2014/275
Patents
Regulations
2014
Jerry
Mateparae,
Governor
-
General
Order
in
Council
At
W
ellington
this
1
1th
day
of
August
2014
Present:
The
Right
Hon
John
Key
presiding
in
Council
Pursuant
to
subpart
5
of
Part
5
of
the
Patents
Act
2013,
His
Excel-
lency
the
Governor
-
General,
acting
on
the
advice
and
with
the
con-
sent
of
the
Executive
Council,
makes
the
following
regulations.
Contents
Page
1
T
itle
10
2
Commencement
10
3
Interpretation
10
4
Application
12
Part
1
Pr
eliminary
Subpart
1—
Fees
and
penalties
General
pr
ovisions
5
Amount
of
fees
and
penalties
12
6
T
ime
of
payment
of
fees
and
penalties
13
7
Form
of
payment
of
fees
and
penalties
13
1
Patents
Regulations
2014
2014/275
Maintenance
and
r
enewal
fees
8
When
maintenance
and
renewal
fees
become
due
13
9
Periods
within
which
maintenance
fees
must
be
paid
13
10
Period
within
which
renewal
fees
must
be
paid
14
1
1
Certificate
of
payment
of
maintenance
and
renewal
fees
15
Subpart
2—
Forms
and
documents
Use
of
case
management
facility
12
Certain
information
or
documents
must
be
given
electronically
through
case
management
facility
15
13
Case
management
facility
is
prescribed
electronic
delivery
method
for
certain
purposes
16
14
Information
that
must
be
given
when
case
management
facility
first
used
16
15
Number
of
patent
application
or
patent
must
be
given
when
all
information
or
documents
filed
under
Act
or
regulations
17
16
Information
or
documents
may
be
given
by
alternative
delivery
method
17
17
Electronic
documents
17
Filing
18
Number
of
copies
18
19
Document
filed
when
received
in
proper
form
18
20
Filing
date
of
document
if
not
received
on
working
day
18
Requir
ements
for
documents
21
Documents
must
be
in
English
or
Māori
18
22
Signatures
19
Requir
ements
for
complete
specifications
23
Form
and
size
of
complete
specifications
19
24
Numbering
of
pages
of
complete
specifications
20
25
T
ext
20
Requir
ements
for
drawings
in
complete
specifications
26
Form
and
size
of
drawings
20
27
Arrangement
of
drawings
21
28
Preparation
of
drawings
21
29
Descriptive
matter
22
30
Alterations
23
31
Preparation
of
line
drawings
23
2
2014/275
Patents
Regulations
2014
Requir
ements
for
terminology
and
signs
in
complete
specifications
32
T
erminology
and
signs
24
Abstracts
33
Form
and
content
of
abstracts
24
Subpart
3—
Addresses
34
Address
for
service
must
be
given
25
35
Communication
address
must
be
given
25
36
Change
of
address
notice
must
be
given
25
37
Suf
ficiency
of
address
26
Subpart
4—
Agents
38
Agent
may
act
on
behalf
of
principal
for
purposes
of
regulations
26
39
Commissioner
may
give
notices
to
agent
26
40
Commissioner
may
require
principal
of
agent
to
file
authority
with
Commissioner
in
certain
cases
27
41
Commissioner
must
refuse
to
recognise
certain
persons
as
agent
28
42
Commissioner
must
notify
refusal
to
recognise
person
as
agent
28
43
Notice
to
Commissioner
of
revocation
or
alteration
of
authority
28
44
Notice
of
revocation
of
authority
may
be
given
by
agent
29
Subpart
5—
Interpretation
45
Specified
exhibitions
29
Part
2
Patentable
inventions
and
patent
rights
46
Form
of
patent
under
section
19
of
Act
29
47
Request
for
directions
to
co-owners
under
section
26(1)
of
Act
30
48
Request
for
directions
to
co-owners
under
section
26(3)
of
Act
30
49
Request
for
determination
of
dispute
under
section
28
of
Act
30
3
Patents
Regulations
2014
2014/275
Part
3
Pr
ocess
for
obtaining
grant
of
patent
and
other
matters
Subpart
1—
Patent
applications
and
specifications
Patent
applications
50
Application
for
patent
32
51
Requests
for
post-dating
32
52
Divisional
applications
32
53
Personal
representative
must
establish
right
to
be
granted
patent
33
Specifications
54
Requirements
for
provisional
specification
34
55
Requirements
for
complete
specification
34
56
Extension
of
period
for
filing
complete
specification
34
57
Cognate
applications
34
58
Amendment
of
complete
specification
before
acceptance
35
Deposit
r
equir
ements
for
micr
o-or
ganisms
59
Deposit
requirements
for
micro-or
ganisms
35
60
Deposit
requirements
treated
as
satisfied
in
certain
circumstances
36
Subpart
2—
T
reaty
applications
T
r
eaty
applications
befor
e
entry
to
national
phase
61
Amendments
to
documents
forming
part
of
complete
specification
36
62
T
ime
limit
specified
for
sections
51
and
52
of
Act
36
T
r
eaty
applications
on
entry
to
national
phase
63
Application
for
entry
to
national
phase
36
64
Request
for
examination
of
T
reaty
application
36
65
English
translation
of
documents
as
required
37
Fees
for
international
applications
and
T
r
eaty
applications
66
Fees
payable
for
international
applications
and
T
reaty
applications
37
67
T
rust
fund
37
Subpart
3—
Convention
applications
68
Convention
applicants
may
make
convention
applications
38
69
Convention
application
for
patent
38
70
Evidence
in
support
of
convention
applications
38
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Patents
Regulations
2014
Subpart
4—
Rest
of
process
for
obtaining
grant
of
patent
and
other
matters
Examination
71
Manner
of
making
request
for
examination
of
patent
application
39
72
Grounds
on
which
Commissioner
may
direct
applicant
to
request
examination
of
patent
application
39
73
Period
within
which
applicant
may
be
directed
to
request
examination
40
74
Manner
in
which
person
may
require
Commissioner
to
give
direction
40
75
Commissioner
may
refuse
to
proceed
with
application
or
require
application
or
specification
to
be
amended
40
76
Applications
must
be
examined
in
order
in
which
request
for
examination
is
made
40
77
Examination
may
be
advanced
out
of
turn
40
78
Deadlines
by
which
applicants
must
act
if
Commissioner
refuses
to
proceed
with
application,
etc
41
79
Duty
to
inform
Commissioner
of
search
results
41
Acceptance
and
publication
80
T
ime
for
putting
application
in
order
for
acceptance
42
81
Manner
of
filing
notice
of
entitlement
before
acceptance
42
82
Acceptance
of
complete
specification
42
83
Applicant
may
request
Commissioner
to
postpone
acceptance
42
84
Notice
that
complete
specification
open
to
public
inspection
following
request
by
applicant
43
85
Documents
open
to
public
inspection
43
86
T
reaty
application
documents
open
for
public
inspection
43
Amendment
of
specifications
after
acceptance
87
Amendment
of
specification
after
acceptance
with
leave
of
Commissioner
44
88
Commissioner
must
consider
request
for
leave
to
amend
complete
specification
44
89
Requirements
for
notice
of
opposition
to
proposed
amendment
45
Assertions
by
thir
d
parties
90
Assertions
by
third
parties
on
novelty
and
inventive
step
46
91
Manner
in
which
Commissioner
must
consider
and
deal
with
notice
of
assertion
under
section
90
of
Act
46
5
Patents
Regulations
2014
2014/275
Opposition
to
grant
of
patent
92
Matters
that
must
be
included
in
notice
of
opposition
47
93
Period
within
which
notice
of
opposition
may
be
filed
47
94
Counter
-statement
to
notice
of
opposition
47
Re-examination
after
acceptance
95
Requests
for
re-examination
48
96
Commissioner
must
give
notice
of
re-examination
requests
49
97
Re-examination
reports
and
amendment
of
complete
specification
49
Grant
of
patent
98
Circumstances
in
which
grant
of
patent
may
be
postponed
49
99
Amendment
of
patent
under
section
105
of
Act
49
Patents
of
addition
100
Application
for
patent
of
addition
50
101
Commissioner
may
revoke
patent
for
improvement
or
modification
and
grant
patent
of
addition
50
Revocation
of
patents
102
Application
to
Commissioner
for
revocation
of
patent
50
103
Counter
-statement
to
application
and
evidence
for
revocation
of
patent
51
104
Procedure
if
no
counter
-statement
to
application
for
revocation
of
patent
is
filed
51
105
Refusal
of
applications
for
revocation
of
patent
52
Surr
ender
of
patents
106
Notice
of
of
fer
to
surrender
patent
53
107
Opposition
to
surrender
of
patent
53
108
Patentee
must
file
counter
-statement
53
109
Filing
of
evidence
54
Restoration
of
lapsed
patents
1
10
Manner
in
which
request
to
restore
lapsed
patent
may
be
made
54
1
1
1
When
request
for
restoration
of
patent
may
be
made
54
1
12
Opposition
to
restoration
of
patent
55
1
13
Patentee
must
file
counter
-statement
55
1
14
Filing
of
evidence
56
1
15
Protection
of
persons
who
avail
themselves
of
invention
if
Commissioner
restores
lapsed
patent
56
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Patents
Regulations
2014
Restoration
of
patent
applications
1
16
Request
for
restoration
of
void
or
abandoned
patent
applications
57
1
17
When
request
for
restoration
of
application
may
be
made
57
1
18
Opposition
to
restoration
of
patent
application
58
1
19
Applicant
must
file
counter
-statement
59
120
Filing
of
evidence
59
121
Protection
of
persons
who
avail
themselves
of
invention
if
Commissioner
restores
patent
application
59
Miscellaneous
pr
ovisions
122
Request
for
direction
under
section
129
of
Act
60
123
Request
for
directions
under
section
131
of
Act
61
Part
4
Infringement,
other
patent
pr
oceedings,
and
matters
affecting
patent
ownership
Registration
of
assignments,
licences,
and
other
inter
ests
in
patents
124
Application
under
section
165
of
Act
61
V
esting
of
patents
and
patent
applications
without
pr
obate
or
letters
of
administration
125
Application
to
vest
patent
or
patent
application
without
probate
or
letters
of
administration
62
Mention
of
inventor
in
patent,
specification,
and
patents
r
egister
126
Request
or
claim
under
section
190(1)
of
Act
to
be
mentioned
as
inventor
63
127
Application
for
certificate
under
section
193(1)
of
Act
concerning
mention
of
inventor
63
Part
5
Administrative
and
other
miscellaneous
pr
ovisions
in
Part
5
of
Act
Subpart
1—
Patents
register
and
other
information
on
patents
and
patent
applications
Patents
r
egister
128
Patents
register
must
record
grant
of
patents
64
129
Other
patents
information
that
must
be
entered
in
patents
register
64
130
Payment
of
renewal
fees
must
be
entered
in
patents
register
64
7
Patents
Regulations
2014
2014/275
Sear
ches
of
patents
r
egister
and
obtaining
patent
information
131
Search
of
patents
register
65
132
Information
concerning
patent
or
patent
application
that
may
be
requested
65
133
How
request
for
patent
information
and
certified
copies
must
be
made
66
Changes
to
patents
r
egister
and
other
official
documents
134
Request
to
alter
entries
on
patents
register
66
135
Notice
of
court
orders
must
be
given
for
entry
on
patents
register
66
136
Application
to
correct
other
persons’
mistakes
in
patents
register
,
etc
67
137
Opposition
to
proposed
correction
68
138
Applicant
must
file
counter
-statement
68
139
Filing
of
evidence
68
140
Opposition
to
Commissioner
-initiated
correction
69
141
Notice
of
application
to
court
to
rectify
patents
register
69
142
Notice
of
order
of
court
to
rectify
patents
register
69
Journal
and
other
publications
143
Particulars
of
patent
applications
that
must
be
published
70
Subpart
2—
Miscellaneous
provisions
Evidence
144
Form
of
evidence
70
Amendment
of
documents
145
Amendment
of
documents
70
Extensions
of
time
limits
146
Requirements
for
applying
and
granting
extensions
of
time
limits
under
section
231
of
Act
71
147
General
power
of
Commissioner
to
extend
time
limits
in
exceptional
circumstances
71
148
Ability
to
request
extension
under
other
regulations
must
be
exhausted
72
Miscellaneous
149
Power
of
Commissioner
to
waive
requirements
in
exceptional
circumstances
72
150
Power
to
waive
requirements
for
patent
applications
and
specifications
temporarily
72
8
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Patents
Regulations
2014
151
Maintenance
of
certain
records
73
Part
6
Pr
ocedural
and
evidential
r
equir
ements
for
pr
oceedings
befor
e
Commissioner
Pr
oceedings
to
which
this
Part
applies
152
Application
of
this
Part
73
Documents
filed
in
pr
oceedings
153
Extra
information
that
must
be
contained
in
documents
filed
in
proceedings
74
Hearing
befor
e
exer
cise
of
Commissioner
’
s
discr
etion
154
Hearing
before
exercise
of
Commissioner
’
s
discretion
75
Case
management
155
Commissioner
may
require
parties
to
attend
case
management
conference
75
156
Commissioner
may
give
directions
76
157
Parties
must
comply
with
Commissioner
’
s
directions
76
158
Non-compliance
with
Commissioner
’
s
directions
77
Halt
in
pr
oceedings
159
Commissioner
may
halt
proceeding
78
Consolidation
of
pr
oceedings
160
Commissioner
may
consolidate
proceedings
78
Extension
of
time
limits
in
pr
oceedings
161
Commissioner
may
extend
time
limits
in
proceedings
79
Evidence
162
Evidence
restricted
to
particulars
filed
80
Pr
ocedural
and
evidential
r
equir
ements
163
Supply
of
documents
for
use
of
Commissioner
80
164
Party
filing
documents
must
copy
documents
to
opposite
party
80
165
Evidence
out
of
time
81
166
Application
for
permission
to
file
evidence
out
of
time
81
167
Right
to
file
evidence
in
reply
if
evidence
in
chief
permitted
out
of
time
82
168
Evidence
from
another
proceeding
82
Hearings
169
Form
of
hearing
83
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Patents
Regulations
2014
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170
Commissioner
may
determine
form
of
hearing,
etc
83
171
Notice
of
hearing
by
appearance
84
172
Hearing
fee
84
173
V
enue
for
hearing
by
appearance
84
174
Conduct
of
hearing
by
appearance
85
Costs
175
Costs
85
Part
7
T
ransitional
pr
ovisions
176
Amendment
to
Patents
Regulations
1954
85
2A
Application
of
these
regulations
for
transitional
purposes
85
177
T
ransitional
provision
as
to
statutory
references
to
corresponding
matters
86
Schedule
86
Fees
and
penalties
Regulations
1
T
itle
These
regulations
are
the
Patents
Regulations
2014.
2
Commencement
These
regulations
come
into
force
on
13
September
2014.
3
Interpr
etation
(1)
In
these
regulations,
unless
the
context
otherwise
requires,—
Act
means
the
Patents
Act
2013
addr
ess
for
service
means
1
of
the
following
addresses
in
New
Zealand:
(a)
a
postal
address:
(b)
a
post
of
fice
box
or
document
exchange
box
agent
means
a
person—
(a)
who
is
a
patent
attorney
or
a
barrister
or
solicitor
(to
the
extent
that
the
barrister
or
solicitor
is
entitled
to
practise
in
matters
under
the
Act
or
these
regulations);
and
10
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Patents
Regulations
2014
r
3
(b)
who
is
authorised
by
the
person’
s
principal
(
X
)
to
act
for
X
in
any
proceeding
in
accordance
with
these
regula-
tions
or
to
take
any
step
on
X’
s
behalf
under
these
regu-
lations
anniversary
date
,
in
relation
to
a
maintenance
or
renewal
fee,
has
the
meaning
set
out
in
regulation
8
case
management
facility
means
the
case
management
facil-
ity
that
may
be
accessed
through
the
Commissioner
’
s
website
or
web
services
certificate
of
verification
means
a
statement—
(a)
that
a
document
to
which
the
statement
relates
is
a
true
and
complete
translation
of
the
accompanying
docu-
ment
to
the
best
of
the
knowledge
of
the
person
who
signs
the
statement;
and
(b)
that
is
dated
and
signed
communication
addr
ess
means
an
electronic
address
at
which
communications
may
be
received
from
the
case
man-
agement
facility
drawings
includes
line
drawings,
flow
sheets,
diagrams,
photographs,
and
other
digital
images
fee
means
a
fee
or
char
ge
payable
under
the
Act
or
these
regu-
lations
give
—
(a)
means
issue,
supply
,
produce,
provide,
file,
send,
serve,
or
give
in
any
other
way;
and
(b)
in
respect
of
information
or
documents
that
are
given
by
the
Commissioner
,
includes
to
make
the
information
or
document
accessible
to
the
relevant
person
through
the
case
management
facility
information
or
a
document
has
the
same
meaning
as
in
sec-
tion
229(6)
of
the
Act
national
phase
means
the
period
of
time
commencing
when
the
applicant
has
fulfilled
the
applicant’
s
obligations
under
Article
22(1)
or
39(1)(a)
of
the
Patent
Cooperation
T
reaty
(other
than
the
obligation
to
file
a
verified
translation)
pr
oceeding
means
a
proceeding
under
the
Act
or
these
regu-
lations
1
1
r
4
Patents
Regulations
2014
2014/275
verified
translation
means
a
translation
into
English
of
an
accompanying
document
that
has
a
certificate
of
verification
attached
working
day
means
a
day
of
the
week
other
than—
(a)
Saturday
,
Sunday
,
Good
Friday
,
Easter
Monday
,
Anzac
Day
,
the
Sovereign’
s
birthday
,
Labour
Day
,
and
W
ai-
tangi
Day;
and
(b)
the
anniversary
day
for
W
ellington;
and
(c)
a
day
in
the
period
that
commences
with
25
December
in
any
year
and
ends
with
2
January
in
the
following
year;
and
(d)
if
1
January
in
any
year
falls
on
a
Friday
,
the
following
Monday;
and
(e)
if
1
January
in
any
year
falls
on
a
Saturday
or
a
Sunday
,
the
following
Monday
and
T
uesday;
and
(f)
if
W
aitangi
Day
or
Anzac
Day
falls
on
a
Saturday
or
a
Sunday
,
the
following
Monday
.
(2)
An
example
used
in
these
regulations
has
the
following
status:
(a)
the
example
is
only
illustrative
of
the
provision
to
which
it
relates
and
does
not
limit
the
provision;
and
(b)
if
the
example
and
the
provision
to
which
it
relates
are
inconsistent,
the
provision
prevails.
Compare:
SR
1992/316
r
2
4
Application
(1)
These
regulations
apply
to
all
matters
under
the
Act.
(2)
T
o
avoid
doubt,
these
regulations
apply
to
a
T
reaty
application
after
it
enters
the
national
phase.
Part
1
Pr
eliminary
Subpart
1—
Fees
and
penalties
General
pr
ovisions
5
Amount
of
fees
and
penalties
(1)
The
fees
and
penalties
set
out
in
the
Schedule
are
payable
in
respect
of
the
matters
set
out
in
that
schedule.
12
2014/275
Patents
Regulations
2014
Part
1
r
9
(2)
The
fees
and
penalties
are
exclusive
of
goods
and
services
tax.
Compare:
SR
2003/187
r
167
6
T
ime
of
payment
of
fees
and
penalties
Fees
and
penalties
must
be
paid
at
the
time
of
making
an
appli-
cation
or
a
request,
or
on
giving
notice
or
filing
information
or
a
document,
in
respect
of
which
a
fee
or
penalty
is
payable,
un-
less
an
arrangement
acceptable
to
the
Commissioner
has
been
made
for
payment
at
another
time.
Compare:
SR
1954/21
1
r
4
7
Form
of
payment
of
fees
and
penalties
Fees
and
penalties
must
be
paid
by
electronic
means.
Maintenance
and
r
enewal
fees
8
When
maintenance
and
r
enewal
fees
become
due
(1)
On
the
fourth
and
each
subsequent
anniversary
of
the
filing
date
of
a
complete
specification
(the
anniversary
date
),
either
a
maintenance
fee
or
a
renewal
fee
becomes
due.
(2)
A
maintenance
fee
becomes
due
on
each
anniversary
date
that
occurs
before
the
date
on
which
the
patent
is
granted.
(3)
A
renewal
fee
becomes
due
on
each
anniversary
date,
until
the
19th
anniversary
date,
that
occurs
on
or
after
the
date
on
which
the
patent
is
granted.
Example
M
files
a
complete
specification
on
1
May
2016.
The
first
maintenance
fee
is
due
on
1
May
2020
and
then
on
each
1
May
after
that
until
the
patent
is
granted.
The
first
renewal
fee
is
due
on
the
first
1
May
after
the
patent
is
granted
and
then
on
each
1
May
after
that
until
the
19th
anniver-
sary
date.
9
Periods
within
which
maintenance
fees
must
be
paid
(1)
The
prescribed
periods
within
which
a
maintenance
fee
under
section
35(1)
of
the
Act
must
be
paid
are—
(a)
each
period
of
3
months
ending
with
the
close
of
the
anniversary
date;
and
13
Part
1
r
10
Patents
Regulations
2014
2014/275
(b)
if
the
fee
is
not
paid
within
that
period,
a
further
period
of
6
months
beginning
at
the
close
of
the
period
in
para-
graph
(a).
(2)
A
maintenance
fee
that
is
paid
before
the
anniversary
date
on
which
it
becomes
due
must
be
treated
as
a
renewal
fee
if
the
patent
is
granted
before
the
anniversary
date.
Example
M
files
a
complete
specification
on
1
May
2016.
The
first
maintenance
fee
is
due
on
1
May
2020.
That
first
maintenance
fee
must
be
paid
between
1
February
2020
and
1
November
2020.
The
fee
is
$100
if
M
pays
the
maintenance
fee
between
1
Febru-
ary
and
1
May
.
The
fee
is
$150
if
M
pays
the
maintenance
fee
between
2
May
and
1
November
(
see
the
Schedule
).
If
M
does
not
pay
the
maintenance
fee
by
1
May
in
any
year
,
the
Commissioner
may
postpone
the
grant
of
the
patent
(
see
regu-
lation
98(a)
).
M’
s
patent
application
is
treated
as
abandoned
under
section
35(2)
of
the
Act
if
M
does
not
pay
the
maintenance
fee
by
1
November
in
any
year
.
If
M
pays
a
maintenance
fee
between
1
February
and
30
April
in
any
year
and
M’
s
patent
is
granted
before
1
May
,
the
mainten-
ance
fee
is
treated
as
the
renewal
fee
for
that
anniversary
date.
If
M’
s
patent
is
granted
on
25
January
2022,
M’
s
last
maintenance
fee
is
the
one
that
must
be
paid
by
1
November
2021.
10
Period
within
which
r
enewal
fees
must
be
paid
The
prescribed
period
within
which
a
renewal
fee
under
sec-
tion
20(2)
of
the
Act
must
be
paid
is
each
period
of
3
months
ending
with
the
close
of
the
anniversary
date.
Example
M
files
a
complete
specification
on
1
May
2016
and
M’
s
patent
is
granted
on
25
January
2022.
The
first
renewal
fee
is
due
on
1
May
2022.
Each
year
after
that
until
the
19th
anniversary
date,
M
must
pay
the
renewal
fee
between
1
February
and
1
May
.
M
can
request
an
extension
of
the
period
for
paying
a
renewal
fee
under
section
21
of
the
Act,
on
payment
of
the
penalty
(
see
the
Schedule
).
14
2014/275
Patents
Regulations
2014
Part
1
r
12
Example
—continued
If
M
does
not
pay
by
1
May
(or
by
the
end
of
any
extended
period),
M’
s
patent
ceases
to
have
ef
fect
under
section
20(2)
of
the
Act.
The
final
renewal
fee
is
due
on
1
May
2035.
1
1
Certificate
of
payment
of
maintenance
and
r
enewal
fees
After
receipt
of
a
maintenance
fee
or
renewal
fee,
the
Com-
missioner
must
issue
a
certificate
to
the
applicant
or
patentee
(as
the
case
requires)
that
specifies—
(a)
the
number
of
the
patent
application
or
patent,
as
the
case
may
be;
and
(b)
the
date
on
which
the
fee
was
paid;
and
(c)
the
amount
of
the
fee
and
any
penalty
paid;
and
(d)
the
period
in
respect
of
which
the
fee
was
paid.
Subpart
2—
Forms
and
documents
Use
of
case
management
facility
12
Certain
information
or
documents
must
be
given
electr
onically
thr
ough
case
management
facility
(1)
Any
information
or
a
document
that
the
Act
or
these
regula-
tions
requires
to
be
given
to
or
by
the
Commissioner
in
the
prescribed
manner
must
be
given—
(a)
through
the
case
management
facility;
and
(b)
in
a
file
format
of
a
type
approved
by
the
Commissioner
.
(2)
Anything
that
is
given
using
the
case
management
facility
must
be
treated
as
having
been
received—
(a)
by
the
Commissioner
,
at
the
time
when
the
information
or
document
becomes
accessible
to
the
Commissioner
through
the
case
management
facility;
or
(b)
by
a
person
other
than
the
Commissioner
,
at
the
time
when
the
Commissioner
notifies
the
person
at
the
per
-
son’
s
communication
address
that
the
information
or
document
is
accessible
to
the
person
through
the
case
management
facility
.
15
Part
1
r
13
Patents
Regulations
2014
2014/275
(3)
Only
the
Commissioner
may
use
the
case
management
facility
to
give
information
or
a
document
to
a
person
other
than
the
Commissioner
.
Compare:
SR
1954/21
1
r
19
;
SR
2003/187
r
8
13
Case
management
facility
is
pr
escribed
electr
onic
delivery
method
for
certain
purposes
The
case
management
facility
is—
(a)
the
prescribed
electronic
delivery
method
for
the
pur
-
pose
of
section
229(2)
and
(3)(a)
of
the
Act;
and
(b)
not
a
prescribed
electronic
delivery
method
for
the
pur
-
pose
of
section
233(1)(c)
of
the
Act;
and
(c)
the
prescribed
manner
in
which
matters
described
in
section
243
of
the
Act
(for
example,
patent
applications,
specifications,
and
documents)
are
to
be
dealt
or
pro-
ceeded
with,
including
the
manner
in
which
communi-
cations
with
the
Commissioner
are
to
be
conducted
(to
the
extent
provided
by
the
case
management
facility).
14
Information
that
must
be
given
when
case
management
facility
first
used
The
following
information
must
be
given
to
the
Com-
missioner
,
to
the
extent
that
the
case
management
facility
requires,
when
any
information
or
a
document
is
first
given
to
the
Commissioner
in
respect
of
a
matter
through
the
case
management
facility:
(a)
the
full
name
of
the
person
giving
the
information
or
document
or
on
whose
behalf
the
information
or
docu-
ment
is
given,
for
example,
the
applicant
or
the
oppo-
nent)
(the
person
);
and
(b)
the
person’
s
address
for
service,
if
required
by
regula-
tion
34
;
and
(c)
the
person’
s
communication
address;
and
(d)
the
name
of
the
person’
s
agent,
if
an
agent
is
acting,
or
will
act,
for
the
person.
Compare:
SR
2003/187
r
5
16
2014/275
Patents
Regulations
2014
Part
1
r
17
15
Number
of
patent
application
or
patent
must
be
given
when
all
information
or
documents
filed
under
Act
or
r
egulations
All
information
or
documents
given
to
the
Commissioner
under
the
Act
or
these
regulations
must
contain,
or
be
filed
with,
the
number
of
the
patent
application
or
patent
(if
any)
that
is
the
subject
of
the
application,
request,
assertion,
op-
position,
or
other
matter
in
respect
of
which
the
information
or
document
is
given.
Compare:
SR
2003/187
r
5
16
Information
or
documents
may
be
given
by
alternative
delivery
method
(1)
Despite
regulation
12
,
the
Commissioner
may
allow
informa-
tion
or
documents
to
be
given
to
the
Commissioner
by
an
al-
ternative
delivery
method
listed
in
subclause
(2)
if
the
Com-
missioner
is
satisfied
that
a
person
is
unable
to
access
the
case
management
facility
because
of
any
exceptional
circum-
stances
beyond
the
person’
s
control.
(2)
Alternative
delivery
method
means
delivery
by
1
or
more
of
the
following
methods:
(a)
in
person:
(b)
post:
(c)
courier:
(d)
electronic
mail:
(e)
fax.
(3)
The
same
rules
that
apply
in
respect
of
service
of
notices
in
section
233
of
the
Act
apply
to
the
giving
of
information
and
documents
by
post,
electronic
mail,
or
fax.
Compare:
SR
2003/187
r
8(3)
17
Electr
onic
documents
T
o
avoid
doubt,
any
requirement
in
these
regulations
that
a
document
must
be
in
writing
is
satisfied
if
the
document
com-
plies
with
section
18
of
the
Electronic
T
ransactions
Act
2002.
Compare:
SR
2003/187
r
7
17
Part
1
r
18
Patents
Regulations
2014
2014/275
Filing
18
Number
of
copies
(1)
The
Commissioner
may
require
an
additional
copy
,
or
addi-
tional
copies,
of
any
information
or
document
that
is
filed.
(2)
The
requirement
in
subclause
(1)
may
include
a
requirement
for
1
or
more
documents
that
are
filed
electronically
to
be
pro-
vided
on
paper
or
in
a
dif
ferent
format.
19
Document
filed
when
r
eceived
in
pr
oper
form
(1)
A
document
is
filed
when
it
is
received
in
proper
form.
(2)
A
document
is
in
proper
form
only
if—
(a)
it
is
legible;
and
(b)
it
complies
with
the
requirements
of
the
Act
and
these
regulations;
and
(c)
it
is
accompanied
by
the
prescribed
fee
or
penalty
,
if
any
.
Compare:
SR
2003/187
r
9
20
Filing
date
of
document
if
not
r
eceived
on
working
day
If
a
document
is
received
on
a
day
that
is
not
a
working
day
,
the
document
is
treated
as
having
been
filed
on
the
next
working
day
.
Compare:
SR
2003/187
r
10
Requir
ements
for
documents
21
Documents
must
be
in
English
or
Māori
(1)
All
documents
filed
must
be
in
English
or
Māori.
(2)
However
,—
(a)
a
person
who
files
a
document
in
Māori
must,
if
required
by
the
Commissioner
,
file
a
verified
translation
within
the
time
that
the
Commissioner
specifies;
and
(b)
a
person
may
,
if
it
is
necessary
to
do
so,
file
a
document
that
is
not
in
English
or
Māori
if
the
document
is
ac-
companied
by
a
verified
translation.
Compare:
SR
2003/187
r
4
18
2014/275
Patents
Regulations
2014
Part
1
r
23
22
Signatur
es
(1)
In
the
following
cases,
a
document
must
be
signed
for
the
pur
-
poses
of
these
regulations
as
follows:
(a)
in
the
case
of
a
partnership,
the
document
must—
(i)
contain
the
full
names
of
all
partners,
unless
a
list
of
the
current
partners
has
been
filed;
and
(ii)
be
signed
by
a
qualified
partner
or
another
per
-
son
who
has,
to
the
Commissioner
’
s
satisfaction,
authority
to
sign:
(b)
in
the
case
of
a
body
corporate,
the
document
must
be
signed
by
a
director
or
senior
manager
who
has,
to
the
satisfaction
of
the
Commissioner
,
authority
to
sign:
(c)
in
the
case
of
an
unincorporated
association,
the
docu-
ment
may
be
signed
by
a
person
who
appears
to
the
Commissioner
to
be
duly
qualified.
(2)
T
o
avoid
doubt,
a
document
may
be
signed
in
accordance
with
section
22
of
the
Electronic
T
ransactions
Act
2002.
Compare:
SR
2003/187
r
6
Requir
ements
for
complete
specifications
23
Form
and
size
of
complete
specifications
(1)
All
complete
specifications
and
copies
of
complete
specifica-
tions,
except
drawings,
that
are
filed
must—
(a)
use
black
text
on
a
white
background;
and
(b)
be
capable
of
being
printed
legibly
on
A4
paper
.
(2)
The
minimum
mar
gins
of
all
complete
specifications,
except
drawings,
when
printed
on
A4
paper
are
as
follows:
(a)
top:
2
centimetres:
(b)
left
side:
2.5
centimetres:
(c)
right
side:
2
centimetres:
(d)
bottom:
2
centimetres.
(3)
All
mar
gins
of
a
complete
specification
must
be
blank
when
the
complete
specification
is
filed.
(4)
However
,
if
a
complete
specification
contains
line
numbers,
the
numbers
must
appear
in
the
right
half
of
the
left
-
side
mar
-
gin.
Compare:
SR
1954/21
1
r
10
19
Part
1
r
24
Patents
Regulations
2014
2014/275
24
Numbering
of
pages
of
complete
specifications
(1)
Each
page
of
a
complete
specification
must
be
numbered
con-
secutively
with
Arabic
numerals.
(2)
Page
numbers
must
be
at
the
top
or
bottom
of
each
page.
(3)
The
Commissioner
may
request
fresh
copies
of
a
complete
specification,
or
any
amended
page
or
pages
of
a
complete
specification,
as
specified
by
the
Commissioner
.
(4)
If
a
request
is
made
by
the
Commissioner
under
subclause
(3),
the
applicant
must
renumber
the
amended
page
or
pages
if
ne-
cessary
and
submit
a
copy
of
the
amended
complete
specifica-
tion
to
the
Commissioner
.
Compare:
SR
1954/21
1
r
12
;
Patent
Cooperation
T
reaty
Rules
r
1
1.7
25
T
ext
(1)
Graphic
symbols
and
characters,
and
chemical
or
mathemat-
ical
formulas,
may
be
written
or
drawn
by
hand,
provided
that—
(a)
they
are
clearly
written
or
drawn;
and
(b)
the
scale
and
distinctness
are
such
that
they
are
capable
of
being
reproduced
with
a
linear
reduction
in
size
to
two
-
thirds
of
their
original
size
in
a
way
that
would
en-
able
all
details
to
be
distinguished
without
dif
ficulty
.
(2)
The
text
on
all
pages
of
each
complete
specification,
except
drawings,
must
use
one
and
a
half
line
spacing
when
printed
on
A4
paper
.
(3)
The
size
of
the
text
in
each
complete
specification,
except
drawings,
must
be
such
that
the
capital
letters
are
at
least
0.28
centimetres
in
height
when
printed
on
A4
paper
.
Compare:
SR
1954/21
1
r
10(c)
;
Patent
Cooperation
T
reaty
Rules
r
1
1.9
Requir
ements
for
drawings
in
complete
specifications
26
Form
and
size
of
drawings
(1)
Drawings
must
be
made
on
a
white
background
and
be
capable
of
being
printed
on
A4
paper
.
(2)
The
minimum
mar
gins
on
each
page
of
drawings,
when
printed
on
A4
paper
,
are
as
follows:
(a)
top:
2.5
centimetres:
20
2014/275
Patents
Regulations
2014
Part
1
r
28
(b)
left
side:
2.5
centimetres:
(c)
right
side:
1.5
centimetres:
(d)
bottom:
1
centimetre.
(3)
All
mar
gins
must
be
blank
when
the
drawings
are
filed.
Compare:
SR
1954/21
1
r
31
;
Patent
Cooperation
T
reaty
Rules
r
1
1.6(c)
27
Arrangement
of
drawings
(1)
No
more
pages
than
are
necessary
may
be
used
for
any
draw-
ings.
(2)
Drawings
must
be
numbered
consecutively
in
Arabic
or
Roman
numerals
without
regard
to
the
number
of
pages
and
must,
as
far
as
possible,
be
arranged
in
numerical
order
.
(3)
If
a
page
contains
more
than
1
drawing,
the
drawings
must
be
separated
by
suf
ficient
space
to
keep
them
distinct.
(4)
An
exceptionally
lar
ge
drawing
may
be
continued
on
subse-
quent
pages.
(5)
If
drawings
on
2
or
more
pages
in
ef
fect
form
a
single
complete
drawing,
the
drawings
must
be
so
arranged
that
the
complete
drawing
can
be
assembled
without
concealing
any
part
of
an-
other
drawing.
Compare:
SR
1954/21
1
r
31
28
Pr
eparation
of
drawings
All
drawings
must
comply
with
the
following
requirements:
(a)
each
element
of
each
drawing
must
be
in
proper
pro-
portion
to
every
other
element
of
the
drawing,
except
where
the
use
of
a
dif
ferent
proportion
is
necessary
to
ensure
that
the
drawing
is
clear:
(b)
the
scale
of
drawings
must
be
suf
ficiently
lar
ge
to
show
the
invention
clearly
,
and
only
so
much
of
the
product
may
appear
as
ef
fects
this
purpose:
(c)
the
scale
of
drawings
and
their
distinctness
must
be
such
that
they
are
capable
of
being
reproduced
with
a
linear
reduction
in
size
to
two
-
thirds
of
their
original
size
in
a
way
that
would
enable
all
details
to
be
distinguished
without
dif
ficulty:
21
Part
1
r
29
Patents
Regulations
2014
2014/275
(d)
if
the
scale
is
given,
it
must
be
represented
graphically
and
not
denoted
by
words,
and
no
dimensions
may
be
marked
on
the
drawings:
(e)
all
numbers,
letters,
and
reference
lines
appearing
on
drawings
must
be
clear
and
simple
and
brackets,
circles,
and
inverted
commas
must
not
be
used
in
association
with
numbers
and
letters:
(f)
where
practicable,
the
drawings
must
appear
in
an
up-
right
position
in
relation
to
the
top
and
bottom
of
the
page
but,
if
they
cannot
be
shown
in
such
a
position,
they
must
be
placed
sideways
so
that
the
top
of
the
drawing
is
at
the
left
side
of
the
page:
(g)
subject
to
any
special
directions
of
the
Commissioner
in
any
particular
case,—
(i)
reference
letters
and
numerals,
and
index
letters
and
numerals
used
in
conjunction
with
reference
letters
or
numerals,
must
be
bold,
distinct,
and
not
less
than
0.32
centimetres
in
height
when
printed
on
A4
paper;
and
(ii)
the
same
letters
or
numerals
must
be
used
in
dif-
ferent
views
of
the
same
parts;
and
(iii)
if
the
reference
letters
or
numerals
are
shown
out-
side
the
parts
referred
to,
they
must
be
connected
with
those
parts
by
fine
lines:
(h)
any
lettering
on
drawings
must
use
the
Latin
alphabet
or
,
where
customary
,
the
Greek
alphabet:
(i)
any
reference
signs
used
in
drawings
must
be
referred
to
in
the
description.
Compare:
SR
1954/21
1
r
32(f)–(i)
;
Patent
Cooperation
T
reaty
Rules
r
1
1.13(c)–(e),
(g)–(h),
(l)
29
Descriptive
matter
(1)
Descriptive
matter
must
not
appear
on
drawings,
but
drawings
in
the
nature
of
flow
sheets
may
bear
descriptive
matter
to
show
the
materials
used
and
any
chemical
or
other
reactions
or
treatments
ef
fected
in
carrying
out
the
invention.
(2)
Drawings
showing
a
number
of
instruments
or
units
of
prod-
ucts
and
their
inter
-
connections,
either
mechanical
or
elec-
trical,
may
bear
descriptive
matter
to
the
extent
necessary
to
22
2014/275
Patents
Regulations
2014
Part
1
r
31
identify
the
instruments
or
units
or
their
interconnections,
pro-
vided
that
the
instrument
or
unit
is
shown
only
symbolically
.
(3)
Descriptive
matter
must
be
black,
and
the
letters
must
not
be
less
than
0.4
centimetres
in
height
when
printed
on
A4
paper
.
(4)
No
drawing
or
sketch,
other
than
a
graphic
chemical
formula
or
a
mathematical
formula,
symbol,
or
equation,
may
appear
in
the
description
or
claims
of
the
specification.
Compare:
SR
1954/21
1
r
34
30
Alterations
(1)
All
drawings—
(a)
must
be
reasonably
free
from
erasures,
photocopy
marks,
and
other
artefacts
caused
by
copying
or
repro-
duction
processes;
and
(b)
must
be
free
from
alterations,
overwritings,
and
inter
-
lineations.
(2)
The
Commissioner
may
accept
drawings
that
do
not
comply
with
subclause
(1)
if
the
Commissioner
is
satisfied
that
the
drawings—
(a)
are
authentic;
and
(b)
are
capable
of
being
reproduced
without
any
loss
in
quality
.
31
Pr
eparation
of
line
drawings
Line
drawings,
including
flow
sheets
and
diagrams,
must
com-
ply
with
the
following
requirements:
(a)
each
line
must
be
durable,
suf
ficiently
dense
and
dark,
uniformly
thick,
and
have
well
-
defined
lines
and
strokes:
(b)
section
lines,
lines
for
ef
fect,
and
shading
lines
must
be
as
few
as
possible
and
must
not
be
close
together:
(c)
shading
lines
must
not
contrast
excessively
in
thickness
with
the
general
lines
of
the
drawings:
(d)
cross
-
sections
must
be
indicated
by
oblique
hatching
that
does
not
impede
the
ability
to
read
any
reference
signs
and
leading
lines:
(e)
shading
must
not
be
represented
by
solid
black.
Compare:
SR
1954/21
1
r
32(a)–(e)
;
Patent
Cooperation
T
reaty
Rules
r
1
1.13(a)–(b)
23
Part
1
r
32
Patents
Regulations
2014
2014/275
Requir
ements
for
terminology
and
signs
in
complete
specifications
32
T
erminology
and
signs
In
a
complete
specification,—
(a)
units
of
description
must
be
expressed
in
terms
of
the
metric
system
or
,
if
first
expressed
in
other
terms,
must
also
be
expressed
in
terms
of
the
metric
system:
(b)
temperatures
must
be
expressed
in
degrees
Celsius
or
,
if
first
expressed
in
another
manner
,
must
also
be
ex-
pressed
in
degrees
Celsius:
(c)
to
indicate
units
of
measurement,
the
rules
of
inter
-
national
practice
must
be
observed:
(d)
in
chemical
formulas,
the
symbols,
atomic
weights,
and
molecular
formulas
in
general
use
must
be
used:
(e)
other
terms,
signs,
and
symbols
that
are
generally
ac-
cepted
in
the
art
to
which
the
complete
specification
principally
relates
must
be
used:
(f)
if
the
complete
specification
is
expressed
in
English,
the
beginning
of
any
decimal
fraction
must
be
marked
by
a
period:
(g)
units,
signs,
symbols,
and
other
terms
must
be
used
con-
sistently
.
Compare:
Patents
Regulations
1991
cl
1
Schedule
3
(Aust)
Abstracts
33
Form
and
content
of
abstracts
(1)
An
abstract
must
consist
of
the
following:
(a)
a
summary
of
the
disclosure
of
the
complete
specifica-
tion
as
contained
in
the
description,
the
claims,
and
any
drawings;
and
(b)
if
applicable,
the
chemical
formula
which,
among
all
the
formulas
contained
in
the
patent
application,
best
characterises
the
invention.
(2)
The
summary
referred
to
in
subclause
(1)(a)
must—
(a)
indicate
the
technical
field
to
which
the
invention
per
-
tains;
and
(b)
be
written
in
a
way
that
allows
the
clear
understanding
of
the
technical
problem,
the
gist
of
the
solution
of
that
24
2014/275
Patents
Regulations
2014
Part
1
r
36
problem
through
the
invention,
and
the
principal
use
or
uses
of
the
invention.
(3)
The
abstract
must
be
as
concise
as
the
disclosure
of
the
com-
plete
specification
permits.
(4)
The
abstract
must
not
contain
statements
on
the
alleged
merits
or
value
of
the
claimed
invention
or
on
its
speculative
appli-
cation.
Compare:
Patent
Cooperation
T
reaty
Rules
r
8.1
Subpart
3—
Addresses
34
Addr
ess
for
service
must
be
given
(1)
The
following
persons
must
give
the
Commissioner
an
address
for
service
at
the
time
when
the
person
first
gives
any
informa-
tion
or
a
document
to
the
Commissioner
in
respect
of
a
matter:
(a)
an
applicant:
(b)
a
patentee:
(c)
an
agent:
(d)
any
party
to
a
proceeding
or
any
person
intending
to
be
a
party
to
a
potential
proceeding.
(2)
For
the
purpose
of
any
communication
with
the
Commissioner
in
the
name
of
2
or
more
persons
with
dif
ferent
addresses,
the
Commissioner
may
require
1
address
for
service
to
be
given.
Compare:
SR
2003/187
r
13
35
Communication
addr
ess
must
be
given
(1)
A
person
must
give
the
Commissioner
notice
of
a
communi-
cation
address
at
the
time
when
the
person
first
gives
any
in-
formation
or
a
document
to
the
Commissioner
in
respect
of
a
matter
.
(2)
For
the
purpose
of
any
communication
with
the
Commissioner
in
the
name
of
2
or
more
persons
with
dif
ferent
addresses,
the
Commissioner
may
require
1
communication
address
to
be
given.
Compare:
SR
2003/187
r
15
36
Change
of
addr
ess
notice
must
be
given
(1)
A
person
who
gives
the
Commissioner
an
address
for
service
or
a
communication
address
must,
if
the
address
changes,
give
25
Part
1
r
37
Patents
Regulations
2014
2014/275
the
Commissioner
a
notice
of
change
of
address
as
soon
as
practicable
after
the
change
occurs.
(2)
If
the
address
of
an
agent
changes,
the
agent
must
give
the
Commissioner
a
notice
of
change
of
address
as
soon
as
prac-
ticable
after
the
change
occurs.
Compare:
SR
2003/187
r
16
37
Sufficiency
of
addr
ess
An
address
that
is
given
to
the
Commissioner
under
these
regu-
lations
must
be
suf
ficiently
detailed
to
enable
the
Commis-
sioner
to
contact
the
addressee
at
that
address.
Compare:
SR
2003/187
r
18
Subpart
4—
Agents
38
Agent
may
act
on
behalf
of
principal
for
purposes
of
r
egulations
(1)
Subject
to
the
scope
of
the
agent’
s
authority
,
an
agent
may
act
for
the
agent’
s
principal
(
X
)
in
any
proceeding
in
accordance
with
these
regulations
or
take
any
step
(including
the
signing
of
documents)
on
X’
s
behalf
under
these
regulations.
(2)
However
,
the
Commissioner
may
in
any
case
require
that
a
document
that
must
be
signed
for
the
purposes
of
these
regu-
lations
be
signed
by
the
principal
and
not
by
the
agent.
Compare:
SR
2003/187
r
20
39
Commissioner
may
give
notices
to
agent
(1)
The
Commissioner
satisfies
any
requirement
under
these
regu-
lations
to
give
documents
or
notice
to,
or
correspond
with,
a
person
by
giving
documents
or
notice
to,
or
corresponding
with,
that
person’
s
agent.
(2)
Subclause
(1)
does
not
apply
to
the
extent
that
any
written
au-
thority
that
is
filed
by
the
agent’
s
principal
expressly
excludes
the
authority
of
the
agent
for
any
of
the
matters
specified
in
subclause
(1).
Compare:
SR
2003/187
r
21
26
2014/275
Patents
Regulations
2014
Part
1
r
40
40
Commissioner
may
r
equir
e
principal
of
agent
to
file
authority
with
Commissioner
in
certain
cases
(1)
This
regulation
applies
if—
(a)
the
Commissioner
receives
a
communication
from
a
person
who
refers
to
himself
or
herself
in
the
commu-
nication
as
an
agent
(
A
)
of
a
principal
(
X
)
and,
at
the
time
of
the
communication,
the
Commissioner
does
not
have
an
authority
in
respect
of
A
that
complies
with
the
requirements
in
subclause
(3);
or
(b)
the
Commissioner
has
an
authority
in
respect
of
an
agent
that
complies
with
the
requirements
in
subclause
(3)
and
the
Commissioner
receives
a
communication
informing
the
Commissioner
that
the
principal
(
X
)
has
appointed
a
new
agent
(
A
).
(2)
The
Commissioner
may
require
X
to
file,
within
the
specified
time,
a
written
authority
in
respect
of
A.
(3)
The
written
authority
must—
(a)
be
signed
by
X
and
not
by
an
agent;
and
(b)
contain
the
following
information:
(i)
A
’
s
name
and
address
for
service;
and
(ii)
if
A
is
authorised
to
act
in
respect
of
a
particular
patent
or
patent
application,
the
number
of
the
patent
or
patent
application;
and
(iii)
a
statement
of
any
limitation
on
the
authority
of
A
to
act
on
X’
s
behalf.
(4)
In
subclause
(2),—
(a)
specified
time
means
the
time
that
the
Commissioner
specifies
in
the
requirement
given
under
subclause
(2);
and
(b)
the
specified
time
must
be
not
less
than
1
month
after
the
date
on
which
the
Commissioner
receives
the
com-
munication
referred
to
in
subclause
(1).
Compare:
SR
2003/187
r
22
27
Part
1
r
41
Patents
Regulations
2014
2014/275
41
Commissioner
must
r
efuse
to
r
ecognise
certain
persons
as
agent
The
Commissioner
must
refuse
to
recognise
as
an
agent
in
respect
of
any
proceedings
a
person
who
neither
resides
nor
carries
on
business
in
New
Zealand
or
Australia.
Compare:
SR
1954/21
1
r
16
42
Commissioner
must
notify
r
efusal
to
r
ecognise
person
as
agent
If
the
Commissioner
becomes
aware
that
a
person
is
not
en-
titled
to
act
as
an
agent,
the
Commissioner
must,
as
soon
as
practicable,
notify
that
person
and
that
person’
s
principal.
Compare:
SR
2003/187
r
24
43
Notice
to
Commissioner
of
r
evocation
or
alteration
of
authority
(1)
A
principal
(
X
)
must,
as
soon
as
practicable,
give
written
no-
tice
to
the
Commissioner
of
the
revocation
or
alteration
of
the
authority
of
X’
s
agent
(
A
).
(2)
The
notice
must—
(a)
be
signed
by
X,
and
not
by
an
agent;
and
(b)
contain
the
information
set
out
in
subclause
(3).
(3)
The
notice
must
contain
the
following
information:
(a)
X’
s
name
and
address
for
service:
(b)
A
’
s
name:
(c)
if
A
is
authorised
to
act
in
respect
of
a
particular
patent
or
patent
application,
the
number
of
the
patent
or
patent
application:
(d)
if
A
’
s
authority
is
revoked,
a
statement
to
that
ef
fect:
(e)
if
A
’
s
authority
is
altered,
a
statement
setting
out—
(i)
the
alteration
in
authority;
and
(ii)
the
matters
for
which
A
continues
to
have
author
-
ity
.
(4)
Notice
to
the
Commissioner
of
the
revocation
or
alteration
of
the
authority
of
an
agent
is
ef
fective—
(a)
if
it
complies
with
this
regulation;
and
(b)
when
it
is
received
by
the
Commissioner
.
Compare:
SR
2003/187
r
25
28
2014/275
Patents
Regulations
2014
Part
2
r
46
44
Notice
of
r
evocation
of
authority
may
be
given
by
agent
(1)
An
agent
(
A
)
of
a
principal
(
X
)
may
give
written
notice
to
the
Commissioner
of
the
revocation
of
A
’
s
authority
as
X’
s
agent.
(2)
The
notice
must
be
signed
by
A
and
contain
the
information
described
in
regulation
43(3)(a)
to
(d)
.
(3)
Notice
to
the
Commissioner
of
the
revocation
of
the
agent’
s
authority
is
ef
fective—
(a)
if
it
complies
with
this
regulation;
and
(b)
when
it
is
received
by
the
Commissioner
.
Compare:
SR
2003/187
r
25A
Subpart
5—
Interpretation
45
Specified
exhibitions
(1)
A
person
who
is
responsible
for
an
exhibition
may
request
the
Commissioner
to
declare
that
exhibition
to
be
an
international
or
industrial
exhibition
under
section
9(2)
of
the
Act.
(2)
The
request
must
be
made
before
the
opening
date
of
the
ex-
hibition
and
include—
(a)
the
date
or
dates
on
which
the
exhibition
will
be
held;
and
(b)
the
name
and
location
of
the
exhibition.
Part
2
Patentable
inventions
and
patent
rights
46
Form
of
patent
under
section
19
of
Act
The
prescribed
information
for
the
purpose
of
section
19(5)
of
the
Act
is
as
follows:
(a)
the
name
of
the
patentee
or
patentees;
and
(b)
the
title
of
the
invention;
and
(c)
the
patent
date
and
number;
and
(d)
if
the
patent
is
a
patent
of
addition,
a
statement
that
it
is
a
patent
of
addition
and
the
number
of
the
patent
granted
for
the
main
invention.
29
Part
2
r
47
Patents
Regulations
2014
2014/275
47
Request
for
dir
ections
to
co-owners
under
section
26(1)
of
Act
(1)
A
request
for
directions
under
section
26(1)
of
the
Act
must
include
a
statement
setting
out
the
facts
on
which
the
person
relies
and
the
directions
sought.
(2)
The
person
making
the
request
must
give
a
copy
of
the
request
to
each
other
patentee
of
the
patent.
(3)
The
Commissioner
may
give
any
directions
regarding
the
sub-
sequent
procedure
that
are
consistent
with
the
requirement
in
section
27
of
the
Act
to
give
the
patentees
a
reasonable
oppor
-
tunity
to
be
heard.
Compare:
SR
1954/21
1
r
122
48
Request
for
dir
ections
to
co-owners
under
section
26(3)
of
Act
(1)
A
request
for
directions
under
section
26(3)
of
the
Act
must
include—
(a)
the
name
of
the
person
in
default;
and
(b)
the
date
on
which
directions
were
given
by
the
Com-
missioner
under
section
26(1)
of
the
Act;
and
(c)
a
statement
setting
out
the
facts
on
which
the
person
relies
and
the
directions
sought.
(2)
The
person
making
the
request
must
give
a
copy
of
the
request
to
the
person
in
default.
(3)
The
Commissioner
may
give
any
directions
regarding
the
sub-
sequent
procedure
that
are
consistent
with
the
requirement
in
section
27
of
the
Act
to
give
the
person
in
default
a
reasonable
opportunity
to
be
heard.
Compare:
SR
1954/21
1
r
123
49
Request
for
determination
of
dispute
under
section
28
of
Act
(1)
A
request
by
a
party
under
section
28(2)
of
the
Act
(the
appli-
cant
)
to
determine
a
dispute
as
to
rights
in
an
invention,
or
a
patent
granted,
or
to
be
granted,
in
respect
of
an
invention,—
(a)
must
include
the
name
and
address
of
the
other
party
to
the
dispute
(the
other
party
);
and
(b)
must
be
signed
by
the
applicant;
and
30
2014/275
Patents
Regulations
2014
Part
2
r
49
(c)
must
be
accompanied
by
a
statement
of
case
setting
out
the
facts
of
the
dispute
on
which
the
applicant
relies
and
the
relief
sought.
(2)
The
Commissioner
must
give
a
copy
of
the
request
and
the
statement
of
case
to
the
other
party
.
(3)
The
other
party
must
file
a
counter
-
statement,
within
2
months
after
receiving
the
copy
of
the
request
and
the
statement
of
case,
setting
out
the
grounds
on
which
the
other
party
disputes
the
right
of
the
applicant
to
the
relief
sought.
(4)
The
applicant
may
,
within
2
months
after
receiving
the
copy
of
the
counter
-
statement,
file
evidence
in
support
of
his
or
her
case.
(5)
The
other
party
may
file
evidence
in
support
of
his
or
her
case
within
2
months
after
receiving
the
copy
of
the
applicant’
s
evi-
dence
or
,
if
the
applicant
does
not
file
any
evidence,
within
2
months
after
the
expiration
of
the
time
within
which
the
appli-
cant’
s
evidence
might
have
been
filed.
(6)
The
applicant
may
,
within
1
month
after
receiving
the
copy
of
the
other
party’
s
evidence,
file
evidence
confined
to
matters
strictly
in
reply
.
(7)
Subclauses
(8)
and
(9)
apply
if
the
other
party
fails
to
file
a
counter
-
statement
within
the
period
prescribed
by
subclause
(3).
(8)
The
applicant
may
file
evidence
in
support
of
his
her
case
within
2
months
after
the
time
by
which
the
other
party
is
re-
quired
to
file
the
counter
-
statement.
(9)
The
Commissioner
may
determine
the
request
after
consider
-
ing
the
request
and
any
evidence
filed
in
support
of
the
request.
Compare:
SR
1954/21
1
r
124
31
Part
3
r
50
Patents
Regulations
2014
2014/275
Part
3
Pr
ocess
for
obtaining
grant
of
patent
and
other
matters
Subpart
1—
Patent
applications
and
specifications
Patent
applications
50
Application
for
patent
(1)
The
prescribed
manner
for
making
a
patent
application
is
as
follows:
(a)
the
application
must
be
made
in
accordance
with
Part
1
;
and
(b)
an
application
must
contain,
or
be
accompanied
by
,
the
following
information:
(i)
the
name
and
address
of
each
applicant;
and
(ii)
the
nationality
or
principal
place
of
business
of
each
applicant;
and
(iii)
the
title
of
the
invention
that
is
the
subject
of
the
application;
and
(iv)
the
name
and
address
of
each
inventor;
and
(v)
an
abstract,
if
the
application
is
accompanied
by
a
complete
specification.
(2)
If
the
name,
address,
nationality
,
or
principal
place
of
business
of
an
applicant
changes
from
that
notified,
the
applicant
must
give
the
Commissioner
a
notice
of
the
change
as
soon
as
prac-
ticable
after
the
change
occurs.
Compare:
SR
1954/21
1
r
19
,
Schedule
2
forms
1
,
3
51
Requests
for
post-dating
A
request
to
post
-
date
an
application
under
section
33
of
the
Act
must
contain
the
date
to
which
the
applicant
requests
that
the
application
be
post
-
dated.
Compare:
SR
1954/21
1
Schedule
2
form
8
52
Divisional
applications
(1)
If
an
applicant
makes
a
divisional
application
under
section
34
of
the
Act,
the
applicant
must
state
that
the
application
is
32
2014/275
Patents
Regulations
2014
Part
3
r
53
a
divisional
application
within
the
meaning
of
section
34
and
give
the
application
number
of
the
parent
application.
(2)
A
request
for
the
Commissioner
to
direct
that
the
divisional
application
or
a
complete
specification
for
that
application
(or
both)
be
given
an
earlier
filing
date
must—
(a)
be
made
at
the
time
the
divisional
application
is
filed;
and
(b)
specify
the
earlier
filing
date
that
is
requested
for
the
divisional
application
or
complete
specification
(or
both).
(3)
The
prescribed
manner
in
which
an
application
may
be
made
for
the
purpose
of
section
34(1)
of
the
Act
is
as
follows:
(a)
the
divisional
application
must
not
include
a
claim
or
claims
for
substantially
the
same
matter
as
claimed
in
the
parent
application;
and
(b)
the
parent
application
must
not
include
a
claim
or
claims
for
substantially
the
same
matter
as
claimed
in
the
div-
isional
application.
Compare:
SR
1954/21
1
r
23
53
Personal
r
epr
esentative
must
establish
right
to
be
granted
patent
(1)
This
regulation
applies
if
a
patent
application,
other
than
a
con-
vention
application,
is
made
by
the
personal
representative
of
a
deceased
person
or
the
assignee
of
the
personal
representa-
tive
of
a
deceased
person
who,
in
either
case,
would
have
been
the
nominated
person
in
respect
of
the
patent
application.
(2)
The
probate
of
the
will
of
the
deceased
person
or
the
letters
of
administration
of
the
deceased
person’
s
estate,
or
an
of
ficial
copy
of
the
probate
or
letters
of
administration,
must
be
given
to
the
Commissioner
.
(3)
This
regulation
does
not
apply
if
the
Commissioner
has
dis-
pensed
with
probate
and
letters
of
administration
under
sec-
tion
167
of
the
Act.
Compare:
SR
1954/21
1
r
20
33
Part
3
r
54
Patents
Regulations
2014
2014/275
Specifications
54
Requir
ements
for
pr
ovisional
specification
Every
provisional
specification
under
section
38
of
the
Act—
(a)
must
be
in
accordance
with
Part
1
of
these
regulations;
and
(b)
must
include,
on
its
first
page,
the
title
of
the
invention
that
is
the
subject
of
the
application.
Compare:
SR
1954/21
1
Schedule
2
form
4
55
Requir
ements
for
complete
specification
Every
complete
specification
under
section
39
of
the
Act—
(a)
must
be
in
accordance
with
Part
1
of
these
regulations;
and
(b)
must
include,
on
its
first
page,
the
title
of
the
invention
that
is
the
subject
of
the
application.
Compare:
SR
1954/21
1
Schedule
2
form
5
56
Extension
of
period
for
filing
complete
specification
The
prescribed
extended
period
for
the
purposes
of
section
37(2)(b)
of
the
Act
is
15
months
after
the
filing
date
of
the
patent
application.
Example
K
files
a
patent
application
on
1
February
2016
accompanied
by
a
provisional
specification.
K
must
file
a
complete
specification
by
1
February
2017
or
,
if
K
also
requests
an
extension
of
time,
by
1
May
2017.
57
Cognate
applications
(1)
This
regulation
applies
if
the
Commissioner
gives
leave
for
a
single
complete
specification
to
be
proceeded
with
under
sec-
tion
37(4)(b)
of
the
Act
in
respect
of
2
or
more
patent
applica-
tions
for
which
2
or
more
complete
specifications
have
been
filed
(the
pr
evious
specifications
).
(2)
The
single
complete
specification—
(a)
may
include
any
matter
disclosed
in
any
of
the
previous
specifications;
and
(b)
is
treated
as
having
been
filed
on
the
date
that
the
Com-
missioner
may
direct,
being
no
earlier
than
the
earli-
34
2014/275
Patents
Regulations
2014
Part
3
r
59
est
date
on
which
all
the
matters
disclosed
in
the
single
complete
specification
that
support
the
claim
have
been
disclosed
to
the
Commissioner
in
or
in
connection
with
the
applications
in
the
previous
specifications.
Compare:
SR
1954/21
1
r
22
58
Amendment
of
complete
specification
befor
e
acceptance
An
amendment
of
a
complete
specification
before
acceptance
under
section
40
of
the
Act
must
include—
(a)
the
applicant’
s
reasons
for
making
the
amendment;
and
(b)
a
copy
of
the
proposed
completed
specification
as
it
would
appear
following
amendment;
and
(c)
a
copy
of
the
marked
-
up
pages
of
the
complete
specifi-
cation
with
the
amendments
clearly
shown;
and
(d)
a
statement
setting
out
the
specific
part
or
parts
of
the
original
complete
specification
that
supports
each
of
the
proposed
amendments.
Deposit
r
equir
ements
for
micr
o-or
ganisms
59
Deposit
r
equir
ements
for
micr
o-organisms
(1)
The
prescribed
period
for
the
purposes
of
section
43(1)(b)
of
the
Act
is
3
months
after
the
date
that
the
micro
-
or
ganism
is
deposited
with
the
prescribed
depositary
institution.
(2)
The
prescribed
form
of
receipt
for
the
purposes
of
section
43(2)
of
the
Act
is
a
copy
of
a
receipt
issued
by
a
prescribed
de-
positary
institution
under
rule
7
of
the
Budapest
Regulations,
and,
if
that
receipt
is
not
in
English,
the
applicant
must
provide
a
verified
translation
of
the
receipt.
(3)
In
this
regulation,
Budapest
Regulations
—
(a)
means
the
regulations
made
under
the
Budapest
T
reaty;
and
(b)
includes
any
amendments
from
time
to
time
made
to
those
regulations.
Compare:
Patents
Regulations
1991
r
3.23(2)
(Aust)
35
Part
3
r
60
Patents
Regulations
2014
2014/275
60
Deposit
r
equir
ements
tr
eated
as
satisfied
in
certain
cir
cumstances
The
provisions
prescribed
for
the
purpose
of
section
44(2)(b)
of
the
Act
are
the
same
as
the
provisions
prescribed
by
regu-
lation
121
for
the
purpose
of
section
128
of
the
Act,
with
any
necessary
modifications.
Subpart
2—
T
reaty
applications
T
r
eaty
applications
befor
e
entry
to
national
phase
61
Amendments
to
documents
forming
part
of
complete
specification
The
prescribed
time
limit
for
the
purposes
of
section
50(3)(b)
of
the
Act
is
19
months
after
the
earliest
priority
date
accorded
to
the
international
application.
62
T
ime
limit
specified
for
sections
51
and
52
of
Act
The
prescribed
time
limit
for
the
purposes
of
sections
51(1)(d)
and
(e)
and
52(1)(b)
of
the
Act
is
31
months
after
the
earliest
priority
date
accorded
to
the
international
application.
Compare:
SR
1992/316
r
5
T
r
eaty
applications
on
entry
to
national
phase
63
Application
for
entry
to
national
phase
(1)
An
application
for
entry
to
the
national
phase
must
be
accom-
panied
by
the
international
application
number
.
(2)
The
prescribed
documents
for
the
purposes
of
section
52(1)(d)
of
the
Act
are
the
complete
specification
and
any
amendments
proposed
to
be
made
to
the
complete
specification
during
the
international
phase.
64
Request
for
examination
of
T
r
eaty
application
A
request
for
examination
under
section
52(2)(a)
of
the
Act
in
relation
to
a
T
reaty
application
must
include—
(a)
the
applicant’
s
reasons
for
making
the
request
before
all
of
the
requirements
in
section
52(1)
of
the
Act
are
satisfied;
and
36
2014/275
Patents
Regulations
2014
Part
3
r
67
(b)
any
evidence
in
support
of
those
reasons.
65
English
translation
of
documents
as
r
equir
ed
(1)
If
any
document
or
documents
forming
part
of
a
T
reaty
appli-
cation
have
been
filed
in
a
language
other
than
English,
the
applicant
must,
within
3
months
after
the
commencement
date
of
the
national
phase,
file
a
verified
translation
of
that
docu-
ment
or
those
documents.
(2)
However
,
the
Commissioner
may
,
on
any
terms
that
the
Com-
missioner
thinks
fit,
extend
that
time
for
a
period
of
up
to
2
months.
(3)
The
Commissioner
may
grant
an
extension
under
subclause
(2)
even
if
the
time
for
the
filing
of
the
verified
translation
has
expired
under
subclause
(1).
Compare:
SR
1992/316
r
3
Fees
for
international
applications
and
T
r
eaty
applications
66
Fees
payable
for
international
applications
and
T
r
eaty
applications
(1)
Part
2
of
the
Schedule
sets
out
the
amount
of
certain
fees
that
must
be
paid
in
respect
of
an
international
application
or
a
T
reaty
application.
(2)
The
fees
are
exclusive
of
goods
and
services
tax.
67
T
rust
fund
(1)
All
fees
collected
by
the
Commissioner
on
behalf
of
the
Inter
-
national
Bureau
or
any
international
searching
authority
must
be
paid
into
a
trust
fund
established
for
the
benefit
of
those
or
-
ganisations
and
administered
in
accordance
with
Part
7
of
the
Public
Finance
Act
1989.
(2)
The
Commissioner
acting
as
trustee
of
the
trust
fund
may
ex-
pend
the
money
held
in
trust
for
the
purposes
of
the
Patent
Cooperation
T
reaty
,
including
the
refunds
and
the
remission
of
fees
to
the
International
Bureau
and
any
international
search-
ing
authority
.
Compare:
SR
1992/316
r
16
37
Part
3
r
68
Patents
Regulations
2014
2014/275
Subpart
3—
Convention
applications
68
Convention
applicants
may
make
convention
applications
The
prescribed
period
for
the
purposes
of
section
53(4)
of
the
Act
is
2
months
after
the
date
on
which
the
Commissioner
gives
written
notice
to
the
convention
applicant
requiring
the
convention
applicant
to
file
a
copy
of
any
or
all
of
the
docu-
ments,
including
the
basic
application,
referred
to
in
section
53(3)(c)
of
the
Act.
69
Convention
application
for
patent
The
prescribed
manner
for
making
a
convention
application,
and
the
information
that
must
be
included
under
section
54(2)(a)
of
the
Act,
is
as
follows:
(a)
the
application
must
be
made
in
accordance
with
Part
1
and
regulation
50
of
these
regulations;
and
(b)
the
application
must
contain,
or
be
accompanied
by
,
the
following
information:
(i)
the
date
on
which
the
relevant
basic
application
was
made
in
a
convention
country;
and
(ii)
the
convention
country
in
which
the
relevant
basic
application
was
made;
and
(iii)
the
number
of
the
relevant
basic
application.
Compare:
SR
1954/21
1
r
19
,
Schedule
2
form
3
70
Evidence
in
support
of
convention
applications
(1)
This
regulation
applies
if
the
Commissioner
has
given
written
notice
to
a
convention
applicant
requiring
that
the
convention
applicant
file
a
copy
or
verified
translation
of
any
or
all
of
the
documents
filed
in
relation
to
the
relevant
basic
application.
(2)
The
convention
applicant
may
file
the
copy
or
verified
trans-
lation
by—
(a)
providing
an
electronic
copy
of
the
document
and
a
verified
translation
of
the
document;
or
(b)
making
an
electronic
copy
of
the
document
and
a
verified
translation
of
the
document
available
to
the
Commissioner
through
a
digital
library
approved
by
the
Commissioner
.
Compare:
SR
1954/21
1
r
25
38
2014/275
Patents
Regulations
2014
Part
3
r
72
Subpart
4—
Rest
of
process
for
obtaining
grant
of
patent
and
other
matters
Examination
71
Manner
of
making
r
equest
for
examination
of
patent
application
A
request
under
section
64(1)
of
the
Act
for
an
examination
of
a
patent
application
and
the
complete
specification
relating
to
the
application
must
be
made
as
follows:
(a)
for
a
divisional
application,
within
5
years
of
the
date
that
the
complete
specification
for
the
divisional
appli-
cation
is
filed
or
treated
as
having
been
filed,
whichever
is
the
earlier;
and
(b)
for
a
patent
application,
or
a
complete
specification
re-
lating
to
the
application,
that
has
been
post
-
dated
by
the
Commissioner
,
within
5
years
of
the
date
that
the
com-
plete
specification
is
treated
as
having
been
filed;
and
(c)
for
any
other
patent
application,
within
5
years
of
the
date
that
the
complete
specification
is
filed.
72
Gr
ounds
on
which
Commissioner
may
dir
ect
applicant
to
r
equest
examination
of
patent
application
The
prescribed
grounds
for
the
purpose
of
section
64(2)
of
the
Act
are
as
follows:
(a)
the
Commissioner
reasonably
considers
it
expedient
to
give
the
direction,
having
regard
to
the
progress
made
in
the
examination
of
applications
filed
before
the
filing
date
of
the
application
concerned;
or
(b)
the
Commissioner
reasonably
considers
it
to
be
in
the
public
interest
to
give
the
direction;
or
(c)
the
Commissioner
reasonably
considers
it
expedient
to
give
the
direction,
having
regard
to
the
examination
of
another
patent
application.
Compare:
Patents
Regulations
1991
r
3.16
(Aust)
39
Part
3
r
73
Patents
Regulations
2014
2014/275
73
Period
within
which
applicant
may
be
dir
ected
to
r
equest
examination
The
period
prescribed
for
the
purpose
of
section
64(2)
and
(6)
of
the
Act
is
2
months
after
the
day
on
which
the
direction
is
given.
74
Manner
in
which
person
may
r
equir
e
Commissioner
to
give
dir
ection
The
prescribed
manner
in
which
a
person
may
require
the
Commissioner
under
section
64(3)
of
the
Act
to
give
a
direc-
tion
under
section
64(2)
of
the
Act
is
as
follows:
(a)
the
person
must
identify
the
nature
of
the
public
inter
-
est
in
which
the
applicant
can
be
directed
to
request
an
examination;
or
(b)
the
person
must
describe
the
special
circumstances
that
make
it
desirable
that
the
applicant
be
directed
to
re-
quest
an
examination.
Compare:
Patents
Regulations
1991
r
3.17(2)
(Aust)
75
Commissioner
may
r
efuse
to
pr
oceed
with
application
or
r
equir
e
application
or
specification
to
be
amended
(1)
If
the
Commissioner
requires
an
applicant
to
amend
a
patent
application
or
any
specification
before
the
Commissioner
pro-
ceeds
with
the
application,
the
applicant
must
comply
with
regulation
58
.
(2)
See
regulations
169
to
174
(which
relate
to
hearings).
76
Applications
must
be
examined
in
order
in
which
r
equest
for
examination
is
made
The
Commissioner
must
examine
a
patent
application
and
the
complete
specification
relating
to
the
application,
and
report
in
accordance
with
section
65
of
the
Act,
in
the
order
in
which
the
Commissioner
is
asked
for
an
examination
under
section
64
of
the
Act.
Compare:
SR
1954/21
1
r
37
77
Examination
may
be
advanced
out
of
turn
(1)
The
Commissioner
may
advance
the
order
of
examination,
de-
spite
regulation
76
,—
40
2014/275
Patents
Regulations
2014
Part
3
r
79
(a)
to
expedite
the
business
of
IPONZ;
or
(b)
at
the
request
of
the
applicant,
if
there
are
good
and
substantial
reasons.
(2)
A
request
to
advance
an
application
under
this
regulation
must
be
accompanied
by
evidence
in
support
of
the
request.
Compare:
SR
1954/21
1
r
38
78
Deadlines
by
which
applicants
must
act
if
Commissioner
r
efuses
to
pr
oceed
with
application,
etc
(1)
The
prescribed
manner
in
which
the
Commissioner
must
set
a
deadline
under
section
67
of
the
Act
is
that
the
deadline
must
be
stated
in
the
examination
report
issued
under
section
65
of
the
Act.
(2)
The
prescribed
manner
in
which
the
Commissioner
may
ex-
tend
the
deadline
is
that
the
applicant
must
file,
within
1
month
after
the
deadline
stated
in
the
examination
report
issued
under
section
65
of
the
Act,
a
response
to
the
examination
report
that
includes
a
request
for
an
extension.
(3)
The
Commissioner
may
also,
in
exceptional
circumstances,
extend
the
deadline
if
the
applicant
files,
after
the
expiry
of
that
1
-
month
period,
a
response
to
the
examination
report
that
includes
a
request
for
an
extension.
79
Duty
to
inform
Commissioner
of
sear
ch
r
esults
(1)
The
prescribed
searches
to
which
section
70(1)
of
the
Act
does
not
apply
are
searches
that
are
both—
(a)
publicly
available
on
an
Internet
site;
and
(b)
in
English.
(2)
However
,
subclause
(1)
does
not
apply
if
the
search
is
in
re-
spect
of
1
or
more
countries,
regions,
or
foreign
patent
of
fices
specified
by
the
Commissioner
.
(3)
The
prescribed
manner
for
informing
the
Commissioner
of
the
results
of
any
documentary
search
under
section
70(1)
of
the
Act
is—
(a)
by
including
the
results
in
the
response
to
the
examin-
ation
report
issued
under
section
65
of
the
Act;
and
(b)
by
excluding
any
results
of
any
searches
that
the
Com-
missioner
has
stated
are
not
required
to
be
provided;
and
41
Part
3
r
80
Patents
Regulations
2014
2014/275
(c)
if
the
applicant
becomes
aware
of
any
further
results
in
the
period
after
the
response
is
given
and
before
the
complete
specification
is
accepted,
by
giving
the
results
to
the
Commissioner
(without
any
further
requests
hav-
ing
to
be
made
by
the
Commissioner).
Acceptance
and
publication
80
T
ime
for
putting
application
in
order
for
acceptance
(1)
The
period
prescribed
for
the
purpose
of
section
71(1)
of
the
Act
is
12
months
after
the
date
of
issue
of
the
first
examination
report
under
section
65
of
the
Act.
(2)
The
requirement
prescribed
for
the
purpose
of
section
71(1)(b)
of
the
Act
is
the
requirement
to
pay
any
fee
and
penalty
that
has
become
due
under
the
Act
or
these
regulations.
81
Manner
of
filing
notice
of
entitlement
befor
e
acceptance
(1)
A
notice
filed
in
accordance
with
section
73
of
the
Act
must
identify
which
of
the
classes
of
person
identified
in
section
22(1)
of
the
Act
applies
to
the
nominated
person.
(2)
The
Commissioner
may
require
the
applicant
to
file
evidence
in
support
of
the
notice
of
entitlement.
(3)
If
the
Commissioner
requires
the
applicant
to
file
evidence
in
support
of
the
notice
of
entitlement,
the
applicant
must
file
the
evidence
before
the
expiry
of
the
period
prescribed
by
regula-
tion
80
or
the
expiry
of
the
extension
or
last
extension
under
section
72
of
the
Act
(if
the
prescribed
period
is
extended
under
that
section).
82
Acceptance
of
complete
specification
The
requirement
prescribed
for
the
purpose
of
section
74(1)(b)
of
the
Act
is
the
requirement
to
pay
any
fee
and
penalty
that
has
become
due
under
the
Act
or
these
regulations.
83
Applicant
may
r
equest
Commissioner
to
postpone
acceptance
(1)
A
notice
under
section
75
of
the
Act
requesting
the
Commis-
sioner
to
postpone
acceptance
of
the
complete
specification
must
be
filed
before
the
complete
specification
is
accepted.
42
2014/275
Patents
Regulations
2014
Part
3
r
86
(2)
The
period
prescribed
for
the
purpose
of
section
75(2)
of
the
Act
is
12
months
after
the
date
of
issue
of
the
first
examination
report
under
section
65
of
the
Act.
84
Notice
that
complete
specification
open
to
public
inspection
following
r
equest
by
applicant
(1)
If
an
applicant
asks
the
Commissioner
to
publish
a
notice
in
the
journal
under
section
76(3)
of
the
Act
that
the
complete
specification
is
open
to
public
inspection,
the
Commissioner
must
publish
the
notice
as
soon
as
practicable
following
the
applicant’
s
request.
(2)
The
notice
must
include—
(a)
the
number
of
the
patent
application;
and
(b)
the
applicant’
s
name;
and
(c)
the
title
of
the
invention.
85
Documents
open
to
public
inspection
(1)
The
other
documents
that
are
prescribed
for
the
purpose
of
sec-
tion
78(1)
of
the
Act
are
all
documents,
other
than
documents
referred
to
in
subclause
(2),
that
are—
(a)
associated
with
the
application;
and
(b)
in
the
possession
of
the
Commissioner
.
(2)
The
documents
prescribed
for
the
purposes
of
section
78(2)(a)
to
(c)
of
the
Act
are
documents—
(a)
that
are
subject
to
legal
professional
privilege;
or
(b)
that
are
subject
to
an
order
of
a
court
or
a
tribunal
pro-
hibiting
disclosure
of
the
document
or
information
in
the
document;
or
(c)
that
the
Commissioner
has
reasonable
grounds
to
be-
lieve
should
not
be
open
to
public
inspection.
Compare:
Patents
Regulations
1991
r
4.3
(Aust)
86
T
r
eaty
application
documents
open
for
public
inspection
(1)
The
documents
prescribed
for
the
purpose
of
section
79(2)
of
the
Act
are—
(a)
the
application
for
the
T
reaty
application
to
enter
the
national
phase;
and
43
Part
3
r
87
Patents
Regulations
2014
2014/275
(b)
all
documents
in
the
possession
of
the
Commissioner
that
are
associated
with
the
application
to
enter
the
na-
tional
phase.
(2)
However
,
subclause
(1)
does
not
apply
to
documents—
(a)
that
are
subject
to
legal
professional
privilege;
or
(b)
that
are
subject
to
an
order
of
a
court
or
a
tribunal
pro-
hibiting
disclosure
of
the
document
or
information
in
the
document;
or
(c)
that
the
Commissioner
has
reasonable
grounds
to
be-
lieve
should
not
be
open
for
public
inspection.
Compare:
Patents
Regulations
1991
r
4.4(7)
(Aust)
Amendment
of
specifications
after
acceptance
87
Amendment
of
specification
after
acceptance
with
leave
of
Commissioner
A
request
for
leave
to
amend
a
specification
after
acceptance
under
section
85
of
the
Act
must
include—
(a)
a
copy
of
the
proposed
completed
specification
as
it
would
appear
following
amendment;
and
(b)
a
copy
of
the
current
complete
specification
with
the
amendments
sought
clearly
shown;
and
(c)
a
statement
setting
out
the
specific
part
or
parts
of
the
current
complete
specification
that
supports
each
of
the
proposed
amendments;
and
(d)
a
declaration
that
there
are
no
relevant
proceedings
be-
fore
the
court
in
respect
of
the
invention.
88
Commissioner
must
consider
r
equest
for
leave
to
amend
complete
specification
(1)
If,
following
receipt
of
a
request
under
section
85
of
the
Act,
the
Commissioner
is
not
satisfied
that
the
amendment
should
be
allowed,
the
Commissioner
must
notify
the
person
who
made
the
request.
(2)
The
person
must,
within
3
months
after
receiving
that
notice,
satisfy
the
Commissioner
that
the
amendment
should
be
al-
lowed.
44
2014/275
Patents
Regulations
2014
Part
3
r
89
(3)
The
period
may
be
extended
by
the
Commissioner
by
up
to
1
month
on
the
request
of
the
person
who
received
the
notice
or
on
the
Commissioner
’
s
own
initiative.
89
Requir
ements
for
notice
of
opposition
to
pr
oposed
amendment
(1)
The
period
prescribed
for
the
purpose
of
section
87(1)
of
the
Act
for
giving
notice
to
the
Commissioner
of
opposition
to
a
proposed
amendment
is
2
months
after
the
date
of
the
publica-
tion
in
the
journal
under
section
86
of
the
Act
of
the
request
for
leave
to
amend
the
specification
under
section
85
of
the
Act.
(2)
The
Commissioner
may
,
on
the
request
of
a
person
wishing
to
oppose
the
proposed
amendment,
extend
the
period
for
filing
a
notice
of
opposition—
(a)
by
up
to
1
month,
without
the
applicant’
s
consent;
or
(b)
by
up
to
2
months,
with
the
applicant’
s
consent.
(3)
The
Commissioner
must
not
extend
the
period
for
filing
a
no-
tice
of
opposition
if
the
request
for
extension
is
received
after
the
period
for
filing
the
notice
has
expired.
(4)
A
notice
of
opposition
to
a
proposed
amendment
under
section
87
of
the
Act—
(a)
must
include
the
reasons
for
opposing
the
proposed
amendment;
and
(b)
must
be
accompanied
by
a
statement
of
case
setting
out
the
facts
on
which
the
opponent
relies
and
the
relief
sought.
(5)
The
Commissioner
must
give
a
copy
of
the
notice
and
state-
ment
of
case
to
the
applicant
or
patentee
(as
the
case
may
be)
who
made
the
request
for
leave
to
amend
the
specifica-
tion
under
section
85
of
the
Act.
(6)
The
applicant
or
patentee
must
file
a
counter
-
statement,
within
2
months
after
receiving
a
copy
of
the
notice
and
statement
of
case,
setting
out
the
grounds
on
which
the
opposition
is
contested.
(7)
If
the
applicant
or
patentee
does
not
file
a
counter
-
statement
within
the
time
prescribed
in
subclause
(6),
the
applicant
or
patentee
is
treated
as
having
abandoned
his
or
her
request
to
amend
the
specification.
45
Part
3
r
90
Patents
Regulations
2014
2014/275
(8)
The
opponent
may
,
within
4
months
after
receiving
the
copy
of
the
counter
-
statement,
file
evidence
in
support
of
his
or
her
case.
(9)
The
applicant
or
patentee
may
file
evidence
in
support
of
his
or
her
case
within
4
months
after
receiving
the
copy
of
the
oppo-
nent’
s
evidence
or
,
if
the
opponent
does
not
file
any
evidence,
within
4
months
after
the
expiration
of
the
time
within
which
the
opponent’
s
evidence
might
have
been
filed.
(10)
The
opponent
may
,
within
3
months
after
receiving
the
copy
of
the
applicant’
s
evidence,
file
evidence
confined
to
matters
strictly
in
reply
.
Compare:
SR
1954/21
1
r
100
Assertions
by
thir
d
parties
90
Assertions
by
third
parties
on
novelty
and
inventive
step
(1)
The
period
prescribed
for
the
purpose
of
section
90(1)
of
the
Act
for
notifying
the
Commissioner
of
an
assertion
is
the
period
that
commences
when
the
complete
specification
be-
comes
open
for
public
inspection
and
ends
when
the
complete
specification
is
accepted.
(2)
An
assertion
made
under
section
90(1)
of
the
Act
must
in-
clude—
(a)
a
statement
setting
out—
(i)
the
relevant
prior
art
(if
any);
and
(ii)
the
relevant
prior
use
or
uses
(if
any),
including
location,
date,
and
context
of
the
use;
and
(iii)
the
claims
of
the
complete
specification
to
which
the
prior
art
or
prior
use
relates;
and
(b)
a
statement
that
identifies
any
relevant
proceedings
be-
fore
the
court;
and
(c)
any
information
or
documents
relied
on
in
support
of
the
assertion
and
a
statement
as
to
their
relevance.
91
Manner
in
which
Commissioner
must
consider
and
deal
with
notice
of
assertion
under
section
90
of
Act
(1)
The
manner
in
which
the
Commissioner
must,
under
section
91(2)
of
the
Act,
consider
and
deal
with
a
notice
of
assertion
46
2014/275
Patents
Regulations
2014
Part
3
r
94
made
under
section
90
of
the
Act
is
by
dealing
with
the
matter
as
part
of
the
examination
process
under
section
65
of
the
Act.
(2)
The
Commissioner
may
,
but
is
not
required
to,
seek
and
re-
ceive
further
information
or
submissions
from
the
person
who
made
the
assertion.
Opposition
to
grant
of
patent
92
Matters
that
must
be
included
in
notice
of
opposition
(1)
The
prescribed
manner
in
which
a
person
may
oppose
the
grant
of
a
patent
under
section
92(1)
of
the
Act
is
by
filing
a
notice
of
opposition
that—
(a)
must
include
the
ground
or
grounds
on
which
the
grant
of
the
patent
is
opposed;
and
(b)
must
be
accompanied
by
a
statement
of
case
that
sets
out
the
facts
on
which
the
opponent
relies
and
the
relief
sought.
(2)
The
Commissioner
must
give
the
applicant
a
copy
of
the
notice
of
opposition
and
statement
of
case.
Compare:
SR
1954/21
1
r
48(1)–(2)
93
Period
within
which
notice
of
opposition
may
be
filed
(1)
A
notice
of
opposition
made
under
section
92(1)
of
the
Act
must
be
filed
within
3
months
after
the
date
of
the
publication
of
the
accepted
complete
specification.
(2)
The
Commissioner
may
,
on
the
request
of
a
person
wishing
to
oppose
the
grant
of
patent,
extend
the
period
for
filing
a
notice
of
opposition—
(a)
by
up
to
1
month,
without
the
applicant’
s
consent;
or
(b)
by
up
to
2
months,
with
the
applicant’
s
consent.
(3)
The
Commissioner
must
not
extend
the
period
for
filing
a
no-
tice
of
opposition
if
the
request
for
extension
is
received
after
the
period
for
filing
the
notice
has
expired.
94
Counter
-statement
to
notice
of
opposition
(1)
The
applicant
must
file
a
counter
-
statement
within
2
months
after
receiving
a
copy
of
the
notice
of
opposition
and
of
the
statement
of
case
filed
under
section
92(1)
of
the
Act.
47
Part
3
r
95
Patents
Regulations
2014
2014/275
(2)
The
counter
-
statement
must
set
out
the
grounds
on
which
the
opposition
is
contested.
(3)
If
the
applicant
does
not
file
a
counter
-
statement
within
the
prescribed
time,
the
patent
application
must
be
treated
as
hav-
ing
been
abandoned.
(4)
The
opponent
may
,
within
4
months
after
receiving
the
copy
of
the
counter
-
statement,
file
evidence
in
support
of
his
or
her
case.
(5)
The
applicant
may
file
evidence
in
support
of
his
or
her
case
within
4
months
after
receiving
the
copy
of
the
opponent’
s
evi-
dence
or
,
if
the
opponent
does
not
file
any
evidence,
within
4
months
after
the
expiration
of
the
time
within
which
the
oppo-
nent’
s
evidence
might
have
been
filed.
(6)
The
opponent
may
,
within
3
months
after
receiving
the
copy
of
the
applicant’
s
evidence,
file
evidence
confined
to
matters
strictly
in
reply
.
Compare:
SR
1954/21
1
r
49
Re-examination
after
acceptance
95
Requests
for
r
e-examination
(1)
A
request
for
re
-
examination
made
under
section
94(1)
or
95(1)
of
the
Act
must
include—
(a)
a
statement
that—
(i)
sets
out
the
facts
in
support
of
the
grounds
in
section
92
or
1
14
of
the
Act
(as
the
case
may
be)
that
the
person
making
the
request
wants
the
Commissioner
to
consider;
and
(ii)
identifies
any
proceedings
referred
to
in
section
96(1)(b)(i)
or
(ii)
of
the
Act
or
,
if
no
such
pro-
ceedings
are
pending,
a
statement
to
that
ef
fect;
and
(b)
any
information
or
documents
relied
on
in
support
of
the
request
and
a
statement
as
to
their
relevance.
(2)
A
request
for
re
-
examination
made
under
section
94(1)
or
95(1)
of
the
Act
may
be
amended
or
withdrawn
by
the
person
who
made
the
request
at
any
time
before
the
Commissioner
issues
a
re
-
examination
report
under
section
97
of
the
Act.
48
2014/275
Patents
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2014
Part
3
r
99
96
Commissioner
must
give
notice
of
r
e-examination
r
equests
If
the
Commissioner
receives
a
request
for
re
-
examination
under
section
94(1)
or
95(1)
of
the
Act,
the
Commissioner
must
notify
the
applicant
or
patentee
(as
the
case
may
be)
that
a
request
has
been
made.
97
Re-examination
r
eports
and
amendment
of
complete
specification
(1)
If
the
Commissioner
issues
a
re
-
examination
report
that
states
that
he
or
she
is
satisfied,
on
the
balance
of
probabilities,
that
any
of
the
relevant
grounds
in
section
97
of
the
Act
are
estab-
lished,
the
applicant
or
patentee
may
,
not
later
than
3
months
after
the
Commissioner
issues
the
report,
file
a
response
to
the
report
to
amend
the
complete
specification
for
the
purpose
of
removing
any
lawful
ground
of
objection.
(2)
The
Commissioner
may
extend
the
deadline
prescribed
by
subclause
(1)
if
the
applicant
or
patentee
files
a
response
to
the
report
that
includes
a
request
for
an
extension
within
1
month
after
the
expiry
of
the
prescribed
period.
(3)
A
response
to
a
re
-
examination
report
that
amends
the
complete
specification
must
include
the
information
and
documents
described
in
regulation
58
.
(4)
See
regulations
169
to
174
(which
relate
to
hearings).
Grant
of
patent
98
Cir
cumstances
in
which
grant
of
patent
may
be
postponed
The
circumstances
in
which
the
Commissioner
may
postpone
the
grant
of
a
patent
under
section
101(3)
of
the
Act
are—
(a)
a
maintenance
fee
that
has
become
due
has
not
been
paid;
or
(b)
a
proceeding
in
relation
to
the
patent
application
is
pending
before
the
Commissioner
or
the
court.
99
Amendment
of
patent
under
section
105
of
Act
An
application
under
section
105
of
the
Act
for
the
amendment
of
a
patent
must
include—
(a)
the
name
and
address
of
the
person
to
whom
the
patent
should
have
been
granted;
and
49
Part
3
r
100
Patents
Regulations
2014
2014/275
(b)
the
nationality
or
principal
place
of
business
of
the
per
-
son
to
whom
the
patent
should
have
been
granted;
and
(c)
evidence
in
support
of
the
application.
Compare:
SR
1954/21
1
r
72
Patents
of
addition
100
Application
for
patent
of
addition
An
application
made
for
a
further
patent
must,
for
the
pur
-
pose
of
section
106(1)(c)
of
the
Act,
include
the
number
of
the
patent
granted,
or
application
made,
for
the
main
invention.
101
Commissioner
may
r
evoke
patent
for
impr
ovement
or
modification
and
grant
patent
of
addition
A
request
for
revocation
made
under
section
107(2)
of
the
Act
must
include
the
following
information:
(a)
the
number
of
the
patent
granted
for
the
main
invention;
and
(b)
the
number
of
the
patent
granted
for
the
invention
that
is
an
improvement
in,
or
modification
of,
the
main
in-
vention.
Revocation
of
patents
102
Application
to
Commissioner
for
r
evocation
of
patent
(1)
The
prescribed
manner
in
which
a
person
may
apply
to
the
Commissioner
for
the
revocation
of
a
patent
under
section
1
12
of
the
Act
is
that
the
application—
(a)
must
include
the
ground
or
grounds
in
section
1
14
of
the
Act
on
which
the
application
is
made;
and
(b)
must
include
a
statement
confirming
that
there
are
no
relevant
proceedings
before
the
court;
and
(c)
must
be
accompanied
by
a
statement
of
case
setting
out
the
facts
upon
which
the
person
relies
and
the
relief
sought.
(2)
The
Commissioner
must
give
the
patentee
a
copy
of
the
appli-
cation
and
of
the
statement
of
case.
Compare:
SR
1954/21
1
r
104
50
2014/275
Patents
Regulations
2014
Part
3
r
104
103
Counter
-statement
to
application
and
evidence
for
r
evocation
of
patent
(1)
The
patentee
must
file
a
counter
-
statement
to
an
application
for
revocation
of
a
patent,
within
2
months
after
receiving
a
copy
of
the
application
and
of
the
statement
of
case,
setting
out
the
grounds
on
which
the
application
for
revocation
is
contested.
(2)
The
patentee
may
request
an
extension
of
time
for
filing
a
counter
-
statement
by
filing
a
request
no
later
than
2
months
after
the
2
-
month
period
in
subclause
(1)
expires,
including
evidence
(if
any)
in
support
of
the
request.
(3)
The
Commissioner
may
extend
the
time
for
filing
a
counter
-
statement
if
the
Commissioner
is
satisfied
there
are
excep-
tional
circumstances
that
justify
the
extension
and,
in
that
case,
the
period
of
the
extension
must
be
for
no
longer
than
2
months
after
the
date
the
counter
-
statement
is
required
to
be
filed.
(4)
The
person
who
applied
for
revocation
(the
applicant
)
may
,
within
4
months
after
receiving
the
copy
of
the
counter
-
state-
ment,
file
evidence
in
support
of
his
or
her
case.
(5)
The
patentee
may
file
evidence
in
support
of
his
or
her
case
within
4
months
after
receiving
the
copy
of
the
applicant’
s
evi-
dence
or
,
if
the
applicant
does
not
file
any
evidence,
within
4
months
after
the
expiration
of
the
time
within
which
the
appli-
cant’
s
evidence
might
have
been
filed.
(6)
The
applicant
may
,
within
3
months
after
receiving
the
copy
of
the
patentee’
s
evidence,
file
evidence
confined
to
matters
strictly
in
reply
.
Compare:
SR
1954/21
1
r
105
104
Pr
ocedur
e
if
no
counter
-statement
to
application
for
r
evocation
of
patent
is
filed
(1)
This
regulation
applies
if
the
patentee
fails
to
file
a
counter
-
statement
to
an
application
for
revocation
within
the
period
prescribed
by
regulation
103
or
any
extension
of
that
period
under
that
regulation.
(2)
The
applicant
may
file
evidence
in
support
of
his
her
case
within
4
months
after
the
time
within
which
the
patentee
is
required
to
file
the
counter
-
statement.
51
Part
3
r
105
Patents
Regulations
2014
2014/275
(3)
The
Commissioner
may
determine
the
application
for
revoca-
tion
under
sections
1
12
to
1
14
of
the
Act
after
considering
the
application
for
revocation
and
any
evidence
filed
in
support
of
the
application.
105
Refusal
of
applications
for
r
evocation
of
patent
(1)
If
the
Commissioner
intends
to
refuse
an
application
for
revo-
cation
of
a
patent
under
section
1
13(1)
of
the
Act
or
to
refuse
to
consider
an
issue
under
section
1
13(2)
of
the
Act,
the
Com-
missioner
must,
as
soon
as
practicable,
notify
the
applicant
that
the
Commissioner
intends
to
refuse
the
application
or
to
consider
the
issue
(as
the
case
may
be).
(2)
The
notification
must—
(a)
specify
the
grounds
on
which
the
Commissioner
relies
to
refuse
the
application
or
to
consider
the
issue
(as
the
case
may
be);
and
(b)
advise
the
applicant
that
the
applicant
may
request
a
hearing;
and
(c)
specify
a
period
within
which
the
applicant
may
request
a
hearing,
which
must
be
not
less
than
10
working
days
after
the
applicant
receives
the
notification;
and
(d)
advise
the
applicant
that
the
Commissioner
will
refuse
the
application
or
to
consider
the
issue
at
the
end
of
that
period
if
the
applicant
has
not
requested
a
hearing.
(3)
The
Commissioner
must,
as
soon
as
practicable,
hold
a
hearing
if
a
party
requests
it.
(4)
However
,
the
Commissioner
is
not
required
to
hold
a
hearing
if
the
Commissioner
considers
that
the
party
seeking
a
hearing
has
failed,
without
reasonable
excuse,
to
attend
a
hearing
or
agree
to
a
hearing
date.
(5)
In
that
case,
the
Commissioner
may
either
direct
a
hearing
on
the
papers
or
treat
the
request
for
a
hearing
as
having
been
withdrawn.
Compare:
SR
2003/187
r
36
52
2014/275
Patents
Regulations
2014
Part
3
r
108
Surr
ender
of
patents
106
Notice
of
offer
to
surr
ender
patent
(1)
A
notice
of
an
of
fer
by
a
patentee
under
section
1
16
of
the
Act
to
surrender
a
patent
must
include—
(a)
the
reasons
for
making
the
of
fer;
and
(b)
full
particulars
of
every
relevant
proceeding
before
the
court.
(2)
In
regulations
107
to
109
,
opponent
means
the
person
who
gives
to
the
Commissioner
a
notice
of
opposition
to
the
sur
-
render
under
section
1
16(3)
of
the
Act.
Compare:
SR
1954/21
1
r
107
107
Opposition
to
surr
ender
of
patent
(1)
The
period
prescribed
for
the
purpose
of
section
1
16(3)
of
the
Act
for
giving
to
the
Commissioner
a
notice
of
opposition
to
the
surrender
of
a
patent
is
2
months
after
the
publication
in
the
journal
of
the
of
fer
to
surrender
the
patent.
(2)
The
notice
of
opposition—
(a)
must
include
the
opponent’
s
reasons
for
opposing
the
surrender
of
the
patent;
and
(b)
must
be
accompanied
by
a
statement
of
case
setting
out
the
opponent’
s
interest
in
the
surrender
,
the
facts
upon
which
the
opponent
relies,
and
the
relief
sought.
(3)
The
Commissioner
must
give
a
copy
of
the
notice
of
oppos-
ition
and
of
the
statement
of
case
to
the
patentee.
Compare:
SR
1954/21
1
r
108
108
Patentee
must
file
counter
-statement
(1)
The
patentee
must
file
a
counter
-
statement
within
2
months
after
receiving
a
copy
of
the
notice
of
opposition
and
of
the
statement
of
case
under
regulation
107
.
(2)
The
counter
-
statement
must
set
out
the
grounds
on
which
the
opposition
is
contested.
(3)
If
the
patentee
does
not
file
a
counter
-
statement
within
the
2
-
month
period
under
subclause
(1),
the
patentee
must
be
treated
as
having
abandoned
the
patentee’
s
of
fer
to
surrender
the
patent.
53
Part
3
r
109
Patents
Regulations
2014
2014/275
109
Filing
of
evidence
(1)
The
opponent
may
,
within
2
months
after
receiving
the
copy
of
the
counter
-
statement
under
regulation
108
,
file
evidence
in
support
of
the
opponent’
s
case.
(2)
The
patentee
may
file
evidence
in
support
of
the
patentee’
s
case
within
2
months
after
receiving
the
copy
of
the
opponent’
s
evidence
or
,
if
the
opponent
does
not
file
any
evidence,
within
2
months
after
the
expiry
of
the
time
within
which
the
oppo-
nent’
s
evidence
might
have
been
filed
under
subclause
(1).
(3)
The
opponent
may
,
within
1
month
after
receiving
the
copy
of
the
patentee’
s
evidence,
file
further
evidence,
but
only
if
the
further
evidence
is
confined
to
matters
strictly
in
reply
.
Restoration
of
lapsed
patents
1
10
Manner
in
which
r
equest
to
r
estor
e
lapsed
patent
may
be
made
(1)
A
request
under
section
1
17(2)
of
the
Act
for
restoration
of
a
patent
and
any
patent
of
addition
must
include
the
date
the
renewal
fee
was
due
and
evidence
in
support
of
the
request.
(2)
The
patentee
may
file
further
evidence
in
support
of
the
request
within
3
months
after
the
date
that
the
request
is
made.
(3)
If
the
Commissioner
requires
further
evidence
under
section
1
18(2)
of
the
Act,
the
patentee
must
file
further
evidence
in
support
of
the
request
within
3
months
after
the
date
that
the
request
for
restoration
is
given.
(4)
In
this
regulation
and
regulations
1
1
1
to
1
14,
patentee
means
a
person
referred
to
in
section
1
19
of
the
Act
who
makes
a
request
for
an
order
under
section
1
17
of
the
Act.
Compare:
SR
1954/21
1
r
85
1
1
1
When
r
equest
for
r
estoration
of
patent
may
be
made
(1)
For
the
purpose
of
section
120
of
the
Act,
the
prescribed
period
within
which
a
request
under
section
1
17
of
the
Act
may
be
made
is
12
months
after
the
date
on
which
the
renewal
fee
becomes
due
under
regulation
8(3)
.
(2)
If
the
request
under
section
1
17
of
the
Act
is
made
after
the
period
referred
to
in
subclause
(1)
expires,
the
request
must
be
accompanied
by—
54
2014/275
Patents
Regulations
2014
Part
3
r
1
13
(a)
the
statement
required
by
section
120(3)
of
the
Act;
and
(b)
the
evidence
in
support
of
an
extension
under
section
120(2)
of
the
Act.
(3)
The
patentee
may
file
further
evidence
in
support
of
an
ex-
tension
under
section
120(2)
of
the
Act
at
any
time
within
3
months
after
making
the
request
under
section
1
17
of
the
Act.
(4)
If
the
Commissioner
requires
the
patentee
to
file
further
evi-
dence
under
section
120(4)
of
the
Act,
the
patentee
must
file
that
evidence
within
3
months
after
the
date
that
the
request
for
restoration
is
made.
(5)
The
Commissioner
may
extend
the
period
prescribed
by
sub-
clause
(3)
or
(4)
by
up
to
1
month,
on
request
by
the
patentee
made
before
the
end
of
that
prescribed
period.
1
12
Opposition
to
r
estoration
of
patent
(1)
For
the
purpose
of
section
123(1)
of
the
Act,
the
prescribed
period
within
which
notice
of
opposition
to
an
order
being
made
under
section
1
17
of
the
Act
may
be
given
to
the
Com-
missioner
is
2
months
after
the
date
on
which
the
request
made
in
accordance
with
sections
1
17
to
120
of
the
Act
is
published
in
the
journal
under
section
122
of
the
Act.
(2)
The
notice
of
opposition—
(a)
must
identify
the
ground
or
grounds
in
section
123(1)
of
the
Act
that
apply;
and
(b)
must
be
accompanied
by
a
statement
of
case
setting
out
the
facts
upon
which
the
opponent
relies.
(3)
The
Commissioner
must
give
a
copy
of
the
notice
of
oppos-
ition
and
of
the
statement
of
case
to
the
patentee.
(4)
In
this
regulation
and
regulation
1
14
,
opponent
means
the
per
-
son
who
gives
notice
to
the
Commissioner
of
opposition
to
an
order
being
made
under
section
1
17
of
the
Act.
Compare:
SR
1954/21
1
r
87
1
13
Patentee
must
file
counter
-statement
(1)
The
patentee
must
file
a
counter
-
statement
within
2
months
after
receiving
a
copy
of
the
notice
of
opposition
and
of
the
statement
of
case
under
regulation
1
12
.
55
Part
3
r
1
14
Patents
Regulations
2014
2014/275
(2)
The
counter
-
statement
must
set
out
the
grounds
on
which
the
opposition
is
contested.
(3)
If
the
patentee
does
not
file
a
counter
-
statement
within
the
2
-
month
period
under
subclause
(1),
the
patentee
must
be
treated
as
having
abandoned
the
patentee’
s
request
for
restora-
tion
of
the
patent.
1
14
Filing
of
evidence
(1)
The
opponent
may
file
evidence
in
support
of
the
opponent’
s
case
within
2
months
after
receiving
the
copy
of
the
counter
-
statement
under
regulation
1
13
.
(2)
The
patentee
may
file
evidence
in
support
of
the
patentee’
s
case
within
2
months
after
receiving
the
copy
of
the
opponent’
s
evidence
or
,
if
the
opponent
does
not
file
any
evidence,
within
2
months
after
the
expiry
of
the
time
within
which
the
oppo-
nent’
s
evidence
might
have
been
filed
under
subclause
(1).
(3)
The
opponent
may
file
further
evidence
within
1
month
after
receiving
the
copy
of
the
patentee’
s
evidence,
but
only
if
the
further
evidence
is
confined
to
matters
strictly
in
reply
.
1
15
Pr
otection
of
persons
who
avail
themselves
of
invention
if
Commissioner
r
estor
es
lapsed
patent
(1)
Every
order
under
section
124
of
the
Act
must
contain
or
be
subject
to
the
provisions
prescribed
in
this
regulation.
(2)
No
action
or
other
proceeding
may
be
commenced
or
pros-
ecuted,
nor
any
damages
or
account
of
profits
recovered,
in
respect
of
a
patent
that
a
person
referred
to
in
section
124(2)
of
the
Act
availed
themselves
of,
or
took
definite
steps
to
avail
themselves
of,
on
the
ground
that
the
person
has
infringed,
or
infringes,
the
patent
for
the
invention.
(3)
However
,
subclause
(2)
applies
only
to
the
extent
that
the
per
-
son—
(a)
continues
to
act
in
a
manner
that
is
consistent
with,
but
does
not
go
beyond,
the
way
in
which
the
person
availed
themselves
of
the
invention;
or
(b)
continues
to
act
in
a
manner
that
is
consistent
with
the
definitive
steps
that
were
taken
to
avail
themselves
of
the
invention
so
as
to
complete
those
steps;
or
56
2014/275
Patents
Regulations
2014
Part
3
r
1
17
(c)
uses
the
result
of
the
completion
of
the
definitive
steps
in
a
manner
that
is
consistent
with,
but
does
not
go
be-
yond,
what
was
contemplated
by
those
steps
in
order
to
avail
themselves
of
the
invention.
(4)
T
o
avoid
doubt,
the
protection
in
subclause
(2)
applies
to
ac-
tivities
undertaken
at
any
time
after
the
patent
ceases
to
have
ef
fect.
Compare:
1954/224
r
40C
Restoration
of
patent
applications
1
16
Request
for
r
estoration
of
void
or
abandoned
patent
applications
(1)
A
request
under
section
125
of
the
Act
for
an
order
to
restore
a
patent
application
and
to
extend
the
period
for
complying
with
the
requirements
imposed
on
the
applicant
by
or
under
the
Act
or
the
Patent
Cooperation
T
reaty
(as
the
case
may
be)
must
include
evidence
in
support
of
the
request.
(2)
The
applicant
may
file
further
evidence
in
support
of
the
re-
quest
within
3
months
after
the
request
is
made.
(3)
The
Commissioner
may
require
the
applicant
to
file
further
evidence
in
support
of
the
request.
(4)
If
the
Commissioner
requires
further
evidence
under
subclause
(3),
the
applicant
must
file
that
evidence
within
3
months
after
the
date
that
the
request
for
restoration
is
made.
Compare:
SR
1954/21
1
r
95
1
17
When
r
equest
for
r
estoration
of
application
may
be
made
(1)
The
prescribed
period
for
the
purpose
of
section
126(1)
of
the
Act
within
which
a
request
under
section
125
of
the
Act
may
be
made
is,—
(a)
in
the
case
of
a
patent
application
that
is
abandoned
under
section
35
of
the
Act,
12
months
after
the
date
on
which
the
maintenance
fee
becomes
due
under
regu-
lation
8(2)
;
and
(b)
in
any
other
case
referred
to
in
section
125(1)
of
the
Act,
12
months
after
the
date
on
which
the
application
is
considered
void
or
abandoned
under
the
Act.
57
Part
3
r
1
18
Patents
Regulations
2014
2014/275
(2)
If
the
request
under
section
125
of
the
Act
is
made
after
the
period
referred
to
in
subclause
(1)
expires,
the
request
must
be
accompanied
by—
(a)
the
statement
required
by
section
126(3)
of
the
Act;
and
(b)
the
evidence
in
support
of
an
extension
under
section
126(2)
of
the
Act.
(3)
The
applicant
may
file
further
evidence
in
support
of
an
ex-
tension
under
section
126(2)
of
the
Act
at
any
time
within
3
months
after
making
the
request
under
section
125
of
the
Act.
(4)
If
the
Commissioner
requires
the
applicant
to
file
further
evi-
dence
under
section
126(4)
of
the
Act,
the
applicant
must
file
that
evidence
within
3
months
after
the
date
that
the
request
for
restoration
is
made.
(5)
The
Commissioner
may
extend
the
period
prescribed
by
sub-
clause
(3)
or
(4)
by
up
to
1
month,
on
request
by
the
applicant
made
before
the
end
of
that
prescribed
period.
1
18
Opposition
to
r
estoration
of
patent
application
(1)
The
period
prescribed
for
the
purpose
of
section
127(1)
of
the
Act
for
giving
notice
to
the
Commissioner
of
opposition
to
an
order
being
made
under
section
128
of
the
Act
is
2
months
after
the
date
on
which
the
request
for
the
order
is
published
in
the
journal
under
section
125(4)
of
the
Act.
(2)
The
notice
of
opposition—
(a)
must
identify
the
ground
or
grounds
in
section
127(1)
of
the
Act
that
apply;
and
(b)
must
be
accompanied
by
a
statement
of
case
setting
out
the
facts
upon
which
the
opponent
relies.
(3)
The
Commissioner
must
give
a
copy
of
the
notice
of
oppos-
ition
and
statement
of
case
to
the
applicant.
(4)
In
this
regulation
and
regulation
120
,
opponent
means
the
per
-
son
who
has
given
notice
to
the
Commissioner
of
opposition
to
an
order
being
made
under
section
128
of
the
Act.
Compare:
SR
1954/21
1
r
97
58
2014/275
Patents
Regulations
2014
Part
3
r
121
1
19
Applicant
must
file
counter
-statement
(1)
The
applicant
must
file
a
counter
-
statement
within
2
months
after
receiving
a
copy
of
the
notice
of
opposition
and
of
the
statement
of
case
under
regulation
1
18
.
(2)
The
counter
-
statement
must
set
out
the
grounds
on
which
the
opposition
is
contested.
(3)
If
the
applicant
does
not
file
a
counter
-
statement
within
the
2
-
month
period
under
subclause
(1),
the
applicant
must
be
treated
as
having
abandoned
the
applicant’
s
request
for
restoration.
120
Filing
of
evidence
(1)
The
opponent
may
,
within
2
months
after
receiving
the
copy
of
the
counter
-
statement
under
regulation
1
19
,
file
evidence
in
support
of
the
opponent’
s
case.
(2)
The
applicant
may
file
evidence
in
support
of
the
applicant’
s
case
within
2
months
after
receiving
the
copy
of
the
opponent’
s
evidence
or
,
if
the
opponent
does
not
file
any
evidence,
within
2
months
after
the
expiry
of
the
time
within
which
the
oppo-
nent’
s
evidence
might
have
been
filed
under
subclause
(1).
(3)
The
opponent
may
,
within
1
month
after
receiving
the
copy
of
the
applicant’
s
evidence,
file
further
evidence,
but
only
if
the
further
evidence
is
confined
to
matters
strictly
in
reply
.
121
Pr
otection
of
persons
who
avail
themselves
of
invention
if
Commissioner
r
estor
es
patent
application
(1)
Every
order
under
section
128
of
the
Act
must
contain
or
be
subject
to
the
provisions
prescribed
in
this
regulation.
(2)
No
action
or
other
proceeding
may
be
commenced
or
pros-
ecuted,
nor
any
damages
or
account
of
profits
recovered,
in
respect
of
an
invention
(as
described
in
the
published
complete
specification)
that
is
the
subject
of
the
patent
application
that
a
person
referred
to
in
section
128(2)
of
the
Act
availed
them-
selves
of,
or
took
definite
steps
to
avail
themselves
of,
on
the
ground
that
the
person
has
infringed,
or
infringes,
the
patent
for
the
invention.
(3)
However
,
subclause
(2)
applies
only
to
the
extent
that
the
per
-
son—
59
Part
3
r
122
Patents
Regulations
2014
2014/275
(a)
continues
to
act
in
a
manner
that
is
consistent
with,
but
does
not
go
beyond,
the
way
in
which
the
person
availed
themselves
of
the
invention;
or
(b)
continues
to
act
in
a
manner
that
is
consistent
with
the
definitive
steps
that
were
taken
to
avail
themselves
of
the
invention
so
as
to
complete
those
steps;
or
(c)
uses
the
result
of
the
completion
of
the
definitive
steps
in
a
manner
that
is
consistent
with,
but
does
not
go
be-
yond,
what
was
contemplated
by
those
steps
in
order
to
avail
themselves
of
the
invention.
(4)
T
o
avoid
doubt,
the
protection
in
subclause
(2)
applies
to
ac-
tivities
undertaken
at
any
time
after
the
patent
application
be-
comes
void
or
is
abandoned.
Compare:
SR
1954/224
r
40C
Miscellaneous
pr
ovisions
122
Request
for
dir
ection
under
section
129
of
Act
(1)
A
request
for
a
direction
under
section
129(2)
of
the
Act
must
include—
(a)
the
full
name
and
address
of
the
person
or
persons
in
whose
name
or
names
the
application
is
requested
to
proceed;
and
(b)
the
nationality
or
principal
place
of
business
of
the
per
-
son
or
persons
in
whose
name
or
names
the
application
is
requested
to
proceed;
and
(c)
a
statement
identifying
how
the
person
or
persons
are
entitled
to
the
patent,
an
interest
in
the
patent,
or
an
undivided
share
in
the
patent
or
in
an
interest
in
the
patent;
and
(d)
either—
(i)
a
copy
of
the
assignment
or
agreement
that
en-
titles
the
person
or
persons
referred
to
in
para-
graph
(a)
to
the
patent,
an
interest
in
the
patent,
or
an
undivided
share
in
the
patent
or
in
an
inter
-
est
in
the
patent;
or
(ii)
both—
(A)
a
statement
setting
out
the
particulars
of
any
document
that
establishes
the
person’
s
or
persons’
entitlement
by
operation
of
law
60
2014/275
Patents
Regulations
2014
Part
4
r
124
to
the
patent,
an
interest
in
the
patent,
or
an
undivided
share
in
the
patent
or
in
an
interest
in
the
patent,
the
document’
s
date,
the
parties
to
the
document,
and
how
the
entitlement
is
substantiated;
and
(B)
a
copy
of
each
document
referred
to
in
that
statement.
(2)
The
Commissioner
may
also
require
that
the
person
who
makes
the
request
produce
the
original
copy
of
the
assign-
ment,
agreement,
or
other
document
and
any
other
evidence.
Compare:
SR
1954/21
1
r
65
123
Request
for
dir
ections
under
section
131
of
Act
(1)
A
request
for
directions
under
section
131(1)
of
the
Act
must
include—
(a)
the
name
and
address
of
each
interested
party;
and
(b)
a
statement
setting
out
the
facts
relied
on
and
directions
sought.
(2)
The
Commissioner
must
notify
each
interested
party
(other
than
the
person
who
made
the
request)
that
the
request
has
been
made.
(3)
The
Commissioner
may
give
any
directions
regarding
the
sub-
sequent
procedure
that
are
consistent
with
the
requirement
in
section
131(3)
of
the
Act.
Compare:
SR
1954/21
1
r
66
Part
4
Infringement,
other
patent
pr
oceedings,
and
matters
affecting
patent
ownership
Registration
of
assignments,
licences,
and
other
inter
ests
in
patents
124
Application
under
section
165
of
Act
(1)
An
application
under
section
165
of
the
Act
must
identify
whether
it
is
made
under
section
165(1)
or
(2)
of
the
Act
and
must
include—
(a)
a
statement
identifying
whether
the
patent,
share,
or
in-
terest
was
acquired,
disposed
of,
or
conferred
by
assign-
61
Part
4
r
125
Patents
Regulations
2014
2014/275
ment,
transmission,
operation
of
law
,
mortgage,
licence,
or
other
means;
and
(b)
if
registering
an
interest,
the
nature
of
the
interest;
and
(c)
a
statement
setting
out
the
particulars
of
the
document
that
establishes
the
entitlement
to
the
patent,
share,
or
interest,
the
document’
s
date,
the
parties
to
the
docu-
ment,
and
how
the
entitlement
is
substantiated;
and
(d)
a
copy
of
the
document
that
establishes
the
entitlement.
(2)
The
Commissioner
may
require
that
the
original
document
re-
ferred
to
in
an
application
be
produced
to
the
Commissioner
.
(3)
If
an
original
document
required
by
the
Commissioner
under
subclause
(2)
is
not
in
electronic
form,
regulation
12
does
not
apply
to
the
production
of
that
document.
Compare:
SR
1954/21
1
rr
127
,
128
V
esting
of
patents
and
patent
applications
without
pr
obate
or
letters
of
administration
125
Application
to
vest
patent
or
patent
application
without
pr
obate
or
letters
of
administration
(1)
An
application
under
section
167
of
the
Act
to
register
or
sub-
stitute
a
person
(
B
)
as
a
patentee,
an
applicant
for
a
patent,
or
a
nominated
person
without
requiring
probate
or
letters
of
ad-
ministration
must
include—
(a)
the
full
name
and
address
of
B;
and
(b)
the
nationality
or
principal
place
of
business
of
B;
and
(c)
the
full
name
of
the
deceased
person
(
A
)
and
identify
whether
A
was
the
nominated
person,
applicant,
or
pa-
tentee;
and
(d)
a
statement
as
to
the
circumstances
and
grounds
on
which
the
application
is
made.
(2)
The
statement
required
by
subclause
(1)(d)
must
identify—
(a)
whether
A
was
intestate
when
he
or
she
died;
and
(b)
the
date
on
which
A
died;
and
(c)
the
place
where
A
died;
and
(d)
the
country
where
A
was
domiciled
when
he
or
she
died;
and
(e)
how
B
is
entitled
to
obtain
probate
or
letters
of
admin-
istration
or
is
the
personal
representative
of
A;
and
62
2014/275
Patents
Regulations
2014
Part
4
r
127
(f)
how
the
interests
of
the
creditors
of
A,
and
of
all
persons
beneficially
interested
under
A
’
s
will
or
on
A
’
s
intestacy
,
will
be
adequately
safeguarded
if
the
action
applied
for
is
taken.
(3)
The
Commissioner
may
require
further
evidence
to
be
filed
in
support
of
the
application.
Compare:
SR
1954/21
1
r
132
Mention
of
inventor
in
patent,
specification,
and
patents
r
egister
126
Request
or
claim
under
section
190(1)
of
Act
to
be
mentioned
as
inventor
(1)
A
request
or
claim
made
under
section
190(1)
of
the
Act
must
include—
(a)
the
full
name
and
address
of
the
inventor
(if
dif
ferent
from
the
person
making
the
request
or
claim);
and
(b)
a
statement
setting
out
the
facts
relied
on.
(2)
The
Commissioner
may
give
any
directions
regarding
the
pro-
cedure
subsequent
to
giving
notice
of
the
claim
under
section
192(1)
of
the
Act
that
are
consistent
with
the
requirement
in
section
192(2)
of
the
Act.
Compare:
SR
1954/21
1
rr
60
,
61
127
Application
for
certificate
under
section
193(1)
of
Act
concerning
mention
of
inventor
(1)
An
application
under
section
193(1)
of
the
Act
for
a
certificate
must
include—
(a)
the
name
of
the
person
who
it
is
alleged
should
not
have
been
mentioned
as
the
inventor;
and
(b)
a
statement
setting
out
the
facts
relied
on.
(2)
The
Commissioner
must
notify
each
patentee
(not
being
the
person
applying
for
the
certificate),
the
person
mentioned
as
the
inventor
,
and
any
other
person
whom
the
Commissioner
considers
to
be
interested
that
an
application
has
been
made.
(3)
The
Commissioner
may
give
any
directions
regarding
the
sub-
sequent
procedure
that
are
consistent
with
the
requirement
in
section
193(4)
of
the
Act.
Compare:
SR
1954/21
1
r
63
63
Part
5
r
128
Patents
Regulations
2014
2014/275
Part
5
Administrative
and
other
miscellaneous
pr
ovisions
in
Part
5
of
Act
Subpart
1—
Patents
register
and
other
information
on
patents
and
patent
applications
Patents
r
egister
128
Patents
r
egister
must
r
ecord
grant
of
patents
The
Commissioner
must
ensure
that
the
information
required
by
section
197(1)
of
the
Act
is
entered
in
the
patents
register
in
respect
of
patents
in
force
in
New
Zealand
as
soon
as
prac-
ticable
after
the
date
that
a
patent
is
granted
or
,
in
the
case
of
information
filed
after
the
grant
of
a
patent,
as
soon
as
practic-
able
after
the
information
is
filed.
Compare:
SR
1954/21
1
r
125
129
Other
patents
information
that
must
be
enter
ed
in
patents
r
egister
The
information
that
must
be
entered
in
the
patents
register
under
section
197(1)(f)
of
the
Act
is
all
documents
that
are
open
to
public
inspection
(for
example,
see
section
78
of
the
Act
and
regulation
85
).
Compare:
SR
1954/21
1
r
129
130
Payment
of
r
enewal
fees
must
be
enter
ed
in
patents
r
egister
The
Commissioner
must
enter
,
under
section
197(1)(f)
of
the
Act,
the
following
information
in
the
patents
register
when
the
Commissioner
issues
a
certificate
of
payment
under
regulation
1
1
:
(a)
that
a
renewal
fee
has
been
paid;
and
(b)
the
date
of
payment.
64
2014/275
Patents
Regulations
2014
Part
5
r
132
Sear
ches
of
patents
r
egister
and
obtaining
patent
information
131
Sear
ch
of
patents
r
egister
(1)
The
patents
register
must
be
available
for
access
and
search-
ing
by
members
of
the
public
at
all
times
unless
subclause
(2)
applies.
(2)
The
Commissioner
may
refuse
access
to
the
patents
register
or
suspend
its
operation,
in
whole
or
in
part,—
(a)
if
the
Commissioner
considers
that
it
is
not
practical
to
provide
access
to
the
patents
register;
or
(b)
to
enable
maintenance
of
the
patents
register;
or
(c)
in
response
to
technical
dif
ficulties
in
the
maintenance
or
operation
of
the
patents
register;
or
(d)
to
ensure
the
security
or
integrity
of
the
patents
register
.
Compare:
SR
1954/21
1
r
129
132
Information
concerning
patent
or
patent
application
that
may
be
r
equested
A
request
under
section
199(c)
of
the
Act
for
information
re-
lating
to
a
patent
or
patent
application
may
be
made—
(a)
as
to
when
a
complete
specification
following
a
provi-
sional
specification
has
been
filed
or
when
a
period
of
15
months
after
the
filing
date
of
the
patent
application
has
expired
and
a
complete
specification
has
not
been
filed;
and
(b)
as
to
when
a
complete
specification
is
or
will
be
open
to
public
inspection,
or
when
a
patent
application
has
become
abandoned
or
void;
and
(c)
as
to
when
a
patent
has
been
granted;
and
(d)
as
to
when
a
maintenance
or
renewal
fee
has
been
paid;
and
(e)
as
to
when
a
patent
has
expired;
and
(f)
as
to
when
an
entry
has
been
made
in
the
patents
regis-
ter
or
application
has
been
made
for
the
making
of
the
entry;
and
(g)
as
to
when
any
application
is
made
or
action
taken
in-
volving
an
entry
in
the
patents
register
or
publication
in
the
journal.
Compare:
SR
1954/21
1
r
139(1)
65
Part
5
r
133
Patents
Regulations
2014
2014/275
133
How
r
equest
for
patent
information
and
certified
copies
must
be
made
A
request
under
section
199
of
the
Act
must
contain
the
pur
-
pose
for
which
copies
of
documents
(if
sought)
or
information
is
required.
Compare:
SR
1954/21
1
r
139(2)
Changes
to
patents
r
egister
and
other
official
documents
134
Request
to
alter
entries
on
patents
r
egister
(1)
A
request
by
a
patentee
to
alter
a
name,
nationality
,
principal
place
of
business,
address,
or
address
for
service
entered
in
the
patents
register
in
respect
of
the
patentee’
s
patent
must
include—
(a)
the
name,
nationality
,
principal
place
of
business,
ad-
dress,
or
address
for
service
to
which
the
entry
is
to
be
altered;
and
(b)
in
respect
of
an
alteration
of
a
name
or
nationality
,
evi-
dence
to
verify
the
new
name
or
nationality
(as
the
case
may
be).
(2)
Before
acting
on
a
request
to
alter
a
name
or
nationality
,
the
Commissioner
may
require
any
further
evidence
in
support
of
the
alteration
that
the
Commissioner
thinks
fit.
(3)
Any
evidence
required
under
subclause
(2)
must
be
provided
to
the
Commissioner
within
2
months
after
the
Commissioner
requires
the
evidence.
(4)
If
the
Commissioner
is
satisfied
that
the
request
may
be
al-
lowed,
the
Commissioner
must
ensure
that
the
patents
register
is
altered
accordingly
.
Compare:
SR
1954/21
1
r
126
135
Notice
of
court
orders
must
be
given
for
entry
on
patents
r
egister
(1)
This
regulation
applies
in
respect
of
orders
made
by
the
court
under
the
Act
that—
(a)
revoke
a
patent;
or
(b)
allow
a
patentee
to
amend
a
specification;
or
66
2014/275
Patents
Regulations
2014
Part
5
r
136
(c)
af
fect
the
validity
or
ownership
of
a
patent
or
any
rights
under
a
patent;
or
(d)
require
an
entry
to
be
added
to
the
patents
register
or
an
entry
on
the
patents
register
to
be
varied
or
deleted.
(2)
A
person
in
whose
favour
an
order
to
which
this
regulation
applies
is
made
must
give
notice
of
the
order
to
the
Commis-
sioner
.
(3)
The
notice
must
include—
(a)
a
statement
setting
out
the
ef
fect
of
the
order;
and
(b)
a
copy
of
the
order
.
Compare:
SR
1954/21
1
r
151
136
Application
to
corr
ect
other
persons’
mistakes
in
patents
r
egister
,
etc
(1)
An
application
under
section
202(2)
of
the
Act
for
a
correction
of
an
error
or
omission
must
include—
(a)
a
statement
that—
(i)
identifies
where
the
error
or
omission
is
thought
to
have
been
made;
and
(ii)
includes
either
a
description
of
the
error
or
omis-
sion
or
a
copy
of
the
entry
in
the
patents
regis-
ter
,
patent,
patent
application,
or
other
document
(as
the
case
requires)
with
the
error
or
omission
clearly
identified;
and
(b)
evidence
(if
any)
in
support
of
the
application.
(2)
The
Commissioner
may
require
the
applicant
to
file
further
evidence
in
support
of
the
application.
(3)
If
the
Commissioner
requires
further
evidence
under
subclause
(2),
the
applicant
must
file
that
evidence
within
3
months
after
the
date
that
the
application
is
made.
(4)
In
this
regulation
and
in
regulations
137
to
140,—
applicant
means
the
person
who
applied
for
the
correction
under
section
202(2)
of
the
Act
opponent
means
the
person
who
gives
a
notice
of
opposition
under
section
202(4)
of
the
Act.
Compare:
SR
1954/21
1
r
133
67
Part
5
r
137
Patents
Regulations
2014
2014/275
137
Opposition
to
pr
oposed
corr
ection
(1)
The
period
prescribed
for
the
purpose
of
section
202(4)
of
the
Act
is
2
months
after
the
date
on
which
the
proposed
correction
is
published
in
the
journal.
(2)
A
notice
of
opposition
under
section
202(4)
of
the
Act
must
include—
(a)
suf
ficient
detail
to
identify
the
proposed
correction
that
is
opposed;
and
(b)
the
grounds
on
which
the
proposed
correction
is
op-
posed.
(3)
The
notice
of
opposition
must
also
be
accompanied
by
a
state-
ment
of
case
setting
out
the
facts
relied
on
in
support
of
the
opposition
and
the
relief
sought.
(4)
The
Commissioner
must
give
a
copy
of
the
notice
of
oppos-
ition
and
of
the
statement
of
case
to
the
applicant.
Compare:
SR
1954/21
1
r
135
138
Applicant
must
file
counter
-statement
(1)
The
applicant
must
file
a
counter
-
statement
within
2
months
after
receiving
a
copy
of
the
notice
of
opposition
under
section
202(4)
of
the
Act
and
of
the
statement
of
case
under
regulation
137
.
(2)
The
counter
-
statement
must
set
out
the
grounds
on
which
the
opposition
is
contested.
(3)
If
the
applicant
does
not
file
a
counter
-
statement
within
the
2
-
month
period
under
subclause
(1),
the
applicant
must
be
treated
as
having
abandoned
the
applicant’
s
application
for
correction.
139
Filing
of
evidence
(1)
The
opponent
may
,
within
4
months
after
receiving
the
copy
of
the
counter
-
statement
filed
under
regulation
138
,
file
evidence
in
support
of
the
opponent’
s
case.
(2)
The
applicant
may
file
evidence
in
support
of
the
applicant’
s
case
within
4
months
after
receiving
the
copy
of
the
opponent’
s
evidence
or
,
if
the
opponent
does
not
file
any
evidence,
within
4
months
after
the
expiry
of
the
time
within
which
the
oppo-
nent’
s
evidence
might
have
been
filed
under
subclause
(1).
68
2014/275
Patents
Regulations
2014
Part
5
r
142
(3)
The
opponent
may
,
within
3
months
after
receiving
the
copy
of
the
applicant’
s
evidence,
file
further
evidence,
but
only
if
the
further
evidence
is
confined
to
matters
strictly
in
reply
.
140
Opposition
to
Commissioner
-initiated
corr
ection
(1)
Any
person
may
oppose
a
correction
proposed
by
the
Com-
missioner
on
his
or
her
own
initiative
under
section
202
of
the
Act
by
filing
a
notice
within
2
months
after
the
date
on
which
the
proposed
correction
is
published
in
the
journal.
(2)
The
notice
must
include—
(a)
suf
ficient
detail
to
identify
the
proposed
correction
that
is
opposed;
and
(b)
the
grounds
on
which
the
proposed
correction
is
op-
posed.
(3)
The
notice
must
also
be
accompanied
by
a
statement
of
case
setting
out
the
facts
relied
on
in
support
of
the
opposition
and
the
relief
sought.
(4)
The
opponent
may
,
within
4
months
after
filing
the
notice,
file
evidence
in
support
of
his
or
her
case.
(5)
Following
consideration
of
the
notice
and
any
evidence
filed,
the
Commissioner
must
notify
the
opponent
of
the
decision
he
or
she
intends
to
make.
141
Notice
of
application
to
court
to
r
ectify
patents
r
egister
(1)
Any
notice
given
to
the
Commissioner
under
section
203(3)
of
the
Act
must
include
a
copy
of
the
application
for
rectification.
(2)
The
Commissioner
must
enter
a
notice
of
application
under
section
203(3)
of
the
Act
in
the
patents
register
as
soon
as
practicable
after
receiving
the
notice.
Compare:
SR
1954/21
1
r
150
142
Notice
of
order
of
court
to
r
ectify
patents
r
egister
Any
notice
served
on
the
Commissioner
under
section
203(5)
of
the
Act
must
include—
(a)
a
copy
of
the
order
of
the
court;
and
(b)
the
date
or
dates
by
which
action
is
required
to
be
taken
by
the
Commissioner
or
the
applicant
for
rectification
in
respect
of
the
order
.
69
Part
5
r
143
Patents
Regulations
2014
2014/275
Journal
and
other
publications
143
Particulars
of
patent
applications
that
must
be
published
The
Commissioner
must
publish
in
the
journal
under
section
206
of
the
Act
the
following
particulars
about
patent
applica-
tions
as
soon
as
practicable,
so
far
as
the
particulars
are
known
to
the
Commissioner:
(a)
the
number
and
date
of
the
application;
and
(b)
the
name
of
the
applicant;
and
(c)
the
name
of
the
inventor
,
if
known;
and
(d)
the
title
of
the
invention;
and
(e)
the
convention
application
number
,
date,
and
country
,
if
applicable.
Compare:
SR
1954/21
1
r
164
Subpart
2—
Miscellaneous
provisions
Evidence
144
Form
of
evidence
If
these
regulations
require
or
permit
evidence
to
be
filed,
it
must
be
by
statutory
declaration
or
af
fidavit
unless
otherwise
expressly
provided
in
these
regulations.
Compare:
SR
1954/21
1
r
141
Amendment
of
documents
145
Amendment
of
documents
(1)
In
any
proceedings
before
the
Commissioner
,
the
Commis-
sioner
may
,
if
he
or
she
thinks
fit,—
(a)
allow
any
document
filed
in
the
proceedings
to
be
amended
if
no
express
provision
is
made
in
the
Act
or
these
regulations
for
the
amendment
of
the
document;
and
(b)
rectify
any
irregularity
in
procedure.
(2)
Any
action
taken
by
the
Commissioner
under
this
regulation
may
be
on
any
terms
as
he
or
she
may
direct.
Compare:
SR
1954/21
1
r
167
70
2014/275
Patents
Regulations
2014
Part
5
r
147
Extensions
of
time
limits
146
Requir
ements
for
applying
and
granting
extensions
of
time
limits
under
section
231
of
Act
(1)
An
application
under
section
232
of
the
Act
for
an
extension
of
a
time
limit
under
section
231
of
the
Act
must—
(a)
state
the
reasons
for
the
failure
to
comply
with
the
pre-
scribed
time
limit
for
filing
a
complete
specification
or
a
convention
application,
or
doing
any
other
thing
re-
quired
to
be
done
under
the
Act
or
these
regulations
(as
the
case
may
be);
and
(b)
include
evidence
(if
any)
in
support
of
the
application.
(2)
The
Commissioner
must
notify
the
applicant
if,
after
consid-
ering
an
application
made
under
section
232
of
the
Act
and
any
evidence
filed
in
support
of
that
application,
the
Commis-
sioner
considers
that
he
or
she
must
refuse
to
grant
the
exten-
sion
under
section
231(3)
of
the
Act.
(3)
The
applicant
may
provide
any
further
information
or
evi-
dence,
within
2
months
after
receiving
a
notice
from
the
Com-
missioner
under
subclause
(2),
to
satisfy
the
Commissioner
that
the
Commissioner
may
grant
the
extension.
147
General
power
of
Commissioner
to
extend
time
limits
in
exceptional
cir
cumstances
(1)
The
Commissioner
may
,
in
exceptional
circumstances,
extend
a
time
limit
prescribed
by
these
regulations
for
filing
informa-
tion
or
a
document
or
for
taking
a
step
in
respect
of
a
matter
.
(2)
However
,
this
regulation
does
not
apply—
(a)
to
a
time
limit
prescribed
for
filing
a
notice
of
opposition
of
a
kind
referred
to
in
regulation
152
(1)(a);
or
(b)
to
a
time
limit
prescribed
for
filing
information
or
a
document
or
taking
a
step
in
respect
of
a
proceeding
described
in
regulation
152
(1);
or
(c)
to
the
time
prescribed
by
regulation
154(3)
for
filing
a
request
for
a
hearing
under
section
208
of
the
Act;
or
(d)
if
the
Act
precludes
an
extension
being
granted
under
these
regulations
(
see
,
for
example,
sections
21(1)
,
37(2)(b)
,
and
71(2)
of
the
Act).
71
Part
5
r
148
Patents
Regulations
2014
2014/275
(3)
The
Commissioner
may
grant
the
extension
even
if
either
or
both
of
the
following
apply:
(a)
the
time
limit
has
expired
for
doing
the
thing:
(b)
the
Commissioner
has
already
granted
an
extension
under
these
regulations.
(4)
An
extension
is
granted
by
giving
notice
to
the
person
filing
the
information
or
document
or
taking
the
step
and
to
any
other
parties
to
the
proceeding,
and
may
be
on
any
terms
that
the
Commissioner
thinks
fit.
Compare:
SR
1954/21
1
r
168
148
Ability
to
r
equest
extension
under
other
r
egulations
must
be
exhausted
If
a
regulation
other
than
regulation
147
specifically
provides
for
a
power
to
extend
a
time
limit
in
relation
to
a
particular
matter
,
a
request
for
an
extension
under
regulation
147
may
be
made
only
if
the
ability
to
request
an
extension
under
the
other
regulation
has
been
exhausted.
Miscellaneous
149
Power
of
Commissioner
to
waive
r
equir
ements
in
exceptional
cir
cumstances
(1)
The
Commissioner
may
,
in
exceptional
circumstances,
waive
a
requirement
in
Part
1,
or
any
provision
of
regulations
50(1)
,
51
,
52
,
54
,
55
,
65
,
and
69
,
for
a
person
to
do
anything,
on
production
of
any
evidence
that
the
Commissioner
thinks
fit.
(2)
The
Commissioner
may
grant
the
waiver
even
if
the
time
has
expired
for
doing
the
thing.
(3)
A
waiver
is
granted
by
giving
notice
to
the
persons
known
to
the
Commissioner
to
be
af
fected
by
the
waiver
,
and
may
be
on
any
terms
that
the
Commissioner
thinks
fit.
Compare:
SR
1954/21
1
r
169(1)
150
Power
to
waive
r
equir
ements
for
patent
applications
and
specifications
temporarily
(1)
The
Commissioner
may
allow
a
patent
application
or
specifi-
cation
to
be
filed
that
is
not
made
in
accordance
with
Part
1,
or
any
provision
of
regulations
50(1)
,
51
,
52
,
54
,
55
and
69
,
72
2014/275
Patents
Regulations
2014
Part
6
r
152
provided
that
the
applicant
takes
any
action
necessary
to
com-
ply
with
the
relevant
provision
as
soon
as
practicable
after
the
application
or
specification
is
filed.
(2)
If
the
patent
application
or
specification
is
not
amended
or
other
action
is
not
taken
to
comply
with
the
relevant
provision
as
soon
as
practicable
after
filing
the
application
or
specifica-
tion,
the
application
must
be
treated
as
if
it
had
been
aban-
doned
or
,
in
the
case
of
a
specification,
as
if
the
specification
had
never
been
filed
unless
the
Commissioner
waives
compli-
ance
under
regulation
149
.
Compare:
SR
1954/21
1
r
169(2)
151
Maintenance
of
certain
r
ecords
The
Commissioner
must
maintain
electronic
copies
of
all
pro-
visional
and
complete
specifications,
drawings,
and
other
in-
formation
or
documents
associated
with
a
patent
application
or
patent,
including
filing
dates,
priority
dates,
and
the
names
of
the
inventors
and
applicants,
that
are
filed
under
the
Act
or
these
regulations.
Compare:
SR
1954/21
1
r
170
Part
6
Pr
ocedural
and
evidential
r
equir
ements
for
pr
oceedings
befor
e
Commissioner
Pr
oceedings
to
which
this
Part
applies
152
Application
of
this
Part
(1)
This
Part
applies
to
the
following
proceedings:
(a)
a
proceeding
that
is
commenced
by
the
filing
of
any
of
the
following
documents:
(i)
a
request
for
directions
to
co
-
owners
under
sec-
tion
26
of
the
Act:
(ii)
a
request
to
determine
a
dispute
under
section
28
of
the
Act:
(iii)
an
opposition
to
a
proposed
amendment
of
a
complete
specification
after
acceptance
under
section
87
of
the
Act:
(iv)
an
opposition
to
the
grant
of
a
patent
under
sec-
tion
92
of
the
Act:
73
Part
6
r
153
Patents
Regulations
2014
2014/275
(v)
an
application
to
the
Commissioner
for
the
revo-
cation
of
a
patent
under
section
1
12
of
the
Act:
(vi)
an
opposition
to
an
of
fer
to
surrender
a
patent
under
section
1
16
of
the
Act:
(vii)
an
opposition
to
the
restoration
of
a
lapsed
patent
under
section
123
of
the
Act:
(viii)
an
opposition
to
the
restoration
of
a
void
or
an
abandoned
patent
application
under
section
127
of
the
Act:
(ix)
a
request
to
the
Commissioner
under
section
131
of
the
Act
in
respect
of
a
dispute
between
inter
-
ested
parties:
(x)
an
opposition
to
an
application
to
correct
an
error
or
omission
under
section
202
of
the
Act:
(xi)
a
request
or
claim
to
be
mentioned
as
inventor
under
section
190
of
the
Act:
(xii)
a
request
for
a
certificate
concerning
mention
of
inventor
under
section
193
of
the
Act:
(b)
a
hearing
under
section
208
of
the
Act
before
the
exer
-
cise
of
the
Commissioner
’
s
discretion.
(2)
Regulations
169
to
174
also
apply
to—
(a)
examination
proceedings;
and
(b)
re
-
examination
proceedings
under
subpart
9
of
Part
3
of
the
Act.
Documents
filed
in
pr
oceedings
153
Extra
information
that
must
be
contained
in
documents
filed
in
pr
oceedings
(1)
A
document,
including
written
evidence,
or
bundle
of
docu-
ments
filed
in
a
proceeding
must
contain
the
following
infor
-
mation:
(a)
the
name
and
address
for
service
of
the
person
filing
the
document;
and
(b)
if
that
person
has
an
agent,
the
agent’
s
name;
and
(c)
the
number
of
the
patent
application
or
patent
that
is
the
subject
of
the
proceeding.
(2)
Every
document
referred
to
in
regulation
152(1)(a)
,
and
every
statement
of
case
and
counter
-
statement,
that
is
filed
in
a
pro-
74
2014/275
Patents
Regulations
2014
Part
6
r
155
ceeding
must
be
signed
by
the
person
giving
the
information
or
document
or
on
whose
behalf
the
information
or
document
is
given
(for
example,
the
applicant
or
the
opponent).
Compare:
SR
2003/187
r
5
Hearing
befor
e
exer
cise
of
Commissioner
’
s
discr
etion
154
Hearing
befor
e
exer
cise
of
Commissioner
’
s
discr
etion
(1)
This
regulation
applies
if
section
208
of
the
Act
requires
the
Commissioner
to
give
a
person
(
A
)
a
reasonable
opportunity
to
be
heard
before
exercising
a
discretionary
power
under
the
Act
or
these
regulations.
(2)
The
Commissioner
must
notify
A
of
the
decision
that
the
Commissioner
proposes
to
make,
and
the
reasons
for
the
deci-
sion
(if
not
already
given),
before
exercising
the
discretionary
power
.
(3)
If
A
wishes
to
be
heard
before
the
discretionary
power
is
ex-
ercised,
A
must
file
a
notice
within
10
working
days
after
re-
ceiving
that
notification
from
the
Commissioner
.
(4)
The
notice
must
state
the
matter
in
respect
of
which
A
seeks
a
hearing
and
be
signed
by
A.
Compare:
SR
2003/187
r
123
Case
management
155
Commissioner
may
r
equir
e
parties
to
attend
case
management
confer
ence
(1)
At
any
stage
in
a
proceeding,
the
Commissioner
may
,
for
the
purpose
of
securing
the
just,
speedy
,
and
inexpensive
deter
-
mination
of
the
proceeding,
give
a
direction
requiring
the
par
-
ties
to
attend
a
case
management
conference
to
review
the
pro-
ceeding
and
the
steps
that
have
been
or
must
still
be
taken.
(2)
The
Commissioner
must
give
each
party
notice
of
the
confer
-
ence
at
least
10
working
days
before
the
conference.
(3)
The
parties
may
attend
in
person
or
by
a
telecommunication
link
that
is
acceptable
to
the
Commissioner
.
Compare:
SR
2003/187
r
26
75
Part
6
r
156
Patents
Regulations
2014
2014/275
156
Commissioner
may
give
dir
ections
(1)
At
any
stage
in
a
proceeding,
the
Commissioner
may
give
di-
rections
that
are
consistent
with
the
Act
and
these
regulations
requiring
a
party
to
do
things
to
secure
the
just,
speedy
,
and
in-
expensive
determination
of
the
proceeding
within
a
time
limit
specified
by
the
Commissioner
.
(2)
W
ithout
limiting
the
generality
of
the
directions
that
may
be
given,
the
Commissioner
may—
(a)
fix
the
time
by
which
a
step
in
the
proceeding
must
be
taken;
and
(b)
specify
the
steps
that
must
be
taken
to
prepare
the
pro-
ceeding
for
a
hearing;
and
(c)
direct
how
the
hearing
of
the
proceeding
is
to
be
con-
ducted;
and
(d)
require
parties
to
use
their
best
endeavours
to
agree
on
how
information
or
evidence
that
may
be
confidential
or
privileged
is
to
be
treated;
and
(e)
give
directions
about
how
information
that
may
be
con-
fidential
or
privileged
is
to
be
treated
if
the
parties
have
not
been
able
to
reach
an
agreement
within
the
time
limit
specified
by
the
Commissioner;
and
(f)
require
parties
to
file
copies
of
documents;
and
(g)
require
parties
to
provide
other
parties
to
the
proceeding
with
copies
of
documents;
and
(h)
require
parties
to
file
better
or
further
particulars;
and
(i)
require
parties
to
provide
other
parties
to
the
proceed-
ings
with
better
or
further
particulars.
(3)
The
Commissioner
may
give
the
direction
on
the
Commis-
sioner
’
s
own
initiative
or
on
the
application
of
any
party
to
the
proceeding.
Compare:
SR
2003/187
r
26
157
Parties
must
comply
with
Commissioner
’
s
dir
ections
All
parties
to
a
proceeding
must
comply
with
a
direction
given
by
the
Commissioner
under
this
Part.
Compare:
SR
2003/187
r
27(1)
76
2014/275
Patents
Regulations
2014
Part
6
r
158
158
Non-compliance
with
Commissioner
’
s
dir
ections
(1)
If
a
party
(
party
A
)
fails
to
comply
with
a
direction
given
by
the
Commissioner
under
this
Part
(
non
-
compliance
),—
(a)
the
Commissioner
must,
as
soon
as
practicable,—
(i)
request
party
A
to
provide
an
explanation
for
party
A
’
s
non
-
compliance
to
the
Commissioner
and
to
the
opposite
party
within
a
time
limit
spe-
cified
by
the
Commissioner;
and
(ii)
in
that
request,
advise
party
A
of
the
potential
consequences
of
non
-
compliance;
and
(b)
the
opposite
party
may
provide
comments
on
the
ex-
planation
to
the
Commissioner
within
a
time
limit
spe-
cified
by
the
Commissioner;
and
(c)
after
considering
the
explanation
(if
any)
and
comments
from
the
opposite
party
(if
any),
the
Commissioner
must—
(i)
consider
whether
party
A
has
a
reasonable
excuse
for
party
A
’
s
non
-
compliance;
and
(ii)
notify
both
parties
of
the
decision
that
the
Com-
missioner
intends
to
make.
(2)
The
notification
referred
to
in
subclause
(1)(c)(ii)
must
also—
(a)
advise
the
parties
that
either
party
may
request
a
hearing
concerning
the
non
-
compliance;
and
(b)
specify
a
period
during
which
a
party
may
request
a
hearing
concerning
the
non
-
compliance,
being
a
period
of
not
less
than
10
working
days
after
the
party
receives
the
notification.
(3)
The
Commissioner
must,
as
soon
as
practicable,
hold
a
hearing
concerning
the
non
-
compliance
if
a
party
requests
it,
and
in
that
case
the
Commissioner
must
make
a
decision
only
after
holding
a
hearing.
(4)
If
the
Commissioner
’
s
decision
is
that
party
A
has
not
satisfied
the
Commissioner
that
party
A
has
a
reasonable
excuse
for
party
A
’
s
non
-
compliance,
the
Commissioner
may
,
in
addition
to
exercising
his
or
her
power
under
section
212
of
the
Act,—
(a)
extend
the
period
for
party
A
to
comply
with
the
direc-
tion;
or
(b)
modify
,
or
waive
compliance
with,
the
direction;
or
(c)
direct
that
party
A
take
no
further
step
in
the
proceeding.
77
Part
6
r
159
Patents
Regulations
2014
2014/275
(5)
The
Commissioner
must
notify
both
parties
of
his
or
her
deci-
sion
and
any
orders
made
under
subclause
(4)
as
soon
as
prac-
ticable.
Compare:
SR
2003/187
r
27(2)–(6)
Halt
in
pr
oceedings
159
Commissioner
may
halt
pr
oceeding
(1)
The
Commissioner
may
halt
a
proceeding,
if
the
Commis-
sioner
thinks
it
appropriate,
on
the
application
of
a
party
or
on
the
Commissioner
’
s
own
initiative.
(2)
The
Commissioner
may
halt
the
proceeding
for
the
period
and
on
the
terms
that
the
Commissioner
thinks
appropriate,
but
must
not
halt
the
proceeding
for
more
than
6
months.
(3)
The
Commissioner
may
halt
the
proceeding
for
further
periods,
but
on
each
occasion
for
no
more
than
6
months.
(4)
The
Commissioner
may
recommence
the
proceeding
at
any
time
while
the
proceeding
is
halted.
Compare:
SR
2003/187
r
28
Consolidation
of
pr
oceedings
160
Commissioner
may
consolidate
pr
oceedings
The
Commissioner
may
require
that
2
or
more
proceedings
be
consolidated
on
terms
that
the
Commissioner
thinks
appropri-
ate,
or
may
require
them
to
be
heard
at
the
same
time
or
one
after
the
other
,
or
may
require
any
of
them
to
be
halted
until
after
the
determination
of
any
other
of
them,
if
the
Commis-
sioner
is
satisfied
that—
(a)
a
common
question
of
law
or
fact
arises
in
both
or
all
of
them;
or
(b)
the
proceedings
relate
to—
(i)
identical
patents;
or
(ii)
patents
with
the
same,
or
related,
owners;
or
(c)
for
any
other
reason
it
is
desirable
to
require
consolida-
tion
of
proceedings
under
this
regulation.
Compare:
SR
2003/187
r
31A
78
2014/275
Patents
Regulations
2014
Part
6
r
161
Extension
of
time
limits
in
pr
oceedings
161
Commissioner
may
extend
time
limits
in
pr
oceedings
(1)
The
Commissioner
may
extend
a
time
limit
prescribed
by
these
regulations
for
filing
information
or
a
document,
or
taking
a
step,
in
a
proceeding—
(a)
for
a
period
not
exceeding
3
months
if
the
Commis-
sioner
is
satisfied
that
the
extension
is
reasonable
in
the
circumstances;
or
(b)
for
a
period
longer
than
3
months,
as
specified
by
the
Commissioner
,
if
the
Commissioner
is
satisfied
that
there
are
genuine
and
exceptional
circumstances
that
justify
the
extension.
(2)
However
,
subclause
(1)
does
not
apply
in
any
of
the
following
circumstances:
(a)
if
a
regulation
that
provides
for
the
filing
of
a
counter
-
statement
already
provides
for
the
granting
of
an
exten-
sion
of
the
same
period:
(b)
in
respect
of
the
time
limit
prescribed
for
filing
a
no-
tice
of
opposition
of
a
kind
referred
to
in
regulation
152(1)(a)
:
(c)
in
respect
of
the
time
limit
prescribed
by
regulation
154(3)
for
filing
a
request
for
a
hearing
under
section
208
of
the
Act
before
the
exercise
of
the
Commis-
sioner
’
s
discretion:
(d)
if
the
time
limit
for
filing
the
information
or
document
or
taking
the
step
has
already
expired
before
the
exten-
sion
request
is
filed.
(3)
An
extension
is
granted
by
giving
notice
to
the
person
filing
the
information
or
document
or
taking
the
step
and
to
any
other
parties
to
the
proceeding,
and
may
be
on
any
terms
that
the
Commissioner
thinks
fit.
(4)
More
than
1
extension
may
be
granted
under
subclause
(1)(a)
provided
that
the
total
period
of
those
extensions
does
not
ex-
ceed
3
months.
(5)
An
extension
may
be
granted
under
subclause
(1)(b)
even
if
the
period
has
already
been
extended
under
subclause
(1)(a).
79
Part
6
r
162
Patents
Regulations
2014
2014/275
Example
R
wishes
to
file
a
notice
of
opposition
to
the
grant
of
a
patent
under
section
92
of
the
Act.
R
cannot
apply
for
an
extension
of
the
time
limit
for
filing
the
notice
of
opposition
under
this
regulation,
but
R
can
apply
for
an
extension
under
Part
3
(
see
regulation
93(2)
).
S,
the
applicant
for
the
patent,
can
apply
under
this
regulation
for
an
extension
of
the
time
limit
for
filing
the
counter
-
statement
because
Part
3
does
not
provide
for
extensions
for
that
counter
-
statement.
S
cannot
apply
for
an
extension
of
the
time
limit
under
Part
5
(
see
regulation
147(2)(b)
).
Compare:
SR
2003/187
r
32
Evidence
162
Evidence
r
estricted
to
particulars
filed
A
party
to
a
proceeding
may
only
file
evidence
in
the
proceed-
ing
that
relates
to
the
particulars
filed
by
that
party
or
any
other
party
to
the
proceeding.
Compare:
High
Court
Rules,
r
22.24
Pr
ocedural
and
evidential
r
equir
ements
163
Supply
of
documents
for
use
of
Commissioner
(1)
Copies
of
information
or
documents,
other
than
New
Zealand
specifications,
referred
to
in
a
proceeding
to
which
this
Part
applies,
or
in
any
statement
or
evidence
filed
in
connection
with
that
proceeding,
must
be
filed,
unless
the
Commissioner
directs
otherwise.
(2)
If
a
specification
or
other
document
in
a
foreign
language
is
referred
to,
a
verified
translation
of
the
specification
or
docu-
ment
must
be
filed.
164
Party
filing
documents
must
copy
documents
to
opposite
party
(1)
A
party
who
files
information
or
a
document
(including
evi-
dence)
in
a
proceeding
to
which
this
Part
applies
must,
as
soon
as
practicable,
send
copies
of
the
information
or
document
to
the
opposite
party
and
to
any
party
intervening.
80
2014/275
Patents
Regulations
2014
Part
6
r
166
(2)
However
,
copies
of
information
or
a
document
(including
evi-
dence)
filed
in
a
proceeding
that
include
confidential
informa-
tion
must
be
sent
to
the
opposite
party
and
any
party
interven-
ing
as
agreed
between
the
parties
or
,
if
agreement
cannot
be
reached,
in
the
manner
directed
by
the
Commissioner
.
(3)
Despite
subclause
(2),
the
parties
may
agree,
or
the
Commis-
sioner
may
direct,
that
any
information
or
document
that
is
subject
to
a
privilege
recognised
by
Part
2
of
the
Evidence
Act
2006
may
not
be
sent
to
the
other
party
.
Compare:
SR
2003/187
r
33
165
Evidence
out
of
time
(1)
A
party
to
a
proceeding
must
not
file
evidence
after
the
pre-
scribed
time
unless
the
party
has
applied
to
the
Commissioner
for
permission
to
file
it
and
the
Commissioner
allows
it.
(2)
The
Commissioner
may
allow
the
evidence
to
be
filed
only
if—
(a)
the
Commissioner
considers
that
there
are
genuine
and
exceptional
circumstances
that
justify
filing
the
evidence;
or
(b)
the
evidence
could
not
have
been
filed
earlier
.
(3)
In
this
regulation,
pr
escribed
time
means,
in
relation
to
a
pro-
ceeding
to
which
this
regulation
applies,
the
time
prescribed
in
these
regulations
by
which
the
evidence
or
type
of
evidence
must
be
filed.
Compare:
SR
2003/187
r
34
166
Application
for
permission
to
file
evidence
out
of
time
(1)
The
application
for
permission
to
file
evidence
out
of
time
must—
(a)
be
in
writing;
and
(b)
be
signed
by
the
party
applying
for
permission;
and
(c)
contain
the
information
in
subclause
(2).
(2)
The
application
must
contain
the
following
information:
(a)
the
nature
of
the
evidence
and
whether
it
is
evidence
in
chief
or
evidence
confined
to
matters
strictly
in
reply;
and
81
Part
6
r
167
Patents
Regulations
2014
2014/275
(b)
an
explanation
why
the
evidence
could
not
have
been
filed
earlier;
and
(c)
any
other
ground
or
grounds
for
making
the
application.
(3)
The
Commissioner
must
notify
the
opposite
party
of
the
ap-
plication,
and
the
opposite
party
may
make
submissions
to
the
Commissioner
within
the
time
specified
by
the
Commissioner
.
(4)
The
Commissioner
must
notify
the
parties
of
the
decision
that
the
Commissioner
intends
to
make
on
the
application.
(5)
That
notification
must—
(a)
specify
the
ground
or
grounds
on
which
the
Commis-
sioner
intends
to
reject
or
accept
the
application;
and
(b)
advise
the
parties
that
either
party
may
request
a
hear
-
ing;
and
(c)
specify
a
period
of
not
less
than
1
month
after
the
date
of
notification
for
a
party
to
request
a
hearing;
and
(d)
advise
the
parties
that
the
Commissioner
will
decide
the
application
at
the
end
of
that
period
if
a
party
has
not
requested
a
hearing.
(6)
The
Commissioner
must,
as
soon
as
practicable,
hold
a
hearing
if
the
applicant
requests
it
unless
regulation
169(3)
applies.
Compare:
SR
2003/187
r
35
167
Right
to
file
evidence
in
r
eply
if
evidence
in
chief
permitted
out
of
time
If
a
party
is
permitted
under
regulations
165
and
166
to
file
evidence
in
chief
out
of
time,
the
opposite
party
may
file
evi-
dence
confined
to
matters
strictly
in
reply
within
1
month
after
the
date
of
being
notified
by
the
Commissioner
that
the
evi-
dence
out
of
time
will
be
admitted
in
the
proceeding.
Compare:
SR
2003/187
r
35A
168
Evidence
fr
om
another
pr
oceeding
(1)
The
Commissioner
may
in
a
proceeding,
at
the
request
of
a
party
to
the
proceeding,
accept
evidence
that
the
party
has
filed
in
an
earlier
or
existing
proceeding.
(2)
Any
evidence
that
is
accepted
for
filing
under
subclause
(1)
does
not
have
to
comply
with
regulation
153(1)(c)
.
Compare:
SR
2003/187
r
35B
82
2014/275
Patents
Regulations
2014
Part
6
r
170
Hearings
169
Form
of
hearing
(1)
A
hearing
may
be—
(a)
a
hearing
by
appearance,
that
is,
the
appearance
of
a
party
before
the
Commissioner
,
whether
in
person
or
by
telecommunication
link
acceptable
to
the
Commis-
sioner;
or
(b)
a
hearing
by
submissions,
that
is,
the
consideration
by
the
Commissioner
of
written
submissions
filed
by
a
party
and
a
review
of
the
other
documents
filed
in
the
proceedings,
without
an
appearance;
or
(c)
a
hearing
on
the
papers,
that
is,
a
review
of
the
docu-
ments
filed
in
the
proceeding.
(2)
A
party
may
,
subject
to
subclause
(3),
elect
whether
to
be
heard
by
appearance,
by
submissions,
or
on
the
papers.
(3)
If
the
Commissioner
considers
that
a
party
has
failed,
without
reasonable
excuse,
to
attend
a
hearing
or
to
agree
to
a
hearing
date,
the
Commissioner
may
,
in
his
or
her
discretion,—
(a)
direct
a
hearing
on
the
papers
for
that
party;
or
(b)
direct
that
the
party
take
no
further
part
in
the
proceed-
ing;
or
(c)
treat
the
request
for
a
hearing
as
withdrawn.
(4)
T
o
avoid
doubt,
subclause
(3)(a)
does
not
prevent
any
other
party
to
the
proceeding
being
heard
by
appearance
or
by
sub-
missions.
Compare:
SR
2003/187
r
122
170
Commissioner
may
determine
form
of
hearing,
etc
After
all
the
evidence
has
been
filed,
the
Commissioner
may
,
by
correspondence
or
by
holding
a
pre
-
hearing
conference
of
the
parties,
determine—
(a)
whether
a
hearing
is
required:
(b)
the
form
of
the
hearing:
(c)
the
time
for
filing
submissions:
(d)
the
venue
of
the
hearing:
(e)
the
pleadings
that
will
be
considered
at
the
hearing:
(f)
any
other
matter
necessary
for
arranging
a
hearing.
Compare:
SR
2003/187
r
124
83
Part
6
r
171
Patents
Regulations
2014
2014/275
171
Notice
of
hearing
by
appearance
(1)
The
Commissioner
must
give
each
party
to
a
hearing
by
ap-
pearance
notice
of
the
date
and
venue
of
the
hearing
not
less
than
1
month
before
the
date
of
the
hearing.
(2)
Subclause
(1)
does
not
apply
if—
(a)
the
date
and
venue
have
been
determined
at
a
prehearing
conference;
or
(b)
the
parties
waive
compliance
with
subclause
(1);
or
(c)
in
the
Commissioner
’
s
opinion,
notice
of
1
month
is
not
practicable
for
reasons
of
ur
gency
.
Compare:
SR
2003/187
r
125
172
Hearing
fee
(1)
Each
party
who
requests
a
hearing
(other
than
a
hearing
on
the
papers)
must
pay
the
fee
for
a
request
for
a
hearing
(
hearing
fee
)
in
the
Schedule
.
(2)
The
hearing
fee
must
be
paid,—
(a)
in
the
case
of
a
hearing
by
appearance,
not
less
than
10
working
days
before
the
date
set
for
the
hearing:
(b)
in
the
case
of
a
hearing
by
submissions,
when
the
party
files
the
submissions.
(3)
In
the
case
of
a
hearing
required
under
regulation
154
,
the
hearing
fee
must
accompany
the
filing
of
the
notice
seeking
a
hearing.
(4)
The
Commissioner
must
refund
a
hearing
fee
paid
by
a
party
who
withdraws
from
the
hearing
if
the
Commissioner
receives
notice
of
withdrawal
not
less
than
5
working
days
before
the
date
set
for
the
hearing.
Compare:
SR
2003/187
r
126
173
V
enue
for
hearing
by
appearance
(1)
If
1
party
resides
or
has
a
principal
place
of
business
in
W
el-
lington,
the
hearing
must
be
held
in
W
ellington
or
the
place
in
New
Zealand
(if
any)
that
is
agreed
by
all
the
parties
and
the
Commissioner
as
the
venue
for
the
hearing.
(2)
Otherwise,
the
Commissioner
must
determine
where
the
hear
-
ing
will
be
held.
84
2014/275
Patents
Regulations
2014
Part
7
r
176
(3)
The
Commissioner
may
require
the
party
or
parties
concerned
to
pay
the
Commissioner
’
s
costs
in
holding
the
hearing
at
a
venue
outside
W
ellington.
Compare:
SR
2003/187
r
127
174
Conduct
of
hearing
by
appearance
(1)
The
Commissioner
must
determine
how
a
hearing
by
appear
-
ance
must
be
conducted.
(2)
Members
of
the
public
may
attend
a
hearing
by
appearance,
unless
the
Commissioner
decides
that
it
is
not
appropriate.
Compare:
SR
2003/187
r
128
Costs
175
Costs
In
deciding
whether
costs
should
be
awarded
to
a
party
,
the
Commissioner
may
consider
whether
the
proceedings
might
have
been
avoided
if
the
party
who
started
the
proceedings
had
given
to
the
applicant
or
patentee
(as
the
case
may
be)
a
reasonable
opportunity
to
take
action
to
avoid
the
proceedings
before
the
proceedings
were
started.
Compare:
SR
1954/21
1
r
56
Part
7
T
ransitional
pr
ovisions
176
Amendment
to
Patents
Regulations
1954
(1)
This
regulation
amends
the
Patents
Regulations
1954
.
(2)
After
regulation
2
,
insert:
“
2A
Application
of
these
r
egulations
for
transitional
purposes
“
(1)
These
regulations
continue
to
apply
on
and
after
13
September
2014
only
as
provided
in
subpart
6
of
Part
5
of
the
Patents
Act
2013.
“
(2)
Part
30
continues
to
apply
as
if
the
Patents
Regulations
2014
had
not
been
made.”
85
Part
7
r
177
Patents
Regulations
2014
2014/275
177
T
ransitional
pr
ovision
as
to
statutory
r
efer
ences
to
corr
esponding
matters
The
reference
in
section
8(2)
of
the
Act
to
another
patent
ap-
plication
includes,
for
the
purpose
of
determining
the
prior
art
base
under
that
section,
a
patent
application
made
under
the
Patents
Act
1953
.
Schedule
rr
5
,
66
Fees
and
penalties
Part
1
Matters
under
Act
and
regulations
Section
of
Act
Fee
Amount
(NZ$)
(exclusive
of
GST)
20(2)
Renewal
fee
due
on
the
4th,
5th,
6th,
7th,
8th,
and
9th
anniversary
of
the
filing
date
of
the
complete
specification
100
20(2)
Renewal
fee
due
on
the
10th,
1
1th,
12th,
13th,
and
14th
anniversary
of
the
filing
date
of
the
complete
specification
200
20(2)
Renewal
fee
due
on
the
15th,
16th,
17th,
18th,
and
19th
anniversary
of
the
filing
date
of
the
complete
specification
350
21(2)(c)
Penalty
payable
for
request
to
extend
the
period
for
payment
of
a
renewal
fee
50
32
Patent
application
accompanied
by
a
provisional
specification
100
32
Patent
application
accompanied
by
a
complete
specification
(including
convention
applications)
250
35(1)
Maintenance
fee
due
on
the
4th
and
each
subsequent
anniversary
of
the
filing
date
of
the
complete
specification
if
the
fee
is
paid
during
the
period
prescribed
by
regulation
9(1)(a)
100
35(1)
Maintenance
fee
due
on
the
4th
and
each
subsequent
anniversary
of
the
filing
date
of
the
complete
specification
if
the
fee
is
paid
during
the
further
period
prescribed
by
regulation
9(1)(b)
150
86
2014/275
Patents
Regulations
2014
Schedule
Part
1
—continued
Section
of
Act
Fee
Amount
(NZ$)
(exclusive
of
GST)
40
Amendment
by
applicant
of
complete
specification
before
acceptance
(other
than
in
response
to
an
objection
raised
in
a
report
issued
by
the
Commissioner
under
section
65
or
97
of
the
Act)
150
64
,
94
,
95
Request
for
examination
or
re
-
examination
500
85(3)
Request
for
leave
to
amend
complete
specification
after
acceptance
150
87
,
92
,
1
16(3)
,
123
,
127
,
202(4)
Notice
of
opposition
350
1
12(1)
Application
to
revoke
a
patent
350
1
17(2)
,
125(2)
Request
for
restoration
of
patent
or
patent
application
100
V
arious
Request
for
a
hearing
850
Part
2
Patent
Cooperation
T
reaty
Legislative/T
r
eaty
basis
Fee
Amount
(NZ$)
(exclusive
of
GST)
International
phase
Rule
14.1
of
T
reaty
regulations
T
ransmittal
fee
for
each
international
application,
payable
to
the
Commissioner
within
1
month
of
the
applicant
filing
the
international
application
180
National
phase
Section
46
of
Act
Application
for
entry
into
the
national
phase
of
a
T
reaty
application
(treated
as
a
patent
application
accompanied
by
a
complete
specification)
250
Michael
W
ebster
,
Clerk
of
the
Executive
Council.
87
Explanatory
note
Patents
Regulations
2014
2014/275
Explanatory
note
This
note
is
not
part
of
the
r
egulations,
but
is
intended
to
indicate
their
general
effect.
These
regulations,
which
come
into
force
on
13
September
2014,
prescribe
matters
under
the
Patents
Act
2013
,
which
received
Royal
assent
on
13
September
2013.
These
regulations
are
to
be
read
in
conjunction
with
that
Act.
Relevant
section
numbers
in
that
Act
are,
to
the
extent
possible,
cited
in
the
regulation
that
prescribes
the
re-
lated
matters.
The
regulations
are
further
to
a
discussion
document
entitled
“Pro-
posals
for
Regulations
to
be
made
under
the
Patents
Act
2013”
that
was
released
by
the
Minister
of
Commerce
for
public
consultation
on
1
1
December
2013.
The
principal
matters
prescribed
by
these
regulations
include—
•
a
new
fees
structure:
•
requirements
to
use
the
Commissioner
’
s
electronic
case
man-
agement
facility:
•
time
limits
and
procedures
for
matters
under
the
Act
and
these
regulations:
•
new
rules
for
proceedings
before
the
Commissioner
.
The
Cabinet
paper
dated
12
March
2014
summarises
the
con-
tents
of
these
regulations
in
more
detail
and
can
be
found
at
http://www
.iponz.govt.nz/cms/pdf
-
library/patents/patent
-
regula-
tions
-
2014
-
cabinet
-
paper
-
3
-
mb
-
pdf
.
Changes
have
been
made
subsequently
,
for
example,
for
consistency
with
the
new
Act.
The
English
text
of
the
Patent
Cooperation
T
reaty
and
the
T
reaty
regulations
as
in
force
for
New
Zealand
can
be
found
at—
•
http://www
.wipo.int/export/sites/www/pct/en/texts/pdf/pct-
.pdf
•
http://www
.wipo.int/pct/en/texts/rules/rtoc1.htm
The
English
text
of
the
Budapest
T
reaty
can
be
found
at
http://www
.wipo.int/treaties/en/registration/budapest
The
English
text
of
the
regulations
made
under
the
Budapest
T
reaty
can
be
found
at
http://www
.wipo.int/treaties/en/text.jsp?file_id=283
787
88
2014/275
Patents
Regulations
2014
Explanatory
note
Regulatory
impact
statement
The
Ministry
of
Business,
Innovation,
and
Employment
produced
a
regulatory
impact
statement
on
12
March
2014
to
help
inform
the
main
policy
decisions
taken
by
the
Government
relating
to
the
con-
tents
of
this
instrument.
A
copy
of
this
regulatory
impact
statement
can
be
found
at—
•
http://www
.iponz.govt.nz/cms/pdf
-
library/patents/patent
-
regulations
-
2014
-
ris
-
185
-
kb
-
pdf
•
http://www
.treasury
.govt.nz/publications/informationre-
leases/ris
Issued
under
the
authority
of
the
Legislation
Act
2012
.
Date
of
notification
in
Gazette
:
14
August
2014.
These
regulations
are
administered
by
the
Ministry
of
Business,
Innovation,
and
Employment
.
1
2
W
ellington,
New
Zealand:
Published
under
the
authority
of
the
New
Zealand
Government—2014
89