Amended patent, trade mark and design regulations in force in New Zealand

Article  \  5 Apr 2018

The changes to the regulations were made to address various formal and procedural issues.  The more significant of these relate to patents:

  • The deadline for providing a deposit receipt where an invention relates to a microorganism has been changed to 12 months from the date of the first examination report.  The previous deadline of “3 months after the date that the micro-organism is deposited” was unworkable since convention and national phase applications in New Zealand could be filed after the deadline had passed.
  • Claim overlap between a parent and a divisional application must now be addressed before acceptance.  This was the procedure under the Patents Act 1953 and the Intellectual Property Office of New Zealand’s intention under the new Act.  However, there was previously uncertainty around whether this requirement needed to be met at the time of filing a divisional application, with no opportunity to remedy the issue.  The new requirements are that a parent / divisional must not include “a claim or claims for substantially the same matter” as accepted in the other application.

As part of the Single Economic Market agenda involving Australia and New Zealand, it is now possible to have an address for service in Australia or New Zealand for patents, designs and trade marks.

If you have any questions about changes to the regulations or would like advice about your IP, contact one of our experts today.

This article is intended to summarise potentially complicated legal issues, and is not intended to be a substitute for individual legal advice. If you would like further information, please contact a Baldwins representative.