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PATENTS REGULATIONS 1991
- made under the Patents Act 1990
TABLE OF PROVISIONS
CHAPTER 1--Introductory
1.1. Name of Regulations
1.3. Interpretation
1.3A. Meaning of completed in relation to a search
1.4. Meaning of Convention country
1.4A. Meaning of eligible importing country
1.5. Deposit requirements: prescribed period
1.6. Secret use--prescribed period
1.8. Completion of applications
CHAPTER 2--Patent rights, ownership and validity
2.1. Applications by co - owners for directions
2.2. Information made publicly available--recognised exhibitions
2.2A. Information made publicly available--learned societies
2.2B. Information made publicly available--reasonable trial of invention
2.2C. Information made publicly available--other circumstances
2.2D. Information made publicly available without consent--period
2.3. Divisional applications--period
2.4. Prescribed period: patents of addition
2.5. Prescribed period: assertion that invention is not a patentable invention
2.6. Prescribed period: notification of assertion of invalidity of innovation patent
2.7. Documents to accompany notice of assertion of invalidity
CHAPTER 3--From application to acceptance
PART 1--INVENTIONS--GENERALLY
Division 1--Applications
3.1. Prescribed documents: patent applications
3.1A. Applicant taken to be nominated person
3.2. Provisional application--direction to meet formalities requirements
3.2A. Complete application for standard patent--direction to meet formalities requirements
3.2AB. PCT application--title of specification
3.2B. Specifications: formalities check for innovation patents
3.2C. Specifications--formalities check for PCT application
3.3. Abstracts
3.4. Substitute abstracts
3.5. Filing date--patent applications other than PCT applications
3.5AA. Filing date--PCT applications
3.5A. Filing date: incomplete specifications
3.5AB. PCT applications--international applications taken to be applications under the Act
3.5AC. PCT applications--amendment
3.5AD. PCT applications--prescribed requirements
3.5AE. PCT applications--prescribed period
3.5AF. PCT applications--translations and prescribed documents
3.5AG. Convention application--prescribed particulars
3.5B. Filing of documents outside business hours
3.6. Requests to make determinations between interested parties
3.7. Form of certain applications
3.8. Time within which applications are to be made following certain decisions and declarations
3.9. Prescribed period: treatment of complete application as provisional
3.10. Prescribed period: making of complete applications
3.11. Prescribed period--making Convention application
Division 2--Priority date of claim
3.12. What this Division is about
3.13. Priority date for application by person declared under section 36 of the Act
3.13A. Priority date for PCT application
3.13B. Priority date for Convention application
3.13C. Priority date for complete application associated with provisional application
3.13D. Priority date for divisional application filed prior to grant of patent
3.13E. Priority date for divisional application after grant of innovation patent
3.14. Priority dates: certain amended claims
Division 3--Examination
3.14A. Request for international - type search relating to provisional application
3.14B. Request for preliminary search and opinion relating to complete application
3.14C. Priority dates--Convention applications and PCT applications: prescribed period for disregarding earlier applications
3.14D. Prescribed documents: basic application
3.15. Requirements of request for examination
3.16. Prescribed grounds and period for examination
3.17. Requirement for Commissioner to direct or expedite examination
3.17A. PCT applications--Commissioner not to give certain directions
3.17B. PCT applications--examination requirements
3.17C. PCT applications--notice if examination declined
3.18. Report of Commissioner: examination
3.19. Conduct of examination: standard patents
3.22. Disclosure of patent documents and information to International Bureau etc
PART 2--INVENTIONS--THAT ARE MICRO-ORGANISMS
3.23. Documents in accepted applications and patents involving micro - organisms
3.24. Commissioner may request samples and viability statement
3.25. Request for Commissioner's certification authorising release of sample of a micro - organism
3.25A. Request for certification--micro - organism subject of application for standard patent
3.25B. Grant of certification--when Commissioner must grant certification
3.25C. Grant of certification--limited use undertaking
3.25D. Grant of certification--order under section 133 of Act
3.25E. Grant of certification--exploitation for Crown purposes
3.25F. Grant of certification--expired patent etc.
3.25G. Imposing conditions on certification
3.25H. Notice of decision on certification request
3.26. Breach of undertakings given in respect of micro - organisms
3.27. Procedure in proceedings for breach of an undertaking
3.28. Relief in proceedings for breach of undertakings
3.29. Notification that a deposit requirement has ceased to be satisfied
3.30. Prescribed period: deposit requirements taken to be satisfied
3.31. Application for declaration that deposit requirements are not satisfied
3.32. Provisional specifications--prescribed circumstances
CHAPTER 4--Publication
4.1. Prescribed information: applicants and applications
4.2. Notice that specification is open to public inspection
4.3. Prescribed documents: public inspection
4.4. Publication and inspection of PCT applications
CHAPTER 5--Opposition
PART 5.1----PRELIMINARY
5.1. What this Chapter is about
5.2. Definitions
PART 5.2----FILING OF OPPOSITION DOCUMENTS
Division 5.2.1--Substantive opposition
5.4. Notice of opposition--standard patent opposition
5.5. Statement of grounds and particulars--standard patent opposition
5.6. Notice of opposition and statement of grounds and particulars--section 101M opposition
5.7. Filing of evidence
5.8. Evidentiary periods
5.9. Extension of time for filing evidence
Division 5.2.2--Procedural opposition
5.10. Notice of opposition
5.11. Statement of grounds and particulars
5.12. Practice and procedure
PART 5.3----AMENDMENTS TO OPPOSITION DOCUMENTS
5.13. Application of regulation 22.22
5.14. Notice of opposition--correction of errors or mistake
5.15. Notice of opposition--change of opponent
5.16. Statement of grounds and particulars
PART 5.4----DISMISSAL OF OPPOSITION
5.17. Dismissal on request
5.18. Dismissal on initiative of Commissioner
PART 5.5----HEARING OF OPPOSITION
5.19. Hearing and decision--re - examination
5.20. Hearing and decision--other circumstances
PART 5.6----MISCELLANEOUS
5.21. Opposition to amendment--grounds
5.22. Commissioner may give directions
5.23. Commissioner may consult documents
5.24. Representations to Commissioner--formal requirements
5.25. Extension of time for filing--amendment at Commissioner's direction
5.26. Withdrawal of opposition
CHAPTER 6--Grant and term of patents
PART 1--PATENTS--GENERALLY
6.1. Publication of notice of grant of standard patent
6.1A. Prescribed particulars--grant of standard patent
6.2. Prescribed period: grant of standard patent
6.2A. Prescribed particulars--grant of innovation patent
6.3. Date of patent
PART 2--EXTENSION--OF PHARMACEUTICAL PATENTS
6.7. Definitions
6.8. Information to accompany application
6.9. Application without pre - TGA marketing approval
6.10. Application with pre - TGA marketing approval
6.11. Further information
CHAPTER 6A--Divisional applications
6A.1. Divisional applications before grant--standard and innovation patents
6A.2. Divisional applications after grant--innovation patents
CHAPTER 7--Patents of addition
7.1. Form of application for grant of patent of addition etc
7.2. Form of application for revocation of patent and grant of patent of addition instead
CHAPTER 9--Re-examination
9.1. Notice of Commissioner's decision to re - examine complete specification
9.2. Request for re - examination of complete specification
9.3. Copy of report on re - examination
9.4. Prescribed period: statement disputing report by Commissioner
9.5. Completion of re - examination
CHAPTER 9A--Examination of innovation patents
9A.1. Request for examination
9A.2. Examination of complete specification
9A.3. Conduct of examination
9A.4. Period for examination
9A.5. Validity of innovation patent
CHAPTER 10--Amendments
10.1. Form of amendments
10.2. Commissioner to consider and deal with requests for leave to amend
10.2A. Documents considered for determining whether amendment allowed
10.2B. Amendments not allowable for patent requests
10.2C. Amendments not allowable for complete specifications
10.3. Amendments not allowable for other documents
10.4. Commissioner to refuse request for leave to amend
10.5. Commissioner to grant leave to amend
10.6. Time for allowance of amendments
10.6A. Deferred consideration of request for amendment
10.6B. Revocation of grant of leave
10.7. Rectification of Register
10.8. Prescribed decisions: appeal to Federal Court
10.10. Prescribed period: filing of court order
10.11. Form of direction by Commissioner: patents
10.12. Form of direction by Commissioner: applications
10.14. Form of request: claim under assignment or agreement
CHAPTER 11--Infringement
11.1. Infringement exemptions: prescribed foreign countries
CHAPTER 12--Compulsory licences and revocation of patents
PART 1--COMPULSORY--LICENCES (GENERAL)
12.1. Applications for orders for compulsory licences
12.2. Prescribed period: revocation of patent
PART 2--PATENTED--PHARMACEUTICAL INVENTION COMPULSORY LICENCES (FOR MANUFACTURE AND EXPORT TO ELIGIBLE IMPORTING COUNTRIES)
12.2A. Applications for PPI orders
12.2B. PPI compulsory licences--notification requirements
12.2C. PPI compulsory licences--labelling and marking of product
12.2D. PPI compulsory licences--shipment information
12.2E. PPI compulsory licences--giving information to the Commissioner
12.2F. Dealing with information provided under regulation 12.2E
PART 3--SURRENDER--AND REVOCATION OF PATENTS
12.3. Form of notice: offer to surrender patent
12.4. Applications to revoke patents
CHAPTER 13--Withdrawal and lapsing of applications and ceasing of patents
13.1. Publication of notice of withdrawal of application
13.1A. Period in which standard patent applications may not be withdrawn
13.1B. Period in which innovation patent applications may not be withdrawn
13.1C. PCT applications--prescribed circumstances in which application may be withdrawn or taken to be withdrawn
13.3. Prescribed period: continuation fees
13.4. Prescribed period: acceptance of request and specification
13.5. If applications lapse
13.5A. PCT application--prescribed circumstances for lapsing of application
13.6. Time for payment of renewal fee for patent
13.7. Prescribed period: ceasing of innovation patents
CHAPTER 15--Special provisions relating to associated technology
15.1. Time for restoration of application for patent
15.2. Requirements for reinstatement of international applications
15.3. Prescribed period: order relating to standard patent
CHAPTER 17--The Crown
17.1A. Prescribed period: order relating to standard patent
17.2. Prescribed period, document and fee: filing of international applications
CHAPTER 19--The register and official documents
19.1. Particulars to be registered
19.2. Request for information from Commissioner
CHAPTER 20--Individual Patent Attorneys
PART 1--INTRODUCTION
20.1A. Application of this Chapter
20.1B. Performance of functions and exercise of powers
20.1C. Conduct in New Zealand does not constitute an offence under this Chapter
20.1. Interpretation
PART 2--OBTAINING--REGISTRATION FOR FIRST TIME
20.2. Form of application
20.3. Evidence that applicant meets registration requirements
20.4. Certificate of registration
20.5. Evidence of academic qualifications
20.6. Academic qualifications
20.7. Evidence of knowledge requirements
20.8. Knowledge requirements
20.9. Exemption from a requirement in Schedule 5
20.10. Employment requirements
20.11. Statements of skill
20.12. Prescribed offences
PART 3--ACCREDITATION--OF COURSES OF STUDY
20.13. Accreditation of courses of study
20.14. Provisional accreditation
PART 4--BOARD--EXAMINATIONS
20.15. Board examinations
20.16. Time for holding Board examinations
20.17. Examinable subject matter
20.18. Admission to sit for a Board examination
20.19. Notification of Board examination results
20.20. Reasons for failure of Board examination
20.21. Supplementary Board examination
PART 5--MAINTAINING--REGISTRATION
20.22. Requirements for remaining on Register of Patent Attorneys
20.23. Payment of annual registration fee
20.24. Continuing professional education--number of hours
20.25. Method of demonstrating that continuing professional education has been undertaken
PART 6--REMOVAL--OF ATTORNEY'S NAME FROM REGISTER OF PATENT ATTORNEYS
20.26. Voluntary removal of name from Register of Patent Attorneys
20.27. Failure to pay annual registration fee
20.28. Failure to comply with continuing professional education requirements
PART 6A--SUSPENSION--OF REGISTRATION
20.28A. Requirement to notify of serious offence
20.28B. Suspension of registration--serious offence
PART 7--RESTORING--ATTORNEY'S NAME TO REGISTER OF PATENT ATTORNEYS
20.29. Restoring attorney's name to Register of Patent Attorneys
20.30. Restoring attorney's name to Register of Patent Attorneys following payment of unpaid fee
20.31. Restoring attorney's name to Register of Patent Attorneys in other circumstances
PART 8--DISCIPLINE
Division 1--General
20.32. Definitions
20.33. Role of Board in disciplinary proceedings
20.34. Board may require attorney to cooperate with investigation
20.35. Commencing disciplinary proceedings
Division 2--Proceedings in Disciplinary Tribunal
20.36. Panel of the Disciplinary Tribunal to be constituted
20.36A. Meetings of Panel of Disciplinary Tribunal
20.36B. Procedure of Panel of Disciplinary Tribunal
20.36C. Panel Chair unavailable to complete hearing
20.36D. Member other than the Panel Chair unavailable to complete hearing
20.36E. No member ordinarily resident in same country as registered patent attorney subject to proceedings
20.37. Notification of hearing of disciplinary proceedings
20.38. Hearings to be public except in special circumstances
20.39. Representation before Panel of Disciplinary Tribunal
20.40. Summoning of witnesses
20.41. Offences by persons appearing before a Panel of Disciplinary Tribunal
20.42. Protection of certain persons
20.43. Decision of Panel of Disciplinary Tribunal
20.44. Penalties--professional misconduct
20.45. Penalties--unsatisfactory professional conduct
20.46. Finding that attorney was unqualified at time of registration
20.47. Finding that registration obtained by fraud
20.48. Matters that may be considered in determining penalties
20.49. Findings of Panel of Disciplinary Tribunal
20.50. Notification and publication of decisions of Panel of Disciplinary Tribunal
20.51. Completion of outstanding business
20.52. Former attorney may be required to provide assistance
PART 9--RIGHTS--OF REGISTERED PATENT ATTORNEYS
20.53. Lien
PART 10--ADMINISTRATION
Division 1--Trans-Tasman IP Attorneys Board
20.56. Resignation and removal of members from Board
20.57. Meetings of Board
20.58. Member presiding at meetings of Board
20.59. Quorum for Board meetings
Division 2--Trans-Tasman IP Attorneys Disciplinary Tribunal
20.61. Establishment of the Trans - Tasman IP Attorneys Disciplinary Tribunal
20.61A. Functions of Disciplinary Tribunal
20.62. Membership of the Disciplinary Tribunal etc.
20.63. Eligibility for appointment as Tribunal member
20.63A. Acting President
20.63B. Acting Tribunal members
20.64. Disclosure of interests
CHAPTER 20A--Incorporated Patent Attorney
PART 1--INTRODUCTION
20A.1. Application of Chapter 20A
20A.1A. Performance of functions and exercise of powers
20A.1B. Conduct in New Zealand does not constitute an offence under this Chapter
20A.2. Definitions
PART 2--OBTAINING--REGISTRATION FOR FIRST TIME
20A.3. Form of application
20A.4. Certificate of registration
PART 3--MAINTAINING--REGISTRATION
20A.5. Requirements for remaining on Register of Patent Attorneys
PART 4--REMOVAL--FROM REGISTER OF PATENT ATTORNEYS
20A.6. Voluntary removal of name from Register of Patent Attorneys
20A.7. Failure to pay annual registration fee
20A.8. Failure to maintain professional indemnity insurance
PART 5--DISCIPLINE
Division 1--General
20A.9. Definitions
20A.10. Board may apply for cancellation or suspension of incorporated patent attorney's registration
Division 2--Proceedings in Disciplinary Tribunal
20A.11. Panel of the Disciplinary Tribunal to be constituted
20A.11A.Meetings of Panel of Disciplinary Tribunal
20A.11B.Procedure of Panel of Disciplinary Tribunal
20A.11C.Panel Chair unavailable to complete hearing
20A.11D.Member other than the Panel Chair unavailable to complete hearing
20A.11E.No member ordinarily resident in same country in which incorporated patent attorney subject to proceedings is registered
20A.12. Notification of hearing
20A.13. Hearings to be public except in special circumstances
20A.14. Representation before a Panel of Disciplinary Tribunal
20A.15. Summoning of witnesses
20A.16. Offences by persons appearing before a Panel of Disciplinary Tribunal
20A.17. Protection of certain persons
20A.18. Decision of Panel of Disciplinary Tribunal
20A.19. Notification and publication of decisions of Panel of Disciplinary Tribunal
20A.20. Completion of outstanding business
20A.21. Former attorney may be required to provide assistance
PART 6--RESTORING--ATTORNEY'S NAME TO REGISTER OF PATENT ATTORNEYS
20A.22. Restoring name to Register of Patent Attorneys
CHAPTER 21--Administration
21.1. Patent Office and sub - offices
21.2. Employees to whom Commissioner may delegate (Act s 209(1))
CHAPTER 22--Miscellaneous
PART 1--FEES--AND COSTS
Division 1--Fees
22.1. Complete applications treated as provisional applications
22.2. General fees
22.2A. Failure to pay: patent attorneys fees
22.2B. Failure to pay: filing fees for patent requests
22.2C. Failure to pay: certain other filing fees etc
22.2D. Failure to pay: fees payable by patentee for requests under s 101A(b) of the Act
22.2EA. Failure to pay: fee for grant of leave to amend specification (person invited to pay)
22.2EB. Failure to pay: fees payable for the first report on examination
22.2F. Consequence if Commissioner does not invite payment
22.2G. Failure to pay: hearing fees
22.2H. Failure to pay: certain fees for actions by Commissioner
22.2HA. Failure to pay: fees for requesting expedited dispatch
22.2I. Failure to pay: acceptance fee
22.3. General fees for international applications
22.4. Fees for international applications payable for the benefit of the International Bureau
22.5. PCT Fund
22.6. Exemption from fees
22.7. Refund of certain fees
Division 2--Costs
22.7A. Proceedings to which this Division applies
22.8. Costs
PART 2--OTHER--MATTERS
22.9. Death of applicant or nominated person
22.10. Address for service
22.10AA.Period for doing certain acts--office not open for business
22.10AB.Days when office not open for business
22.10AC.Prescribed acts
22.11. Extension of time
22.12. Giving of oral evidence
22.13. Declarations
22.14. Directions not otherwise prescribed
22.15. Requirements for filing documents
22.15A. Certificate of verification and corrected translation
22.16. Consequences for certain documents not meeting filing requirements
22.16A. Consequences for evidence not meeting filing requirements
22.17. Incapacity of certain persons
22.19. Copies of certain documents to be supplied
22.20. International applications and the Patent Office
22.21. Protection or compensation of certain persons
22.22. Exercise of discretionary powers by Commissioner
22.23. Written submissions and oral hearings
22.24. Practice and procedure other than for opposition proceedings
22.25. Requirements cannot be complied with for reasonable cause
22.26. Review of decisions
22.27. Documents not to infringe copyright--prescribed documents
CHAPTER 23--Application, saving and transitional provisions
PART 1--GENERAL
23.1. Saving: prohibition orders
23.32. Transitional: priority date and date of patent for innovation patent application that is a divisional application of a petty patent or petty patent application
23.33. Transitional: examination of innovation patents converted from petty patent applications
23.34. Transitional: certain PCT applications
23.35. Transitional: payment of fees for petty patents
PART 2--AMENDMENTS--MADE BY PARTICULAR INSTRUMENTS
23.36. Amendments made by Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1)
23.37. Amendments made by Intellectual Property Legislation Amendment (TRIPS Protocol and Other Measures) Regulation 2015
PART 3--TRANSITIONAL--PROVISIONS FOR SCHEDULE 4 TO THE INTELLECTUAL PROPERTY LAWS AMENDMENT ACT 2015 AND SCHEDULE 1 TO THE INTELLECTUAL PROPERTY LEGISLATION AMENDMENT (SINGLE ECONOMIC MARKET AND OTHER MEASURES) REGULATION 2016
23.38. Definitions
23.39. Removal of name from Register if New Zealand court determines person should not practise as a patent attorney in New Zealand
23.40. Restoring attorney's name after advice from New Zealand Commissioner of Patents
23.41. Transitional--registration as a patent attorney
23.42. Continuation of certain disciplinary proceedings--individuals
23.43. Continuation of certain disciplinary proceedings--incorporated patent attorneys
23.44. Termination of appointment of Patents and Trade Marks Attorneys Disciplinary Tribunal upon completion of all proceedings
23.45. Transitional--exemptions from patents knowledge requirements
PART 4--AMENDMENTS--MADE BY THE INTELLECTUAL PROPERTY LAWS AMENDMENT (PRODUCTIVITY COMMISSION RESPONSE PART 1 AND OTHER MEASURES) REGULATIONS 2018
23.46. Amendments made by Part 2 of Schedule 2
23.47. Amendments made by Part 3 of Schedule 2
23.48. Amendments made by Part 5 of Schedule 2
23.49. Amendments made by Part 7 of Schedule 2
PART 5--AMENDMENTS--MADE BY THE INTELLECTUAL PROPERTY LAWS AMENDMENT (PCT TRANSLATIONS AND OTHER MEASURES) REGULATIONS 2019
23.50A. Amendments made by Schedule 1
23.50. Amendment made by Part 3 of Schedule 2
PART 6--AMENDMENTS--MADE BY THE INTELLECTUAL PROPERTY LAWS AMENDMENT (PRODUCTIVITY COMMISSION RESPONSE PART 2 AND OTHER MEASURES) REGULATIONS 2020
23.51. Application of amendments
PART 7--AMENDMENTS--MADE BY THE INTELLECTUAL PROPERTY LAWS AMENDMENT (FEE AMOUNTS AND OTHER MEASURES) REGULATIONS 2020
23.52. Application of amendments
PART 8--AMENDMENTS--MADE BY THE INTELLECTUAL PROPERTY LEGISLATION AMENDMENT (FEE AMOUNTS AND OTHER MEASURES) REGULATIONS 2024
23.53. Fee for more than 20 potential claims in relation to an application for a standard patent at the start of the first examination report date
23.54. Fee for acceptance of a patent request and complete specification
23.55. Costs, expenses and allowances in respect of proceedings
SCHEDULE 5 Knowledge requirements
SCHEDULE 7 Fees
SCHEDULE 8 Costs, expenses and allowances
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