In New Zealand under the Patents Act 2013, amendments after a patent application is accepted or granted by the Intellectual Property Office of New Zealand (IPONZ) are limited compared to amendments allowable before acceptance.
Before acceptance, any amendment is allowable provided it is supported by the application as filed. After acceptance or grant, amendments of complete patent specifications are only allowable if:
they are supported (i.e. the subject matter of the proposed amendment is claimed or described in the specification before amendment); and
for claim amendments, are narrowing (i.e. any amended claim falls wholly within the scope of claim before amendment).
The exception to the above is when correcting an obvious mistake, which can result in a broadening amendment. However, case law from the previous Patents Act 1953, which should still be applicable under the 2013 Act, indicated that to correct an obvious mistake, both the mistake and the required correction must be clear from the specification as filed.
Amendments during opposition or revocation are allowable with leave of the court, and are subject to the same requirements as amendments made after acceptance or grant, i.e. any amendment must be supported and narrowing.
A request for leave to amend after acceptance must include:
- a marked-up copy of the specification showing the proposed amendments;
- a clean copy of the proposed amended specification;
- a statement of the reasons for the request, including an explanation of how and where in the specification the proposed amendments are supported by the specification as filed; and
- a declaration stating there are no proceedings before the court relating to the invention.
The official fee for post-acceptance amendments is NZ$500 (as at the time of this article).
The request for leave to amend is published in the Journal and assessed by IPONZ. If IPONZ does not accept the request for leave to amend, the applicant is given a three-month period (extendible by one month) to reply. This may include further amendments, or arguing against the issues raised. If the request is deemed allowable, this is published in the Journal and there is a further two-month opposition period (extendible by up to three months), during which interested parties can oppose the proposed amendment.
There are no statutory deadlines for when a post-acceptance amendment can be requested in New Zealand, however case law indicates the amendment should be requested without delay once a reason to file the amendment is discovered (such as becoming aware of new prior art).
Obtaining a post-acceptance amendment requires careful drafting of the amendment to ensure it meets the relevant criteria. If you need more information or would like help filing a post-acceptance amendment in New Zealand, please get in touch with one of our team of experts, who can assist with making sure your application has the best chance of success.