with the opinion of that Authority — by submitting arguments, as the case may be, or do both.

(b) Any response shall be submitted directly to the International Preliminary Examining Authority.
66.4 Additional Opportunity for Submitting Amendments or (a) Arguments If the International Preliminary Examining Authority wishes to issue one or more additional written opinions, it may do so, and Rules 66.2 and 66.3 shall apply.

(b) On the request of the applicant, the International Preliminary Examining Authority may give him one or more additional opportunities to submit amendments or arguments.
66.4bis Consideration of Amendments and Arguments Amendments or arguments need not be taken into account by the International Preliminary Examining Authority for the purposes of a written opinion or the international preliminary examination report if they are received after that Authority has begun to draw up that opinion or report.
269 Patents Act 1953 Reprinted as at 1 January 2011 Part C—continued Rule 66—continued 66.5 Amendment Any change, other than the rectification of obvious errors, in the claims, the description, or the drawings, including cancellation of claims, omission of passages in the description, or omission of cer- tain drawings, shall be considered an amendment.
66.6 Informal Communications with the Applicant The International Preliminary Examining Authority may, at any time, communicate informally, over the telephone, in writing, or through personal interviews, with the applicant.

The said Authority shall, at its discretion, decide whether it wishes to grant more than one per- sonal interview if so requested by the applicant, or whether it wishes to reply to any informal written communication from the applicant.
66.7 Priority Document (a) If the International Preliminary Examining Authority needs a copy of the application whose priority is claimed in the international application, the International Bureau shall, on request, promptly furnish such copy.
If that copy is not fur- nished to the International Preliminary Examining Authority because the applicant failed to comply with the requirements of Rule 17.1, the international preliminary examination report may be established as if the priority had not been claimed.
If the application whose priority is claimed in the international application is in a language other than the language or one of the languages of the International Preliminary Examining Authority, that Authority may invite the applicant to furnish a translation in the said language or one of the said languages within two months from the date of the invitation.
If the trans- lation is not furnished within that time limit, the international preliminary examination report may be established as if the priority had not been claimed.

(b) 270 Reprinted as at 1 January 2011 Patents Act 1953 Part C—continued Rule 66—continued 66.8 Form of Amendments (a) The applicant shall be required to submit a replacement sheet for every sheet of the international application which, on ac- count of an amendment, differs from the sheet previously filed.
The letter accompanying the replacement sheets shall draw attention to the differences between the replaced sheets and the replacement sheets.

Where the amendment consists in the deletion of passages or in minor alterations or additions, it may be made on a copy of the relevant sheet of the international application, provided that the clarity and direct reproducibil- ity of that sheet are not adversely affected.
To the extent that any amendment results in the cancellation of an entire sheet, that amendment shall be communicated in a letter.

[Deleted] (b) 66.9 Language of Amendments If the international application has been filed in a language other than the language in which it is published, any amendment, as well as any letter referred to in Rule 66.8(a), shall be submitted in the language of publication.
Rule 67—Subject Matter under Article 34(4)(a)(i) 67.1 Definition No International Preliminary Examining Authority shall be required to carry out an international preliminary examination on an inter- national application if, and to the extent to which, its subject matter is any of the following: (i) (ii) scientific and mathematical theories, plant or animal varieties or essentially biological processes for the production of plants and animals, other than microbio- logical processes and the products of such processes, schemes, rules, or methods of doing business, performing purely mental acts or playing games, (iii) 271 Patents Act 1953 Reprinted as at 1 January 2011 Part C—continued Rule 67—continued (iv) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods, (v) mere presentations of information, (vi) computer programs to the extent that the International Pre- liminary Examining Authority is not equipped to carry out an international preliminary examination concerning such pro- grams.
Rule 68—Lack of Unity of Invention (International Preliminary Examination) 68.1 No Invitation to Restrict or Pay Where the International Preliminary Examining Authority finds that the requirement of unity of invention is not complied with and chooses not to invite the applicant to restrict the claims or to pay additional fees, it shall proceed with the international preliminary examination, subject to Article 34(4)(b) and Rule 66.1(e) in respect of the entire international application, but shall indicate, in any written opinion and in the international preliminary examination report, that it considers that the requirement of unity of invention is not fulfilled and it shall specify the reasons therefor.
68.2 Invitation to Restrict or Pay Where the International Preliminary Examining Authority finds that the requirement of unity of invention is not compiled with and chooses to invite the applicant, at his option, to restrict the claims or to pay additional fees, it shall specify at least one possibility of restriction which, in the opinion of the International Preliminary Examining Authority, would be in compliance with the applicable requirement, and shall specify the amount of the additional fees and the reasons for which the international application is not considered as complying with the requirement of unity of invention.
It shall, at the same time, fix a time limit, with regard to the circumstances of the case, for complying with the invitation; such time limit shall not be shorter than one month, and it shall not be longer than two months, from the date of the invitation.
272 Reprinted as at 1 January 2011 Patents Act 1953 Part C—continued Rule 68—continued 68.3 Additional Fees (a) The amount of the additional fee due for international prelim- inary examination under Article 34(3)(a) shall be determined by the competent International Preliminary Examining Au- thority.

The additional fee due for international preliminary examin- ation under Article 34(3)(a) shall be payable direct to the Inter- national Preliminary Examining Authority.
Any applicant may pay the additional fee under protest, that is, accompanied by a reasoned statement to the effect that the international application complies with the requirement of unity of invention or that the amount of the required ad- ditional fee is excessive.
Such protest shall be examined by a three-member board or other special instance of the Inter- national Preliminary Examining Authority, or any competent higher authority, which, to the extent that it finds the protest justified, shall order the total or partial reimbursement to the applicant of the additional fee.

On the request of the applicant, the text of both the protest and the decision thereon shall be notified to the elected Offices as an annex to the international preliminary examination report.
The three-member board, special instance or competent higher authority, referred to in paragraph (c), shall not comprise any person who made the decision which is the subject of the protest.
(b) (c) (d) (e) Where the applicant has, under paragraph (c), paid an addi- tional fee under protest, the International Preliminary Exam- ining Authority may, after a prior review of the justification for the invitation to pay an additional fee, require that the appli- cant pay a fee for the examination of the protest (“protest fee”).

The protest fee shall be paid within one month from the date of the notification to the applicant of the result of the review.
If the protest fee is not so paid, the protest shall be considered withdrawn.

The protest fee shall be refunded to the applicant where the three-member board, special instance or higher au- 273 Patents Act 1953 Reprinted as at 1 January 2011 Part C—continued Rule 68—continued thority referred to in paragraph (c) finds that the protest was entirely justified.
68.4 Procedure in the Case of Insufficient Restriction of the Claims If the applicant restricts the claims but not sufficiently to comply with the requirement of unity of invention, the International Preliminary Examining Authority shall proceed as provided in Article 34(3)(c).

68.5 Main Invention In case of doubt which invention is the main invention for the pur- poses of Article 34(3)(c), the invention first mentioned in the claims shall be considered the main invention.
Rule 69—Start of and Time Limit for International Preliminary Examination 69.1 Start of International Preliminary Examination (a) Subject to paragraphs (b) to (e), the International Preliminary Examining Authority shall start the international preliminary examination when it is in possession both of the demand and of either the international search report or a notice of the dec- laration by the International Searching Authority under Article 17(2)(a) that no international search report will be established.
If the competent International Preliminary Examining Author- ity is part of the same national Office or intergovernmental organisation as the competent International Searching Author- ity, the international preliminary examination may, if the Inter- national Preliminary Examining Authority so wishes and sub- ject to paragraph (d), start at the same time as the international search.
(b) (c) Where the statement concerning amendments contains an in- dication that amendments under Article 19 are to be taken into account (Rule 53.9(a)(i)), the International Preliminary Exam- ining Authority shall not start the international preliminary 274 Reprinted as at 1 January 2011 Patents Act 1953 Part C—continued Rule 69—continued examination before it has received a copy of the amendments concerned.
(d) Where the statement concerning amendments contains an in- dication that the start of the international preliminary examin- ation is to be postponed (Rule 53.9(b)), the International Pre- liminary Examining Authority shall not start the international preliminary examination before (i) it has received a copy of any amendments made under Article 19, it has received a notice from the applicant that he does not wish to make amendments under Article 19, or the expiration of 20 months from the priority date, (ii) (iii) whichever occurs first.
(e) Where the statement concerning amendments contains an in- dication that amendments under Article 34 are submitted with the demand (Rule 53.9(c)) but no such amendments are, in fact, submitted, the International Preliminary Examining Au- thority shall not start the international preliminary examin- ation before it has received the amendments or before the time limit fixed in the invitation referred to in Rule 60.1(g) has ex- pired, whichever occurs first.
69.2 Time Limit for International Preliminary Examination The time limit for establishing the international preliminary examin- ation report shall be: (i) 28 months from the priority date if the demand was filed prior to the expiration of 19 months from the priority date; nine months from the start of the international preliminary examination if the demand was filed after the expiration of 19 months from the priority date.
(ii) Rule 70—The International Preliminary Examination Report 70.1 Definition For the purposes of this Rule, “report” shall mean international pre- liminary examination report.

275 Patents Act 1953 Reprinted as at 1 January 2011 Part C—continued Rule 70—continued 70.2 Basis of the Report (a) (c) (b) If the claims have been amended, the report shall issue on the claims as amended.
If, pursuant to Rule 66.7(a) or (b), the report is established as if the priority had not been claimed, the report shall so indicate.

If the International Preliminary Examining Authority consid- ers that any amendment goes beyond the disclosure in the international application as filed, the report shall be established as if such amendment had not been made, and the report shall so indicate.

It shall also indicate the reasons why it considers that the amendment goes beyond the said disclosure.
(d) Where claims relate to inventions in respect of which no inter- national search report has been established and have therefore not been the subject of international preliminary examination, the international preliminary examination report shall so indi- cate.
70.3 Identifications The report shall identify the International Preliminary Examining Authority which established it by indicating the name of such Author- ity, and the international application by indicating the international application number, the name of the applicant, and the international filing date.

70.4 Dates The report shall indicate: (i) (ii) the date on which the demand was submitted, and the date of the report; that date shall be the date on which the report is completed.
70.5 Classification (a) The report shall repeat the classification given under Rule 43.3 if the International Preliminary Examining Authority agrees with such classification.

276 Reprinted as at 1 January 2011 Patents Act 1953 Part C—continued Rule 70—continued (b) Otherwise, the International Preliminary Examining Authority shall indicate in the report the classification, at least according to the International Patent Classification, which it considers correct.
70.6 Statement under Article 35(2) (a) The statement referred to in Article 35(2) shall consist of the words “YES” or “NO,” or their equivalent in the language of the report, or some appropriate sign provided for in the Ad- ministrative Instructions, and shall be accompanied by the ci- tations, explanations and observations, if any, referred to in the last sentence of Article 35(2).
If any of the three criteria referred to in Article 35(2) (that is, novelty, inventive step (non-obviousness), industrial applic- ability) is not satisfied, the statement shall be negative.

If, in such a case, any of the criteria, taken separately, is satisfied, the report shall specify the criterion or criteria so satisfied.

(b) 70.7 Citations under Article 35(2) (a) The report shall cite the documents considered to be relevant for supporting the statements made under Article 35(2).
The provisions of Rule 43.5(b) and (e) shall apply also to the report.

(b) 70.8 Explanations under Article 35(2) The Administrative Instructions shall contain guidelines for cases in which the explanations referred to in Article 35(2) should or should not be given and the form of such explanations.
Such guidelines shall be based on the following principles: (i) explanations shall be given whenever the statement in relation to any claim is negative; explanations shall be given whenever the statement is positive unless the reason for citing any document is easy to imagine on the basis of consultation of the cited document; generally, explanations shall be given if the case provided for in the last sentence of Rule 70.6(b) obtains.
(ii) (iii) 277 Patents Act 1953 Reprinted as at 1 January 2011 Part C—continued Rule 70—continued 70.9 Non-Written Disclosures Any non-written disclosure referred to in the report by virtue of Rule 64.2 shall be mentioned by indicating its kind, the date on which the written disclosure referring to the non-written disclosure was made available to the public, and the date on which the non-written dis- closure occurred in public 70.10 Certain Published Documents Any published application or any patent referred to in the report by virtue of Rule 64.3 shall be mentioned as such and shall be accom- panied by an indication of its date of publication, of its filing date, and its claimed priority date (if any).
In respect of the priority date of any such document, the report may indicate that, in the opinion of the International Preliminary Examining Authority, such date has not been validly claimed.

70.11 Mention of Amendments If, before the International Preliminary Examining Authority, amend- ments have been made, this fact shall be indicated in the report.

Where any amendment has resulted in the cancellation of an entire sheet, this fact shall also be specified in the report.
70.12 Mention of Certain Defects and Other Matters If the International Preliminary Examining Authority considers that, at the time it prepares the report: (i) the international application contains any of the defects re- ferred to in Rule 66.2(a)(iii), it shall include this opinion and the reasons therefor in the report; the international application calls for any of the observations referred to in Rule 66.2(a)(v), it may include this opinion in the report and, if it does, it shall also indicate in the report the reasons for such opinion; any of the situations referred to in Article 34(4) exists, it shall state this opinion and the reasons therefore in the report; (ii) (iii) 278 Reprinted as at 1 January 2011 Patents Act 1953 Part C—continued Rule 70—continued (iv) a nucleotide and/or amino acid sequence listing is not available to it in such a form that a meaningful international preliminary examination can be carried out, it shall so state in the report.
70.13 Remarks Concerning Unity of Invention If the applicant paid additional fees for the international preliminary examination, or if the international application or the international the preliminary examination was restricted under Article 34(3), report shall so indicate.
Furthermore, where the international pre- liminary examination was carried out on restricted claims (Article 34(3)(a)), or on the main invention only (Article 34(3)(c)), the report shall indicate what parts of the international application were and what parts were not the subject of international preliminary examination.
The report shall contain the indications provided for in Rule 68.1, where the International Preliminary Examining Authority chose not to invite the applicant to restrict the claims or to pay additional fees.

70.14 Authorised Officer The report shall indicate the name of the officer of the International Preliminary Examining Authority responsible for that report.

70.15 Form The physical requirements as to the form of the report shall be pre- scribed by the Administrative Instructions.
70.16 Annexes of the Report Each replacement sheet under Rule 66.8(a) and each replacement sheet containing amendments under Article 19 shall, unless super- seded by later replacement sheets, be annexed to the report.

Amend- ments under Article 19 which have been considered as reversed by an amendment under Article 34 and letters under Rule 66.8(a) shall not be annexed.
279 Patents Act 1953 Reprinted as at 1 January 2011 Part C—continued Rule 70—continued 70.17 Languages of the Report and the Annexes (a) The report and any annex shall be in the language in which the international application to which they relate is published.
[Deleted] (b) Rule 71—Transmittal of the International Preliminary Examination Report 71.1 Recipients The International Preliminary Examining Authority shall, on the same day, transmit one copy of the international preliminary exam- ination report and its annexes, if any, to the International Bureau, and one copy to the applicant.
71.2 Copies of Cited Documents (a) (b) The request under Article 36(4) may be presented any time during seven years from the international filing date of the international application to which the report relates.

The International Preliminary Examining Authority may re- quire that the party (applicant or elected Office) presenting the request pay to it the cost of preparing and mailing the copies.
The level of the cost of preparing copies shall be provided for in the agreements referred to in Article 32(2) between the International Preliminary Examining Authorities and the Inter- national Bureau.

[Deleted] (c) (d) Any International Preliminary Examining Authority may perform the obligations referred to in paragraphs (a) and (b) through another agency responsible to it.
Rule 72—Translation of the International Preliminary Examination Report 72.1 Languages (a) Any elected State may require that the international prelimin- ary examination report, established in any language other than 280 Reprinted as at 1 January 2011 Patents Act 1953 Part C—continued Rule 72—continued the official language, or one of the official languages, of its na- tional Office, be translated into English.
(b) Any such requirement shall be notified to the International Bu- reau, which shall promptly publish it in the Gazette.

72.2 Copy of Translation for the Applicant The International Bureau shall transmit a copy of the translation re- ferred to in Rule 72.1(a) of the international preliminary examination report to the applicant at the same time as it communicates such trans- lation to the interested elected Office or Offices.
72.3 Observations on the Translation The applicant may make written observations on what, in his opin- ion, are errors of translation in the translation of the international preliminary examination report and shall send a copy of any such observations to each of the interested elected Offices and a copy to the International Bureau.
Rule 73—Communication of the International Preliminary Examination Report 73.1 Preparation of Copies The International Bureau shall prepare the copies of the documents to be communicated under Article 36(3)(a).

73.2 Time Limit for Communication The communication provided for in Article 36(3)(a) shall be effected as promptly as possible but not earlier than the communication under Article 20.
281 Patents Act 1953 Part C—continued Reprinted as at 1 January 2011 Rule 74—Translations of Annexes of the International Preliminary Examination Report and Transmittal Thereof 74.1 Content of Translation and Time Limit for Transmittal Thereof Where the furnishing of a translation of the international application is required by the elected Office under Article 39(1), the applicant shall, within the time limit applicable under Article 39(1), transmit a translation of any replacement sheet referred to in Rule 70.16 which is annexed to the international preliminary examination report.
The same time limit shall apply where the furnishing of a translation of the international application to the elected Office must, because of a declaration made under Article 64(2)(a)(i), be effected within the time limit applicable under Article 22.
[Deleted] Rule 75 Rule 76—Copy, Translation and Fee under Article 39(1); Translation of Priority Document 76.1, 76.2 and 76.3 [Deleted] 76.4 Time Limit for Translation of Priority Document The applicant shall not be required to furnish to any elected Office a certified translation of the priority document before the expiration of the applicable time limit under Article 39.
76.5 Application of Rules 22.1(g), 49 and 51bis Rules 22.1(g), 49 and 51bis shall apply, provided that: (i) any reference in the said Rules to the designated Office or to the designated State shall be construed as a reference to the elected Office or to the elected State, respectively; 282 Reprinted as at 1 January 2011 Patents Act 1953 Part C—continued Rule 76—continued (ii) (iii) (iv) any reference in the said Rules to Article 22 or Article 24(2) shall be construed as a reference to Article 39(1) or Article 39(3), respectively; the words “international applications filed” in Rule 49.1(c) shall be replaced by the words “a demand submitted”; for the purposes of Article 39(1), where an international pre- liminary examination report has been established, a translation of any amendment under Article 19 shall only be required if that amendment is annexed to that report.
76.6 Transitional Provision If, on July 12, 1991, Rule 76.5(iv) is not compatible with the national law applied by the elected Office in respect of claims amended under Article 19, Rule 76.5(iv) shall not apply in that respect to that elected Office for as long as it continues not to be compatible with that law, provided that the said Office informs the International Bureau ac- cordingly by December 31, 1991.

The information received shall be promptly published by the International Bureau in the Gazette.
Rule 77—Faculty under Article 39(1)(b) 77.1 Exercise of Faculty (a) Any Contracting State allowing a time limit expiring later than the time limit provided for in Article 39(1)(a) shall notify the International Bureau of the time limit so fixed.

(c) (b) Any notification received by the International Bureau under paragraph (a) shall be promptly published by the International Bureau in the Gazette.
Notifications concerning the shortening of the previously fixed time limit shall be effective in relation to demands submitted after the expiration of three months computed from the date on which the notification was published by the International Bureau.
(d) Notifications concerning the lengthening of the previously fixed time limit shall become effective upon publication by the International Bureau in the Gazette in respect of demands 283 Patents Act 1953 Reprinted as at 1 January 2011 Part C—continued Rule 77—continued pending at the time or submitted after the date of such pub- lication, or, if the Contracting State effecting the notification fixes some later date, as from the latter date.
Rule 78—Amendment of the Claims, the Description, and the Drawings, before Elected Offices 78.1 Time Limit Where Election Is Effected prior to Expiration of 19 Months from Priority Date (a) Where the election of any Contracting State is effected prior to the expiration of the 19th month from the priority date, the applicant shall, if he so wishes, exercise the right under Art- icle 41 to amend the claims, the description and the drawings, before the elected Office concerned within one month from the fulfilment of the requirements under Article 39(1)(a), pro- vided that, if the transmittal of the international preliminary examination report under Article 36(1) has not taken place by the expiration of the time limit applicable under Article 39, he shall exercise the said right not later than four months after such expiration date.
In either case, the applicant may exercise the said right at any other time if so permitted by the national law of the said State.
In any elected State in which the national law provides that examination starts only on special request, the national law may provide that the time limit within or the time at which the applicant may exercise the right under Article 41 shall, where the election of any Contracting State is effected prior to the expiration of the 19th month from the priority date, be the same as that provided by the national law for the filing of amendments in the case of the examination, on special request, of national applications, provided that such time limit shall not expire prior to, or such time shall not come before, the expiration of the time limit applicable under paragraph (a).
(b) 284 Reprinted as at 1 January 2011 Patents Act 1953 Part C—continued Rule 78—continued 78.2 Time Limit Where Election Is Effected after Expiration of 19 Months from Priority Date Where the election of any Contracting State has been effected after the expiration of the 19th month from the priority date and the appli- cant wishes to make amendments under Article 41, the time limit for making amendments under Article 28 shall apply.
78.3 Utility Models The provisions of Rules 6.5 and 13.5 shall apply, mutatis mutandis, before elected Offices.

If the election was made before the expiration of the 19th month from the priority date, the reference to the time limit applicable under Article 22 is replaced by a reference to the time limit applicable under Article 39.
Part D Rules Concerning Chapter III of the Treaty Rule 79—Calendar 79.1 Expressing Dates Applicants, national Offices, receiving Offices, International Search- ing and Preliminary Examining Authorities, and the International Bureau, shall, for the purposes of the Treaty and the Regulations, express any date in terms of the Christian era and the Gregorian cal- endar, or, if they use other eras and calendars, they shall also express any date in terms of the Christian era and the Gregorian calendar.
Rule 80—Computation of Time Limits 80.1 Periods Expressed in Years When a period is expressed as one year or a certain number of years, computation shall start on the day following the day on which the relevant event occurred, and the period shall expire in the relevant subsequent year in the month having the same name and on the day having the same number as the month and the day on which the said event occurred, provided that if the relevant subsequent month has 285 Patents Act 1953 Reprinted as at 1 January 2011 Part D—continued Rule 80—continued no day with the same number the period shall expire on the last day of that month.
80.2 Periods Expressed in Months When a period is expressed as one month or a certain number of months, computation shall start on the day following the day on which the relevant event occurred, and the period shall expire in the relevant subsequent month on the day which has the same number as the day on which the said event occurred, provided that if the rele- vant subsequent month has no day with the same number the period shall expire on the last day of that month.
80.3 Periods Expressed in Days When a period is expressed as a certain number of days, computation shall start on the day following the day on which the relevant event occurred, and the period shall expire on the day on which the last day of the count has been reached.

80.4 Local Dates (a) The date which is taken into consideration as the starting date of the computation of any period shall be the date which pre- vails in the locality at the time when the relevant event oc- curred.
The date on which any period expires shall be the date which prevails in the locality in which the required document must be filed or the required fee must be paid.
(b) 80.5 Expiration on a Non-Working Day If the expiration of any period during which any document or fee must reach a national Office or intergovernmental organization falls on a day on which such Office or organization is not open to the public for the purposes of the transaction of official business, or on which ordinary mail is not delivered in the locality in which such Office or organization is situated, the period shall expire on the next subsequent day on which neither of the said two circumstances exists.
286 Reprinted as at 1 January 2011 Patents Act 1953 Part D—continued Rule 80—continued 80.6 Date of Documents (a) Where a period starts on the day of the date of a document or letter emanating from a national Office or intergovernmen- tal organization, any interested party may prove that the said document or letter was mailed on a day later than the date it bears, in which case the date of actual mailing shall, for the purposes of computing the period, be considered to be the date on which the period starts.
Irrespective of the date on which such a document or letter was mailed, if the applicant offers to the national Office or intergovernmental organization evi- dence which satisfies the national Office or intergovernmen- tal organization that the document or letter was received more than seven days after the date it bears, the national Office or intergovernmental organization shall treat the period starting from the date of the document or letter as expiring later by an additional number of days which is equal to the number of days which the document or letter was received later than seven days after the date it bears.
[Deleted] (b) 80.7 End of Working Day (a) A period expiring on a given day shall expire at the moment the national Office or intergovernmental organization with which the document must be filed or to which the fee must be paid closes for business on that day.

(b) Any Office or organization may depart from the provisions of paragraph (a) up to midnight on the relevant day.
Rule 81—Modification of Time Limits Fixed in the Treaty 81.1 Proposal (a) Any Contracting State or the Director General may propose a modification under Article 47(2).

Proposals made by a Contracting State shall be presented to the Director General.
(b) 287 Patents Act 1953 Reprinted as at 1 January 2011 Part D—continued Rule 81—continued 81.2 Decision by the Assembly (a) When the proposal is made to the Assembly, its text shall be sent by the Director General to all Contracting States at least two months in advance of that session of the Assembly whose agenda includes the proposal.

(b) During the discussion of the proposal in the Assembly, the proposal may be amended or consequential amendments pro- posed.
The proposal shall be considered adopted if none of the Con- tracting States present at the time of voting votes against the proposal.

(c) (b) 81.3 Voting by Correspondence (a) When voting by correspondence is chosen, the proposal shall be included in a written communication from the Director General to the Contracting States, inviting them to express their vote in writing.
The invitation shall fix the time limit within which the reply containing the vote expressed in writing must reach the Inter- national Bureau.

That time limit shall not be less than three months from the date of the invitation.

Replies must be either positive or negative.

Proposals for amendments or mere observations shall not be regarded as votes.
The proposal shall be considered adopted if none of the Con- tracting States opposes the amendment and if at least one-half of the Contracting States express either approval or indiffer- ence or abstention.

(d) (c) Rule 82—Irregularities in the Mail Service 82.1 Delay or Loss in Mail (a) Any interested party may offer evidence that he has mailed the document or letter five days prior to the expiration of the time limit.
Except in cases where surface mail normally arrives at its destination within two days of mailing, or where no airmail 288 Reprinted as at 1 January 2011 Patents Act 1953 Part D—continued Rule 82—continued (b) (c) service is available, such evidence may be offered only if the mailing was by airmail.

In any case, evidence may be offered only if the mailing was by mail registered by the postal author- ities.
If the mailing, in accordance with paragraph (a), of a document or letter is proven to the satisfaction of the national Office or intergovernmental organization which is the addressee, delay in arrival shall be excused, or, if the document or letter is lost in the mail, substitution for it of a new copy shall be permit- ted, provided that the interested party proves to the satisfaction of the said Office or organization that the document or letter offered in substitution is identical with the document or letter lost.
In the cases provided for in paragraph (b), evidence of mail- ing within the prescribed time limit, and, where the document or letter was lost, the substitute document or letter as well as the evidence concerning its identity with the document or letter lost shall be submitted within one month after the date on which the interested party noticed—or with due diligence should have noticed—the delay or the loss, and in no case later than six months after the expiration of the time limit applicable in the given case.
(d) Any national Office or intergovernmental organization which has notified the International Bureau that it will do so shall, where a delivery service other than the postal authorities is used to mail a document or letter, apply the provisions of para- graphs (a) to (c) as if the delivery service was a postal author- ity.
In such a case, the last sentence of paragraph (a) shall not apply but evidence may be offered only if details of the mail- ing were recorded by the delivery service at the time of mail- ing.

The notification may contain an indication that it applies only to mailings using specified delivery services or delivery services which satisfy specified criteria.

The International Bu- reau shall publish the information so notified in the Gazette.
Any national Office or intergovernmental organization may proceed under paragraph (d): (e) 289 Patents Act 1953 Reprinted as at 1 January 2011 Part D—continued Rule 82—continued (i) (ii) even if, where applicable, the delivery service used was not one of those specified, or did not satisfy the criteria specified, in the relevant notification under paragraph (d), or even if that Office or organization has not sent to the International Bureau a notification under paragraph (d).
82.2 Interruption in the Mail Service (a) Any interested party may offer evidence that on any of the 10 days preceding the day of expiration of the time limit the postal service was interrupted on account of war, revolution, civil disorder, strike, natural calamity, or other like reason, in the locality where the interested party resides or has his place of business or is staying.
If such circumstances are proven to the satisfaction of the na- tional Office or intergovernmental organization which is the addressee, delay in arrival shall be excused, provided that the interested party proves to the satisfaction of the said Office or organization that he effected the mailing within five days after the mail service was resumed.

The provisions of Rule 82.1(c) shall apply mutatis mutandis.
(b) Rule 82bis—Excuse by the Designated or Elected State of Delays in Meeting Certain Time Limits 82bis.1 Meaning of “Time Limit” in Article 48(2) The reference to “any time limit” in Article 48(2) shall be construed as comprising a reference: (i) (ii) to any time limit fixed in the Treaty or these Regulations; to any time limit fixed by the receiving Office, the International Searching Authority, the International Preliminary Examining Authority or the International Bureau or applicable by the re- ceiving Office under its national law; 290 Reprinted as at 1 January 2011 Patents Act 1953 Part D—continued Rule 82bis—continued (iii) to any time limit fixed by, or in the national law applicable by, the designated or elected Office, for the performance of any act by the applicant before that Office.
82bis.2 Reinstatement of Rights and Other Provisions to Which Article 48(2) Applies The provisions of the national law which is referred to in Article 48(2) concerning the excusing, by the designated or elected State, of any delay in meeting any time limit are those provisions which provide for reinstatement of rights, restoration, restitutio in integrum or further processing in spite of non-compliance with a time limit, and any other provision providing for the extension of time limits or for excusing delays in meeting time limits.
Rule 82ter—Rectification of Errors Made by the Receiving Office or by the International Bureau 82ter.1 Errors Concerning the International Filing Date and the Priority Claim If the applicant proves to the satisfaction of any designated or elected Office that the international filing date is incorrect due to an error made by the receiving Office or that the declaration made under Art- icle 8(1) has been erroneously cancelled or corrected by the receiving Office or the International Bureau, and if the error is an error such that, had it been made by the designated or elected Office itself, that Office would rectify it under the national law or national practice, the said Office shall rectify the error and shall treat the international application as if it had been accorded the rectified international filing date or as if the declaration under Article 8(1) had not been cancelled or corrected, as the case may be.
291 Patents Act 1953 Part D—continued Reprinted as at 1 January 2011 Rule 83—Right to Practice before International Authorities 83.1 Proof of Right The International Bureau, the competent International Searching Au- thority, and the competent International Preliminary Examining Au- thority, may require the production of proof of the right to practice referred to in Article 49.
83.2 Information (a) The national Office or the intergovernmental organization which the interested person is alleged to have a right to practice before shall, upon request, inform the International Bureau, the competent International Searching Authority, or the competent International Preliminary Examining Author- ity, whether such person has the right to practice before it.
Such information shall be binding upon the International Bureau, the International Searching Authority, or the Inter- national Preliminary Examining Authority, as the case may be.

(b) Part E Rules Concerning Chapter V of the Treaty Rule 84—Expenses of Delegations 84.1 Expenses Borne by Governments The expenses of each Delegation participating in any organ estab- lished by or under the Treaty shall be borne by the Government which has appointed it.
Rule 85—Absence of Quorum in the Assembly 85.1 Voting by Correspondence In the case provided for in Article 53(5)(b), the International Bureau shall communicate the decisions of the Assembly (other than those concerning the Assembly’s own procedure) to the Contracting States 292 Reprinted as at 1 January 2011 Patents Act 1953 Part E—continued Rule 85—continued which were not represented and shall invite them to express in writ- ing their vote or abstention within a period of three months from the date of the communication.
If, at the expiration of that period, the number of Contracting States having thus expressed their vote or ab- stention attains the number of Contracting States which was lacking for attaining the quorum in the session itself, such decisions shall take effect provided that at the same time the required majority still obtains.
Rule 86—The Gazette 86.1 Contents The Gazette referred to in Article 55(4) shall contain: (i) for each published international application, data specified by the Administrative Instructions taken from the front page of the pamphlet published under Rule 48, the drawing (if any) appearing on the said front page, and the abstract, the schedule of all fees payable to the receiving Offices, the International Bureau, and the International Searching and Pre- liminary Examining Authorities, notices the publication of which is required under the Treaty or these Regulations, information, if and to the extent furnished to the International Bureau by the designated or elected Offices, on the question whether the requirements provided for in Articles 22 or 39 have been complied with in respect of the international appli- cations designating or electing the Office concerned, any other useful information prescribed by the Administrative Instructions, provided access to such information is not pro- hibited under the Treaty or these Regulations.
(ii) (iii) (iv) (v) 86.2 Languages (a) The Gazette shall be published in an English-language edition and a French-language edition.

It shall also be published in editions in any other language, provided the cost of publication is assured through sales or subventions.

293 Patents Act 1953 Reprinted as at 1 January 2011 Part E—continued Rule 86—continued (b) The Assembly may order the publication of the Gazette in lan- guages other than those referred to in paragraph (a).
86.3 Frequency The frequency of publication of the Gazette shall be determined by the Director General.

86.4 Sale The subscription and other sale prices of the Gazette shall be deter- mined by the Director General.

86.5 Title The title of the Gazette shall be determined by the Director General.

86.6 Further Details Further details concerning the Gazette may be provided for in the Administrative Instructions.
Rule 87—Copies of Publications 87.1 International Searching and Preliminary Examining Authorities Any International Searching or Preliminary Examining Authority shall have the right to receive, free of charge, two copies of every published international application, of the Gazette, and of any other publication of general interest published by the International Bureau in connection with the Treaty or these Regulations.
87.2 National Offices (a) Any national Office shall have the right to receive, free of charge, one copy of every published international application, of the Gazette, and of any other publication of general interest published by the International Bureau in connection with the Treaty or these Regulations.

294 Reprinted as at 1 January 2011 Patents Act 1953 Part E—continued Rule 87—continued (b) The publications referred to in paragraph (a) shall be sent on special request.
If any publication is available in more than one language, the request shall specify the language or lan- guages in which it is desired.
Rule 88—Amendment of the Regulations Rule 14.1 (Transmittal Fee), [Deleted] 88.1 Requirement of Unanimity Amendment of the following provisions of these Regulations shall require that no State having the right to vote in the Assembly vote against the proposed amendment: (i) (ii) (iii) Rule 22.3 (Time Limit under Article 12(3)), (iv) Rule 33 (Relevant Prior Art for International Search), (v) (vi) Rule 81 (Modification of Time Limits Fixed in the Treaty), (vii) Rule 64 (Prior Art for International Preliminary Examination), the present paragraph (i.e., Rule 88.1).
88.2 [Deleted] 88.3 Requirement of Absence of Opposition by Certain States Amendment of the following provisions of these Regulations shall require that no State referred to in Article 58(3)(a)(ii) and having the right to vote in the Assembly vote against the proposed amendment: Rule 34 (Minimum Documentation), (i) Rule 39 (Subject Matter under Article 17(2)(a)(i)), (ii) (iii) Rule 67 (Subject Matter under Article 34(4)(a)(i)), (iv) the present paragraph (i.e., Rule 88.3).
88.4 Procedure Any proposal for amending a provision referred to in Rules 88.1 or 88.3 shall, if the proposal is to be decided upon in the Assembly, be communicated to all Contracting States at least two months prior to the opening of that session of the Assembly which is called upon to make a decision on the proposal.
295 Patents Act 1953 Part E—continued Reprinted as at 1 January 2011 Rule 89—Administrative Instructions 89.1 Scope (a) The Administrative Instructions shall contain provisions: (i) concerning matters in respect of which these Regula- tions expressly refer to such Instructions, concerning any details in respect of the application of these Regulations.
(ii) (b) The Administrative Instructions shall not be in conflict with the provisions of the Treaty, these Regulations, or any agree- ment concluded by the International Bureau with an Inter- national Searching Authority, or an International Preliminary Examining Authority.

89.2 Source (a) The Administrative Instructions shall be drawn up and pro- mulgated by the Director General after consultation with the receiving Offices and the International Searching and Prelim- inary Examining Authorities.
They may be modified by the Director General after consult- ation with the Offices or Authorities which have a direct inter- est in the proposed modification.

The Assembly may invite the Director General to modify the Administrative Instructions, and the Director General shall proceed accordingly.

89.3 Publication and Entry into Force (a) The Administrative Instructions and any modification thereof shall be published in the Gazette.
Each publication shall specify the date on which the published provisions come into effect.

The dates may be different for dif- ferent provisions, provided that no provision may be declared effective prior to its publication in the Gazette.
(b) (c) (b) 296 Reprinted as at 1 January 2011 Patents Act 1953 Part F Rules Concerning Several Chapters of the Treaty Rule 90—Agents and Common Representatives 90.1 Appointment as Agent (a) A person having the right to practice before the national Of- fice with which the international application is filed may be appointed by the applicant as his agent to represent him before that Office acting as the receiving Office and before the Inter- national Bureau, the International Searching Authority and the International Preliminary Examining Authority.
(b) A person having the right to practice before the national Of- fice or intergovernmental organization which acts as the Inter- national Searching Authority may be appointed by the appli- cant as his agent to represent him specifically before that Au- thority.
A person having the right to practice before the national Of- fice or intergovernmental organization which acts as the Inter- national Preliminary Examining Authority may be appointed by the applicant as his agent to represent him specifically be- fore that Authority.
(c) (d) An agent appointed under paragraph (a) may, unless otherwise indicated in the document appointing him, appoint one or more sub-agents to represent the applicant as the applicant’s agent: before the receiving Office, the International Bureau, (i) the International Searching Authority and the Inter- national Preliminary Examining Authority, provided that any person so appointed as sub-agent has the right to practice before the national Office with which the international application was filed; specifically before the International Searching Author- ity or the International Preliminary Examining Author- ity, provided that any person so appointed as sub-agent has the right to practice before the national Office or intergovernmental organization which acts as the Inter- national Searching Authority or International Prelimin- ary Examining Authority, as the case may be.
(ii) 297 Patents Act 1953 Reprinted as at 1 January 2011 Part F—continued Rule 90—continued 90.2 Common Representative (a) Where there are two or more applicants and the applicants have not appointed an agent representing all of them (a “com- mon agent”) under Rule 90.1(a), one of the applicants who is entitled to file an international application according to Article 9 may be appointed by the other applicants as their common representative.
(b) Where there are two or more applicants and all the applicants have not appointed a common agent under Rule 90.1(a) or a common representative under paragraph (a), the applicant first named in the request who is entitled according to Rule 19.1 to file an international application with the receiving Office shall be considered to be the common representative of all the applicants.
90.3 Effects of Acts by or in Relation to Agents and Common (a) (b) (c) Representatives Any act by or in relation to an agent shall have the effect of an act by or in relation to the applicant or applicants concerned.

If there are two or more agents representing the same applicant or applicants, any act by or in relation to any of those agents shall have the effect of an act by or in relation to the said ap- plicant or applicants.
Subject to Rule 90bis.5(a), second sentence, any act by or in relation to a common representative or his agent shall have the effect of an act by or in relation to all the applicants.

90.4 Manner of Appointment of Agent or Common Representative The appointment of an agent shall be effected by the appli- cant signing the request, the demand or a separate power of attorney.
Where there are two or more applicants, the appoint- ment of a common agent or common representative shall be effected by each applicant signing, at his choice, the request, the demand or a separate power of attorney.
(a) 298 Reprinted as at 1 January 2011 Patents Act 1953 Part F—continued Rule 90—continued (b) (c) Subject to Rule 90.5, a separate power of attorney shall be submitted to either the receiving Office or the International Bureau, provided that, where a power of attorney appoints an agent under Rule 90.1(b), (c) or (d)(ii), it shall be submitted to the International Searching Authority or the International Preliminary Examining Authority, as the case may be.
If the separate power of attorney is not signed, or if the required separate power of attorney is missing, or if the indication of the name or address of the appointed person does not comply with Rule 4.4, the power of attorney shall be considered non- existent unless the defect is corrected.
90.5 General Power of Attorney (a) Appointment of an agent in relation to a particular inter- national application may be effected by referring in the request, the demand or a separate notice to an existing separ- ate power of attorney appointing that agent to represent the applicant in relation to any international application which may be filed by that applicant (i.e., a “general power of attorney”), provided that: (i) the general power of attorney has been deposited in ac- cordance with paragraph (b), and a copy of it is attached to the request, the demand or the separate notice, as the case may be; that copy need not be signed.
(ii) (b) The general power of attorney shall be deposited with the re- ceiving Office, provided that, where it appoints an agent under Rule 90.1(b), (c) or (d)(ii), it shall be deposited with the Inter- national Searching Authority or the International Preliminary Examining Authority, as the case may be.
90.6 Revocation and Renunciation (a) Any appointment of an agent or common representative may be revoked by the persons who made the appointment or by their successors in title, in which case any appointment of a sub-agent under Rule 90.1(d) by that agent shall also be con- 299 Patents Act 1953 Reprinted as at 1 January 2011 Part F—continued Rule 90—continued sidered as revoked.

Any appointment of a sub-agent under Rule 90.1(d) may also be revoked by the applicant concerned.
The appointment of an agent under Rule 90.1(a) shall, unless otherwise indicated, have the effect of revoking any earlier appointment of an agent made under that Rule.

The appointment of a common representative shall, unless otherwise indicated, have the effect of revoking any earlier ap- pointment of a common representative.

An agent or a common representative may renounce his ap- pointment by a notification signed by him.
Rule 90.4(b) and (c) shall apply, mutatis mutandis, to a docu- ment containing a revocation or renunciation under this Rule.

(b) (c) (c) (e) Rule 90bis—Withdrawals 90bis.1 Withdrawal of the International Application (a) The applicant may withdraw the international application at any time prior to the expiration of 20 months from the priority date or, where Article 39(1) applies, prior to the expiration of 30 months from the priority date.
(c) (b) Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, to the International Bureau, to the receiving Office or, where Article 39(1) applies, to the International Preliminary Examining Authority.
No international publication of the international application shall be effected if the notice of withdrawal sent by the ap- plicant or transmitted by the receiving Office or the Inter- national Preliminary Examining Authority reaches the Inter- national Bureau before the technical preparations for inter- national publication have been completed.
90bis.2 Withdrawal of Designations (a) The applicant may withdraw the designation of any designated State at any time prior to the expiration of 20 months from the priority date or, where Article 39(1) applies in respect of that State, prior to the expiration of 30 months from the priority date.
Withdrawal of the designation of a State which has been 300 Reprinted as at 1 January 2011 Patents Act 1953 Part F—continued Rule 90bis—continued elected shall entail withdrawal of the corresponding election under Rule 90bis.4.
(b) Where a State has been designated for the purpose of obtaining both a national patent and a regional patent, withdrawal of the designation for designation of that State shall be taken to mean withdrawal of only the designation for the purpose of obtaining a national patent, except where otherwise indicated.
(c) Withdrawal of the designations of all designated States shall be treated as withdrawal of the international application under Rule 90bis.1 (e) (d) Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, to the International Bureau, to the receiving Office or, where Article 39(1) applies, to the International Preliminary Examining Authority.
No international publication of the designation shall be ef- fected if the notice of withdrawal sent by the applicant or trans- mitted by the receiving Office or the International Preliminary Examining Authority reaches the International Bureau before the technical preparations for international publication have been completed.
90bis.3 Withdrawal of Priority Claims (a) The applicant may withdraw a priority claim, made in the international application under Article 8(1), at any time prior to the expiration of 20 months from the priority date or, where Article 39(1) applies, 30 months from the priority date.

(b) Where the international application contains more than one priority claim, the applicant may exercise the right provided for in paragraph (a) in respect of one or more or all of the priority claims.
(c) Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, to the International Bureau, to the receiving Office or, where Article 39(1) applies, to the International Preliminary Examining Authority.
(d) Where the withdrawal of a priority claim causes a change in the priority date, any time limit which is computed from the 301 Patents Act 1953 Reprinted as at 1 January 2011 Part F—continued Rule 90bis—continued (e) original priority date and which has not already expired shall, subject to paragraph (e), be computed from the priority date resulting from that change.
In the case of the time limit referred to in Article 21(2)(a), the International Bureau may nevertheless proceed with the international publication on the basis of the said time limit as computed from the original priority date if the notice of with- drawal sent by the applicant or transmitted by the receiving Office or the International Preliminary Examining Authority reaches the International Bureau after the completion of the technical preparations for international publication.
90bis.4 Withdrawal of the Demand or of Elections (a) The applicant may withdraw the demand or any or all elec- tions at any time prior to the expiration of 30 months from the priority date.

(b) Withdrawal shall be effective upon receipt of a notice ad- (c) dressed by the applicant to the International Bureau.
If the notice of withdrawal is submitted by the applicant to the International Preliminary Examining Authority, that Author- ity shall mark the date of receipt on the notice and transmit it promptly to the International Bureau.

The notice shall be con- sidered to have been submitted to the International Bureau on the date marked.

90bis.5 Signature (a) Any notice of withdrawal referred to in Rules 90bis.1 to 90bis.4 shall, subject to paragraph (b), be signed by the applicant.
Where one of the applicants is considered to be the common representative under Rule 90.2(b), such notice shall, subject to paragraph (b), require the signature of all the applicants.
(b) Where two or more applicants file an international application which designates a State whose national law requires that na- tional applications be filed by the inventor and where an appli- cant for that designated State who is an inventor could not be 302 Reprinted as at 1 January 2011 Patents Act 1953 Part F—continued Rule 90bis—continued found or reached after diligent effort, a notice of withdrawal referred to in Rules 90bis.1 to 90bis.4 need not be signed by that applicant (“the applicant concerned”) if it is signed by at least one applicant and (i) a statement is furnished explaining, to the satisfaction of the receiving Office, the International Bureau or the International Preliminary Examining Authority, as the case may be, the lack of signature of the applicant con- cerned, or in the case of a notice of withdrawal referred to in Rule 90bis.1(b), 90bis.2(d), or 90bis.3(c), the applicant con- cerned did not sign the request but the requirements of Rule 4.15(b) were complied with, or in the case of a notice of withdrawal referred to in Rule 90bis.4(b), the applicant concerned did not sign the de- mand but the requirements of Rule 53.8(b) were com- plied with, or did not sign the later election concerned but the requirements of Rule 56.1(c) were complied with.
(ii) (iii) 90bis.6 Effect of Withdrawal (a) Withdrawal under Rule 90bis of the international application, any designation, any priority claim, the demand or any election shall have no effect in any designated or elected Office where the processing or examination of the international application has already started under Article 23(2) or Article 40(2).
(b) Where the international application is withdrawn under Rule 90bis.1, the international processing of the international appli- cation shall be discontinued.

(c) Where the demand or all elections are withdrawn under Rule 90bis.4, the processing of the international application by the International Preliminary Examining Authority shall be dis- continued.
303 Patents Act 1953 Reprinted as at 1 January 2011 Part F—continued Rule 90bis—continued 90bis.7 Faculty under Article 37(4)(b) (a) Any Contracting State whose national law provides for what is described in the second part of Article 37(4)(b) shall notify the International Bureau in writing.
The notification referred to in paragraph (a) shall be promptly published by the International Bureau in the Gazette, and shall have effect in respect of international applications filed more than one month after the date of such publication.

Rule 91—Obvious Errors in Documents 91.1 Rectification (a) Subject to paragraphs (b) to (gquater), obvious errors in the international application or other papers submitted by the ap- plicant may be rectified.
Errors which are due to the fact that something other than what was obviously intended was written in the international appli- cation or other paper shall be regarded as obvious errors.

The rectification itself shall be obvious in the sense that anyone would immediately realize that nothing else could have been intended than what is offered as rectification.
Omissions of entire elements or sheets of the international application, even if clearly resulting from inattention, at the stage, for example, of copying or assembling sheets, shall not be rectifiable.

Rectification may be made on the request of the applicant.

The authority having discovered what appears to be an obvious error may invite the applicant to present a request for rectifica- tion as provided in paragraphs (e) to (gquater).
Rule 26.4(a) shall apply mutatis mutandis to the manner in which rectifica- tions shall be requested.
No rectification shall be made except with the express author- ization: (i) of the receiving Office if the error is in the request, (b) (b) (c) (d) (e) 304 Reprinted as at 1 January 2011 Patents Act 1953 Part F—continued Rule 91—continued (f) (g) (ii) (iii) (iv) of the International Searching Authority if the error is in any part of the international application other than the request or in any paper submitted to that Authority, of the International Preliminary Examining Authority if the error is in any part of the international application other than the request or in any paper submitted to that Authority, and of the International Bureau if the error is in any paper, other than the international application or amendments or corrections to that application, submitted to the Inter- national Bureau.
Any authority which authorizes or refuses any rectification shall promptly notify the applicant of the authorization or re- fusal and, in the case of refusal, of the reasons therefor.

The authority which authorizes a rectification shall promptly notify the International Bureau accordingly.
Where the authorization of the rectification was refused, the International Bureau shall, upon request made by the applicant prior to the time relevant under paragraph (gbis), (gter) or (gquater) and subject to the payment of a special fee whose amount shall be fixed in the Administrative Instructions, publish the request for rectifica- tion together with the international application.
A copy of the request for rectification shall be included in the communica- tion under Article 20 where a copy of the pamphlet is not used for that communication or where the international application is not published by virtue of Article 64(3).
The authorization for rectification referred to in paragraph (e) shall, subject to paragraphs (gbis), (gter) and (gquater), be effective: (i) where it is given by the receiving Office or by the Inter- national Searching Authority, if its notification to the International Bureau reaches that Bureau before the ex- piration of 17 months from the priority date; (ii) where it is given by the International Preliminary Exam- ining Authority, if it is given before the establishment of the international preliminary examination report; 305 Patents Act 1953 Reprinted as at 1 January 2011 Part F—continued Rule 91—continued (iii) where it is given by the International Bureau, if it is given before the expiration of 17 months from the pri- ority date.
(gbis) If the notification made under paragraph (g)(i) reaches the International Bureau, or if the rectification made under para- graph (g)(iii) is authorized by the International Bureau, after the expiration of 17 months from the priority date but before the technical preparations for international publication have been completed, the authorization shall be effective and the rectification shall be incorporated in the said publication.
(gter) Where the applicant has asked the International Bureau to publish his international application before the expiration of 18 months from the priority date, any notification made under paragraph (g)(i) must reach, and any rectification made under paragraph (g)(iii) must be authorized by, the International Bu- reau, in order for the authorization to be effective, not later than at the time of the completion of the technical preparations for international publication.
(gquater) Where the international application is not published by virtue of Article 64(3), any notification made under paragraph (g)(i) must reach, and any rectification made under paragraph (g)(iii) must be authorized by, the International Bureau, in order for the authorization to be effective, not later than at the time of the communication of the international application under Article 20.
Rule 92—Correspondence 92.1 Need for Letter and for Signature (a) Any paper submitted by the applicant in the course of the inter- national procedure provided for in the Treaty and these Regu- lations, other than the international application itself, shall, if not itself in the form of a letter, be accompanied by a let- ter identifying the international application to which it relates.

The letter shall be signed by the applicant.


306 Reprinted as at 1 January 2011 Patents Act 1953 Part F—continued Rule 92—continued (b) If the requirements provided for in paragraph (a) are not com- plied with, the applicant shall be informed as to the non-com- pliance and invited to remedy the omission within a time limit fixed in the invitation.
The time limit so fixed shall be reason- able in the circumstances; even where the time limit so fixed expires later than the time limit applying to the furnishing of the paper (or even if the latter time limit has already expired), it shall not be less than 10 days and not more than one month from the mailing of the invitation.
If the omission is remedied within the time limit fixed in the invitation, the omission shall be disregarded; otherwise, the applicant shall be informed that the paper has been disregarded.

(c) Where non-compliance with the requirements provided for in paragraph (a) has been overlooked and the paper taken into ac- count in the international procedure, the non-compliance shall be disregarded.
92.2 Languages (a) Subject to Rules 55.1 and 66.9 and to paragraph (b) of this Rule, any letter or document submitted by the applicant to the International Searching Authority or the International Prelim- inary Examining Authority shall be in the same language as the international application to which it relates.

Where the inter- national application has been translated under Rule 12.1(c), the language of such translation shall be used.
(b) Any letter from the applicant to the International Searching Authority or the International Preliminary Examining Author- ity may be in a language other than that of the international application, provided the said Authority authorizes the use of such language.

[Deleted] (c) (d) Any letter from the applicant to the International Bureau shall (e) be in English or French.

Any letter of notification from the International Bureau to the applicant or to any national Office shall be in English or French.
307 Patents Act 1953 Reprinted as at 1 January 2011 Part F—continued Rule 92—continued 92.3 Mailings by National Offices and Intergovernmental Organizations Any document or letter emanating from or transmitted by a national Office or an intergovernmental organization and constituting an event from the date of which any time limit under the Treaty or these Regu- lations commences to run shall be sent by air mail, provided that sur- face mail may be used instead of air mail in cases where surface mail normally arrives at its destination within two days from mailing or where air mail service is not available.
92.4 Use of Telegraph, Teleprinter, Facsimile Machine, Etc.

(a) A document making up the international application, and any later document or correspondence relating thereto, may, not- withstanding the provisions of Rules 11.14 and 92.1(a), but subject to paragraph (h), be transmitted, to the extent feasi- ble, by telegraph, teleprinter, facsimile machine or other like means of communication producing a printed or written docu- ment.
(b) A signature appearing on a document transmitted by facsimile machine shall be recognized for the purposes of the Treaty and these Regulations as a proper signature.
(c) Where the applicant has attempted to transmit a document by any of the means referred to in paragraph (a) but part or all of the received document is illegible or part of the document is not received, the document shall be treated as not having been received to the extent that the received document is illegible or that the attempted transmission failed.

The national Office or intergovernmental organization shall promptly notify the applicant accordingly.
(d) Any national Office or intergovernmental organization may re- quire that the original of any document transmitted by any of the means referred to in paragraph (a) and an accompanying letter identifying that earlier transmission be furnished within 14 days from the date of the transmission, provided that such requirement has been notified to the International Bureau and the International Bureau has published information thereon in 308 Reprinted as at 1 January 2011 Patents Act 1953 Part F—continued Rule 92—continued the Gazette.
The notification shall specify whether such re- quirement concerns all or only certain kinds of documents.
(e) Where the applicant fails to furnish the original of a document as required under paragraph (d), the national Office or inter- governmental organization concerned may, depending on the kind of document transmitted and having regard to Rules 11 and 26.3, (i) (ii) waive the requirement under paragraph (d), or invite the applicant to furnish, within a time limit which shall be reasonable under the circumstances and shall be fixed in the invitation, the original of the document transmitted, provided that, where the document transmitted contains de- fects, or shows that the original contains defects, in respect of which the national Office or intergovernmental organization may issue an invitation to correct, that Office or organization may issue such an invitation in addition to, or instead of, pro- ceeding under item (i) or (ii).
(f) Where the furnishing of the original of a document is not re- quired under paragraph (d) but the national Office or intergov- ernmental organization considers it necessary to receive the original of the said document, it may issue an invitation as provided for under paragraph (e)(ii).
If the applicant fails to comply with an invitation under para- graph (e)(ii) or (f): (i) where the document concerned is the international ap- plication, the latter shall be considered withdrawn and the receiving Office shall so declare; (g) (ii) where the document concerned is a document subse- quent to the international application, the document shall be considered as not having been submitted.
(h) No national Office or intergovernmental organization shall be obliged to receive any document submitted by a means re- ferred to in paragraph (a) unless it has notified the International Bureau that it is prepared to receive such a document by that means and the International Bureau has published information thereon in the Gazette.
309 Patents Act 1953 Part F—continued Reprinted as at 1 January 2011 Rule 92bis—Recording of Changes in Certain Indications in the Request or the Demand 92bis.1 Recording of Changes by the International Bureau (a) The International Bureau shall, on the request of the applicant or the receiving Office, record changes in the following indi- cations appearing in the request or demand: (i) person, name, residence, nationality or address of the applicant, person, name or address of the agent, the common rep- resentative or the inventor.
(ii) (b) The International Bureau shall not record the requested change if the request for recording is received by it after the expiration: of the time limit referred to in Article 22(1), where Art- (i) icle 39(1) is not applicable with respect to any Contract- ing State; of the time limit referred to in Article 39(1)(a), where Article 39(1) is applicable with respect to at least one Contracting State.
(ii) Rule 93—Keeping of Records and Files 93.1 The Receiving Office Each receiving Office shall keep the records relating to each inter- national application or purported international application, including the home copy, for at least 10 years from the international filing date or, where no international filing date is accorded, from the date of receipt.
93.2 The International Bureau (a) The International Bureau shall keep the file, including the record copy, of any international application for at least 30 years from the date of receipt of the record copy.

The basic records of the International Bureau shall be kept indefinitely.
(b) 310 Reprinted as at 1 January 2011 Patents Act 1953 Part F—continued Rule 93—continued 93.3 The International Searching and Preliminary Examining Authorities Each International Searching Authority and each International Pre- liminary Examining Authority shall keep the file of each international application it receives for at least 10 years from the international fil- ing date.
93.4 Reproductions For the purposes of this Rule, records, copies and files shall also mean photograhic reproductions of records, copies, and files, what- ever may be the form of such reproductions (microfilms or other).
Rule 94—Furnishing of Copies by the International Bureau and the International Preliminary Examining Authority 94.1 Obligation To Furnish At the request of the applicant or any person authorized by the ap- plicant, the International Bureau and the International Preliminary Examining Authority shall furnish, subject to reimbursement of the cost of the service, copies of any document contained in the file of the applicant’s international application or purported international appli- cation.
Rule 95—Availability of Translations 95.1 Furnishing of Copies of Translations (a) At the request of the International Bureau, any designated or elected Office shall provide it with a copy of the translation of the international application furnished by the applicant to that Office.

The International Bureau may, upon request and subject to re- imbursement of the cost, furnish to any person copies of the translations received under paragraph (a).
(b) 311 Patents Act 1953 Part F—continued Reprinted as at 1 January 2011 Rule 96—The Schedule of Fees 96.1 Schedule of Fees Annexed to Regulations The amounts of the fees referred to in Rules 15 and 57 shall be ex- pressed in Swiss currency.

They shall be specified in the Schedule of Fees which is annexed to these Regulations and forms an integral part thereof.
Amounts 762 Swiss francs 762 Swiss francs plus 15 Swiss francs for each sheet in ex- cess of 30 sheets 185 Swiss francs per designation, provided that any designation made under Rule 4.9(a) in excess of 10 shall not require the payment of a designation fee 185 Swiss francs per designation 50% of the sum of the designation fees payable under item 2(b) 233 Swiss francs.

Fees 1.

2.
Fees 1.

2.

Basic Fee: (Rule 15.2(a)) (a) (b) if the international applica- tion contains not more than 30 sheets if the international applica- tion contains more than 30 sheets Designation Fee: (Rule 15.2(a)) (a) for designations made under Rule 4.9(a) (b) for designations made under Rule 4.9(b) and confirmed under Rule 4.9(c) 3.

4.
4.

Confirmation Fee: (Rule 15.5(a)) Handling Fee: (Rule 57.2(a)) 312 Reprinted as at 1 January 2011 Patents Act 1953 Patents Amendment Act 1994 Public Act Date of assent Commencement 1994 No 122 9 December 1994 see section 1(2) 1 (1) (2) Short Title and commencement This Act may be cited as the Patents Amendment Act 1994, and shall be read together with and deemed part of the Patents Act 1953 (hereinafter referred to as “the principal Act”).
This Act shall come into force on a date to be appointed by the Governor-General by Order in Council; and 1 or more orders may be made bringing different provisions into force on dif- ferent dates.

Section 1(2): this Act brought into force, on 1 January 1995, by the Patents Amendment Act Commencement Order 1994 (SR 1994/302).
Transitional provisions 17 (1) Nothing in this Act applies to or affects— (a) (b) (c) (d) (e) (f) any proceedings for revocation of a patent commenced before the commencement of this Act: any proceedings for infringement of a patent com- menced before the commencement of this Act: any existing licences or applications for licences of right under section 46 of the principal Act in existence or made before the commencement of this Act: any application for the extension of the term of a patent made before the commencement of this Act: any reference to the court under section 57 of the prin- cipal Act made before the commencement of this Act: subject to subsection (2), any application for a patent in respect of which a complete specification has been filed before the commencement of this Act,— and any such proceedings, licences, applications, or references to the court shall continue as if this Act had not been enacted.
(2) Where, in respect of an application for a patent, a complete specification has not been advertised under section 20(2) of the principal Act before the commencement of this Act, the application must be determined in accordance with the princi- 313 Patents Act 1953 Reprinted as at 1 January 2011 pal Act (as amended by this Act) if the applicant gives notice to the Commissioner in accordance with subsection (3) of this section, requesting that the application be determined in ac- cordance with the principal Act (as so amended).
(3) Any notice under subsection (2)— (a) must be in the prescribed form: (b) must be accompanied by the prescribed fee: (c) must be given on or before the date falling 6 months after the commencement of this Act, or on or before the date of grant of the patent, whichever occurs first.
18 (1) Term of existing patents Subject to subsections (2) and (3), the term of every patent that has not expired before the commencement of this Act shall, notwithstanding anything contained in the principal Act, be deemed to be 20 years from the date of the patent.

(2) Nothing in subsection (1) applies to a patent the term of which has, before the commencement of this Act, been extended by the court or the Commissioner for a period exceeding 20 years from the date of the patent.
(3) Nothing in subsection (1) applies to a patent the term of which is extended by the court or the Commissioner for a period ex- ceeding 20 years from the date of the patent pursuant to an application for the extension of the term of the patent made before the commencement of this Act.
314 Reprinted as at 1 January 2011 Patents Act 1953 Notes Contents 1 2 3 4 General Status of reprints How reprints are prepared Changes made under section 17C of the Acts and Regulations Publication Act 1989 List of amendments incorporated in this reprint (most recent first) 5 Notes 1 2 3 General This is a reprint of the Patents Act 1953.

The reprint incorporates all the amendments to the Act as at 1 January 2011, as specified in the list of amendments at the end of these notes.
Relevant provisions of any amending enactments that contain transitional, savings, or application provisions that cannot be compiled in the reprint are also included, after the principal enactment, in chronological order.

For more information, see http://www.pco.parliament.govt.nz/reprints/.
Status of reprints Under section 16D of the Acts and Regulations Publication Act 1989, reprints are presumed to correctly state, as at the date of the reprint, the law enacted by the principal enactment and by the amendments to that enactment.

This presumption applies even though editorial changes authorised by section 17C of the Acts and Regulations Publication Act 1989 have been made in the reprint.
This presumption may be rebutted by producing the official volumes of statutes or statutory regulations in which the principal enactment and its amendments are contained.

How reprints are prepared editorial A number in the preparation of enacting words are of conventions reprints.

not included are For example, in Acts, followed the and 315 Notes Patents Act 1953 Reprinted as at 1 January 2011 that are repealed or revoked are omitted.
provisions For a detailed list of see http://www.pco.parliament.govt.nz/editorial-conventions/ or Part 8 of the Tables of New Zealand Acts and Ordinances and Statutory Regulations and Deemed Regulations in Force.
the editorial conventions, 4 Changes made under section 17C of the Acts and Regulations Publication Act 1989 Section 17C of the Acts and Regulations Publication Act 1989 authorises the making of editorial changes in a reprint as set out in sections 17D and 17E of that Act so that, to the extent permitted, the format and style of the reprinted enactment is consistent with current legislative drafting practice.

Changes that would alter the effect of the legislation are not permitted.
A new format of legislation was introduced on 1 January 2000.

Changes to legislative drafting style have also been made since 1997, and are ongoing.

To the extent permitted by section 17C of the Acts and Regulations Publication Act 1989, all legislation reprinted after 1 January 2000 is in the new format for legislation and reflects current drafting practice at the time of the reprint.
In outline, the editorial changes made in reprints under the authority of section 17C of the Acts and Regulations Publication Act 1989 are set out below, and they have been applied, where relevant, in the preparation of this reprint: • omission of unnecessary referential words (such as “of this section” and “of this Act”) typeface and type size (Times Roman, generally in 11.5 point) layout of provisions, including: • • indentation position of section headings (eg, the number and heading now appear above the section) format of definitions (eg, the defined term now appears in bold type, without quotation marks) format of dates (eg, a date formerly expressed as “the 1st day of January 1999” is now expressed as “1 January 1999”) • • • • 316 Reprinted as at 1 January 2011 Patents Act 1953 Notes • • • • • • • position of the date of assent (it now appears on the front page of each Act) punctuation (eg, colons are not used after definitions) Parts numbered with roman numerals are replaced with arabic numerals, and all cross-references are changed accordingly case and appearance of letters and words, including: • followed by small capital format of headings (eg, headings where each word formerly appeared with an initial capital letter letters are amended so that the heading appears in bold, with only the first word (and any proper nouns) appearing with an initial capital letter) small capital letters in section and subsection references are now capital letters • schedules are renumbered (eg, Schedule 1 replaces First Schedule), and all cross-references are changed accordingly running heads (the information that appears at the top of each page) format of amendments, and schedules of are rearranged into alphabetical order, chronological).
two-column schedules of consequential they rather than repeals (eg, 5 List of amendments incorporated in this reprint (most recent first) Limitation Act 2010 (2010 No 110): section 58 Lawyers and Conveyancers Act 2006 (2006 No 1): section 348 Patents Amendment Act 2002 (2002 No 72) Civil Defence Emergency Management Act 2002 (2002 No 33): section 117 Personal Property Securities Act 1999 (1999 No 126): section 191(1) Patents Amendment Act 1999 (1999 No 119) Estate Duty Repeal Act 1999 (1999 No 64): section 15(1) Patents Amendment Act 1996 (1996 No 139) Patents Amendment Act 1994 (1994 No 122) Patents Amendment Act 1992 (1992 No 81) Regulations (Disallowance) Act 1989 (1989 No 143): section 11 Public Finance Act 1989 (1989 No 44): section 86(1) 317 Notes Patents Act 1953 Reprinted as at 1 January 2011 Trade and Industry Act Repeal Act 1988 (1988 No 156): section 4(1) State Sector Act 1988 (1988 No 20): section 88(2) Flags, Emblems, and Names Protection Act 1981 (1981 No 47): section 27(1) Shop Trading Hours Amendment Act 1980 (1980 No 36): section 5(3) Judicature Amendment Act 1979 (1979 No 124): section 12 Seal of New Zealand Act 1977 (1977 No 1): section 8 Tokelau Amendment Act 1976 (1976 No 122): section 3(8) Patents Amendment Act 1976 (1976 No 112) Patents Amendment Act 1972 (1972 No 91) Administration Act 1969 (1969 No 52): section 84(1) Crimes Act 1961 (1961 No 43): sections 411(1), 412(2) Summary Proceedings Act 1957 (1957 No 87): section 214(1) Patents Act Commencement Order 1954 (SR 1954/220) 12 318 Wellington, New Zealand: Published under the authority of the New Zealand Government—2012