ORGANIZACIÓN MUNDIAL 
DEL COMERCIO 
Consejo de los Aspectos de los Derechos de 
Propiedad Intelectual relacionados con el Comercio RESTRICTED 
IP/N/1/NZL/P/1 
26 de enero de 1996 
(96-0250) 
Original: inglés 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL PÁRRAFO 2 DELARTÍCULO 63 DEL ACUERDO 
Nueva Zelandia 
Patentes (incluida la protección de las variedades vegetales) 
En el presente documento se reproducen1 las leyes y reglamentos siguientes, notificados por 
Nueva Zelandia en virtud de lo dispuesto en el párrafo 2 del artículo 63 del Acuerdo (véase el documento 
IP/N/l/NZL/1): 
Ley de Patentes de 1953 
Ley de Modificación de la Ley de Patentes de 1992 
Ley de Modificación de la Ley de Patentes, de 1994 
1En inglés solamente. 2 
105 
255 IP/N/I/NZL/P/l 
Page 2 
R.S. Val. 10 563 
1 
REPRINTED ACT 
[WITH AMENDMENTS INCORPORATED] 
PATENTS 
REPRINTED AS Ol'\ 1 AUG{;ST 1982 
NOTES: 1. Except where otherwise indicated, all references to D'loney io deciD'lal 
currency in square brackets were substituted for references to D'loney in the forDler 
currency by s. 7 of the DeciD'lal Currency Act 1964. 
2. Except where otherwise indicated, all references to the High Court in square 
brackets were substituted for references to the SupreD'le Court by s. 12 of the 
Judicature Amendment Act 1979. 
IXDEX 
Patents Act 1953 ... Page 
3 
Patents Act ComDlencement Order 1954 (S.R. 1954/220) 
Estate and Gift Duties Act 1955: s. 89 (7) 3 (n) 
82 (0) 
94(0) 
91 (n) SumD'lary Proceedings Act 1957: s. 214 (1) 
CriDles Act 1961: s. 411 (1) 
DeciD'lal Currency Act 1964: s. 7 
Patents AD'lendment Act 1972 
Patents Amendment Act 1976 
Seal of New Zealand Act 1977: s. 8 
Public Finance Act 1977: s. 114 (6) ... 
Tokelau AD'lendD'lent Act 1976: s. 3 (8) 
Judicature ADlendD'leot Act 1979: s. 12 1 (n) 
102 
103 
31 (0) 
97(n) 
98(0) 
Shop Trading Hours AD'lendD'lent Act 1980: s. 5 (3) .. , 
Flags, EmbleDls, and NaD'les Protection Act 1981: s. 27 (1) 1 (0) 
64(n) 
94(n) 
In this index "(n)" after a page number zndicates that the enactment is referred to in a note on that page. 
A="ALYSIS 
Title 
1. Short Title and commencemen t 
2. Interpretation 
3. Commissioner of Patents 
4. Assistant Commissioners of Patents 
and other officers 
5. Patent Office 
5A. Closing of Patent Office at short 
notice 
6. Officers and employees of Patent Office 
not to acquire interest in any patent 
or prepare specifications 
Application, Investigation, Opposition, 
etc. 
7. Persons entitled to make application 
B. Application 
9. Complete and provisional specifica­
tions 
10. Contents of specification 
11. Priority date of claims of complete 
s pecifica tion 
12. Examination of application 
13. Search for anticipation by previous 
blication 
E 14. Search for antICIpation by prior claim 
15. Commissioner may require information 
as to corresponding applications 
overseas 
16. Reference in case of potential infringe­
ment 
17. Refusal of application in certain cases 
lB. Supplementary provisions as to exam­
ination, etc. 
19. Time for putting application in order 
for acceptance 
20. Acceptance and publication of com-
plete specification 
2 1. Opposi tion to gran t of pa ten t 
22. Refusal of patent without opposition 
23. Mention of inventor as such in patent 
24. Substitution of applicants, etc. 
25. Provisions for secrecy of certain inven­
tions 
26. Inventions relating to atomic energy 
Grant, Effect, and Term of Patent 
27. Grant and sealing of patent 
2B. Amendment of patent granted to 
deceased applicant IP/N/I/NZL/P/l 
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564 
2 Patents R.S. Vol. 10 
29. Extent, effect, and forrn of patent 
30. Date and term of patent 
31. Extension on ground of inadequate 
remuneration 
32. Extension on ground of war loss 
33. Extension on ground of war loss of 
licensee 
34. Pa ten ts of addi tion 
Restoration of Lapsed Patents and 
Patent Applications 
35. Restoration of lapsed patents 
36. Restoration of applications where 
patent not sealed 
37. Restoration of application where com­
plete specification not accepted 
Amendment of Specifications 
38. Amendment of specification with leave 
of Commissioner 
39. Amendment of specification with leave 
of Court 
40. Supplementary provisions as to amend­
ment of specification 
Revocation and Surrender of Patents 
41. Revoca tion of patent by Court 
42. Revocation of patent by Conunissioner 
43. Surrender of patent 
Voluntary Endorsement of Patent 
44. Endorsement of patent "licences of 
right" 
45. Cancellation of endorsement under 
section 44 
Compulsory Licences, etc. 
46. Compulsory endorsement 
47. Provisions as to licences under section 
46 
48. Exercise of powers on application 
under section 46 
49. Endorsement, etc., on application of 
Crown 
50. Revocation of patent 
51. Inventions relating to food or medicine, 
etc. 
52. Procedure on application under sec­
tions 46 to 51 
53. Appeal and references to arbitrator 
54. Supplementary provisions 
L~se of Patented Inventions for 
Services of the Crown 
55. t:se of patented inventions for services 
of the Crown 
56. Rights of third parties in respect of 
Crown use 
57. Reference of disputes as to Crown use 
58. Special provisions as to Crown use 
during emergency 
Anticipation, etc. 
59. Previous publication 
60. Previous communication, display, or 
working 61. Use and publication after provisional 
specification or foreign application 
62. Priority date in case of obtaining 
Miscellaneous Provisions as to Rights 
in Inventions 
63. Co-ownership of patents 
64. Power of Commissioner to give direc­
tions to co-owners 
65. Disputes as to inventions made by 
employees 
66. Avoidance of certain restrictive condi­
tions 
67. Determination of certain contracts 
Proceedings fOT Infringement, etc. 
68. Restrictions on recovery of damages for 
infringemen t 
69. Order for account in action for 
infringernen t 
70. Counterclaim for revocation in action 
for infringemen t 
71. Relief for infringement of partially valid 
specifica tion 
72. Proceedings for infringement by exclu­
sive licensee 
73. Certificate of contested validity of 
specifica tion 
74. Remedy for groundless threats of 
infringement proceedings 
75. Power ,of Court to make declaration as 
to non-infringenten t 
76. Attorney-General ntay appear in 
patent proceedings 
International Agreements, etc. 
77. Orders in Council as to convention 
countries 
78. Supplementary provisions as to con­
vention applications 
79. Special provisions as to vessels, air­
craft, and land vehicles 
80. Extension of tinte for certain conven­
tion applications 
81. Protection of inventions communicated 
under international agreements 
82. Regulations under section 80 or section 
81 
Register of Patents, etc. 
83. Register of patents 
84. Registration of assignments, etc. 
85. Lintitation of proceedings 
86. Commissioner ntay dispense with pro­
duction of probate or letters of 
adntinis tra tion in certain cases 
87. Rectification of register of patents by 
Court 
8B. Correction of errors 
89. Evidence of entries, documents, etc. 
90. Requests for inforntation as to patent or 
patent application 
91. Restriction upon publication of specifi­
ca tions, etc. 
92. Loss.or destruction of patent 
93. Commissioner may g~ant e~~en.siqn. of 
time IP/NI 1 INZL/PI 1 
Page 4 
R.S. Vo!. 10 Patents Act 1953 565 
3 
93A. Additional provisions for extending 
time limits 
Proceedings Before Commissioner 
94. Exercise of discretionary powers of 
Commissioner 
95. Costs and security for costs 
96. Evidence before Commissioner 
Appeals 
97. Appeals to High Court 
98. Appeals to Court of Appeal 
99. Cos ts of Commissioner in proceedings 
before Court 
Patent Attorneys 
100. Registration of patent attorneys 
101. Powers of patent attorneys 
102. Cancellation of registration of patent 
attorneys 
103. Restrictions on practice as patent 
attorney 104. Recovery of patent attorney's charges 
Offences 
105. Falsification of register, etc. 
106. Unauthorised claim of patent rights 
107. Protection of Royal Arms, etc. 
108. Offences by companies 
109. Repealed 
Miscellaneous 
110. Service of notices, etc., by post 
1 1 1. Declara tion by person under disa bili ty 
112. Journal, indexes, etc. 
1 13. Rules of Court 
1 14. Regula tions 
115. Fees 
116. Annual report of Commissioner 
117. Saving for Royal prerogative, etc. 
118. Application of Act to Tokelau 
1 19. Repeals and savings 
Schedules 
THE PATENTS ACT 1953 
1953, No. 64 
An Act to consolidate and aDlend certain enactInents 
relating to patents [26 November 1953 
1. Short Title and cOlDlDenceDlent-( 1) This Act ll1ay be 
cited as the Patents Act 1953. 
(2) This Act shall COll1e into force on a day to be appointed 
for the commencement thereof by the Governor-General by 
Proclamation. 
This Act came into force on 1 January 1955; see the Patents Act Commencement 
Order 1954 (S.R. 1954/220). 
2. Interpretation-( 1) In this Act, unless the context 
otherwise requires,-
"Applicant" includes a person in whose favour a 
direction has been given under section 24 of this Act 
and the personal representative of a deceased 
applicant: 
"Article" includes any substance or material, and any 
plant, machinery, or apparatus, whether affixed to 
land or not: 
"Assignee" includes the personal representative of a 
deceased assignee; and references to the assignee of 
any person include references to the assignee of the 
personal representative or assignee of that person: 
"Commissioner" means the Commissioner of Patents: 566 
4 IP/NI 1 INZL/PI 1 
Page 5 
Patents R.S. Vol. 10 
"Commonwealth" means the British Commonwealth of 
Nations; and includes every territory for whose 
international relations the Government of any 
country of the Commonwealth is responsible: 
"Convention application" has the meaning assigned to it 
by subsection (4) of section 7 of this Act: 
"Convention country" means a country in respect of 
which there is for the time being in force an Order in 
Council made under section 77 of this Act declaring it 
to be a convention country: 
"Court" means the [High Court]: 
"Date of filing", in relation to any document filed under 
this Act, means the date on which the document is 
filed or, where it is deemed by virtue of any provision 
of this Act or of regulations made thereunder to have 
been filed on any different date, means the date on 
which it is deemed to be filed: 
"Exclusive licence" means a licence from a patentee 
which confers on the licensee, or on the licensee and 
persons authorised by him, to the exclusion of all 
other persons (including the patentee), any right in 
respect of the patented invention; and "exclusive 
licensee" shall be construed accordingly: 
"Government Departlllent" llleans any Department or 
instrument of the Executive Government of New 
Zealand: 
"Invention" means any manner of new manufacture the 
subject of letters patent and grant of privilege within 
section 6 of the Statute of Monopolies and any new 
m.ethod or process of testing applicable to the 
improvem.ent or control of manufacture; and includes 
an alleged invention: 
"Journal" ITleans the Patent Office Journal published under 
subsection (1) of section 112 of this Act: 
"Minister" ITleans the Minister of Justice: 
"Patent" means letters patent for an invention: 
"Patent of addition" means a patent granted In 
accordance with section 34 of this Act: 
"Patent Attorney" means a person carrying on for gain 
in New Zealand the business of acting as agent for 
other persons for the purpose of applying for or 
obtaining patents in New Zealand or elsewhere: 
"Patentee", in relation to any patent, means the person 
or persons for the time being entered on the register 
of patents as grantee or proprietor of the patent: IP/N/I/NZL/P/l 
Page 6 
R.S. Vol. 10 Patents Act. 1953 
"Prescribed" means prescribed by 
regulations made under this Act: 567 
5 
this Act or by 
"Priority date" has the m.eaning assigned to it by section 
1 1 of this Act: 
"Published", except in relation to a complete specifica­
tion, ITleans made available to the public; and 
without prejudice to the generality of the foregoing 
provision a document shall be deemed for the 
purposes of this Act to be published-
(a) If it can be inspected as of right at any pl~ce in 
New Zealand by members of the public whether 
upon payment of a fee or otherwise; or 
(b) If it can be inspected in a library of a 
GovernmeIlt Department or of any institution or 
public authority and the library is one which is open 
generally to members of the public who are interested 
in matters to which the document relates and is a 
library in which members of the public in search of 
information related to the subject of the document 
would ordinarily seek and do in fact seek the 
inforITla tion: 
"The Statute of Monopolies" means the Act of the 21st 
year of the reign of King James the First, chapter 3, 
intituled "An Act concerning lTIonopolies· and 
dispensations with penal laws and the forfeiture 
thereof" . 
(2) For the purposes of subsection (3) of section 7 of this 
Act, so far as it relates to a convention application, and for the 
purposes of section 81 of this Act, the expression·' 'personal 
representative", in relation to a deceased person, includes the 
legal representative of the deceased appointed in any country 
outside Ne\v Zealand. 
Cf. Patents Act 1949, s. 101 (U.K.); 1921-22, No. 18, s. 2 
3. Conunissioner of Patents-( 1) There lTIay froIT} time 
to tilTIe be appointed uhder the [State Services Act 1962] 
some fit person to be the COlTImissioner of Patents. 
(2) The person who at the COlTIlTIencelTIent of this Act holds 
the office of COlTIInissioner of Patents, Designs, and Trade 
Marks under the Patents, Designs, and Trade Marks Act 
1921-22 shall be deemed to have been appointed as 
COInlTIissioner of Patents under this Act. 
Cf. 1921-22, No. 18, s. 113 
In subs. (1) the State Services Act 1962, being the corresponding enactment in force 
at the date of this reprint, has been substituted for the repealed Public Service Act 1912. 568 
6 Patents IP/N/I/NZL/P/l 
Page 7 
R.S. Vol. 10 
4. Assistant COIDIDissioners of Patents and other 
officers-( 1) There ITlay froITl tiITle to tiITle be appointed 
under the [State Services Act 1962]-
(a) One or Inore fit persons to be Assistant COITlITlissioners 
of Patents: 
(b) Such other officers and eITlp10yees as rrlay be necessary 
for carrying out the provisions of this Act. 
(2) Every Assistant Commissioner of Patents so appointed, 
while he reInains in office, shall have and rrlay exercise, 
subject to the control and direction of the ComITlissioner, all 
the powers, duties, and functions of the COITlITlissioner, and 
all references in this or any other Act to the COITlrnissioner 
shall, so far as ITlay be necessary for the purpose of giving 
effect to the provisions of this section, be deeITled to incl ude a 
reference to every Assistant CornITlissioner of Patents. 
(3) The person who at the commencement of this Act holds 
the office of Deputy COrrlrrlissioner of Patents, Designs, and 
Trade Marks under the Patents, Designs, and Trade Marks 
Act 1921-22 shall be deeIned to have been appointed an 
Assistant COrrlrnissioner of Patents under this Act. 
Cf. 1921-22, No. 18, ss. 114, 115, 
In subs. (1) the State Services Act 1962, being the corresponding enactment in force 
at the date of this reprint, has been substituted for the repealed Public Service Act 1912. 
5. Patent Office--( 1) The Minister ll1ay from. time to 
time, by notice in the Journal, appoint a place to be the Patent 
Office. The place at the commencement of this Act used as 
the Patent Office shall be deemed to have been appointed to 
be the Patent Office under this Act. 
[(2) The COrrlrrlissioner, frorrl tirrle to tirrle by notice in the 
Journal, m.ay fix the hours during which the Patent Office shall 
be open for the transaction of public business und~r this Act, 
and ll1ay declare the Patent Office closed for the transaction 
of public business on any day.] 
(3) Where the tiITle prescribed for doing any act or taking 
any proceeding expires on a day on which the Patent Office is 
not open and by reason thereof the act or proceeding cannot 
be done or taken on that day, the act or proceeding shall be 
deerrled to be in time if done or taken on the next day on 
which the Patent Office is open. 
(4) There shall be a seal of the Patent Office and 
irrlpressions thereof shall be judicially noticed. 
Cf. Patents Act 1949, s. 98 (U.K.); 1921-22, No. 18, 
ss. 113, 116, 133 
Subs. (2) was substituted for the original subs. (2) by s. 2 (1) of the Patents 
Amendment Act 1976. IP/N/I/NZL/P/l 
Page 8 
R.S. Va!. 10 Patents Act 1953 569 
7 
[5A. Closing of Patent Office at short notice--­
(1) Notwithstanding subsection (2) of section 5 of this Act, 
where, because of an ell1ergency or other tell1porary 
circull1stances, the Commissioner is satisfied that it is or will 
be necessary or desirable to close the Patent Office on any day 
and it is not practicable to give notice of the closure in the 
Journal as required by that subsection, the COIl1ll1issioner 
rrlay, without giving that notice, declare the Patent Office 
closed for the transaction of public business on that day In 
accordance with the provisions of this section. 
(2) In every case where the Comll1issioner proposes to 
declare or has declared the Patent Office closed under 
subsection (1) of this section he shall, if practicable, display a 
public notice of that fact in or on the building in which the 
Patent Office is situated. 
(3) As soon as practicable thereafter the COll1rnissioner 
shall also cause a copy of the public notice, or (if no such 
notice was displayed) a notice of the exercise of his powers 
under this section, to be published in the Journal.] 
This section was inserted by s. 2 (2) of the Patents Amendment Act 1976. 
6. Officers and elDployees of Patent Office not to 
acquire interest in any patent or prepare specifications­
(1) Every officer and employee of the Patent Office shall be 
incapable, during the period for which he holds his 
appointll1ent and for one year thereafter, of applying in New 
Zealand for a patent or of acquiring directly or indirectly, 
except under a will or on an intestacy, any right or interest in 
any patent granted or to be granted in New Zealand. 
(2) Every officer and employee of the Patent Office 
cOll1ll1its an offence, and shall be liable on SUIIlll1ary 
conviction to a fine not exceeding [$100], if, during the period 
for which he holds his appointment and for one year 
thereafter, he applies in any country other than New Zealand 
for a patent or acquires directly or indirectly, except under a 
will or on an intestacy, any right or interest in any patent 
granted or to be granted in any country other than New 
Zealand. 
(3) Every officer and ell1ployee of the Patent Office 
cornInits an offence, and shall be liable on summary 
conviction to a fine not exceeding [$40], if, outside the scope 
of his official duties, he drafts or prepares a specification or 
drawing or any part of a specification or drawing or makes a 
search of the records of the Patent Office for the use or 
inforInation of any applicant or intending applicant for a 
patent under this Act. 570 
8 Patents IP/N/I/NZL/P/l 
Page 9 
R.S. Va!. 10 
(4) Nothing in subsections (1) and (2) of this section shall 
prevent any former officer or employee of the Patent Office 
who is practising as a solicitor or patent attorney froIn 
lawfully carrying out, within the period of one year specified 
in those subsections, any function that is merely incidental to 
that practice. 
Cf. 1947, No. 37, s. 4 
Application;, Investigation, Opposition;, etc. 
7. Persons entitled to ntake application-Cl) An appli­
cation for a patent for an invention may be made by any of the 
following persons, that is to say: 
(a) By any person claiming to be the true and first inventor 
of the invention: 
(b) By any person being the assignee of the person claiming 
to be the true and first inventor in respect of the 
right to make such an application,-
and may be Inade by that person either alone or jointly with 
any other person. 
(2) Without prejudice to the foregoing provisions of this 
section, an application for a patent for an invention in respect 
of which protection has been applied for in a convention 
country may be made by the person by whom the application 
for protection was made or by the assignee of tha t person; and 
for the purposes of this Act the filing in any convention 
country of a complete specification after the filing of a 
provisional specification or provisional specifications in 
respect of any such application shall be deemed to be an 
application for protection in that country: 
Provided that no application shall be made by virtue of this 
subsection after the expiration of 12 months from the date of 
the application for protection in a convention country or, 
where more than one such application for protection has been 
rnade, from the date of the first application. 
(3) An application for a patent may be made under 
subsection (1) or subsection (2) of this section by the personal 
representative or the assignee of the personal representative of 
any deceased person who, immediately before his death was 
entitled to make such an application. 
(4) An application for a patent made by virtue of 
subsection (2) of this section is in this Act referred to as a 
convention application. 
Cf. Patents Act 1949, s. I (C.K.); 1921-22, No. 18, 
ss. 3, 48 
As to the meaning of the term "personal representative" in subs. (3), see s. 2 (2). IP/N/1/NZL/P/1 
Page 10 
571 
9 
8. Application-( 1) Every application for a patent shall 
be made in the prescribed form and shall be filed at the Patent 
Office in the prescribed manner. R.S. Va!. 10 Patents Act 1953 
(2) Every application (other than a convention applica­
tion) shall state that the applicant is in possession of the 
invention and shall name the person claiming to be the true 
and first inventor; and where the person so claiming is not the 
applicant or one of the applicants, the application shall 
contain a declaration that the applicant believes him to be the 
true and first inventor. 
(3) Every convention application shall specify the date on 
which and the convention country in which the application 
for protection, or the first such application, was made, and 
shall state that no application for protection in respect of the 
invention had been made in a convention country before that 
date by the applicant or any person from whom he derives 
title. 
(4) Where applications for protection have been made in 
one or more convention countries in respect of 2 or more 
inventions which are cognate or of which one is a modification 
of anot}:ler, a single convention application may, subject to the 
provisions of section 10 of this Act, be made in respect of those 
inventions at any time within 12 months from the date of the 
earliest of the said applications for protection: 
Provided that the fee payable on the making of any such 
application shall be the same as if separate applications had 
been made in respect of each of the said inventions; and the 
requirements of subsection (3) of this section shall in the case 
of any such application apply separately to the applications 
for protection in respect of each of the said inventions. 
Cf. Patents Act 1949, s. 2 (U.K.); 1921-22, No. 18, s. 3 
9. Cotnplete and provisional specifications-( 1) Every 
application for a patent (other than a convention application) 
shall be accompanied by either a complete specification or a 
provisional specification; and every convention application 
shall be accompanied by a complete specification. 
(2) Where an application for a patent is accompanied by a 
provisional specification, a complete specification shall be 
filed wi thin 12 months from the date of filing of the 
application, and if the complete specification is not so filed the 
application shall be deemed to be abandoned: 
Provided that the complete specification may be filed at 
any time after 12 months but within 15 months from the date 
aforesaid if a request to that effect is made to the 
Inset 1 572 
10 Patents IP/N/1/NZL/P/1 
Page 11 
R.S. Vol. 10 
COlTIlTIissioner and the prescribed fee paid on or before the 
date on which the specification is filed. 
(3) Where 2 or lTIore applications accompanied by 
provisional specifications have been filed in respect of 
inventions which are cognate or of which one is a modification 
of another, a single co:mplete specification may, subject to the 
provisions of this section and of section 10 of this Act, be filed 
in pursuance of those applications, or, if more than one 
com.plete specification has been filed, may with the leave of 
the Com.m.issioner be proceeded with in respect of those 
applications. 
(4) Where an application for a patent (not being a 
convention application) is accompanied by a specification 
purporting to be a complete specification, the Com.rnissioner 
may, if the applicant so requests at any time before the 
acceptance of the specification, direct that it shall be treated 
for the purposes of this Act as a provisional specification, and 
proceed with the application accordingly. 
(5) Where a complete specification has been filed in 
pursuance of an application for a patent accoIllpanied by a 
provisional specification or by a specification treated by 
virtue of a direction under subsection (4) of· this section as a 
provisional specification, the COITlmissioner m.ay, if t~e 
applicant so requests at any tim.e before the acceptance of the 
com.plete specification, cancel the provisional specification 
and post-date the application to the date of filing of the 
com.plete specification. 
Cf. Patents Act 1949, s. 3 (U.K.); 1921-22, No. 18, ss. 4, 
7, 18; 1939, No. 26, s. 73 
10. Contents of specification-( 1) Every specification, 
whether complete or provisional, shall describe the invention, 
and shall begin with a title indicating the subject to which the 
invention relates. 
(2) Subject to any regulations made under this Act, 
drawings may, and shall if the Commissioner so requires, be 
supplied for the purposes of any specification, whether 
complete or provisional; and any drawings so supplied shall, 
unless the Commissioner otherwise directs, be deemed to 
form part; of the specification, and references in this Act to a 
specification shall be construed accordingly. 
(3) Every complete specification-
(a) Shall particularly describe the invention and the 
rnethod by which it is to be perforrned; and IP/NI1/NZL/PI 1 
Page 12 
R.S. Vol. 10 Patents Act 1953 573 
11 
(b) Shall disclose the best method of performing the 
invention which is known to the applicant and for 
which he is entitled to claim protection; and 
(c) Shall end with a claim or claims defining the scope of 
the invention claimed. 
(4) The claim or claims of a complete specification ITlust 
relate to a single invention, must be clear and succinct, and 
must be fairly based on the matter disclosed in the 
s pecifica tion. 
(5) Regulations made under this Act may require that in 
such cases as may be prescribed by the regulations a 
declaration as to the inventors hip of the invention, in such 
form as may be so prescribed, shall be furnished with the 
cOITlplete specification or within such period as may be so 
prescribed after the filing of that specification. 
(6) Subject to the foregoing provisions of this section, a 
cOITlplete specification filed after a provisional specification, 
or filed with a convention application, may include claims in 
respect of developments of or additions to the invention which 
was described in the provisional specification or, as the case 
may be, the invention in respect of which the application for 
protection was made in a convention country, being 
developments or additions in respect of which the applicant 
would be entitled under the provisions of section 7 of this Act 
to make a separate application for a patent. 
(7) Where a complete specification claims a new substance, 
the claim shall be construed as not extending to that 
substance when found in nature. 
Cf. Patents Act 1949, s. 4 (U.K.); 1921-22, No. 18, 
ss. 3,· 4 
11. Priority date of claiDls of cODlplete specification­
(1) Every claim of a complete specification shall have effect 
from the date prescribed by this section in relation to that 
claim (in this Act referred to as the priority date); and a 
patent shall not be invalidated by reason only of the 
publication or use of the invention, so far as claimed in any 
claim of the complete specification, on or after the priority 
date of that claim, or by the grant of another patent upon a 
specification claiming the same invention in a claim of the 
same or later priority date. 
(2) Where the complete specification is filed in pursuance 
of a single application accompanied by a provisional 
specification or by a specification which is treated by virtue of 
a direction under subsection (4) of section 9 of this Act as a 574 
12 Patents IP IN 11/NZL/P 11 
Page 13 
R.S. Vol. 10 
provisional specification, and the claim. is fairly based on the 
ll1atter disclosed in that specification, the priority date of that 
claim. shall be the date of filing of the application. 
(3) Where the com.plete specification is filed or proceeded 
with in pursuance of 2 or m.ore applications accotnpanied by 
such specifications as are m.entioned in subsection (2) of this 
section, and the claim. is fairly based on the m.atter disclosed 
in one of those specifications, the priority date of that claitn 
shall be the date of filing of the application accotnpanied by 
that specification. 
(4) Where the com.plete specification is filed in pursuance 
of a convention application and the claitn is fairly based on 
the tnatter disclosed in the application for protection in a 
convention country or, where the convention application is 
founded upon tnore than one such application for protection, 
in one of those applications, the priority date of that claitn 
shall be the date of the relevant application for protection. 
(5) Where, under the foregoing provisions of this section, 
any claitn of a cotnplete specification would, but for this 
provision, have 2 or m.ore priority dates, the priority date of 
that claitn shall be the earlier or earliest of those dates. 
(6) In any case to which subsections (2) to (5) of this 
section do not apply, the priority date of a claim shall be the 
date of filing of the cotnplete specification. 
Cf. Patents Act 1949, s. 5 (U.K.); 1921-22, No. 18, s. 8 
12. Examination of application-(l) 'When the complete 
specification has been filed in re~pect of an application for a 
patent, the application and specification or specifications 
shall be referred by the Commissioner to an examiner. 
(2) If the exanliner. reports that the application or any 
specification filed in pursuance thereof does not comply with 
the requirements of this Act or of any regulations made 
thereunder, or that there is lawful ground of objection to the 
grant of a patent in pursuance of the application, the 
Cotntnisioner tnay either-
(a) Refuse to proceed with the application; or 
(b) Require the application or any such specification as 
aforesaid to be atnended before he proceeds with the 
application. 
(3) At any time after an application has been filed under 
this Act and before acceptance of the complete specification, 
the Cotnrnissioner may, at the request of the applicant and 
upon paytnent of the prescribed fee, direct that the IP/N/1/NZL/P/1 
Page 14 
R.S. Vol. 10 Patents Act 1953 575 
13 
application shall be post-dated to such date as ITlay be 
specified in the request: 
Provided that-
(a) No application shall be post-dated under this 
subsection to a date later than 6 ITlonths froITl the 
date on which it was actually ITlade or would, but for 
this subsection, be deeITled to have been ll1ade; and 
(b) A convention application shall not be post-dated under 
this subsection to a date later than the last date on 
which, under the foregoing provisions of this Act, 
the application could have been ITlade. 
(4) Where an application or specification filed under this 
Act IS aITlended before acceptance of the cOll1plete 
specification, the COll1ll1issioner nlay direct that the 
application or specification shall be post-dated to the date on 
which the amendment is first filed. 
(5) Regulations made under this Act ll1ay ll1ake provision 
for securing that where, at any time after an application or 
specification has been filed under this Act and before 
acceptance of the complete specification a fresh application or 
specification is filed in respect of any part of the subject­
ll1atter of the first-mentioned application or specification, the 
Commissioner nlay on request direct that the fresh 
application or specification shall be antedated to a date not 
earlier than the date of filing of the first-mentioned 
application or specification. 
(6) An appeal to the Court shall lie froll1 any decision of the 
Comll1issioner under subsection (2) or subsection (4) of this 
section. 
Cf. Patents Act 1949, s. 6 (U.K.); 1921-22, No. 18, s. 5 
13. Search for anticipation by previous publication­
(1) Subject to the provisions of section 12 of this Act, the 
examiner to whom an application for a patent is referred 
under this Act shall make investigation for the purpose of 
ascertaining whether the invention, so far as claimed in any 
claim of the cOll1plete specification, has been published before 
the date of filing of the applicant's complete specification in 
any specification filed in pursuance of an application for a 
patent made in New Zealand and dated within 50 years next 
before that date. 
(2) The examiner shall, in addition, make such investiga­
tion as the Commissioner may direct for the purpose of 
ascertaining whether the invention, so far as claimed in any 
claiITl of the com.plete specification, has been published in 576 
14 Patents IP IN 11 INZL/P 11 
Page 15 
R.S. Vol. 10 
New Zealand before the date of filing of the applicant's 
complete specification in any other docum.ent (not being a 
document of any class described in subsection (1) of section 
59 of this Act). 
(3) If it appears to the commissioner that the invention, so 
far as claimed in any claim. of the complete specification, has 
been published as a~oresaid, he may refuse to accept the 
specification unless the applicant either-
(a) Shows to the satisfaction of the Commissioner that the 
priority date of the claim of his complete 
specification is not later than the date on which the 
relevant document was published; or 
(b) Amends his complete specification to the satisfaction of 
the Commissioner. 
(4) An appeal to the Court shall lie from any decision of the 
COInmissioner under this section. 
Cf. Patents Act 1949, s. 7 (U.K.); 1921-22, No. 18, s. 10 
14. Search for anticipation by prior clainJ-(I) In 
addition to the investigation required by section 13 of this 
Act, the examiner shall make investigation for the purpose of 
ascertaining whether the invention, so far as claimed in any 
claim of the complete specification, is claimed in any claim of 
any other complete specification published on or after the 
date of filing of the applicant's complete specification, being a 
specification filed-
(a) In pursuance of an application for a patent made in 
New Zealand and dated before that date; or 
(b) In pursuance of a convention application founded upon 
an application for protection made in a convention 
country before that date. 
(2) If it appears to the Commissioner that the said 
invention is claimed in a claim of any such other specification 
as aforesaid, he may, subject to the provisions of this section, 
direct that a reference to that other specification shall be 
inserted by way of notice to the public in' the applicant's 
complete specification unless within such time as tnay be 
prescribed either-
(a) The applicant shows to the satisfaction of the 
.ComIllissioner that the priority date of his claiIn is 
not later than the priority date of the claim of the 
said other specification; or 
(b) The complete specification is amended to the 
satisfaction of the Commissioner. IP/N/1/NZL/P/1 
Page 16 
R.S. Vo!. la Patents Act 1953 577 
15 
(3) If in consequence of the investigation under section 13 
of this Act or otherwise it appears to the Commissioner-
(a) That the invention, so far as claimed in any claiIn of the 
applicant's cOInplete specification, has been claimed 
in any such specification as is rnentioned in 
subsection (1) of that section; and 
(b) That the other specification was published on or after 
the priority date of the applicant's clairn,-
then, unless it has been shown to the satisfaction of the 
Commissioner under that section that the priority date of the 
applicant's claim is not later than the priority date of claim of 
that other specification, the provisions of subsection (2) of this 
section shall apply as they apply in relation to a specification 
published on or after the date of filing of the applicant's 
com.plete specification. 
( 4) The powers of the COInmissioner under this section to 
direct the insertion of a reference to another specification rnay 
be exercised either before or after a patent has been granted 
for the invention claimed in that other specification, but any 
directions given before the grant of such a patent shall be of 
no effect unless and until such a patent is granted. 
(5) An Appeal to the Court shall lie from any decision of 
the Cornrnissioner under this section. 
Cf. Patents Act 1949 s. 8 (U.K.); 1921-22, No. 18, s. 10 
15. Conunissioner DUly require infonnation as to 
co~esponding applications overseas-For the purposes of 
the" investigation required under this Act an applicant, if so 
required by the Commissioner shall,-
(a) State whether a corresponding or substantially 
corresponding application has been filed in any of 
the following countries, naInely,-
(i) The United Kingdom, Canada, Australia, or 
the United States of America; or 
(ii) Any other country for the time being declared 
by Order in Council to be a country to which this 
paragraph applies: 
(b) 'With respect to any such application in any such 
country, furnish (so far as it is reasonably available 
to the applicant) the following information: 
(i) The number and filing date of the application; 
and 
(ii) Particulars sufficient to identify the prior art 
cited against the application; and 578 
16 Patents IP/N/1/NZL/P/1 
Page 17 
R.S. Val. 10 
(iii) The num.ber allotted to the patent when 
granted on the application and the form of the 
claitns allowed; and 
(iv) Particulars of any other application or patent 
with which the corresponding application is or has 
been involved in opposition, conflict, interference, 
or similar proceedings. 
16. Reference in case of potential infringentent­
(1) If, in consequence of the investigations required by the 
foregoing provisions of this Act or of proceedings under 
section 21 or section 42 of this Act, it appears to the 
Cotn:rnissioner that an invention in respect of which 
application for a patent has been made cannot be perform.ed 
without substantial risk of infringe:rnent of a clai:rn of any 
other patent, he may direct that a reference to that other 
patent shall be inserted in the applicant's complete 
specification by way of notice to the public unless within such 
time as may be prescribed either-
(a) The applicant shows to the satisfaction of the 
Commissioner that there are reasonable grounds for 
contesting the validity of the said claim of the other 
patent; or 
(b) The complete specification is amended to the 
satisfaction of the Commissioner. 
(2) Where, after a reference to another patent has been 
inserted in a complete specification in pursuance of a 
direction under the foregoing subsection-
Ca) That other patent is revoked or otherwise ceases to be 
in force; or 
(b) The specification of that other patent is amended by the 
deletion of the relevant claim; or 
(c) It is found, in proceedings before the court or the 
Commissioner, that the relevant claim of that other 
patent is invalid or is not infringed by any working 
of the applicant's invention,-
the Commissioner may, on the application of the applicant, 
delete .the reference to that other patent. 
(3) An appeal to the Court shall lie from any decision or 
direction of the Commissioner under this section. 
Cf. Patents Act 1949, s. 9 (U.K.) 
17. Refusal of application in certain cases-Cl) If it 
appears to the COITlmissioner in the case of any application 
for a patent-IP/N/I/NZL/P/I 
Page 18 
R.S. Vol. 10 Patents Act 1953 579 
17 
(a) That it IS frivolous on the ground that it claill1s as an 
invention anything obviously contrary to well 
established natural laws; or 
(b) That the use of the invention in respect of which the 
application is made would be contrary to law or 
tnorality; or 
(c) That it clailTIs as an invention a substance capable of 
being used as food or medicine which is a tnixture of 
known ingredients possessing only the aggregate of 
the known properties of the ingredients, or that it 
claims as an invention a process producing such a 
substance by mere adtnixture,-
he may refuse the application. 
(2) If it appears to the Corntnissioner that any invention in 
respect of which an application for a patent is rnade znight be 
used in any manner contrary to law, he may refuse the 
application unless the specification is amended by the 
insertion of such a disclaitner in respect of that use of the 
invention, or such other reference to the illegality thereof, as 
the Commissioner thinks fit. 
(3) An appeal to the court shall lie from any decision of the 
Commissioner under this section. 
Cf. Patents .Act. 1949, s. 10 (U.K.); 1939, No. 26, s. 71 
18. SupplelDentary proVls10ns as to exatnination, 
etc.-(l) The powers of the COllllllissioner under section 14 
or section 16 of this Act may be exercised either before or after 
the complete specification has been accepted or a patent 
granted to the applicant and references in those sections to 
the applicant shall accordingly be construed as including 
references to the patentee. 
(2) Wh'ere a complete specification is amended under the 
foregoing provisions of this Act before it has been accepted, 
the amended . specification shall be examined and investigated 
in like manner as the original specification. 
(3) The examination and investigations required by the 
foregoing provisions of this Act shall not be deemed to 
warrant the validity of any patent, and no liability shall be 
incurred by the Patent Office or any officer thereof by reason 
of or in connection with any such examination or 
investigation or any report or other proceedings consequent 
thereon. 
Cf. Patents Act 1949, s. 11 (U.K.); 1921-22, No. 18, s. 10 IP IN 11 INZL/P 11 
Page 19 
580 Patents R. S. Val. 10 
18 
19. TilDe for putting application in order for 
acceptance--( 1) An application for a patent shall be void 
unless within 15 months froITl the date of filing of the complete 
specification, or within such longer period as may be allowed 
under the following provisions of this section, the applicant 
has complied with all requirements imposed on hiITl by or 
under this Act, whether in connection with the complete 
specification or otherwise in relation to the application. 
(2) The period allowed by subsection (1) of this section 
shall be extended to such period, not exceeding 18 ITlonths 
from. the date of filing of th.e complete specification, as rnay be 
specified in a notice given by the applicant to the 
Corrlmissioner, if the notice is given and the prescribed fee 
paid before the expiration of the period so specified. 
(3) If at the expiration of the period allowed under the 
foregoing provisions of this section an appeal to the Court is 
pending under any of the provisions of this Act in respect of 
the application (or, in the case of an application for a patent 
of addition, either in respect of that application or in respect 
of the application for the patent for the main invention) or the 
time within which such an appeal could be brought in 
accordance with the rules of Court (apart froll} any future 
extension of time thereunder) has not expired, then-
(a) Where such an appeal is pending or is brought within 
the tim.e aforesaid or before the expiration of any 
extension of that time granted (in the case of a first 
extension) on an application made within that time 
or (in the case of a subsequent extension) on an 
application made before the expiration 6f the last 
previous extension, the said period shall be 
extended until such date as the Cqurt may 
determine: 
(b) Where no such appeal is pending or is so brought, the 
said period shall continue until the end of the time 
aforesaid, or, if any extension of that tirne is granted 
as aforesaid, until the expiration of 'the extension or 
last extension so granted. 
Cf. Patents Act 1949, s. 12 (U.K.); No. 26, s. 72 
As to the extension of the period specified in subs. (1), see also s. 93. 
20. Acceptance and publication of cOlDplete specifica­
tion-(l) Subject to the provisions of section 19 of this Act, 
the cornplete specification filed in pursuance of an application 
for a patent may be accepted by the Commissioner at any 
tiITle after the applicant has cornplied with the requirernents IP/NI 1 INZL/PI 1 
Page 20 
R.S. Vo!. 10 Patents Act 1953 581 
19 
mentioned in subsection (1) of that section, and if not so 
accepted within the period allowed under that section for 
compliance with those requirernents, shall be accepted as 
soon as may be thereafter: 
Provided that the applicant may give notice to the 
Cornmissioner requesting him to postpone acceptance until 
such date, not being later than 18 months from the date of 
filing of the cornplete specification, as rnay be specified in the 
notice; and if such notice is given and, where the notice 
requests a postponement to a date later than 15 months from 
the date aforesaid, the prescribed fee is paid, the 
Cornrnissioner rnay postpone acceptance accordingly. 
(2) On the acceptance of a cornplete specification the 
Cornrnissioner shall give notice to the applicant, and shall 
advertise in the Journal the fact that the specification has been 
accepted, and thereupon the application and the specification 
or specifications filed in pursuance thereof shall be open to 
public inspection. 
(3) Any reference in this Act to the date of the publication 
of a cornplete specification shall be construed as a reference to 
the date of issue of the Journal containing the advertisernent as 
aforesaid. 
(4) After the date of the publication of a cornplete 
specification and until the sealing of a patent in respect 
thereof, the applicant shall have the like privileges and rights 
as if a patent for the invention has been sealed on the date of 
the publication of the cornplete specification: 
Provided that an applicant shall not be entitled to institute 
any proceedings for infringement- until the patent has been 
sealed. 
Cf. Patents Act 1949, s. 13 (U.K.); 1921-22, No. 18, 
ss. 11, 12; 1946, No. 32, s. 5 
21. Opposition to grant of patent-(I) At any titne 
"vi thin the period prescribed by subsection (2) of this section 
any person interested tnay give notice to the Cotntnissioner of 
opposition to the grant of the patent on any of the following 
grounds: 
Ca) That the applicant for the patent, or the person 
described in the application as the true and first 
inventor, obtained the invention or any part thereof 
from him, or froIn a person of whom he is the· 
personal representative: IP/NI 1 INZL/PI 1 
Page 21 
582 Patents R.S. Val. 10 
20 
(b) That the invention, so far as claimed in any claim of the 
complete specification, has been published in New 
Zealand before the priority date of the claim-
(i) In any specification filed in pursuance of an 
application for a patent ITlade in New Zealand and 
dated. within 50 years next before the date of filing of 
the applicant's complete specification: 
(ii) In any other document (not being a document 
of any class described in subsection (1) of section 59 
of this Act): 
(c) That the invention, so far as claiITled in any claim of the 
cornplete specification is clairned in any claim of a 
complete specification published on or after the 
priority date of the applicant's claim and filed in 
pursuance of an application for a patent in New 
Zealand, being a claim of which the priority date is 
earlier than that of the applicant's claitn: 
(d) That the invention, so far as claimed in any claim of the 
cornplete specification, was used in New Zealand 
before the priority 'date of that claim: 
(e) That the invention, so far as claimed in any claim of the 
cornplete specification is obvious and clearly does 
not involve any inventive step having regard to 
matter published as mentioned in paragraph (b) of 
this subsection, or having regard to what was used 
in New Zealand before the priority date of the 
applicant's claitn: 
(f) That the subject of any clairn of the cornplete 
specification is not an invention within the meaning 
of this Act: 
(g) That the complete specification does not sufficiently 
and fairly describe the invention or the tnethod by 
which it is to be perfortned: 
(h) That, in the case of a convention application, the 
application was not tnade within 12 months from 
the date of the first application for protection for the 
invention ITlade in a convention country by the 
applicant or a person from whom he derives title: 
(i) That, in the case of a:r;:I application to which an order 
under section 37 of this Act applies, the failure of the 
applicant to comply with the requirements iITlposed 
on him by or under this Act wi thin the period 
prescribed by section 19 of this Act and every 
extension of that period granted under that section 
or under section 93 of this Act was not 
unin ten tional: IP IN / lINZL/P 11 
Page 22 
R.S. Val. 10 Patents Act 1953 583 
21 
(j) That in the case of an application to which an order 
under section 37 of this Act applies, there was undue 
delay in applying for the order: 
[(k) That, in the case of an application under section 93A of 
this Act, an extension of time granted by the 
Corn.nUssioner was unwarranted,-] 
but on no other ground. 
(2) Every such notice sha~l be given within 3 months from 
the date of the publication of the cOITlplete specification under 
this Act: 
Provided that on application ITlade to him in that behalf 
within the said 3 months the Commissioner may extend the 
prescribed period to 4 months. 
(3) Where any such notice is given, the Comrn.issioner shall 
give notice of the opposition to the applicant, and shall give to 
the applicant and the opponent an opportunity to be heard 
before he decides on the case. 
(4) The grant of a patent shall not be refused on the ground 
specified in paragraph (c) of subsection (1) of this section if no 
patent has been granted in pursuance of the application 
mentioned in. that paragraph; and for the purposes of 
paragraph (d) or paragraph (e) of the said subsection (1) no 
account shall be taken of any secret use. 
(5) An· appeal to the Court shall lie from any decision' of the 
Commissioner under this section. 
Cf. Patents Act 1949, s. 14 (U.K.); 1939, No. 26, s. 57 
In subs. (1), para. (k) was inserted by s. 3 of the Patents Amendment Act 1972. 
22. Refusal of patent without opposition-( 1) If at any 
time after the acceptance of the complete specification filed in 
pursuance of an application for a patent and before the grant 
of a patent thereon it COITles to the notice of the 
Cornm.issioner, otherwise than in consequence of proceedings 
in opposition to the grant under section 21 of this Act, that the 
invention, so far as claimed in any claim of the complete 
specification, has been published in New Zealand before the 
priority date of the clairn-
(a) In any specification filed in pursuance of an application 
for a patent made in New Zealand and dated within 
50 years next before the date of filing of the 
applicant's complete specification; or 
(b) In any other document (not being a document of any 
class described in subsection (1) of section 59 of this 
Act),-
the COITlmissioner may refuse to grant the patent unless 584 
22 Patents IP/NI 1 INZL/PI 1 
Page 23 
R.S. Va!. 10 
within such time as ll1ay be prescribed the complete 
specification is amended to his satisfaction. 
(2) An appeal to the Court shall lie from any decision of the 
COITnnissioner under this section. 
Cf. Patents Act 1949, s. 15 (U.K.) 
23. Mention of inventor as such in patent-( 1) If the 
Commissioner is satisfied, upon a request or clairn made in 
accordance wi th the provisions of this section,-
(a) That the person in repect of or by whorn the request or 
clairn is rnade is the inventor of an invention in 
respect of which application for a patent has been 
made, or of a substantial part of that invention; and 
Cb) That the application for the patent is a direct 
consequence of his being the inventor,-
the Cornrnissioner shall, subject to the provisions of this 
section, cause hirn to be rnentioned as inventor in any patent 
granted in pursuance of the application, in the complete 
specification, and in the register of patents: 
Provided that the mention of any person as inventor under 
this section shall not confer or derogate frorn any rights under 
the patent. 
(2) For the purposes of this section the actual deviser of -an 
invention or a part of an invention shall be deemed to be the 
inventor, notwithstanding that any other person is for any of 
the other purposes of this Act treated as the true and first 
inventor; and no person shall be deemed to be the inventor of 
an invention or a part of an invention by reason only that it 
was imported by hirn into New Zealand. 
(3) A request that any person shall be rnentioned as 
aforesaid rnay be made in the prescribed manner by the 
applicant for the patent or (where the person alleged to be the 
inventor is not the applicant or one of the applicants) by the 
applicant and that person. 
(4) If any person (other than a person in respect of whorn a 
request in relation to the application in question has been 
made under subsection (3) of this section) desires to be 
mentioned as aforesaid, he may make a clairn in the 
prescribed manner in that behalf. 
(5) A request or clairn under the foregoing provisions of 
this section must be made not later than 2 rnonths after the 
date of the publication of the cornplete specification, or within 
such further period (not exceeding one month) as the 
Commissioner may, on an application rnade to him in that IP/N/I/NZL/P/l 
Page 24 
R. S. Vol. 10 Patents Act 1953 585 
23 
behalf before the expiration of the said period of 2 months and 
subject to payment of the prescribed fee, allow. 
(6) No request or claim under the foregoing provisions of 
this section. shall be entertained if it appears to the 
Commissioner that the request or claim is based upon facts 
which, if proved in the case of an opposition under the 
provisions of paragraph (a) of subsection (1) of section 21 of 
this Act by the person in respect of or by whom the request or 
claim. is made, would have entitled him to relief under that 
section. 
(7) Subject to the provisions of subsection (6) of this 
section, where a claim is made under subsection (4) of this 
section, the Commissioner shall give notice of the claim to 
every applicant for the patent (not being the claimant) and to 
any. other person whom the Commissioner ITlay consider to be 
interested; and before deciding upon any request or claim 
made under subsection (3) or subsection (4) of this section, 
the Commissioner shall, if required, hear the person in 
respect of or by whom the request or claim is made, and, in 
the case of a claim under the said subsection (4) any person to 
whom notice of the claim has been given as aforesaid. 
(8) ""here any person has been mentioned as inventor in 
pursuance of this section, any other person who alleges that 
he ought not have been so mentioned may at any time apply 
to the Commissioner for a certificate to that effect, and the 
Cornrnissioner may, after hearing (if required) any person 
whom he rnay consider to be interested, issue such a 
certificate, and if he does so, he shall rectify the specification 
and the register accordingly. 
(9) An appeal to the Court shall lie from any decision of the 
Commissioner under this section. 
Cf. Patents Act 1949, s. 16 (U.K.); 1939, No. 26, s. 58 
24. Substitution of applicants, etc.-( 1) If the Com­
ITlissioner is satisfied, on a claim ITlade in the prescribed 
manner at any time before a patent has been granted, that by 
virtue of any assignment or agreement made by the applicant 
or one of the applicants for the patent, or by operation of law, 
the claimant would, if the patent were then granted, be 
entitled thereto or to the interest of the' applicant therein, or to 
an undivided share of the patent or of that interest, the 
Cornrnissioner may, subject to the provisions of this section, 
direct that the application shall proceed in the naITle of the 
clairnant or in the names of the claimant and the applicant or 
the other ~oint applicant or applicants, according as the case 
may requIre. IP/N/I/NZL/P/l 
Page 25 
586 Patents R.S. Vo!. 10 
24 
(2) No such direction as aforesaid shall be given by virtue 
of any assignlllent or agreeITlent ITlade by one of 2 or ITlore 
joint applicants for a patent except with the consent of the 
other joint applicant or applicants. 
(3) No such direction as aforesaid shall be given by virtue 
of any assignlllent or agreeITlent for the assignment of the 
benefit of an invention unless either-
Ca) The invention is identified therein by reference to the 
nUITlber of the application for the patent; or 
Cb) There is produced to the Commissioner an acknow­
ledgment by the person by whom the assignment or 
agreement was made that the assignment or 
agreement relates to the invention in respect of 
which that application is made; or 
(c) The rights of the claimant in respect of the invention 
have been finally established by a decision of an.y 
Court or by a determination of the Commissioner 
under the following provisions of this Act. 
(4) Where one of 2 or more joint applicants for a patent 
dies at any time before the patent has been granted, the 
Commissioner may, upon a request in that behalf made by 
the survivor or survivors, and with the consent of the personal 
representative of the deceased, direct that the application 
shall proceed in the name of the survivor or surviviors alone. 
(5) If any dispute arises between joint applicants for a 
patent whether or in what manner the application should be 
proceeded with, the Commissioner may, upon application 
made to him in the prescribed manner by any of the parties, 
and after giving to all parties concerned an opportunity to be 
heard, give such directions as he thinks fit for enabling the 
application to proceed in the name of one or mor.e of the 
parties alone or for regulating the manner in which it shall be 
proceeded with, or for both those purposes, according as the 
case may require. In any such case the Commissioner may 
authorise the application to proceed in the name of one or 
more of the parties. 
(6) An appeal to the Court shall lie from any decision of the 
Commissioner under this section. 
Cf. Patents Act 1949, s. 17 (U.K.) 
25. Provisions for secrecy of certain inventions­
(1) Where, either before or after the commencement of this 
Act, an application for a patent has been made in respect of 
an invention, and it appears to the Commissioner that the 
invention is one of a class notified to him by the Minister of IP/N/l/NZL/P/l 
Page 26 
R.S. Vol. 10 Patents Act 1953 587 
25 
Defence as relevant for defence purposes, or is in the opinion 
of the Commissioner likely to be valuable for defence 
purposes, he may give directions for prohibiting or restricting 
the publication of information with respect to the invention, 
or the communication of such information to any person or 
class of persons specified in the directions; and while such 
directions are in force the application lllay, subject to the 
directions, proceed up to the acceptance of the cOITIplete 
specification, but the acceptance shall not be advertised nor 
the specification published, and no patent shall be granted in 
pursuance of the application. 
(2) Where the Commissioner gives any such directions as 
aforesaid, he shall give notice of the application and of the 
directions to the Minister of Defence, and thereupon the 
following provisions shall have effect, that is to say: 
(a) The Minister of Defence shall, upon receipt of the 
notice, consider whether the publication of the 
invention would be prejudicial to the defence of New 
Zealand, and unless a notice under paragraph (c) of 
this subsection has previously been given by the 
Minister of Defence to the COITImissioner, shall 
reconsider that question before the expiration of 
9 months from the date of filing of the application 
for the patent and at least once in every subsequent 
year: 
(b) For the purpose aforesaid, the Minister of Defence may, 
at any time after the complete specification has been 
accepted or, with the consent of the applicant, at 
any time before the complete specification has been 
accepted, inspect the application and any docu­
ments furnished to the Commissioner in connection 
therewith: 
(c) If upon consideration of the invention at any time it 
appears to the Minister of Defence that the 
publication of the invention would not, or would no 
longer, be prejudicial to the defence of New 
Zealand, the Minister of Defence shall give notice to 
the Commissioner to that effect: 
(d) On receipt of any such notice the Commissioner shall 
revoke the directions and may, subject to such 
conditions, if any, as he thinks fit, extend the time 
for doing anything required or authorised to be done 
by or under this Act in connection with the 
application, whether or not that time has previously 
expired. 588 
26 Patents IP/N/I/NZL/P/l 
Page 27 
R.S. Vol. la 
(3) Where a complete specification filed in pursuance of an 
application for a patent for an invention in respect of which 
directions have been given under this section or under 
section 26 of this Act is accepted during the continuance in 
force of the directions, then-
(a) If any use of the invention is made during the 
continuance in force of the directions by or on behalf 
of or to the order of a Governll1en t Departmen t, the 
provisions of sections 55 to 58 of this Act shall apply 
in relation to that use as if the patent had been 
granted for the invention; and 
(b) If it appears to the Minister of Defence that the 
applicant for the patent has suffered hardship by 
reason of the con tin uance in force of the directions, 
the Minister of Finance may make to him such 
payment (if any) by way of compensation as 
appears to him to be reasonable, having regard to 
the novelty and utility of the invention and the 
purpose for which it is designed, and to any other 
relevant circumstances. 
(4) Where a patent is granted in pursuance of an 
application in respect of which directions have been given 
under this section or under section 26 of this Act, no renewal 
fees shall be payable in respect of any period during which 
those directions were in force. 
(5) No person resident in New Zealand shall, except under 
the authority of a written permit granted by or on behalf of 
the Commissioner, make or cause to be made any application 
outside New Zealand for the grant of a patent for an invention 
unless-
(a) An application for a patent for the same invention or 
substantially the same invention has been made in 
New Zealand not less than 6 weeks before the 
application outside New Zealand; and 
(b) Either no directions have been given under subsection 
( 1) of this section or under section 26 of this Act in 
relation to the application in New Zealand, or all 
such directions have been revoked: 
Provided that this subsection shall not apply in relation to 
an invention for which an application for protection has first 
been filed in a country outside New Zealand by a person 
resident outside New Zealand. 
(6) If any person fails to comply with any direction given 
under this section or makes or causes to be made an 
application for the grant of a patent in contravention of this IP IN 11 INZL/P 11 
Page 28 
R.S. Vo!. 10 Patents Act 1953 589 
27 
section, he shall be guilty of an offence and shall be liable on 
conviction on indictment to imprisonment for a term not 
exceeding 2 years or to a fine not exceeding [$1,000], or to 
both such imprisonment and such fine. 
Cf. Patents Act 1949, s. 18 (U.K.); 1921-22, No. 18, s. 3:? 
As to the summary jurisdiction of a District Court Judge under this section, see s. 6 of 
the Summary Proceedings Act 1957. 
26. Inventions relating to atomic energy-( 1) Where an 
application has been made to the Commissioner for the grant 
of a patent, and it appears to the Commissioner that the 
invention which is the subject-matter of the application 
relates to the production or use of energy derived from the 
atomic nucleus or research into matters connected therewith 
he shall serve a notice in writing on the Minister of Defence to 
that effect, and may, notwithstanding anything in this Act or 
any other Act, omit or delay the doing of anything which he 
would otherwise be required to do in relation to the 
application, and give directions for prohibiting or restricting 
the publication of information with respect to the subject­
matter of the application or the cOITlmunication of that 
information to particular persons or classes of persons; and 
any person who contravenes any such direction co~mits an 
offence against this section. 
(2) Where the Minister of Defence is notified as aforesaid, 
he shall forthwith consider whether the invention which is the 
subject-matter of the application in question is of importance 
for purposes of defence, and may inspect all documents and 
information furnished to the Commissioner in connection 
with the application, and if he is satisfied either then or 
subsequently that the invention is not of importance for 
purposes of defence he shall serve a notice in writing on the 
Commissioner to that effect, and thereupon the Commis­
sioner shall cease to exercise his powers under subsection (1) 
of this section in relation to that application and shall 
fQrthwith revoke any directions given under those powers in 
relation thereto. 
(3) Where any notice is given by or to the Commissioner 
under the foregoing provisions of this section in relation to 
any application, he shall serve a copy of the notice on the 
applicant. 
(4) Where, on an application to the Commissioner for the 
grant of a patent, a notice has been served under subsection 
(1) 6f this section and 6 months have elapsed from the date of 
the service of that notice without the service of a notice under 590 
28 Patents IP/NI 1 INZL/PI 1 
Page 29 
R.S. Vol. 10 
subsection (2) of this section in relation to that application, 
any person who has, before the date of the application, 
incurred expense or done work in connection with the 
discovery or development of the invention concerned shall be 
entitled to be paid such compensation in respect of that 
expense or work as the Minister of Defence may, with the 
approval of the Minister of Finance, determine, and the 
compensation shall not in any case be less than the amount of 
the expense reasonably so incurred, and the amount of that 
expense shall, in default of agreement between the Minister of 
Defence and that person, be settled by arbitration: 
Provided that, if a notice is subsequently served by the 
Minister of Defence under subsection (2) of this section in 
relation to the application, there shall be recoverable by the 
Minister of Defence as a debt due to the Crown such part of 
the cOrrlpensation paid to any person under this subsection in 
connection with the invention concerned as may be 
reasonable, having regard to the length of the period during 
which powers were exercised under subsection (1) of this 
section in relation to the application and all the other 
circumstances of the case; and the amount to be so recovered 
shall, in default of agreement between the Minister of Defence 
and the said person, be settled by arbitration. 
(5) Where the Commissioner in the exercise of powers 
under subsection (1) of this section omits or delays the doing 
of anything or gives directions for prohibiting or restricting 
the publication or communication of information, he may, 
subject to such conditions, if any, as he thinks fit to impose, 
extend the time limit by or under this Act for doing any act 
where he is satisfied that an extension ought to be granted by 
reason of the exercise of the powers aforesaid. 
(6) The right of a person to apply for, or obtain, a patent in 
respect of an invention shall not be prejudiced by reason only 
of the fact that the invention has previously been 
communicated to the Minister of Defence under this section, 
and a patent in respect of an invention shall not be held to be 
invalid by reason only that the invention has been 
communicated as aforesaid. 
(7) The power of a Government Department and persons 
authorised by a Government Department under section 55 of 
this Act shall include power to make, use, exercise, or vend an 
invention for such purposes relating to the production or use 
of atomic energy or research into matters connected therewith 
as the Minister of Defence thinks necessary or expedient, and 
any reference in that section or in sections 56 and 57 of this IP/N/I/NZL/P/l 
Page 30 
R.S. Vol. 10 Patents Act 1953 391 
29 
Act to the serVIces of the Crown shall be construed as 
including a reference to those purposes. 
(8) Every person who COITlITlits an offence against this 
section shall be liable on conviction on indictment to 
imprisonment for a term not exceeding 2 years or to a fine not 
exceeding [S 1 ,000], or to both such imprisonment and such 
fine. 
Cf. Patents Act 1949, s. 106 (3) (U.K.); 1947, No. 37, s. 6 
As to the summary jurisdiction of a District Court Judge under this section, see s. 6 of 
the Summary Proceedings Act 1957. 
Grant, Effect, and Term of Patent 
27. Grant and sealing of patent-(l) Subject to the 
provisions of this Act with respect to opposition, and to any 
other power of the COITlITlissioner to refuse the grant, a patent 
sealed with the seal of the Patent Office shall, if the prescribed 
request is ITlade within the time allowed under this section, be 
granted to the applicant or applicants within that time or as 
soon as may be thereafter; and the date on which the patent is 
sealed shall be entered in the register of patents. 
(2) Subject to the following provisions of this Act with 
respect to patents of addition, a request under this section for 
the sealing of a patent shall be ITlade not later than the 
expiration of 4 months froITl the date of the publication of the 
complete specification: 
Provided that-
(a) Where at the expiration of the said 4 ITlonths any 
proceeding in relation to the application for the 
patent is pending in any Court or before the 
COITImissioner, the request may be ITIade within the 
prescribed period after the final determination of 
that proceeding: 
(b) Where the applicant or one of the applicants have died 
before the expiration of the time within which under 
the provisions of this subsection the request could 
otherwise be made, the said request may be made at 
any tiITIe within 12 months after the date of the 
death or at such later tiITIe as the COITIITIissioner 
llla y allow. 
(3) The period within which under subsection (2) of this 
section a request for the sealing of a patent ITIay be made may 
frolll time to tillle be extended by the COllllllissioner to such 
longer period as ITIay be specified in an application lllade to 
him in that behalf, if the application is made and the 
prescribed fee paid within that longer period: 592 
30 Patents IP IN 11 INZL/P 11 
Page 31 
R.S. Val. 10 
Provided that the first-mentioned period shall not be 
extended under this subsection by more than 6 months or 
such shorter period as may be prescribed. 
(4) Where in any case the longest period for m~ing a 
request for the sealing of a patent allowable in that case by or 
under the foregoing provisions of this section has been 
allowed, and it is proved to the satisfaction of the 
Commissioner that hardship would arise in connection with 
the prosecution by an applicant of an application for a patent 
in any country outside New Zealand unless that period is 
extended, that period may be extended from time to time to 
such longer period as appears to the Commissioner to be 
necessary in order to prevent that hardship arising if an 
application in that behalf is made to him., and the prescribed 
fee is paid, within the first-mentioned period, or in the case·of 
a second or subsequent application under this subsection, 
within the period to which that period was extended on the 
last preceding applicatioh thereunder. 
(5) For the purposes of this section a proceeding shall be 
deemed to be pending so long as the time for any appeal 
therein (apart from any future extension of that time) has not 
expired, and a proceeding shall be deeITled to be finally 
determined when the time for an appeal therein (apart from 
any such extension) has expired without the appeal being 
brought. 
Cf. Patents Act 1949, s. 19 (U.K.); 1939, No. 26, s. 59 
28. Anten<bn.ent of patent granted to deceased 
applicant-Where, at any time after a patent has been sealed 
in pursuance of an application under this Act, the 
Commissioner is satisfied that the person to whom the patent 
was granted had died, or (in the case of a body corporate) had 
ceased to exist, before the patent was sealed, he may amend 
the patent by substituting for the name of that person the 
name of the person to whom the patent ought to have been 
granted; and the patent shall have effect, and shall be deemed 
always to have had effect, accordingly. 
Cf. Patents Act 1949, s. 20 (U.K.) 
29. Extent, effect, and forlD of patent-Cl) A patent 
sealed with the seal of the Patent Office shall have the same 
effect as if it were sealed with the ... Seal of New Zealand, 
and shall have effect throughout New Zealand: 
Provided that a patent may be assigned for any place in or 
part of New Zealand as effectually as if it were granted so as 
to extend to that place or part only. IP IN 11 INZL/P 11 
Page 32 
R.S. Vol. 10 Patents Act 1953 593 
31 
(2) Subject to the provisions of this Act and of subsection 
(3) of section 7 of the Crown Proceedings Act 1950, a patent 
shall have the same effect against the Crown as it has against 
a subject. 
(3) A patent shall be in such form as may be prescribed. 
(4) A patent shall be granted for one invention only; but it 
shall not be cornpetent for any person in an action or other 
proceeding to take any objection to a patent on the ground 
that it has been granted for more than one invention. 
Cf. Patents Act 1949, s. 21 (U.K.); 1921-22, No. 18, s. 16 
In subs. (1) the word "Public" was omitted by s. 8 of the Seal of Xew Zealand Act 
1977. 
30. Date and tenn of patent-( 1) Every patent shall be 
dated with the date of filing of the cornplete specification: 
Provided that no proceecling shall be taken in respect of an 
infringement cornmitted before the date of the publication of 
the complete specification. 
(2) The date of every patent shall be entered in the register 
of patents. 
(3) Except as otherwise expressly provided by this Act, the 
terrn of every patent shall be 16 years from the date of the 
patent. 
(4) A patent shall cease to have effect, notwithstanding 
anything therein or in this Act, on the expiration of the period 
prescribed for the payment of any renewal fee if that fee is not 
paid within the prescribed period or within that period as 
extended under this section: 
Provided that, where the period prescribed for the payment 
of a renewal fee expires before the date 4 months after the date 
of the sealing of the patent, the period for payment of the 
renewal fee shall be extended to the date 4 months after the 
date of the sealing of the patent. 
(5) The period prescribed for the payment of any renewal 
fee (including any extension of the period under subsection 
(4) of this section) shall be extended to such period, not being 
more than 3 months longer than the prescribed period, as 
rnay be specified in a request rnade to the Commissioner if the 
request is rnade and the renewal fee and the prescribed 
addi tional fee are paid before the expiration of the period so 
specified. 
Cf. Patents Act 1949, s. 22 (U.K.); 1921-22, No. 18, 
ss. 15, 19; 1939, No. 26, s. 60 
31. Extension on ground of inadequate relDunera­
tion-( I) If upon application rnade by a patentee in 
accordance with this section the Court or Commissioner is 594 
32 Patents IP/N/I/NZL/P/l 
Page 33 
R.S. Val. 10 
satisfied that the patentee has not been adequately 
remunerated by the patent, the Court or COInrnissioner may 
by order extend the term of the patent, subject to such 
restrictions, conditions, and provisions, if any, _ as lllay be 
specified in the order, for such period (not exceeding 5 years 
or, in an exceptional case, 10 years) as may be so specified; 
and any such order may be made notwithstanding that the 
term of the patent has previously expired. 
(2) An application for an order under this section may be 
made at the option of the applicant to the Court or to the 
Commissioner; but if the Commissioner considers that an 
application made to him raises issues of a kind which would 
be more fittingly decided by the Court, he may if he thinks fit 
refer the application for decision by the Court. 
(3) An application made under this section shall be made 
not m.ore than 12 nor less than 6 months before the expiration 
of the term of the patent or at such later tiIne (not being later 
than the expiration of the said term) as the Court or 
Commissioner may allow. 
(4) Where an application under this section is made to the 
Court it shall thereafter be advertised in such manner as may 
be prescribed by rules of Court; and where an application 
under this section is Illade to the Commissioner it shall be 
made in such a manner as may be prescribed by regulations 
made under this Act and shall thereafter be advertised in such 
Illanner as may be so prescribed. 
(5) Any person desiring to oppose the making of an order 
under this section, or to claim the inclusion therein of any 
restrictions or conditions or provisions, may give notice of 
opposition to the Court or, as the case may be, the 
Commissioner ,-
(a) In the case of an application to the Court, within such 
period as may be prescribed by rules of Court; and 
(b) In the case of an application to the Commissioner, 
within such period as may be prescribed by 
regulations made under this Act. 
(6) On the hearing of any application under this section the 
applicant and any person by WhOIll notice of opposition has 
been duly given shall be made parties to the proceedings; and 
in the case of an application to the Court, the Commissioner 
shall be entitled to appear and be heard, and shall appear if so 
directed by the Court. 
(7) In considering any application under this section the 
Court or COITllll.issioner shall have regard to the nature and 
Illerits of the invention in relation to the public, to the profits IP/NI1 INZL/PI1 
Page 34 
R.S. Vol. 10 Patents Act 1953 595 
33 
made by the patentee as such, and to all the circumstances of 
the case. 
(8) Not more than one order shall be made under this 
section in respect of the saIl1e patent, but an order may be 
made under this section in respect of a patent in respect of 
which one or more orders have been Il1ade under section 32 of 
this Act. 
(9) An appeal to the Court shall lie froIl1 any decision of the 
Commissioner under this section. 
Cf. Patents Act 1949, s. 23 (U.K.); 1921-22, No. 18, 
s. 20; 1943, No. 6, s. 2 
As to appeals to the Court of Appeal, see ss. 97 (4) (b) and 98 (c). 
32. Extension on ground of war 10ss-(1) If upon 
application made by a patentee in accordance with this 
section the Court or the COlYllYlissioner is satisfied that the 
patentee as such has suffered loss or damage (including loss of 
opportunity of dealing in or developing the invention) by 
reason of hostilities between Her Majesty in respect of the 
Governll1ent of New Zealand and any foreign State, the Court 
or Comll1issioner may by order extend the terlYl of the patent, 
subject to such restrictions, conditions, and provisions, if any, 
as may be specified in the order, for such period (not 
exceeding 10 years) as may be so specified; and any such 
order may be made notwithstanding that the terlll of the 
patent has previously expired. 
(2) An application for an order under this section may be 
made at the option of the applicant to the Court or to the 
Commissioner; but if the Commissioner considers that an 
application made to hill1 raises issues of a kind which would 
be Il10re fittingly decided by the Court, he tnay if he thinks fit 
refer the application for decision by the Court. 
(3) An application under this section shall be made not 
more than 12 nor less than 6 Il10nths before the expiration of 
the tertn of the patent or at such later time as the Court or 
COIl1missioner may allow: 
Provided that the Court or COIl1Il1issioner shall not allow 
an application to be made later than the expiration of the said 
terITI unless satisfied that the applicant has been prevented 
from making the application before the expiration of that 
terIl1 by being on active service or by other circumstances 
arising by reason of any such hostilities as aforesaid. 
(4) ""here an application under this section is made to the 
Court, it shall thereafter be advertised in such manner as may 
be prescribed by rules of Court; and where an application 596 
34 Patents IP/N/1/NZL/P/l 
Page 35 
R.S. Vol. 10 
under this section is made to the COInrnissioner, it shall 
thereafter be advertised in such lTlanner as lTlay be prescribed 
by regulations made under this Act. 
(5) Any person desiring to oppose the making of an order 
under this section, or to claiIn the inclusion therein of any 
restrictions, conditions, or provisions, Inay give notice of 
opposition to the Court or, as the case lTlay be, the 
CornInissioner ,-
Ca) In the case of an application to the Court, within such 
period as may be prescribed by rules of Court; and 
(b) In the case of an application to the CornInissioner, 
within such period as rnay be prescribed by 
regulations made under this Act. 
(6) On the hearing of any application under this section the 
applicant and any person by whorn notice of opposition has 
been duly given shall be rnade parties to the proceedings; and 
in the case of an application to the Court, the Commissioner 
shall be entitled to appear and be heard, and shall appear if so 
directed by the Court. 
(7) Two or more orders tnay be made under this section in 
respect of the saITle patent, and an order ITlay be made under 
this section in respect of a patent in respect of which an order 
has been made under section 31 of this Act; but the aggregate 
term of any extensions granted in pursuance of orders· made 
under this section shall not exceed 10 years. 
(8) No order shall be made under this section on the 
application of-
(a) A person who is a subject of such a foreign State as is 
mentioned in subsection (1) of this section; or 
(b) A company the business of which is managed or 
controlled by such persons or is carried on wholly or 
mainly for the benefit of or on behalf of such 
persons, notwithstanding that the company may be 
registered within the ComInonwealth or the 
Republic of Ireland,-
and for the purpose of this section no account shall be taken of 
any loss or damage suffered by any person during any period 
during which he was such a subject as aforesaid, or by any 
company during any period during which its business was 
Inanaged or controlled or carried on as aforesaid. 
(9) An appeal to the Court shall lie from any decision of the 
Commissioner under this section. 
Cf. Patents Act 1949, s. 24 (U.K.); 1943, No. 6, s. 3; 
1946, No. 32, s. 2 
As to appeals to the Court of Appeal, see ss. 97 (4) (b) and 98 (c) IP/N/I/NZL/P/l 
Page 36 
R.S. Vol. 10 Patents Act 1953 597 
35 
33. Extension on ground of war loss of license~e­
Subject to the provisions of section 32 of this Act, an order for 
the extension of the term of a patent may be made under that 
section on the application of a person registered under section 
84 of this Act as holding a licence from the patentee giving to 
the licensee, or to the licensee and persons authorised by him, 
to the exclusion of all other persons, permission to make, use, 
exercise, and vend the invention, if the Court or 
Commissioner is satisfied that the licensee as such has 
suffered any such loss or damage as IS mentioned in 
subsection (1) of section 32 of this Act. 
Cf. Patents Act 1949, s. 25 (U.K.) 
34. Patents of addition-( 1) Subject to the provisions of 
this section, where application is made for a patent in respect 
of any improvement in or modification of an invention (in this 
Act referred to as the main invention) and the applicant also 
applies or has applied for a patent for that invention or is the 
patentee in respect thereof, the Commissioner may, if the 
applicant so requests, grant the patent for the improvement 
or modification as a patent of addition. 
(2) Subject to the provisions of this section, where an 
invention, being an improvement in or modification of 
another invention, is the subject of an independent patent and 
the patentee in respect of that patent is also the patentee in 
respect of the patent for the main invention, the 
Commissioner may, if the patentee so requests, by order 
revoke the patent for the improvement or ITlodification and 
grant to the patentee a patent of addition in respect thereof 
bearing the same date as the date of the patent so revoked. 
(3) A patent shall not be granted as a patent of addition 
unless the date of filing of the complete specification was the 
same as or later than the date of filing of the complete 
specification in respect of the main invention. 
(4) A patent of addition shall not be sealed before the 
sealing of the patent for the main invention; and if the period 
within which, but for this provision, a request for the sealing 
of a patent of addition could be made under section 27 of this 
Act expires before the period within which a request for the 
sealing of the patent for the main invention may be so made, 
the request for the sealing of the patent of addition may be 
made at any time within the last-mentioned period. 
(5) A patent of addition shall be granted for a term equal to 
that of the patent for the main invention, or so much thereof 
as is unexpired, and shall remain in force during that term or 598 
36 Patents IP/N/lINZL/P/l 
Page 37 
R.S. Vol. 10 
until the previous cesser of the patent for the main invention 
and no longer: 
Provided tha t-
(a) If the term of the patent for the main invention is 
extended under the foregoing provisions of this Act, 
the term of the patent of addition may also be 
extended accordingly; and 
(b) If the patent for the main invention is revoked under 
this Act, the Court or Commissioner, as the case 
may be, may order that the patent of addition shall 
become an independent patent for the remainder of 
the term of the patent for the main invention, and 
thereupon the patent shall continue in force as an 
independent patent accordingly. 
(6) No renewal fees shall be repayable in respect of a patent 
of addition; but, if any such patent becomes an independent 
patent by virtue of an order under subsection (5) of this 
section, the same fees shall thereafter be payable, upon the 
same dates, as if the patent had been originally granted as an 
independent patent. 
(7) The grant of a patent of addition shall not be refused, 
and a patent granted as a patent of addition shall not be 
revoked or invalidated, on the ground only that the invention 
claimed in the complete specification does not involve any 
inventive step having regard to any publication or use of-
(a) The .main invention described in the complete 
specification relating thereto; or 
(b) Any improvement in or modification of the main 
invention described in the complete specification of 
a patent of addition to the patent for the main 
invention or of an application for such a patent of 
addition,-
and the validity of a patent of addition shall not be questioned 
on the ground that the invention ought to have been the 
subject of an independent patent. 
(8) An appeal to the Court shall lie from any decision of the 
Commissioner under this section. 
Cf. Patents Act 1949, s. 26 (U.K.); 1921-22, No. 18, 
s. 21 . 
Restoration of Lapsed Patents and Patent Applications 
35. Restoration of lapsed patents-Cl) Where a patent 
has ceased to have effect by reason of a failure-to pay any 
renewal fee within the prescribed period or within that period 
as extended under section 30 of this Act, and the IP/N/I/NZL/P/l 
Page 38 
R.S. Vol. 10 Patents Act 1953 599 
37 
Commissioner is satisfied upon application that the failure 
was unintentional and that no undue delay has occurred in 
the making or prosecution of the application, he shall by 
order restore the patent and any patent of addition specified 
in the application which has ceased to have effect on the 
cesser of that patent. 
(2) An application under this section may be made by the 
person who was the patentee or by his personal 
representative; and where the patent was held by 2 or more 
persons jointly, the application may, with the leave of the 
Commissioner, be made by one or more of them without 
joining the others. 
(3) An application under this section shall contain a 
statement (to be verified in such manner as may be 
prescribed) fully setting out the circuITIstances which led to 
the failure to pay the renewal fee; and the Com.m.issioner m.ay 
require from the applicant such further evidence as he may 
think necessary. 
(4) If after hearing the applicant (if the applicant so 
requires or the ComITlissioner thinks fit) the Commissioner is 
satisfied that a prima facie case has been made out for an 
order under this section, he shall advertise the application in 
the Journal; and within the prescribed period any person 'may 
give notice to the Com.rnissioner of opposition thereto on 
either or both of the following grounds, that is to say,-
(a) That the failure to pay the renewal fee was not 
unintentional; or 
(b) That there has been undue delay in the making of the 
application. 
(5) If notice of opposition is given within the period 
aforesaid, the ComITlissioner shall notify the applicant, and 
shall give to him and to the opponent an opportunity to be 
heard before he decides the case. 
(6) If no notice of opposition is given within the period 
aforesaid or if, in the case of opposition, the decision of the 
Commissioner is in favour of the applicant, the Com.rnissioner 
shall, upon payment of any unpaid renewal fee and such 
additional fee as m.ay be prescribed, make the order in 
accordance with the application. 
(7) An order under this section for the restoration of a 
patent-
(a) May be made subject to such conditions as the 
Commissioner thinks fit, including in particular a 
condition requiring the registration in the register of 600 
38 Patents IP/N/l INZL/PI 1 
Page 39 
R.S. Val. 10 
patents of any matter in respect of which the 
provisions of this Act as to entries in that register 
have not been complied with; and 
(b) Shall contain or be subject to such provision as may be 
prescribed for the protection of persons who may 
have begun to avail thelTIselves of the patented 
invention between the date when the patent ceased 
to have effect and the date of the application under 
this section,-
and if any condition of an order under this section is not 
complied with by the patentee, the Commissioner may, after 
giving to the patentee an opportunity to be heard, revoke the 
order and give such directions consequential on the 
revocation as he thinks fit. 
(8) An appeal to the Court shall lie from any decision of the 
Commissioner under this section. 
Cf. Patents Act 1949, s. 27 (U.K.); 1921-22, No. 18, 
s. 22 
36. Restoration of applications where patent not 
sealed-(l) Where a patent has not been sealed by reason 
only that the prescribed request was not made within the tilTIe 
allowed for that purpose by or under section 27 of this Act, 
then if the Commissioner is satisfied, upon application made 
by ·the applicant for the patent, that the failure to Inake the 
request was unintentional and that no undue delay has 
occurred in making the application he Inay order the patent 
to be sealed notwithstanding that the prescribed request was 
not made as aforesaid. 
(2) An application under this section shall contain a 
statement (to be verified in such Inanner as Inay be 
prescribed) fully setting out the circurnstances which led to 
the failure to Inake the prescribed request; and the 
Commissioner Inay require frorrl the applicant such further 
evidence as he Inay think necessary. 
(3) If the Commissioner (after hearing the applicant, if the 
applicant so requires or the Commissioner thinks fit) is 
satisfied that a prima facie case has been made out for an 
order under this section, he shall advertise the application in 
the Journal; and within the prescribed period any person ITlay 
give notice to the Commissioner of opposition thereto on the 
ground that the failure to rnake the prescribed request was 
not unintentional or that undue delay has occurred in making 
the application. IP/N/1/NZL/P/1 
Page 40 
R.S. Vol. 10 Patents Act 1953 601 
39 
(4) If notice of OpposItIon is given within the period 
aforesaid, the Commissioner shall notify the applicant and 
shall give to him and to the opponent an opportunity to be 
heard before he decides the case. 
(5) If no notice of opposition is given within the period 
aforesaid, or if in the case of opposition the decision of the 
Commissioner is in favour of the applicant, the Commissioner 
shall, upon payment of the fee prescribed in respect of the 
making of the request for sealing and of such additional fee as 
may be prescribed, make the order in accordance with the 
application. 
(6) An order under this section for the sealing of a patent 
shall contain or be subject to such provision as may be 
prescribed for the protection of persons who may have begun 
to avail themselves of the invention between the date when 
the time allowed by or under section 27 of this Act for .Inaking 
the prescribed request expired and the date of the application 
under this section. 
(7) An appeal to the Court shall lie from any decision of the 
Commissioner under this section. 
Cf. Patents Act 1949, s.28 (U.K.); 1921-22, No. 18, 
s. 22 
37. Restoration of application where cODlplete specifi­
cation not accepted-( 1) Where an applicant has not 
cOInplied with all the requireInents imposed on him by or 
under this Act within the period prescribed by section 19 of 
this Act, or within any extension of the period granted by the 
Commissioner under that section or under section 93 of this 
Act, and the application has accordingly become void, the 
applicant may apply to the Commissioner in the prescribed 
ll1anner for an order restoring the application and extending 
the period for complying with the requireITlents imposed on 
the applicant by or under this Act to such date as Inay be 
specified in that behalf in the order. 
(2) Every such application shall contain a statetnent of the 
circumstances which led to the failure of the applicant to 
comply with the requirements iITlposed on him by or under 
this Act. 
(3) If it appears from that statetnent that any omission on 
the part of the applicant was unintentional and that no undue 
delay has occurred in the making of the application, the' 
Commissioner shall advertise the application and within such 
period as may be prescribed any person may give notice of 
opposition at the Patent Office. 602 
40 Patents IP/NI 1 INZL/PI 1 
Page 41 
R.S. Val. 10 
(4) Where any such notice is given the Commissioner shall 
notify the applicant thereof. 
(5) After the expiration of the prescribed period the 
Commissioner shall hear the case, and issue an order which 
shall ei ther-
(a) Restore the application and extend the period for 
complying with the requirements imposed on the 
applicant by or under this Act to a period to be 
specified in that behalf in the order; or 
(b) DisITliss the application. 
(6) An order under this section shall contain or be subject 
to such provisions as may be prescribed for the protection of 
persons who may have availed theITlselves of the invention the 
subject of the application for a patent between the date when 
the period prescribed by section 19 of this Act, and every 
extension of that period granted under that section or under 
section 93 of this Act, for complying with all the requirements 
imposed on the applicant by or under this Act expired and the 
date of the application under this section. 
(7) An appeal to the Court shall lie from the decision of the 
Commissioner under this section. 
Cf. 1924, No. 40, s. 4 
Amendment of Specifications 
38. AntendnJent of specification with leave of COtn­
tnissioner-( 1) Subject to the provisions of section 40 of this 
Act, the Commissioner may, upon application made under 
this section by a patentee, or by an applicant for a patent at 
any time after the acceptance of the complete specification, 
allow the complete specification to be amended subject to 
such conditions, if any, as the Commissioner thinks fit: 
Provided that the Commissioner shall not allow a 
specification to be amended under this section upon an 
application made while any action before the Court for 
infringement of the patent or any proceeding before the Court 
for the revocation of the patent is pending. 
(2) Every application for leave to amend a specification 
under this section shall state the nature of the proposed 
amendment and shall give full particulars of the reasons for 
which the application is made. 
(3) Any application for leave to amend a specification 
under this section, and the nature of the proposed 
amendment, shall be advertised in the prescribed manner: 
Provided that where the application is made before the 
publication of the complete specification, the COlllmissioner IP IN 11/NZL/P 11 
Page 42 
R.S. Vol. 10 Patents Act 1953 603 
41 
Olay, if he thinks fit, dispense with advertisement under this 
subsection or direct that advertisement shall be postponed 
until the complete specification is published. 
(4) Within the prescribed period after the advertiseOlent of 
an application under this section, any person may give notice 
to the Cornnlissioner of opposition thereto; and where such a 
notice is given within the period aforesaid, the Commissioner 
shall notify the person by WhOOl the application under this 
section is rnade and shall give to that person and to the 
opponent an opportunity to be heard before he decides the 
case. 
(5) An appeal to the Court shall lie from any decision of the 
Cornmissioner under this section. 
(6) This section shall not apply in relation to any 
arnendrnent of a specification effected in proceedings in 
opposition to the grant of a patent or on a reference to the 
Cornmissioner of a dispute as to the infringement or validity 
of a claim, or effected in pursuance of any provision of this Act 
authorising the Commissioner to direct a reference to another 
specification or patent to be inserted, or to refuse to grant a 
patent, or to revoke a patent, unless the specification is 
amended to his satisfaction. 
Cf. Patents Act 1949, s. 29 (U.K.); 1921-22, No. 18, s. 23 
39. Atnendntent of specification with leave of Court­
(1) In any action for infringement of a patent or any 
proceeding before the Court for the revocation of a patent, the 
Court may, subject to the provisions of section 40 of this Act, 
by order allow the patentee to amend his complete 
specification in such manner and subject to such tenns as to 
costs, advertisements, or otherwise, as the Court may think 
fit; and if in any such proceedings for revocation the Court 
decides that the patent is invalid, the Court may allow the 
specification to be amended under this section instead of 
revoking the patent. 
(2) Where an application for an order under this section is 
made to the Court, the applicant shall give notice of the 
application to the Commissioner, and the Conunissioner shall 
be entitled to appear and be heard, and shall appear if so 
directed by the Court. 
Cf. Patents Act 1949, s. 30 (U.K.); 1921-22, No. 18, s. 24 
40. SupplelDentary provisions as to atnendnlent of 
specification-( I) After the acceptance of a complete 
specification, no amendment thereof shall be effected except IP IN 11 INZL/P 11 
Page 43 
604 Patents R.S. Vol. 10 
42 
by way of disclaiITler, correction, or explanation, and no 
amendment thereof shall be allowed, except for the purpose of 
correcting an obvious mistake, the effect of which would be 
that the specification as amended would claim or describe 
matter not in substance disclosed in the specification before 
the amendment, or that any claim of the specification as 
amended would not fall wholly within the scope of a claim of 
the specification before the amendment. 
(2) Where, after the date of the publication of a complete 
specification, any amendment of the specification is allowed 
or approved by the Commissioner or the Court, the right of 
the patentee or applicant to make the amendment shall not be 
called in question except on the ground of fraud; and the 
amendment shall in all Courts and for all purposes be deemed 
to form part of the specification: 
Provided that in construing the specification as amended 
reference may be made to the specification as originally 
published. 
(3) Where, after the date of the publication of a complete 
specification, any amendment of the specification is allowed 
or approved as aforesaid, the fact that the specification has 
been amended shall be advertised in the Journal. 
Cf. Patents Act 1949, s. 31 (U.K.); 1921-22, No. 18, 
ss. 23 (6), 24 (1) 
Revocation and Surrender of Patents 
41. Revocation of patent by Court-( 1) Subject to the 
provisions of this Act, a patent may, on the application of any 
person interested, be revoked by the Court on any of the 
following grounds, that is to say,-
(a) That the invention, so far as claimed in any claim of the 
complete specification, was claimed in a valid clairn 
of earlier priority date contained in the complete 
specification of another patent granted in New 
Zealand: 
(b) That the patent was granted on the application of a 
person not entitled under the provisions of this Act 
to apply therefor: 
(c) That the patent was obtained in contravention of the 
rights of the person who makes the application to 
_the Court or any person under or through whom he 
claims: 
(d) That the subject of any claim of the complete 
specification is not an invention within the meaning 
of this Act: IP/NI 1 INZL/PI 1 
Page 44 
R.S. Vol. 10 Patents Act 1953 605 
43 
(e) That the invention, so far as claimed in any claim of the 
complete specification, is not new having regard to 
what was known or used before the priority date of 
the clailll in New Zealand: 
(f) That the invention, so far as claimed in any claim of the 
complete specification, is obvious and does not 
involve any inventive step having regard to what 
was known or used before the priority date of the 
claim in New Zealand: 
(g) That the invention, so far as claimed in any claim of the 
complete specification, is not useful: 
(h) That the compl~te specification does not sufficiently 
and fairly describe the invention and the method by 
which it is to be performed~ or does not disclose the 
best method of performing it which was known to 
the applicant for the patent and for which he was 
entitled to claim protection: 
(i) That the scope of any clailll of the complete specification 
is not sufficiently and clearly defined or that any 
claim of the complete specification is not fairly 
based on the matter disclosed in the specification: 
(j) That the patent was obtained on a false suggestion or 
representation: 
(k) That the primary or intended use or exercise of the 
invention is contrary to law: 
(1) That the invention, so far as claimed in any claim of the 
complete specification, was secretly used in New 
Zealand, otherwise than as mentioned in subsection 
(2) of this section, before the priority date of that 
claim: 
(m) That the patent has been granted contrary to law. 
(2) For the purposes of paragraph (1) of subsection (I) of 
this section, no account shall be taken of any use of the 
invention-
(a) For the purpose of reasonable trial or experiment only; 
or 
Cb) By a Government Department or any person 
authorised by a Government Department, in 
consequence of the applicant for the patent or any 
person from whom he derives title having 
communicated or disclosed the invention directly or 
indirectly to a Government Department or person 
authorised as aforesaid; or 
(c) By any other person, in consequence of the applicant for 
the patent or any person from whom he derives title 606 
44 Patents IP IN 11 INZL/P 11 
Page 45 
R.S. Val. 10 
having communicated or disclosed the invention, 
and without the consent or acquiescence of the 
applicant or of any person from whom he derives 
title,-
and for the purposes of paragraph (e) or paragraph (f) of the 
said subsection (1) no account shall be taken of any secret 
use. 
(3) Without prejudice to the provisions of subsection (I) of 
this section, a patent may be revoked by the Court,-
(a) On the application of a Government Department, if the 
Court is satisfied that the patentee has without 
reasonable cause failed to comply with a request of 
the Department to make, use, or exercise the 
patented invention for the services of the Crown 
upon reasonable terms; or 
(b) On the application, with the written consent of the 
Attorney-General, of any person not otherwise 
entitled to apply under this section. 
(4) Every ground on which a patent may be revoked shall 
be available as a ground of defence in any proceeding for the 
infringement of the patent. 
Cf. Patents Act 1949, s. 32 (U.K.); 1921-22, No. 18, 
s. 27; 1939, No. 26, s. 61 
42. Revocation of patent by Conunissioner-(l) At any 
time within 12 months after the sealing of a patent, any 
person interested who did not oppose the grant of the patent 
may apply to the Commissioner for an order revoking the 
patent on anyone or more of the grounds upon which the 
grant of the patent could have been opposed: 
Provided that when an action for infringell1ent, or 
proceedings for the revocation, of a patent are pending in any 
Court, an application to the Commissioner under this section 
shall not be made except with the leave of the Court. 
(2) Where an application is made under this section, the 
ComITli~sioner shall notify the patentee and shall give to the 
applicant and the patentee an opportunity to be heard before 
deciding the case. 
(3) If on an application under this section the Commis­
sioner is satisfied that any of the grounds aforesaid are 
established, he may by order direct that the patent shall be 
revoked either unconditionally or unless within such time as 
may be specified in the order the complete specification is 
amended to his satisfaction: 
Provided that the Commissioner shall not make an order IP IN 11/NZL/P 11 
Page 46 
R.S. Val. la Patents Act 1953 607 
45 
for the unconditional revocation of a patent under this section 
unless the circumstances are such as would have justified hill1 
in refusing to grant the patent in proceedings under section 21 
of this Act. 
( 4) An appeal to the Court shall lie from any decision of the 
COInll1issioner under this section. 
Cf. Patents Act 1949, s. 33 (U.K.); 1921-22, No. 18, 
s. 28; 1939, No. 26, s. 62 
As to appeals to the Court of Appeal, see ss. 97 (4) (a) and 98 (a). 
43. Surrender of patent-( 1) A patentee ll1ay at any time 
by notice given to the COITlll1issioner offer to surrender his 
patent. 
(2) Where such an offer is ll1ade, the Commissioner shall 
advertise the offer in the prescribed ll1anner; and within the 
prescribed period after such advertisement any person 
interested may give notice to the COll1missioner of opposition 
to the surrender. 
(3) Where any such notice of opposition is duly given, the 
ComITlissioner shall notify the patentee. 
(4) If the Commissioner (after hearing the patentee and 
any opponent, if desirous of being heard) is satisfied that the 
patent may properly be surrendered, he ll1ay accept the offer 
and by order revoke the patent. 
(5) An appeal to the Court shall lie from any decision of the 
Commissioner under this section. 
Cf. Patents Act 1949, s. 34 (U.K.); 1921-22, No. 18, 
s. 28 (3) 
Voluntary Endorsement of Patent 
44. Endorsetnent of patent "licences of right"-(l) At 
any time after the sealing of a patent the patentee may apply 
to the Commissioner for the patent to be endorsed with the 
words "licences of right"; and where such an application is 
ll1ade, the Commissioner shall notify the application to any 
person entered on the register as entitled to an interest in the 
patent, and if satisfied, after giving any such person an 
opportunity to be heard, that the patentee is not precluded by 
contract from granting licences under the patent, cause the 
patent to be endorsed accordingly. 
(2) Where a patent is endorsed under this section-
(a) Any person shall, at any time thereafter, be entitled as 
of right to a licence under the patent upon such 
terms as ll1ay, in default of agreell1ent, be settled by 
the Commissioner on the application of the patentee 
or the person requiring the licence: IP/N/I/NZL/P/l 
Page 47 
608 Patents R.S. VD!. 10 
46 
Cb) The Commissioner may, on the application of the 
holder of any licence granted under the patent 
before the endorsement, order the licence to be 
exchanged for a licence to be granted by virtue of 
the endorsement upon terms to be settled as 
aforesaid: 
(c) If in proceedings for infringement of the patent 
(otherwise than by the importation of goods) the 
defendant undertakes to take a licence upon terms 
to be settled by the Commissioner as aforesaid, no 
injunction shall be granted against him, and the 
amount (if any) recoverable against him by way of 
damages shall not exceed double the amount which 
would have been payable by hiITl as licensee if such 
a licence had been granted before the earliest 
infringement: . 
(d) The renewal fees payable in respect of the patent after 
the date of the endorseITlent shall be one-half of the 
renewal fees which would be payable if the patent 
were not so endorsed. 
(3) The licensee under any licence granted by virtue of the 
endorsement of a patent under this section shall (unless, in 
the case of a licence the' terms of which are settled by 
agreement, the licence otherwise expressly provides) be 
entitled to call upon the patentee to take proceedings to 
prevent any infringement of the patent; and if the patentee 
refuses or neglects to do so within 2 ITlonths after being so 
called upon, the licensee ITlay institute proceedings for the 
infringement in his own name as if he were patentee, making 
the patentee a defendant: 
Provided that a patentee so added as defendant shall not be 
liable for any costs unless he enters an appearance and takes 
part in the proceedings. 
(4) An application for the endorsement of a patent under 
this section shall contain a statement (to be verified in such 
ITlanner as may be prescribed) that the patentee is not 
precluded by contract froITl granting licences under the 
patent; and the Commissioner may require from the 
applicant such further evidence as he may think necessary. 
(5) An application made under this section for the 
endorsement of a patent of addition shall be treated as an 
application for the endorsement of the patent for the main 
invention also, and an application made under this section for 
the endorsement of a patent in respect of which a patent of 
addition is in force shall be treated as an application for the IP/NI1 INZL/PI1 
Page 48 
R.S. Val. 10 Patents Act 1953 609 
47 
endorsement of the patent of addition also; and where a 
patent of addition is granted in respect of a patent already 
endorsed under this section, the patent of addition shall also 
be so endorsed. 
(6) All endorsements of patents under this section shall be 
entered in the register of patents and shall be published in the 
Journal and in such other manner as the Commissioner thinks 
desirable for bringing the endorsement to the notice of 
ITlan ufacturers. 
(7) An appeal to the Court shall lie from any decision of the 
Commissioner under this section. 
Cf. Patents Act 1949, s. 35 (U.K.); 1921-22, No. 18, 
s. 26 
45. Cancellation of endorsetnent under section 44 
(1) At any time after a patent has been endorsed under 
section 44 of this Act, the patentee ITlay apply to the 
COlllmissioner for cancellation of the endorsement; and where 
such an application is lllade and the balance paid of all 
renewal fees which would have been payable if the patent has 
not been endorsed, the COlllrnissioner lllay, if satisfied that 
there is no existing licence under the patent or t!lat all 
licensees under the patent consent to the application, cancel 
the endorselllent accordingly. 
(2) Within the prescribed period after a patent has been 
endorsed as aforesaid, any person who claillls that the 
patentee is, and was at the time of the endorsement, 
precluded by a contract in which the claimant is interested 
frolll granting licences under the patent may apply to the 
Comlllissioner for cancellation of the endorsement. 
(3) Where the Commissioner is satisfied, on application 
made under subsection (2) of this section, that the patentee is 
and was precluded as aforesaid, he shall cancel the 
endorsement; and thereupon the patentee shall be liable to 
pay, within such period as may be prescribed, a sum equal to 
the balance of all renewal fees which would have been 
payable if the patent had not been endorsed, and if that sum 
is not paid within that period the patent shall cease to have 
effect at the expiration of that period. 
(4) Where the endorsement of a patent is cancelled under 
this section, the rights and liabilities of the patentee shall 
thereafter be the same as if the endorsement had not been 
made. IP/N/I/NZL/P/l 
Page 49 
610 Patents R.S. Vol. 10 
48 
(5) The Commissioner shall advertise in the prescribed 
manner any application ITIade to him under this section; and 
within the prescribed period after sach advertisement,­
(a) In the case of an application under subsection (1) of 
this section, any person interested; and 
(b) In the case of an application under subsection (2) of 
this section, the patentee,-
may give notice to the Commissioner of opposition to the 
cancella tion. 
(6) Where any such notice of opposition is given, the 
Commissioner shall notify the applicant, and shall give to the 
applicant and the opponent an opportunity to be heard before 
deciding the case. 
(7) An application under this section for the cancellation of 
the endorsement of a patent of addition shall be treated as an 
application for the cancellation of the endorsement of the 
patent for the main invention also, and an application made 
under this section for the cancellation of the endorsement of a 
patent in respect of which a patent of addition is in force shall 
be treated as an application for the cancellation of the 
endorseme.nt of the patent of addition also. 
(8) An appeal to the Court shall lie from any decision of the 
ComInissioner under this section. 
Cf. Patents Act 1949, s. 36 (U.K.); 1921-22, No. '18, 
s. 26 (5) 
Compulsory Licences, etc. 
46. CODlpulsory endorsernent-( 1) At any tiIne after the 
expiration of 3 years froIn the date of the sealing of a patent, 
any person interested Inay apply to the Commissioner upon 
anyone or Inore of the grounds specified in subsection (2) of 
this section for a licence under the patent or I for the 
endorsement of the patent with the words "licences of right". 
(2) The grounds upon w'hich application may be made for 
an order under this section are as follows, that is to say: 
Ca) That the patented invention, being capable of being 
cOInInercially worked in New Zealand, is not being 
cOITIInercially worked therein or is not being so 
worked to the fullest extent that is reasonably 
practicable: 
Cb) That a demand for the patented article in New Zealand 
is not being lTlet on reasonable terms: 
(c) That the commercial working of the invention in New 
Zealand is being prevented or hindered by the 
itnportation of the patented article: IP/N/1/NZL/P/l 
Page 50 
R.S. Val. 10 611 
49 
(d) That by reason of the refusal of the patentee to grant a 
licence or licences on reasonable terms-Patents Act 1 953 
(i) A market for the export of the patented article 
manufactured in New Zealand is not being 
supplied; or 
(ii) The working or efficient working in New 
Zealand of any other patented invention which 
makes a substantial contribution to the art is 
prevented or hindered; or 
(iii) The establishment or development of com­
mercial or industrial activities in New Zealand is 
unfairly prejudiced: 
(e) That by reason of conditions imposed by the patentee 
upon the grant of licences under the patent, or upon 
the purchase, hire, or use of the patented article or 
process, the manufacture, use, or sale of materials 
not protected by the patent, or the establishment or 
development of commercial or industrial activities 
in New Zealand is unfairly prejudiced. 
(3) Subject as hereinafter provided, the Cornrnissioner 
may, if satisfied that any of the grounds aforesaid are 
established, make an order in accordance with the 
application; and where the order is for the grant of a licence, it 
may require the licence to be granted upon such terms as the 
Commissioner thinks fit: 
Provided tha t-
(a) Where the application is made on the ground that the 
patented invention is not being commercially 
worked in New Zealand or is not being worked to 
the fullest extent that is reasonably practicable, and 
it appears to the Commissioner that the time which 
has elapsed since the sealing of the patent has for 
any reason been insufficent to enable it to be so 
worked, he may by order adjourn the application for 
such period as will in his opinion give sufficient tiITle 
for the invention to be so worked: 
(b) An order shall not be made under this section for the 
endorsement of a patent on the ground that a 
market for the export of the patented article is not 
being supplied, and any licence granted under this 
section on that ground shall contain such provisions 
as appear to the Commissioner to be expedient for 
restricting the countries in which the patented 
article may be sold or used by the licensee: 612 
50 Patents IP/N/1/NZL/P/I 
Page 51 
R.S. Vol. 10 
(c) No order shall be made under this section in respect of a 
patent on the ground that the working or efficient 
working in New Zealand of another patented 
invention is prevented or hindered unless the 
Commissioner is satisfied that the patentee in 
respect of that other invention is able and willing to 
grant to the patentee and his licensees a licence in 
respect of that other invention on reasonable teITIls. 
(4) An application under this section may be made by any 
person notwithstanding that he is already the holder of a 
licence under the patent; and no person shall be estopped 
from alleging any of the matters specified in subsection (2) of 
this section by reason of any admission made by him, whether 
in such a licence or otherwise, or by reason of his having 
accepted such a licence. 
(5) In this section the expression "patented article" 
includes any article m.ade by a patented process. 
Cf. Patents Act 1949, s. 37 (U.K.); 1921-22, No. 18, 
s. 29; 1939, No. 26, s. 63 (d) 
47. Provisions as to licences under section 46-­
(1) Where the Commissioner is satis~ied, on application made 
under section 46 of this Act, that the manufacture, use, or sale 
of materials not protected by the patent is unfairly prejudiced 
by reason of conditions imposed by the patentee upon the 
grant of licences under the patent, or upon the purchase, hire, 
or use of the patented article or process, he may, subject to the 
provisions of that section, order the grant of licences under 
the patent to such customers of the applicant as he thinks fit 
as well as to the applicant. 
(2) Where an application under section 46 of this Act is 
made by a person who is the holder of a licence under the 
patent, the Commissioner may, if he makes an order for the 
grant of a licence to the applicant, order the existing licence to 
be cancelled, or may, if he thinks fit, instead of making an 
order for the grant of a licence to the applicant, order the 
exis ting licence to be amended. 
(3) Where on an application under section 46 of this Act 
the Commissioner orders the grant of a licence, he may direct 
that the licence shall operate-
(a) To deprive the patentee of any right which he may have 
as patentee to make, use, exercise, or vend the 
invention or to grant licences under the patent: 
(b) To revoke all existing licences in· respect of the 
invention. IP IN 11 INZL/P 11 
Page 52 
R.S. Vo!. 10 Patents Act 1953 613 
51 
(4) Subsection (3) of section 44 of this Act shall apply to 
any licence granted in pursuance of an order under section 46 
of this Act as it applies to a licence granted by virtue of the 
said section 44. 
Cf. Patents Act 1949, s. 38 (C.K.); 1939, No. 26, s. 63 (e) 
48. Exercise of powers on applications under section 
46-( 1) The povvers of the Commissioner upon an 
application under section 46 of this Act shall be exercised 
vvith a view to securing the following general purposes, that is 
to say: 
(a) That inventions which can be worked on a commercial 
scale in New Zealand and which should in the 
public interest be so worked shall be worked therein 
without undue delay and to the fullest extent that is 
reasonably practicable: 
(b) That the inventor or other person benefically entitled to 
a patent shall receive reasonable remuneration, 
having regard to the nature of the invention: 
(c) That the interests of any person for the time being 
working or developing an invention in New Zealand 
under the protection of a patent shall not be unfairly 
prejudiced. 
(2) Subject to subsection (1) of this section, the 
Commissioner shall, in determining whether to m.ake an 
order in pursuance of any such application, take account of 
the following matters, that is to say: 
(a) The nature of the invention, the time which has elapsed 
since the sealing of the patent, and the measures 
already taken by the patentee or any licensee to 
make full use of the invention; and 
(b) The ability of any person to whom a licence would be 
granted under the order to work the invention to the 
public advantage; and 
(c) The risk to be undertaken by that person in providing 
capital and working the invention if the application 
is granted,-
but shall not be required to take account of matters 
subsequent to the making of the application. 
Cf. Patents Act 1949, s. 39 (U.K.); 1921-22, No. 18, s. 29 
(1), (4) 
49. EndorselYlent, etc., on application of Crown­
(1) At any time after the expiration of 3 years from the date of 
the sealing of a patent, any Government Department m.ay IP/N/I/NZL/P/l 
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614 Patents R.S. VoI. 10 
52 
apply to the Commissioner upon anyone or more of the 
grounds specified in section 46 of this Act for the endorsement 
of the patent with the words "licences of right" or for the 
grant to the Government Departrnent or to any person 
specified in the application of a licence under the patent; and 
the Commissioner may, if satisfied that any of those grounds 
are established, m.ake an order in accordance with the 
application. 
(2) Subsections (3) and (5) of section 46 of this Act and 
sections 47 and 48 of this Act shall, so far as applicable, apply 
in relation to an application and an order under subsection 
(1) of this section as they apply in relation to an application 
and an order under the said section 46. 
(3) A licence granted under this section may permit the 
licensee to import the patented article. 
CL Patents Act 1949, s. 40 (U.K.) 
50. Revocation of patent-( 1) Where an order for the 
grant of a licence under a patent has been made in pursuance 
of an application under section 46 of this Act, any person 
interested may, at any time after the expiration of 2 years 
from the date of that order, apply to the Commissioner for the 
revocation of the patent upon any of the grounds specified in 
subsection (2) o~ the said section 46; and if upon any su~h 
application the Commissioner is satisfied-
(a) That any of the said grounds are established; and 
(b) That the purposes for which an order may be made in 
pursuance of an application under the said section 
46 could not be achieved by the making of any such 
order as is authorised to be made in pursuance of 
such an application,-
he may order the patent to be revoked. 
(2) An order for the revocation of a patent under this 
section may be made so as to take effect either 
unconditionally or in the event of failure to comply, within 
such reasonable period as may be specified in the order, with 
such conditions as may be imposed by the order with a view 
to achieving the purposes aforesaid; and the Commissioner 
may, on reasonable cause shown in any case, by subsequent 
order extend any period so specified. 
Cf. Patents Act 1949, s. 42 (U.K.); 1921-22, No. 18, 
s. 29; 1939, No. 26, s. 63 (f) 
51. Inventions relating to food or lDedicine, etc.­
(1) Without prejudice to the foregoing provisions of this Act, 
where a patent is in force in respect of-IP/NI1 INZL/PI 1 
Page 54 
R.S. Vol. 10 Patents Act 1953 615 
53 
(a) A substance capable of being used as food or medicine 
or in the production of food or medicine; or 
(b) A process for producing such a substance as aforesaid; 
or 
(c) Any invention capable of being used as or as part of a 
surgical or curative device,-
the Commissioner shall, on application made to hirn by any 
person interested, order the grant to the applicant of a licence 
under the patent on such terms as he thinks fit, unless it 
appears to him that there are good reasons for refusing the 
application. 
(2) In settling the terms of licences under this section the 
Cornrnissioner shall endeavour to secure that food, medicines, 
and surgical and curative devices shall be available to the 
public at the lowest prices consistent with the patentees' 
deriving a reasonable advantage frorn their patent rights. 
(3) A licence granted under this section shall entitle the 
licensee to make, use, exercise, and vend the invention as a 
food or rnedicine, or for the purposes of the production of food 
or medicine or as part of a surgical or curative device, but for 
no other purposes. 
(4) A licence granted under this section lllay permit the 
licensee to import the patented article. 
Cf. Patents Act 1949, s. 41 (U.K.); 1921-22, No. 18,"s. 44 
(2); 1939, No. 26, s. 67 
52. Procedure on application under sections 46 to 
51-(1) Every application under sections 46 to 51 of this Act 
shall specify the nature of the order sought by the applicant 
and shall contain a staternent (to be verified in such manner 
as may be prescribed) setting out the nature of the applicant's 
interest (if any) and the facts upon which the application is 
based. 
(2) Where the Commissioner is satisfied, upon considera­
tion of any such application, that a prima facie case has been 
made out for the making of an order, he shall direct the 
applicant to serve copies of the application upon the patentee 
and any other persons appearing froIn the register of patents 
to be interested in the patent in respect of which the 
application is made, and shall advertise the application in the 
Journal. 
(3) The patentee or any other person desiring to oppose the 
application may, within such time as may be prescribed or 
within such further time as the CornITlissioner may on 616 
54 Patents IP/N/I/NZL/P/l 
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R.S. Va!. 10 
application (made either before or after the expiration of the 
prescribed time) allow, give to the Commissioner notice of 
opposition. 
(4) Any such notice of opposition shall contain a statement 
(to be verified in such manner as may be prescribed) setting 
out the grounds on which the application is opposed. 
(5) Where any such notice of opposition is duly given, the 
Commissioner shall notify the applicant, and shall, subject to 
the provisions of section 53 of this Act with respect to 
arbitration, give to the applicant and the opponent an 
opportunity to be heard before deciding the case. 
Cf. Patents Act 1949, s. 43 (C.K.); 1921-22, No. 18, 
s. 29; 1939, No. 26, s. 63 
53. Appeal and references to arbitrator-(l) An appeal 
to the Court shall lie frolll any order lllade by the 
Comlllissioner in pursuance of an application under sections 
46 to 51 of this Act. 
(2) On any appeal under this section the Attorney-General 
or such other counsel as he may appoint shall be entitled to 
appear and be heard. 
(3) \Vhere any such application is opposed in accordance 
with section 52 of this Act and either- . 
(a) The parties consent; or 
(b) The proceedings require a prolonged exalTIination of 
docuITlents or any scientific or local investigation 
which cannot in the opinion of the ComITlissioner 
conveniently be lllade before hilll,-
the ComITlissioner ITlay at any tiITle order the whole 
proceedings, or any question or issue of fact arising th,erein, to 
be referred to an arbitrator agreed on by the parties, or, in 
default of agreement, appointed by the COITlmissioner. 
(4) \Vhere the whole proceedings are referred as aforesaid, 
section 11 of the Arbitration Amendment Act 1938 (which 
relates to the statement of cases by arbitrators) shall not 
apply to the arbitration; but unless the parties otherwise 
agree before the award of the arbitrator is made, an appeal 
shall lie from the award to the Court. 
(5) Where a question or issue of fact is referred as aforesaid, 
the arbitrator shall report his findings to the COITllTIissioner. 
Cf. Patents Act 1949, s. 44 (U.K.); 1921-22, No. 18. 
s. 29 (12) 
As to appeals to the Court of Appeal, see ss. 97 (4) (a) and 98 (a). IP/N/I/NZL/P/l 
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R.S. Vol. 10 Patents Act 1953 617 
55 
54. SuppleInentary provisions-( 1) Any order under 
this Act for the grant of a licence shall, without prejudice to 
any other method of enforceIllent, have effect as if it were a 
deed, executed by the patentee and all other necessary 
parties, granting a licence in accordance with the order. 
(2) An order rrlay be lllade on an application under sections 
46 to 49 of this Act for the endorsement of a patent with the 
words "licences of right" notwithstanding any contract which 
would have precluded the endorsement of the patent on the 
application of the patentee under section 44 of this Act; and 
any such order shall for all purposes have the same effect as 
an endorserrlent rrlade in pursuance of an application under 
the said section 44. 
(3) No order shall be made in pursuance of any application 
under sections 46 to 50 of this Act which would be at variance 
with any treaty, convention, arrangeITlent, or engagement 
applying to New Zealand and any convention country. 
Cf. Patents Act 1949, s. 45 (U.K.); 1921-22, No. 18, s. 30 
Use of Patented Inventions for Services of the Crown 
55. Use of patented inventions for services of the 
Crown-( 1) Notwithstanding anything in this Act, any 
Government Department, and any person authorised in 
writing by a Governrrlent Department, may make, use, and 
exercise any patented invention for the services of the Crown 
in accordance with the following provisions of this section. 
(2) If and so far as the invention has before the priority 
date of the relevant claim of the complete specification been 
duly recorded by or tried by or on behalf of a GovernITlent 
Department otherwise than in consequence of the cOITlmuni­
cation thereof directly or indirectly by the patentee or any 
person from whom he derives title, any use of the invention by 
virtue of this section may be made free of any royalty or other 
payment to the patentee. 
(3) If and so far as the invention has not been so recorded 
or tried as aforesaid, any use of the invention made by virtue 
of this section at any time after the acceptance of the complete 
specification in respect of the patent, or in consequence of any 
such comITlunication as aforesaid, shall be made upon such 
terms as may be agreed upon, either before or after the use, 
between the GovernITlent Department and the patentee with 
the approval of the Minister of Finance, or as may in default 
of agreement be determined by the Court on a reference 
under section 57 of this Act. IP/NIlINZL/PIl 
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618 Patents R.S. Val. 10 
56 
(4) The authority of a Governll1ent Departll1ent in respect 
of an invention lllay be given under this section either before 
or after the patent is granted and either before or after the acts 
in respect of which the authority is given are done, and ll1ay 
be given to any person whether or not he is authorised 
directly or indirectly by the patentee to lllake, use, exercise, or 
vend the invention. 
(5) Where any use of an invention is made by or with the 
authority of a Government Department under this section, 
then, unless it appears to the Departlllent that it would be 
contrary to the public interest so to do, the Departlllent shall 
notify the patentee as soon as practicable after the use is 
begun, and furnish hill1 with such information as to the extent 
of the use as he lllay frolll tillle to tillle require. 
(6) For the purposes of this section and section 56 of this 
Act, any use of an invention for the supply to the Governlllent 
of any country outside New Zealand, in pursuance of any 
agreelllent or arrangelllent between Her Majesty's Govern­
ll1ent in New Zealand and the Governrrlent of that country, of 
articles required for the defence of that country shall be 
deemed to be a use of the invention for the services of the 
Crown; and the power of a Government Departrnent or a 
person authorised by a Governll1ent Department under this 
section to lllake, use, and exercise an invention shall include 
power-
(a) To sell such articles to the Governlllent of any country 
in pur~uance of any such agreement or arrangement 
as aforesaid; and 
(b) To sell to any person any articles made in the exercise 
of the powers conferred by this section which are no 
longer required for the purpose for which they were 
made. 
(7) Where the Governor-General, by Order in Council, 
declares that the use of any patented invention by any person 
or by any class of persons engaged in a particular industry is 
necessary or desirable to enable full benefit to be derived by 
the members of the public in New Zealand of any enterprise 
or undertaking in which the Crown or any Government 
Department has a complete or alll10st cOlllplete monopoly, 
any such use of the invention or inventions shall for the 
purposes of this section and sections 56 and 57 of this Act be 
deemed to be a use for the services of the Crown, and the 
power of a Government Department or a person authorised 
by a GovernITlent Departll1ent under this section to make, 
use, and exercise an invention shall include power to sell to JP IN 11 INZL/P 11 
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R.S. Val. 10 619 
57 
any person any articles made in the exerCIse of the powers 
conferred by this section. Patents Act 1953 
(8) The purchaser of any articles sold in the exercise of 
powers conferred by this section, and any person claiming 
through him, shall have power to deal with them in the same 
manner as if the patent were held on behalf of Her Majesty. 
Cf. Patents Act 1949, s. 46 (U.K.); 1921-22, No. 18, 
s. 32; 1943, No. 6, s.4 
Section 4 (6) of the Hospitals Act 1957 provides that for the purposes of ss. 55-58 of 
this Act the services of a Hospital Board shall be deemed to be the services of the Crown. 
As to the extension of the powers in this section in respect of pharmaceutical 
requirements, see s. lOOA of the Social Security Act 1964. 
56. Rights of third parties in respect of Crown use--­
(1) In relation to any use of a patented invention, or an 
invention in respect of which an application for a patent is 
pending, made for the services of the Crown-
(a) By a Government Department or a person authorised 
by a Government Departrnent under section 55 of 
this Act; or 
(b) By the patentee or applicant for the patent to the order 
of a Government Department,-
the provisions of any licence, assignment, or agreement .made, 
whether before or after the cornmencement of this Act, 
between the patentee or applicant for the patent, or any 
person who derives title from him or froOl whom he derives 
title, and any person other than a Governrnent Department 
shall be of no effect so far as those provisions restrict or 
regulate the use of the invention, or any model, document, or 
inforDlation, relating thereto, or provide for making of 
payments in respect of any such use, or calculated by 
reference thereto; and the reproduction or publication of any 
rnodel or document in connection with the said use shall not 
be deemed to be an infringernent of any copyright subsisting 
in the Olodel or document. 
(2) Where any exclusive licence granted otherwise than for 
royalities or other benefits determined by reference to the use 
of the invention is in force under the patent, then,-
(a) In relation to any use of the invention which, but for the 
provisions of this section and section 55 of this Act, 
would constitute an infringement of the rights of the 
licensee, subsection (3) of section 55 of this Act shall 
have the effect as if for 'reference to the patentee 
there was substituted a reference to the licensee; and IP IN 11 INZL/P 11 
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620 Patents R.S. Va!. 10 
58 
(b) In relation to any use of the invention by the licensee by 
virtue of an authority given under section 55 of this 
Act, that section shall have effect as if the said 
subsection (3) were oITlitted. 
(3) Subject to the provisions of subsection (2) of this 
section, where the patent, or the right to apply for or obtain 
the patent, has been assigned to the patentee in consideration 
of royalties or other benefits determined by reference to the 
use of the invention, then,-
(a) In relation to any use of the invention by virtue of 
section 55 of this Act, subsection (3) of that section 
shall have effect as if the reference to the patentee 
included a reference to the assignor, and any sum 
payable by virtue of that subsection shall be divided 
between the patentee and the assignor in such 
proportion as rnay be agreed upon between them or 
as rnay in default of agreernent be determined by the 
.Court on a reference under section 57 of this Act; 
and 
(b) In relation to any use of the invention made for the 
services of the Crown by the patentee to the order of 
a Government Department, subsection (3) of 
section 55 of this Act shall have effect as if that use 
were made by virtue of an authority given under 
that section. 
(4) Where, under subsection (3) of section 55 of this Act, 
payments are required to be made by a Government 
Department to a patentee in respect of any use of an 
invention, any person, being the holder of an exclusive licence 
under the patent (not being such a licence as is mentioned in 
subsection (2) of this section) authorising hiIl1 to Il1ake that 
use of the invention, shall be entitled to recover from the 
patentee such part (if any) of those paYIl1ents as may be 
agreed upon between that person and the patentee, or as may 
in default of agreement be deterIl1ined by the Court under 
section 57 of this Act to be just, having regard to any 
expenditure incurred by that person-
(a) In developing the said invention; or 
(b) In Il1aking paYIl1ents to the patentee, other than 
royalties or other payments, deterIl1ined by 
reference to the use of the invention, in considera-
. tion of the licence,-
and if, at any time before the amount of any such paYIl1ent 
has been agreed upon between the Government Department 
and the patentee, that person gives notice in writing of his IP/N/I/NZL/P/1 
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59 
interest to the DepartITlent, any agreeITlent as to the aITlount 
of that paYITlent shall be of no effect unless it is made with his 
consent. 
Cf. Patents Act 1949, s. 47 (U.K.); 1921-22, No. 18, 
s.32 (1); 1943, No. 6, s.4 
See the notes to s. 55 above. 
57. Reference of disputes as to Crown use--(l) Any 
dispute as to the exercise by a GovernITlent DepartITlent or a 
person authorised by a Government Department of the 
powers conferred by section 55 of this Act, or as to terInS for 
the use of an invention for the services of the Crown 
thereunder, or as to the right of any person to receive any part 
of a payment made in pursuance of subsection (3) of that 
section, may be referred to the Court by either party to the 
dispute in such manner as ITlay be prescribed by rules of 
Court. 
(2) In any proceedings under this section to which a 
GovernITlent DepartITlent is a party, the Department ITlay,-
(a) If the patentee is a party to the proceedings, apply for 
revocation of the patent upon any ground upon 
which a patent may be revoked under section 41 of 
this Act; . 
(b) In any case, put in issue the validity of the patent 
without applying for its revocation. 
(3) If in such proceedings as aforesaid any question arises 
whether an invention has been recorded or tried as mentioned 
in section 55 of this Act, and the disclosure of any document 
recording the invention, or of any evidence of the trial thereof, 
would in the opinion of the Department be prejudicial to the 
public interest, the disclosure may be made confidentially to 
counsel for the other party or to an independent expert 
mutually agreed upon. 
(4) In determining under this section any dispute between 
a Government Department and any person as to terITlS for the 
use of an invention for the services of the Crown, the Court 
shall have regard to any benefit or cOITlpensation which that 
person or any person froIn whoITl he derives title may have 
received, or may be entitled to receive, directly or indirectly 
from any Government Department in respect of the invention 
in question. 
(5) In any proceedings under this section the Court ITlay at 
any time order the whole proceedings or any question or issue 
of fact arising therein to be referred to a special or official 622 
60 Patents IP/N/1/NZL/P/1 
Page 61 
R.S. Vol. 10 
referee or an arbitrator on such terms as the Court ITlay 
direct; and references to the Court in the foregoing provisions 
of this section shall be construed accordingly. 
Cf. Patents Act 1949, s.48 (C.K.); 1921-22, No. 18, 
s. 32 (2); 1943, No. 6, s. 4 (3) 
See the notes to s. 55 above. 
58. Special provIsIons as to Crown use during 
emergency-(l) During any period of emergency within the 
meaning of this section, the powers exercisable in relation to 
an invention by a Government Department, or a person 
authorised by a Government Department under section 55 of 
this Act, shall include power to make, use, exercise, and vend 
the invention for any purpose which appears to the 
Department necessary or expedient-
(a) For the efficient prosecution of any war in which Her 
Majesty may be engaged; or 
(b) For the maintenance of supplies and services essential 
to the life of the comm.unity; or 
(c) For securing a sufficiency of supplies and services 
essential to the well-being of the community; or 
(d) For promoting the productivity of industry, commerce, 
and agriculture; or 
(e) For fostering and directing exports and reducing 
imports, or imports of any classes, from all or any 
countries and for redressing the balance of trade; or 
(f) Generally for ensuring that the whole resources of the 
community are available for use, and are used, in a 
manner best calculated to serve the interests of the 
community; or 
(g) For assisting the relief of suffering and the restoration 
and distribution of essential supplies and services in 
any part of the Commonwealth or of the Republic of 
Ireland or in any foreign countries that are in grave 
distress as a result of war; or 
(h) For providing or securing supplies and servIces 
required for the defence of any part of the 
Commonwealth, or for the maintenance or 
restoration of peace and security in any part of the 
world, or for any measures arising out of a breach or 
apprehended breach of peace in any part of the 
world; or 
(i) For preventing supplies or services being disposed of in 
a manner prejudicial to the defence of any part of IP IN 11 INZL/P 11 
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R.S. Val. 10 Patents Act 1953 623 
61 
the Commonwealth or to peace and security in any 
part of the world or to any such measures as 
aforesaid,-
and any reference in that section or in section 56 or section 57 
of this Act to the services of the Crown shall be construed as 
including a reference to the purposes aforesaid. 
(2) In this section the expression "period of emergency" 
means any period beginning' on such date as may be declared 
by Order in Council to be the commencement, and ending on 
such date as may be so declared to be the termination, of a 
period of emergency for the purposes of this section. 
(3) Every Order in Council made under this section shall 
be laid before Parliament within 28 days after the date of the 
making thereof if Parliament is then in session, and, if not, 
shall be laid before Parliament within 28 days after the date of 
the commencement of the next ensuing session. 
Cf. Patents Act 1949, s.49 (U.K.); 1943, No. 6, s. 4 
s. 4 (6) of the Hospitals Act 1957 provides that for the purposes of ss. 55-58 of this 
Act the services of a Hospital Board shall be deemed to be the services of the Crown. 
Anticipation, etc. 
59. Previous publication-( 1) An invention claimed in a 
complete specification shall not be deemed to have been 
anticipated by reason only that the invention was published 
in New Zealand-
(a) In a specification filed in pursuance of an application 
for a patent made in New Zealand and dated more 
than 50 years before the date of filing of the first 
mentioned specification; or 
(b) In a specification describing the invention for the 
purposes of an application for protection in any 
country outside New Zealand made more than 50 
years before that date; or 
(c) In any abridgment of or extract from any such 
specification published under the authority of the 
Commissioner or of the Government of any country 
outside New Zealand. 
(2) Subject as hereinafter provided, an invention claimed 
in a complete specification shall not be deemed to have been 
anticipated by reason only that the invention was published 
before the priority date of the relevant claim of the 
specification, if the patentee or applicant for the patent 
proves-
(a) That the matter published was obtained from him or 
(where he himself is not the true and first inventor) 624 
62 Patents IP IN 11 INZL/P 11 
Page 63 
R.S. Val. 10 
from any person from whom he derives title, and 
was published without his consent or the consent of 
any such person; and 
(b) Where the patentee or applicant for the patent or any 
person from whom he derives title learned of the 
publication before the date of the application for the 
patent or (in the case of a convention application) 
before the date of the application for protection in a 
convention country, that the application or the 
application in a convention country, as the case may 
be, was made as soon as reasonably practicable 
thereafter: 
Provided that this subsection shall not apply if the 
invention was before the priority date of the claim 
comrrlercially worked in New Zealand, otherwise than for the 
purpose of reasonable trial, either by the patentee or 
applicant for the patent or any person from whom he derives 
title or by any other person with the consent of the patentee or 
applicant for the patent or any person from whom he derives 
title. 
(3) Where a complete specification is filed in pursuance of 
an application for a patent made by a person being the true 
and first inventor or deriving title from him, an invention 
clailUed in that specification shall not be deemed to have been 
anticipated by reason only of any other application for a 
patent in respect of the same invention, made in 
contravention of the rights of that person, or by reason only 
that after the date of filing of that other application the 
invention was used or published, without the consent of that 
person, by the applicant in respect of that other application, 
or by any other person in consequence of any disclosure of the 
invention by that applicant. 
(4) Notwithstanding anything in this Act, the COITlmis­
sioner shall not refuse to accept a cOlUplete specification or to 
grant a patent, and a patent shall not be revoked or 
invalidated, by reason only of any circulllstances which, by 
virtue of this section, do not constitute an anticipation of the 
invention claillled in the specification. 
Cf. Patents Act 1949, s. 50 (U.K.); 1921-22, No. 18, s. 46 
60. Previous cOlntnunication, display, or working­
(1) An invention clairrled in a complete specification shall not 
be deemed to have been anticipated by reason only of the 
cOlUrrlunication of the invention to a Governlllent Depart­
ment or to any person authorised by a Government IP/N/I/NZL/P/l 
Page 64 
R.S. Vol. 10 Patents Act 1953 625 
63 
DepartITlent to investigate the invention or its merits, or of 
anything done, in consequence of such a communication, for 
the purpose of the investigation. 
(2) An invention claimed in a cOITlplete specification shall 
not be deeITled to have been anticipated by reason only of-
(a) The display of the invention with the consent of the true 
and first inventor at an international or industrial 
exhibition declared as such by the Governor­
General by notice in the Ga;:.ette (whether the 
exhibition is held in New Zealand or elsewhere) ... , 
or the use thereof with the consent of the true and 
first inventor for the purposes of such an exhibition 
in the place where it is held; or 
(b) The publication of any description of the invention in 
consequence of the display or use of the invention at 
any such exhibition as aforesaid; or 
(c) The use of the invention, after it has been displayed or 
used at any such exhibition as aforesaid and during 
the period of the exhibition, by any person without 
the consent of the true and first inventor; or 
(d) The description of the invention in a paper read by the 
true and first inventor before a learned society or 
published with his consent in the transactions of 
such a society ,-
if the application for the patent is made by the true and first 
inventor or a person deriving title from hiITl not later than 6 
ITlonths after the opening of the exhibition or the reading or 
publication of the paper, as the case may be. 
(3) An invention claiITled in a cOITlplete specification shall 
not be deeITled to have been anticipated by reason only that, 
at any tiITle within one year before the priority date of the 
relevant claim of the specification, the invention was publicly 
worked in New Zealand-
(a) By the patentee or applicant for the patent or any 
person froITl whom he derives title; or 
(b) By any other· person with the consent of the patentee or 
applicant for the patent or any person from whom 
he derives title,-
if the working was effected for the purpose of reasonable trial 
only and if it was reasonably necessary, having regard to the 
nature of the invention, that the working for that purpose 
should be effected in public. 
(4) Notwithstanding anything in this Act, the ComITlis­
sioner shall not refuse to accept a cOITlplete specification or to 
grant a patent, and a patent shall not be revoked or 626 
64 Patents IP/N/1/NZL/P/l 
Page 65 
R.S. Vol. 10 
invalidated, by reason only of any circumstances which, by 
virtue of this section, do not constitute an anticipation of the 
invention claimed in the specification. 
Cf. Patents Act 1949, s. 51 (U.K.); 1921-22, No. 18, 
ss. 33 (5), 50 
In subs. (2) (a) words were oIllitted by s. 5 (3) of the Shop Trading Hours 
Arnendm.en tAct 1980. 
61. Use and publication after provisional specification 
or foreign application-( I) ""here a complete specification 
is filed or proceeded with in pursuance of an application 
which was accompanied by a provisional specification or by a 
specification treated by virtue of a direction under subsection 
(4) of section 9 of this Act as a provisional specification, then, 
notwithstanding anything in this Act, the Commissioner shall 
not refuse to grant the patent, and the patent shall not be 
revoked or invalidated by reason only that any matter 
described in the provisional specification or in the 
specification treated as aforesaid as a provisional specification 
was used or published at any time after the date of filing of 
that specification. 
(2) Where a corn.plete specification is filed in pursuance of a 
convention application, then, notwithstanding anything in 
this Act, the Corn.missioner shall not refuse to grant the 
patent, and the patent shall not be revoked or invalidated by 
reason only that any rn.atter disclosed in any application for 
protection in a convention country upon which the 
convention application is founded was used or published at 
any time after the date of that application for protection. 
Cf. Patents Act 1949, s. 52 (U.K.); 1939, No. 26, ss. 55 
(6), 56 
62. Priority date in case of obtaining-Where an 
application is made for a patent for an invention which has 
been claimed in a cornplete specification filed in pursuance of 
any other such application, then, if-
(a) The Commissioner has refused to grant a patent in 
pursuance of that other application on the ground 
specified in paragraph (a) of subsection (1) of 
section 21 of this Act; or 
(b) A patent granted in pursuance of that other application 
has been revoked by the Court or the Commissioner 
on the ground specified in paragraph (a) of 
subsection (1) of section 21 or paragraph (c) of 
subsection (1) of section 41 of this Act; or IP/N/I/NZL/P/l 
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R.S. Val. 10 Patents Act 1953 627 
65 
(c) The complete specification filed in pursuance of the said 
other application has, in proceedings under section 
21 or section 42 of this Act, been amended by the 
exclusion of the claim relating to the said invention 
in consequence of a finding by the Cornrnissioner 
that the invention was obtained by the applicant or 
patentee from any other person,-
the ComlTlissioner rnay direct that the first-rnentioned 
application and any specification filed in pursuance thereof 
shall be deerned, for the purposes of the provisions of this Act 
relating to the priority date of claims of complete 
specifications, to have been filed on the date on which the 
corresponding docurnent was or was deerned to have been 
filed in the proceedings upon the said ot;her application. 
Cf. Patents Act 1949, s. 53 (U.K.); 1921-22, No. 18, s. 17 
}vfiscellaneous Provisions as to Rights in Inventions 
63. Co-oWnership of patents-( 1) Where after the 
commencement of this Act a patent is granted to 2 or more 
persons, each of those persons shall, unless an agreement to 
the contrary is in force, be entitled to an equal undivided 
share in the patent. 
(2) Subject to the provisions of this section and section 64 
of this Act, where 2 or more persons are registered as grantee 
or proprietor of a patent, then, unless an agreement to the 
contrary is in force, each of those persons shall be entitled, by 
himself or his agents, to make, use, exercise, and vend the 
patented invention for his own benefit without accounting to 
the other or others. 
(3) Subject to the provisions of section 64 of this Act, and to 
any agreernent for the tirne being in force, a licence under a 
patent shall not be granted, and a share in a patent shall not 
be assigned, except with the consent of all persons, other than 
licensor or assignor, who are registered as grantee or 
proprietor of the patent. 
( 4) Where an article is sold by one of 2 or more persons 
registered as grantee or proprietor of a patent, the purchaser 
and any person claiming through him shall be entitled to deal 
wi th it in the same rnanner as if the article has been sold by a 
sole patentee. 
(5) Subject to the provisions of this section, the rules of law 
applicable to the ownership and devolution of personal 
property, generally shall apply in relation to patents as they 
apply in relation to other choses in action; and nothing in 
subsection (1) or subsection (2) of this section shall affect the 628 
66 Patents IP IN 11 INZL/P 11 
Page 67 
R.S. Vol. 10 
mutual rights or obligations of trustees or of the personal 
representatives of a deceased person, or their rights or 
obligations as such. 
Cf. Patents Act 1949, s. 54 (U.K.); 1921-22, No. 18, 
s.42; 1939, No. 26, s. 66 
64. Power of Conunissioner to give directions to co­
owners- ( 1) Where 2 or more persons are regis tered as 
grantee or proprietor of a patent, the Commissioner may, 
upon application made to him in the prescribed manner by 
any of those persons, give such directions in accordance with 
the application as to the sale or lease of the patent or any 
interest therein, the grant of licences under the patent, or the 
exercise of any right under section 63 of this Act in relation 
thereto, as he thinks fit. 
(2) If any person registered as grantee or proprietor of the 
patent fails to execute any instrument or to do any other thing 
required for the carrying out of any direction given under this 
section within 14 days after being requested in writing so to 
do by any of the other persons so registered, the 
Comlllissioner may, upon application made to him in the 
prescribed manner by any such other person, give directions 
empowering any person to execute that instrument or to do 
that thing in the name and on behalf of the person in default: 
(3) Before giving directions in pursuance of an application 
under this section, the Commissioner shall give an 
opportunity to be heard,-
(a) In the case of an application under subsection (1) of 
this section, to the other person or persons 
registered as grantee or proprietor of the patent: 
(b) In the case of an application under subsection (2) of 
this section, to the person in default. I 
(4) An appeal to the Court shall lie froIn any decision or 
direction of the Commissioner under this section. 
(5) No directions shall be given under this section so as to 
affect the mutual rights or obligations of trustees or of the 
personal representatives of a deceased person, or their rights 
or obligations as such. 
Cf. Patents Act 1949, s. 55 (U.K.); 1921-22, No. 18, 
s. 42; 1939, No. 26, s. 66 
As to appeals to the Court of Appeal, see ss. 97 (4) (a) and 98 (b). 
65. Disputes as to inventions DUlde by elDployees­
( 1) Where a dispute arises between an employer and a person 
who is or was at the ITIaterial time his eITIployee as to the IP/NII/NZL/PI 1 
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R.S. Vol. 10 Patents Act 1953 629 
67 
rights of the parties in respect of an invention made by the 
employee either alone or jointly with other employees or in 
respect of any patent granted or to be granted in respect 
thereof, the COITlITlissioner ITlay, upon application ITlade to 
him in the prescribed ITlanner by either of the parties and 
after giving to each of theITl an opportunity to be heard, 
determine the matter in dispute, and may make such orders 
for giving effect to his decision as he considers expedient: 
Provided that if it appears to the Commissioner upon any 
application under this section that the matter in dispute 
involves questions which would more properly be determined 
by the Court, he ITlay decline to deal therewith. 
(2) In proceedings before the Court between an employer 
and a person who is or was at the material tiITle his employee, 
or upon application ITlade to the Commissioner under 
subsection (1) of this section, the Court or Commissioner 
ITlay, unless satisfied that one or other of the parties is 
entitled, to the exclusion of the other, to the benefit of an 
invention made by the employee, by order provide for the 
apportionlllent between them of the benefit of the invention, 
and of any patent granted or to be granted in respect thereof, 
in such manner as the Court or Commissioner considers just. 
(3) A decision of the COlllmissioner under this section shall 
have the same effect as between the parties and .persons 
claiming under them as a decision of the Court. 
(4) An appeal to the Court shall lie from any decision of the 
Commissioner under this section. 
Cf. Patents Act 1949, s. 56 (U.K.) 
66. Avoidance of certain restrictive conditions­
(1) Subject to the provisions of this section, any condition of 
a contract for the sale or lease of a patented article or of an 
article rnade by a patented process or for licence to use or 
work a patented article or process, or relating to any such 
sale, lease, or licence, shall be void in so far as it purports-
(a) To require the purchaser, lessee, or licensee to acquire 
frorn the vendor, lessor, or licensor, or his norninees, 
or prohibit him frorn acquiring from any specified 
person, or froIT} acquiring except from the vendor, 
lessor, or licensor, or his nominees, any articles 
other than the patented article or an article rnade by 
the patented process: 
(b) To prohibit the purchaser, lessee, or licensee from using 
articles (whether patented or not) which are not 
supplied by, or any patented process which does not 630 
68 Patents IP/N/I/NZL/P/l 
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R.S. Vol. 10 
belong to, the vendor, lessor, or licensor, or his 
nominees, or to restrict the right of the purchaser, 
lessee, or licensee to use any such articles or process. 
(2) In proceedings against any person for infringement of a 
patent, it shall be a defence to prove that at the tirne of the 
infringement there was in force a contract relating to the 
patent made by or with the consent of the plaintiff and 
containing a condition void by virtue of this section. 
(3) A condition of a contract shall not be void by virtue of 
this section if-
(a) At the time of the making of the contract the vendor, 
lessor, or licensor was willing to sellar lease the 
article, or grant a licence to use or work the article 
or process, as the case may be, to the purchaser, 
lessee, or licerlsee, on reasonable terms specified in 
the contract and without any such condition as is 
mentioned in subsection (1) of this section; and 
(b) The purchaser, lessee, or licensee is entitled under the 
contract to relieve himself of his liability to observe 
the condition upon giving to the other party 3 
months' notice in writing and subject to payment to 
him of such cornpensation (being, in the case of a 
purchase a lump sum, and in the case of a lease 9r 
licence a rent or royalty for the residue of the term of 
the contract) as may be determined by an arbitrator 
appointed by the Minister. 
(4) If in any proceeding it is alleged that any condition of a 
contract is void by virtue of this section, it shall lie on the 
vendor, lessor, or licensor to prove the matters set out in 
paragraph (a) of subsection (3) of this section. 
(5) A condition of a contract shall not be void by virtue of 
this section by reason only that it prohibits any person from 
selling goods other than those supplied by a specified person, 
or, in the case of a contract for the lease of or licence to use a 
patented article, that it reserves to the lessor or licensor or his 
nominees the right to supply such new parts of the patented 
article as may be required to put or keep it in repair. 
Cf. Patents Act 1949, s.57 (U.K.); 1921-22, No. 18, 
s. 43 
67. Deternrination of certain contracts-(l) Any con­
tract for the sale or lease of a patented article or for licence to 
manufacture, use, or work a patented article or process, or 
relating to any such sale, lease, or licence, whether made 
before or after the commencement of this Act, may at any IP/NII/NZL/PI 1 
Page 70 
R. S. Val. 10 Patents Act 1953 631 
69 
time after the patent or all the patents by which the article or 
process was protected at the time of the making of the 
contract has or have ceased to be in force, and 
notwithstanding anything to the contrary in the contract or in 
any other contract, be deterrnin.ed by either party on giving 3 
months' notice in writing to the other party. 
(2) The provisions of this section shall be without prejudice 
to any right of determining a contract exercisable apart from 
this section. 
Cf. Patents Act 1949, s. 58 (C.K.); 1921-22, No. 18, 
s. 43 (3) 
Proceedings for Infringement, etc. 
68. Restrictions on recovery of daDlages for infringe­
tnent-( 1) In proceedings for the infringement of a patent, 
damages or account of profits shall not be awarded against a 
defendant who proves that at the date of the infringement he 
was not aware, and had no reasonable ground for supposing, 
that the patent existed; and a person shall not be deemed to 
have been aware or to have had reasonable grounds for 
supposing as aforesaid by reason only of the application to an 
article of the word "patent", "patented", or any word or 
words expressing or implying that a patent has been obtained 
for the article, unless the word or words are accompanied by 
the words "New Zealand" or the letters "N.Z." and by the 
number of the patent. 
(2) In any proceeding for infringement of a patent the 
Court may, if it thinks fit, refuse to award any daITlages in 
respect of any infringernent committed after a failure to pay 
any renewal fee within the prescribed period and before any 
extension of that period. 
(3) Where an amendment of a specification by way of 
disclaimer, correction, or explanation has been allowed under 
this Act after the publication of the specification, no damages 
shall be awarded in any proceeding in respect of the use of the 
invention before the date of the decision allowing the 
all1endll1ent, unless the Court is satisfied that the specification 
as originally published was framed in good faith and with 
reasonable skill and knowledge. 
(4) Nothing in this section shall affect the power of the 
Court to grant an Injunction In any proceedings for 
infringement of a patent. 
Cf. Patents Act 1949, s.59 (C.K.); 1921-22, No. 18, 
ss. 25, 38 IP/N/1/NZL/P/l 
Page 71 
632 Patents R.S. Vol. 10 
70 
69. Order for account in action for infringement-In 
an action for infringeInent of a patent the plaintiff shall be 
entitled, at his option, to an account of profits instead of 
daInages. 
Cf. Patents Act 1949, s.60 (C.K.); 1921-22, No. 18, 
s. 39 
70. Counterclaim for revocation in action for infringe­
Jnent-A defendan t in an action for infringernen t of a pa ten t 
lTIay, without obtaining the consent of the Attorney-General 
under paragraph (b) of subsection (3) of section 41 of this 
Act, apply in accordance with rules of Court by way of 
counterclaiIn in the action for revocation of the patent. 
CL Patents Act 1949, s. 61 (C.K.); 1921-22, No. 18, 
s. 36; 1939, No. 26, s. 64 (1) 
71. Relief for infringement of partially valid spec­
ification-( 1) If in proceedings for infringelTIent of a patent 
it is found that any claim of the specification, being a claim in 
respect of which infringement is alleged, is valid, but that any 
other claim is invalid, the Court Inay grant relief in respect of 
any valid claiIn which is infringed: 
Provided that the Court shall not grant relief by way' of 
damages, or account of profits, or costs except in the 
circulTIstances mentioned in subsection (2) of this section. 
(2) Where the patent is dated before the 1st day of January 
1940, or the plaintiff proves that the invalid claim was fraIned 
in good faith and with reasonable skill and knowledge, the 
Court shall grant relief in respect of any valid claim which is 
infringed subject to the discretion of the Court as to costs and 
as to the date froIn which daInages should be reckoned. 
(3) As a condition of relief under subsection (1) or 
subsection (2) of this section the Court may direct that the 
specification shall be amended to its satisfaction upon an 
application made for that purpose under section 39 of this 
Act, and such an application may be made accordingly 
whether or not all other issues in the proceedings have been 
determined. 
(4) In relation to a patent which is dated before the 1st day 
of January 1940, the provisions of this section shall have effect 
notwithstanding anything in subsection (3) of section 68 of 
this Act. 
CL Patents Act 1949, s.62 (U.K.); 1939, ~o. 26, 
s. 64 (2), ( 3 ) IP/N/I/NZL/P/l 
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R.S. Vol. 10 Patents Act 1953 633 
71 
72. Proceedings for infringetnent· by exclusive 
licensee (1) Subject to the provisions of this section and of 
section 85 of this Act, the holder of an exclusive licence under 
a patent shall have the like right as the patentee to take 
proceedings in respect of any infringement of the patent 
committed after the date of the licence, and in awarding 
damages or granting any other relief in any such proceedings, 
the Court shall take into consideration any loss suffered or 
likely to be suffered by the exclusive licensee as such or, as the 
case may be, the profits earned by rneans of the infringement 
so far as it constitutes an infringement of the rights of the 
exclusive licensee as such. 
(2) In any proceedings taken by the holder of an exclusive 
licence by virtue of this section, the patentee shall, unless he is 
joined as plaintiff in the proceedings, be added as defendant: 
Provided that a patentee so added as defendant shall not be 
.liable for any costs unless he defends the proceedings. 
Cf. Patents Act 1949, s.63 (U.K.) 
73. Certificate of contested validity of specification­
(1) If in any proceedings before the Court the validity of any 
claim of a specification is contested, and that clailll is found 
by the Court to be valid, the Court lllay certify that the 
validity of that claim was contested in those proceedings. 
(2) Where any such certificate has been granted, then, if in 
any subsequent proceedings before the Court for infringement 
of the patent or for revocation of the patent, a final order or 
judgment is lllade or given in favour of the party relying on 
the validity of the patent, that party shall, unless the Court 
otherwise directs, be entitled to his costs as between solicitor 
and client so far as concerns the clailll in respect of which the 
certificate was granted: 
Provided that this subsection shall not apply to the costs of 
any appeal in any such proceedings as aforesaid. 
Cf. Patents Act 1949, s. 64 (U.K.); 1921-22, No. 18, 
s.40 
74. Retnedy for groundless threats of infringentent 
proceedings-( 1) Where any person (whether entitled to or 
interested in a patent or an application for a patent or not) by 
circulars, advertisements, or otherwise threatens any other 
person with proceedings for infringelllent of a patent, any 
person aggrieved thereby may bring action against him for 
any such relief as is lllentioned in subsection (2) of this 
section. IP/NIlINZL/PI1 
Page 73 
634 Patents R.S. Vol. 10 
72 
(2) Unless in any action brought by virtue of this section 
the defendant proves that the acts in respect of which 
proceedings were threatened constitute or, if done, would 
constitute an infringement of a patent or of rights arising from 
the publication of a complete specification in respect of a 
claim of the specification not shown by the plaintiff to be 
invalid, the plaintiff shall be entitled to the following relief, 
that is to say: 
(a) A declaration to the effect that the threats are 
unjustifiable; and 
(b) An injunction against the continuance of the threats; 
and 
(c) Such daITlages, if any, as he has sustained thereby. 
(3) For the avoidance of doubt it is hereby declared that a 
mere notification of the existence of a patent does not 
constitute a threat of proceedings within the meaning of this 
section. 
(4) It is hereby declared that a notice given under section 
85 of this Act does not constitute a threat of proceedings 
within the ITleaning of this section. 
Cf. Patents Act 1949, s. 65 (U.K.); 1939, No. 26, s. 65 
75. Power of Court to tnake declaration as to 000-
infriogetneot-( 1) A declaration that the use by any person 
of any process, or the making or use or sale by any person of 
any article, does not or would not constitute an infringell1ent 
of a claim of a patent may be made by the Court in 
proceedings between that person and the patentee or the 
holder of an exclusive licence under the patent, notwithstand­
ing that no assertion to the contrary has been made by the 
patentee or licensee, if it is shown-
(a) That the plaintiff has applied in writing to the patentee 
or licensee for a written acknowledgment to the 
effect of the declaration claimed, and has furnished 
hinl with full particulars in writing of the process or 
article in question; and 
Cb) That the plaintiff has undertaken to pay a reasonable 
sum for expenses of the patentee or licensee in 
obtaining advice In respect of the declaration 
sought; and 
Cc) That the patentee or licensee has refused or neglected to 
give such an acknowledglllent. 
(2) The costs of all parties in proceedings for a declaration 
brought by virtue of this section shall be in the discretion of 
the Court. IP/N/I/NZL/P/l 
Page 74 
R.S. Vol. 10 Patents Act 1953 635 
73 
(3) The validity of a claim of the specification of a patent 
shall not be called in question in proceedings for a declaration 
brought by virtue of this section, and accordingly the making 
or refusal of such a declaration in the case of a patent shall not 
be deemed to imply that the patent is valid. 
(4) Proceedings for a declaration may be brought by virtue 
of this section at any time after the date of the publication of 
the complete specification in pursuance of an application for a 
patent, and references in this section to the patentee shall be 
construed accordingly. 
Cf. Patents Act 1949, s. 66 (U.K.) 
76. Attorney-General lDay appear in patent proceed­
ings-( 1) The Attorney-General, if in his opinion the public 
interest is or may be involved, m.ay do all or any of the 
following things: 
(a) Institute proceedings to test the validity of any patent: 
(b) Join the plaintiff in an action brought under section 74 
of this Act: 
(c) Apply for the revocation of a patent: 
(d) Appear and be heard in any proceedings before the 
Court or the Commissioner for the grant, extension, 
amendment, or revocation of a patent, or wh~re the 
validity of a patent is in question, or for a licence 
under a patent, or for the endorsement of a patent 
with the words "licences of right", or for a 
declaration of non-infringement, and take any steps 
which he considers desirable as if he were a party to 
the proceedings: 
(e) Intervene in and take over the control and conduct of 
any proceedings in which he may appear and be 
heard as aforesaid on behalf and with the consent of 
a party thereto. 
(2) In any proceedings before the Court or the 
Commissioner (other than proceedings under section 16 of 
this Act) any party who intends to question the validity of a 
patent shall give notice of that intention to the Solicitor­
General at least 21 days before the hearing, and shall supply 
the Solicitor-General with a copy of such papers filed in the 
proceedings by himself and by any other party as the 
Solici tor-General requires. 
(3) In any proceedings in which the Attorney-General 
appears in accordance with this section, costs may be 
awarded either to or against the Attorney-General. 
Cf. 1947, No. 37, s. 3 636 
74 Patents 
International Agreements, etc. IP/N/I/NZL/P/l 
Page 75 
R.S. Val. 10 
77. Orders in Council as to convention countries­
(1) The Governor-General may, with a view to the fulfilrnent 
of a treaty, convention, arrangement, or engagement, by 
Order in Council, declare that any country specified in the 
Order is a convention country for the purposes of this Act: 
Provided that a declaration may be made as aforesaid for 
the purposes either of all or some only of the provisions of this 
Act, and a country in the case of which a declaration made for 
the purposes of some only of the provisions of this Act is in 
force shall be deerned to be a convention country for the 
purposes of those provisions only. 
(2) For the purposes of subsection (1) of this section, every 
territory for whose international relations another country is 
responsible shall be deemed to be a country in the case of 
which a declaration rnay be rnade under that subsection. 
Cf. Patents Act 1949, s. 68 (U.K.); 1939, No. 26, s. 54 
See the Patents Designs, and Trade Marks Convention Order 1968 (S.R. 1968/207). 
78. SuppleDlentary provisions as to convention appli­
cations-( 1) Where a person has applied for protection for 
an invention by an application which,-
(a) In accordance with the terms of a treaty subsisting 
between any 2 or more convention countries, is 
equivalent to an application duly made in anyone of 
those convention countries; or 
(b) In accordance with the law of any convention country, 
is equivalent to an application duly ITIade in that 
convention country,-
he shall be deemed for the purposes of this Act to have 
applied in that convention country. 
(2) For the purpose of this Act, matter shall be deemed to 
have been disclosed in an application for protection in a 
convention country if it was claimed or disclosed (otherwise 
than by way of disclaimer or acknowledgment of prior art) in 
that application or in docurnents subrnitted by the applicant 
for protection in support of and at the same time as that 
application; but no account shall be taken of any disclosure 
effected by any such document unless a copy of the document 
is filed at the Patent Office with the convention application or 
within such period as m.ay be prescribed after the filing of that 
application. 
Cf. Patents Act 1949, s. 69 (C.K.); 1939, No. 26, s. 55 
(4), (8) IP/N/1/NZL/P/1 
Page 76 
R.S. Vol. 10 Patents Act 1953 637 
75 
79. Special provisions as to vessels, aircraft, and land 
vehicles-Where a vessel or aircraft registered in a 
convention country, or a land vehicle owned by a person 
ordinarily resident in such a country, comes into New 
Zealand (including the territorial waters thereof) temporarily 
or accidentally only, the rights conferred by a patent for an 
invention shall not be deemed to be infringed by the use of the 
invention-
(a) In the body of the vessel or in the machinery, tackle, 
apparatus, or other accessories thereof, so far as the 
invention is used on board the vessel and for its 
actual needs only; or 
Cb) In the construction or working of the aircraft or land 
vehicle or of the accessories thereof,-
as ~he case may be. 
Cf. Patents Act 1949, s. 70 (C.K.); 1939, No. 26, s. 68 
See the Patents, Designs, and Trade ~arks Convention Order 1968 (S.R. 1968/207). 
80. Extension of tilTle for certain convention applica­
tions- ( 1) If the Governor-General is satisfied that provision 
substantially equivalent to the provision to be made by or 
under this section has been or will be made under the law of 
any convention country, he may, by Order in Council, make 
regulations empowering the Commissioner to extend the time 
for making application under subsection (2) of section 7 of 
this Act for a patent for an invention in respect of which 
protection has been applied for in that country in any case 
where the period specified in the proviso to that subsection 
expires during a period prescribed by the regulations. 
(2) Regulations made under this section-
(a) May, where any agreement or arrangement has been 
made between Her Majesty's Government in New 
Zealand and the Government of the convention 
country for the supply or mutual exchange of 
information or articles, provide, either generally or 
in any class of case specified in the regulations, that 
an extension of time shall not be granted under this 
section unless the invention has been communicated 
in accordance with the agreement or arrangement: 
Cb) May, either generally or in any class of case specified in 
the regulations, fix the maximum extension whic.a 
may be granted under this section and provide for 
reducing the term of any patent granted on an 
application made by virtue of this section, and 638 
76 Patents IP/NI 1 INZL/PI 1 
Page 77 
R.S. Val. 10 
(notwithstanding anything in section 115 of this 
Act) vary the time for the payment of renewal fees in 
respect of such a patent and the amount of such fees: 
(c) May prescribe or allow any special procedure in 
connection with applications made by virtue of this 
section: 
(d) May empower the Commissioner to extend, in relation 
to an application made by virtue of this section, the 
time limited by or under the foregoing provisions of 
this Act for doing any act, subject to such 
conditions, if any, as may be imposed by or under 
the regulations: 
(e) May provide for securing that the rights conferred by a 
patent granted on an application made by virtue of 
this section shall be subject to such restrictions or 
conditions as may be specified by or under the 
regulations and in particular to restrictions and 
conditions for the protection of persons (including 
persons acting on behalf of Her Majesty) who, 
otherwise than as the result of a communication 
made in accordance with such an agreement or 
arrangement as is mentioned in paragraph (a) of 
this subsection, and before the date of the 
application in question or such later date as may be 
allowed by the regulations, may have made, used, 
exercised, or vended the invention or may have 
applied for a patent in respect thereof. 
Cf. Patents Act 1949, s. 71 (C.K.); 1943, No. 6, s. 5; 
1946, No. 32, s. 3 
81. Protection of inventions cOlDlDunicated under 
international agreelDents-( 1) Subject to the provisions of 
this section, the Governor-General may, by Order in Council, 
make regulations for securing that, where an invention has 
been communicated in accordance with an agreement or 
arrangeInent made between Her Majesty's Government in 
New Zealand and the Government of any other country for 
the supply or Inutual exchange of information or articles,-
(a) An application for a patent made by the person from 
whom the invention was cOITlITlunicated or his 
personal representative or assignee shall not be 
prejudiced, and a patent granted on such an 
application shall not be invalidated, by reason only 
that the invention has been communicated as 
aforesaid or that in consequence thereof-IP IN 11 INZL/P 11 
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R.S. Vol. 10 Patents Act 1953 639 
77 
(i) The invention has been published, made, 
used, exercised, or vended; or 
(ii) An application for a patent has been made by 
any other person, or a patent has been granted on 
such an application: 
(b) Any application for a patent made in consequence of 
such a communication as aforesaid may be refused 
and any patent granted on such an application may 
be revoked. 
(2) Regulations made under subsection (1) of this section 
may provide that the publication, making, use, exercise, or 
vending of an invention, or the making of any application for 
a patent in respect thereof, shall, in such circumstances and 
subject to such conditions or exceptions as may be prescribed 
by the regulations, be presumed to have been in consequence 
of such a communication as is mentioned in that subsection. 
(3) The powers of the Governor-General under this section, 
so far as they are exercisable for the benefit of persons from 
whom inventions have been communicated to Her Majesty's 
Government in New Zealand by the GovernITlent of any other 
country, shall only be exercised if and to the extent that the 
Governor-General is satisfied that substantially equivalent 
provisions has been or will be tnade under the law of that 
country for the benefit of persons for whom inventions have 
been communicated by Her Majesty's Government in New 
Zealand to the Governtnent of that country. 
(4) References in subsection (3) of this section to the 
communication of an invention to or by Her Majesty's 
GoveITltnent in New Zealand or the Government of any other 
country shall be construed as including references to the 
comtnunication of the invention by or to any person 
authorised in that behalf by the Government in question. 
Cf. Patents Act 1949, s. 72 (C.K.); 1946, No. 32, s.4 
As to the meaning of the term "personal representative", see s. 2 (2). 
82. Regulations under section 80 or section 81-Any 
regulations made under section 80 or section 81 of this Act, 
and any order made, direction given, or other action taken 
under the regulations by the Cotntnissioner, may be made, 
given, or taken so as to have effect as respects things done or 
omitted to be done on or after such date, whether before or 
after the commencement of the regulations or of this Act, as 
may be specified in the regulations. 
CL Patents Act 1949, s. 95 (2) (U.K.); 1943, No. 6, s. 7 640 
78 Patents 
Register of Patents, etc. IP/N/I/NZL/P/l 
Page 79 
R.S. Vol. 10 
83. Register of patents-( 1) There shall be kept at the 
Patent Office a register of patents, in which there shall be 
entered particulars of patents in force, of assignrnents and 
transmissions of patents and of licences under patents, and 
notice of all matters which are required by or under this Act 
to be entered in the register and of such other rnatters 
affecting the validity or proprietorship of patents as the 
Comrnissioner thinks fit. 
(2) Subject to the provisions of this Act and to regulations 
made thereunder, on payment of the prescribed fee the 
register of patents shall, at all convenient times, be open to 
inspection by the public; and certified copies, sealed with the 
seal of the Patent Office, of any entry in the register shall be 
given to any person requiring them. 
(3) The register of patents shall be prirna facie evidence of 
any matters required or authorised by or under this Act to be 
entered therein. 
(4) No notice of any trust, whether expressed, implied, or 
constructive, shall be entered in the register of patents, and 
the Commissioner shall not be affected by any such notice. 
Cf. Patents Act 1949, s. 73 (U.K.); 1921-22, No. 18, 
ss. 31, 118, 119 
84. Registration of assignDlents, etc.-( 1) Where any 
person becomes entitled by assignment, transmission, or 
operation of law to a patent or to a share in a patent, or 
becomes entitled as mortgagee, licensee, or otherwise to any 
other interest in a patent, he shall apply to the Commissioner 
in the prescribed manner for the registration of his title as 
proprietor or co-proprietor, or, as the case may be, 9f notice of 
his interest, in the register of patents. 
(2) Without prejudice to the provisions of subsection (1) of 
this section, an application for the registration of the title of 
any person becoming entitled by assignment to a patent or a 
share in a patent, or becoming entitled by virtue of a 
mortgage, licence, or other instrument to any other interest in 
a patent, may be made in the prescribed manner by the 
assignor, mortgagor, licensor, or other party to that 
instrument, as the case may be. 
(3) Where application is made under this section for the 
registration of the title of any person, the Commissioner shall, 
upon proof of title to his satisfaction,-
(a) Where that person is entitled to a patent or a share in a 
patent, register him in the register of patents as IP/N/lINZL/P/l 
Page 80 
R.S. Val. 10 Patents Act 1953 641 
79 
proprietor or co-proprietor of the patent, and enter 
in that register particulars of the instruITlent or 
event by which he derives title; or 
(b) Where that person is entitled to any other interest in 
the patent, enter in that register and on any patent 
produced to the Commissioner notice of his interest. 
(4) Subject to the provisions of this Act relating to co­
ownership of patents, and subject also to any rights vested in 
any other person of which notice is entered in the register of 
patents, the person or persons registered as grantee or 
proprietor of a patent shall have power to assign, grant 
licences under, or otherwise deal with the patent, and to give 
effectual receipts for any consideration for any such 
assignment, licence, or dealing: 
Provided that any equities in respect of the patent ITlay be 
enforced in like manner as in respect of any other personal 
property. 
(5) Regulations ITlade under this Act may require the 
supply to the Commissioner for filing at the Patent Office of 
copies of such deeds, licences, and other documents as may be 
prescribed. 
Cf. Patents Act 1949, s. 74 (U.K.); 1921-22, No. 18, 
s. 122 
85. LilDitation of proceedings-( 1) Except where the 
Court (on application in that behalf) in any case otherwise 
authorises, no person shall bring any proceedings (other than 
criminal proceedings) in respect of any interest to which he 
lllay be entitled as owner, lllortgagee, licensee, or otherwise in 
a patent unless-
(a) In the case of an interest which is not registered under 
this Act at the time of the commencement of the 
proceedings and which IS capable of being so 
regis tered ,-
(i) He has by notice in writing given to the 
proposed defendant at least one month before the 
date of the commencement of the proceedings 
advised his intention to bring the proceedings and 
furnished an address for service in New Zealand; 
and 
(ii) No notice under subsection (2) of this section 
requiring him to register the interest under this Act 
has been given to him within one month after he 
gave notice under subparagraph (i) of this 
paragraph; or IP/N/I/NZL/P/I 
Page 81 
642 Patents R.S. Val. 10 
80 
(b) In the case of an interest which is registered under this 
Act, the interest was so registered,-
(i) Before the right to commence proceedings was 
barred under this section; and 
(ii) At least one month before the date of the 
commencement of the proceedings; or 
(c) In the case of any other interest, he has, by notice in 
writing given to the proposed defendent at least one 
month before the date of the COITlmencement of the 
proceedings, advised his intention to bring the 
proceedings. 
(2) Where any person makes any claim, or threatens to 
bring or gives notice of his intention to bring any proceedings 
(other than criminal proceedings), against any other person 
in respect of any interest as owner, mortgagee, licensee, or 
otherwise in a patent, being an interest which is not registered 
under this Act and which is capable of being so registered, 
that other person may, at any time within one month 
thereafter by notice in writing given to the maker of the claim. 
or threat or the giver of the notice of intention to bring the 
proceedings, require him to register under this Act the 
interest in respect of which the claim or threat is made or the 
notice of intention to bring the proceedings is given, and if he 
fails to do so within 6 months after the giving of the notice 
under this subsection he shall not thereafter be entitled to 
bring any proceedings in respect of the claim or interest 
against the person who has given the notice to register. 
(3) Nothing in this section shall enable any person to bring 
any proceedings which are barred under the Limitation Act 
1950, and nothing in section 33 of that Act shall exclude the 
operation of that Act in any case where proceedings may be 
barred under this section. 
86. CoJDtnissioner lDay dispense with production of 
probate or letters of adnrlnistration in certain cases­
(1) For the purposes of this section, unless the context 
otherwise requires,-
"Deceased proprietor" means a registered proprietor of 
any patent who has died, whether before or after the 
commencement of this Act; and includes any 
applicant for a patent who has died before it is 
granted, whether before or after the commencement 
of this Act; and also includes an inventor of any 
invention who has died before or after the 
comrnencement of this Act without making an 
application for a patent for the invention: JP IN 11 INZL/P 11 
Page 82 
R.S. Va!. 10 Patents Act 1953 643 
81 
"Qualified person", In relation to any deceased 
proprietor, means a person who satisfies the 
ComITlissioner-
(a) That he has obtained or is entitled to obtain 
probate of the will of the deceased proprietor or 
letters of administration in his estate in the place 
where the deceased proprietor was dOITliciled at his 
death, or that he is the personal representative of the 
deceased proprietor in that place: 
(b) That probate of the will of the deceased 
proprietor or letters of administration in his estate 
have not been granted or resealed in New Zealand: 
(c) That the COITlrnissioner of Inland Revenue is 
satisfied that no [estate duty] will be payable in New 
Zealand in the estate of the deceased proprietor: 
(d) That the interests of the creditors of the 
deceased proprietor, and of all persons beneficially 
interested under his will or on his intestacy, will be 
adequately safeguarded if the ComITlissioner of 
Patents registers the qualified person as the 
proprietor of the patent. 
(2) Upon application in the prescribed manner and 
paYITlent of the prescribed fees, the COITlITlissioner ill his 
discretion and without requiring the production of probate or 
letters of administration rnay;-
(a) Where the registered proprietor of any patent has died 
before or after the COITlmenceITlent of this Act, 
register any qualified person as the proprietor of the 
patent: 
(b) Where an applicant for any patent has died before the 
grant of the patent (whether before or after the 
comITlencement of this Act), allow any qualified 
person to complete the application and may register 
that person as the proprietor of the patent, or may 
accept the consent of that person for the purposes of 
section 24 of this Act as if that person were the 
personal representative of the deceased applicant: 
(c) Allow an application under section 9 of this Act to be 
made by and may grant a patent to any qualified 
person as if he were the personal representative of 
the deceased inventor. 
(3) Every qualified person who is registered under this 
section as the proprietor of a patent shall hold it subject to all 
existing interests and equities affecting it. 644 
82 Patents IP/N/I/NZL/P/l 
Page 83 
R.S. Vol. 10 
(4) Nothing in [section 70 or in section 73 of the 
Adrninistration Act 1969] shall be deemed to restrict the 
operation of this section. 
Cf. 1947, No. 37, s. 5 
In subs. (1) the reference to estate duty was substituted for a reference to death duty 
by s. 89 (7) of the Estate and Gift Duties Act 1955, in relation to the estates of persons 
dying after the commencement of that Act. 
In subs. (4), ss. 70 and 73 of the Administration Act 1969, being the corresponding 
enactments in force at the date of this reprint, have been substituted for ss. 49 and 52 of 
the repealed Administration Act 1952. 
S. 67 of the Administration Act 1969 provides that nothing in that Act is to affect the 
operation of this section. 
87. Rectification of register of patents by Court-. 
(1) The Court may, on the application of any person 
aggrieved, order the register of patents to be rectified by the 
making of any entry therein or the variation or deletion of any 
entry therein. 
(2) In proceedings under this section the Court may 
determine any question which it may be necessary or 
expedient to decide in connection with the rectification of the 
register of patents. 
(3) Notice of any application to the Court under this 
section shall be given in the prescribed manner to the 
Commissioner, who shall be entitled to appear and be he.ard 
on the application, and shall appear if so directed by the 
Court. 
( 4) Any order made by the Court under this section shall 
direct that notice of the order shall be served on the 
Commissioner in the prescribed manner; and the COIl1mis­
sioner shall, on the receipt of the notice, rectify the register of 
pa ten ts accordingly. 
Cf. Patents Act 1949, s. 75 (U.K.); 1921-22, No. 18, 
ss. 123, 141 
88. Correction of errors-(l) Where a mistake exists in 
the register of patents, in any patent, or in any other 
document issued under this Act, by reason of an error or 
omission on the part of the Patent Office, the Commissioner 
may, in accordance with the provisions of this section, correct 
the mistake, and for that purpose may require the production 
of the patent or other document. 
(2) Where the Commissioner proposes to make any such 
correction as aforesaid, he shall give notice of the proposal to 
the persons who appear to him to be concerned, and shall give 
them an opportunity to be heard before making the 
correction. IP/NI1 INZL/PI1 
Page 84 
R.S. Vol. 10 Patents Act 1953 645 
83 
(3) Where a mistake exists in the register of patents, in any 
patent or application for patent or any document filed in 
pursuance of such an application, or in proceedings in 
connection with any patent, by reason of an error or an 
omission on the part of the patentee or of the applicant for the 
patent or of any other person concerned, a correction may be 
made in accordance with the provisions of this section upon a 
request in writing by any person interested and payment of 
the prescribed fee. If it appears to the COrrlITlissioner that the 
correction would materially alter the meaning or scope of the 
document to which the request relates and ought not to be 
made without notice to persons likely to be affected thereby, 
he shall require notice of the nature of the proposed correction 
to be advertised in the prescribed manner. 
(4) Within the prescribed time after any such advertise­
ment as aforesaid, any person interested may give notice to 
the Cornmissioner of opposition to the request, and where any 
such notice of opposition is given the ComITlissioner shall give 
notice thereof to the person by whom the request was ITlade, 
and shall give to him and to the opponent an opportunity to 
be heard before he decides the case. 
(5) An appeal to the Court shall lie frarn any decision of the 
Comrnissioner under this section. 
Cf. Patents Act 1949, s. 76 (U.K.); 1921-22, No. 18, 
s. 12 1; 1 946 , No. 32, s. 7 
89. Evidence of entries, doclllDents, etc.-( 1) A certifi­
cate sealed with the seal of the Patent Office and purporting 
to be signed by the Commissioner certifying that any entry 
which he is authorised by or under this Act to make has or has 
not been made, or that any other thing which he is so 
authorised to do has or has not been done, shall be prima 
facie evidence of the matters so certified. 
(2) A copy of any entry in any register or of any document 
kept in the Patent Office or of any patent, or an extract from 
any such register or document, sealed with the seal of the 
Patent Office, and purporting to be certified by the 
Commissioner, shall be admitted in evidence without further 
proof and without production of the original. 
(3) Where by this Act or otherwise by law the 
COlTImissioner is directed, authorised, or empowered to do, 
exercise, or perforrn any act, power, function, or duty, any 
notification In the Journal of the doing, exerCIse, or 646 
84 Patents IP IN 11 INZL/P 11 
Page 85 
R.S. Vol. 10 
performance of any such act, power, function or duty shall be 
prima facie evidence that it was lawfully done, exercised, or 
performed. 
Cf. Patents Act 1949, s. 77 (U.K.); 1921-22, No. 18, 
ss. 130, 131; 1946, No. 32, s.6 (3) 
90. Requests for inforlDation as to patent or patent 
application-The Commissioner shall, on request made to 
him in the prescribed manner by any person and on payment 
of the prescribed fee, furnish the person making the request 
with such information relating to any patent or application 
for a patent as may be specified in the request, being 
information in respect of any such matters as may be 
prescribed. 
Cf. Patents Act 1949, s. 78 (V .K.) 
91. Restriction upon publication of specifications, 
etc.-(l) An application for a patent, and any specification 
filed in pursuance thereof, shall not, except with the consent 
of the applicant, be published by the Commissioner or be 
open to. public inspection at any time before the ~ate 
advertised in the Journal in pursuance of subsection (2) of 
section 20 of this Act: 
Provided that nothing in this subsection shall preclude the 
Commissioner from publishing the date and number of an 
application and &llch details of the application and invention 
as are required to be given in the application form. 
(2) The reports of examiners made under this Act shall not 
be open to public inspection or be published, by the 
Commissioner; and such reports shall not be liable to 
production or inspection in any legal proceeding unless the 
Court or officer having power to order discovery in the 
proceeding certifies that the production or inspection is 
desirable in the interests of justice, and ought to be allowed: 
Provided that the Commissioner may, on application made 
in the prescribed manner by any person, disclose the result of 
any search ITIade under section 13 or section 14 of this Act or 
any inforITIation furnished under subparagraph (i) of 
paragraph (b) of section 15 of this Act in respect of any 
application for a patent where the complete specification has 
been published. 
Cf. Patents Act 1949, s. 79 (U.K.); 1921-22, No. 18, 
ss. 11, 120; 1946, No. 32, s.5 IP IN 11 INZL/P 11 
Page 86 
R.S. Vol. 10 Patents Act 1953 647 
85 
92. Loss or destruction of patent-Where the Commis­
sioner is satisfied that a patent has been lost or destroyed or 
cannot be produced, he may at any time, on application made 
to hiITl in the prescribed manner and on payment of the 
prescribed fee, cause a further patent to be sealed. 
Cf. Patents Act 1949, s. 80 (U.K.); 1921-22, No. 18, 
s.49 
93. COlDlDissioner lDay grant extension of tilDe-­
(1) Where by this Act anything is required to be done within 
a prescribed time, and by reason of delay in the Patent Office 
the thing is not so done, the Commissioner may extend the 
time for the doing of the thing. 
(2) Where, having regard to the procedure specified and 
the informa tion required under sections 12 to 16 of this Act or 
any regulations under those sections, the ComITlissioner is 
satisfied that the circumstances warrant an extension or 
extensions of the period specified in subsection (1) of section 
19 of this Act, the Commissioner may extend the period 
prescribed therein for complying with any requirement 
imposed on the applicant by or under this Act; and the said 
subsection shall then be read as if the period so extended had 
been subs ti tu ted for the period of 1 5 months therein 
mentioned. 
(3) Where an extension of period has been a110vved under 
subsection (2) of this section, the period so allowed shall be 
extended by the Commissioner to such further period not 
exceeding 3 months, as may be specified in a notice given by 
the applicant to the Commissioner, if the notice is given and 
the prescribed fee is paid before the expiration of the further 
period so specified. 
(4) No fees shall be payable in respect of any extension of 
time granted under subsection (1) or subsection (2) of this 
section. 
(5) The powers conferred on the COITlrnissioner by this 
section may be exercised notwithstanding that in any case the 
time limited may have expired·. 
Cf. 1921-22, ~o. 18, s. 125 
[93A. Additional provIsIons for extending tinte 
lintits-( 1) The Commissioner Iuay extend-
(a) The tirne prescribed in subsection (2) of section 7 of this 
Act for the filing of a convention application; or 
(b) The tin~e prescribed in subsection (2) of section 9 of this 
Act for the filing of a complete specification-648 
86 Patents IP/NI 1 INZL/PI 1 
Page 87 
R.S. Vol. 10 
on such terms (if any) as he thinks fit where he is satisfied that 
the circumstances warrant the extension. 
(2) Where by this Act any thing is required to be done 
within a prescribed time, and by reason of failure of or delay 
in the delivery of mail by any postal official or postal carrier 
that thing is not done within such time, the Commissioner 
may extend the time for the doing of the thing on such terms 
(if any) as he thinks fit. 
(3) Notwithstanding subsection (1) or subsection (2) of this 
section, the Commissioner shall refuse to grant an extension 
of time under that subsection if in his opinion-
(a) The applicant or his agent has not allowed a reasonable 
margin of time for the delivery to the Patent Office, 
by post or otherwise, of any documents relating to 
the matter in respect of which the application for the 
extension of time is made; or 
(b) The applicant or his agent has in any other way failed 
to act with due diligence and prudence in respect of 
such manner; or 
(c) There has been undue delay in bringing the application 
for the extension of time or in prosecuting the 
application. 
(4) Every extension of time granted under this section shall 
be advertised in the Journal in the prescribed manner.· 
(5) Where an application is made for an extension of tirne 
under this section by an agent on behalf of any applicant, the 
Commissioner may require as a condition of granting the 
application that written confirmation that the application is 
authorised shall be signed or executed by the applicant and 
lodged with the Commissioner within such time as the 
Commissioner specifies. 
(6) Any extension of time under this section, and any 
requirement given or other action taken by the "Commissioner 
under this section, may be granted, given, or taken so as to 
have effect in respect of things done or omitted to be done 
before the commencement of this section, as long as the 
application for the extension of time has been made before 
acceptance of the complete specification of the application for 
a patent in respect of which the application under this section 
has been rpade. 
(7) The Governor-General may from time to time, by 
Order in Council, make regulations for all or any of the 
following purposes: 
(a) For the protection of persons who at any time in good 
faith have begun to avail them.selves of any IP/NII/NZL/PI 1 
Page 88 
R.S. Val. 10 Patents Act 1953 649 
87 
invention that is the subject-matter of a matter in 
respect of which any application under this section 
is made: 
(b) Prescribing the evidence that the Commissioner rnay 
accept in support of applications under this section: 
(c) Prescribing the manner of advertising in the Journal 
extensions of time granted under this section: 
(d) Prescribing the grounds of opposition to applications 
under this section: 
(e) Regulating the procedure to be followed in relation to 
applications under this section and opposition to 
such applications: 
ef) Prescribing the fees to be paid in respect of applications 
under this section.] 
This section was inserted by s. 2 of the Patents Amendment Act 1972. 
Proceedings Before Commissioner 
94. Exercise of discretionary powers of COlDlDis­
sioner-Without prejudice to any provisions of this Act 
requiring the Commissioner to hear any party to proceedings 
thereunder, or to give to any such party an opportunity to be 
heard, the Commissioner shall give to any applicant for a 
patent, or for amendment of a specification, an opportunity to 
be heard before exercising adversely to the applicant any 
discretion vested in the Commissioner by or under this Act. 
Cf. Patents Act 1949, s. 81 (U.K.); 1921-22, No. 18, 
s. 124 
95. Costs and security for costs-Cl) The Commissioner 
ITlay, in any proceedings before hiITl under this Act, by order 
award to any party such costs as he may consider reasonable, 
and direct how and by what parties they are to be paid; and 
any such order may be entered as a judgment of the court and 
with the leave of the Court may be enforced accordingly. 
(2) If any party by whom notice of any opposition is given 
under this Act or by whom application is made to the 
Commissioner for the revocation of a patent or for the grant of 
a licence under a patent or for the determination of a dispute 
as to an invention under section 65 of this Act, or by whom 
notice of appeal is given from any decision of the 
Commissioner under this Act, neither resides nor carries on 
business in New Zealand, the Commissioner, or in the case of 
appeal, the Court, may require him to give security for the 650 
88 Patents IP/N/I/NZL/P/l 
Page 89 
R.S. Val. 10 
costs of the' proceedings or appeal, and in default of such 
security being given may treat the opposition, application, or 
appeal as abandoned. 
Cf. Patents Act 1949, s. 82 (U.K.); 1921-22, No. 18 
ss. 45, 127 
96. Evidence before Conunissioner-( 1) Subject to 
regulations made under this Act the evidence to be given in 
any proceedings before the Cornmissioner under this Act may 
be given by affidavit or statutory declaration; but the 
Commissioner rnay if he thinks fit in any particular case take 
oral evidence instead of or in addition to such evidence as 
aforesaid, and may allow any witness to be cross-examined on 
his affidavit or declaration. Any such statutory declaration 
tnay, in the event of an appeal under this Act, be used before 
the Court instead of evidence by affidavit, and when so used 
shall have all the incidents and consequences of evidence by 
affidavit. 
(2) In any proceedings under this Act before the 
Cotnmissioner, he may adrninister oaths to any witness, and 
rnay in the prescribed manner require the attendance of any 
witness and discovery and production of documents. 
(3) Any evidence given on oath before the Commissioner 
shall be deerned to be given in a judicial proceeding for the 
purposes of [sections 108 and 109 of the Crimes Act 1961]. 
(4) [Section III of the Crirnes Act 1961] shall apply to 
every affidavit and statutory declaration made for the 
purposes of this Act. 
(5) The Governor-General rnay from time to time, by 
Order in Council, lllake regulations-
(a) Prescribing the lllanner in which statutory declarations 
in respect of proceedings under this Act may be 
tnade and subscribed: 
(b) Prescribing the manner in which witnesses may be 
required to attend and to give evidence in any 
proceedings before the Commissioner: 
(c) Making provision for the payment of the expenses of 
witnesses: 
(d) Imposing fines not exceeding [$40] for failure or refusal 
of any person so to attend and give evidence. 
Cf. Patents Act 1949, s. 83 (U.K.); 1921-22, No. 18, 
s. 129 
In subs. (3), ss. 108 and 109, and in subs. (4), s. III of the Crimes Act 1961, being the 
corresponding enactrnents in force at the date of this reprint, have been substituted for 
ss. 130 and 131, and s. 133.of the repealed Crimes Act 1908. 
As to the clpplication of this section to the Commissioner of Designs, see s. 39 (2) of 
the Designs Act 1953. IP/N/I/NZL/P/l 
Page 90 
R.S. Vol. 10 Patents Act 1953 
Appeals 631 
89 
97. Appeals to High Court-(l) Every appeal under this 
Act against a decision of the Commissioner shall be to the 
[High Court]. 
(2) Notice of every such appeal shall be filed in the 
Court ... within 28 days after the day on which the decision 
appealed against was given. 
(3) In any such appeal the Court shall have and ll1ay 
exercise the same discretionary powers as are conferred upon 
the Commissioner. 
(4) Subject to the provisions of section 98 of this Act, the 
decision of the Court shall be final-
(a) On any appeal against a decision of the COll1missioner: 
(b) On any application under section 31 or section 32 of 
this Act. 
C£. 1921-22, No. 18, s. 140 
In subs. (2) the words "and served upon the Commissioner" were omitted by s. 3 of 
the Paten ts Arnendmen tAct 1976. 
98. Appeals to Court of Appeal-An appeal shall lie to 
the Court of Appeal-
(a) From any decision of the Court on an appeal under 
section 42 or section 50 of this Act, where the effect 
of the decision is the revocation of a patent-: 
(b) Froll1 any decision of the Court under section 64 of this 
Act: 
(c) With the leave of the [High Court] or of the Court of 
Appeal, froll1 any decision of the [High Court] on 
any appeal against a decision of the Commissioner 
or on application under section 31 or section 32 of 
this Act. 
Cf. Patents Act 1949, s. 87 (U.K.) 
99. Costs of Conunissioner in proceedings before 
Court-In all proceedings before the Court under this Act 
the costs of the COll1rnissioner shall be in the discretion of the 
Court. 
Cf. 1921-22, No. 18, s. 142 
Patent Attorneys 
100. Registration of patent attorneys-( 1) There shall 
be kept at the Patent Office a register of patent attorneys. 
(2) The Commissioner may register as a patent attorney 
any person who,-IP/NI 1 INZL/PI 1 
Page 91 
652 Patents R.S. Vol. 10 
90 
(a) Is a British subject or a citizen of the Republic of 
Ireland; and 
(b) Is not less than 21 years of age; and 
(c) Has passed all the subjects of the prescribed 
examina tion; and 
(d) If so required by regulations tnade under this Act, has 
been etnployed for the period specified in the 
regulations in the manner specified In the 
regulations; and 
(e) Possesses such other qualifications as tnay be 
prescribed. 
(3) Regulations made under this Act may provide for the 
appointment of a person or persons to conduct the 
exaITlinations referred to in subsection (2) of this section. 
(4) Every person who was registered as a patent agent 
under the Patent, Designs, and Trade Marks Act 1921-22 
immediately before the comITlenceInent of this Act shall be 
deeITled to be registered as a patent attorney under this Act. 
Cf 1921-22, No. 18, s. 135 
101. Powers of patent attorneys-( 1) A patent 
attorney-
(a) Shall be entitled to prepare all docuITlents, transact all 
business, and conduct all proceedings for the 
purposes of this Act; and 
(b) Shall have such other rights and privileges as may be 
prescribed. 
(2) Nothing in this section shall authorise a patent attorney 
to transact business or conduct proceedings in a Court. 
(3) A patent attorney shall not be guilty of an offence 
against [section 18 of the Law Practitioners Act 1955] by 
reason only of the preparation by hiITl of any document for use 
in proceedings under this Act before the COITlInissioner. 
Cf. Patents Act 1949, s. 88 (5) (U.K.) 
In subs. (3), s. 18 of the Law Practitioners Act 1955, being the corresponding 
enactInent in force at the date of this reprint, has been substituted for s. 40 of the 
repealed Law Practitioners Act 1931. 
102. Cancellation of registration of patent attorneys­
(1) The Court, on application ITlade by the COITlInissioner or 
by the New Zealand Institute of Patent Attorneys 
Incorporated with the leave in writing of the Attorney­
General, may order the removal from the register of patent 
attorneys of the name of any patent attorney or the 
suspension from practice before the Patent Office of any 
patent attorney who-IP IN 11 INZL/P /1 
Page 92 
R. S. Vol. 10 Patents Act 1953 653 
91 
(a) Is convicted of a criITle involving dishonesty [within the 
meaning of section 2 of the Crimes Act 1961]; or 
(b) Has been guilty of misconduct in his professional 
capacity and by reason thereof is not a fit and 
proper person to practise as a patent attorney; or 
(c) Has otherwise been guilty of grave impropriety or 
infamous conduct and by reason thereof is not a fit 
and proper person to practise as a patent attorney. 
(2) The COITlmissioner and the New Zealand Institute of 
Patent Attorneys Incorporated shall be entitled to appear and 
be heard on any such application. 
(3) No person whose name has been removed from the 
register of patent attorneys under this section shall be again 
entered thereon except by direction of the Court. 
In subs. (1) (a) the words in square brackets were substituted for the words "as 
defined by section 237 of the Crim.es Act 1908" by s. 411 (1) of the Crim.es Act 196i. 
103. Restrictions on practice as patent attorney­
(1) No person either alone or in partnership shall carry on 
business, practise, act, describe hiITIself or hold himself out, or 
permit himself to be described or held out, as a patent 
attorney or patent agent unless he is registered as a patent 
attorney, or, as the case may be, unless he and all his partners 
are so registered. 
(2) No company shall carry on business, practise, act, 
describe itself or hold itself out, or permit itself to be described 
or held out, as a patent attorney or patent agent: 
Provided that this subsection shall not apply in the case of 
any company which was immediately before the COITImence­
ment of this Act carrying on business as a patent attorney 
during any period or periods while a manager or director of 
the company is registered as a patent attorney. 
(3) For the purposes of this section a person who or a 
company which undertakes for gain in New Zealand-
(a) To apply for or obtain patents in New Zealand or 
elsewhere; or 
(b) To prepare specifications or other documents for the 
purposes of this Act or of the patent law of any 
country; or 
(c) To give advice other than of a scientific or technicial 
nature as to the validity of patents or their 
infringemen t-
shall be deemed to carry on business as a patent attorney. 
(4) Any person who or company which fails to comply with 
or acts in contravention of the provisions of this section 654 
92 Patents IP/N/I/NZL/P/l 
Page 93 
R.S. Vol. 10 
commits an offence, and shall be liable on sUIl1ll1ary 
conviction to a fine not exceeeding [$200]. 
(5) Nothing in this section shall be construed as prohibiting 
barristers or solicitors of the [High Court] of New Zealand 
from giving professional advice or taking such part in 
proceedings under this Act as has heretofore been taken by 
them. 
(6) Nothing in this section shall prevent the personal 
representative of a deceased patent attorney from carrying on 
the business or practice of the deceased patent attorney for a 
period not exceeding 3 years from the date of the death of the 
patent attorney, or for such further period (if any) as the 
Court may allow, if the personal representative is himself 
registered as a patent attorney or employs a person who is 
registered as a patent attorney to ITlanage the business or 
practice. 
Cf. 1921-22, No. 18, s. 135 
104. Recovery of patent attorney's charges-( 1) No 
patent attorney shall commence or maintain any action for 
the recovery of any fees, charges, or disburselllents paid or 
incurred or made by hiITl for any business done by him as a 
patent attorney until the expiration of 7 days after a bill of the 
fees, charges and disburselllents, signed by him (or, in the 
case of a partnership, by any of the partners with the naITle of 
the partnership), or enclosed in or accompanied by a letter 
signed in like manner referring to the bill, has been delivered 
to the party chargeable. 
(2) The delivery may be effected either by personal delivery 
to the party chargeable or by leaving the bill or letter for him 
at his place of business, or dwellinghouse, or last known place 
of abode, or by forwarding it to him by post in a registered 
letter addressed to him as aforesaid. Where it is forwarded by 
post as aforesaid, it shall be deemed to have been delivered at 
the time at which the letter would have been delivered in the 
ordinary course of post. 
Cf. 1921-22, No. 18, s. 137 
Offences 
105. Falsification of register, etc.-Every person who 
ITlakes or causes to be ITlade a false entry in any register kept 
under this Act, or a writing falsely purporting to be a copy of 
an entry in any such register, or produces or tenders or causes 
to be produced or tendered in evidence any such writing, IP/N/l INZL/PI 1 
Page 94 
R.S. Val. 10 Patents Act 1953 655 
93 
knowing the entry or writing to be false, commits an offence, 
and shall be liable on conviction on indictment to 
imprisonment for any term not exceeding 2 years. 
Cf. Patents Act 1949, s.90 (U.K.); 1921-22, No. 18, 
s. 143 
As to the summary jurisdiction of a District Court Judge under this section, see s. 6 of 
the Summary Proceedings Act 1957. 
106. Unauthorised clailD of patent rights-Cl) Every 
person who falsely represents that he or another person is the 
patentee of an invention or that he or another person has 
applied for a patent for an invention commits an offence and 
shall be liable on summary conviction to a fine not exceeding 
[$200]. 
(2) Every person who falsely represents that an article sold 
by him is patented in New Zealand or is the subject of an 
application for a patent in New Zealand commits an offence 
and shall be liable on summary convictioI) to a fine not 
exceeding [$100]. 
(3) For the purposes of this section-
(a) A person shall be deemed to represent that an article is 
patented in New Zealand if there is stamped, 
engraved, or impressed on, or otherwise applied to, 
the article the word "patent" or "patented", the 
words "provisional patent", or some other word or 
words expressing or implying that a patent for the 
article has been obtained in New Zealand; and 
(b) A person shall be deemed to represent that an article is 
the subject of an application for a patent in New 
Zealand if there are stamped, engraved, or 
impressed on or otherwise applied to the article the 
words "patent applied for" or "patent pending" or 
some other word or words implying that an 
application for a patent for the article has been 
made in New Zealand: 
Provided that it shall be sufficient defence to any 
p"rosecution under this subsection to show that the article was 
patented or was the subject of an application for a patent at 
the time when and in the country where the words were 
stamped, engraved, or impressed on or otherwise applied to 
it. 
(4) Every person who uses on his place of business or on 
any document issued by him or otherwise the words "Patent 
Office", or any other words suggesting that his place of 656 
94 Patents IP/N/I/NZL/P/l 
Page 95 
R.S. Vol. 10 
business is or is officially connected with the Patent Office, 
commits an offence and shall be liable on sumITlary conviction 
to a fine not exceeding [$100]. 
Cf. Patents Act 1949, s. 91 (U.K.); 1921-22, No. 18, 
s. 143 
[107. Protection of Royal Ar:rns, etc.-The grant of a 
patent under this Act shall not in itself authorise the patentee 
to use or place on any patented article any representation 
specified in sections 12 to 15 of the Flags, Emblems, and 
N aITles Protection Act 1981.] 
This section was substituted for the original s. 107 by s. 27 (1) of the Flags, Emblems, 
and ~ ames Protection Act 1981. 
108. Offences by co:rnpanies-Where an offence against 
section 25, section 26, section 103, or section 105 of this Act is 
committed by a body corporate, every person who at the time 
of the commission of the offence is a director, general 
ITlanager, secretary, or other similar officer of the body 
corporate, or is purporting to act in any such capacity, shall 
be deeITled to be guilty of that offence unless he proves that 
the offence was comITlitted without his consent or connivance 
and that he exercised all such diligence to prevent the 
commission of the offence as he ought to have exercised 
having regard to the nature of his functions in that capacity 
and to all the circumstances. 
C£. Patents Act 1949, s. 93 (U.K.) 
109. Repealed by s. 214 (1) of the Summary Proceedings Act 
1957. 
!v1iscellaneous 
110. Service of notices, etc., by post-Cl) Any notice 
required or authorised to be given by or under this Act, and 
any application or other document so authorised or required 
to be ITlade or filed, may be given, mad~, or filed by sending it 
by post in a letter addressed to the person concerned at his 
usual or last known address. 
(2) Where any notice is sent by the Commissioner to any 
person by post as aforesaid the notice shall be deemed to have 
been given at the time when the letter containing it would 
have been delivered in the ordinary course of post. 
C£. Patents Act 1949, s. 97 (C.K.); 1921-22, No. 18, 
s. 132 IP/N/I/NZL/P/l 
Page 96 
R.S. Vol. 10 Patents Act 1953 657 
95 
111. Declaration by person under disability-( 1) If any 
person is incapable of making any declaration, or doing 
anything required or permitted by or under this Act because 
he is not of full age and capacity, the guardian, committee, or 
statutory administrator (if any) of the person subject to the 
disability, or (if there is none) any person appointed by any 
Court possessing jurisdiction in respect of his property, may 
make that declaration; or a declaration as nearly 
corresponding thereto as circumstances permit, and do that 
thing in the nallle and on behalf of the person subject to the 
disa bili ty. 
(2) An appointment may be made by the Court for the 
purposes of this section upon the application of any person 
acting on behalf of the person subject to the disability, or of 
any other person interested in the making of the declaration 
or the doing of the thing. 
Cf. 1921-22, No. 18, s. 134 
112. Journal, indexes, etc.-( 1) The Commissioner shall 
issue periodically a journal to be called the Patent Office 
Journal, and, subject to the provisions of subsection (1) of 
section 91 of this Act, shall publish therein all such 
particulars of applications for patents (whether filed before or 
after the commencement of this Act) as are prescribed by 
regulations made under this Act and all such other matters as 
are directed by this Act or otherwise by law to be published 
therein and such other matters and information as may 
appear to him to be useful or important to proprietors of 
patents registered or subsisting in New Zealand. 
(2) The Commissioner may prepare and publish in such 
form as he deems expedient indexes, specifications, 
abridgrnents of specifications, catalogues, and other works 
relating to inventions and patents as he thinks fit. 
(3) The Comrnissioner may maintain and revise from time 
to time a classification by subject-matter of specifications filed 
in New Zealand and open to public inspection and of such 
printed publications relating to patents published in New 
Zealand as may be necessary or useful for the purpose of 
determining with readiness and accuracy the novelty of 
inventions for which applications for patents are filed. 
Cf. 1946, No. 32, s. 6 
113. Rules of Court-( 1) Rules regulating the practice 
and procedure of the Court in proceedings under this Act may 
be made in accordance wi th-the provisions of section 3 of the 658 
96 Patents IP/NI 1 INZL/PI 1 
Page 97 
R.S. Vo!. 10 
Judicature Amendment Act 1930. Subject thereto, such 
proceedings shall be taken in accordance wi th the practice 
and procedure of the Court in like cases. 
(2) Any such rules may make provIsIon for the 
appointrnent of scientific advisers to assist the Court in 
proceedings for infringement of patents and in proceedings 
under this Act and for regulating the functions and 
remuneration of those advisers. 
(3) Any action for infringement of a patent shall be tried 
without a jury, unless the Court otherwise directs. 
Cf. Patents Act 1949, s.84 (U.K.); 1921-22, No. 18, 
s. 139 
114. Regulations-Cl) Subject to the provIsIons of this 
Act, the Governor-General may from time to time, by Order 
in Council, make all such regulations as may in his opinion be 
necessary or expedient for giving effect to the provisions of 
this Act and for the due administration thereof. 
(2) Without limiting the general power conferred by 
subsection (1) of this section, it is hereby declared that 
regulations may be rnade under this section for all or any of 
the following purposes: 
(a) For regulating the business of tlle Patent Off~ce in 
rela tion to paten ts: 
Cb) For regulating all rnatters by this Act placed under the 
direction or control of the Commissioner: 
Cc) For prescribing the form and manner of execution of 
applications for patents and of any specifications, 
drawings, or other documents which may be filed at 
the Patent Office, and for requiring copies to be 
furnished of any such docuITlents: 
(d) For regulating the procedure to be followed In 
connection with any application or request to the 
Commissioner or in connection with any proceeding 
before the Commissioner and for authorising the 
rectification of irregularities of procedure: 
(e) For regulating the keeping of the register of patent 
attorneys: 
(f) For regulating the registration of patent attorneys, and 
for prescribing the terITlS and conditions of their 
regis tra tion: 
(g) For regulating the procedure for removing the names of 
patent attorneys from the register of patent 
attorneys and for suspending patent attorneys from 
practice before the Patent Office: IP/N/l INZL/PI 1 
Page 98 
R.S. Vol. 10 659 
97 
Ch) Prescribing classes of persons whom the Comrnissioner 
may refuse to recognise as agents in respect of 
proceedings under this Act: Patents Act 1953 
(i) For authorising the preparation, publication, sale, and 
exchange of copies of specifications, drawings, and 
other documents in the Patent Office and of indexes 
to and abridgments of them: 
(j) For prescribing the mode of advertising any matter 
which by this Act is required to be advertised: 
Ck) For prescribing anything authorised or required by this 
Act to be prescribed by regulations. 
(3) All regulations made under this Act shall be laid before 
Parliament within 28 days after the date of the making thereof 
if Parliament is then in session, and, if not, shall be laid before 
Parliament within 28 days after the date of the 
commencement of the next ensuing session. 
Cf. Patents Act 1949, s.94 (U.K.); 1921-22, No. 18, 
s. 138 
In subs. (2) (h) the word "Commissioner" has been substituted for the word 
"Commission" in order to correct an obvious error. 
115. Fees-( 1) Subject to the provisions of this Act, there 
shall be paid in respect of the grant of patents and 
applications therefor, and in respect of other matters relating 
to patents arising under this Act, such fees as rnay be frorn 
time to tirne prescribed by regulations rnade under this Act, 
and all such fees shall be paid into the Public Account to the 
credit of the [Consolidated Account]. 
(2) Any sum paid to the Cornrnissioner by mistake, or any 
surn the payment of which is not required by the regulations 
made under this Act, ITlay be refunded by the comITlissioner, 
and all rnoney so refunded shall be paid out of the 
[Consolidated Account] without further appropriation than 
this Act. 
C£. Patents Act 1949, s.99 (C.K.); 1921-22, No. 18, 
s. 117 
In subss. (l) and (2) the reference to the Consolidated Account was by s. 114 (6) of 
the Public Finance Act 1977 substituted for a reference to the Consolidated Revenue 
Account (as substituted by s. 4 (4) of the Public Revenues Amendment Act 1963 for a 
reference to the Consolidated Fund). 
116. Annual report of COlDtnissioner-( 1) The Com­
ITlissioner shall, during the month of April in every year, 
furnish to the Minister a report with respect to the operation 
of this Act, and every· such report shall include an account of 
all fees, salaries, allowances, and other money received and 
paid under this Act during the previous year. IP/N/I/NZL/P/l 
Page 99 
660 Patents R.S. VDl. 10 
98 
(2) A copy of the report shall be laid before Parliament 
within 28 days after the date on which it is furnished to the 
Minister if ParliaITlent is then in session, and, if not, shall be 
laid before Parliament within 28 days after the date of the 
COITlITlencement of the next ensuing session. 
Cf. Patents Act 1949, s. 100 (U.K.); 1921-22, ,No. 18, 
s. 128 
As to the extension of the report to the operation of the Designs Act 1953, see s. 49 of 
that Act; and as to its extension to the operation of the Trade Marks Act 1953, see s. 83 
of that Act. 
117. Saving for Royal prerogative, etc.-(l) Nothing in 
this Act shall take away, abridge, or prejudicially affect the 
prerogative of the Crown in relation to the granting of letters 
patent or to the withholding of a grant thereof. 
(2) Nothing in this Act shall affect the right of the Crown or 
of any person deriving title directly or indirectly froIn the 
Crown to sell or use articles forfeited under the laws relating 
to Customs or excise. 
Cf. Patents Act 1949, s. 102 (U.K); 1921-22, No. 18, 
ss. 32 (4), 145 
118. Application of Act to Tokelau-This Act shall be in 
force in [Tokelau]. 
The reference to Tokelau was substituted for a reference to the Tokelau Islands by 
s. 3 (8) of the Tokelau Amendment Act 1976. See s. 6 of the Tokelau Act 1948. 
This Act is in force in ="iue; see s. 698 of the Xiue Act 1966. 
This Act is in force in the Cook Islands; see s. 635 of the Cook Islands Act 1915. 
119. Repeals and savings-Cl) The enactments specified 
in the First Schedule to this Act are hereby repealed. 
(2) The regulations specified in the Second Schedule to this 
Act are hereby revoked.: 
(3) Without limiting the provisions of the Acts Interpreta­
tion Act 1924, it is hereby declared that-
Ca) The repeal or revocation of any provision by this Act 
shall not affect any docuInent made or any thing 
whatsoever done under the provision so repealed or 
revoked or under any corresponding former 
provision, and every such document or thing, so far 
as it is subsisting or in force at the time of the repeal 
or revocation and could have been made or done 
under this Act, shall continue and have effect as if it 
had been made or done under the corresponding 
provision of this Act and as if tha t provision had 
been in force when the document was made or the 
thing was done: IP/N/l/NZL/P/l 
Page 100 
R. S. Vo!. 10 Patents Act 1953 661 
99 
(b) The transitional provIsIons set out in the Third 
Schedule to this Act shall have effect for the 
purposes of the transi tion to the provisions of this 
Act frolll the law in force before the cornrnencelllent 
of this Act. 
Cf. Patents Act 1949, s. 106 (U.K.) 
SCHEDULES 
FIRST SCHEDULE Section 1 19 (1) 
ENACTMEXTS REPEALED 
1908, No. 140-The Patents, Designs, and Trade Marks Act 1908: The 
definition of the expression "true and first inventor" in 
section 2. 
1921-22, No. 18-The Patents, Designs, and Trade Marks Act 1921-22: 
Part I; and Part IV in its application to patents. (1931 
Reprint, Vol. VI, p. 656.) 
1924, No. 40-The Patents, Designs, and Trade Marks Amendment Act 
1924. (1931 Reprint, Vol. VI, p. 736.) 
1929, No. 14-The Patents, Designs,- and Trade Marks Amendment Act 
1929. (1931 Reprint, Vol. VI, p. 738.) 
1939, No. 26-The Patents, Designs, and Trade Marks Amendment Act 
1939: Sections 53, 54, 55, and 71 in their application to 
patents; and sections 56 to 68 and 72 and 73. 
1943, No. 6.-The Patents, Designs, and Trade Marks Amendment Act 
1943: Sections 5 and 7 in their application to patents; 
and sections 2 to 4. 
1946, No. 32-The Patents, Designs, and Trade Marks Amendment Act 
1946: Sections 3, 4, 6, and 7 in their application to 
patents; and sections 2 and 5. 
1947, No. 37-The Patents, Designs, and Trade Marks Arrlendment Act 
1947: Section 5 in its a pplica tion to patents; and 
sections 3, 4, and 6. 
1947, No. 66-The Emergency Regulations Continuance Act 1947: So 
much of the Second Schedule as relates to the Patents, 
Designs, Trade Marks, and Copyright Emergency 
Regulations 1940 and Amendment No. 1 thereof. 
1953, ~o. 54-The Stamp Duties Amendment Act 1953: So much of the 
Schedule as relates to the Patents, Designs, and Trade 
Marks Act 1921-22. 662 
100 Patents 
Section 119 (2) SECO~D SCHEDULE 
REGCLATIO:\'"S REVOKED 
The Patents, Designs, 
Emergency Regulations 
Amendment No. 1 
Amendment No. 2 
Amendment No. 3 
Amendment No. 4 Title 
Trade 
1940 Marks, and 
Section 119 
(3) (b) THIRD SC·HEDULE 
TRA~SITIO~AL PROVISIONS IP/N/1/NZL/P/1 
Page 101 
R.S. Vol. 10 
Copyright Serial 
Number 
1940/60 
1943/91 
1947/198 
1948/43 
1948/118 
1. Subject to the provisions of this Schedule, any Order in Council, 
regulation, order, requirement, certificate, notice, decision, direction, 
authorisation, consent, application, request, or thing made, issued, given, 
or done under any enactment repealed by this Act shall, if in force at the 
commencement of this Act, and so far as it could have been made, issued, 
given, or done under this Act, continue in force and have effect as if made, 
issued, given, or done under the corresponding enactment of this Act. 
2. Section 11 of this Act shall apply in relation to a complete 
specification filed before the commencement of this Act as it applies to a 
complete specification filed after the commencement of this Act: 
Provided that for the purposes of the said section 11 a claim of apy such 
specification filed after a provisional specification shall be deemed to be 
fairly based on the matter disclosed in the provisional specification unless 
the claim is for a further invention or an invention different from that 
contained in the provisional specification. 
3. Nonvithstanding anything in subsection (2) of section 9 of this Act, a 
complete specification shall not be filed in pursuance of an application 
~hich, by virtue of section 7 of the Patents, Designs, and Trade Marks Act 
1921-22 ~as deemed to be abandoned at any time before the 
commencement of this Act. 
4. Where a complete specification has been filed before the 
commencement of this Act but has not been accepted, then, in relation to 
matters arising before the acceptance or refusal of acceptance of the 
complete specification, the provisions of this Act shall not apply, but the 
provisions of the Patents, Designs, and Trade Marks Act 1921-22 shall 
continue to apply, not~ithstanding the repeal thereof. 
5. The provisions of sections 21 and 42 of this Act relating to the 
grounds on ~hich the grant of a patent may be opposed or on which a 
patent may be revoked by the Commissioner shall not apply in any case 
~here the complete specification was accepted before the commencement 
of this Act, but the provisions of the Patents, Designs, and Trade Marks 
Act 1921-22, .relating to those matters shall continue to apply in any such 
case not~i ths tanding the repeal thereof. 
6. The po~er of the Commissioner under section 22 of this Act to refuse 
the grant of a patent unless the complete specification is amended to his 
satisfaction shall not be exercisable in relation to any complete 
specification ~hich was accepted before the commencement of this Act. IP/N/1/NZL/P/1 
Page 102 
R.S. Vol. 10 Patents Act 1953 
THIRD SCHEDGLE-continued 663 
101 
7. The provisions of section 62 of this Act shall apply in relation to any 
application for a patent ITIade before the commencement of this Act as 
they apply in relation to such an application made after the 
commencemen t of this Act. 
B. Where, in relation to any invention, the time for giving notice to the 
Commissioner under section 50 of the Patents, Designs, and Trade Marks 
Act 1921-22 expired before the COITImencemen t of this Act and the notice 
was not given, subsections (2) and (4) of section 60 of this Act shall not 
apply in relation to that invention or any patent for that invention. 
9. In relation to a complete specification which was accepted before the 
COITlmencemen t of this Act, this Act shall have effect as if for the words 
"the date of the publication", wherever those words occur, there were 
substituted the words "the date of the acceptance". 
1 o. Where a specification filed before the commencement of this Act has 
become open to public inspection, it shall continue to be open to public 
inspection notwithstanding anything in section 91 of this Act. 
I-I. Where a specification which, before the COll1mencement of this Act, 
has become open to public inspection under paragraph (a) of subsection 
(3) of section 144 of the Patents, Designs, and Trade Marks Act 1921-22, 
the proviso to subsection (7) of section 55 of the Patents, Designs, and 
Trade Marks Amendment Act 1939, or section 5 of the Patents, Designs, 
and Trade Marks AITlendITlent Act 1946 has been aITlended before 
acceptance, nothing in subsection (2) of section 40 of this Act shall be 
construed as authorising reference to be made, in construing the 
specification, to the specification as it subsisted before acceptance. 
12. Where 2 or ITlore persons are registered as grantee or proprietor in 
respect of a patent which was granted or for which application was ITlade 
before the COITlITlenceITlent of this Act, the right of each of those persons to 
assign the whole or part of his interest in the patent shall not be restricted 
by reason only of the provisions of section 63 of this Act. 
13. A condition of any con tract in force iITlmedia tel y before the 
commenceITlent of this Act shall not be invalidated by reason only of the 
provisions of section 66 of this Act. 
14. Notwithstanding the repeal of section 44 of the Patents, Designs, 
and Trade Marks Act 1921-22, subsection (lA) of that section, as set out 
in section 67 of the Patents, Designs, and Trade Marks Act 1939, shall 
continue to apply in any case where the complete specification was filed 
before the commenceITlen t of this Act. 
15. Subsections (1) and (3) of section 30 of this Act shall not apply to 
any patent granted before the commenceITlent of this Act. 
16. Subsection (1) of section 34 of this Act shall apply in relation to any 
application ITlade before the commencement of this Act as it applies in 
relation to an application made after the commencement of this Act. 
17. Section 35 of this Act shall have effect, in relation to a patent which 
has ceased to have effect before the commencement of this Act, as if for the 
reference to section 30 of this Act there were substituted a reference to 
section 19 of the Patents, Designs, and Trade Marks Act 1921-22. 
lB. Where the time allowed under section 59 of the Patents, Designs, 
and Trade Marks AmendITIent Act 1939 for the sealing of a patent has 
expired before the commencement of this Act and the patent has not been 
sealed, section 36 of this Act shall have effect in relation to the application 664 
102 Patents 
THIRD SCHEDCLE-continued IP/N/1/NZL/P/1 
Page 103 
R.S. Vol. 10 
for the patent as if for the reference to section 27 of this Act there were 
substituted a reference to section 59 of the Patents, Designs, and Trade 
Marks Amendment Act 1939. 
19. Where the time allowed under section 72 of the Patents, Designs, 
and Trade Marks Amendment Act 1939 for the acceptance of a cornplete 
specifica tion has expired before the COlTlmencemen t of this Act and the 
complete specification has not been accepted, section 37 of this Act shall 
have effect in relation to the application for the patent as if for every 
reference to section 19 or section 93 of this Act there were substituted a 
reference to section 72 of the Patents, Designs, and Trade Marks 
Amendment Act 1939. 
20. In relation to any proceedings pending at the commencement of this 
Act the provisions of sections 39 and 71 of this Act shall not apply, but the 
provisions of section 24 of the Patents, Designs, and Trade Marks Act 
1921-22 and of subsection (2) of section 64 of the Patents, Designs, and 
Trade Marks Arnendm.ent Act 1939 shall continue to apply 
notwi ths tanding the repeal of those enactmen ts. 
21. Section 72 of this Act shall not apply in relation to any infringement 
of a patent comm.itted before the commencement of this Act. 
22. Nothing in this Act shall affect the term of any patent granted before 
the commencement of this Act. 
23. Any document referring to any enactlTlent repealed by this Act shall 
be construed as referring to the corresponding enactrnent of this Act. 
24. Where any application or proceeding under the regulations revoked 
by the Second Schedule to this Act has been filed or commenced before 
the COlTllTlencem.ent of this Act, or where any application or proceeding 
could (if those regulations remained in force) be filed or cOlTllTlenced after 
the COlTllTlencemen t of this Act and be accorded a date before the 
commencement of this Act, the application or proceeding may be filed, 
commenced, continued, and completed as if the said regulations 
continued in force. Any patent granted before or after the commencernent 
of this Act with an extension under regulation 8 of the Patents, Designs, 
Trade· Marks, and Copyright Emergency Regulations 1940 shall be 
subject to the conditions which would be imposed by that regulation if it 
con tin ued in force. 
THE PATENTS AMENDMENT ACT 1972 
1972, No. 91 
An Act to amend the Patents Act 1953 
[20 October 1972 
1. Short Title--This Act may be cited as the Patents 
Amendrnent Act 1972, and shall be read together with and 
deemed part of the Patents Act 1953 (hereinafter referred to 
as the principal Act). 
2. This section inserted s. 93A In the principal Act. 
3. This section added para. (k) to s. 21 (1) of the principal Act. IP/N/1/NZL/P/1 
Page 104 
R.S. Val. 10 Patents Amendment Act 1976 
THE PATENTS AMENDMENT ACT 1976 
1976, No. 112 
An Act to anlend the Patents Act 1953 665 
103 
[9 December 1976 
1. Short Title--This Act may be cited as the Patents 
Amendment Act 1976, and shall be read together with and 
deemed part of the Patents Act 1953 (hereinafter referred to 
as the principal Act). 
2. (1) This subsection substituted a new subsection for subs. (2) of 
s. 5 of the principal Act. 
(2) This subsection inserted s. 5A in the principal Act. 
3. This section amended s. 97 (2) of the principal Act. 
The Patents Act 1953 is administered in the Department of J usticeo 
\\OELLI::-:CTO::-:, :.'\:"E\\- ZE.~L.-"SD Printed under the authority of the :.'\:"ew Zealand 
Government by P. D. H_~SSELBERC, Government Printer-1982 
798J4£-82PTK IP IN I lINZL/P /1 
Page 105 
1992 Patents Amendment No. 81 
ANALYSIS 
Title 
1. Short Title and COITunencement 
2. Interpretation 
3. Persons entitled to make application 
4. Examination of application 
5. Conunissioner may require information 
as to corresponding applications 
overseas 
6. Time for putting application in order 
for acceptance 
7. New heading and sections inserted 
Treaty Application 
26A. Treaty application deemed to 
be application accompanied 
by complete specification 
268. Description, claims, and 
drawings 26c. International filing date 
26D. Commissioner to provide 
international filing date 
26E. Amendments to documents 
forming part of complete 
specification 
26F. Treaty application void 
26G. Requirements for examination 
of Treaty application 
26H. Publication of Treaty 
applications 
8. Repeal of section dealing with inven­
tions relating to food or medicine, 
ete. 
9. Regulations 
10. Fees 
1 1. Annual report of COll1ll1issioner 
Schedules 
1992, No. 81 
An Act to atTlend the Patents Act 1958 
[18 August 1992 
BE IT ENACTED by the Parliament of New Zealand as follows: 
1. Short Title and cOlIltnencetnent-( 1) This Act may be 
cited as the Patents Amendment Act 1992, and shall be read 
together with and deerned part of the Patents Act 1953 
(hereinafter referred to as the principal Act). 
(2) Except as provided in subsection (3) of this section, this 
Act shall corne into force on the 1st day of December 1992. 
(3) Sections 3, 8, and 11 of this Act shall come into force on 
the day after the date on which this Act receives the Royal 
assent. 
2. Interpretation-Section 2 (1) of the principal Act is 
hereby amended by inserting, in their appropriate alphabetical 
order, the following definitions: 
Public-8 1 Price Code: 15D-F 2 IP/N/1/NZL/P/1 
Page 106 
Patents Amendment 1992, No. 81 
" 'International application' means an application made 
under the Patent Cooperation Treaty for the 
protection of an invention: 
" 'International Bureau' means the International Bureau of 
the World Intellectual Property Organization: 
" 'International filing date' means the international filing 
date given to an international application under 
Article 11 or Article 14 (2) of the Patent Cooperation 
Treaty: 
" 'Patent Cooperation Treaty'-
"(a) Means the Patent Cooperation Treaty, signed 
at Washington on the 19th day of June 1970, the text 
of which, as amended on the 2nd day of October 
1979 and modified on the 3rd day of February 1984, 
is set out in the First Schedule to the Patents 
Amendment Act 1992; and 
"(b) Includes any amendments, modifications, and 
revisions from time to time made to the Treaty, being 
amendments, modifications, and revisions to which 
New Zealand is a party and by which New Zealand is 
bound: 
" 'Receiving Office' has the same meaning as in Article 
2 (xv) of the Patent Cooperation Treaty: 
" 'Treaty application' means an international 
application-
"(a) Which contains a request specifying New 
Zealand as a designated State under Article 4 (1) (ii) of 
the Patent Cooperation Treaty; and 
"(b) Which has been given an international filing 
date: 
" 'Treaty regulations'-
"(a) Means the regulations made under the Patent 
Cooperation Treaty and set out in the Second 
Schedule to the Patents Amendment Act 1992; and 
"(b) Includes any amendments from time to time 
made to those regulations." 
8. Persons entitled to tnak.e application-Section 7 of 
the principal Act is hereby amended by inserting, after 
subsection (2), the following subsection: 
"(2A) For the purposes of this section, where more than one 
application for protection in a convention country has been 
made, the first application may be disregarded and the second 
application shall be substituted for the first application where-1992, No. 81 Patents Amendment IP/NI 1 INZL/PI 1 
Page 107 
3 
"(a) The first application was Il1ade in or in respect of the 
same convention country and by the same applicant 
as the second application; and 
"(b) Not later than the date of filing of the second 
application, the first application was unconditionally 
withdrawn, abandoned, or refused; and-
"(i) The first application had not been made 
available to the public in New Zealand or elsewhere 
before its unconditional withdrawal, abandonment, 
or refusal; and 
"(ii) No rights reIl1ain outstanding in respect of 
the first application; and 
"(iii) The first application has not served to 
establish a priority date (as defined in section 2 of 
this Act) in relation to another application in any 
country. " " 
4. Exatnination of application-Section 12 (1) of the 
Erincipal Act is herebx aIl1ended by inserting, before the word 
'When", the words' Subject to section 26c of this Act,". 
5. COnl.nl.issioner nl.ay require infonnation as to 
corresponding applications overseas-( 1) Section 15 of the 
Erincipal Act is hereby amended by inserting, before the' word 
'For", the words "Subject to subsection (2) of this section,". 
(2) Section 15 of the principal Act is hereby further amended 
by adding, as subsection (2), the following subsection: 
"(2) This section shall not apply to Treaty applications." 
6. TilDe for putting aprlication in order for 
acceptance-( 1) Section 19 (1) 0 the princiEal Act is hereby 
aIllended by inserting, before the word 'An", the words 
"Subject to subsection (lA) of this section,". 
(2) Section 19 of the principal Act is hereby further aIllended 
by inserting, after subsection (1), the following subsection: 
"( 1 A) The time period allowed in subsection (1) of this 
section, in relation to a Treaty application, shall commence on 
the day on which the applicant fulfils the applicant's obligations 
under Article 22 (1) or Article 39 (1) of the Patent Cooperation 
Treaty, as the case Illay require." 
7. New heading and sections inserted-The principal Act 
is hereby aIllended by inserting, after section 26, the following 
heading and sections: 4 IP/N/1/NZL/P/1 
Page 108 
Patents Amendment 1992, No. 81 
"Treaty Application 
"26A. Treaty application deelIled to be application 
accolIlpanied by cOlIlplete specification-For the purposes 
of this Act, a Treaty application shall be deemed to be an 
application for a patent for an invention accompanied by a 
complete specification. 
"26B. Description, clailIls, and drawings-(I) The 
description, claims, and drawings (if any) contained in a Treaty 
application shall be deemed to be a complete specification for 
the purposes of this Act. 
"(2) Any indications, being indications referred to in Rule 
13 blS. 3 (a) of the Treaty regulations, that are contained in a 
reference to a deposited rnicro-organism,-
"(a) Shall be deemed to form part of the description 
contained in an international application; and 
"(b) Shall accordingly, pursuant to subsection (1) of this 
section, form part of the complete specification, 
even if such indications are contained in another 
document. 
"26c. International filing date-A Treaty application shall 
be deemed to have been filed in New Zealand on its 
international filing date. 
"26D. COlIllIlissioner to provide international filing 
date-( 1) Subject to subsections (2) and (3) of this section, 
where-
"(a) A request contained 'in an international application 
specifies New Zealand as a designated State under 
Article 4 (1) (ii) of the Patent Cooperation Treaty; 
and 
"(b) Either-
"(i) The receiving Office has refused to accord the 
international application an international filing date 
under Article 11 (1) of the Patent Cooperation 
Treaty or has declared that the international 
application is considered withdrawn; or 
"(ii) The International Bureau has made a finding 
under Article 12 (3) of the Patent Cooperation 
Treaty that the international application is 
considered withdrawn; and 
"(c) The Commissioner has decided under Article 25 (2) (a) of 
the Patent Cooperation Treaty that the refusal or 
the declaration or the finding was the result of an 1992, No. 81 Patents Amendment IP/N/1 INZL/PI 1 
Page 109 
5 
error or omission on the part of the receiving Office 
or the International Bureau,-
the Corrnnissioner shall give the application an international 
filing date, which date shall be the date of receipt of the 
application by the receiving Office under Article 11 (1) of the 
Patent Cooperation Treaty, and the provisions of this Act shall 
apply to the application accordingly. 
"(2) Where, for thefurposes of subsection (1) of this section, 
the date of receipt 0 the application by the receiving Office 
cannot be ascertained, the Corrnnissioner may give the 
application an international filing date, and the provisions of 
tills Act shall apply to the application accordingly. 
"(3) This section shall not apply to an international 
application that has been filed in a receiving Office in a 
language other than the English language, unless a translation 
of that application into the English language, verified in 
accordance with regulations made under this Act, has been 
furnished to the Corrnnissioner. 
"26E. AlDendlDents to docuD1.ents fonning part of 
cOlDplete specification-( 1) Where an English translation of 
a Treaty application has been filed with the Corrnnissioner, or 
has been published under Article 21 of the Patent Cooperation 
Treaty by the International Bureau, the description, claims, and 
any matter associated with the drawings, contained in the 
application, are deemed for the purposes of this Act, to have 
been amended, on the day the translation was filed, by 
substituting the translated documents for those originally filed. 
"(2) Where-
"(a) A Treaty aEplication has been amended under Article 
1 9 (1) of the Patent Cooperation Treaty; or 
"(b) A Treaty application has been amended under Article 34 
of the Patent Cooperation Treaty, and New Zealand 
has been chosen by the applicant to be an elected 
State under Article 31 (4) (a) of the Patent 
Cooperation Treaty within the prescribed time 
lirnit,-
the description, claims, and drawings contained in that Treaty 
application shall be deemed, for the purposes of this Act, to 
have been amended on the day on which the amendment was 
made. 
"(3) Where a Treaty application has been rectified under 
Rule 91 of the Treaty regulations, the description, claims, and 
drawings contained in that Treaty application shall be deemed, IP/N/l/NZL/P/I 
Page 110 
6 Patents Amendment 1992, No. 81 
for the purposes of this Act, to have been amended on the 
application's international filing date. 
"26F.Treaty application void-A Treaty application shall 
be deemed to be void for the purposes of this Act where-
"(a) An applicant withdraws his or her international 
application, or withdraws the application in relation 
to New Zealand as a designated State; or 
"(b) Subject to Article 25 of the Patent Cooperation Treaty, 
an international application is considered to be 
withdrawn pursuant to Article 12 (3) or Article 
14 (1) (b) or Article 14 (3) (a) or Article 14 (4) of the 
Patent Cooperation Treaty; or 
"(c) Subject to Article 25 of the Patent Cooperation Treaty, 
the designation of New Zealand as a designated 
State is considered to be withdrawn pursuant to 
Article 14 (3 ) (b) of the Patent Cooperation Treaty; 
or 
"(d) The applicant fails to fulfil the applicant's obligations 
under Article 22 (1) of the Patent Cooperation 
Treaty within the prescribed time limit; or 
"(e) The applicant fails to fulfil the applicant's obligations 
under Article 39 (1) (a) of the Patent Cooperation 
Treaty within the prescribed time limit. 
"26c. Requirements for examination of Treaty 
application-( 1) Subject to the provisions of subsection (2) of 
this section, and notwithstanding section 26A of this Act, the 
Commissioner shall not exercise his or her powers under 
section 12 of this Act until-
"(a) The applicant has fulfilled the applicant's obligations 
under Article 22 (1) or Article 39 (1) of the Patent 
Cooperation Treaty; and 
"(b) The prescribed time limit has expired; and 
"( c) Where applicable, a translation of the international 
application into the English language has been filed 
with the Commissioner and verified in accordance 
with regulations made under this Act; and 
"( d) All documents required to be filed pursuant to this Act 
and any regulations made under this Act have been 
filed; and 
"(e) All fees required to be paid pursuant to this Act and any 
regulations made under this Act have been paid. 
"(2) Notwithstanding the provisions of subsection (1) of this 
section, the Commissioner may, on the express request of the 1992, No. 81 Patents Amendment IP IN 11 INZL/P 11 
Page 111 
7 
applicant, exercise his or her powers under section 12 of this 
Act at any time. 
"26H. Publication of Treaty applications-The 
publication of a Treaty application, pursuant to Article 21 of 
the Patent Cooperation Treaty, shall confer no rights or 
privileges on the applicant under this Act, and shall have no 
effect other than to confer upon the application the status of a 
published document for the purpose of any investigation under 
this Act." 
8. Repeal of section dealing with inventions relating to 
food or medicine, etc.-( 1) Section 51 of the principal Act is 
hereby repealed. 
(2) Sections 52 (1) and 53 (1) of the principal Act are hereby 
amended by omitting the expression "51" wherever it appears, 
and substituting in each case the expression "50". 
(3) As at the commencement of this section,-
(a) Every application made under section 51 of the principal 
Act, that has not been determined by the 
Commissioner, shall be deemed to be cancelled; and 
(b) Every order made or licence granted under section 51 of 
the principal Act shall be deemed to be cancelled; 
and 
(c) Every appeal pending under section 53 of the principal 
Act in relation to any application or order made 
under section 51 of the principal Act shall be deemed 
to be withdrawn; and 
(d) Every arbitration pending under section 53 of the 
principal Act in relation to any application made 
under section 51 of the principal Act and every order 
or reference made under section 53 (3) of this Act in 
relation to any such arbitration shall be deemed to be 
cancelled. 
9. Regulations-Section 114 (2) of the principal Act is 
hereby amended by adding, after paragraph (k), the following 
paragraph: 
"(1) For the carrying out, or giving effect to, New Zealand's 
obligations under the Patent Cooperation Treaty." 
1 O. Fees-Section 115 of the principal Act is hereby 
amended by adding the following subsection: 
"(3) Fees in respect of international applications may, in 
Arroroance with New Zealand's obligations under the Patent 8 IP/N/1/NZL/P/1 
Page 112 
Patents Amendment 1992, No. 81 
Cooperation Treaty, be collected by the Commissioner on 
behalf of-
"(a) The International Bureau; or 
"(b) Any international search authority that has been 
approved, for the purposes of this subsection, by the 
Minister as an appropriate authority on whose 
behalf the Commissioner may collect such fees." 
11. Annual report of Commissioner-( 1) The principal 
Act is hereby amended by repealing section 116, and 
substituting the following section: 
"116. (1) The Commissioner shall, in July of each year, 
furnish to the Minister a report on the operation of this Act 
during the year ended on the immediately preceding 30th day 
of June. 
"(2) The report shall include an account of fees, salaries, 
allowances, and other money received and paid under this Act 
during that year. 
"(3) The Minister shall lay a copy of the report before the 
House of Representatives within 28 sitting days of receiving it." 
(2) Notwithstanding subsection (1) of this section, the report 
that the Commissioner is required pursuant to that subsection 
to furnish to the Minister in July 1992 shall relate to the period 
commencing on the 1 st day of April 1991 and ending with the 
close of the 30th day of June 1992. 1992, No. 81 Patents Amendment 
SCHEDULES IP/N/1/NZL/P/1 
Page 113 
9 
FIRST SCHEDULE Section 2 
Preamble PATENT COOPERATION TREATY 
Done at Washington on June 19, 1970, 
aInended on October 2, 1979, 
and lDodified on February 8, 1984 
TABLE OF CONTENTS* 
Introductory Provisions 
Article 1: Establishment of a Union 
Article 2: Definitions 
Chapter /: International Application and International Search 
Article 3: 
Article 4: 
Article 5: 
Article 6: 
Article 7: 
Article 8: 
Article 9: 
Article 10: 
Article 11 : 
Article 12: 
Article 13: 
Article 14: 
Article 15: 
Article 16: 
Article 17: 
Article 18: 
Article 19: 
Article 20: 
Article 21: 
Article 22: 
Article 23: 
Article 24: 
Article 25: 
Article 26: 
Article 27: 
Article 28: The International Application 
The Request 
The Description 
The ClaiIns 
The Drawings 
Claiming Priority 
The Applicant 
The Receiving Office 
Filing Date and Effects of the International Application 
TranslTlittal of the International Application to the International Bureau and 
the International Searching Authority 
Availability of Copy of the International Application to Designated Offices 
Certain Defects in the International Application 
The International Search 
The International Searching Authority 
Procedure before the International Searching Authority 
The International Search Report 
Amendment of the ClaiIns before the International Bureau 
Communication to Designated Offices 
International Publication 
Copy, Translation, and Fee, to Designated Offices 
Delaying of National Procedure 
Possible Loss of Effect in Designated States 
Review by Designated Offices 
Opportunity to Correct before Designated Offices 
National Requirements 
Amendment of the Claims, the Description, and the Drawings, before 
Designated Offices 
it This Table of Contents is added for the convenience of the reader. It does not appear in 
the signed text of the Treaty. IP/N/1/NZL/P/1 
Page 114 
10 Patents Amendment 
FIRST SCHEDULE-continued 
PATENT COOPERATION TREATY-Continued 
Article 29: Effects of the International Publication 
Article 30: Confidential Nature of the International Application 
Chapter II: International Preliminary Examination 
Article 31: 
Article 32: 
Article 33: Demand for International Preliminary Examination 
The International Preliminary Examining Authority 
The International Preliminary Examination 1992, No. 81 
Article 34: 
Article 35: Procedure before the International Preliminary Examining Authority 
The International Prelinlinary Examination Report 
Article 36: 
Article 37: 
Article 38: 
Article 39: 
Article 40: 
Article 41: 
Article 42: Transmittal, Translation, and Communication, of the International 
Preliminary Examination Report 
Withdrawal of Demand or Election 
Confidential Nature of the International Preliminary Examination 
Copy, Translation, and Fee, to Elected Offices 
Delaying of National Examination and Other Processing 
Amendment of the Claims, the Description, and the Drawings, before Elected 
Offices 
Results of National Exarrlination in Elected Offices 
Chapter Ill: Common Provisions 
Article 43: 
Article 44: 
Article 45: 
Article 46: 
Article 47: 
Article 48: 
Article 49: Seeking Certain Kinds of Protection 
Seeking Two Kinds of Protection 
Regional Patent Treaties 
Incorrect Translation of the International Application 
Time Limits 
Delay in Meeting Certain Time Limits 
Right to Practice before International Authorities 
Chapter IV: Technical Services 
Article 50: 
Article 51: 
Article 52: Patent Information Services 
Technical Assistance 
Relations with Other Provisions of the Treaty 
Chapter V: Administrative Provisions 
Article 53: 
Article 54: 
Article 55: 
Article 56: 
Article 57: 
Article 58: Assembly 
Executive Committee 
International Bureau 
Committee for Technical Cooperation 
Finances 
Regulations 
Chapter VI: Disputes 
Article 59: Disputes 
Chapter VII: Revision and Amendment 
Article 60: Revision of the Treaty 
Article 61: Amendment of Certain Provisions of the Treaty 1992, No. 81 Patents Amendment IP/N/1/NZL/P/1 
Page 115 
FIRST SCHEDULE-continued 
PATENT COOPERATION TREATY-continued 
Chapter VIII: Final Provisions 
Article 62: 
Article 63: 
Article 64: 
Article 65: 
Article 66: 
Article 67: 
Article 68: 
Article 69: Becoming Party to the Treaty 
Entry into Force of the Treaty 
Reservations 
Gradual Application 
Denunciation 
Signature and Languages 
Depositary Functions 
Notifications 
The Contracting States, 11 
Desiring to make a contribution to the progress of science and 
technology , 
Desiring to perfect the legal protection of inventions, 
Desiring to simplify and render more econorrllcal the obtaining of 
protection for inventions where protection is sought in several countries, 
Desiring to facilitate and accelerate access by the public to the technical 
information contained in documents describing new inventions, 
Desiring to foster and accelerate the econOrrllC development of 
developing countries through the adoption of measures designed to 
increase the efficiency of their legal systems, whether national or regional, 
instituted for the protection of inventions by providing easily accessible 
information on the availability of technological solutions applicable to 
their special needs and by facilitating access to the ever expanding volume 
of modern technology, . 
Convinced that cooperation among nations will greatly facilitate the 
attainment of these aims, 
Have concluded the present Treaty. 
Introduction Provisions 
Article 1 
Establislunent of a Union 
(1) The States party to this Treaty (hereinafter called "the Contracting 
States") constitute a Union for cooperation in the filing, searching, and 
examination, of applications for the protection of inventions, and for 
rendering special technical services. The Union shall be known as the 
International Patent Cooperation Union. 
(2) No provision of this Treaty shall be interpreted as diminishing the 
rights under the Paris Convention for the Protection of Industrial Property 
of any national or resident of any country party to that Convention. 
Article 2 
Definitions 
For the purposes of this Treaty and the Regulations and unless expressly 
stated otherwise: 
(i) "application" means an application for the protection of an 
invention; references to an "application" shall be construed as references 
to applications for patents for inventions, inventors' certificates, utility IP/N/1/NZL/P/1 
Page 116 
12 Patents Amendment 
FIRST SCHEDULE-continued 
PATENT COOPERATION TREATY-Continued 1992, No. 81 
certificates, utility models, patents or certificates of addition, inventors' 
certificates of addition, and utility certificates of addition; 
(ii) references to a "patent" shall be construed as references to 
patents for inventions, inventors' certificates, utility certificates, utility 
1TI0dels, patents or certificates of addition, inventors' certificates of 
addition, and utility certificates of addition; 
(iii) "national patent" lTIeans a patent granted by a national 
authority; 
(iv) "regional patent" means a patent granted by a national or an 
intergovernrnental authority having the power to grant patents effective in 
1l10re than one State; 
(v) "regional application" ll1eans an application for a regional 
patent; 
(vi) references to a "national application" shall be construed as 
references to applications for national patents and regional patents, other 
than applications filed under this Treaty; 
(vii) "international application" means an application filed under 
this Treaty; 
(viii) references to an "application" shall be construed as 
references to international applications and national applications; 
(ix) references to a "patent" shall be construed as references to 
national patents and regional patents; 
(x) references to "national law" shall be construed as references 
to the national law of a Contracting State or, where a regional application 
or a regional patent is involved, to the treaty providing for the filing of 
regional applications or the granting of regional patents; 
(xi) "priority date," for the purposes of COll1puting tiITIe limits, 
means: 
(a) where the international application contains a priority 
claiITI under Article 8, the filing date of the application whose priority is so 
claiITIed; 
(b) where the international application consists several 
priority claiITIs under Article 8, the filing date of the earliest application 
whose priority is so claiITIed; 
(c) where the international application does not contain any 
priority claiITI under Article 8, the international filing date of such 
application; 
(xii) "national Office" means the government authority of a 
Contracting State entrusted with the granting of patents; references to a 
"national Office" shall be construed as refernng also to any inter­
governrnental authority which several States have entrusted with the task 
of granting regional patents, provided that at least one of those States is a 
Contracting State, and provided that the said States have authorized that 
authority to assume the obligations and exercise the powers which this 
Treaty and the Regulations provide for in respect of national Offices; 
(xiii) "designated Office" means the national Office of or acting for 
the State designated by the applicant under Chapter I of this Treaty; 
(xiv) "elected Office" means the national Office of or acting for the 
State elected by the applicant under Chapter 11 of this Treaty; 1992, No. 81 Patents Amendment IP/N/1/NZL/P/1 
Page 117 
FIRST SCHEDULE-continued 
PATENT COOPERATION TREATY-Continued 13 
(xv) "receiving Office" means the national Office or the inter­
governmental organization with which the international application has 
been filed; 
(xvi) "Union" means the International Patent Cooperation Union; 
(xvii) "Assembly" means the Assembly of the Union; 
(xviii) "Organization" means the World Intellectual Property 
Organization; 
(xix) "International Bureau" means the International Bureau of 
the Organization and, as long as it subsists, the United International 
Bureaux for the Protection of Intellectual Property (BIRPI); 
(xx) "Director General" means the Director General of the 
Organization and, as long as BIRPI subsists, the Director of BIRPI. 
CHAPTER I 
International Application and International Search 
Article 8 
The International Application 
( 1) Applications for the protection of inventions in any of the 
Contracting States may be filed as international applications under this 
Treaty. 
(2) An international application shall contain, as specified in this Treaty 
and the Regulations, a request, a description, one or more claims, one or 
more drawings (where required), and an abstract. 
(3) The abstract merely serves the purpose of technical infonnation and 
cannot be taken into account for any other purpose, particularly not for 
the purpose of interpreting the scope of the protection sought. . 
(4) The international application shall: 
(i) be in a prescribed language; 
(ii) comply with the prescribed physical requirements; 
(iii) comply with the prescribed requirement of unity of invention; 
(iv) be subject to the payment of the prescribed fees. 
Article 4: 
The Request 
(1) The request shall contain: 
(i) a petition to the effect that the international application be 
processed according to this Treaty; 
(ii) the designation of the Contracting State or States in which 
protection for the invention is desired on the basis of the international 
application ("designated States"); if for any designated State a regional 
patent is available and the applicant wishes to obtain a regional patent 
rather than a national patent, the request shall so indicate; if, under a 
treaty concerning a regional patent, the applicant cannot limit his 
application to certain of the States party to that treaty, designation of one 
of those States and the indication of the wish to obtain the regional patent 
shall be treated as designation of all the States party to that treaty; if, 
under the national law of the designated State, the designation of that 
State has the effect of an application for a regional patent, the designation 
of the said State shall be treated as an indication of the wish to obtain the 
regional patent; 14 IP IN 11 INZL/P 11 
Page 118 
Patents Amendment 
FIRST SCHEDULE-continued 
PATENT COOPERATION TREATY-Continued 1992, No. 81 
(iii) the name of and other prescribed data concerning the applicant 
and the agent (if any); 
(iv) the title of the invention; 
(v) the name of and other prescribed data concerning the inventor 
where the national law of at least one of the designated States requires that 
these indications be furnished at the time of filing a national application. 
Otherwise, the said indications may be furnished either in the request or in 
separate notices addressed to each designated Office whose national law 
requires the furnishing of the said indications but allows that they be 
furnished at a time later than that of the filing of a national application. 
(2) Every designation shall be subject to the payment of the prescribed 
fee within the prescribed time limit. 
(3) Unless the applicant asks for any of the other kinds of protection 
referred to in Article 43, designation shall mean that the desired protection 
consists of the grant of a patent by or for the designated State. For the 
purposes of this paragraph, Article 2(ii) shall not apply. 
(4) Failure to indicate in the request the name and other prescribed data 
concerning the inventor shall have no consequence in any designated State 
whose national law requires the furnishing of the said indications but 
allows that they be furnished at a time later than that of the filing of a 
national application. Failure to furnish the said indications in a separate 
notice shall have no consequence in any designated State whose national 
law does not require the furnishing of the said indications. 
Article 5 
The Description 
The description shall disclose the invention in a manner sufficiently clear 
and complete for the invention to be carried out by a person skilled in the 
art. 
Article 6 
The ClailDs 
The claim or claims shall define the matter for which protection is 
sought. Claims shall be clear and concise. They shall be fully supported by 
the description. 
Article 7 
The Drawings 
(1) Subject to the provisions of paragraph (2)(ii), drawings shall be 
required when they are necessary for the understanding of the invention. 
(2) Where, without being necessary for the understanding of the 
invention, the nature of the invention admits of illustration by drawings: 
(i) the applicant may include such drawings in the international 
application when filed, 
(ii) any designated Office may require that the applicant file such 
drawings with it within the prescribed time limit. 1992, No. 81 Patent.s Amendment IP/N/1/NZL/P/1 
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Article 8 
ClailDing Priority 15 
(1) The inteITlational application may contain a declaration, as 
prescribed in the Regulations, claiming the priority of one or more earlier 
applications filed in or for any country party to the Paris Convention for 
the Protection of Industrial Property. ' 
(2)(a) Subject to the provisions of subparagraph (b), the conditions for, 
and the effect of, any priority claim declared under paragraph (1) shall be 
as provided in Article 4 of the Stockholm Act of the Paris Convention for 
the Protection of Industrial Property. 
(b) The inteITlational application for which the priority of one or more 
earlier applications filed in or for a Contracting State is claimed may 
contain the designation of that State. Where, in the international 
application, the priority of one or more national applications filed in or for 
a designated State is claimed, or where the priority of an international 
application having designated only one State is claimed, the conditions for, 
and the effect of, the priority claim in that State shall be goveITled by the 
national law of that State. 
Article 9 
The Applicant 
(1) Any resident or national of a Contracting State may file an 
inteITlational application. 
(2) The Assembly may decide to allow the residents and the nationals of 
any country party to the Paris Convention for the Protection of Industrial 
Property which is not party to this Treaty to file international applications. 
(3) The concepts of residence and nationality, and the application of 
those concepts in cases where there are several applicants or where the 
applicants are not the same for all the designated States, are defined in the 
Regulations. 
Article 10 
The Receiving Office 
The international application shall be filed with the prescribed receiving 
Office, which will check and process it as provided in this Treaty and the 
Regulations. 
Article 11 
Filing Date and Effects of the International Application 
( 1) The receiving Office shall accord as the international filing date the 
date of receipt of the international application, provided that that Office 
has found that, at the time of receipt: 
(i) the applicant does not obviously lack, for reasons of residence 
or nationality, the right to file an international application with the 
receiving Office, 
(ii) the inteITlational application is in the prescribed language, 
(iii) the international application contains at least the following 
elements: 
(a) an indication that it is intended as an international 
application, IP/N/lINZL/P/1 
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16 Patents Amendment 1992, No. 81 
FIRST SCHEDULE-continued 
PATENT COOPERATION TREATY-Continued 
(b) the designation of at least one Contracting State, 
(c) the name of the applicant, as prescribed, 
(d) a part which on the face of it appears to be a description, 
(e) a part which on the face of it appears to be a claiIn or clairn.s. 
(2)(a) If the receiving Office finds that the international application did 
not, at the tilDe of receipt, fulfil the requirements listed in paragraph (1), it 
shall, as provided in the Regulations, invite the applicant to file the 
required correction. 
(b) If the applicant complies with the invitation, as provided in the 
Regulations, the receiving Office shall accord as the international filing 
date the date of receipt of the required correction. 
(3) Subject to article 64(4), any international application fulfilling the 
requirements listed in items (i) to (iii) of paragraph (1) and accorded an 
international filing date shall have the effect of a regular national 
application in each designated State as of the international filing date, 
wrnch date shall be considered to be the actual filing date in each 
designated State. 
(4) Any international application fulfilling the requirements listed in 
items (i) to (iii) of paragrapb (1) shall be equivalent to a regular national 
filing within the meaning of the Paris Convention for the Protection of 
Industrial Property. 
Article 12 
Transtnittal of the International Application to the International 
Bureau and the International Searching Authority 
( 1) One copy of the international application shall be kept 'by the 
receiving Office ("home copy"), one copy ("record coPy") shall be 
transmitted to the International Bureau, and another copy ( 'search copy") 
shall be transmitted to the competent International Searching Authority 
referred to in Article 16, as provided in the Regulations. 
(2) The record copy shall be considered the true copy of the 
international application. 
(3) The international application shall be considered withdrawn if the 
record copy has not been received by the International Bureau within the 
prescribed time limit. 
Article 18 
Availability of Copy of the International Application 
to Designated Offices 
(1) Any designated Office may ask the International Bureau to transmit 
to it a copy of the international application prior to the communication 
provided for in Article 20, and the International Bureau shall transmit such 
copy to the designated Office as soon as possible after the expiration of 
one year from the priority date. 
(2)(a) The applicant may, at any time, transmit a copy of his 
international application to any designated Office. 
(b) The applicant may, at any time, ask the International Bureau to 
transmit a copy of his international application to any designated Office, 
and the International Bureau shall transmit such copy to the designated 
Office as soon as possible. 1992, No. 81 Patents Amendment IP/N/1/NZL/P/1 
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PATENT COOPERATION TREATY-Continued 17 
(c) Any national Office may notify the InteITlational Bureau that it 
does not wish to receive copies as provided for in subparagraph (b), in 
which case that subparagraph shall not be applicable in respect of that 
Office. 
Article 14 
Certain Defects in the International Application 
(1 )(a) The receiving Office shall check whether the international 
application contains any of the following defects, that is to say: 
(i) it is not signed as provided in the Regulations; 
(ii) it does not contain the prescribed indications conceITling the 
applicant; 
(ill) it does not contain a title; 
(iv) it does not contain an abstract; 
(v) it does not comply to the extent provided in the Regulations with 
the prescribed physical requirements. 
(b) If the receiving Office finds any of the said defects, it shall invite 
the applicant to correct the international application within the prescribed 
time limit, failing which that application shall be considered withdrawn 
and the receiving Office shall so declare. 
(2) If the international application refers to drawings which, in fact, are 
not included in that application, the receiving Office shall notify the 
applicant accordingly and he may furnish them within the prescribed time 
limit and, if he does, the international filing date shall be the date on which 
the drawings are received by the receiving Office. Otherwise, any reference 
to the said drawings shall be considered non-existent. 
(3)(a) If the receiving Office finds that, within the prescribed time limits, 
the fees prescribed under Article 3(4)(iv) have not been paid, or no fee 
prescribed under Article 4(2) has been paid in respect of any of the 
designated States, the international application shall be considered 
withdrawn and the receiving Office shall so declare. 
(b) If the receiving Office finds that the fee prescribed under Article 
4(2) has been paid in respect of one or more (but less than all) designated 
States within the prescribed time funit, the designation of those States in 
respect of which it has not been paid within the prescribed time limit shall 
be considered withdrawn and the receiving Office shall so declare. 
(4) If, after having accorded an international filing date to the 
international application, the receiving Office finds, within the prescribed 
time limit, that any of the requirements listed in items (i) to (iii) of Article 
11 ( 1) was not complied with at that date, the said application shall be 
considered withdrawn and the receiving Office shall so declare. 
Article 15 
The International Search 
( 1) Each international application shall be the subject of international 
search. 
(2) The objective of the inteITlational search is to discover relevant prior 
art. 
(3) International search shall be made on the basis of the claims, with 
due regard to the description and the drawings (if any). 18 IP/N/lINZL/P/1 
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PATENT COOPERATION TREATY-Continued 1992, No. 81 
(4) The InteITlational Searching Authority referred to in Article 16 shall 
endeavor to discover as much of the relevant prior art as its facilities 
permit, and shall, in any case, consult the documentation specified in the 
Regulations. 
(5)(a) If the national law of the Contracting State so permits, the 
applicant who files a national application within the national Office of or 
acting for such State may, subject to the conditions provided for in such 
law, request that a search similar to an inteITlational search ("inteITlational­
type search") be carried out on such application. 
(b) If the national law of the Contracting State so permits, the national 
Office of or acting for such State may subject any national application filed 
with it to an inteITlational-type search. 
(c) The inteITlational-type search shall be carried out by the 
InteITlational Searching Authority referred to in Article 16 which would be 
competent for an inteITlational search if the national application were an 
inteITlational application and were filed with the Office referred to in 
subparagraphs ( a) and (b). If the national application is in a language which 
the InteITlational Searching Authority considers it is not equipped to 
handle, the inteITlational-type search shall be carried out on a translation 
prepared by the applicant in a language prescribed for inteITlational 
applications and which the InteITlationaf Searching Authority has 
undertaken to accept for inteITlational applications. The national 
application and the translation, when required, shall be presented in the 
form prescribed for inteITlational applications. 
Article 16 
The International Searching Authority 
(1) InteITlational search shall be carried out by an InteITlational 
Searching Authority, which may be either a national Office or an 
intergoveITlmental organization, such as the InteITlationaJ Patent Institute, 
whose tasks include the establishing of documentary search reports on 
prior art with respect to inventions which are the subject of applications. 
(2) If, pending the establishment of a single InteITlational- Searching 
Authority, there are several InteITlational Searching Authorities, each 
receiving Office shall, in accordance with the provisions of the applicable 
agreement referred to in paragraph (3)(b), specify the InteITlational 
Searching Authority or Authorities competent for the searching of 
international applications filed with such Office. 
(3)(a) InteITlational Searching Authorities shall be appointed by the 
Assembly. Any national Office and any intergovernmental organization 
satisfying the requirements referred to in subparagraph (c) may be 
appointed as InteITlational Searching Authority. 
(b) Appointment shall be conditional on the consent of the national 
Office or intergovernmental organization to be appointed and the 
conclusion of an agreement, subject to approval by the Assembly, between 
such Office or organization and the InteITlational Bureau. The agreement 
shall specify the rights and obligations of the parties, in particular, the 
formal undertaking by the said Office or organization to apply and observe 
all the common rules of inteITlational search. 
(c) The Regulations prescribe the minimum requirements, particularly 
as to manpower and documentation, which any Office or organization 1992, No. 81 Patents Amendment IP/N/1/NZL/P/1 
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FIRST SCHEDULE-continued 
PATENT COOPERATION TREATY-Continued 19 
must satisfy before it can be appointed and must continue to satisfy while 
it remains appointed. 
(d) Appointment shall be for a fixed period of time and may be 
extended for further periods. 
(e) Before the Assembly makes a decision on the appointment of any 
national Office or intergovernmental organization, or on the extension of 
its appointment, or before it allows any such appointment to lapse, the 
Assembly shall hear the interested Office or organization and seek the 
advice of the Committee for Technical Cooperation referred to in Article 
56 once that Committee has been established. 
Article 17 
Procedure before the International Searching Authority 
( 1) Procedure before the International Searching Authority shall be 
governed by the provisions of this Treaty, the Regulations, and the 
agreement which the International Bureau shall conclude, subject to this 
Treaty and the Regulations, with the said Authority. 
(2)(a) If the International Searching Authority considers 
(i) that the international application relates to a subject matter 
which the International Searching Authority is not required, 
under the Regulations, to search, and in the particular case 
decides not to search, or 
(ii) that the description, the claims, or the drawings, fail to 
comply with the prescribed requirements to such an extent 
that a meaningful search could not be carried out, 
the said Authority shall so declare and shall notify the applicant and the 
International Bureau that no international search report will be 
established. 
(b) If any of the situations referred to in subparagraph (a) is found to 
exist in connection with certain claims only, the international search report 
shall so indicate in respect of such ClaiIllS, whereas, for the other ClaiIllS, 
the said report shall be established as provided in Article 18. 
(3)(a) If the International Searching Authority considers that the 
international application does not comply with the requirement of unity of 
invention as set forth in the Regulations, it shall invite the applicant to pay 
additional fees. The International Searching Authority shall establish the 
international search report on those parts of the international application 
which relate to the invention first mentioned in the claims ("main 
invention") and, provided the required additional fees have been paid 
within the prescribed tiIlle limit, on those parts of the international 
application which relate to inventions in respect of which the said fees 
were paid. 
(b) The national law of any designated State may provide that, where 
the national Office of that State finds the invitation, referred to in 
subparagraph (a), of the International Searching Authority justified and 
where the applicant has not paid all additional fees, those parts of the 
international- application which consequently have not been searched shall, 
as far as effects in that State are concerned, be considered withdrawn 
unless a special fee is paid by the applicant to the national Office of that 
State. 20 IP/NI1 INZL/PI1 
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Article 18 
The International Search Report 1992, No. 81 
( 1) The international search report shall be established within the 
prescribed time limit and in the prescribed form. 
(2) The international search report shall, as soon as it has been 
established, be transmitted by the InteITlational Searching Authority to the 
applicant and the InteITlational Bureau. 
(3) The inteITlational search report or the declaration referred to in 
Article 17(2)(a) shall be translated as provided in the Regulations. The 
translations shall be prepared by or under the responsibility of the 
International Bureau. 
Article 19 
Atnendtnent of the Claitns before the International Bureau 
(1) The applicant shall, after having received the inteITlational search 
report, be entitled to one opportunity to aIllend the claims of the 
international application by filing arn.endments with the International 
Bureau within the prescribed time limit. He may, at the sarn.e time, file a 
brief statement, as provided in the Regulations, explaining the 
amendments and indicating any impact that such amendments might have 
on the description and the drawings. 
(2) The amendments shall not go beyond the disclosure in the 
international application as filed. 
(3) If the national law of any designated State permits amendments to go 
beyond the said disclosure, failure to comply with paragraph (2) shall have 
no consequence in that State. 
Article 20 
COIIlIDunication to Designated Offices 
(1 )(a) The international application, together with the international 
search report (including any indication referred to in Article 17(2)(b)) or the 
declaration referred to in Article 1 7(2)(a), shall be communicated to each 
designated Office, as provided in the Regulations, unless the designated 
Office waives such requirement in its entirety or in part. 
(b) The communication shall include the translation (as prescribed) of 
the said report or declaration. 
(2) If the claims have been arn.ended by virtue of Article 19( 1), the 
commwlication shall either contain the full text of the claims both as filed 
and as amended or shall contain the full text of the claims as filed and 
specify the amendments, and shall include the statement, if any, referred 
to in Article 1 9( 1 ). 
(3) At the request of the designated Office:'" or the applicant, the 
International Searching Authority shall send to the said Office or the 
applicant, respectively, copies of the documents cited in the international 
search report, as provided in the Regulations. 
Article 21 
International Publication 
(1) The International Bureau shall publish international applications. 1992, No. 81 Patents Amendment IP IN I lINZL/P /1 
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PATENT COOPERATION TREATY-Continued 21 
(2)(a) Subject to the exceptions provided for in subparagraph (b) and in 
Article 64( 3), the inteITlational publication of the inteITlational application 
shall be effected promptly after the expiration of 1 8 months from the 
priority date of that application. 
(b) The applicant may ask the InteITlational Bureau to publish his 
inteITlational application any time before the expiration of the time limit 
referred to in subparagraph (a). The InteITlational Bureau shall proceed 
accordingly, as provided in the Regulations. 
(3) The inteITlational search report or the declaration referred to in 
Article 17(2)(a) shall be published as prescribed in the Regulations. 
(4) The language and form of the inteITlational publication and other 
details are govetned by the Regulations. 
(5) There shall be no inteITlational !ublication if the international 
application is withdrawn or is considere withdrawn before the technical 
preparations for publication have been completed. 
(6) If the intetnational application contains expressions or drawings 
which, in the opinion of the InteITlational Bureau, are contrary to morality 
or public order, or if, in its opinion, the inteITlational application contains 
disparaging statelllents as defined in the Regulations, it may omit such 
expreSSIons, drawings, and statements, from its publications, indicating the 
place and number of words or drawings omitted, and fuITlis hing , upon 
request, individual copies of the passages omitted. 
Article 22 
Copy, Translation, and Fee, to Designated Offices 
(1) The applicant shall furnish a copy of the international application 
(unless the cOllllllunication provided for in Article 20 has already taken 
place) and a translation thereof (as prescribed), and pay the national fee (if 
any), to each designated Office not later than at the expiration of 20 
months frOlll the priority date. Where the national law of the designated 
State requires the indication of the name of and other prescribed data 
concerning the inventor but allows that these indications be furnished at a 
tillle later than that of the filing of a national application, the applicant 
shall, unless they were contained in the request, fuITlish the said 
indications to the national Office of or acting for tlie State not later than at 
the expiration of 20 months from the priority date. 
(2) Where the International Searching Authority makes a declaration, 
under Article 17(2)(a), that no international search report will be 
established, the time liinit for performing the acts referred to in paragraph 
(1) of this Article shall be the same as that provided for in paragraph (1). 
(3) Any national law lllay, for performing the acts referred to in 
para~aphs (1) or (2), fix tillle limits which expire later than the tillle limit 
prOVided for in those paragraphs. 
Article 28 
Delaying of National Procedure 
( 1) No designated Office shall process or examine the international 
application prior to the expiration of the applicable tillle limit under 
Article 22. 22 IP IN 11 INZL/P 11 
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Patents Amendment 
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PATENT COOPERATION TREATY-Continued 1992, No. 81 
(2) Notwithstanding the provisions of paragraph (1), any designated 
Office may, on the express request of the applicant, process or examine 
the inteITlational application at any time. 
Article 24 
Possible Loss of Effect in Designated States 
(1) Subject, in case (ii) below, to the provisions of Article 25, the effect of 
the inteITlational application provided for in Article 11(3) shall cease in any 
designated State with the Sarrle consequences as the withdrawal of any 
national application in that State: 
(i) if the applicant withdraws his international application or the 
designation of that State; 
(ii) if the international application is considered withdrawn by virtue 
of Articles 12(3), 14(1)(b), 14(3)(a), or 14(4), or if the designation of that 
State is considered withdrawn by virtue of Article 14(3)(b); 
(iii) if the applicant fails to perform the acts referred to in Article 22 
within the applicable time limit. 
(2) Notwithstanding the provisions of paragraph (1), any designated 
Office IIlay maintain the effect provided for in Article 11(3) even where 
such effect is not required to be maintained by virtue of Article 25(2). 
Article 25 
Review by Designated Offices 
(1 )(a) Where the receiving Office has refused to accord an international 
filing date or has declared that the international application is considered 
withdrawn, or where the International Bureau has made a finding under 
Article 12(3), the International Bureau shall promptly send, at the request 
of the applicant, copies of any document in the file to any ot the 
designated Offices named by the applicant. 
(b) Where the receiving Office has declared that the designation of any 
given State is considered withdrawn, the International Bureau shall 
promptly send, at the request of the applicant, copies of any document in 
the file to the national Office of such State. 
(c) The request under subparagraphs (a) or (b) shall be presented 
within the prescribed time limit. 
(2)(a) Subject to the provisions of subparagraph (b), each designated 
Office shall, provided that the national fee (if any) has been paid and the 
appropriate translation (as prescribed) has been furnished within the 
prescribed time limit, decide whether the refusal, declaration, or finding, 
referred to in paragraph (1) was justified under the provisions of this 
Treaty and the Regulations, and, if it finds that the refusal or declaration 
was the result of an error or omission on the part of the receiving Office or 
that the finding was the result of an error or omission on the part of the 
International Bureau, it shall, as far as effects in the State of the designated 
Office are concerned, treat the international application as if such error or 
omission had not occurred. 
(b) Where the record copy has reached the International Bureau after 
the expiration of the time limit prescribed under Article 12(3) on account 
of any error or omission on the part of the applicant, the provisions of 1992, No. 81 Patents Amendment IP/N/1/NZL/P/1 
Page 127 
FIRST SCHEDULE-continued 
PATENT COOPERATION TREATY-Continued 23 
subparagraph (a) shall apply only under the circurnstances referred to in 
Article 48(2). 
Article 26 
Opportunity to Correct before Designated Offices 
No designated Office shall reject an international application on the 
grounds of non-cornpliance with the requirements of this Treaty and the 
Regulations without first giving the applicant the opportunity to correct 
the said application to the extent and according to the procedure provided 
by the national law for the same or cornparable situations in respect of 
national applications. 
Article 27 
National Requiretnents 
(1) No national law shall require cornpliance with requirements relating 
to the form or contents of the international application different frorn or 
additional to those which are provided for in this Treaty and the 
Regulations. 
(2) The provisions of paragraph (1) neither affect the application of the 
provisions of Article 7(2) nor preclude any national law frorn requiring, 
once the lrocessin g of the international application has started in the 
designate Office, the furnishing: 
(i) when the applicant is a legal entity, of the name of an officer 
entitled to represent such legal entity, 
(ii) of docurnents not part of the international application but which 
constitute proof of allegations or staternents rnade in that application, 
including the confirmation of the international application by the signature 
of the applicant when that application, as Tiled, was signed by his 
representative or agent. 
(3) Where the applicant, for the purposes of any designated State, is not 
qualified according to the national law of that State to file a national 
application because he is not the inventor, the international application 
may be rejected by the designated Office. 
(4) Where the national law provides, in respect of the form or contents 
of national applications, for requirernents which, from the viewpoint of 
applicants, are rnore fa vorable tnan the requirernents provided for by this 
Treaty and the Regulations in respect of international applications, the 
national Office, the courts and any other cornpetent organs of or acting for 
the designated State rnay apply the former requirernents, instead of the 
latter requirernents, to international applications, except where the 
applicant insists that the requirernents provided for by this Treaty and the 
Regulations be applied to his international application. 
(5) Nothing in this Treaty and the Regulations is intended to be 
construed as prescribing anything that would limit the freedom of each 
Contracting State to prescribe such substantive conditions of patentability 
as it desires. In particular, any provision in this Treaty and the Regulations 
concerrring the definition of prior art is exclusively for the purposes of the 
international procedure and, consequently, any Contracting State is free to 
apply, when determining the patentability of an invention clairned in an 
international application, the criteria of its national law in respect of prior 24 IP/N/1/NZL/P/1 
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PATENT COOPERATION TREATY-Continued 1992, No. 81 
art and other conditions of patentability not constituting requirements as 
to the form and contents of applications. 
(6) The national law may require that the applicant furnish evidence in 
respect of any substantive condition of patentability prescribed by such 
law. 
(7) Any receiving Office or, once the processing of the international 
application has started in the designated Office, that Office may apply the 
national law as far as it relates to any requirement that the applicant be 
represented by an agent having the right to represent applicants before the 
saId Office and/or that the applicant have an address in the designated 
State for the purpose of receiving notifications. 
(8) Nothing in this Treaty and the Regulations is intended to be 
construed as limiting the freedom of any Contracting State to apply 
measures deemed necessary for the preservation of its national security or 
to limit, for the protection of the general economic interests of that State, 
the right of its own residents or nationals to file international applications. 
Article 28 
Atnendtnent of the Claitns, the Description, and the Drawings, 
before Designated Offices 
(1) The applicant shall be given the opportunity to amend the claims, the 
description, and the drawings, before each designated Office within the 
prescribed time limit. No designated Office shall grant a patent, or refuse 
the grant of a patent, before such time limit has expired except with the 
express consent of the applicant. . 
(2) The amendments shall not go beyond the disclosure in the 
international application as filed unless the national law of the designated 
State permits them to go beyond the said disclosure. 
(3) The amendments shall be in accordance with the national law of the 
designated State in all respects not provided for in this Treaty and the 
Regulations. 
(4) Where the designated Office requires a translation of the 
international application, the amendments shall be in the language of the 
translation. 
Article 29 
Effects of the International Publication 
( 1) As far as the protection of any rights of the applicant in a designated 
State is concerned, the effects, in that State, of the international 
publication of an international application shall, subject to the provisions 
of paragraphs (2) to (4), be the same as those which the national law of the 
designated State provides for the compulsory national publication of 
unexamined national applications as such. 
(2) If the language in which the international publication has been 
effected is different from the language in which publications under the 
national law are effected in the designated State, the said national law may 
provide that the effects provided for in paragraph (1) shall be applicable 
only from such time as: 
(i) a translation into the latter language has been published as 
provided by the national law, or 1992, No. 81 Patents Amendment IP/N/1/NZL/P/l 
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PATENT COOPERATION TREATY-Continued 25 
(ii) a translation into the latter language has been Inade available to 
the public, by laying open for public inspection as provided by the national 
law, or 
(iii) a translation into the latter language has been transITIitted by the 
applicant to the actual or prospective unauthorized user of the invention 
cIaiIned in the inteITlational application, or 
(iv) both the acts described in (i) and (iii), or both the acts described in 
(ii) and (iii), have taken r1ace. 
(3) The national law 0 any designated State Inay provide that, where the 
international publication has been effected, on the request of the applicant, 
before the expiration of 18 Inonths frOIn the priority date, the effects 
provided for in paragraph (1) shall be applicable only fron1. the expiration 
of 18 Inonths frOIn the priority date. 
(4) The national law of any designated State Ina.y provide that the effects 
provided for in paragraph (1) shall be applicable only frOIn the date on 
which a copy of the international application as published under Article 21 
has been received in the national Office of or acting for such State. The 
said Office shall publish the date of receipt in its gazette as soon as possible. 
Article 80 
Confidential Nature of the International Application 
(1)(a) Subject to the provisions of subparagraph (b), the International 
Bureau and the International Searching Authorities shall not allow access 
by any person or authority to the international application before the 
international publication of that application, unless requested or 
authorized by the applicant. 
(b) The provisions of subparagraph (a) shall not apply to any 
transITIittal to the cOInpetent International Searching Authority, to 
transITIittals provided for under Article 13, and to cornrnunications 
provided for under Article 20. 
(2)(a) No national Office shall allow access to the international 
application by third parties, unless requested or authorized by the 
applicant, before the earliest of the following dates: 
(i) date of the international publication of the international 
application, 
(ii) date of the receipt of the cOIllIllunication of the international 
application under Article 20, 
(ill) date of the receipt of a copy of the international application 
under Article 22. 
(b) The provisions of subparagraph (a) shall not prevent any national 
Office frOIn informing third parties that it has been designated, or frOIn 
publishing that fact. Such infonnation or publication m.ay, however, 
contain only the following data: identification of the receiving Office, name 
of the applicant, international filing date, international application 
nUInber, and title of the invention. 
(c) The provisions of subparagraph (a) shall not prevent any 
designated Office frOIn allowing access to the international application for 
the purposes of the judicial authorities. 
(3) The provisions of paragraph (2)(a) shall apply to any receiving Office 
except as far as transm.ittals provided for under Article 12( 1 ) are 
concerned. 26 IP/N/I/NZL/P/I 
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(4) For the purposes of this Article, the tenn "access" covers any means 
by which third parties may acquire cognizance, including individual 
communication and general .publication, provided, however, that no 
national Office shall generally publish an international application or its 
translation before the international publication or, if international 
publication has not taken place by the expiration of 20 months from the 
priority date, before the expiration of 20 months from the said priority 
date. 
CHAPTER 11 
International Prelilllinary EXaIllination 
Article 81 
DelD.and for International PrelilD.inary EXaIDination 
(1) On the demand of the applicant, his international application shall be 
the subject of an international preliminary examination as provided in the 
following provisions and the Regulations. 
(2)(a) Any applicant who is a resident or national, as defined in the 
Regulations, of a Contracting State bound by Chapter 11, and whose 
international application has been filed with the receiving Office of or 
acting for such State, may make a demand for international preliminary 
examination. 
(b) The Assembly may decide to allow persons entitled to file 
international applications to make a demand for international preliminary 
examination even if they are residents or nationals of a State not party to 
this Treaty or not bound by Chapter 11. . 
(3) The demand for international preliminary examination shall be made 
separately from the international application. The demand shall contain 
the prescribed particulars and shall be in the prescribed language and 
fonn. 
(4)(a) The demand shall indicate the Contracting State or States in which 
the applicant intends to use the results of the international preliminary 
examination ("elected States"). Additional Contracting States may be 
elected later. Election may relate only to Contracting States already 
designated under Article 4. 
(b) Applicants referred to in paragraph (2)(a) may elect any 
Contracting State bound by Chapter 11. Applicants referred to in 
paragraph (2)(b) may elect only such Contracting States bound by Chapter 
11 as have declared that they are prepared to be elected by such applicants. 
(5) The demand shall be subject to the payment of the prescribed fees 
within the prescribed time limit. 
(6)(a) The demand shall be submitted to the competent International 
Preliminary Examining Authority referred to in Article 32. 
(b) Any later election shall be submitted to the International Bureau. 
(7) Each elected Office shall be notified of its election. 
Article 82 
The International PrelilD.inary Exatnining Authority 
(1) International preliminary examination shall be carried out by the 
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(2) In the case of deITlands referred to in Article 31(2)(a), the receiving 
Office, and, in the case of demands referred to in Article 31(2)(b), the 
Assembly, shall, in accordance with the applicable agreeITlent between the 
interested International Prefuninary Examining Authority or Authorities 
and the International Bureau, specify the International Preliminary 
Examining Authority or Authorities competent for the preliminary 
examination. 
(3) The provisions of Article 16(3) shall apply, murtatis mutandis, in 
respect of International Preliminary Exarnining Authorities. 
Article 88 
The International Prelitninary Exatnination 
(1) The o~jective of the international preliminary exarnination is to 
fonnulate a prefuninary and non-binding opinion on the questions 
whether the claiIned invention appears to be novel, to involve an inventive 
step (to be non-obvious), and to be industrially applicable. 
(2) For the purposes of the international prefuninary examination, a 
claimed invention shall be considered novel if it is not anticipated by the 
prior art as defined in the Regulations. 
(3 ) For the purposes of the international prefuninary examination, a 
claiITled invention shall be considered to involve an inventive step if, 
havin& regard to the prior art .as defined in the R~gula~ions, it is not, at the 
prescnbed relevant date, ObVIOUS to a person skilled ID the art. 
(4) For the purposes of the international prefuninary examination, a 
claiITled invention shall be considered industrially applicable if, according 
to its nature, it can be made or used (in the technological sense) in any kind 
of industry. "Industry" shall be understood in its broadest sense, as in the 
Paris Convention for the Protection of Industrial Property. 
( 5) The criteria described above ITlerely serve the purposes of 
international prefuninary exarnination. Any Contracting State may apply 
additional or different criteria for the purpose of deciding whether, in that 
State, the claiIned invention is patentable or not. 
(6) The international preliminary examination shall take into 
consideration all the docUITlents cited in the international search report. It 
may take into consideration any additional docuITlents considered to be 
relevant in the particular case. 
Article 84 
Procedure before the International Prelitninary Exatnining 
Authority 
( 1) Procedure before the International Preliminary Examining Authority 
shciJ1 be governed by the provisions of this Treaty, the Regulations, and the 
agreeITlent which the International Bureau shall conclUde, subject to this 
Treaty and the Regulations, with the said Authority. 
(2)(a) The applicant shall have a right to communicate orally and in 
writing with the International Preliminary Examining Authority. 
(b) The applicant shall have a right to amend the claims, the 
description, and the drawings, in the prescribed ITlanner and within the 
prescribed tiITle liITlit, before the international prefuninary examination 28 IP/N/1/NZL/P/1 
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report is established. The anlendment shall not go beyond the disclosure in 
the international application as filed. 
(c) The applicant shall receive at least one written opinion frOITl the 
International Preliminary Examining Authority unless such Authority 
considers that all of the following conditions are fulfilled: 
(i) the invention satisfies the criteria set forth in Article 33( 1), 
(ii) the international application complies with the requirements of 
this Treaty and the Regulations in so far as checked by that Authority, 
(ill) no observations are intended to be made under Article 35(2), 
last sentence. 
(d) The applicant may respond to the written opinion. 
(3)(a) If the International Preliminary Examining Authority considers 
that the international application does not comply with the requireITlent of 
unity of invention as set forth in the Regulations, it ITlay invite the 
applicant, at his option, to restrict the claims so as to COITlply with the 
requireITlent or to pay additional fees. 
(b) The national law of any elected State may provide that, where the 
applicant chooses to restrict the claims under subparagraph (a), those parts 
of the international application which, as a consequence of the restriction, 
are not to be the subject of international preliminary examination shall, as 
far as effects in that State are concerned, be considered withdrawn unless a 
special fee is paid by the applicant to the national Office of that State. 
(c) If the applicant does not comply with the invitation referred to in 
subparagraph (a) within the prescribed time liITlit, the International 
Preliminary Examining Authority shall establish an international 
preliminary examination report on those parts of the international 
application which relate to what appears to be the main invention and 
snill indicate the relevant facts in the said report. The national law of any 
elected State ITlay provide that, where its national Office finds the 
invitation of the International Preliminary Examining Authority justified, 
those parts of the international application which do not relate to the main 
invention shall, as far as effects in that State are concerned, be considered 
withdrawn unless a special fee is paid by the applicant to that Office. 
(4 )( a) If the. International Preliminary Examining Authority considers-
(i) that the international application relates to a subject ITlatter 
on which the International Preliminary Examining Authority 
is not required, under the Regulations, to carry out an 
international preliminary examination, and in the particular 
case decides not to carry out such examination, or 
(ii) that the description, the claims, or the drawings, are so 
unclear, or the claims are so inade'Juately supported by the 
description, that no meaningful opiruon can be formed on the 
novelty, inventive step (non-obviousness), or industrial 
applicability, of the claimed invention, 
the said Authority shall not go into the questions referred to in Article 
3 3( 1) and shall inform the applicant of this opinion and the reasons 
therefore 
(b) If any of the situations referred to in subparagraph (a) is found to 
exist in, or in connection with, certain claims only, the provisions of that 
subparagraph shall apply only to the said claims. 1992, No. 81 Patents Amendment IP/NI 1 INZL/PI 1 
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Article 85 
The International Prelitninary Exatnination Report 29 
(1) The international preliminary examination report shall be established 
within the prescribed time lirrrit and in the prescribed form. 
(2) The international preliminary examination report shall not contain 
any statement on the question whether the claimed invention is or seems 
to be patentable or unpatentable according to any national law. It shall 
state, subject to the provisions of paragraph (3), in relation to each claim, 
whether the clairn appears to satisfy the criteria of novelty, inventive step 
(non·obviousness), and industrial applicability, as defined for the purposes 
of the international preliminary examination in Article 33( 1) to (4). The 
statement shall be accompanied by the citation of the documents believed 
to support the stated conclusion with such explanations as the 
circumstances of the case may require. The statement shall also be 
accompanied by such other observations as the Regulations provide for. 
(3)(a) If, at the time of establishing the international preliminary 
examination report, the International Preliminary Examining Authority 
considers that any of the situations referred to in Article 34(4)(a) exists, 
that report shall state this opinion and the reasons therefore It' shall not 
contain any statement as provided in paragraph (2). 
(b) If a situation under Article 34( 4 )(b) is found to exist, the 
international preliminary examination report shall, in relation to the 
claims in question, contain the statement as provided in subparagraph (a), 
whereas, in relation to the other clairns, it shall contain the statement as 
provided in paragraph (2). 
Article 86 
Transtnittal, Translation, and Cotntnunication, 
of the International Prelitninary Exatnination Report 
( 1) The international preliminary examination report, together with the 
prescribed annexes, shall be transmitted to the applicant and to the 
International Bureau. 
(2)(a) The international preliminary examination report and its annexes 
shill be translated into the prescribed languages. 
(b) Any translation of the said report shall be prepared by or under 
the responsibility of the International Bureau, whereas any translation of 
the said annexes shall be prepared by the applicant. 
(3)( a) The international preliminary examination report, together with 
its translation (as prescribed) and its annexes (in the original language), 
shall be communicated by the International Bureau to each elected Office. 
(b) The prescribed translation of the annexes shall be transmitted 
within the prescribed time limit by the applicant to the elected Offices. 
(4) The provisions of Article 20(3) shall apply, mutatis mutandis, to copies 
of any document which is cited in the international preliminary 
examination report and which was not cited in the international search 
report. 
Article 87 
Withdrawal of Detnand or Election 
(1) The applicant may withdraw any or all elections. IP/N/1INZL/PI 1 
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30 Patents Amendment 
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(2) If the election of all elected States is withdrawn, the demand shall be 
considered withdrawn. 
(3)(a) Any withdrawal shall be notified to the International Bureau. 
(b) The elected Offices concerned and the International Preliminary 
Exarrlining Authority concerned shall be notified accordingly by the 
International Bureau. 
(4)(a) Subject to the provisions of subparagraph (b), withdrawal of the 
demand or of the election of a Contracting State shall, unless the national 
law of that State provides otherwise, be considered to be withdrawal of the 
international application as far as that State is concerned. 
(b) Withdrawal of the demand or of the election shall not be 
considered to be withdrawal of the international application if such 
withdrawal is effected prior to the expiration of the applicable time limit 
under Article 22; however, any Contracting State may provide in its 
national law that the aforesaid shall apply only if its national Office has 
received, within the said time limit, a copy of the international application, 
together with a translation (as prescribed), and the national fee. 
Article 88 
Confidential Nature of the International 
Prelitninary Exatnination 
(1) Neither the International Bureau nor the International Preliminary 
Exarrlining Authority shall, unless requested or authorized by the 
applicant, allow access within the meaning, and with the proviso, of Article 
30( 4) to the file of the international preliminary examination by any 
person or authority at any time, except by the elected Offices once the 
international preliminary examination report has been established. 
(2) Subject to the provisions of paragraph (1) and Articles 36(1) and (3) 
and 37 (3 )(b), neither the International Bureau nor the International 
Preliminary Examining Authority shall, unless requested or authorized by 
the applicant, give information on the issuance or non-issuance of an 
international preliminary examination report and on the withdrawal or 
nonwithdrawal of the demand or of any election. 
Article 89 
Copy, Translation, and Fee, to Elected Offices 
(1 )(a) If the election of any Contracting State has been effected prior to 
the expiration of the 19th month from the priority date, the provisions of 
Article 22 shall not apply to such State and the applicant shall furnish a 
copy of the international application (unless the corrununication under 
Article 20 has already taken place) and a translation thereof (as prescribed), 
and pay the national fee (if any), to each elected Office not later than at the 
expiration of 30 months from the priority date. 
(b) Any national law may, for performing the acts referred to in 
subparagraph (a), fix time limits which expire later than the time limit 
provided for in that sub paragraph. 
(2) The effect provided for in Article 11 (3) shall cease in the elected State 
with the same consequences as the withdrawal of any national application 
in that State if the applicant fails to perform the acts referred to in 1992, No. 81 Patents Amendment IP/N/1/NZL/P/1 
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PATENT COOPERATION TREA TV-continued 31 
paragraph (1)(a) within the time limit applicable under paragraph (1)(a) or 
(b). 
(3) Any elected Office may maintain the effect provided for in Article 
11 (3) even where the applicant does not comply with the requirements 
provided for in paragraph (1 )( a) or (b). 
Article 40 
Delaying of National Exatnination and Other Processing 
(1) If the election of any Contracting State has been effected prior to the 
expiration of the 19th month from the !riorit y date, the provisions of 
Article 23 shall not apply to such State an the national Office of or acting 
for that State shall not proceed, subject to the provisions of paragraph (2), 
to the examination and other processing of the international application 
prior to the expiration of the applicable time limit under Article 39. 
(2) Notwithstanding the provisions of paragraph (1), any elected Office 
may, on the express request of the applicant, proceed to the examination 
and other processing of the international application at any time. 
Article 41 
Atnendtnent of the ClailDs, the Description, 
and the Drawings, before Elected Offices 
( 1) The applicant shall be given the opportunity to amend the claims, the 
description, and the drawings, before each elected Office within the 
prescribed tirn.e limit. No elected Office shall grant a patent, or refuse the 
grant of a patent, before such time limit has expired, except with the 
express consent of the applicant. 
(2) The amendments shall not go beyond the disclosure in the 
international application as filed, unless the national law of the elected 
State pennits them to go beyond the said disclosure. 
(3) The amendments shall be in accordance with the national law of the 
elected State in all respects not provided for in this Treaty and the 
Regulations. 
(4) Where an elected Office requires a translation of the international 
application, the amendments shall be in the language of the translation. 
Article 42 
Results of National Exatnination in Elected Offices 
No elected Office receiving the international prelim.inary examination 
report may require that the applicant furnish copies, or information on the 
contents, of any papers connected with the examination relating to the 
same international application in any other elected Office. 
CHAPTER III 
COD1D1on Provisions 
Article 48 
Seeking Certain Kinds of Protection 
In respect of any designated or elected State whose law provides for the 
grant orinventors' certificates, utility certificates, utility models, patents or 
certificates of addition, inventors' certificates of addition, or utility 32 IP/N/1/NZL/P/1 
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PATENT COOPERATION TREATY-Continued 
certificates of addition, the applicant may indicate, as prescribed in the 
Regulations, that his international a~plication is for the grant, as far as that 
State is concerned, of an inventor s certificate, a utility certificate, or a 
utility model, rather than a patent, or that it is for the grant of a patent or 
certificate of addition, an inventor's certificate of addition, or a utility 
certificate of addition, and the ensuing effect shall be governed by the 
applicant's choice. For the purposes of this Article and any Rule 
tnereunder, Article 2(ii) shall not apply. 
Article 44 
Seeking Two Kinds of Protection 
In respect of any designated or elected State whose law permits an 
application, while being for the grant of a patent or one of the other kinds 
of protection referred to in Article 43, to be also for the grant of another 
of the said kinds of protection, the applicant may indicate, as prescribed in 
the Regulations, the two kinds of protection he is seeking, and the ensuing 
effect shall be governed by the applicant's indications. For the purposes of 
this Article, Article 2(ii) shall not apply. 
Article 45 
Regional Patent Treaties 
( 1) Any treaty providing for the grant of regional patents ("regional 
patent treaty"), and giving to all persons who, according to Article 9, are 
entitled to file international applications the right to file applications for 
such patents, may provide that international applications designatmg or 
electing a State party to both the regional patent treaty and the present 
Treaty may be filed as applications for such patents. 
(2) The national law of the said designated or elected State may provide 
that any designation or election of such State in the international 
application shall have the effect of an indication of the wish to obtain a 
regional patent under the regional patent treaty. 
Article 46 
Incorrect Translation of the International Application 
If, because of an incorrect translation of the international application, 
the scope of any patent granted on that application exceeds the scope of 
the international application in its original language, the competent 
authorities of the Contracting State concerned may accordingly and 
retroactively limit the scope of the patent, and declare it null and void to 
the extent that its scope has exceeded the scope of the international 
application in its original language. 
Article 47 
TiIne LiInits 
( 1) The details for computing time limits referred to in this Treaty are 
governed by the Regulations. 
(2) (a) All tiIne limits fixed in Chapters I and 11 of this Treaty may, 
outside any revision under Article 60, be modified by a decision of the 
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PATENT COOPERATION TREATY-Continued 33 
(b) Such decisions shall be Illade in the AsseIllbly or through voting by 
correspondence and must be unanimous. 
(c) The details of the procedure are goveITled by the Regulations. 
Article 48 
Delay in Meeting Certain Titne Litnits 
(1) Where any tiIne limit fixed in this Treaty or the Regulations is not 
met because of interruption in the mail service or unavoidable loss or delay 
in the mail, the tiIne limit shall be deemed to be met in the cases and 
subject to the proof and other conditions prescribed in the Regulations. 
(2)(a) Any Contracting State shall, as tar as that State is conceITled, 
excuse, for reasons admitted under its national law, any delay in meeting 
any time liInit. 
(b) Any Contracting State may, as far as that State is conceITled, 
excuse, for reasons other than those referred to in subparagraph (a), any 
delay in meeting any time limit. 
Article 49 
Right to Practice before International Authorities 
Any attorney, patent agent, or other person, having the right to. practice 
before the national Office with which the international application was 
filed, shall be entitled to practice before the International Bureau and the 
cOIllpetent International Searching Authority and competent InteITlational 
Preliminary Examining Authority in respect of that application. 
CHAPTER IV 
Technical Services 
Article 50 
Patent Infonnation Services 
(1) The International Bureau may furnish services by providing technical 
and any other pertinent information available to it on the basis of 
published documents, priITIarily patents and published applications 
(referred to in this Article as "the information services"). 
(2) The International Bureau may provide these information services 
either directly or through one or more International Searching Authorities 
or other national or international specialized institutions, with which the 
International Bureau Illay reach agreement. 
(3) The information services shall be operated in a way particularly 
facilitating the acquisition by Contracting States which are developing 
countries of technical knowledge and technology, including available 
published know-how. 
(4) The information services shall be available to GovernITIents of 
Contracting States and their nationals and residents. The Assembly may 
decide to make these services available also to others. 
(5)(a) Any service to Governments of Contracting States shall be 
furnished at cost, provided that, when the Government is that of a 
Contracting State which is a developing country, the service shall be 
furnished below cost if the difference can be covered from profit made on 
services furnished to others than Governments of Contracting States or 
from the sources referred to in Article 51 (4 ). IP/N/I/NZL/P/I 
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34 Patents Amendment 
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(b) The cost referred to in subparagraph (a) is to be understood as cost 
over and above costs normally incident to the performance of the services 
of a national Office or the obligations of an International Searching 
Authority. 
(6) The details concerning the irnplelllentation of the provisions of this 
Article shall be governed by decisions of the Assembly and, within the 
limits to be fixed by the Assembly, such working groups as the Asselllbly 
may set up for that purpose. 
(7) The Assembly shall, when it considers it necessary, recommend 
methods of providing financing supplementary to those referred to in 
paragraph (5). 
Article 51 
Technical Assistance 
(1) The Assembly shall establish a Committee for Technical Assistance 
(referred to in this Article as "the Committee"). 
(2)(a) The members of the Committee shall be elected among the 
Contr~ctr' g States, with due regard to the representation of developing 
countne. 
(b) The Director General shall, on his own initiative or at the request 
of the Committee, invite representatives of intergovernmental 
organizations concerned with technical assistance to developing countries 
to participate in the work of the Committee. 
(3)(a) The task of the Corrunittee shall be to organize and supervise 
technical assistance for Contracting States which are developing countries 
in developing their patent systems individually or on a regional basis. 
(b) The technical assistance shall comprise, among other things, the 
training of specialists, the loaning of experts, and the supply of equipment 
both for demonstration and for operational purposes. 
(4) The International Bureau shall seek to enter into agreements, on the 
one hand, with international financing organizations and 
intergovernmental organizations, particularly the United Nations, the 
agencies of the United Nations, and the Specialized Agencies connected 
with the United Nations concerned with technical assistance, and, on the 
other hand, with the Governments of the States receiving the technical 
assistance, for the financing of projects pursuant to this Article. 
( 5) The details concerning the implementation of the provisions of this 
Article shall be governed by decisions of the Assembly and, within the 
llinits to be fixed by the Assembly, such working groups as the Assembly 
may set up for that purpose. 
Article 52 
Relations with Other Provisions of the Treaty 
Nothing in this Chapter shall affect the financial provisions contained in 
any other Chapter of this Treaty. Such provisions are not applicable to the 
present Chapter or to its illlplementation. 1992, No. 81 Patents Amendment IP/NI 1 INZL/PI 1 
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PATENT COOPERATION TREATY-Continued 
CHAPTER V 
Adtninistrative Provisions 
Article 58 
Assenlbly 35 
(l)(a) The Assembly shall, subject to Article 57(8), consist of the 
Contracting States. 
(b) The Government of each Contracting State shall be represented by 
one delegate, who may be assisted by alternate delegates, advisors, and 
experts. 
(2)(a) The Assembly shall: 
(i) deal with all matters concerning the maintenance and 
development of the union and the im.plementation of this Treaty; 
(ii) perfonn such tasks as are specifically assigned to it under 
other provisions of this Treaty; 
(iii) give directions to the International Bureau concerning the 
preparation for revision conferences; 
(iv) review and approve the reports and activities of the Director 
General concerning the Union, and give him all necessary instructions 
concerning matters within the competence of the Union; 
(v) review and approve the reports and activities of the Executive 
Committee established under paragraph (9), and give instructions to such 
Committee; 
(vi) determine the program and adopt the triennial* budget of the 
Union, and approve its final accounts; . 
(vii) adopt the financial regulations of the Union; 
(viii) establish such corrunittees and working groups as it deems 
appropriate to achieve the objectives of the Union; 
(ix) determine which States other than Contracting States and, 
subject to the provisions of paragraph (8), which intergovernmental and 
international non-governmental organizations shall be admitted to its 
meetings as observers; 
(x) take any other appropriate action designed to further the 
objectives of the Union and perform such other functions as are 
appropriate under this Treaty. 
(b) With respect to matters which are of interest also to other Unions 
administered by the Organization, the Assembly shall make its decisions 
after having heard the advice of the Coordination Committee of the 
Organization. 
(3) A delegate may represent, and vote in the name of, one State only. 
(4) Each Contracting State shall have one vote. 
(5)(a) One-half of the Contracting States shall constitute a quorum. 
(b) In the absence of the qUOnIm, the Assembly may make decisions 
but, with the exception of decisions concerning its own procedure, all such 
decisions shall take effect only if the quorum and the required majority are 
attained through voting by correspondence as provided in the Regulations. 
* Editor~s Note: Since 1980, the budget of the Union is biennial. IP/N/1/NZL/P/1 
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36 Patents Amendment 
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(6)(a) Subject to the rrovisions of Articles 47(2)(b), 58(2)(b), 58(3) and 
61 (2)(b), the decisions 0 the Assembly shall require two-thirds of the votes 
cast. 
(b) Abstentions shall not be considered as votes. 
(7) In connection with matters of exclusive interest to States bound by 
Chapter 11, any reference to Contracting States in paragraphs (4), (5), and 
(6), shall be considered as applying only to States bound by Chapter 11. 
(8) Any intergovernmental organization appointed as International 
Searching or Preliminary Examining Authority shall be admitted as 
observer to the Assembly. 
(9) When the number of Contracting States exceeds forty, the Assembly 
shciI1 establish an Executive Committee. Any reference to the Executive 
Committee in this Treaty and the Regulations shall be construed as 
references to such Committee once it has been established. 
(10) Until the Executive Committee has been established, the Assembly 
shall approve, within the limits of the program and triennial budget, the 
annual programs and budgets prepared by the Director General. i~ 
( 11 )( a) The Assembly shall meet in every second calendar year in 
ordinary session upon convocation by the Director General and, in the 
absence of exceptional circumstances, during the same period and at the 
same place as the General Assembly of the Organization. 
(b) The Assembly shall meet in extraordinary session upon 
convocation by the Director General, at the request of the Executive 
Committee, or at the request of one-fourth of the Contracting States. 
(12) The Assembly shall adopt its own rules of procedure. 
Article 54 
Executive Conunittee 
(1) When the Assembly has established an Executive Committee, that 
Committee shall be subject to the provisions set forth hereinafter. 
(2)(a) The Executive Committee shall, subject to Article 57(8), consist of 
States elected by the Assembly from among States members of the 
Assembly. 
(b) The Government of each State member of the Executive 
Committee shall be represented by one delegate, who may be assisted by 
alternate delegates, advisors, and experts. 
(3) The nlllIlber of States members of the Executive Committee shall 
correspond to one-fourth of the number of States members of the 
Assembly. In establishing the number of seats to be filled, remainders after 
division by four shall be disregarded. 
( 4) In electing the members of the Executive Committee, the Assembly 
shciI1 have due regard to an equitable geographical distribution. 
(5)(a) Each member of the Executive Committee shall serve from the 
close of the session of the Assembly which elected it to the close of the 
next ordinary session of the Assembly. 
i~ EditorJs Note: Since 1980, the program and budget of the Union are 
biennial. 1992, No. 81 Patents Amendment IP IN 11 INZL/P 11 
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PATENT COOPERATION TREATY-Continued 37 
(b) Members of the Executive Committee may be re-elected but only 
up to a maximum of two-thirds of such members. 
(c) The Assembly shall establish the details of the rules governing the 
election and possible re-election of the members of the Executive 
Committee. 
(6)(a) The Executive Committee shall: 
(i) prepare the draft agenda of the Assembly; 
(ii) submit proposals to the Assembly in respect of the draft 
program and biennial budget of the Union prepared by the Director 
General; 
(ill) [deleted} 
(iv) submit, with appropriate conunents, to the Assembly the 
periodical reports of the Director General and the yearly audit reports on 
the accounts; 
(v) take all necessary measures to ensure the execution of the 
program of the Union by the Director General, in accordance with the 
decisions of the Assembly and having regard to circumstances arising 
between two ordinary sessions of the Assembly; 
(vi) perform such other functions as are allocated to it under this 
Treaty. 
(b) With respect to matters which are of interest also to other Unions 
administered by the Organization, the Executive Committee shall make its 
decisions after having heard the advice of the Coordination Committee of 
the Organization. 
(7)(a) The Executive Committee shall meet once a year in ordinary 
session upon convocation by the Director General, preferably during the 
same period and at the same place as the Coordination Committee of the 
Organization. 
(b) The Executive Committee shall meet in extraordinary session upon 
convocation by the Director General, either on his own initiative or at the 
request of its Chairman or one-fourth of its members. 
(8)(a) Each State member of the Executive Committee shall have one 
vote. 
(b) One-half of the members of the Executive Committee shall 
constitute a quorum. 
(c) Decisions shall be made by a simple majority of the votes cast. 
(d) Abstentions shall not be considered as votes. 
(e) A delegate may represent, and vote in the name of, one State only. 
(9) Contracting States not members of the Executive Committee shall be 
admitted to its meetings as observers, as well as any intergovernmental 
organization appointed as International Searching or Preliminary 
Examining Authority. 
(10) The Executive Committee shall adopt its own rules of procedure. 
Article 55 
International Bureau 
( 1) Administrative tasks concerning the Union shall be performed by the 
International Bureau. 
(2) The International Bureau shall provide the secretariat of the various 
organs of the Union. 38 IP/NIl/NZL/PI1 
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Patents Amendment 
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PATENT COOPERATION TREA TV-continued 1992, No. 81 
(3) The Director General shall be the chief executive of the Union and 
shill represent the Union. 
(4) The International Bureau shall publish a Gazette and other 
publications provided for by the Regulations or required by the Assembly. 
( 5) The Regulations shall specify the services that national Offices shall 
perform in order to assist the International Bureau and the International 
Searching and Preliminary Examining Authorities in carrying out their 
tasks under this Treaty. 
(6) The Director General and any staff member designated by him shall 
participate, without the right to vote, in all meetings of the Assembly, the 
Executive Committee and any other collllllittee or working group 
established under this Treaty or the Regulations. The Director General, or 
a staff member designated by him, shall be ex officio secretary of these 
bodies. 
(7)(a) The International Bureau shall, in accordance with the directions 
of the Assembly and in cooperation with the Executive Committee, make 
the preparations for the revision conferences. 
(b) The International Bureau may consult with intergovernmental and 
international non-governmental organizations concerning preparations for 
revision conferences. 
(c) The Director General and persons designated by him shall take 
part, without the right to vote, in the discussions at revision conferences. 
(8) The International Bureau shall carry out any other tasks assigned to 
it. 
Article 56 
COlll.lDittee for Technical Cooperation 
(1) The Assembly shall establish a Committee for Technical Cooperation 
(referred to in this Article as "the Collllllittee"). 
(2)(a) The Assembly shall determine the composition of the Committee 
and appoint its members, with due regard to an equitable representation 
of developing countries. 
(b) The International Searching and Preliminary Examining 
Authorities shall be ex offiCiO members of the Collllllittee. In the case where 
such an Authority is the national Office of a Contracting State, that State 
shall not be additionally represented on the Collllllittee. 
(c) If the number of Contracting States so allows, the total number of 
members of the Committee shall be more than double the number of ex 
officio members. 
(d) The Director General shall, on his own initiative or at the request 
of the Committee, invite representatives of interested organizations to 
participate in discussions of interest to them. 
(3) The aim of the Collllllittee shall be to contribute, by advice and 
recommendations: 
(i) to the constant improvement of the services provided for 
under this Treaty, 
(ii) to the securing, so long as there are several International 
Searching Authorities and several International Preliminary Examining 
Authorities, of the maximum degree of uniformity in their documentation 
and working methods and the maximum degree of uniformly high quality 
in their reports, and 1992, No. 81 Patents Amendment 
FIRST SCHEDULE-continued 
PATENT COOPERATION TREATY-Continued IP/N/1/NZL/P/1 
Page 143 
39 
(iii) on the initiative of the AsseIllbly or the Executive 
CoIllIllittee, to the solution of the technical probleIlls specifically involved 
in the establishITIent of a single International Searching Authority. 
(4) Any Contracting State and any interested international organization 
Illay approach the CoIllIllittee in writing on questions which fall within the 
cOIllpetence of the CoIllIllittee. 
(5) The CoIllIllittee Illay address its advice and recoIllIllendations to the 
Director General or, through hiITI, to the Assembly, the Executive 
Corrunittee, all or some of the International Searching and Preliminary 
Examining Authorities, and all or some of the receiving Offices. 
(6)(a) In any case, the Director General shall transITIit to the Executive 
CoIIUnittee the texts of all the advice and recoIllIllendations of the 
Corrunittee. He Illay COIllIllent on such texts. 
(b) The Executive CoIllIllittee may express its views on any advice, 
recoIllIllendation, or other activity of the CoITIITIittee, and Illay invite the 
Corrunittee to study and report on questions falling within its competence. 
The Executive CoIllIllittee may subITIit to the Assembly, with appropriate 
COIllIllents, the advice, recoIllIllendations and report of the ComITIittee. 
(7) Until the Executive CoIllIllittee has been established, references in 
paragraph (6) to the Executive CoITIITIittee shall be construed as references 
to the Assembly. 
(8) The details of the procedure of the CoIllIllittee shall be governed by 
the decisions of the Assembly. 
Article 57 
Finances 
(1)(a) The Union shall have a budget. 
(b) The budget of the Union shall include the incoIlle and expenses 
proper to the Union and its contribution to the budget of expenses 
COIllIllon to the Unions adITIinistered by the Organization. 
(c) Expenses not attributable exclusively to the Union but also to one 
or more other Unions administered by the Organization shall be 
considered as expenses conunon to the Unions. The share of the Union in 
such COIllIllon expenses shall be in proportion to the interest the Union has 
in them. 
(2) The budget of the Union shall be established with due regard to the 
requirements of coordination with the budgets of the other Unions 
administered by the Organization. 
(3) Subject to the provisions of paragraph (5), the budget of the Union 
shciU be financed from the following sources: 
(i) fees and charges due for services rendered by the International 
Bureau in relation to the Union; 
(ii) sale of, or royalties on, the publications of the International 
Bureau concerning the Union; 
(ill) gifts, bequests, and subventions; 
(iv) rents, interests, and other miscellaneous income. 
(4) The amounts of fees and charges due to the International Bureau and 
the prices of its publications shall be so fixed that they should, under 
normal circumstances, be sufficient to cover all the expenses of the 
International Bureau connected with the administration of this Treaty. IP/N/I/NZL/P/1 
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40 Patents Amendment 
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PATENT COOPERATION TREATY-Continued 1992, No. 81 
(5)(a) Should any financial year close with a deficit, the Contracting 
States shall, subject to the provisions of subparagraphs (b) and (c), pay 
contributions to cover such deficit. 
(b) The amount of the contribution of each Contracting State shall be 
decided by the Assembly with due regard to the number of international 
applications which has emanated from each of them in the relevant year. 
(c) If other means of provisionally covering any deficit or any part 
thereof are secured, the Assembly may decide that such deficit be carried 
forward and that the Contracting States should not be asked to pay 
contributions. 
(d) If the financial situation of the Union so permits, the Assembly 
may decide that any contributions paid under subparagraph (a) be 
reimbursed to the Contracting States which have paid them. 
(e) A Contracting State which has not paid, within two years of the 
due date as established by the Assembly, its contribution under 
subparagraph (b) may not exercise its right to vote in any of the organs of 
the Union. However, any organ of the Union may allow such a State to 
continue to exercise its right to ~vote in that organ so long as it is satisfied 
that the delay in payment is due to exceptional and unavoidable 
circumstances. 
(6) If the budget is not adopted before the beginning of a new financial 
period, it shall be at the same level as the budget of the previous year, as 
provided in the financial regulations. 
(7)(a) The Union shall have a working capital fund which shall be 
constituted by a single payment made by each Contracting State. If the 
fund becomes insufficient, the Assembly shall arrange to increase it. If part 
of the fund is no longer needed, it shall be reimbursed. 
(b) The amount of the initial payment of each Contracting State to the 
said fund or of its participation in the increase thereof shall be decided by 
the Assembly on the basis of principles similar to those provided for under 
paragraph (5)(b). 
(c) The terms of payment shall be fixed by the Assembly on the 
proposal of the Director General and after it has heard the advice of the 
Coordination Committee of the Organization. 
(d) Any reimbursement shall be proportionate to the amounts paid by 
each Contracting State, taking into account the dates at which they were 
paid. 
(8)(a) In the headquarters agreement concluded with the State on the 
territory of which the Organization has its headquarters, it shall be 
provided that, whenever the working capital fund is insufficient, such State 
shall grant advances. The amount of these advances and the conditions on 
which they are granted shall be the subject of separate agreements, in each 
case, between such State and the Organization. As long as it remains under 
the obligation to grant advances, such State shall have an ex offiCiO seat in 
the Assembly and on the Executive Committee. 
(b) The State referred to in subparagraph (a) and the Organization 
shall each have the right to denounce the obligation to grant advances, by 
written notification. Denunciation shall take effect three years after the 
end of the year in which it has been notified. 
(9) The auditing of the accounts shall be effected by one or more of the 
Contracting States or by external auditors, as provided in the financial 1992, No. 81 Patents Amendment 
FIRST SCHEDULE-continued 
PATENT COOPERATION TREATY -continued IPfNfllNZL/P/l 
Page 145 
41 
regulations. They shall be designated, with their agreement, by the 
Assembly. 
Article 58 
Regulations 
(1) The Regulations annexed to this Treaty provide Rules: 
(i) concerning matters in respect of which this Treaty expressly 
refers to the Regulations or expressly provides that they are or shall be 
prescribed, 
(ii) concerning any administrative requirements, matters, or 
procedures, 
(ill) concerning any details useful in the implementation of the 
provisions of this Treaty. 
(2)(a) The Assembly may amend the Regulations. 
(b) Subject to the provisions of paragraph (3), amendments shall 
require three·fourths of the votes cast. 
(3)(a) The Regulations specify the Rules which may be amended 
(i) only by unanimous consent, or 
(ii) only if none of the Contracting States whose national Office 
acts as an International Searching or Preliminary Examining Authority 
dissents, and, where such Authority is an intergovernmental organization, 
if the Contracting State member of that organization authorized for that 
purpose by the other member States within the competent body of such 
organization does not dissent. 
(h) Exclusion, for the future, of any such Rules from the applicable 
requirement shall require the fulfillment of the conditions referred to in 
subparagraph (a)(i) or (a)(ii), respectively. 
(c) Inclusion, for the future, of any Rule in one or the other of the 
requirements referred to in subparagraph (a) shall require unanimous 
consent. 
(4) The Regulations provide for the establishment, under the control of 
the Assembly, of Administrative Instructions by the Director General. 
(5) In the case of conflict between the provisions of the Treaty and those 
of the Regulations, the provisions of the Treaty shall prevail. 
CHAPTER VI 
Disputes 
Article 59 
Disputes 
Subject to Article 64(5), any dispute between two or more Contracting 
States concerning the interpretation or application of this Treaty or the 
Regulations, not settled by negotiation, may, by anyone of the States 
concerned, be brought before the International Court of Justice by 
application in confonnity with the Statute of the Court, unless the States 
concerned agree on some other method of settlement. The Contracting 
State bringing the dispute before the Court shall inform the International 
Bureau; the International Bureau shall bring the matter to the attention of 
the other Contracting States. 42 IP/N/1/NZL/P/l 
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Patents Amendment 
FIRST SCHEDULE-continued 
PATENT COOPERATION TREATY-Continued 
CHAPTER VII 
Revision and Atnendtnent 
Article 60 
Revision of the Treaty 1992, No. 81 
(1) This Treaty Inay be revised frOIn tUne to tUne by a special conference 
of the Contracting States. 
(2) The convocation of any revision conference shall be decided by the 
Assembly. 
(3) Any intergoverrunental organization appointed as International 
Searching or Preliminary Exarrllning Authority shall be admitted as 
observer to any revision conference. 
(4) Articles 53(5), (9) and (11), 54, 55(4) to (8), 56, and 57, Inay be 
amended either by a revision conference or according to the provisions of 
Article 61. 
Article 61 
AInendtnent of Certain Provisions of the Treaty 
(l)(a) Proposals for the aInendInent of Articles 53(5), (9) and (11), 54, 
55(4) to (8), 56, and 57, may be initiated by any State member of the 
Assembly, by the Executive Cornrnittee, or by the Director General. 
(b) Such proposals shall be corrununicated by the Director General to 
the Contracting States at least six months in advance of their consideration 
by the Assembly. 
( 2)( a) AInendments to the Articles referred to in paragraph (1) shall be 
adopted by the Assembly. . 
(b) Adoption shall require three-fourths of the votes cast. 
(3)(a) Any aInendment to the Articles referred to in paragraph (1) shall 
enter into force one month after written notifications of acceptance, 
effected in accordance with their respective constitutional processes, have 
been received by the Director General from three-fourths of the States 
members of the Assembly at the tUne it adopted the amendment. 
(b) Any amendment to the said Articles thus accepted shall bind all 
the States which are meInbers of the Assembly at the time the amendment 
enters into force, provided that any amendment increasing the financial 
obligations of the Contracting States shall bind only those States which 
have notified their acceptance of such amendment. 
(c) Any amendment accepted in accordance with the provisions of 
subparagraph (a) shall bind all States which become members of the 
Assembly after the date on which the amendment entered into force in 
accordance with the provisions of subparagraph (a). 
CHAPTER VIII 
Final Provisions 
Article 62 
Becoming Party to the Treaty 
(1) Any State member of the International Union for the Protection of 
Industrial Property Inay become party to this Treaty by: 
(i) signature followed by the deposit of an instrument of ratification, 
or 1992, No. 81 Patents Amendment IP IN 11 INZL/P 11 
Page 147 
FIRST SCHEDULE-continued 
PATENT COOPERATION TREATY-Continued 
(ii) deposit of an instlUlIlent of accession. 43 
(2) Instruments of ratification or accession shall be deposited with the 
Director General. 
(3) The provisions of Article 24 of the Stockholm Act of the Paris 
Convention for the Protection of Industrial Property shall apply to this 
Treaty. 
(4) Paragraph (3) shall in no way be understood as implying the 
recognition or tacit acceptance by a Contracting State of the factual 
situation concerning a territory to which this Treaty is made applicable by 
another Contracting State by virtue of the said paragraph. 
Article 68 
Entry into Force of the Treaty 
(1 )(a) Subject to the provisions of paragraph (3), this Treaty shall enter 
into force three months after eight States have deposited their instlUlIlents 
of ratification of accession, provided that at least four of those States each 
fulfill any of the following conditions: 
(i) the number of applications filed in the State has exceeded 
40,000 according to the m.ost recent annual statistics published by the 
International Bureau, 
(ii) the nationals or residents of the State have filed at least 1,000 
applications in one foreign country according to the most recent annual 
statistics published by the International Bureau, 
(iii) the national Office of the State has received at least 10,000 
applications from nationals or residents of foreign cOlUltries according to 
tlie most recent annual statistics published by the International Bureau. 
(b) For the purposes of this paragraph, the term "applications" does 
not include applications for utility models. 
(2) Subject to the provisions of paragraph (3), any State which does not 
becom.e party to this Treaty upon entry into force lUlder paragraph (1) 
shall becom.e bound by this Treaty three m.onths after the date on which 
such State has deposited its instrument of ratification or accession. 
(3) The provisions of Chapter 11 and the corresponding provisions of the 
Regulations annexed to this Treaty shall become applicabfe, however, only 
on the date on which three States each of which fiilfill at least one of the 
three requirements specified in paragraph (1) have become party to this 
Treaty without declaring, as provided in Article 64( 1), that they do not 
intend to be bound by the provisions of Chapter 11. That date shall not, 
however, be prior to that of the initial entry into force lUlder paragraph (1). 
Article 64 
Reservations 
(1)(a) Any State may declare that it shall not be bOlUld by the provisions 
of Chapter 11. 
(b) States making a declaration under 'subparagraph (a) shall not be 
bound by the provisions of Chapter 11 and the corresponding provisions of 
the Regulations. 
(2)(a) Any State not having m.ade a declaration under paragraph (1)(a) 
m.ay declare that: IP/N/1/NZL/P/1 
Page 148 
44 Patents Amendment 
FIRST SCHEDULE-continued 
PATENT COOPERATION TREATY-Continued 1992, No_ 81 
(i) it shall not be bound by the provisions of Article 3 9( 1) with 
respect to the furrlishing of a copy of the international application and a 
translation thereof (as prescribed), 
(ii) the obligation to delay national processing, as provided for 
under Article 40, shall not prevent publication, by or through its national 
Office, of the internationaf application or a translation thereof, it being 
understood, however, that it is not exempted from the limitations 
provided for in Articles 30 and 38. 
(b) States making such a declaration shall be bound accordingly. 
(3)(a) Any State may declare that, as far as it is concerned, international 
publication of international applications is not required. 
(b) Where, at the expiration of 18 months from the priority date, the 
international application contains the designation only of such State as 
have made declarations under subparagraph (a), the international 
application shall not be published by virtue ot Article 21 (2). 
(c) Where the provisions of subparagraph (b) apply, the international 
application shall nevertheless be published by the International Bureau: 
(i) at the request of the applicant, as provided in the Regulations, 
(ii) when a national application or a patent based on the 
international application is publislied by or on behalf of the national Office 
of any designated State having made a declaration under subparagraph (a), 
promptly after such publication but not before the expiration of 18 
months from the priority date. 
(4)(a) Any State whose national law provides for prior art effect of its 
patents as from a date before publication, but does not equate for pri<?r art 
purposes the priority date cfaimed under the Paris Convention for the 
Protection of Industrial Property to the actual filing date in that State, may 
declare that the filing outside that State of an international application 
designating that State is not equated to an actual filing in that State for 
prior art purposes. . 
(b) Any State making a declaration under subparagraph (a) shall to 
that extent not be bound by the provisions of Article 11(3). 
(c) Any State making a declaration under subparagraph (a) shall, at the 
same tiIne, state in writing the date from which, and the conditions under 
which, the prior art effect of any inteITlational application designating that 
State becomes effective in that State. This statement may be modified at 
any tiIne by notification addressed to the Director General. 
(5) Each State may declare that it does not consider itself bound by 
Article 59. With regard to any dispute between any Contracting State 
having made such a declaration and any other Contracting State, the 
provisions of Article 59 shall not apply. 
(6)(a) Any declaration made under this Article shall be made in writing. 
It may be made at the time of signing this Treaty, at the tiIne of depositing 
the instrument of ratification or accession, or, except in the case referred 
to in paragraph (5), at any later time by notification addressed to the 
Director General. In the case of the said notification, the declaration shall 
take effect six months after the day on which the Director General has 
received the notification, and shall not affect international applications 
filed prior to the expiration of the said six-month period. 
(b) Any declaration made under this Article may be withdrawn at any 
time by notification addressed to the Director General. Such withdrawal 1992, No. 81 Patents Amendment 
FIRST SCHEDULE-continued IP/N/l/NZL/P/l 
Page 149 
PATENT COOPERATION TREATY-Continued 45 
shall take effect three months after the day on which the Director General 
has received the notification and, in the case of the withdrawal of a 
declaration made under paragraph (3), shall not affect international 
applications filed prior to the expiration of the said three-month period. 
(7) No reservations to this Treaty other than the reservations under 
paragraphs (1) to (5) are penrutted. 
Article 65 
Gradual Application 
( 1) If the agreement with any International Searching or Preliminary 
Examining Authority provides, transitionally, for limits on the number or 
kind of international applications that such Authority undertakes to 
process, the Assembly shall adopt the measures necessary for the radual 
application of this Treaty and the Regulations in respect 0 given 
categories of international applications. This provision shall also apply to 
requests for an international-type search under Article 15(5). 
(2) The Assembly shall fix the dates from which, subject to the provision 
of paragraph (1), international applications may be filed and demands for 
international preliminary examination may be submitted. Such dates shall 
not be later than six months after this Treaty has entered into force 
according to the provisions of Article 63( 1), or after Chapter 11 has become 
applicable under Article 63(3), respectively. 
Article 66 
Denunciation 
(1) Any Contracting State may denounce this Treaty by notification 
addressed to the Director General. 
(2) Denunciation shall take effect six months after receipt of the said 
notihcation by the Director General. It shall not affect the effects of the 
international application in the denouncing State if the international 
application was filed, and, where the denouncing State has been elected, 
the election was made, prior to the expiration of the said six-month period. 
Article 67 
Signature and Languages 
( 1 )( a) This Treaty shall be signed in a single original in the English and 
French languages, both texts being equally authentic. 
(b) Official texts shall be established by the Director General, after 
consultation with the interested Governments, in the German, Japanese, 
Portuguese, Russian and Spanish languages, and such other languages as 
the Assembly may designate. 
(2) This Treaty shall remain open for signature at Washington until 
December 31, 1970. 
Article 68 
Depositary Functions 
( 1 ) The original of this Treaty, when no longer open for signature, shall 
be deposited with the Director General. 
(2) The Director General shall transmit two copies, certified by him, of 
this Treaty and the Regulations annexed hereto to the Governments of all 46 IP/N/I/NZL/P/I 
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Patents Amendment 
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States party to the Paris Convention for the Protection of Industrial 
Property and, on request, to the Government of any other State. 
(3) The Director General shall register this Treaty with the Secretariat of 
the United Nations. 
(4) The Director General shall transmit two copies, certified by him, of 
any amendment to this Treaty and the Regulations to the Governments of 
all Contracting States and, on request, to the Governrnent of any other 
State. 
Article 69 
Notifications 
The Director General shall notify the Governrnents of all States party to 
the Paris Convention for the Protection of Industrial Property of: 
(i) signatures under Article 62, 
(ii) deposits of instruments of ratification or accession under Article 
62, 
(iii) the date of entry into force of this Treaty and the date from 
which Chapter 11 is applicable in accordance with Article 63(3), 
(iv) any declarations made under Article 64( 1) to (5), 
(v) withdrawals of any declarations made under Article 64(6)(b), 
(vi) denunciations received under Article 66, and 
(vii) any declarations made under Article 31(4). 1992, No. 81 Patents Amendme1'lt 
SECOND SCHEDULE IP IN 11 INZL/P 11 
Page 151 
REGULATIONS UNDER THE PATENT COOPERATION TREATY 
(as in force from 1 July 1992) 
TABLE OF CONTENTS** 
Part A: Introductory Rules 
Rule 1 Abbreviated Expressions 
1.1 Meaning of Abbreviated Expressions 
Rule 2 Interpretation of Certain Words 
2.1 "Applicant" 
2.2 "Agent" 
2.2bis "Common Representative" 
2.3 "Signature" 
Part B: Rules Concerning Chapter 1 cif the Treaty 
Rule 3 The Request (Form) 
3.1 Form of Request 
3.2 Availability of Forms 
3.3 Check List 
3.4 
Rule 4 
4.1 
4.2 
4.3 
4.4 
4.5 
4.6 
4.7 
4.8 
4.9 
4.10 
4.11 
4.12 
4.13 
4.14 
4.15 
4.16 
4.17 
Rule 5 
5.1 
5.2 Particulars 
The Request (Contents) 
Mandatory and Optional Contents; Signature 
The Petition 
Title of the Invention 
Names and Addresses 
The Applicant 
The Inventor 
The Agent 
Common Representative 
Designation of States 
Priority Claim 
Reference to Earlier Search 
Choice of Certain Kinds of Protection 
Identification of Parent Application or Parent Grant 
Continuation or Continuation·in·Part 
Signature 
Transliteration or Translation of Certain Words 
Additional Matter 
The Description 
Manner of the Description 
Nucleotide and/or Amino Acid Sequence Disclosure 47 
Section 2 
*Adopted on June 19,1970, and amended on April 14,1978, on October 3, 1978, on May 
1,1979, onJune 16,1980, on September 26,1980, onJuly 3,1981, on September 10,1982, on 
October 4,1983, on February 3,1984, on September 28,1984, October 1, 1985,July 12,1991, 
and October 2, 1991. 
**This Table of Contents is added for the convenience of the reader. It does not appear in 
the original. IP/N/1/NZL/P/1 
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48 Patents Amendment 1992, No. 81 
SECOND SCHEDULE-continued 
REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 
Rule 6 
6.1 
6.2 
6.3 
6.4 
6.5 
Rule 7 
7.1 
7.2 
Rule 8 
8.1 
8.2 
8.3 
Rule 9 
9.1 
9.2 
9.3 
Rule 10 
10.1 
10.2 
Rule 11 
11.1 
11.2 
11.3 
11.4 
11.5 
11.6 
11.7 
11.8 11.9 
11.10 
11.11 
11.12 
11.13 
11.14 
Rule 12 
12.1 
12.2 
Rule 13 
13.1 
13.2 
13.3 
13.4 
13.5 
Rule 13bis 
13bis.l 
13bis.2 
13bis.3 
13bis.4 The ClaiIns 
Number and Numbering of Claims 
References to Other Parts of the International Application 
Manner of Claiming 
Dependent Claims 
Utility Models 
The Drawings 
Flow Sheets and Diagrams 
Time Limit 
The Abstract 
Contents and Form of the Abstract 
Figure 
Guiding Principles in Drafting 
Expressions, Ete., Not to Be Used 
Definition 
Noting of Lack of Compliance 
Reference to Article 21 (6) 
Terminology and Signs 
Terminology and Signs 
Consistency 
Physical Requirements of the International Application 
Number of Copies 
Fitness for Reproduction 
Material to Be Used 
Separate Sheets, Ete. 
Size of Sheets 
Margins 
Numbering of Sheets 
Numbering of Lines 
Writing of Text Matter 
Drawings, Formulae, and Tables, in Text Matter 
Words in Drawings 
Alterations, Ete. 
Special Requirements for Drawings 
Later Documents 
Language of the International Application 
Admitted Languages 
Language of Changes in the International Application 
Unity of Invention 
Requirement 
Circumstances in Which the Requirement of Unity of Invention Is to Be 
Considered Fulfilled 
Detennination of Unity of Invention Not Affected by Manner of 
Claiming 
Dependent ClaiIns 
Utility Models 
Microbiological Inventions 
Definition 
References (General) 
References: Contents; Failure to Include Reference or Indication 
References: Time of Furnishing Indications 1992, No. 81 Patents Amendment 
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49 
REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 
13bis.6 
13bis.7 
Rule 13teT 
13teT.l 
13ta.2 
Rule 14 
14.1 
Rule 15 
15.1 
15.2 
15.3 
15.4 
15.5 
15.6 
Rule 16 
16.1 
16.2 
16.3 
Rule 16bis 
16bis.l 
16bis.2 
Rule 17 
17.1 
17.2 
Rule 18 
18.1 
18.2 
18.3 
18.4 
Rule 19 
19.1 
19.2 
19.3 
Rule 20 
20.1 
20.2 
20.3 
20.4 
20.5 
20.6 
20.7 
20.8 
20.9 
Rule 21 
21.1 
Rule 22 
22.1 
22.2 References and Indications for the Purposes of One or More Designated 
States; Different Deposits for Different Designated States; Deposits with 
Depositary Institutions Other Than Those Notified 
Furnishing of Samples 
National Requirements: Notification and Publication 
Nucleotide and/or Amino Acid Sequence Listings 
Sequence Listing for International Authorities 
Sequence Listing for Designated Office 
The Transmittal Fee 
The Transmittal Fee 
The International Fee 
Basic Fee and Designation Fee 
Amounts 
Mode of Payment 
Time of Payment 
Fees under Rule 4.9 (c) 
Refund 
The Search Fee 
Right to Ask for a Fee 
Refund 
Partial Refund 
Extension of Time Limits for Payment of Fees 
Invitation by the Receiving Office 
Late Payment Fee 
The Priority Document 
Obligation to Submit Copy of Earlier National Application 
Availability of Copies 
The Applicant 
Residence 
Nationality 
Two or more Applicants 
Infonnation on Requirements under National Law as to Applicants 
The Competent Receiving Office 
Where to File 
Two or more Applicants 
Publication of Fact of Delegation of Duties of Receiving Office 
Receipt of the International Application 
Date and Number 
Receipt on Different Days 
Corrected International Application 
Detennination lLTlder Article 11 ( 1 ) 
Positive Detennination 
Invitation to Correct 
Negative Detennmation 
Error by the Receiving Office 
Certified Copy for the Applicant 
Preparation of Copies 
Responsibility of the Receiving Office 
Transmittal of the Record Copy 
Procedure 
[Deleted] 50 IP/N/l/NZL/P/1 
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Patents Amendment 1992, No. 81 
SECOND SCHEDULE-continued 
REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 
22.3 
Rule 23 
23.1 
Rule 24 
24.1 
24.2 
Rule 25 
25.1 
Rule 26 
26.1 
26.2 
26.3 
26.3bis 
26.3ter 
26.4 
26.5 
26.6 
Rule 27 
27.1 
Rule 28 
28.1 
Rule 29 
29.1 
29.2 
29.3 
29.4 
Rule 30 
30.1 
Rule 31 
31.1 
31.2 
Rule 32 
Rule 32bis 
Rule 33 
33.1 
33.2 
33.3 
Rule 34 
34.1 
Rule 35 
35.1 
35.2 
Rule 36 
36.1 
Rule 37 
37.1 
37.2 
Rule 38 
38.1 TUne Limit Under Article 12(3) 
Transmittal of the Search Copy 
Procedure 
Receipt of the Record Copy by the International Bureau 
[Deleted} 
Notification of Receipt of the Record Copy 
Receipt of the Search Copy by the International Searching Authority 
Notification of Receipt of the Search Copy 
Checking by, and Correcting before, the Receiving Office of Certain 
Elements of the International Application 
TUne Limit for Check 
TUne Limit for Correction 
Checking of Physical Requirements Under Article 14( 1 )( a )(v) 
Invitation to Correct Defects under Article 14( 1 )(b) 
Invitation to Correct Defects under Article 3 (4) (i) 
Procedure 
Decision of the Receiving Office 
Missing Drawings 
Lack of PayYl1ent of Fees 
Fees 
Defects Noted by the International Bureau 
Note on Certain Defects 
International Applications or Designations Considered Withdrawn under 
Article 14(1), (3) or (4) 
Finding by Receiving Office 
[Deleted} 
Calling Certain Facts to the Attention of the Receiving Office 
Notification of Intent to Make Declaration under Article 14(4) 
TUne Limit under Article 14(4) 
TUne Limit 
Copies Required under Article 13 
Request for Copies 
Preparation of Copies 
[Deleted} 
[Deleted} 
Relevant Prior Art for the International Search 
Relevant Prior Art for the International Search 
Fields to Be Covered by the International Search 
Orientation of the International Search 
Minimum Documentation 
Definition 
The Competent International Searching Authority 
When Only One International Searching Authority Is Competent 
When Several International Searching Authorities Are Competent 
Minimum Requirements for International Searching Authorities 
Definition of MiniInum Requirements 
Missing or Defective Title 
Lack of Title 
Establishment of Title 
Missing or Defective Abstract 
Lack of Abstract 1992, No. 81 Patents Amendment IP IN 11 INZL/P 11 
Page 155 
SECOND SCHEDULE-continued 
REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 
38.2 
Rule 39 
39.1 
Rule 40 
40.1. 
40.2 
40.3 
Rule 41 
41.1 
Rule 42 
42.1 
Rule 43 
43.1 
43.2 
43.3 
43.4 
43.5 
43.6 
43.7 
43.8 
43.9 
43.10 
Rule 44 
44.1 
44.2 
44.3 
Rule 45 
45.1 
Rule 46 
46.1 
46.2 
46.3 
46.4 
46.5 
Rule 47 
47.1 
47.2 
47.3 
47.4 
Rule 48 
48.1 
48.2 
48.3 
48.4 
48.5 
48.6 
Rule 49 
4.9.1 
49.2 
49.3 
49.4 Establishment of Abstract 
Subject Matter under Article 17(2)(a)(i) 
Definition 
Lack of Unity of Invention (International Search) 
Invitation to Pay 
Additional Fees 
Time Limit 
Earlier Search Other Than International Search 
Obligation to Use Results; Refund of Fee 
Time Limit for International Search 
Time Limit for International Search 
The International Search Report 
Identifications 
Dates 
Classification 
Language 
Citations 
Fields Searched 
Remarks Concerning Unity 9f Invention 
Authorized Officer 
Additional Matter 
Form 
Transmittal of the International Search Report, Etc. 
Copies of Report or Declaration 
Title or Abstract 
Copies of Cited Documents 
Translation of the International Search Report 
Languages 
Amendment of Claims before the International Bureau 
Time Limit 
Where to File 
Language of Amendments 
Statement 
Form of Amendments 
Communication to Designated Offices 
Procedure 
Copies 
Languages 
Express Request under Article 23 (2) 
International Publication 
Form 
Contents 
Languages 
Earlier Publication on the Applicant's Request 
Notification of National Publication 
Announcing of Certain Facts 
Copy, Translation and Fee under Article 22 
Notification 
Languages 
Statements under Article 19; Indications under Rule 13bis.4 
Use of National Form 51 52 IP/N/1/NZL/P/1 
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Patents Amendment 1992, No. 81 
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REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 
49.5 
Rule 50 
50.1 
Rule 51 
51.1 
51.2 
51.3 
Rule 51 his 
51 his. 1 
51 his. 2 
Rule 52 
52.1 Contents of and Physical Requirements for the Translation 
Faculty under Article 22(3) 
Exercise of Faculty 
Review by Designated Offices 
Time Limit for Presenting the Request to Send Copies 
Copy of the Notice 
Time Limit for Paying National Fee and Furnishing Translation 
Certain National Requirements Allowed under Article 27(1),(2),(6) and (7) 
Certain National Requirements Allowed 
Opportunity to Comply with National Requirements 
Amendment of the Claims, the Description, and the Drawings, before 
Designated Offices 
Time Limit 
Part C: Rules Concerning Chapter 11 of the Treaty 
Rule 53 The Demand 
53.1 Form 
53.2 Contents 
53.3 The Petition 
53.4 The Applicant 
53.5 Agent or Common Representative 
53.6 Identification of the International Application 
53.7 Election of States 
53.8 
53.9 
Rule 54 
54.1 
54.2 
54.3 
54.4 
Rule 55 
55.1 
Rule 56 
56.1 
56.2 
56.3 
56.4 
56.5 
Rule 57 
57.1 
57.2 
57.3 
57.4 
57.5 
57.6 
Rule 58 
58.1 
58.2 
58.3 
Rule 59 
59.1 Signature 
Statement Concerning Amendments 
The Applicant Entitled to Make a Demand 
Residence and Nationality 
Two or More Applicants 
[Deleted} 
Applicant Not Entitled to Make a Demand 
Languages (International Preliminary Examination) 
The Demand 
Later Elections 
Elections Submitted Later Than the Demand 
Identification of the International Application 
Identification of the Demand 
Form of Later Elections 
Language of Later Elections 
The Handling Fee 
Requirement to Pay 
Amount 
Time and Mode of Payment 
Failure to Pay 
[Deleted} 
Refund 
The Preliminary Examination Fee 
Right to Ask for a Fee 
Failure to Pay 
Refund 
The Competent International Preliminary Examining Authority 
Demands under Article 31 (2)(a) 1992, No. 81 Patents Amendment 
SECOND SCHEDULE-continued IP IN 11 INZL/P 11 
Page 157 
53 
REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 
59.2 
Rule 60 
60.1 
60.2 
Rule 61 
61.1 
61.2 
61.3 
61.4 
Rule 62 
62.1 
62.2 
Rule 63 
63.1 
Rule 64 
64.1 
64.2 
64.3 
Rule 65 
65.1 
65.2 
Rule 66 
66.1 
66.2 
66.3 
66.4 
66.4 bis 
66.5 
66.6 
66.7 
66.8 
66.9 
Rule 67 
67.1 
Rule 68 
68.1 
68.2 
68.3 
68.4 68.5 
Rule 69 
69.1 
69.2 
Rule 70 
70.1 
70.2 
70.3 
70.4 Demands under Article 31(2)(b) 
Certain Defects in the Demand or Elections 
Defects in the Demand 
Defects in Later Elections 
Notification of the Demand and Elections 
Notification to the International Bureau and the Applicant 
Notification to the Elected Offices 
Infonnation for the Applicant 
Publication in the Gazette 
Copy of AInendments under Article 19 for the International Preliminary 
Examining Authority 
AInendments Made before the Demand is Filed 
AInendments Made after the Demand is Filed 
Minimum Requirements for International Preliminary Examining 
Authorities 
Definition of Minimum Requirements 
Prior Art for International Preliminary Examination 
Prior Art 
Non-Written Disclosures 
Certain Published Documents 
Inventive Step or Non-Obviousness 
Approach to Prior Art 
Relevant Date 
Procedure before the International Preliminary Examining Authority 
Basis of the International Preliminary Examination 
First Written Opinion of the International Preliminary Examining 
Authority 
Fonnal Response to the International Preliminary Examining Authority 
Additional Opportunity for Submitting AInendments or Arguments 
Consideration of Amendments and Arguments 
Amendment 
Infonnal Communications with the Applicant 
Priority Document 
Fonn of AInendments 
Language of Amendments 
Subject Matter under Article 34(4)(a)(i) 
Definition 
Lack of Unity of Invention (International Preliminary Examination) 
No Invitation to Restrict or Pay 
Invitation to Restrict or Pay 
Additional Fees 
Procedure in the Case of Insufficient Restriction of the Claims 
Main Invention 
Start of and Time Limit for International Preliminary Examination 
Start of International Preliminary Examination 
Time Unlit for International Preliminary Examination 
The International Preliminary Examination Report 
Definition 
Basis of the Report 
Identifications 
Dates 54 IP IN 11 INZL/P 11 
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Patents Amendment 1992, No. 81 
SECOND SCHEDULE-continued 
REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 
70.5 
70.6 
70.7 
70.8 
70.9 
70.10 
70.11 
70.12 
70.13 
70.14 
70.15 
70.16 
70.17 
Rule 71 
71.1 
71.2 
Rule 72 
72.1 
72.2 
72.3 
Rule 73 
73.1 
73.2 
Rule 74 
74.1 
Rule 75 
Rule 76 
76.1 
76.2 
76.3 
76.4 
76.5 
76.6 
Rule 77 
77.1 
Rule 78 
78.1 
78.2 
78.3 Classification 
Statement under Article 35(2) 
Citations under Article 35(2) 
Explanations under Article 35(2) 
Non-Written Disclosures 
Certain Published Documents 
Mention of AInendments 
Mention of Certain Defects and Other Matters 
Remarks Concerning Unity of Invention 
Authorised Officer 
Form 
Annexes of the Report 
Languages of the Report and the Annexes 
Transmittal of the International Preliminary Examination Report 
Recipients 
Copies of Cited Documents 
Translation of the International Preliminary Examination Report 
Languages 
Copy of Translation for the Applicant 
Observations on the Translation 
Communication of the International Preliminary Examination Report 
Preparation of Copies 
Time Limit for Communication 
Translations of Annexes of the International Prefuninary Examination 
Report and Transmittal Thereof 
Contents of Translation and Time Limit for Transmittal Thereof 
[Deleted} 
Copy, Translation and Fee under Article 3 9( 1); Translation of Priority 
Document 
[Deleted} 
[Deleted} 
[Deleted} 
Time Limit for Translation of Priority Document 
Application of Rules 22. 1 (g), 49 and 51 bis 
Transitional provision 
Faculty under Article 39(1)(b) 
Exercise of Faculty 
AInendment of the Claims, the Description, and the Drawings, before 
Elected Offices 
Time Limit Where Election Is Effected prior to Expiration of 19 Months 
from Priority Date 
Time Limit Where Election Is Effected after Expiration of 19 Months 
from Priority Date 
Utility Models 
Part D: Rules Concerning Chapter III of the Treaty 
Rule 79 Calendar 
79.1 Expressing Dates 
Rule 80 Computation of Time Limits 
80.1 Periods Expressed in Years 
80.2 Periods Expressed in Months 1992, No. 81 Patents Amendment 
SECOND SCHEDULE-continued IP/N/lINZL/P/l 
Page 159 
REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 
80.3 
80.4 
80.5 
80.6 
80.7 
Rule 81 
81.1 
81.2 
81.3 Periods Expressed in Days 
Local Dates 
Expiration on a Non-Working Day 
Date of DocUIllents 
End of Working Day 
Modification of Time Limits Fixed in the Treaty 
Proposal 
Decision by the AsseIllbly 
Voting by Correspondence 
Irregularities in the Mail Service 
Delay or Loss in Mail 
Interruption in the Mail Service 55 
Rule 82 
82.1 
82.2 
Rule 82bis Excuse by the Designated or Elected State of Delays in Meeting Certain 
TilDe Limits 
Rule 82ter 
82ter.l 
Rule 83 
83.1 
83.2 Meaning of "Time Limit" in Article 48(2) 
Reinstatement of Rights and Other Provisions to Which Article 48(2) 
Applies 
Rectification of Errors Made by the Receiving Office or by the International 
Bureau 
Errors Concerning the International Filing Date and the Priority Clai.rn 
Right to Practice before International Authorities 
Proof of Right 
InforInation 
Part E: Rules Concerning Chapter V of the Treaty 
Rule 84 Expenses of Delegations 
84.1 Expenses Borne by GovernInents 
Rule 85 Absence of Q.UOruIn in the AsseIllbly 
85.1 Voting by Correspondence 
Rule 86 The Gazette 
86. 1 Contents 
86.2 Languages 
86.3 Frequency 
86.4 Sale 
86.5 
86.6 
Rule 87 
87.1 
87.2 
Rule 88 
88.1 
88.2 
88.3 
88.4 
Rule 89 
89.1 
89.2 
89.3 Title 
Further Details 
Copies of Publications 
International Searching and PreliIninary Exanllning Authorities 
National Offices 
AInendInent of the Regulations 
RequireIllent of Unanimity 
{Deleted} 
RequireIllent of Absence of Opposition by Certain States 
Procedure 
Adnllnistrative Instructions 
Scope 
Source 
Publication and Entry into Force 
Part F: Rules Concerning Several Chapters of the Treaty 
Rule 90 Agents and COIllIllon Representatives IP/NI 1 INZL/PI 1 
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56 Patents Amendment 1992, No. 81 
SECOND SCHEDULE-continued 
REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 
90.1 
90.2 
90.3 
90.4 
90.5 
90.6 
Rule 90bis 
90bis.l 
90bis.2 
90bis.3 
90bis.4 
90bis.5 
90bis.6 
90bis.7 
Rule 91 
91.1 
Rule 92 
92.1 
92.2 
92.3 
92.4 
Rule 92bis 
92bis.l 
Rule 93 
93.1 
93.2 
93.3 
93.4 
Rule 94 
94.1 
Rule 95 
95.1 
Rule 96 
96.1 Appointment as Agent 
Common Representative 
Effects of Acts by or in Relation to Agents and Common Representatives 
Manner of Appointment of Agent or Common Representative 
General Power of Attorney 
Revocation and Renunciation 
Withdrawals 
Withdrawal of the International Application 
Withdrawal of Designations 
Withdrawal of Priority Claims 
Withdrawal of the Demand, or of Elections 
Signature 
Effect of Withdrawal 
Faculty under Article 37 (4) (b) 
Obvious Errors in Documents 
Rectification 
Correspondence 
Need for Letter and for Signature 
Languages 
Mailings by National Offices and Intergovernmental Organizations 
Use of Telegraph, Teleprinter, Facsimile Machine, Etc. 
Recording of Changes in Certain Indications in the Request or the Demand 
Recording of Changes by the International Bureau 
Keeping of Records and Files 
The Receiving Office 
The International Bureau 
The International Searching and Preliminary Examining Authorities 
Reproductions 
Furnishing of Copies by the International Bureau and the International 
Prelirrrinary Examining Authority 
Obligation To Furnish 
Availability of Translations 
Furnishing of Copies of Translations 
The Schedule of Fees 
Schedule of Fees Annexed to Regulations 1992, No. 81 Patents Amendment 
SECOND SCHEDULE-continued IP/N/1/NZL/P/1 
Page 161 
REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 
Schedule of Fees 
PART A 
Introductory Rules 
Rule 1 
Abbreviated Expressions 
1.1 Meaning qf Abbreviated Expressions 57 
( a) In these Regulations, the word "Treaty" means the Patent 
Cooperation Treaty. 
(b) In these Regulations, the words "Chapter" and "Article" refer to the 
specified Chapter or Article of the Treaty. 
2. 1 ~~pplicant" Rule 2 
Interpretation of Certain Words 
Whenever the word "applicant" is used, it shall be construed as meaning 
also the agent or other representative of the applicant, except where the 
contrary clearly follows from the wording or the nature of the provision, 
or the context in which the word is used, such as, in particular, where the 
provision. refers to the residence or nationality of the applicant. 
2.2 ~~gent" 
Whenever the word "agent" is used, it shall be construed as meaning an 
agent appointed under Rule 90. 1, unless the contrary clearly follows from 
the wording or the nature of the provision, or the context in which the 
word is used. 
2.2bis uCommon Representative" 
Whenever the expression "coIllIllon representative" is used, it shall be 
construed as Illean.in~ an applicant appointed as, or considered to be, the 
COIllIllon representative under Rule 90.2. 
2.3 USignature" 
Whenever the word "signature" is used, it shall be understood that, if 
the national law applied by the Receiving Office or the competent 
International Searching or Preliminary Examining Authority require the 
use of a seal instead of a signature, the word, for the purposes of that 
Office or Authority, shall mean seal. 
PARTB 
Rules Concerning Chapter I of the Treaty 
Rule 8 
The Request (Fonn) 
3.1 Form of Request 
The request shall be made on a printed form or be presented- as a 
computer print-out. 58 IP IN 11 INZL/P 11 
Page 162 
Patents Amendment 1992, No. 81 
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REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 
3.2 A"vailability cif Forms 
Copies of the printed fonn shall be furnished free of charge to the 
applicants by the receiving Office, or, if the receiving Office so desires, by 
tne International Bureau. 
3.3 Check List 
(a) The request shall contain a list indicating: 
(i) the total number of sheets constituting the intetnational 
application and the number of the sheets of each element of the 
intetnational application (request, description, claims, drawings, abstract); 
(ii) whether or not the intetnational application as filed is 
accompanied by a power of attorney (i.e., a document appointing an agent 
or a COIllII1on representative), a copy of a general power of attorney, a 
priority document, a document relating to the payment of fees, and any 
other document (to be specified in the check list); 
(ill) the number of that figure of the drawings which the applicant 
suggest should accompany the abstract when the abstract is published; in 
exceptional cases, the applicant may suggest more than one figure_ 
(b) The list shall be completed by the applicant, failing which the 
receIving Office shall make the necessary indications, except that the 
number referred to in paragraph (a)(ill) shall not be indicated by the 
receiving Office. 
3.4 Particulars 
Subject to Rule 3.3, particulars of the printed request fonn and-of a 
request presented as a computer print-out shall be prescribed by the 
Adininistrative Instructions. 
Rule 4: 
The Request (Contents) 
4.1 Mandatory and Optional Contents~· Signature 
(a) The request shall contain: 
(i) a petition, 
(ii) the title of the invention, 
(ill) indications concerning the applicant and the agent, if there is 
an agent, 
(iv) the designation of States, 
(v) indications concerrling the inventor where the national law of 
at least one of the designated States requires that the name of the inventor 
be furnished at the time of filing a national application. 
(b) The request shall, where applicable, contain: 
(i) a priority claim, 
(ii) a reference to any earlier international, international-type or 
other search, 
(ill) choices of certain kinds of protection, 
(iv) an indication that the applicant wishes to obtain a regional 
patent, 
(v) a reference to a parent application or parent patent. 
(c) The request may contain: 1992, No. 81 Patents Amendment 
SECOND SCHEDULE-continued IP IN 11/NZL/P 11 
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REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 59 
(i) indications concerning the inventor where the national law of 
none of the designated States requires that the name of the inventor be 
furnished at the time of filing a national application, 
(ii) a request to the receiving Office to transmit the priority 
document to the International Bureau where the application whose 
priority is claimed was filed with the national Office or intergoverrunental 
authority which is the receiving Office. 
(d) The request shall be signed. 
4.2 The Petition 
The petition shall be to the following effect and shall preferably be 
worded as follows: "The undersigned requests that the present 
international application be processed according to the Patent Cooperation 
Treaty." 
4.3 Title if the Invention 
The title of the invention shall be short (preferably from two to seven 
words when in English or translated into English) and precise. 
4.4 Names and Addresses 
(a) Names of natural persons shall be indicated by the person's family 
nam.e and given name(s), the family name being indicated before the given 
name(s). 
(b) N aIlles of legal entities shall be indicated by their full, official 
designations. ' 
(c) Addresses shall be indicated in such a way as to satisfy the customary 
requirements for prompt postal delivery at the indicated address and, in 
any case, shall consist of all the relevant administrative units up to, and 
including, the house number, if any. Where the national law of the 
designated State does not require the indication of the house number, 
failure to indicate such number shall have no effect in that State. In order 
to allow rapid communication with the applicant, it is recommended to 
indicate any teleprinter address, telephone and facsimile machine 
numbers, or corresponding data for other like means of communication, of 
the applicant or, where applicable, the agent or the common 
representative. 
(d) For each applicant, inventor, or agent, only one address may be 
indicated, except that, if no agent has been appointed to represent the 
applicant, or alf of them if more than one, the applicant or, if there is more 
toan one applicant, the common representative, may indicate, in addition 
to any other address given in the request, an address to which notifications 
shall be sent. 
4.5 The Applicant 
(a) The request shall indicate the name, address, nationality and 
residence of the applicant or, if there are several applicants, of each of 
them. 
(b) The applicant's nationality shall be indicated by the name of the 
State of which he is a national. IP/N/1/NZL/P/1 
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60 Patents Amendment 1992, No. 81 
SECOND SCHEDULE-continued 
REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 
(c) The applicant's residence shall be indicated by the name of the State 
of which he is a resident. 
(d) The request may, for different designated States, indicate different 
applicants. In such a case, the request shall indicate the applicant or 
applicants for each designated State or group of designated States. 
4.6 The Inventor 
(a) Where Rule 4. 1 (a)(v) ap'plies, the request shall indicate the name and 
address of the inventor or, If there are several inventors, of each of them. 
(b) If the applicant is the inventor, the request, in lieu of the indication 
under paragraph (a), shall contain a statement to that effect. 
(c) The request may, for different designated States, indicate different 
persons as inventors where, in this respect, the requirements of the 
national laws of the designated States are not the same. In such a case, the 
request shall contain a separate statement for each designated State or 
group of States in which a particular person, or the same person, is to be 
conSIdered the inventor, or in whicb particular persons, or the same 
persons, are to be considered the inventors. 
4.7 The Agent 
If agents are designated, the request shall so indicate, and shall state 
their names and addresses. 
4.8 Common Representative 
If a common representative is designated, the request shall so indicate. 
4.9 Designation of States 
(a) Contracting States shall be designated in the request: 
(i) in the case of designations for the purpose of obtaining 
national patents, by an indication of each State concerned; 
(ii) in the case of designations for the purpose of obtaining a 
regional patent, by an indication that a regional patent is desired either for 
all Contracting States which are party to the regional patent treaty 
concerned or only for such Contracting States as are specified. 
(b) The request may contain an indication that all designations which 
would be permitted under the Treaty, other than those made under 
paragraph (a), are also made, provided that: 
(i) at least one Contracting State is designated under paragraph 
(a), and 
(ii) the request also contains a statement that any designation 
made under this paragraph is subject to confirmation as provided in 
paragraph (c) and that any designation which is not so confinned before 
the expIration of 15 months from the priority date is to be regarded as 
withdrawn by the applicant at the expiration of that time limit. 
(c) The confirmation of any designation made under paragraph (b) shall 
be effected by 
(i) filing with the receiving Office a written notice containing an 
indication as referred to in paragraph (a) (i) or (ii), and 1992, No. 81 Patents Amendment 
SECOND SCHEDULE-continued IP/NI 1 INZL/PI 1 
Page 165 
REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 61 
(ii) paying to the receiving Office the designation fee and the 
confirmation fee referred to in Rule 15.5 
within the time limit under paragraph (b )(ii). 
4.10 Priority Claim 
( a) The declaration referred to in Article 8( 1) shall be made in the 
request; it shall consist of a statement to the effect that the priority of an 
earlier application is claimed and shall indicate: 
(i) when the earlier application is not a regional or an 
international application, the country in which it was fired; when the 
earlier application is a regional or an international application, the country 
or countnes for which it was filed, 
(ii) the date on which it was filed, 
(iii) the nwnber under which it was filed, and 
(iv) when the earlier application is a regional or an international 
application, the national Office or intergovernmental organization with 
which it was filed. 
(b) If the request does not indicate both 
(i) when the earlier application is not a regional or an 
international application, the country in which such earlier application was 
filed; when the earlier application is a regional or an mternational 
application, at least one country for which such earlier application was 
filed, and 
(ii) the date on which the earlier application was filed, 
the priority claim shall, for the purposes of the procedure under the 
Treaty, be considered not to have been made. However, where, resulting 
from an obvious error, the indication of the said country or the said date is 
missing or is erroneous, the receiving Office Inay, at the request of the 
applicant, make the necessary correction. The error shall be considered as 
an obvious error whenever the correction is obvious frOIn a comparison 
with the earlier application. Where the error consists of the omission of the 
indication of the said date, the correction can only be Inade before the 
transmittal of the record copy to the International Bureau. In the case of 
any other error relating to the indication of the said date or in the case of 
any error relating to the indication of the said country, the correction can 
only be Inade before the expiration of the time limit under Rule 1 7 .1 (a) 
cOInputed on the basis of the correct priority date. 
(c) If the application nUInber of the earlier application is not indicated in 
the request but is furnished by the applicant to the International Bureau or 
to the receiving Office prior to the expiration of the 16th Inonth frOIn the 
priority date, it shall be considered by all designated States to have been 
furnished in time. 
(d) If the filin~ date of the earlier application as indicated in the request 
does not fall Within the period of one year preceding the international 
filing date, the receiving Office, or, if the receiving Office has failed to do 
so, the International Bureau, shall invite the applicant to ask either for the 
cancellation of the declaration made under Article 8( 1) or, if the date of the 
earlier application was indicated erroneously, for the correction of the date 
so indicated. If the applicant fails to act accordingly within one month IP/N/lINZL/P/1 
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from the date of the invitation, the declaration made under Article 8( 1 ) 
shall be cancelled ex offiCiO. 
(e) Where the priorities of several earlier applications are claimed, the 
provisions of paragraphs (a) to (d) shall apply to each of them. 
4.11 Reference to Earlier Search 
If an international or international-type search has been requested on an 
application under Article 15(5) or if the applicant wishes the International 
Searching Authority to base the international search report wholly or in 
part on the results of a search, other than an international or international­
type search, made by the national Office or intergovernmental 
organization which is the International Searching Authority competent for 
the international application, the request shall contain a reference to that 
fact. Such reference shall either identify the application (or its translation, 
as the case may be) in respect of which the earlier search was made by 
indicating country, date and number, or the said search by indicating, 
where applicable, date and number of the request for such search_ 
4.12 Choice of Certain Kinds of Protection 
(a) If the applicant wishes his international application to be treated, in 
any designated State, as an application not for a patent but for the grant of 
any of the other kinds of protection specified in Article 43, he shall so 
indicate in the request. For the purposes of this paragraph, Article 2(ii) 
shall not apply. 
(b) In the case provided for in Article 44, the applicant shall indic~te the 
two kinds of protection sought, or, if one of two kinds of protection is 
primarily sought, he shall indicate which kind is sought primarily and 
which kind is sought subsidiarily. 
4. 13 Identification of Parent Application or Parent Grant 
If the applicant wishes his international application to be treated, in any 
designatea State, as an application for a patent or certificate of addition, 
inventor's certificate of addition, or utility certificate of addition, he shall 
identify the parent app'lication or the parent patent, parent inventor's 
certificate, or parent utility certificate to which the patent or certificate of 
addition, inventor's certificate of addition, or utility certificate of addition, 
if granted, relates. For the purposes of this paragraph Article 2(ii) shall not 
apply. 
4.14 Continuation or Continuation-in-Part 
If the applicant wishes his international application to be treated, in any 
designatea State, as an application for a continuation or a continuation-in­
part of an earlier applicatIon, he shall so indicate in the request and shall 
Identify the parent application involved. 
4.15 Signature 
(a) Subject to paragraph (b), the request shall be signed by the applicant 
or, if there is more than one applicant, by all of them. 
(b) Where two or more applicants file an international application which 
designates a State whose natIonal law requires that national applications be 1992, No. 81 Patents Amendment 
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filed by the inventor and where an applicant for that designated State who 
is an inventor refused to sign the request or could not be found or reached 
after diligent effort, the reguest need not be signed by that applicant if it is 
signed by at least one applicant and a statement is furnished explaining, to 
the satisfaction of the receiving Office, the lack of the signature concerned. 
4.16 Transliteration or Translation 0/ Certain Words 
(a) Where any nam.e or address is written in characters other than those 
of the Latin alphabet, the sam.e shall also be indicated in characters of the 
Latin alphabet either as a mere transliteration or through translation into 
English. The applicant shall decide which words will be merely 
transliterated ana which words will be so translated. 
(b) The name of any country written in characters other than those of 
the Latin alphabet shall also be indicated in English. 
4. 1 7 Additional M alter 
(a) The request shall contain no matter other than that specified in Rules 
4.1 to 4.16, provided that the Administrative Instructions may pennit, but 
cannot make mandatory, the inclusion in the request of any additional 
matter specified in the Administrative Instructions. 
(b) If the request contains matter other than that specified in Rules 4.1 to 
4.16 or rennitted under para[I"aph (a) by the Administrative Instructions, 
the receIving Office shall ex qULcio delete the additional matter. 
Rule 5 
The Description 
5.1 Manner 0/ the DeSCription 
(a) The description shall first state the title of the invention as appearing 
in the request and shall: 
(i) specify the technical field to which the invention relates; 
(ii) indicate the background art which, as far as known to the 
applicant, can be regarded as useful for the understanding, searching and 
examination of the invention, and, preferably, cite the documents 
reflecting such art; 
(iii) disclose the invention, as claimed, in such terms that the 
technical problem (even if not expressly stated as such) and its solution can 
be understood, and state the advantageous effects, if any, of the invention 
with reference to the background art; 
(iv) briefly describe the figures in the drawings, if any; 
(v) set forth at least the best mode contemplated by the applicant 
for carrying out the invention claimed; this shall be done in terms of 
exam.ples, where appropriate, and with reference to the drawings, if any; 
where the national law of the designated State does not require the 
description of the best mode but is satisfied with the description of any 
mode (whether it is the best contemplated or not), failure to describe the 
best mode contemplated shall have no effect in that State; 
(vi) indicate explicitly, when it is not obvious from the description 
or nature of the invention, the way in which the invention is capable of 
exploitation in industry and the way in which it can be made and used, or, 
if it can only be used, the way in which it can be used; the term "industry" IP/N/1/NZL/P/1 
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is to be understood in its broadest sense as in the Paris Convention for the 
Protection of Industrial Property. 
(b) The manner and order specified in paragraph (a) shall be followed 
except when, because of the nature of the invention, a different manner or 
a different order would result in a better understanding and a more 
economic presentation. 
(c) Subject to the provisions of paragraph (b), each of the parts referred 
to in paragraph (a) shall preferably be preceded by an appropriate heading 
as suggested in the Administrative Instructions. 
5.2 Nucleotide and/or Amino Acid Sequence Disclosure 
Where the international application contains disclosure of a nucleotide 
and/or amino acid sequence, the description shall contain a listing of the 
sequence complying with the standard prescribed by the Administrative 
Instructions. 
Rule 6 
The ClaiDls 
6.1 Number and Numbering of Claims 
( a) The number of the claims shall be reasonable in consideration of the 
nature of the invention claimed. 
(b) If there are several claims, they shall be numbered consecutively in 
Arabic numerals. 
(c) The method of numbering in the case of the amendment of c~aims 
shart be governed by the Administrative Instructions. 
6.2 References to Other Parts of the International Application 
(a) Claims shall not, except where absolutely necessary, rely, in respect 
of the technical features of the invention, on references to the description 
or drawinS"s. In particular, they shall not rely on such references as: "as 
described In part ... of the description," or "as illustrated in figure ... of 
the drawings." 
(b) Where the international application contains drawings, the technical 
features mentioned in the clauns shall preferably be followed by the 
reference signs relating to such features. When used, the reference signs 
shall preferably be placed between parentheses. If inclusion of reference 
signs does not particularly facilitate quicker understanding of a claim, it 
should not be made. Reference signs may be removed by a designated 
Office for the purposes of publication by such Office. 
6.3 Manner of Claiming 
(a) The definition of the matter for which protection is sought shall be in 
terms of the technical features of the invention. 
(b) Whenever appropriate, claims shall contain: 
(i) a statement indicating those technical features of the invention 
which are necessary for the definition of the claimed subject matter but 
which, in combination, are part of the prior art, 
(ii) a characterizing portion-preceded by the words 
"characterized in that," "characterized by," "wherein the improvement 
comprises," or any other words to the same effect-stating concisely the 1992, No. 81 Patents Amendment 
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technical features which, in combination with the features stated under (i), 
it is desired to protect. 
(c) Where the national law of the designated State does not require the 
manner of claiming provided for in paragraph (b), failure to use that 
manner of claiming shall have no effect in that State rrovided the manner 
of claiming actually used satisfies the national law 0 that State. 
6.4 Dependent Claims 
(a) Any claim which includes all the features of one or more other claim.s 
(claim in dependent form, hereinafter referred to as "dependent claim") 
shall do so by a reference, if possible at the beginning, to the other claim. 
or claims and shall then state the additional features claimed. Any 
dependent claim which refers to more than one other claim ("multiple 
dependent claim") shall refer to such claims in the alternative only. 
Multiple dependent claims shall not serve as a basis for any other multiple 
dependent claim. Where the national law of the national Office acting as 
International Searching Authority does not allow multiple dependent 
claims to be drafted in a manner different from that provided for in the 
preceding two sentences, failure to use that manner of claiming may result 
m an indication under Article 1 7 (2)(b) in the international search report. 
Failure to use the said manner of claiming shall have no effect in a 
designated State if the manner of claiming actually used satisfies the 
national law of that State. 
(b) Any dependent claim shall be construed as including all the 
limitations contained in the claim to which it refers or, if the dependent 
claim is a multiple dependent claim, all the limitations contained in the 
particular claim in relation to which it is considered. 
(c) All dependent claims referring back to a single previous claim, and all 
dependent claims referring back to several previous claims, shall be 
grouped together to the extent and in the most practical way possible. 
6.5 Utility Models 
Any designated State in which the grant of a utility model is sought on 
the basis of an international application may, instead of Rules 6.1 to 6.4, 
apply in respect of the matters regulated in those Rules the provisions of 
its national law concerning utility models once the processing of the 
international application has started in that State, provided that the 
applicant shall be allowed at least two months from the expiration of the 
time limit applicable under Article 22 to adapt his application to the 
requirements of the said provisions of the national law. 
7. 1 Flow Sheets and Diagrams Rule 7 
The Drawings 
Flow sheets and diagrams are considered drawings. 
7.2 Time Limit 
The time limit referred to in Article 7 (2)(ii) shall be reasonable under the 
circumstances of the case and shall, in no case, be shorter than two Illonths 66 IP/N/1/NZL/P/I 
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from the date of the written invitation requiring the filing of drawings or 
additional drawings under the said provision. 
Rule 8 
The Abstract 
8.1 Contents and Form of the Abstract 
(a) The abstract shall consist of the following: 
(i) a summary of the disclosure as contained in the description, the 
claitns, and any drawings; the summary shall indicate the technical field to 
which the invention pertains and shall be drafted in a way which allows the 
clear understanding of the technical problem, the gist of the solution of 
that problem through the invention, and the principal use or uses of the 
invention; 
(ii) where applicable, the chemical fonnula which, among all the 
formulae contained in the international application, best characterizes the 
invention. 
(b) The abstract shall be as concise as the disclosure permits (preferably 
50 to 150 words if it is in English or when translated into English). 
(c) The abstract shall not contain statements on the alleged merits or 
value of the claimed invention or on its speculative application. 
(d) Each main technical feature mentioned in the abstract and illustrated 
by a drawing in the international application shall be followed by a 
reference sign, placed between parentheses. . 
8.2 Figure 
(a) If the applicant fails to make the indication referred to in Rule 
3.3(a)(iii), or if the International Searching Authority finds that a figure or 
figures other than that figure or those figures suggested by the applicant 
would, among all the figures of all the drawings, better characterize the 
invention, it shall, subject to paragraph (b), indicate the figure or figures 
which should accompany the abstract when the latter is published by the 
International Bureau. In such case, the abstract shall be accompanied by 
the figure or figures so indicated by the International Searching Authority. 
Otherwise, the abstract shall, subject to paragraph (b), be accompanied by 
the figure or figures suggested by the applicant. 
(b) If the International Searching Authority finds that none of the figures 
of the drawings is useful for the understanding of the abstract, it shall 
notify the International Bureau accordingly. In such case, the abstract, 
when published by the International Bureau, shall not be accompanied by 
any figure of the drawings even where the applicant has made a suggestion 
under Rule 3. 3 (a)(iii). 
8.3 Guiding PrinCiples in Drafting 
The abstract shall be so drafted that it can efficiently serve as a scanning 
tool for purposes of searching in the particular art, especially by assisting 
the scientist, engineer or researcher in fonnulating an opinion on whether 
there is a need for consulting the international application itself. 1992, No. 81 Patents Amendment 
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Rule 9 
Expressions, Etc., Not to Be Used 
9.1 Definition 
The international application shall not contain: 
(i) expressions or drawings contrary to morality; 
(ii) expressions or drawings contrary to public order; 67 
(iii) statements disparaging the products or processes of any 
particular person other than the applicant, or the merits or validity of 
applications or patents of any such person (mere comparisons with the 
prior art shall not be considered disparaging per se); 
(iv) any statement or other matter obviously irrelevant or 
unnecessary under the circumstances. 
9.2 Noting qf Lack qf Compliance 
The receiving Office and the International Searching Authority may 
note lack of compliance with the prescriptions of Rule 9.1 and may suggest 
to the applicant that he voluntarily correct his international application 
accordingly. If the lack of compliance was noted by the receiving Office, 
that Office shall inform the competent International Searching Authority 
and the International Bureau; if the lack of compliance was noted by the 
International Searching Authority, that Authority shall inform the 
receiving Office and the International Bureau. 
9.3 Reference to Article 21 (6) 
"Disparaging statements," referred to in Article 21(6), shall have the 
meaning as defined in Rule 9.1 (iii). 
Rule 10 
Tenninology and Signs 
10.1 Terminology and Signs 
(a) Units of weights and measures shall be expressed in terms of the 
metric system, or also expressed in such terms if first expressed in terms of 
a different system. 
(b) Temperatures shall be expressed in degrees Celsius, or also expressed 
in degrees Celsius, if first expressed in a different manner. 
(c) [Deleted} 
(d) For indications of heat, energy, light, sound, and magnetism, as well 
as for mathematical formulae and electrical units, the rules of international 
practice shall be observed; for chemical formulae, the sym.bols, atomic 
weights, and molecular formulae, in general use, shall be employed. 
(e) In general, only such technical terms, signs and symbols should be 
used as are generally accepted in the art. 
(f) When the international application or its translation is in English or 
Japanese, the beginning of any decimal fraction shall be marked by a 
period, whereas, when the international application or its translation is in a 
language other than English or Japanese, it shall be marked by a comma. IP IN 11 INZL/P 11 
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10.2 Consistency 
The terminology and the signs shall be consistent throughout the 
international application. 
Rule 11 
Physical RequireD1ents of the International Application 
11. 1 Number qf Copies 
(a) Subject to the rrovisions of paragraph (b), the international 
application and each 0 the documents referred to in the check list (Rule 
3.3(a)(ii)) shall be filed in one copy. 
(b) Any receiving Office may require that the international application 
and any of the documents referred to in the check list (Rule 3.3(a)(ii)), 
except the receipt for the fees paid or the check for the payment of the 
fees, be filed in two or three copies. In that case, the receiving Office shall 
be responsible for verifying the identity of the second and the third copies 
with the record copy. 
11.2 Fitness for Reproduction 
(a) All elements of the international application (i.e., the request, the 
description, the claims, the drawings, and the abstract) shall be so 
presented as to admit of direct reproduction by photography, electrostatic 
processes, photo offset, and microfilming, in any number of copies. 
(b) All sheets shall be free from creases and cracks; they shall not be 
folded. 
(c) Only one side of each sheet shall be used. 
(d) Subject to Rule 11.1 O( d) and Rule 11.130), each sheet shall be used in 
an upright position (i.e., the short sides at the top and bottom). 
11.3 Material to Be Used 
All elements of the international applications shall be on paper which 
shall be flexible, strong, white, smooth, non-shiny, and durable. 
11.4 Separate Sheets~ Etc. 
(a) Each element (request, description, clairrls, drawings, abstract) of the 
international application shall commence on a new sheet. 
(b) All sheets of the international application shall be so connected that 
they can be easily turned when consulted, and easily separated and joined 
again if they have been separated for reproduction purposes. 
11.5 Size 0/ Sheets 
The size of the sheets shall be A4(29.7 cm x 21 cm). However, any 
receiving Office may accept international applications on sheets of other 
sizes provided that the record copy, as transmitted to the International 
Bureau, and, if the competent International Searching Authority so desires, 
the search copy, shall be of A4 size. 
11.6 Margins 
(a) The minimum margins of the sheets containing the description, the 
claims, and the abstract, shall be as follows: 
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-left side: 2.5 cm 
-right side: 2 cm 
-bottom: 2 cm 69 
(b) The recommended maximum, for the margins provided for ID 
paragraph ( a), is as follows: 
-top: 4cm 
-left side: 4 cm 
-right side: 3 cm 
-bottom: 3 cm 
(c) On sheets containing drawings, the surface usable shall not exceed 
26.2 cm x 17.0 cm. The sheets shall not contain frames around the usable 
or used surface. The minimum margins shall be as follows: 
-top: 2.5 cm 
-left side: 2.5 cm 
-right side: 1.5 cm 
-bottom: 1.0 cm 
(d) The ITlargins referred to in paragraphs (a) to (c) apply to A4-size 
sheets, so that, even if the receiving Office accepts other sizes, the A4-size 
record copy and, when so required, the A4-size search copy shall leave the 
aforesaid margins. 
(e) Subject to paragraph (f) and to Rule 11.8 (b), the margins of the 
international application, when submitted, ITlust be completely blank.. 
(f) The top ITIargin may contain in the left-hand corner an indication of 
the applicant's file reference, provided that the reference appears within 
1.5 CITl frOITl the top of the sheet. The number of characters' in the 
applicant's file reference shall not exceed the ITlaxiInUITI fixed by the 
Administrative Instructions. 
11. 7 Numbering of Sheets 
(a) All the sheets contained in the international application shall be 
numbered in consecutive Arabic numerals. 
(b) The nUITIbers shall be centred at the top or bottom of the sheet, but 
shall not be placed in the ITlargin. 
11.8 Numbering of Lines 
(a) It is strongly recoITlInended to number every fifth line of each sheet 
of the description, and of each sheet of claitns. 
(b) The numbers should appear in the right half of the left margin. 
11.9 Writing cif Text Matter 
(a) The request, the description, the claitns and the abstract shall be 
typed or printed. 
(b) Only graphic symbols and characters, chemical or ITlatheITlatical 
fonnulae, and certain characters in the Japanese language may, when 
necessary, be written by hand or drawn. 
(c) The typing shall be 11/2-spaced. 
(d) All text matter shall be in characters the capital letters of which are 
not 1ess than 0.21 cm high, and shall be in a dark, indelible color, satisfying 
the requireITlents specified in Rule 11.2. 70 IP IN 11 INZL/P 11 
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(e) As far as the spacing of the typing and the size of the characters are 
concerned, paragraphs (c) and (d) snall not apply to texts in the Japanese 
language. 
11.1 0 Drawings~ Formulae~ and Tables~ in Text Matter 
(a) The request, the description, the claims and the abstract shall not 
contain drawings. 
(b) The description, the claims and the abstract may contain chemical or 
mathematical fonnulae. 
(c) The description and the abstract may contain tables; any claim may 
contain tables only if the subject matter of the claim makes the use of 
tables desirable. 
(d) Tables and chemical or mathematical fonnulae may be placed 
sideways on the sheet if they cannot be presented satisfactorily in an 
upright position thereon; sheets on which tables or chemical or 
mathematical fonnulae are presented sideways shall be so presented that 
the tops of the tables or fonnulae are at the left side of the sheet. 
11. 11 Vvords in Drawings 
(a) The drawings shall not contain text matter, excep,t a single word or 
words, when absolutely indispensable, such as "water, ' "steam," "open," 
"closed," "section on AB,>' and, in the case of electric circuits and block 
schematic or flow sheet diagrams, a few short catchwords indispensable for 
understanding. 
(b) Any words used shall be so placed that, if translated, they may be 
pasted over without interfering with any lines of the drawings. 
11. 12 Alterations~ Etc. 
Each sheet shall be reasonably free from erasures and shall be free from 
alterations, overwritings, and interlineations. Non-compliance with this 
Rule may be authorised if the authenticity of the content is not in question 
and the requirements for good reproduction are not in jeopardy. 
11.13 Special Requirements for Drawings 
(a) Drawings shall be executed in durable, black, sufficiently dense and 
dark, unifonnly thick and well-defined, lines and strokes without colorings. 
(b) Cross-sections shall be indicated by oblique hatching which should 
not impede the clear reading of the reference signs and leading lines. 
(c) The scale of the drawings and the distinctness of their graphical 
execution shall be such that a photographic reproduction with a linear 
reduction in size to two-thirds would enable all details to be distinguished 
without difficulty. 
(d) When, in exceptional cases, the scale is given on a drawing, it shall be 
represented graphically. 
(e) All numbers, letters and reference lines, appearing on the drawings, 
shill be simple and clear. Brackets, circles or inverted conunas shall not be 
used in association with numbers and letters. 
(f) All lines in the drawings shall, ordinarily, be drawn with the aid of 
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(g) Each element of each figure shall be in proper proportion to each of 
the other elements in the figure, except where the use of a different 
proportion is indispensable for the clarity of the figure. 
(h) The height of the numbers and letters shall not be less than 0.32 cm. 
For the lettering of drawings, the Latin and, where customary, the Greek 
alphabets shall be used. 
(i) The same sheet of drawings may contain several figures. Where 
figures on two or more sheets form in effect a single complete figure, the 
figures on the several sheets shall be so arranged that the complete figure 
can be assembled without concealing any part of any of the figures 
appearing on the various sheets. 
(j) The different figures shall be arranged on a sheet or sheets without 
wasting space, preferably in an upright position, clearly separated from 
one anotner. Where the figures are not arranged in an upright position, 
they shall be presented sideways with the top of the figures at the left side 
of the sheet. 
(k) The different figures shall be numbered in arabic numerals 
consecutively and independently of the numbering of the sheets. 
(1) Reference signs not mentioned in the description shall not appear in 
the drawings, and vice versa. 
(m) The same features, when denoted by reference signs, shall, 
throughout the international application, be denoted by the same signs. 
(n) If the drawings contain a large number of reference signs, it is 
strongly recommended to attach a separate sheet listing all reference signs 
and the features denoted by them. . 
11. 14 Later Documents 
Rules 10, and 11.1 to 11.13, also apply to any document -for example, 
corrected pages, amended claims -submitted after the filing of the 
international application. 
Rule 12 
Language of the International Application 
12.1 Admitted Languages 
(a) Any international application shall be filed in the language, or one of 
the languages, specified in the agreement concluded between the 
International Bureau and the International Searching Authority competent 
for the international searching of that application, provided that, if the 
agreement specifies several languages, the receiving Office may prescribe 
among the specified languages that language in which or those languages 
in one of which the international application must be filed. 
(b) Notwithstanding paragraph (a), the request, any text matter of the 
drawings, and the abstract need not be in the same language as other 
elements of the international application, provided that: 
(i) the request is in a language admitted under paragraph (a) or in 
the language in which the international application is to be published; 
(ii) the text matter of the drawings is in the language in which the 
international application is to be published; 72 IP/N/1/NZL/P/1 
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(iii) the abstract is in the language in which the international 
application is to be published. 
(c) Subject to paragraph (d), where the official language of the receiving 
Office is one of the languages referred to in Rule 48.3(a) but is a language 
not specified in the agreement referred to in paragraph (a), the 
international application may be filed in the said official language. If the 
international application is filed in the said official language, the search 
copy transmitted to the International Searching Authority under Rule 23.1 
shall be accompanied by a translation into the language, or one of the 
languages, specified in the agreement referred to in paragraph (a); such 
translation shall be prepared under the responsibility of the receiving 
Office. 
(d) Paragraph (c) shall apply only where the International Searching 
Authority has declared, in a notification addressed to the International 
Bureau, that it accepts to search international applications on the basis of 
the translation referred to in paragraph (c). 
12.2 Language if Changes in the International Application 
Any changes in the international application, such as amendm.ents and 
corrections, shall, subject to Rules 46.3 and 66.9, be in the same language 
as the said application. 
13.1 Requirement Rule 18 
Unity of Invention 
The international application shall relate to one invention only or to a 
group of inventions so linked as to form a single general inventive concept 
("requirement of unity of invention"). 
13.2 Circumstances in Which the ReqUirement if Unity if Invention Is to Be 
Considered Fulfilled 
Where a group of inventions is claimed in one and the same 
international application, the requirement of unity of invention referred to 
in Rule 13. 1 shall be fulfilled only when there is a technical relationship 
among those inventions involving one or more of the same or 
corresponding special technical features. The expression "special technical 
features" shall mean those technical features that define a contribution 
which each of the claimed inventions, considered as a whole, m.akes over 
the prior art. 
13.3 Determination if Unity if Invention Not Affected by Manner of Claiming 
The determination whether a group of inventions is so linked as to form 
a single general inventive concept shall be made without regard to whether 
the inventions are claimed in separate claims or as alternatives within a 
single claim. 
13.4 Dependent Claims 
Subject to Rule 13.1, it shall be permitted to include in the same 
international application a reasonable number of dependent claims, 
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even where the features of any dependent claim could be considered as 
constituting in themselves an invention. 
13.5 Utility Models 
Any designated State in which the grant of a utility model is sought on 
the basis of an international application may, instead of Rules 13.1 to 13.4, 
apply in respect of the matters regulated in those Rules the provisions of 
its national law concerning utility rnodels once the processing of the 
international application has started in that State, provided that the 
applicant shall be allowed at least two months from the expiration of the 
time limit applicable under Article 22 to adapt his application to the 
requirements of the said provisions of the national law. 
Rule lSbis 
Microbiological Inventions 
13 bis. 1 Definition 
For the purposes of this Rule, "reference to a deposited microorganism" 
means particUlars given in an international application with respect to the 
deposit of a microorganism with a depositary institution or to the 
microorganisrn so deposited. 
13 bis. 2 References (General) 
Any reference to a deposited microorganism shall be made in 
accordance with this Rule and, if so made, shall be considered as satisfying 
the requirements of the national law of each designated State. 
13bis.3 References: Contents~· Failure to Include Reference or Indication 
( a) A reference to a deposited microorganism shall indicate, 
(i) the name and address of the depositary institution with which 
the deposit was made; 
and (ii) the date of deposit of the microorganism with that institution; 
(iii) the accession number given to the deposit by that institution; 
(iv) any additional matter ~f which the International Bureau has 
been notified pursuant to Rule 13blS.7(a)(i), provided that the requirement 
to indica.te that matter was published in tne Gazette in accordance with 
Rule 13blS.7(c) at least two months before the filing of the international 
application. 
(b) Failure to include a reference to a deposited microorganism or failure 
to include, in a reference to a deposited microorganism, an indication in 
accordance with paragraph (a), shall have no consequence in any 
designated State whose national law does not require such reference or 
such indication in a national application. 
13bis.4 References: Time of Furnishing Indications 
If any of the indications referred to in Rule 13bis.3(a) is not included in a 
reference to a deposited microorganisrn in the international application as 
filed but is furnisned by the applicant to the International Bureau within 16 
months after the priority date, the indication shall be considered by any 
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requires the indication to be furnished at an earlier time in the case of a 
national application and the Inte~ational Bureau has been notified of such 
requirement pursuant to Rule 13 hIS. 7 (a )(ii), provided that the International 
Bureau ~as published such requirement in the Gazette in accordance with 
Rule 13hlS.7(c) at least two months before the filing of the international 
application. In the event that the applicant makes a request for early 
publication under Article 21(2)(b), however, any designated Office may 
consider any indication not furnished by the time such request is made as 
not having been furnished in time. Irrespective of whether the applicable 
time limit under the preceding sentences has been observed, the 
International Bureau shall notify the applicant and the designated Offices 
of the date on which it has received any indication not included in the 
international application as filed. The International Bureau shall indicate 
that date in the mternational publication of the international application if 
the indication has been furnished to it before the completion of technical 
preparations for international publication. 
13his.5 Riferences and Indications for the Purposes if One or More DeSignated 
States: Different Deposits for Different DeSignated States~' Deposits with 
Depositary Institutions Other Than Those Notified 
( a) A reference to a derosited microorganism shall be considered to be 
made for the purposes 0 all designated States, unless it is expressly made 
for the purposes of certain of the designated States only; the same applies 
to the indications included in the reference. 
(b) References to different deposits of the microorganism may be ~ade 
for different designated States. 
(c) Any designated Office shall be entitled to disregard a deposit made 
wit~ a depositary institution other than one notified by it under Rule 
1 3 hIS. 7 (b). 
13 his. 6 Furnishing if Samples 
(a) Where the international application contains a reference to a 
deposited microorganism, the applicant shall, upon the request of the 
International Searching Authority or the International Preliminary 
Examining Authority, authorize and assure the furnishing of a sample of 
that microorganism by the depositary institution to the said Authority, 
provided that the said Authority has notified the International Bureau that 
It may require the furnishing of samples and that such samples will be used 
solely for the purposes of international search or international preliminary 
examination, as the case may be, and such notification has been published 
in the Gazette. 
(b) Pursuant to Articles 23 and 40, no furnishing of samples of the 
deposited microorganism to which a reference is made in an international 
application shall, except with the authorization of the applicant, take place 
before the expiration of the applicable time limits after which national 
processing may start under the said Articles. However, where the applicant 
perfonns the acts referred to in Articles 22 or 39 after international 
publication but before the expiration of the said time limits, the furnishing 
of samples of the deposited microorganism may take place, once the said 
acts have been perfonned. Notwithstanding the previous provision, the 1992, No. 81 Patents Amendment 
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furnishing of samples of the deposited microorganism may take place 
under the national law applicable for any designated Office as soon as, 
under that law, the international publication has the effects of the 
compulsory national publication of an unexamined national application. 
13bis.7 National Requirements: Notification and Publication 
(a) Any national Office may notify the International Bureau of any 
requirement of the national law, 
(i) that any mat~er specified in the notification, in addition to those 
referred to in Rule 13b1s.3(a)(i), (ii) and (iii), is required to be included in a 
reference to a deposited microorganism in a national application; 
(ii) that one or more of the indications referred to in Rule 13bis.3(a) 
are required to be included in a national application as filed or are required 
to be furnished at a time specified in the notification which is earlier than 
16 months after the priority date. 
(b) Each national Office shall notify the International Bureau of the 
depositary institutions with which the national law permits deposits of 
microorganisms to be made for the purposes of patent procedure before 
that Office or, if the national law does not provide for or permit such 
deposits, of that fact. 
, (c) The International Bureau shall promptly!ublish in the Gazette 
requirements notified to it under paragraph (a) an information notified to 
it under paragraph (b). 
Rule 19ter 
Nucleotide and/or Amino Acid Sequence Listings 
13ter.l Sequence Listingfor International Authorities 
(a) If the International Searching Authority finds that a nucleotide 
and/or amino acid sequence listing does not comply with the standard 
prescribed in the Administrative Instructions under Rule 5.2, and/or is not 
in a machine readable form provided for in those Instructions, it may 
invite the applicant, within a time limit fixed in the invitation, as the case 
may be: 
(i) to furnish to it a listing of the sequence complying with the 
prescribed standard, and/or 
(ii) to furnish to it a listing of the sequence in a machine readable 
form provided for in the Administrative Instructions or, if that Authority is 
prepared to transcribe the sequence listing into such a form, to pay for the 
cost of such transcription. 
(b) Any sequence listing furnished under paragraph (a) shall be 
accompanied by a statement to the effect that the listing does not include 
matter which goes beyond the disclosure in the international application as 
filed. 
(c) If the applicant does not comply with the invitation within the time 
limit fixed in the invitation, the International Searching Authority shall not 
be required to search the international application to the extent that such 
non-compliance has the result that a meaningful search cannot be carried 
out. IP/N/lINZL/PIl 
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(d) If the InteITlational Searching Authority chooses, under paragraph 
(a)(ii), to transcribe the sequence listing into a machine readabfe form, it 
shall send a copy of such transcription in machine readable form to the 
applicant. 
(e) The InteITlational Searching Authority shall, upon request, make 
avcll1able to the InteITlational Preliminary Examining Authority a copy of 
any sequence listing furnished to it, or as transcribed by it, under 
paragraph (a). 
(f) A sequence listing furnished to the InteITlational Searching Authority, 
or as transcribed by it, under paragraph (a) shall not fonn part of the 
inteITlational application. 
13 ter. 2 Sequence Listing for Designated Office 
(a) Once the processing of the international application has started 
betore a designated Office, that Office may require the applicant to furnish 
to it a copy of any sequence listing furnished to the International Searching 
Authority, or as transcribed by that Authority, under Rule 13ter.l(a). 
(b) If a designated Office finds that a nucleotide and/or amino acid 
sequence listing does not comply with the standard prescribed in the 
Administrative InstnIctions under Rule 5.2, and/or is not in a machine 
readable fonn provided for in those Instructions, and/or no listing of the 
sequence was furnished to the International Searching Authority, or 
transcribed by that Authority, under Rule 13 ter. 1 ( a), that Office may 
require the applicant; 
(i) to fuITlish to it a listing of the sequence complying with the 
prescribed standard, and/or . 
(ii) to furnish to it a listing of the sequence in a machine readable 
form provided for in the Administrative Instructions or, if that Office is 
prepared to transcribe the sequence listing into such a form, to pay for the 
cost of such transcription. 
Rule 14 
The TranslIlittal Fee 
14.1 The Transmittal Fee 
(a) Any receiving Office may require that the applicant pay a fee to it, for 
its own benefit, for receiving the international application, transmitting 
copies to the InteITlational Bureau and the component International 
Searching Authority, and performing all the other tasks which it must 
perform in connection with the inteITIational application in its capacity of 
receiving Office ("transmittal fee"). 
(b) The amount and the due date of the transmittal fee, if any, shall be 
fixed by the receiving Office. 
Rule 15 
The International Fee 
15.1 Basic Fee and Designation Fee 
Each inteITlational application shall be subject to the payment of a fee 
for the benefit of the International Bureau ("inteITlational fee") to be 
collected by the receiving Office and consisting of, 1992, No. 81 Patents Amendment 
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(i) a "basic fee," and 77 
(ii) as many "designation fees" as there are national patents and 
regional patents sought under Rule 4.9(a) by the applicant in the 
international application, except that, where Article 44 applies in respect 
of a designation, only one designation fee shall be due for that designation. 
15.2 Amounts 
(a) The amounts of the basic fee and of the designation fee are as set out 
in the Schedule of Fees. 
(b) The amounts of the basic fee and of the designation fee shall be 
established, for each receiving Office which, under Rule 15.3, prescribes 
the payment of those fees in a currency or currencies other than Swiss 
currency, by the Director General after consultation with that Office and in 
the currency or currencies prescribed by that Office ("prescribed 
currency' '). The am.ounts in each prescribed currency shall be the 
equivalent, in round figures, of the amounts in Swiss currency set out in 
the Schedule of Fees. They shall be published in the Gazette. 
(c) Where the am.ounts of the fees set out in the Schedule of Fees are 
changed, the corresponding amounts in the prescribed currencies shall be 
applied from the same date as the amounts set out in the amended 
Schedule of Fees. 
(d) Where the exchange rate between Swiss currency and any prescribed 
currency becomes different from the exchange rate last applied, the 
Director General shall establish new amounts in the prescribed currency 
according to directives given by the Assembly. The newly established 
am.ounts shall become applicable two months after the date of their 
publication in the Gazette, provided that the interested Office and the 
Director General may agree on a date fa11ing during the said two-month 
period in which case the said amounts shalf become applicable for that 
Office from that date. 
15.3 Mode of Payment 
The international fee shall be payable in the currency or currencies 
prescribed by the receiving Office, it being understood that, when 
transferred by the receiving Office to the International Bureau, the anlount 
transferred shall be freely convertible into Swiss currency. 
15.4 Time of Payment 
(a) The basic fee shall be paid within one month from the date of receipt 
of the international application. 
(b) The designation fee shall be paid: 
(i) where the international application does not contain a priority 
claim under Article 8, within one year from the date of receipt of the 
international application, 
(ii) where the international application contains a priority claim 
under Article 8, within one year from the priority date or within one 
month from the date of receipt of the international application if that 
month expires after the expiration of one year from the priority date. 
(c) Where the basic fee or the designation fee is paid later than the date 
on which the international application was received and where the amount JP IN 11 INZL/P 11 
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of that fee is, in the currency in which it is payable, higher on the date of 
payment ("the higher amount") than it was on the date on which the 
mternational application was received ("the lower aIllount"), 
(i) the lower aIllount shall be due if the fee is paid within one 
month from the date of receipt of the international application, 
(ii) the higher aIllount shall be due if the fee is paid later than one 
month from the date of receipt of the international application. 
15.5 Fees Under Rule 4.9(c) 
(a) Notwithstanding Rule 15.4(b), the confirmation under Rule 4.9(c) of 
any desi~ations made under Rule 4.9(b) shall be subject to the payment to 
the receIving Office of as many designation fees (for the benefit of the 
International Bureau) as there are national patents and regional patents 
sought by the applicant by virtue of the confirmation, together with a 
confirmation fee (for the benefit of the receiving Office), as set out in the 
Schedule of Fees. 
(b) Where moneys paid by the applicant within the time limit under Rule 
4.9(b)(ii) are not sufficient to cover the fees due under paragraph (a), the 
receiving Office shall allocate any moneys paid as specified by the 
applicant or, in the absence of such specification, as prescribed by the 
Adrrlinistrative Instructions. 
15.6 Refund 
The receiving Office shall refund the international fee to the applicant: 
(i) if the determination under Article 11 (1) is negative, or . 
(ii) if, before the transmittal of the record copy to the International 
Bureau, the international application is withdrawn or considered 
withdrawn. 
16. 1 Right to Ask for a Fee Rule 16 
The Search Fee 
(a) Each International Searching Authority may require that the 
applicant pay a fee ("search fee") for its own benefit for carrying out the 
international search and for performing all other tasks entrusted to 
International Searching Authorities by the Treaty and these Regulations. 
(b) The search fee shall be collected by the receiving Office. The said fee 
shall be payable in the currency or currencies prescribed by that Office 
("the receiving Office currency"), it being understood that, if any receiving 
Office currency is not that, or one of those, in which the International 
Searching Authority has fixed the said fee ("the fixed currency or 
currencies"), it shall, when transferred by the receiving Office to the 
International Searching Authority, be freely convertible into the currency 
of the State in which the International Searching Authority has its 
headquarters ("the headquarters currency"). The aIllount of the search fee 
in any receiving Office currency, other than the fixed currency or 
currencies, shall be established by the Director General after consultation 
with that Office. The amounts so established shall be the equivalents, in 
round figures, of the amount established by the International Searching 1992, No. 81 Patents Amendment 
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Authority in the headquarters currency. They shall be published in the 
Gazette. 
(c) Where the amount of the search fee in the headquarters currency is 
changed, the corresponding amounts in the receiving Office currencies, 
other than the fixed currency or currencies, shall be applied from the same 
date as the changed amount in the headquarters currency. 
(d) Where the exchange rate between the headquarters currency and 
any receiving Office currency, other than the fixed currency or currencies, 
becomes different from the exchange rate last applied, the Director 
General shall establish the new amount in the said receiving Office 
currency according to directives given by the Assembly. The newly 
established amount shall become applicable two months after its 
publication in the Gazette, provided that any interested receiving Office 
and the Director General may agree on a date falling during the said two­
month period in which case the said amount shall become applicable for 
that Office from that date. 
(e) Where, in respect of the payment of the search fee in a receiving 
Office currency, other than the fixed currency or currencies, the amount 
actually received by the International Searching Authority in the 
headquarters currency is less than that fixed by it, the difference will be 
paid to the International Searching Authority by the International Bureau, 
whereas, if the amount actually received is more, the difference will belong 
to the International Bureau. 
(f) As to the time of payment of the search fee, the provisions of Rule 
15.4 relating to the basic fee shall apply. 
16.2 Refund 
The receiving Office shall refund the search fee to the applicant: 
(i) if the determination under Article 11 (1) is negative, or 
(ii) if, before the transmittal of the search copy to the International 
Searching Authority, the international application is withdrawn or 
considered withdrawn. 
16.3 Partial Refund 
Where the international application claims the priority of an earlier 
international application which has been the subject of an international 
search by the same International Searching Authority, that Authority shall 
refund the search fee paid in connection with the later international 
application to the extent and under the conditions provided for in the 
agreement under Article 16(3)(b), if the international search report on the 
later international application could wholly or partly be based on the 
results of the international search effected on the earlier international 
application. 
Rule 16bis 
Extension of TilDe Lim.its for Paytnent of Fees 
16bis.l Invitation by the Receiving Office 
(a) Where, by the time they are due under Rule 14.1(b), Rule 15.4(a) and 
Rule 16.1 (f), the receiving Office finds that in respect of an international 
application no fees were paid to it by the applicant, or that the amount IP/N/1/NZL/P/1 
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paid to it by the applicant is less than what is necessary to cover the 
transmittal fee, the basic fee and search fee, the receiving Office shall invite 
the applicant to pay to it the amount required to cover thos~ fees, together 
with, where applicable, the late paYIllent fee under Rule 16b1s.2, within one 
Illonth frOIll the date of the invitation. 
(b) Where, by the tiIne they are due under Rule 15.4(b), the receiving 
Office finds that in respect of an inteITlational application the payment 
Illade by the applicant is insufficient to cover the designation fees 
necessary to cover all the designations under Rule 4. 9( a), the receiving 
Office shall invite the applicant to pay to it the amount required to cover 
those fe~s, together witli, where applicable, the late payment fee under 
Rule 16b1s.2, within one Illonth frOIll the date of the invitation. 
(c) Where the receiving Office has sent to the applicant an invitation 
under paragraph (a) or (b) and the applicant has not, within one Illonth 
from the date of the invitation, paid in full the amo~t due, including, 
where applicable, the late payment fee under Rule 16b1s.2, the receiving 
Office shall: 
(i) allocate any Illoneys paid as specified by the applicant or, in the 
absence of such specification, as prescribed by the AdITIinistrative 
Ins tructions. 
(ii) Illake the applicable declaration under Article 14(3), and 
(ill) proceed as provided in Rule 29. 
16bis.2 Late Payment Fee 
(a) The paYIllent of fees in response to an invitation under Rule 16bis.l(a) 
or (b) may be subjected by the receiving Office to the payment to it of a 
late paYIllent fee. The amount of that fee shall be: 
(i) 500/0 of the amount of unpaid fees which is specified in the 
invitation, or, 
(ii) if the amount calculated under item (i) is less than the 
transmittal fee, an amount equal to the transmittal fee. 
(b) The amount of the late paYIllent fee shall not, however, exceed the 
amount of the basic fee. 
Rule 17 
The Priority DOCulDent 
1 7.1 Obligation to Submit Copy 0/ Earlier National Application 
(a) Where the priority of an earlier national application is claimed under 
Article 8 in the inteITlational application, a coPy of the said national 
application, certified by the authority with which It was filed ("the priority 
document "), shall, unless already filed with the receiving Office together 
with the inteITlational application, be submitted by the applicant to the 
International Bureau or to the receiving Office not later than 16 months 
after the priority date or, in the case referred to in Article 23(2), not later 
than at the tiIne the processing or examination is requested. 
(b) Where the priority docuIllent is issued by the receiving Office, the 
applicant may, instead of submitting the priority document, request the 
receiving Office to transmit the priority document to the International 
Bureau. Such request shall be made not later than the expiration of the 1992, No. 81 Patents Amendment 
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REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 
applicable time limit referred to under paragraph (a) and may be subjected 
by the receiving Office to the payment of a fee. 
(c) If the requirements of neither of the two preceding paragraphs are 
complied with, any designated State may disregard the priority claim. 
17.2 Availability if Copies 
(a) The International Bureau shall, at the specific request of the 
designated Office, promptly but not before the expiration of the time limit 
fixed in Rule 1 7. 1 (a), furnish a copy of the priority document to that Office. 
No such Office shall ask the applicant hiinself to furnish it with a copy, 
except where it requires the furnishing of a copy of the priority document 
together with a certified translation thereof. The applicant shall not be 
required to furnish a certified translation to the deslgnated Office before 
the expiration of the applicable time limit under Article 22. 
(b) The International Bureau shall not make copies of the priority 
document available to the public prior to the international publication of 
the international application. 
(c) Where the international application has been published under Article 
21, the International Bureau shall furnish a copy of the priority document 
to any person upon request and subject to reimbursement of the cost 
unless, prior to that publication: 
(i) the international application was withdrawn, 
(ii) the relevant priority claim was withdrawn or was considered, 
under RUle 4.10(b), not to have been made, or 
(ill) the relevant declaration under Article 8( 1) was cancelled under 
Rule 4.10(d). 
(d) Paragraphs (a) to (c) shall apply also to any earlier international 
application whose priority is claimed in the subsequent international 
application. 
18.1 Residence Rule 18 
The Applicant 
(a) Subject to the provisions of paragraph (b), the question whether an 
applicant is a resident of the Contracting State of which he claims to be a 
resident shall depend on the national law of that State and shall be decided 
by the receiving Office. 
(b) In any case, possession of a real and effective industrial or 
commercial establishment in a Contracting State shall be considered 
residence in that State. 
18. 2 Nationality 
(a) Subject to the provisions of paragraph (b), the question whether an 
applicant is a national of the Contracting State of which he claims to be a 
national shall depend on the national law of that State and shall be decided 
by the receiving Office. 
(b) In any case, a legal entity constituted according to the national law of 
a Contracting State shall be considered a national of that State. IP/N/1/NZL/P/1 
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18.3 Two or M ore Applicants 
If there are two or more applicants, the right to file an international 
application shall exist if at least one of them is entitled to file an 
international application according to Article 9. 
18.4 Information on Requirements Under National Law as to Applicants 
(a) [Deleted] 
(b) [Deleted] 
(c) The International Bureau shall, from tiIne to tiIne, publish 
information on the various national laws in respect of the question who is 
qualified (inventor, successor in title of the inventor, owner of the 
invention, or other) to file a national application and shall accompany such 
information by a warning that the effect of the international application in 
any designated State may depend on whether the person designated in the 
international application as applicant for the purposes of that State is a 
person who, under the national law of that State, is qualified to file a 
national application. 
Rule 19 
The Cotn.petent Receiving Office 
19.1 Where to File 
(a) Subject to the provisions of paragraph (b), the international 
application shall be filed, at the option of the applicant, with the national 
Office of or acting for the Contracting State of which the applicant is a 
resident or with the national Office of or acting for the Contracting State 
of which the applicant is a national. 
(b) Any Contracting State may agree with another Contracting State or 
any intergovernmental organization that the national Office of the latter 
State or tlie intergovernmental organization shall, for all or some purposes, 
act instead of the national Office of the former State as receiving Office for 
applicants who are residents or nationals of that former State. 
Notwithstanding such agreement, the national Office of the former State 
shall be considered the competent receiving Office for the purposes of 
Article 15(5). 
(c) In connection with any decision made under Article 9(2), the 
Assembly shall appoint the national Office or the intergovernmental 
organization which will act as receiving Office for applications of residents 
or nationals of States specified by the Assembly. Such appointment shall 
require the previous consent of the said national Office or 
intergovernmental organization. 
19.2 Two or More Applicants 
If there are two or more applicants, the requirements of Rule 19.1 shall 
be considered to be met if the national Office with which the international 
application is filed is the national Office of or acting for a Contracting State 
of which at least one of the applicants is a resident or national. 
19.3 Publication of Fact of Delegation of Duties of Receiving Office 
(a) Any agreement referred to in Rule 19.1(b) shall be promptly notified 
to the International Bureau by the Contracting State which delegates the 1992, No. 81 Patents Amendment 
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REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 
duties of the receiving Office to the national Office of or acting for another 
Contracting State or an intergovernm.ental organization. 
(b) The International Bureau shall, promptly upon receipt, publish the 
notification in the Gazette. 
Rule 20 
Receipt of the International Application 
20.1 Date and Number 
(a) Upon receipt of papers purporting to be an international application, 
the receiving Office snaIl indelibly mark the date of actual receipt on the 
request of each copy received and the inteITIational application number on 
each sheet of each copy received. 
(b) The place on each sheet where the date or number shall be marked, 
and other details, shall be specified in the Administrative Instructions. 
20.2 Receipt on Different Days 
(a) In cases where all the sheets pertaining to the same purported 
inteITIational application are not received on the same day by the receiving 
Office, that Office shall correct the date marked on the request (still leaving 
legible, however, the earlier date or dates already marked) so that it 
indicates the day on which the papers completing the international 
application were received, provided that 
(i) where no invitation under Article 11(2)(a) to correct was sent to 
the applicant, the said papers are received within 30 days from the date on 
whicn sheets were first received; . 
(ii) where an invitation under Article 11(2)(a) to correct was sent to 
the applicant, the said papers are received within the applicable time limit 
under Rule 20.6; 
(ill) in the case of Article 14(2), the missing drawings are received 
within 30 days from the date on which the incomplete papers were filed; 
(iv) the absence or later receipt of any sheet containing the abstract 
or part thereof shall not, in itself, require any correction of the date 
marked on the request. 
(b) Any sheet received on a date later than the date on which sheets 
were first received shall be marked by the receiving Office with the date on 
which it was received. 
20.3 Corrected International Application 
In the case referred to in Article 11 (2)(b), the receiving Office shall 
correct the date marked on the request (still leaving legible, however, the 
earlier date or dates already marked) so that it indicates the day on which 
the last required correction was received. 
20.4 Determination under Article 11 (1) 
(a) Promptly after receipt of the papers purporting to be an inteITIational 
application, the receiving Office shall determine whether the papers 
comply with the requirements of Article 11 (1 ). 
(b) For the purposes of Article 11(1)(ill)(c), it shall be sufficient to indicate 
the name or the applicant in a way which allows his identity to be 
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indicated, or, in the case of legal entities, the indication of the name IS 
abbreviated or incomplete. 
(c) For the purposes of Article 11(1 )(ii), it shall be sufficient that the 
elements referred to in Article II(l)(iii)(d) and (e) be in a language admitted 
under Rule 12.1(a) or (c). 
(d) If, onJuly 12, 1991, paragr:aph (c) is not compatible with the national 
law applied by the receivmg Office, paragraph (c) shall not apply to that 
receiving Office for as long as it continues not to be compatible with that 
law, provided that the said Office informs the International Bureau 
accordingly by December 31, 1991. The information received shall be 
promptly published by the International Bureau in the Gazette. 
20.5 Positive Determination 
( a) If the determination under Article 11 ( 1) is positive, the receiving 
Office shall stamp on the request the name ot the receiving Office and the 
words "PCT International Application," or "Demande internationale 
PCT." If the official language of the receiving Office is neither English nor 
French, the words "International Application" or "Demande 
internationale" may be accompanied by a translation of these words in the 
official language of the receiving Office. 
(b) The copy whose request has been so stamped shall be the record 
copy of the international application. 
(c) The receiving Office shall promptly notify the applicant of the 
international application number and the international filing date. At the 
same time, it shall send to the International Bureau a copy of the 
notification sent to the applicant, except where it has already sent, or is 
sending at the same time, the record copy to the International Bureau 
under Rule 22.1(a). 
20.6 Invitation to Correct 
(a) The invitation to correct under Article 11(2) shall specify the 
requirement provided for under Article 11 (1) which, in the opinion of the 
receiving Office, has not been fulfilled. 
(b) The receiving Office shall promptly mail the invitation to the 
applicant and shall fix a time limit, reasonable under the circumstances of 
the case, for filing the correction. The time limit shall not be less than 10 
days, and shall not exceed one month, from the date of the invitation. If 
such time limit expires after the expiration of one year from the filing date 
of any application whose priority is claimed, the receiving Office may call 
this circumstance to the attention of the applicant. 
20.7 Negative Determination 
If the receiving Office does not, within the prescribed tim.e limit, receive 
a reply to its invitation to correct, or if the correction offered by the 
applicant still does not fulfill the requirements provided for under Article 
11 ( 1), it shall: 
(i) promptly notify the applicant that his application is not and will 
not be treated as an international application and shall indicate the reasons 
therefor, 1992, No. 81 Patents Amendment 
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(n) notify the Interrlational Bureau that the number it has marked 
on the papers will not be used as an international application number, 
(ill) keep the papers constituting the purported interrlational 
application and any correspondence relating thereto as provided in Rule 
93.1, and 
(iv) send a copy of the said papers to the Interrlational Bureau 
where, pursuant to a request by the applicant under Article 25( 1), the 
Interrlational Bureau needs such a copy and specially asks for it. 
20.8 Error by the Receiving Office 
If the receiving Office later discovers, or on the basis of the applicant's 
reply realizes, that it has erred in issuing an invitation to correct since the 
requirements provided for under Article 11 ( 1) were fulfilled when the 
papers were received, it shall proceed as provided in Rule 20.5. 
20.9 Certified Copy for the Applicant 
A~ainst payment of a fee, the receiving Office shall furnish to the 
applicant, on request, certified copies of the interrlational application as 
fi1ed and of any corrections thereto. 
Rule 21 
Preparation of Copies 
21.1 Responsibility cif the Receiving Office 
(a) Where the interrlational application is required to be filed .in one 
copy, the receiving Office shall be responsible for preparing the home copy 
and the search copy required under Article 12(1). 
(b) Where the international application is required to be filed in two 
copies, the receiving Office shall be responsible for preparing the home 
copy. 
(c) If the interrlational application is filed in less than the number of 
copies required under Rule 11.1 (b), the receiving Office shall be responsible 
for the prompt preparation of the number of copies required, and shall 
have the right to fix a fee for performing that task and to collect such fee 
from the applicant. 
Rule 22 
TranslDittaI of the Record Copy 
22.1 Procedure 
(a) If the determination under Article 11(1) is positive, and unless 
prescriptions concerning national security prevent the international 
application from being treated as such, the receiving Office shall transmit 
tIle record copy to the International Bureau. Such transmittal shall be 
effected promptly after receipt of the international application or, if a 
check to preserve national security must be performed, as soon as the 
necessary clearance has been obtained. In any case, the receiving Office 
shall transmit the record copy in time for it to reach the International 
Bureau by the expiration of the 13th month from the priority date. If the 
transmittal is effected by mail, the receiving Office shall mail the record IP 1Nl lINZL/P /l 
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copy not later than five days prior to the expiration of the 13th month 
from the priority date. 
(b) If the International Bureau has received a copy of the notification 
under Rule 20.5(c) but is not, by the expiration of 13 months from the 
priority date, in possession of the record copy, it shall remind the receiving 
Office that it should transmit the record copy to the International Bureau 
promptly. 
(c) If the International Bureau has received a copy of the notification 
under Rule 20.5(c) but is not, by the expiration of 14 months from the 
priority date, in possession of the record copy, it shall notify the applicant 
and the receiving Office accordingly. 
(d) After the expiration of 14 months from the priority date, the 
applicant may request the receiving Office to certity a copy of his 
international application as being identical with the international 
application as filed and may transmit such certified copy to the 
International Bureau. 
(e) Any certification under paragraph (d) shall be free of charge and may 
be refused only on any of the following grounds: 
(i) the copy which the receiving Office has been requested to 
certify is not identical with the international application as filed; 
(ii) prescriptions concerning national security prevent the 
international application from being treated as such; 
(iii) the receiving Office has already transmitted the record copy to 
the International Bureau and that Bureau has informed the receiving Office 
that it has received the record copy. 
(f) Unless the International Bureau has received the record copy, or until 
it receives the record copy, the copy certified under paragraph (e) and 
received by the InteITIational Bureau shall be considered to be the record 
copy. 
(g) If, by the expiration of the time limit applicable under Article 22, the 
applicant has performed the acts referred to in that Article but the 
designated Office has not been informed by the International Bureau of 
the receipt of the record copy, the designated Office shall inform the 
International Bureau. If the International Bureau is not in possession of the 
record copy, it shall promptly notify the applicant and the receiving Office 
unless it nas already notified them under paragraph (c). 
22.2 [Deleted] 
22.3 Time Limit under Article 12(3) 
The time limit referred to in Article 12(3) shall be three months from the 
date of the notification sent by the International Bureau to the applicant 
under Rule 22.1(c) or (g). 
23. 1 Procedure Rule 28 
Transtnittal of the Search Copy 
(a) The search copy shall be transmitted by the receiving Office to the 
International Searching Authority at the latest on the same day as the 
record copy is transmitted to the International Bureau unless no search fee 1992, No. 81 Patents Amendment 
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REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 
has been paid. In the latter case, it shall be transmitted promptly after 
payment of the search fee. 
(b) [Deleted} 
Rule 24 
Receipt of the Record Copy by the International Bureau 
24.1 [Deleted} 
24.2 Notification of Receipt of the Record Copy 
(a) The International Bureau shall promptly notify: 
(i) the applicant, 
(ii) the receiving Office, and 
(iii) the International Searching Authority (unless it has informed 
the International Bureau that it wishes not to be so notified), 
of the fact and the date of receipt of the record copy. The notification shall 
identify the international application by its number, the international filing 
date and the name of the applicant, and shall indicate the filing date of any 
earlier application whose priority is claimed. The notification sent to the 
applicant shall also contain a list of the States designated under Rule 4.9(a) 
and, where applicable, of those States whose designations have been 
confirmed under Rule 4.9(c). 
(b) Each designated Office which has informed the International Bureau 
that it wishes to receive the notification under paragraph (a) prior to the 
communication under Rule 47. 1 shall be so notified by the International 
Bureau: 
(i) if the designation concerned was made under Rule 4.9(a), 
promptly after the receipt of the record copy; 
(ii) if the designation concerned was made under Rule 4. 9(b), 
promptly after the International Bureau has been informed by the 
receiving Office of the confirmation of that designation. 
(c) If the record copy is received after the expiration of the time limit 
fixed in Rule 22.3, the International Bureau shall promptly notify the 
applicant, the receiving Office, and the International Searching Authority, 
accordingly. 
Rule 25 
Receipt of the Search Copy by the International Searching 
Authority 
25. 1 Notification of Receipt of the Search Copy 
The 'International Searching Authority shall promptly notify the 
International Bureau, the applicant, and -unless tlie International 
Searching Authority is the same as the receiving Office -the receiving 
Office, of the fact and the date of receipt of the search copy. IP IN 11INZL/P 11 
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Rule 26 
Checking by, and Correcting before, the Receiving Office of 
Certain Eletnents of the International Application 
26.1 Time Limit for Check 
( a) The receiving Office shall issue the invitation to correct provided for 
in Article 14(1)(b) as soon as possible, preferably within one month from 
the receipt of the international application. 
(b) If the receiving Office issues an invitation to correct the defect 
referred to in Article 14(1)(a)(iii) or (iv) (missing title or missing abstract), it 
shall notify the International Searching Authority accordingly. 
26.2 Time Limit for Correction 
The time limit referred to in Article 14( 1 )(b) shall be reasonable under 
the circumstances and shall be fixed in each case by the receiving Office. It 
shall not be less than one month from the date of the invitation to correct. 
It may be extended by the receiving Office at any time before a decision is 
taken. 
26.3 Checking cif Physical ReqUirements under Article 14(1)(a)(v) 
The physical requirements referred to in Rule 11 shall be checked only 
to the extent that compliance therewith is necessary for the purpose of 
reasonably uniform international publication. 
26.3bis Invitation to Correct Defects under Article 14(1)(b) 
The receiving Office shall not be required to issue the invitation to 
correct a defect under Article 14(1)(a)(v) where the physical requirements 
referred to in Rule 11 are complied with to the extent necessary for the 
purpose of reasonably uniform international publication. 
26.3ter Invitation to Correct Defects under Article 3 (4) (i) 
(a) Where any element of the international application, other than those 
referred to in Article 11(1)(iii)(d) and (e), does not comply with Rule 12.1, 
the receiving Office shall invite the applicant to file the required correction. 
Rules 26.1(a), 26.2, 26.5 and 29.1 shall apply mutatis mutandis. 
(b) If, onJuly 12, 1991, paragraph (a) is not compatible with the national 
law appliedby the receivrng Office, paragraph (a) shall not apply to that 
receiving Office for as long as it continues not to be compatilile with that 
law, provided that the said Office informs the International Bureau 
accordingly by December 31, 1991. The information received shall be 
promptly published by the International Bureau in the Gazette. 
26.4 Procedure 
(a) Any correction offered to the receiving Office may be stated in a 
letter addressed to that Office if the correction is of such a nature that it 
can be transferred from the letter to the record copy without adversely 
affecting the clarity and the direct reproducibility of the sheet on to which 
the correction is to be transferred; otherwise, the applicant shall be 
required to submit a replacement sheet embodying the correction and the 
letter accompanying the replacement sheet shall draw attention to the 
differences between the repfaced sheet and the replacement sheet. 1992, No. 81 Patents Amendment 
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(b) to (d) (Deleted] 
26.5 Decision 0/ the Receiving Office 89 
(a) The receiving Office shall decide whether the applicant has submitted 
the correction within the time limit under Rule 26.2 and, if the correction 
has been submitted within that time limit, whether the international 
application so corrected is or is not to be considered withdrawn, provided 
that no international application shall be considered withdrawn for lack of 
compliance with the physical requirements referred to in Rule 11 if it 
complies with those requirements to the extent necessary for the purpose 
of reasonably uniform mternational publication. 
(b) (Deleted] 
26.6 Missing Drawings 
(a) If, as provided in Article 14(2), the international application refers to 
drawings which in fact are not included in that application, the receiving 
Office shall so indicate in the said application. 
(b) The date on which the applicant receives the notification provided 
for in Article 14(2) shall have no effect on the time limit fixed under Rule 
20.2(a)(iii). 
Rule 27 
Lack of Pa~ent of Fees 
27.1 Fees 
(a) For the purposes of Article 14 (3) (a), "fees prescribed under Article 3 
(4) (iv)" means: the transmittal fee (Rule 14), the basic fee part of the 
international fee (Rule 15.1 (i», the s~arch fee (Rule 16), and, where 
required, the late payment fee (Rule 16blS.2). 
(b) For the purposes of Article 14 (3) (a) and (b), "the fee prescribed 
under Article 4 (2)" means the designation tee part of the internatio.nal fee 
(Rule 15.1 (ii» and, where required, the late payment fee (Rule 16b1s.2). 
Rule 28 
Defects Noted by the International Bureau 
28.1 Note on Certain Defects 
(a) If, in the opinion of the International Bureau, the international 
application contains any of the defects referred to in Article 14( 1 )(a)(i), (ii) 
or (v), the International Bureau shall bring such defects to the attention of 
the receiving Office. 
(b) The receiving Office shall, unless it disagrees with the said opinion, 
proceed as provided in Article 14(1)(b) and Rule 26. 
Rule 29 
International Applications or Designations Considered Withdrawn 
under Article 14(1), (8) or (4) 
29.1 Finding by Receiving OJfice 
(a) If the receiving Office declares, under Article 14 (1) (b) and Rule 26.5 
(failure to correct certain defects), or under Article 14 (3) (a) (failure to pay 
the prescribed fees under Rule 27. 1 ( a», or under Article 14 (4) (later IP/NIlINZL/PI 1 
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finding of non-compliance with the requirements listed in items (i) to (iii) of 
Article 11 (1 )), that the international application is considered withdrawn: 
(i) the receiving Office shall transmit the record copy (unless 
already transmitted), and any correction offered by the applicant, to the 
International Bureau; 
(ii) the receiving Office shall promptly notify both the applicant 
and the International Bureau of the said declaration, and the International 
Bureau shall in turn notify each designated Office which has already been 
notified of its designation; 
(iii) the receiving Office shall not transmit the search copy as 
provided in Rule 23, or, if such copy has already been transmitted, it shall 
notify the International Search Authority of the said declaration; 
(iv) the International Bureau shall not be required to notify the 
applicant of the receipt of the record copy. 
(b) If the receiving Office declares under Article 14 (3) (b) (failure to pay 
the prescribed designation fee under Rule 27.1 (b)) that the designation of 
any given State is considered withdrawn, the receiving Office shall 
promptly notify both the applicant and the International Bureau of the 
said declaration. The International Bureau shall in turn notify each 
designated Office which has already been notified of its designation. 
29.2 [Deleted} 
29.3 Calling Certain Facts to the Attention of the Receiving Office 
If the International Bureau or the International Searching Authority 
considers that the receiving Office should make a finding under Article 
14( 4), it shall call the relevant facts to the attention of the receiving Office. 
29.4 Notification of Intent to Make Declaration under Article 14(4) 
Before the receiving Office issues any declaration under Article 14( 4), it 
shall notifY the applicant of its intent to issue such declaration and the 
reasons therefor. The applicant may, if he disagrees with the tentative 
finding of the receiving Office, submit arguments to that effect within one 
month from the notification. 
Rule 80 
TilDe Litnit under Article 14(4) 
30.1 Time Limit 
The time limit referred to in Article 14(4) shall be four months from the 
international filing date. 
Rule 81 
Copies Required under Article 18 
3 1. 1 Request for Copies 
(a) Requests under Article 13( 1) may relate to all, some kinds of, or 
individual international applications in which the national Office making 
the request is designated. Requests for all or some kinds of such 
international applications must be renewed for each year by means of a 1992, No. 81 Patents Amendment 
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notification addressed by that Office before November 30 of the preceding 
year to the International Bureau. 
(b) Requests under Article 13(2)(b) shall be subject to the payment of a 
fee covering the cost of preparing and mailing the copy. 
31.2 Preparation of Copies 
The preparation of copies required under Article 13 shall be the 
responsibility of the International Bureau. 
Rule 82 
[Deleted} 
Rule 82bis 
[Deleted} 
Rule 88 
Relevant Prior Art for the International Search 
33.1 Relevant Prior Art for the International Search 
(a) For the purposes of Article 15(2), relevant prior art shall consist of 
everything which has been made available to the public anywhere in the 
world by means of written disclosure (including drawings and other 
illustrations) and which is capable of being of· assistance in determining 
that the claiIned invention is or is not new and that it does or does not 
involve an inventive step (i.e., that it is or is not obvious), provided that the 
making available to the public occurred prior to the international filing 
date. 
(b) When any written disclosure refers to an oral disclosure, use, 
exhibition, or other means whereby the contents of the written disclosure 
were made available to the public, and such making available to the public 
occurred on a date prior to the international filing date, the international 
search report shall separately mention that fact and the date on which it 
occurred if the making available to the public of the written disclosure 
occurred on a date which is the same as, or later than, the international 
filing date. 
(c) Any published application or any patent whose publication date is the 
same as, or later than, but whose filing date, or, where applicable, claimed 
priority date, is earlier than the international filfug date of the 
mternational application searched, and which would constitute relevant 
prior art for the purposes of Article 15 (2) had it been published prior to 
the international filing date, shall be specially mentioned in the 
international search report. 
33.2 Fields to Be Covered by the International Search 
(a) The international search shall cover all those technical fields, and 
sh3ll be carried out on the basis of all those search files, which may contain 
material pertinent to the invention. 
(b) Consequently, not only shall the art in which the invention is 
classifiable be searched but also analogous arts regardless of where 
classified. IP/N/l/NZL/P/l 
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(c) The question what arts are, in any given case, to be regarded as 
analogous shall be considered in the light of what appears to be the 
necessary essential function or use of the invention and not only the 
specific functions expressly indicated in the international application. 
(d) The international search shall embrace all subject matter that is 
generally recognized as equivalent to the subject matter of the claimed 
invention for all or certain of its features, even though, in its specifics, the 
invention as described in the international application is different. 
33.3 Orientation of the International Search 
(a) International search shall be made on the basis of the claims, with 
due regard to the description and the drawings (if any) and with particular 
emphasis on the inventive concept towards which the claims are directed. 
(b) In so far as possible and reasonable, the international search shall 
cover the entire subject matter to which the claims are directed or to which 
they might reasonably be expected to be directed after they have been 
amended. 
34.1 Definition Rule 84 
MinilDulD DoculDentation 
(a) The definitions contained in Article 2(i) and (ii) shall not apply for the 
purposes of this Rule. 
(0) The documentation referred to in Article 15( 4) ("minimum 
documentation") shall consist of: 
(i) the "national patent documents" as specified in paragraph (c), 
(ii) the published international (PCT) applications, the published 
regional applications for patents and inventors' certificates, and the 
published regional patents and inventors' certificates, 
(ill) such other published items of non-patent literature as the 
International Searching Authorities shall agree upon and which shall be 
published in a list by the International Bureau wlien agreed upon for the 
first time and whenever changed. 
(c) Subject to paragraphs (d) and (e), the "national patent documents" 
sh3.I1 be the following: 
(i) the patents issued in and after 1920 by France, the former 
Reichspatentamt of Germany, Japan, the Soviet Union, Switzerland (in 
French and German languages only), the United Kingdom, and the United 
States of America, 
(ii) the patents issued by the Federal Republic of Germany, 
(ill) the patent applications, if any, published in and after 1920 in 
the countries referred to in items (i) and (ii), 
(iv) the inventors' certificates issued by the Soviet Union, 
(v) the utility certificates issued by, and the published applications 
for utility certificates of, France, 
(vi) such patents issued by, and such patent applications published 
in, any other country after 1920 as are in the English, French, German or 
Spanish language and in which no priority is claimed, provided that the 
national Office of the interested country sorts out these documents and 
places them at the disposal of each International Searching Authority. 1992, No. 81 Patents Amendment IP/NI1/NZL/PI 1 
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(d) Where an application is republished once (for exaxnple, an 
OJfenlegungsschrift as an Auslegeschrift) or more than once, no International 
Searching Authority shall be obliged to keep all versions in its 
documentation; consequently, each such Authority shall be entitled not to 
keep more than one version. Furthermore, where an application is granted 
and is issued in the form of a patent or a utility certificate (France), no 
International Searching Authority shall be obliged to keep both the 
application and the patent or utility certificate (France) in its 
documentation; consequently, each such Authority shall be entitled to 
keep either the application only or the patent or utility certificate (France) 
only. 
(e) Any International Searching Authority whose official language, or 
one of whose official languages, is not Japanese, Russian or Spanish is 
entitled not to include in its documentation those patent documents of 
Japan and the Soviet Union as well as those patent documents in the 
Spanish language, respectively, for which no abstracts in the English 
lan~age are generally available. English abstracts becoming generally 
available after the date of entry into force of these Regulations shall 
require the inclusion of the patent documents to which the abstracts refer 
no later than six months after such abstracts become generally available. 
In case of the intelTIlption of abstracting services in English in technical 
fields in which English abstracts were formerly generally available, the 
Assembly shall take appropriate measures to provide for the prompt 
restoration of such services in the said fields. 
(f) For the purposes of this Rule, applications which have only been laid 
open for public inspection are not considered published applications. 
Rule 85 
The CODlpetent International Searching Authority 
35.1 When Only One International Searching Authority Is Competent 
Each receiving Office shall, in accordance with the terms of the 
applicable agreement referred to in Article 16(3 )(b), inform the 
International Bureau which International Searching Authority is 
competent for the searching of the international applications filed with it, 
and the International Bureau shall promptly publish such information. 
35.2 When Several International Searching Authorities Are Competent 
(a) Any receiving Office may, in accordance with the terms of the 
applicable agreement referred to in Article 16(3)(b), specify several 
International Searching Authorities: 
(i) by declaring all of them competent for any international 
application filed with it, and leaving the choice to the applicant, or 
(ii) by declaring one or more competent for certain kinds of 
international applications filed with it, and declaring one or more others 
competent for other kinds of international applications filed with it, 
provided that, for those killds of international applications for which 
several InteInational Searching Authorities are declared to be competent, 
the choice shall be left to the applicant. IP IN 11 INZL/P 11 
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(b) Any receiving Office availing itself of the faculty provided in 
paragraph (a) shall promptly inform the International Bureau, and the 
International Bureau shall promptly publish such information. 
Rule 86 
Minitn.utn. Requiretn.ents for International Searching Authorities 
36.1 Definition cif Minimum Requirements 
The minimum requirements referred to in Article 16(3)(c) shall be the 
following: 
(i) the national Office or intergovernmental organization must have 
at least 100 full-time employees with sufficient technical qualifications to 
carry out searches; 
(ii) that Office or organisation must have in its possession, or have 
access to, at least the minimum documentation referred to in Rule 34, 
properly arranged for search purposes, on paper, in microform or stored 
on electronic media; 
(ill) that Office or organization must have a staff which is capable of 
searching the required technical fields and which has the language facilities 
to understand at least those languages in which the minimum 
documentation referred to in Rule 34 is written or is translated. 
Rule 87 
Missing or Defective Title 
3 7.1 Lack cif Title 
If the international application does not contain a title and the receiving 
Office has notified the International Searching Authority that it has invited 
the applicant to correct such defect, the International Searching Authority 
shall proceed with the international search unless and until it receives 
notification that the said application is considered withdrawn. 
3 7.2 Establishment cif Title 
If the international application does not contain a title and the 
International Searching Authority has not received a notification from the 
receiving Office to the effect that the applicant has been invited to furnish 
a title, or if the said Authority finds that the title does not comply with 
Rule 4.3, it shall itself establish a title. 
Rule 88 
Missing or Defective Abstract 
38.1 Lack cif Abstract 
If the international application does not contain an abstract and the 
receiving Office has notified the International Searching Authority that it 
has invited the applicant to correct such defect, the International Searching 
Authority shall proceed with the international search unless and until it 
receives notification that the said application is considered withdrawn. 
38.2 Establishment cif Abstract 
(a) If the international application does not contain an abstract and the 
International Searching Authority has not received a notification from the 1992, No. 81 Patents Amendment 
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receiving Office to the effect that the applicant has been invited to furnish 
an abstract, or if the said Authority finds that the abstract does not comply 
with Rule 8, it shall itself establish an abstract (in the language in which the 
international application is published). 
(b) The applicant may, within one month from the date of mailing of the 
internationaI search report, submit comments on the abstract established 
by the International Searching Authority. Where that Authority amends 
the abstract established by it, it shall notify the amendment to the 
International Bureau. 
Rule 89 
Subject Matter under Article 17(2)(a)(i) 
39. 1 Definition 
No International Searching Authority shall be required to search an 
international application if, and to the extent to which, its subject matter is 
any of the following: 
(i) scientific and mathematical theories, 
(ii) plant or aniInal varieties or essentially biological processes for the 
production of plants and animals, other than microbiological processes 
and the products of such processes, 
(ill) schemes, rules or methods of doing business, performing purely 
mental acts or playing games, 
(iv) methods of treatment of the human or aniInal body by surgery or 
therapy, as well as diagnostic methods, 
(v) mere presentations of information, 
(vi) computer programs to the extent that the International Searching 
Authority is not equipped to search prior art concerning such programs. 
Rule 40 
Lack of Unity of Invention (International Search) 
40.1 Invitation to Pay 
The invitation to pay additional fees provided for in Article 17(3)(a) shall 
specify the reasons for which the international application is not 
considered as complying with the requirement of unity of invention and 
shall indicate the amount to be paid. 
40.2 Additional Fees 
(a) The amount of the additional fee due for searching under Article 
17(3)(a) shall be determined by the competent International Searching 
Authority. 
(b) The additional fee due for searching under Article 17(3)(a) shall be 
payable direct to the International Searching Authority. 
(c) Any applicant may pay the additional fee under protest, that is, 
accompanied by a reasoned statement to the effect that the international 
application complies with the requirement of unity of invention or that the 
amount of the required additional fee is excessive. Such protest shall be 
examined by a three-member board or other special instance of the 
International Searching Authority or any competent higher authority, 
which, to the extent that it finds the protest justified, shall order the total IP IN 11 INZL/P 11 
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or partial reimbursement to the applicant of the additional fee. On the 
request of the applicant, the text of both the protest and the decision 
thereon shall be notified to the designated Offices together with the 
international search report. The applicant shall submit any translation 
thereof with the furnishing of the translation of the international 
application required under Article 22. 
(d) The three-member board, special instance or competent higher 
authority, referred to in paragraph (c), shall not comprise any person who 
made the decision which is the subject of the protest. 
(e) Where the applicant has, under paragraph (c), paid an additional fee 
under protest, the International Searching Authority may, after a prior 
review of the justification for the invitation to pay an additional fee, 
require that the applicant pay a fee for the examination of the protest 
("protest fee"). The protest fee shall be paid within one month from the 
date of the notification to the applicant of the result of the review. If the 
protest fee is not so paid, the protest shall be considered withdrawn. The 
protest fee shall be refunded to the applicant where the three-member 
board, special instance or hi~her authority referred to in paragraph (c) 
finds that the protest was entIrely justified. 
40.3 Time Limit 
The time limit provided for in Article 17(3)(a) shall be fixed, in each case, 
according to the circumstances of the case, by the International Searching 
Authority; it shall not be shorter than 15 or 30 days, respectively, 
depending on whether the applicant's address is in the Sa.rrle country as or 
in a different country from that in which the International Searching 
Authority is located, and it shall not be longer than 45 days, from the date 
of the invitation. 
Rule 41 
Earlier Search Other Than International Search 
41.1 Obligation to Use Results~· Refund of Fee 
If reference has been made in the request, in the form provided for in 
Rule 4.11, to an international-type search carried out under the conditions 
set out in Article 15(5) or to a search other than an international or 
international-type search, the International Searching Authority shall, to 
the extent possible, use the results of the said search in establishing the 
international search report on the international application. The 
International Searching Authority shall refund the search fee, to the extent 
and under the conditions provided for in the agreement under Article 
16(3)(b) or in a conununication addressed to and published in the Gazette 
by the International Bureau, if the international search report could wholly 
or partly be based on the results of the said search. 
Rule 42 
TiIne LiInit for International Search 
42.1 Time Limit for International Search 
The time limit for establishing the international search report or the 
declaration referred to in Article 17(2)(a) shall be three montns from the 1992, No. 81 Patents Amendment 
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97 
REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 
receipt of the search copy by the Intetnational Searching Authority, or 
nine months from the priority date, whichever time limit expires later. 
Rule 48 
The International Search Report 
43.1 Identifications 
The intetnational search report shall identify the International Searching 
Authority which established it by indicating the name of such Authority, 
and the international application by indicating the international 
application number, the name of the applicant, and tne international filing 
date. 
43.2 Dates 
The international search report shall be dated and shall indicate the date 
on which the intetnational search was actually completed. It shall also 
indicate the filing date of any earlier application whose priority is claimed 
or, if the priority of more than one earlier application is claimed, the filing 
date of the earliest among them. 
43.3 Classification 
(a) The intetnational search report shall contain the classification of the 
subject matter at least according to the International Patent Classification. 
(b) Such classification shall be effected by the International Searching 
Authority. 
43.4 Language 
Every international search report and any declaration made under 
Article 17(2)(a) shall be in the language m which the international 
application to which it relates is published. 
43.5 Citations 
( a) The intetnational search report shall contain the citations of the 
documents considered to be relevant. 
(b) The method of identifying any cited document shall be regulated by 
the Administrative Instructions. 
(c) Citations of particular relevance shall be specially indicated. 
(d) Citations which are not relevant to all the claims shall be cited in 
relation to the claiIn or claims to which they are relevant. 
(e) If only certain passages of the cited document are relevant or 
particularly relevant, tbey shall be identified, for example, by indicating 
the page, the column, or the lines, where the passage appears. If the entire 
document is relevant but some passages are of particUfar relevance, such 
passages shall be identified unless such identification is not practicable. 
43.6 Fields Searched 
(a) The intetnational search report shall list the classification 
identification of the fields searched. If that identification is effected on the 
basis of a classification other than the International Patent Classification, 
the Intetnational Searching Authority shall publish the classification used. IP/NI 1 INZL/PI 1 
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(b) If the international search extended to patents, inventors' certificates, 
utility certificates, utility models, patents or certificates of addition, 
inventors' certificates of addition, utility certificates of addition, or 
published applications for any of those kinds of protection, of States, 
periods, or languages, not included in the minimum documentation as 
aefmed in Rule 34, the international search report shall, when practicable, 
identify the kinds of documents, the States, the periods, and the languages 
to which it extended. For the purposes of this paragraph, Article 2(ii) shall 
not apply. 
(c) If the international search was based on, or was extended to, any 
electronic data base, the international search report may indicate the name 
of the data base and, where considered useful to others and practicable, 
the search terms used. 
43.7 Remarks Concerning Unity of Invention 
If the applicant paid additional fees for the international search, the 
international search report shall so indicate. Furthermore, where the 
international search was made on the main invention only or on less than 
all the inventions (Article 1 7 (3) (a)), the international search report shall 
indicate what parts of the international application were and what parts 
were not searched. 
43.8 Authorised Officer 
The international search report shall indicate the name of the officer of 
the International Searching Authority responsible for that report. . 
43.9 Additional Matter 
The international search report shall contain no matter. other than that 
specified in Rules 33.1 (b) and (c), 43.1 to 43.3, 43.5 to 43.8, and 44.2 (a), 
and the indication referred to in Article 17 (2) (b), provided that the 
Administrative Instructions may pennit the inclusion in the international 
search report of any additional matter specified in the Administrative 
Instructions. The international search report shall not contain, and the 
Administrative Instructions shall not permit the inclusion of, any 
expressions of opinion, reasoning, arguments, or explanations. 
43.10 Form 
The physical requirements as to the fonn of the international search 
report shall be prescribed by the Administrative Instructions. 
Rule 44 
TranslDittal of the International Search Repo~ Etc. 
44.1 Copies of Report or Declaration 
The International Searching Authority shall, on the same day, transmit 
one coPy of the international search report or the declaration referred to 
in ArtIcle 17(2)(a) to the International Bureau and one copy to the 
applicant. 1992, No. 81 Patents Amendment 
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44.2 Title or Abstract 99 
(a) The international search report shall either state that the 
International Searching Authority approves the title and the abstract as 
submitted by the applicant or be accompanied by the text of -the title 
and/or abstract as established by the International Searching Authority 
under Rules 37 and 38. 
(b) [Deleted} 
(c) [Deleted} 
44.3 Copies qf Cited Documents 
(a) The request referred to in Article 20(3) may be presented any tiIne 
during seven years from the international filing date of the international 
application to which the international search report relates. 
(b) The International Searching Authority may require that the party 
(applicant or designated Office) presenting the request pay to it the cost of 
preparing and mailing the copies. The level of the cost of preparing copies 
shall be provided for in the agreements referred to in Article 16(3)(b) 
between the International Searching Authorities and the International 
Bureau. 
(c) [Deleted} 
(d) Any International Searching Authority may perform the obligations 
referred to in paragraphs (a) and (b) through another agency responsible to 
it. 
Rule 45 
Translation of the International Search Report 
45.1 Languages 
International search reports and declarations referred to in Article 
17(2)(a) shall, when not in English, be translated into English. 
Rule 46 
Atnendtnent of Claitns before the International Bureau 
46.1 Time Limit 
The time 1im.it referred to in Article 19 shall be two months from the 
date of transmittal of the international search report to the International 
Bureau and to the applicant by the International Searching Authority or 16 
months from the pnority date, whichever tiIne 1im.it expires later, provided 
that any amendment made under Article 19 which is received by the 
International Bureau after the expiration of the applicable time funit shall 
be considered to have been received by that Bureau on the last day of that 
time limit if it reaches it before the technical preparations for international 
publication have been completed. 
46.2 Where to File 
Amendments made under Article 19 shall be filed directly with the 
International Bureau. IP/N/I/NZL/P/l 
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46.3 Language of Amendments 
If the international application· has been filed in a language other than 
the language in which it is published, any amendment made under Article 
1 9 shall be in the language of publication. 
46.4 Statement 
( a) The statement referred to in Article 1 9( 1) shall be in the language in 
which the international application is published and shall not exceed 500 
words if in the English language or it translated into that language. The 
statement shall be identified as such by a heading, preferably by using the 
words "Statement under Article 19( 1)" or their equivalent in the language 
of the statement. 
(b) The statement shall contain no disparaging comments on the 
international search report or the relevance of citations contained in that 
report. Reference to citations, relevant to a given claim, contained in the 
international search report may be made only in connection with an 
amendment of that claim. 
46.5 Form of Amendments-
(a) The applicant shall be required to submit a replacement sheet for 
every sheet of the claims which, on account of an amendment or 
amendments under Article 19, differs from the sheet originally filed. The 
letter accompanying the replacement sheets shall draw attention to the 
differences between the replaced sheets and the replacement sheets. T<;> the 
extent that any amendment results in the cancelfation of an entire sheet, 
that amendment shall be communicated in a letter. 
(b) and (c) [Deleted} 
4 7. 1 Procedure Rule 47 
Com.m.unication to Designated Offices 
( a) The communication provided for in Article 20 shall be effected by the 
International Bureau. 
(a bis) The International Bureau shall notify each designated Office, at the 
time of the communication provided for in Article 20, of the fact and date 
of receipt of the record copy and of the fact and date of receipt of any 
priority document. Such notification shall also be sent to any designated 
Office which has waived the communication provided for in Article 20, 
unless such Office has also waived the notification of its designation. 
(b) Such communication shall be effected promptly after the 
international Eublication of the international application and, in any event, 
by the end of the 19th month after the priority date. Any amendment 
received by the International Bureau within the time linrit under Rule 46.1 
which was not included in the communication shall be communicated 
promptly to the designated Offices by the International Bureau, and the 
latter shall notify the applicant accordingly. 
(c) The International Bureau shall send a notice to the applicant 
indicating the designated Offices to which the communication has been 
effected and the date of such communication. Such notice shall be sent on 1992, No. 81 Patents Amendment 
SECOND SCHEDULE-continued IP IN 11 INZL/P 11 
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REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 101 
the same day as the communication. Each designated Office shall be 
informed, separately from the communication, about the sending and the 
date of mailing of the notice. The notice shall be accepted by all designated 
Offices as conclusive evidence that the communication has duly taken 
place on the date specified in the notice. 
(d) Each designated Office shall, when it so requires, receive the 
international search reports and the declarations reterred to in Article 
17(2)(a) also in the translation referred to in Rule 45.1. 
(e) Where any designated Office has waived the requirement provided 
under Article 20, the copies of the documents which otherwise would have 
been sent to that Office shall, at the request of that Office or the applicant, 
be sent to the applicant at the time of the notice referred to in paragraph 
(c). 
47.2 Copies 
(a) The copies required for communication shall be prepared by the 
InternationaI Bureau. 
(b) They shall be on sheets of A 4 size. 
(c) Except to the extent that any designated Office notifies the 
International Bureau otherwise, copies of the pamphlet under Rule 48 may 
be used for the purposes of the communication of the international 
application under Article 20. 
47.3 Languages 
The international application conununicated under Article 20 shall be in 
the language in whicn it is published provided that if that language is 
different from the language in which it was filed it shall, on the request of 
the designated Office, be communicated in either or both of these 
languages. 
47.4 Express Request under Article 23 (2) 
Where the applicant makes an express request to a designated Office 
under Article 23 (2) before the communication provided for in Article 20 
has taken place, the International Bureau shall, upon request of the 
applicant or the designated Office, promptly effect that communication to 
that Office. 
48.1 Form Rule 48 
International Publication 
(a) The international application shall be published in the form of a 
pamphlet. 
(b) The particulars regarding the form of the pamphlet and the method 
of reproduction shall be governed by the Administrative Instructions. 
48.2 Contents 
(a) The pamphlet shall contain: 
(i) a standardized front page, 
(ii) the description, 
(ill) the claims, IP IN 11 INZL/P 11 
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(iv) the drawings, if any, 
(v) subject to paragraph (g), the international search report or the 
declaration under Article 17(2)(a); the publication of the international 
search report in the pamphlet shall, however, not be required to include 
the part of the international search report which contains only matter 
referred to in Rule 43 already appearing on the front page of the 
pamphlet, 
(vi) any statement filed under Article 1 9( 1), unless the International 
Bureau finds that the statement does not comply with the provisions of 
Rule 46.4, 
(vii) any request for rectification referred to in the third sentence of 
Rule 91.1(f), 
(viii) any indicati0t:\s in relation to a deposited microorganism 
furnished under Rule 13 blS separately from the description, together with 
an indication of the date on which the International Bureau received such 
indications. 
(b) Subject to paragraph (c), the front page shall include: 
(i) data taken from the request sheet and such other data as are 
prescribed by the Administrative Instructions, 
(ii) a figure or figures where the international application contains 
drawings, unless Rule 8.2(b) applies, 
(iii) the abstract; if the abstract is both in English and in another 
language, the English text shall appear first. 
(c) Where a declaration under Article 17(2)(a) has issued, the front page 
shcil1 conspicuously refer to that fact and need include neither a drawing 
nor an abstract. 
(d) The figure or figures referred to in paragraph (b)(ii) shall be selected 
as provided in Rule 8.2. Reproduction of such figure or figures on the front 
page may be in a reduced form. 
(e) If there is not enough room on the front page for the totality of the 
abstract referred to in paragraph (b )(iii), the said abstract shall appear on 
the back of the front page. The Sarrle shall apply to the translation of the 
abstract when such translation is required to be published under Rule 
48.3(c). 
(f) If the claims have been arrlended under Article 19, the publication 
shall contain either the full text of the claims both as filed and as amended 
or the full text of the claims as filed and specify the arrlendments. Any 
statement referred to in Article 19( 1) shall be included as well, unless the 
International Bureau finds that the statement does not comply with the 
provisions of Rule 46.4. The date of receipt of the arrlended claims by the 
International Bureau shall be indicated. 
(g) If, at the time of the completion of the technical preparations for 
international publication, the international search report is not yet 
available (for example, because of publication on the request of the 
applicant as providea in Articles 21(2)(b) and 64(3)(c)(i), the pamphlet shall 
contain, in place of the international search report, an indication to the 
effect that that report was not available and that either the pamphlet (then 
also including the international search report) will be republished or the 
international search report (when it becomes available) will be separately 
published. 1992, No. 81 Patents Amendment 
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REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 103 
(h) If, at the time of the completion of the technical preparations for 
international publication, the time limit for amending the claims under 
Article 19 has not expired, the pamphlet shall refer to that fact and 
indicate that, should the claims be amended under Article 19, then, 
promptly after such amendments, either the parn.phlet (containing the 
claims as arn.ended) will be republished or a statement reflecting all the 
arn.endments will be published. In the latter case, at least the front page 
and the claims shall be republished and, if a statement under Article 19( 1 ) 
has been filed, that statement shall be published as well, unless the 
International Bureau finds that the statement does not comply with the 
provisions of Rule 46.4. 
(i) The Administrative Instructions shall determine the cases in which the 
various alternatives referred to in paragraphs (g) and (h) shall apply. Such 
determination shall depend on the volume and complexity of the 
arn.endments and/or the volume of the international application and the 
cost factors. 
48.3 Languages 
(a) If the international application is filed in English, French, German, 
Japanese, Russian or Sp anisb , that application shall be published in the 
language in which it was filed. 
(b) If the international application is filed in a language other than 
English, French, German, Japanese, Russian or Spanish, that application 
shall be published in English translation. The translation shall be prepared 
under the responsibility of the International Searching Authority, which 
shall be obliged to have it ready in time to permit international publication 
by the prescribed date, or, where Article 64(3)(b) applies, to permit the 
communication under Article 20 by the end of the 19th month after the 
priority date. Notwithstanding Rule 16.1(a), the International Searching 
Authority may charge a fee for the translation to the applicant. The 
International Searching Authority shall give the applicant an opportunity 
to comment on the draft translation. The International Searching 
Authority shall fix a time limit reasonable under the circumstances of the 
case for such comments. If there is no time to take the comments of the 
applicant into account before the translation is communicated or if there is 
a difference of opinion between the applicant and the said Authority as to 
the correct translation, the applicant may send a copy of his comments, or 
what remains of them, to the International Bureau and each designated 
Office to which the translation was communicated. The International 
Bureau shall publish the essence of the comments together with the 
translation of the International Searching Authority or subsequently to the 
publication of such translation. 
(c) If the international application is published in a language other than 
English, the international search report to the extent that it is published 
under Rule 48.2(a)(v), or the declaration referred to in Article 17(2)(a), the 
title of the invention, the abstract and any text matter pertaining to the 
figure or figures accompanying the abstract shall be published both in that 
language and in English. The translations shall be prepared under the 
responsibility of the International Bureau. IP/N/lINZL/P/l 
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48.4 Earlier Publication on the Applicant-'s Request 
(a) Where the applicant asks for publication under Articles 21(2)(b) and 
64(3)(c)(i) and the international search reeort, or the declaration referred to 
in Article 17(2)(a), is not yet available for publication together with the 
international application, the International Bureau shall collect a special 
publication fee whose am.ount shall be fixed in the Administrative 
Instructions. 
(b) Publication under Articles 21(2)(b) and 64(3)(c)(i) shall be effected by 
the International Bureau promptly after the applicant has asked for it and, 
where a special fee is due under paragraph (a), after receipt of such fee. 
48.5 Notification of National Publication 
Where the publication of the international application by the 
International Bureau is governed by Article 64(3)(c)(ii), tbe national Office 
conceITled shall, promptly after effecting the national publication referred 
to in the said provision, notify the International Bureau of the fact of such 
national publication. 
48.6 Announcing of Certain Facts 
(a) If any notification under Rule 29.1(a)(ii) reaches the International 
Bureau at a time later than that at which it was able to prevent the 
international publication of the international application, the International 
Bureau shall promptly publish a notice in the Gazette reproducing the 
essence of sucb notification. . 
(b) [Deleted] 
(c) If the international application, the designation. of any designated 
State or the priority claim is withdrawn under Rule 90blS after the technical 
preparations for international publication have been completed, notice of 
the withdrawal shall be published in the Gazette. 
Rule 49 
Copy, Translation and Fee under Article 22 
49.1 Notification 
(a) Any Contracting State requiring the furnishing of a translation or the 
paytnent of a national fee, or both, under Article 22, shall notify the 
International Bureau of: 
(i) the languages from which and the language into which it requires 
translation, 
(ii) the amount of the national fee. 
(ablS) Any Contracting State not requiring the furnishing, under Article 
22, by the applicant of a copy of the international application (even though 
the communication of the copy of the international application by the 
International Bureau under Rule 47 has not taken place by the expiration 
of the time limit applicable under Article 22) shall notify the International 
Bureau accordingly. 
(ater) Any Contracting State which, pursuant to Article 24(2), maintains, 
if it is a designated State, the effect provided for in Article 11(3) even 
though a copy of the international application is not furnished by the 1992, No. 81 Patents Amendment 
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REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 
applicant by the expiration of the time limit applicable under Article 22 
shall notify the International Bureau accordingfy. 
(b) Any notificati9n received by the International Bureau under 
paragraphs (a), (ab1S) or (ateT
) shall be promptly published by the 
InteInational Bureau in the Gazette. 
(c) If the requirements under paragraph (a) change later, such changes 
shciIl be notified by the Contractmg State to the InteInational Bureau and 
that Bureau shall promptly publish the notification in the Gazette. If the 
change means that translation is required into a language which, before 
the change, was not required, such change shall be effective only with 
respect to inteInational applications filed later than two months after the 
publication of the notification in the Gazette. Otherwise, the effective date 
of any change shall be determined by the Contracting State. 
49.2 Languages 
The language into which translation may be required must be an official 
language of the designated Office. If there are several of such languages, no 
translation may be required if the international application is in one of 
them. If there are several official languages and a translation must be 
furnished, the applicant may choose any of those languages. 
Notwithstanding the foregoing provisions of this paragraph, if there are 
several official fanguages but the national law prescribes the use of one 
such language for foreigners, a translation into that language may be 
required. 
49.3 Statements under Article 19.; Indications under Rule 13bis• 4 
For the purposes of Article 22 and the present Rule, any statem~nt made 
under Artlcle 19( 1) and any indication furnished under Rule 13 blS.4 shall, 
subject to Rule 49.5(c) and (h), be considered part of the international 
application. 
49.4 Use cif National Form 
No applicant shall be required to use a national form when performing 
the acts referred to in Article 22. 
49.5 Contents cif and Physical ReqUirements for the Translation 
(a) For the purposes of Article 22, the translation of the international 
application shall contain the description, the claims, any text matter of the 
drawings and the abstract. If required by the ~esignated Office, the 
translation shall also, subject to paragraphs (b), (cblS) and (e), 
(i) contain the request, 
(ii) if the claims have been amended under Article 19, contain both 
the claims as filed and the claims as amended, and 
(ill) be accompanied by a copy of the drawings. 
(b) Any designated Office requiring the furnishing of a translation of the 
request shall furnish copies of the request form in the language of the 
translation free of charge to the applicants. The form and contents of the 
request form in the language of the translation shall not be different from 
those of the request under Rules 3 and 4; in particular, the request form in 
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in the request as filed. The use of the request form in the language of the 
translation shall be optional. 
(c) Where the applicant did not furnish a translation of any statement 
made under Article 1 9( 1 ), the designated Office may disregard such 
statement. 
(cbis) Where the applicant furnishes, to a designated Office which 
requires under paragraph (a)(ii) a translation of both the claims as filed and 
the claims as aIIlended, only one of the required two translations, the 
designated Office may disregard the claims of which a translation has not 
been furnished or invite the applicant to furnish the missing translation 
within a time limit which shall be reasonable under the circumstances and 
shall be fixed in the invitation. Where the designated Office chooses to 
invite the applicant to furnish the missing translation and the latter is not 
furnished within the time limit fixed in the invitation, the designated Office 
may disregard those claims of which a translation has not been furnished 
or consider the international application withdrawn. 
(d) If any drawing contains text matter, the translation of that text 
matter shall be furnished either in the form of a copy of the original 
drawing with the translation pasted on the original text matter or in the 
form of a drawing executed anew. 
(e) Any designated Office requiring under paragraph (a) the furnishing of 
a copy of the drawings shall, where the applicant failed to furnish such 
copy within the time limit applicable under Article 22, invite the applicant 
to furnish such copy within a time limit which shall be reasonable under 
the circumstances and shall be fixed in the invitation. 
(f) The expression "Fig." does not require translation into any language. 
(g) Where any copy of the drawings or any drawing executed anew 
which has been furnished under paragraph (d) or (e) does not comply with 
the physical requirements referred to in Rule 11, the designated Office may 
invite the applicant to correct the defect within a time limit which shall be 
reasonable under the circumstances and shall be fixed in the invitation. 
(h) Where the applicant did not furnish ~ translation of the abstract or of 
any indication furnished under Rule 13blS.4, the designated Office shall 
invite the applicant to furnish such translation, if it deems it to be 
necessary, within a time limit which shall be reasonable under the 
circumstances and shall be fixed in the invitation. 
(i) Information on any requirement and practice of designated Offices 
unaer the second sentence of paragraph (a) shall be published by the 
International Bureau in the Gazette. 
(j) No designated Office shall require that the translation of the 
international application comply with physical requirements other than 
those prescribed for the international application as filed. 
(k) Where a title has been established by the International Searching 
AuthoritYlursuant to Rule 37.2, the translation shall contain the title as 
establishe by that Authority. . 
(I) If, onJuly 12, 1991, paragraph (cblS) or paragraph (k) is not compatible 
with the national law applied by the designated Office, the paragraph 
concerned shall not apply to that designated Office for as long as it 
continues not to be compatible with that law, provided that the said Office 
informs the International Bureau accordingly by December 31, 1991. The 1992, No. 81 Patents Amendment 
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REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 
information received shall be promptly published by the International 
Bureau in the Gazette. 
Rule 50 
Faculty under Article 22(8) 
50.1 Exercise of Faculty 
(a) Any Contracting State allowing a time limit expiring later than the 
time llinits provided for in Article 22( 1) or (2) shall notify the International 
Bureau of the time limits so fixed. 
(b) Any notification received by the International Bureau under 
paragraph (a) shall be promptly published by the International Bureau in 
the Gazette. 
(c) Notifications concerning the shortening of the previously fixed time 
limit shall be effective in relation to international applications filed after 
the expiration of three months computed from the date on which the 
notification was published by the International Bureau. 
(d) Notifications concerning the lengthening of the previously fixed time 
limit shall become effective upon publication by the International Bureau 
in the Gazette in respect of international applications pending at the time 
or filed after the date of such publication, or, if the Contracting State 
effecting the notification fixes some later date, as from the latter date. 
Rule 51 
Review by Designated Offices 
51.1 Time Limit for Presenting the Request to Send Copies 
The time limit referred to in Article 2 5( 1 )( c) shall be two months 
computed from the date of the notification sent to the applicant under 
Rules 20.7(i), 24.2(c), 29.1(a)(ii), or 29.1(b). 
51.2 Copy of the Notice 
Where the applicant, after having received a negative determination 
under Article 11(1), requests the International Bureau, under Article 25(1), 
to send copies of the file of the purported international application to any 
of the named Offices he has attempted to designate, he shall attach to his 
request a copy of the notice referred to in Rule 20.7(i). 
51.3 Time Limit for Paying National Fee and Furnishing Translation 
The time limit referred to in Article 25(2)(a) shall expire at the same time 
as the time limit prescribed in Rule 51. 1. 
Rule 51bis 
Certain National RequireDlents Allowed under Article 27(1), (2), (6) 
and (7) 
51 his. 1 Certain National ReqUirements Allowed 
(a) The documents referred to in Article 27(2)(ii), or the evidence 
referred to in Article 27(6), which the applicant may be required to furnish 
under the national law applicable by the designated Office include, in 
particular: 
(i) any document relating to the identity of the inventor, IP IN /1 INZL/P 11 
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(ii) any document relating to any transfer or assignment of the right 
to the application, 
(iii) any document containing an oath or declaration by the inventor 
alleging his inventorship, 
(iv) any document containing a declaration by the applicant 
designating the inventor or alleging the right to the application, 
(v) any document containing any proof of the right of the applicant 
to claim priority where he is different from the applicant having filed the 
earlier application the priority of which is claimed, 
(vi) any evidence concerning non-prejudicial disclosures or exceptions 
to lack of novelty, such as disclosures resulting from abuse, disclosures at 
certain exhibitions and disclosures by the applicant during a certain period 
of time. 
(b) The national law applicable by the designated Office may, ID 
accordance with Article 27(7), require that 
(i) the applicant be represented by an agent having the right to 
represent applicants before that Office and/or have an address in the 
designated State for the purpose of receiving notifications, 
(ii) the agent, if any, representing the applicant be duly appointed by 
the applicant. 
(c) The national law applicable by the designated Office may, in 
accordance with Article 27 ( 1), require that the international applic~tion, 
the translation thereof or any document relating thereto be furnished in 
more than one copy. 
(d) The national law applicable by the designated Office may, in 
accordance with Article 27 (2)(ii), require that the translation of the 
international application furnished by the applicant under Article 22 be 
verified by the applicant or the person having translated the international 
application in a statement to the effect that, to the best of his knowledge, 
tile translation is complete and faithful. 
51 bis.2 Opportunity to Comply with National Requirements 
(a) Where any of the requirements referred to in Rule 51bis.l, or any 
other requirement of the national law applicable by the designated Office 
which that Office may apply under Article 27 (1), (2), (6) or (7), is not 
already fulfilled during the same period within which the requirements 
under Article 22 must be complied with, the applicant shall have an 
opportunity to comply with the requirement after the expiration of that 
period. 
(b) The national law applicable by the designated Office may, in 
accordance with Article 27 (2)(ii), require that the applicant, upon invitation 
by the designated Office, furnish a certification of the translation of the 
international application by a public authority or a sworn translator, if the 
designated Office deems such certification to be necessary under the 
circumstances, within a time limit which shall be reasonable under the 
circumstances and shall be fixed in the invitation. 1992, No. 81 Patents Amendment 
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Rule 52 109 
Atnendtnent of the Clairn.s, the Description, and the Drawings, 
before Designated Offices 
52.1 Time Limit 
(a) In any designated State in which processing or examination starts 
without special request, the applicant shall, if he so wishes, exercise the 
right under Article 28 within one month from the fulfillment of the 
requirements under Article 22, provided that, if the communication under 
Rule 47. 1 has not been effected by the expiration of the time limit 
applicable under Article 22, he shall exercise the said right not later than 
four months after such expiration date. In either case, the applicant may 
exercise the said right at any other time if so permitted by the national law 
of the said State. 
(b) In any designated State in which the national law provides that 
examination starts only on special request, the time limit within or the 
time at which the applicant may exercise the right under Article 28 shall be 
the same as that provided by the national law for the filing of amendments 
in the case of the examination, on special request, of national applications, 
provided that such time limit shall not expire prior to, or such time shall 
not come before, the expiration of the time lirrrit applicable under 
paragraph (a). 
PART C 
Rules Concerning Chapter 11 of the Treaty 
Rule 58 
The DeDland 
53.1 Form 
(a) The demand shall be made on a printed fonn or be presented as a 
computer print-out. The particulars of the printed form ana of a demand 
presented as a computer print-out shall be prescribed by the 
Administrative Instructions. 
(b) Copies of printed demand fonns shall be furnished free of charge by 
the receiving Office or by the International Preliminary Examining 
Authority. 
53.2 Contents 
(a) The demand shall contain: 
(i) a petition, 
(ii) indications concerning the applicant and the agent if there is an 
agent, 
(iii) indications concerning the international application to which it 
relates, 
(iv) election of States, 
(v) where applicable, a statement concerning amendments. 
(b) The demand shall be signed. IP IN 11 INZL/P 11 
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53.3 The Petition 
The petition shall be to the following effect and shall preferably be 
worded as follows: "Demand under Article 31 of the Patent Cooperation 
Treaty: The undersigned requests that the international application 
specified below be the subject of international prelitninary examination 
according to the Patent Cooperation Treaty." 
53.4 The Applicant 
As to the indications concerning the applicant, Rules 4.4 and 4.16 shall 
apply, and Rule 4.5 shall apply mutatis mutandis. Only applicants for the 
elected States are required to be indicated in the demand. 
53.5 Agent or Common Representative 
If an agent or com.mon representative is designated, the demand shall so 
indicate. Rules 4.4 and 4.16 shall apply, and Rule 4.7 shall apply mutatis 
mutandis. 
53.6 Identification of the International Application 
The international application shall be identified by the name and 
address of the applicant, the title of the invention, the international filing 
date (if known to the applicant) and the international application number 
or, where such nUIllber is not known to the applicant, the name of the 
receiving Office with which the international application was filed. 
53.7 Election of States 
(a) The demand shall indicate at least one Contracting State from among 
those States which are designated and are bound by Chapter 11 of the 
Treaty ("eligible States"), as an elected State. 
(b) Election of Contracting States in the demand shall be made: 
(i) by an indication that all eligible States are elected, or, 
(ii) in the case of States which have been designated for the 
purpose of obtaining national patents, by an indication of those eligible 
States that are elected, and, in the case of States which have Deen 
designated for the purpose of obtaining a regional patent, by an indication 
of the regional patent concerned together with either an indication that all 
eligible States party to the regional patent treaty concerned are elected or 
an indication of those among the said States that are elected. 
53.8 Signature 
(a) Subject to paragraph (b), the demand shall be signed by the applicant 
or, if there is more than one applicant, by all applicants maKing the 
demand. 
(b) Where two or more applicants file a demand which elects a State 
whose national law requires that national applications be filed by the 
inventor and where an applicant for that elected State who is an inventor 
refused to sign the demand or could not be found or reached after diligent 
effort, the demand need not be signed by that applicant ("the applicant 
concerned") if it is signed by at least one applicant and 1992, No. 81 Patents Amendment 
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(i) a statement is furnished explaining, to the satisfaction of the 
International PreliIninary Examining Authority, the lack of signature of the 
applicant concerned, or 
(ii) the applicant concerned did not sign the request but the 
requirements of Rule 4.15(b) were complied with. 
53.9 Statement Concerning Amendments 
(a) If amendments under Article 19 have been made, the statement 
concerning amendments shall indicate whether, for the purposes of the 
international preliminary examination, the applicant wishes those 
amendments 
(i) to be taken into account, in which case a copy of the 
amendments shall preferably be submitted with the demand, or 
(ii) to be considered as reversed by an amendment under Article 
34. 
(b) If no amendments under Article 19 have been made and the time 
limit for filing such amendments has not expired, the statement may 
indicate that the applicant wishes the start of the international preliminary 
examination to be postponed in accordance with Rule 69.1(d). 
(c) If any amendments under Article 34 are submitted with the demand, 
the statement shall so indicate. 
Rule 54 
The Applicant Entitled to Make a DelDand 
54.1 Residence and Nationality 
The residence or nationality of the applicant shall, for the purposes of 
Article 31(2), be determined according to Rules 18.1 and 18.2. 
54.2 Two or M ore Applicants 
If there are two or more applicants, the right to make a demand under 
~rticle 31 (2) shall exist if at least one of the applicants making the demand 
IS 
(i) a resident or national of a Contracting State bound by Chapter 11 
and the international application has been filed with a receiving Office of 
or acting for a Contracting State bound by Chapter 11, or 
(ii) a person entitled to make a demand under Article 31 (2)(b) and the 
international application has been filed as provided in the decision of the 
Assembly. 
54.3 [Deleted] 
54.4 Applicant Not Entitled to Make a Demand 
(a) If the applicant does not have the right to make a demand or, in the 
case of two or more applicants, if none of them has the right to make a 
demand under Rule 54.2, the demand shall be considered not to have been 
submitted. 
(b) [Deleted] IP IN I lINZL/P 11 
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Rule 55 
Languages (International PrelilJ1.inary EX3.IJ1.ination) 
55.1 The Demand 
The demand shall be in the language of the international application or, 
if the international application has been filed in a language otlier than the 
language in which it is published, in the language of publication. 
Rule 56 
Later Elections 
56.1 Elections Submitted Later Than the Demand 
(a) The election of States subsequent to the subrrllssion of the demand 
("later election") shall be effected by a notice submitted to the 
International Bureau. The notice shall identify the international 
application and the demand, and shall include an indication as referred to 
in Rule 53.7(b)(ii). 
(b) Subject to paragraph (c), the notice referred to in paragraph (a) shall 
be signed by the applicant for the elected States concerned or, if there is 
more than one applicant for those States, by all of them. 
(c) Where two or more applicants file a notice effecting a later election of 
a State whose national law requires that national applications be filed by 
the inventor and where an applicant for that elected State who is an 
inventor refused to sign the notice or could not be found or reached after 
diligent effort, the notice need not be signed by that applicant ("the 
applicant concerned") if it is signed by at least one applicant and 
(i) a statement is furnished explaining, to the satisfaction of the 
International Bureau, the lack of signature of the applicant concerned, or 
(ii) the applicant concerned did not sign the request but the 
requirements ot Rule 4.15(b) were complied with, or did not sign the 
demand but the requirements of Rule 53.8(b) were complied with. 
(d) An applicant for a State elected by a later election need not have 
been indicated as an applicant in the demand. 
(e) If a notice effecting a later election is submitted after the expiration 
of 1 9 months from the priority date, the International Bureau shall notify 
the applicant that the election does not have the effect provided for under 
Article 39(1)(a) and that the acts referred to in Article 22 must be 
performed in respect of the elected Office concerned within the time limit 
applicable under Article 22. 
(f) If, notwithstanding paragraph (a), a notice effecting a later election is 
subrrlltted by the applicant to the International Preliminary Examining 
Authority rather than the International Bureau, that Authority shall mark 
the date of receipt on the notice and transrrllt it promptly to the 
International Bureau. The notice shall be considered to have been 
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56.2 Identification of the International Application 113 
The international application shall be identified as provided in Rule 53.6. 
56.3 Identification of the Demand 
The demand shall be identified by the date on which it was submitted 
and by the nanle of the· International Preliminary Examining Authority to 
which it was submitted. 
56.4 Form of Later Elections 
The notice effecting the later election shall preferably be worded as 
follows: "In relation to the international application filed with ... on ... 
under No. ... by ... (applicant) (and the demand for international 
preliminary examination submitted on ... to ... ), the undersigned elects the 
following additional State(s) under Article 31 of the Patent Cooperation 
T " reaty: 
56.5 Language of Later Elections 
The later election shall be in the language of the demand. 
Rule 57 
The Handling Fee 
57. 1 Requirement to Pay 
(a) Each demand for international preliminary examination shall be 
subject to the payment of a fee for the benefit of the International Bureau 
("handling fee") to be collected by the International Preliminary 
Examining Authority to which the demand is submitted. 
(b) [Deleted} 
57.2 Amount 
(a) The anlount of the handling fee is as set out in the Schedule of Fees. 
(b) [Deleted} 
(c) The anlount of the handling fee shall be established, for each 
International Preliminary Examining Authority which, under Rule 57 .3(c), 
prescribes the payment of the handling fee in a currency or currencies 
other than Swiss currency, by the Director General after consultation with 
that Authority and in the currency or currencies prescribed by that 
Authority ("prescribed currency"). The amount in each prescribed 
currency shall be the equivalent, in round figures, of the amount of the 
handling fee in Swiss currency set out in the Schedule of Fees. The 
anlounts in the prescribed currencies shall be published in the Gazette. 
(cl) Where the anlount of the handling fee set out in the Schedule of Fees 
is changed, the corresponding anlounts in the prescribed currencies shall 
be applied from the same date as the amount set out in the amended 
Schedule of Fees. 
(e) Where the exchange rate between Swiss currency and any prescribed 
currency becomes different from the exchange rate last applied, the 
Director General shall establish the new amount in the prescribed currency 
according to directives given by the Assembly. The newly established 
amount shall become applicable two months after its publication in the 
Gazette, provided that the interested International Preliminary Examining IP/N/1/NZL/P/1 
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Authority and the Director General may agree on a date falling during the 
said two-month period in which case the said amount shall become 
applicable for that Authority from that date. 
57.3 Time and Mode of Payment 
(a) The handling fee shall be due at the time the demand is submitted. 
(b) [Deleted} 
(c) The handling fee shall be payable in the currency or currencies 
prescribed by the International Preliminary Examining Authority to which 
the demand is submitted, it being understood that, when transferred by 
that Authority to the International Bureau, it shall be freely convertible 
into Swiss currency. 
57.4 Failure to Pay 
(a) Where the handling fee is not paid as required, the International 
Preliminary Examining Authority shall invite the applicant to pay the fee 
within one month from the date of the invitation. 
(b) If the applicant complies with the invitation within the one-month 
time limit, the handling fee shall be considered as if it had been paid on the 
due date_ 
(c) If the applicant does not comply with the invitation within the 
prescribed time limit, the demand shall be considered as if it had not been 
submitted. 
57.5 [Deleted] 
57.6 Refund 
The International Preliminary Examining Authority shall refund the 
handling fee to the applicant: 
(i) if the demand is withdrawn before the demalld has been sent 
by that Authority to the International Bureau, or 
(ii) if the demand is considered, under Rule 54.4(a), not to have 
been submitted. 
Rule 58 
The Prelitninary Exatnination Fee 
58.1 Right to Ask for a Fee 
(a) Each Intetnational Preliminary Examining Authority may require 
that the applicant pay a fee ("preliminary examination fee") for its own 
benefit for carrying out the international preliminary examination and for 
perfonning all other tasks entrusted to Intetnational Preliminary 
Examining Authorities under the Treaty and these Regulations. 
(b) The amount and the due date of the preliminary examination fee, if 
any, shall be fixed by the International Pre1iminary Examining Authority, 
provided that the said due date shall not be earlier than the due date of the 
handling fee. 
(c) The preliminary examination fee shall be payable directly to the 
Intetnational Preliminary Examining Authority. Wbere that Authority is a 
national Office, it shall be payable in the currency prescribed by that 
Office, and where the Authority is an intergovernmental organization, it 1992, No. 81 Patents Amendment 
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shall be payable in the currency of the State in which the 
intergovernmental organization is located or in any other currency which 
is freely convertible into the currency of the said State. 
58.2 Failure to Pay 
(a) Where the prelim.inary examination fee fixed by the International 
Preliminary Examining Authority under Rule 58.1(b) is not paid as 
required under that Rule, the International Prelim.inary Examining 
Authority shall invite the applicant to pay the fee or the missing part 
thereof within one month from the date of the invitation. 
(b) If the applicant complies with the invitation within the prescribed 
time limit, the prelim.inary examination fee will be considered as if it had 
been paid on the due date. 
(c) If the applicant does not comply with the invitation within the 
prescribed time limit, the demand shall be considered as if it had not been 
submitted. 
58.3 Refund 
The International Prelim.inary Examining Authorities shall inform the 
International Bureau of the extent, if any, to which, and the conditions, if 
any, under which, they will refund any 3.Il1ount paid as a prelim.inary 
examination fee where the demand is considered as if it had not been 
submitted, and the International Bureau shall promptly publish such 
information. 
Rule 59 
The Cotnpetent International Prelitninary Exatnining Authority 
59.1 Demands under Article 31 (2) (a) 
For demands made under Article 31(2)(a), each receiving Office of or 
acting for a Contracting State bound by the provisions of Chapter 11 shall, 
in accordance with the terms of the applicable agreement referred to in 
Article 32(2) and (3), inform the International Bureau which International 
Prelim.inary Examining Authority is or which International Prelim.inary 
Examining Authorities are competent for the international prelim.inary 
examination of international applications filed with it. The International 
Bureau shall promptly publish such information. Where several 
International Prelim.inary Examining Authorities are competent, the 
provisions of Rule 35.2 shall apply mutatis mutandis. 
59.2 Demands under Article 31 (2) (b) 
As to demands made under Article 31 (2)(b), the Assembly, in specifying 
the International Prelim.inary Examining Authority competent for 
international applications filed with a national Office which is an 
International Preliminary Examining Authority, shall give preference to 
that Authority; if the national Office is not an International Prelim.inary 
Examining Authority, the Assembly shall give preference to the 
International Prelim.inary Examining Authority recommended by that 
Office. IP}N/I/NZL/P/l 
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Rule 60 
Certain Defects in the DelDand or Elections 
60.1 Defects in the Demand 
(a) If the demand does not comply with the requirements specified in 
Rules 53.1, 53.2(a)(i) to (iv), 53.2(b), 53.3 to 53.8 and 55, the International 
Preliminary Examining Authority shall invite the applicant to correct the 
defects within a time limit which shall be reasonable under the 
circumstances. That time limit shall not be less than one month from the 
date of the invitation. It may be extended by the International Preliminary 
Examining Authority at any time before a decision is taken. 
(b) If the applicant complies with the invitation within the time limit 
under paragraph (a), the aemand shall be considered as if it had been 
received on the actual filing date,!rovided that the demand as submitted 
contained at least one election an permitted the international application 
to be identified; otherwise, the demand shall be considered as if it had 
been received on the date on which the International Preliminary 
Examining Authority receives the correction. 
(c) Subject to paragraph (d), if the applicant does not comply with the 
invitation within the time limit under paragraph (a), the demand shall be 
considered as if it had not been submitted. 
(d) Where, after the expiration of the time limit under paragraph (a), a 
signature required under Rule 53.8 or a prescribed indication is lacking in 
respect of an applicant for a certain elected State, the election of that State 
sha:n be considered as if it had not been made. . 
(e) If the defect is noticed by the International Bureau, it shall bring the 
detect to the attention of the International Preliminary Examining 
Authority, which shall then proceed as provided in paragraphs (a) to (d). 
(f) If the demand does not contain a statement concerning amendments, 
the International Preliminary Examining Authority shall proceed as 
provided for in Rules 66.1 and 69.1(a) or (b). 
(g) Where the statement concerning amendments contains an indication 
that amendments under Article 34 are submitted with the demand (Rule 
53.9(c)) but no such aIIlendments are, in fact, submitted, the International 
Preliminary Examining Authority shall invite the applicant to submit the 
aIIlendments within a time limit fixed in the invitation and shall proceed as 
provided for in Rule 69. 1 (e). 
60.2 Defects in Later Elections 
(a) If the notice effecting a later election does not comply with the 
requirements of Rule 56, the International Bureau shall invite the applicant 
to correct the defects within a time limit which shall be reasonabfe under 
the circumstances. That time limit shall not be less than one month from 
the date of the invitation. It may be extended by the International Bureau 
at any time before a decision is taken. 
(b) If the applicant complies with the invitation within the time limit 
under paragraph (a), the notice shall be considered as if it had been 
received on the actual filing date, provided that the notice as submitted 
contained at least one election and permitted the international application 
to be identified; otherwise, the notice shall be considered as if it had been 1992, No. 81 Patents Amendment 
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received on the date on which the International Bureau receives the 
correction. 
(c) Subject to paragraph (d), if the applicant does not comply with the 
invitation within the time liffiit under paragraph ( a), the notice shall be 
considered as if it had not been submitted. 
(d) Where, in respect of an applicant for a certain elected State, the 
signature required under Rule 56.1(b) and (c) or the name or address is 
lacking after the expiration of the time limit under paragraph ( a), the later 
election of that State shall be considered as if it had not been made. 
Rule 61 
Notification of the DelDand and Elections 
61.1 Notification to the International Bureau and the Applicant 
(a) The International Preliminary Examining Authority shall indicate on 
the demand the date of receipt or, where applicable, the date referred to in 
Rule 60.1 (b). The International Preliminary Examining Authority shall 
promptly send the demand to the International Bureau, and shall prepare 
and keep a copy in its file. 
(b) The International Preliminary Examining Authority shall promptly 
inform the applicant in writing of the date of receipt of the demand. 
Where the demand has been considered under Rules 54.4(a), 57.4(c), 
58.2(c), or 60.1(c) as if it had not been submitted or where an election has 
been considered under Rule 60.1(d) as if it had not been made, the 
International Preliminary Examining Authority shall notify the applicant 
and the International Bureau accordingly. ' 
(c) The International Bureau shall promptly notify the applicant of the 
receipt, and the date of receipt, of any notice effecting a rater election. 
That date shall be the actual date of receipt by the International Bureau or, 
where applicable, the date referred to in Rule 56.1(£) or 60.2(b). Where the 
notice has been considered under Rule 60.2(c) as if it had not been 
submitted or where a later election has been considered under Rule 60.2(d) 
as if it had not been made, the International Bureau shall notify the 
applicant accordingly. 
61.2 Notification to the Elected Offices 
(a) The notification provided for in Article 31(7) shall be effected by the 
International Bureau. 
(b) The notification shall indicate the number and filing date of the 
international application, the name of the applicant, the filing date of the 
application whose priority is claimed (where priority is claimed), the date 
of receipt by the International Preliminary Examining Authority of the 
demand, and-in the case of a later election-the date of receipt of the 
notice effecting the later election. The latter date shall be the actual date of 
receipt by the International Bureau or, where applicable, the date referred 
to in Rule 56.1(£) or 60.2(b). 
(c) The notification shall be sent to the elected Office together with the 
communication provided for in Article 20. Elections effected after such 
communication shall be notified promptly after they have been made. 
(d) Where the applicant makes an express request to an elected Office 
under Article 40(2) before the communication provided for in Article 20 IP/N/l INZL/PI 1 
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has taken place, the InteITlational Bureau shall, upon request of the 
applicant or the elected Office, promptly effect that communication to that 
Office. 
61.3 Information for the Applicant 
The InteITlational Bureau shall inform the applicant in writing of the 
notification referred to in Rule 61.2 and of the elected Offices notified 
under Article 31 (7). 
61.4 Publication in the Gaz.ette 
Where a demand has been filed prior to the expiration of the 19th 
month from the priority date, the InteITlational Bureau shall publish a 
notice of that fact in the Gazette promptly after the filing of the demand, 
but not before the inteITlational publication of the inteITlational 
application. The notice shall indicate all designated States bound by 
Chapter 11 which have not been elected. 
Rule 62 
Copy of Atnendtnents Under Article 19 for the International 
Preliminary Exatnining Authority 
62.1 Amendments Made before the Demand is Filed 
Upon receipt of a demand from the InteITlational Preliminary 
Examining Authority, the InteITlational Bureau shall promptly transmit a 
copy of any amendments under Article 19 to that Authority, unles~ that 
Authority has indicated that it has already received such a copy. 
62.2 Amendments Made after the Demand is Filed 
(a) If, at the time of filing any amendments under Article 19, a demand 
has already been submitted, the applicant shall preferably, at the same 
time as he files the amendments witn the InteITlational Bureau, also file a 
copy of such amendments with the InteITlational Preliminary· Examining 
Authority. In any case, the InteITlational Bureau shall promptly transmit a 
copy of such amendments to that Authority. 
(b) [Deleted] 
Rule 68 
MinilD.ulD. RequirelD.ents for International PrelilD.inary EXa.JJlining 
Authorities 
63.1 Definition of Minimum ReqUirements 
The minimum requirements referred to in Article 32(3) shall be the 
following: 
(i) the national Office or intergovenunental organization must have 
at least 100 full-time employees with sufficient technical qualifications to 
carry out examinations; 
(ii) that Office or organization must have at its ready disposal at least 
the minimum documentation referred to in Rule 34, properly arranged for 
examination purposes; 
(iii) that Office or organization must have a staff which is capable of 
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facilities to understand at least those languages in which the rninim.wn 
documentation referred to in Rule 34 is written or is translated. 
Rule 64 
Prior Art for International Prelim.inary Exatnination 
64.1 Prior Art 
(a) For the purposes of Article 33(2) and (3), everything made available to 
the public anywhere in the world by means of written disclosure (including 
drawings and other illustrations) shall be considered prior art provided 
that such making available occurred prior to the relevant date. 
(b) For the purposes of paragraph (a), the relevant date will be: 
(i) subject to item (ii), the international filing date of the international 
application under international preliminary examination; 
(ii) where the international application under international 
preliminary examination validly claims the priority of an earlier 
application, the filing date of such earlier application. 
64.2 Non-Written Disclosures 
In cases where the making available to the public occurred by means of 
an oral disclosure, use, exhibition or other non-written means ("non­
written disclosure") before the relevant date as defined in Rule 64.1 (b) and 
the date of such non-written disclosure is indicated in a written disclosure 
which has been made available to the public on a date which is the same 
as, or later than, the relevant date, the non-written disclosure shall not be 
considered part of the prior art for the purposes of Article 33 (2) and (3). 
Nevertheless, the international preliminary examination report shall call 
attention to such non-written disclosure in the manner provided for in 
Rule 70.9. 
64.3 Certain Published Documents 
In cases where any application or any patent which would constitute 
prior art for the purposes of Article 33 (2) and (3) had it been published 
prior to the relevant date referred to in Rule 64. 1 was published on a date 
which is the same as, or later than, the relevant date out was filed earlier 
than the relevant date or claimed the priority of an earlier application 
which had been filed prior to the relevant date, such published application 
or patent shall not be considered part of the prior art for the purposes of 
Article 33 (2) and (3). Nevertheless, the international preliminary 
examination report shall call attention to such application or patent in the 
manner provided for in Rule 70.10. 
Rule 65 
Inventive Step or Non-Obviousness 
65.1 Approach to Prior Art 
For. the purposes of Article 33(3), the international preliminary 
examination shall take into consideration the relation of any particular 
claim to the prior art as a whole. It shall take into consideration the claim's 
relation not only to individual documents or parts thereof taken separately 
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documents, where such cOIIlbinations are obvious to a person skilled in the 
art. 
65.2 Relevant Date 
For the purposes of Article 33(3), the relevant date for the consideration 
of inventive step (non-obviousness) is the date prescribed in Rule 64.1. 
Rule 66 
Procedure before the International Prelitninary Exatnining 
Authority 
66.1 Basis of the International Preliminary Examination 
(a) Subject to paragraphs (b) to (d), the international preliminary 
examination shall be based on the international application as filed. 
(b) The applicant may submit amendments un<;ler Article 34 at the time 
of filing the demand or, subject to Rule 66.4blS until the international 
preliminary examination report is established. 
(c) Any amendments under Article 19 made before the demand was filed 
shciIl be taken into account for the purposes of the international 
preliminary examination unless superseded, or considered as reversed, by 
an amendment under Article 34. 
(d) Any amendments under Article 19 made after the demand was filed 
and any amendments under Article 34 submitted to th~ International 
Preliminary Examining Authority shall, subject to Rule 66.4blS be taken into 
account for the purposes of the international preliminary examination. 
(e) Claims relating to inventions in respect of which no international 
search report has been established need not be the subject of international 
preliminary examination. 
66.2 First Written Opinion of the International Preliminary Examining 
Authority 
(a) If the International Preliminary Examining Authority 
(i) considers that any of the situations referred to in Article 34 (4) 
exists, 
(ii) considers that the international preliminary examination report 
should be negative in respect of any of the claims because the 
invention claimed therein does not appear to be novel, does not 
appear to involve an inventive step (does not appear to be non­
obvious), or does not appear to be industrially applicable, 
(iii) notices that there is some defect in the form or contents of the 
international application under the Treaty or these Regulations, 
(iv) considers that any amendment goes beyond the disclosure in 
the international application as filed, 
(v) wishes to accoIIlpany the international preliminary examination 
report by observations on the clanty of the claims, the 
description, and the drawings, or the question whether the 
claims are fully supported by the description, 
(vi) considers that a claim relates to an invention in respect of which 
no international search report has been established and has 
decided not to carry out the international preliminary 
examination in respect of that claim, or 1992, No. 81 Patents Amendment 
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(vii) considers that a nucleotide and/or amino acid seguence listing is 
not available to it in such a form that a meaningful international 
preliminary examination can be carried out, 
the said Authority shall notify the applicant accordingly in writing. Where 
the national law of the national Office acting as International Preliminary 
Examining Authority does not allow multiple dependent claims to be 
drafted in a manner different from that provided for in the second and 
third sentences of Rule 6.4 (a), the International Preliminary Examining 
Authority may, in case of failure to use that manner of claiming, apply 
Article 34 (4) (b). In such case, it shall notify the applicant accordingfy in 
writing. 
(b) The notification shall fully state the reasons for the opinion of the 
International Preliminary Examining Authority. 
(c) The notification shall invite the applicant to submit a written reply 
together, where appropriate, with amendments. 
(d) The notification shall fix a time limit for the reply. The time limit 
shall be reasonable under the circumstances. It shall normally be two 
months after the date of notification. In no case shall it be shorter than one 
month after the said date. It shall be at least two months after the said date 
where the international search report is transmitted at the same time as 
the notification. It shall not be more than three months after the said date 
but may be extended if the applicant so requests before its expiration. 
66.3 Formal Response to the International Preliminary Examining AuthOrity 
(a) The applicant may respond to the invitation referred to in Rule 
66.2(c) of die International Preliminary Examining Authority by making 
amendments or -if he disagrees with the opinion of that Authority -by 
submitting arguments, as the case may be, or do both. 
(b) Any response shall be submitted directly to the International 
Preliminary Examining Authority. 
66.4 Additional Opportunity for Submitting Amendments or Arguments 
(a) If the International Preliminary Examining Authority wishes to issue 
one or more additional written opinions, it may do so, and Rules 66.2 and 
66.3 shall apply. 
(b) On the request of the applicant, the International Preliminary 
Examining Authority may give him one or more additional opportunities 
to submit amendments or arguments. 
66.4bis Consideration of Amendments and Arguments 
Amendments or arguments need not be taken into account by the 
International Preliminary Examining Authority for the purposes of a 
written opinion or the international preliminary examination report if they 
are received after that Authority has begun to draw up that opinion or 
report. 
66.5 Amendment 
Any change, other than the rectification of obvious errors, in the claims, 
the description, or the drawings, including cancellation of claims, omission IP/NI 1 INZL/PI 1 
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of passages in the description, or omission of certain drawings, shall be 
considered an amendment. 
66.6 Informal Communications with the Applicant 
The International Prefuninary Examining Authority may, at any time, 
communicate informally, over the telephone, in writing, or through 
personal interviews, with the applicant. The said Authority shall, at its 
discretion, decide whether it wishes to grant more than one personal 
interview if so requested by the applicant, or whether it wishes to reply to 
any informal written communication from the applicant. 
66.7 Priority Document 
(a) If the International Preliminary Examining Authority needs a copy of 
the application whose priority is claimed in the international application, 
the International Bureau shall, on request, promptly furnish such copy. If 
that copy is not furnished to the International Prefuninary Examining 
Authority because the applicant failed to comply with the requirements of 
Rule 1 7. 1, the international prefuninary examination report may be 
established as if the priority had not been claimed. 
(b) If the application whose priority is claimed in the international 
application is in a language other than the language or one of the 
languages of the International Prefuninary Examining Authority, that 
Authority may invite the applicant to furnish a translation in the said 
language or one of the said languages within two months from the date of 
the invitation. If the translation is not furnished within that time limit, the 
international prefuninary examination report may be established as if the 
priority had not been claimed. 
66.8 Form of Amendments 
(a) The applicant shall be required to submit a replacement sheet for 
every sheet of the international application which, on account of an 
amendment, differs from the sheet previously filed. The letter 
accompanying the replacement sheets shall draw attention to the 
differences between the replaced sheets and the replacement sheets. 
Where the amendment consists in the deletion of passages or in minor 
alterations or additions, it may be made on a copy of the relevant sheet of 
the international application, provided that the clarity and direct 
reproducibility of that sheet are not adversely affected. To the extent that 
any amendment results in the cancellation of an entire sheet, that 
amendment shall be communicated in a letter. 
(b) [Deleted] 
66.9 Language of Amendments 
If the international application has been filed in a language other than 
the language in which it is published, any amendment, as well as any letter 
referred to in Rule 66.8(a), shall be submitted in the language of 
publication. 1992, No. 81 Patents Amendment 
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Rule 67 
Subject Matter under Article 84(4)(a)(i) 
67. 1 Definition 123 
No International Preliminary Examining Authority shall be required to 
carry out an international preliminary exanllnation on an international 
application if, and to the extent to which, its subject matter is any of the 
fonowing: 
(i) scientific and mathematical theories, 
(ii) plant or animal varieties or essentially biological processes for the 
production of plants and animals, other than microbiological processes 
and the products of such processes, 
(iii) schemes, rules, or methods of doing business, perfonning purely 
mental acts or playing games, 
(iv) methods for treatment of the human or animal body by surgery 
or therapy, as well as diagnostic methods, 
(v) mere presentations of information, 
(vi) computer programs to the extent that the International 
Preliminary Examining Authority is not equipped to carry out an 
international prellininary exanllnation concerning such programs. 
Rule 68 
Lack of Unity of Invention (International Prelitninary. 
Exatnination) 
68.1 No Invitation to Restrict or Pay 
Where the International Preliminary Examining Authority finds that the 
requirement of unity of invention is not complied with and chooses not to 
invite the applicant to restrict the claims or to pay additional fees, it shall 
proceed with the international preliminary exanllnation, subject to Article 
34 (4) (b) and Rule 66.1 (e) in respect of the entire international application, 
but shall indicate, in any written opinion and in the international 
preliminary exanllnation report, that it considers that the requirement of 
unity of invention is not fulfilled and it shall specify the reasons therefore 
68.2 Invitation to Restrict or Pay 
Where the International Preliminary Examining Authority finds that the 
requirement of unity of invention is not compiled with and chooses to 
invite the applicant, at his option, to restrict the claims or to pay additional 
fees, it shall specify at least one possibility of restriction which, in the 
opinion of the International Preliminary Examining Authority, would be in 
compliance with the applicable requirement, and shall specify the amount 
of the additional fees and the reasons for which the international 
application is not considered as complying with the requirement of unity 
of invention. It shall, at the same time, fix a time limit, with regard to the 
circumstances of the case, for complying with the invitation; such time 
limit shall not be shorter than one month, and it shall not be longer than 
two months, from the date of the invitation. IP 1Nl lINZL/P 11 
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68.3 Additional Fees 
(a) The amount of the additional fee due for international preliminary 
examination under Article 34(3)(a) shall be detennined by the competent 
International Preliminary Examining Authority. 
(b) The additional fee due for international preliminary examination 
under Article 34(3)(a) shall be payable direct to the International 
Preliminary Examining Authority. 
(c) Any applicant may pay the additional fee under protest, that is, 
accompanied by a reasoned statement to the effect that the international 
application complies with the requirement of unity of invention or that the 
amount of the required additional fee is excessive. Such protest shall be 
examined by a three-member board or other special instance of the 
International Preliminary Examining Authority, or any competent higher 
authority, which, to the extent that it finds the protest justified, shall order 
the total or partial reimbursement to the applicant of the additional fee. 
On the request of the applicant, the text of both the protest and the 
decision thereon shall be notified to the elected Offices as an annex to the 
international preliminary examination report. 
(d) The three-member board, special instance or competent higher 
authority, referred to in paragraph (c), shall not comprise any person who 
made the decision which is the subject of the protest. 
(e) Where the applicant has, under paragraph (c), paid an additional fee 
under protest, the International Preliminary Examining Authority may, 
after a prior review of the justification for the invitation to pay an 
additional fee, require that the applicant pay a fee for the examination of 
the protest ("protest fee"). The protest fee shall be paid within one month 
from the date of the notification to the applicant of the result of the 
review. If the protest fee is not so paid, the protest shall be considered 
withdrawn. The protest fee shall be refimded to the applicant where the 
three-member board, special instance or higher authority referred to in 
paragraph (c) finds that the protest was entirely justified. 
68.4 Procedure in the Case of InsuffiCient Restriction of the Claims 
If the applicant restricts the claims but not sufficiently to comply with 
the requirement of unity of invention, the International Preliminary 
Examining Authority shall proceed as provided in Article 34(3)(c). 
68.5 Main Invention 
In case of doubt which invention is the main invention for the purposes 
of Article 34(3)(c), the invention first mentioned in the claims shall be 
considered the main invention. 
Rule 69 
Start of and TiDle LiDlit for International PreliDlinary 
EXaJIlination 
69.1 Start of International Preliminary Examination 
(a) Subject to paragraphs (b) to (e), the International Preliminary 
Examining Authority shall start the international preliminary examination 
when it is in possession both of the demand and of either the international 
search report or a notice of the declaration by the International Searching 1992, No. 81 Patents Amendment 
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Authority under Article 17 (2) (a) that no inteITlational search report will be 
established. 
(b) If the competent InteITlational Preliminary Examining Authority is 
part of the same national Office or intergovernmental organisation as the 
competent International Searching Authority, the inteITlational 
preliminary examination may, if the International Preliminary Examining 
Authority so wishes and subject to paragraph (d), start at the SaIlle time as 
the international search. 
(c) Where the statement concerning amendments contains an indication 
that amendments under Article 19 are to be taken into account (Rule 
53.9 (a) (i)), the InteITlational Preliminary Examining Authority shall not 
start the international preliminary examination before it has received a 
copy of the amendments concerned. 
(d) Where the statement concerning amendments contains an indication 
that the start of the international preliminary examination is to be 
postponed (Rule 53.9 (b)), the International Preliminary Examining 
Authority shall not start the international preliminary examination before 
(i) it has received a copy of any amendments made under Article 
19, 
(ii) it has received a notice from the applicant that he does not wish 
to make amendments under Article 19, or 
(iii) the expiration of 20 months from the priority date, 
whichever occurs first. 
(e) Where the statement concerning amendments contains an indication 
that amendments under Article 34 are submitted with the demand (Rule 
53.9 (c)) but no such aIllendments are, in fact, submitted, the InteITlational 
Preliminary Examining Authority shall not start the inteITlational 
preliminary examination before it has received the amendments or before 
the time limit fixed in the invitation referred to in Rule 60. 1 (g) has 
expired, whichever occurs first. 
69.2 Time Limit for International Preliminary Examination 
The time limit for establishing the international preliminary 
examination report shall be: 
(i) 28 months from the priority date if the demand was filed prior 
to the expiration of 19 months from the priority date; 
(ii) nine months from the start of the international preliminary 
examination if the demand was filed after the expiration of 19 months 
from the priority date. 
Rule 70 
The International PrelilD.inary Exatnination Report 
70.1 Definition 
For the purposes of this Rule, "report" shall mean international 
preliminary examination report. 
70.2 Basis if the Report 
( a) If the claims have been amended, the report shall issue on the claims 
as amended. IP/NI1 INZL/PI1 
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(b) If, pursuant to Rule 66.7(a) or (b), the report is established as if the 
priority had not been claimed, the report shall so indicate. 
(c) If the International Preliminary Examining Authority considers that 
any amendment goes beyond the disclosure in the international 
application as filed, the report shall be established as if such amendment 
had not been made, and the report shall so indicate. It shall also indicate 
the reasons why it considers that the amendment goes beyond the said 
disclosure. 
(d) Where claims relate to inventions in respect of which no 
international search report has been established and have therefore not 
been the subject of international preliminary examination, the 
international preliminary examination report shall so indicate. 
7 o. 3 Identifications 
The report shall identifY the International Preliminary Examining 
Authority which established it by indicating the name of such Authority, 
and the international application by indicating the international 
application number, the name of the applicant, and the international filing 
date. 
70.4 Dates 
The report shall indicate: 
(i) the date on which the demand was submitted, and 
(ii) the date of the report; that date shall be the date on which the 
report is completed. 
70.5 Classification 
(a) The report shall repeat the classification given under Rule 43.3 if the 
International Preliminary Examining Authority agrees with such 
classification. 
(b) Otherwise, the International Preliminary Examining Authority shall 
indicate in the report the classification, at least according to the 
International Patent Classification, which it considers correct. 
70.6 Statement under Article 35(2) 
(a) The statement referred to in Article 35(2) shall consist of the words 
"YES" or "NO," or their equivalent in the language of the report, or some 
appropriate sign provided for in the Administrative Instructions, and shall 
be accompanied by the citations, explanations and observations, if any, 
referred to in the last sentence of Article 35(2). 
(b) If any of the three criteria referred to in Article 35(2) (that is, novelty, 
inventive step (non-obviousness), industrial applicability) is not satisfied, 
the statement shall be negative. If, in such a case, any of the criteria, taken 
separately, is satisfied, the report shall specify the criterion or criteria so 
satisfied. 
70.7 Citations under Article 35(2) 
(a) The report shall cite the documents considered to be relevant for 
supporting the statements made under Article 35(2). 
(b) The provisions of Rule 43.5(b) and (e) shall apply also to the report. 1992, No. 81 Patents Amendment IP/NI 1 INZL/PI 1 
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7 o. 8 Explanations under Article 35(2) 127 
The Administrative Instructions shall contain guidelines for cases in 
which the explanations referred to in Article 35(2) should or should not be 
given and the form of such explanations. Such guidelines shall be based on 
the following principles: 
(i) explanations shall be given whenever the statement in relation to 
any claiIn is negative; 
(ii) explanations shall be given whenever the statement is positive 
unless the reason for citing any document is easy to imagine on tne basis 
of consultation of the cited document; 
(iii) generally, explanations shall be given if the case provided for in 
the last sentence of Rule 70.6(b) obtains. 
7 o. 9 Non-Written Disclosures 
Any non-written disclosure referred to in the report by virtue of Rule 
64.2 shall be mentioned by indicating its kind, tne date on which the 
written disclosure referring to the non-written disclosure was made 
available to the public, and the date on which the non-written disclosure 
occurred in public. 
7 O. 10 Certain Published Documents 
Any published application or any patent referred to in the report by 
virtue of Rule 64.3 shall be mentioned as such and shall be accompanied 
by an indication of its date of publication, of its filing date, and its ,claimed 
priority date (if any). In respect of the priority date of any such document, 
the report may indicate that, in the opinion of the International 
Preliminary Examining Authority, such date has not been validly claiIned. 
70.11 Mention of Amendments 
If, before the International Preliminary Examining Authority, 
amendments have been made, this fact shall be indicated in the report. 
Where any amendment has resulted in the cancellation of an entire sheet, 
this fact shall also be specified in the report. 
70.12 Mention of Certain Defects and Other Matters 
If the International Preliminary Examining Authority considers that, at 
the time it prepares the report: 
(i) the international application contains any of the defects referred 
to in Rule 66.2(a)(iii), it shall include this opinion and the reasons therefor 
in the report; 
(ii) the international application calls for any of the observations 
referred to in Rule 66.2(a)(v), It may include this opinion in the report and, 
if it does, it shall also indicate in the report the reasons for such opinion; 
(iii) any of the situations referred to in Article 34 (4) exists, it shall 
state this opinion and the reasons therefore in the report; 
(iv) a nucleotide and/or amino acid sequence listing is not available to 
it in such a form that a meaningful international preliminary examination 
can be carried out, it shall so state in the report. IP/N/lINZL/P/l 
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70.13 Remarks Concerning Unity of Invention 
If the applicant faid additional fees for the international preliminary 
examination, or i the international application or the international 
preliminary examination was restricted under Article 34 (3), the report 
shall so indicate. Furthermore, where the international preliminary 
examination was carried out on restricted claims (Article 34 (3) (a)), or on 
the main invention only (Article 34 (3) (c)), the report shall indicate what 
parts of the international application were and what parts were not the 
subject of intetnational preliminary examination. The report shall contain 
the indications provided for in Rule 68.1, where the Intetnational 
Preliminary Examining Authority chose not to invite the applicant to 
restrict the claims or to pay additional fees. 
70.14 Authorised Officer 
The report shall indicate the name of the officer of the International 
Preliminary Examining Authority responsible for that report. 
70.15 Form 
The physical requirements as to the form of the report shall be 
prescribed by the Administrative Instructions. 
70.16 Annexes of the Report 
Each replacement sheet under Rule 66.8 (a) and each replacement sheet 
containing amendments under Article 1 9 shall, unless superseded by later 
replacement sheets, be annexed to the report. Amendments under Article 
19 which have been considered as reversed by an amendment under 
Article 34 and letters under Rule 66.8 (a) shall not be annexed. 
70.17 Languages of the Report and the Annexes 
(a) The report and any annex shall be in the language m which the 
international application to which they relate is published. 
(b) [Deleted} 
Rule 71 
Transtnittal of the International Prelitninary Exatnination Report 
71.1 Recipients 
The International Preliminary Examining Authority shall, on the same 
day, transmit one copy of the internationalJreliminary examination 
report and its annexes, if any, to the Internation Bureau, and one copy to 
the applicant. 
7 1.2 Copies of Cited Documents 
(a) The request under Article 36(4) may be presented any time during 
seven years from the international filing aate of the international 
application to which the report relates. 
(b) The International Preliminary Examining Authority may require that 
the party (applicant or elected Office) presenting the request pay to it the 
cost of preparing and mailing the copies. The level of the cost of preparing 
copies shall be provided for in the agreements referred to in Article 32(2) 1992, No. 81 Patents Amendment 
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between the Intetnational Preliminary Examining Authorities and the 
Intetnational Bureau. 
(c) [Deleted} 
(d) Any Intetnational Preliminary Examining Authority may perform the 
obligations referred to in paragraphs (a) and (b) through another agency 
responsible to it. 
Rule 72 
Translation of the International Preliminary Examination Report 
72.1 Languages 
(a) Any elected State may require that the international prelirrllnary 
examination report, established in any language other than the official 
language, or one of the official languages, of its national Office, be 
translated into English. 
(b) Any such requirement shall be notified to the International Bureau, 
which shall promptly publish it in the Gazette. 
72.2 Copy of Translation for the Applicant 
The International Bureau shall transmit a copy of the translation 
referred to in Rule 72.1 ( a) of the intetnational prelirrllnary examination 
report to the applicant at the same time as it communicates such 
translation to the mterested elected Office or Offices. 
72.3 Observations on the Translation 
The applicant may make written observations on what, in his opinion, 
are errors of translation in the translation of the international prelirrllnary 
examination report and shall send a copy of any such observations to each 
of the interested elected Offices and a copy to the International Bureau. 
Rule 78 
Com.m.unication of the International Prelim.inary 
Exatnination Report 
73.1 Preparation of Copies 
The International Bureau shall prepare the copies of the documents to 
be communicated under Article 36(3)(a). 
73.2 Time Limit for Communication 
The communication provided for in Article 36 (3) ( a) shall be effected as 
promptly as possible but not earlier than the communication under Article 
20. 
Rule 74 
Translations of Annexes of the International Prelim.inary 
Exam.ination Report and Transm.ittal Thereof 
74.1 Contents of Translation and Time Limit for Transmittal Thereof 
Where the furnishing of a translation of the international application is 
required by the elected Office under Article 3 9( 1), the applicant shall, 
witbin the time limit applicable under Article 3 9( 1), transmit a translation 
of any replacement sheet referred to in Rule 70.16 which is annexed to the IP/NII/NZL/PI 1 
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international preliminary examination report. The same time limit shall 
apply where the furnishing of a translation of the international application 
to the elected Office must, because of a declaration made under Article 
64(2)(a)(i), be effected within the time limit applicable under Article 22. 
Rule 75 
[Deleted} 
Rule 76 
Copy, Translation and Fee under Article 89(1); Translation 
of Priority Docutnent 
76.1, 76.2 and 76.3 [Deleted} 
76.4 Time Limit for Translation if Priority Document 
The applicant shall not be required to furnish to any elected Office a 
certified translation of the priority document before the expiration of the 
applicable time limit under Article 39. 
76.5 Application if Rules 22.1(g)~ 49 and 51bis 
Rules 22.1(g), 49 and 51bis shall apply, provided that: 
(i) any reference in the said Rules to the designated Office or to the 
designated State shall be construed as a reference to the elected Office or 
to the elected State, respectively; 
(ii) any reference in the said Rules to Article 22 or Article 24 (2) shall 
be construed as a reference to Article 39 (1) or Article 39 (3), resp~ctively; 
(ill) the words "international applications filed" in Rule 49.1(c) shall be 
replaced by the words "a demand submitted"; 
(iv) for the purposes of Article 39 (1), where an international 
preliminary examination report has been established, a translation of any 
amendment under Article 1 9 shall only be required if that an1.endment is 
annexed to that report. 
76.6 Transitional Provision 
If, onJuly 12, 1991, Rule 76.5 (iv) is not compatible with the national law 
applied by the elected Office in respect of claims amended under Article 
19, Rule 76.5 (iv) shall not apply in that respect to that elected Office for as 
long as it continues not to be compatible with that law, provided that the 
said Office informs the International Bureau accordingly by December 31, 
1991. The information received shall be promptly published by the 
International Bureau in the Gazette. 
Rule 77 
Faculty under Article 89( 1 )(b) 
7 7. I Exercise of Faculty 
(a) Any Contracting State allowing a time limit expiring later than the 
time limit provided for in Article 3 9( 1 )( a) shall notify the International 
Bureau of the time limit so fixed. 
(b) Any notification received by the International Bureau under 
paragraph (a) shall be promptly published by the International Bureau in 
the Gazette. 1992, No. 81 Patents Amendment 
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REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 131 
(c) Notifications concerning the shortening of the previously fixed time 
lirrlit shall be effective in relation to demands submitted after the 
expiration of three months computed from the date on which the 
notification was published by the International Bureau. 
(d) Notifications concerning the lengthening of the previously fixed time 
llinit shall become effective upon publication by the International Bureau 
in t.he Gazette in respect of demands pending at the time or submitted 
after the date of such publication, or, if the Contracting State effecting the 
notification fixes some later date, as from the latter date. 
Rule 78 
Atnendtnent of the Claitns, the Description, and the Drawings, 
before Elected Offices 
78.1 Time Limit Where Election Is Effected prior to Expiration of 19 Months 
from Priority Date 
(a) Where the election of any Contracting State is effected prior to the 
expiration of the 19th month from the priority date, the applicant shall, if 
he so wishes, exercise the right under Article 41 to amend the claims, the 
description and the drawings, before the elected Office concerned within 
one month from the fulfilment of the requirements under Article 39 (1) ( a), 
provided that, if the transmittal of the international preliminary 
examination report under Article 36 (1) has not taken place by the 
expiration of the time limit applicable under Article 39, he shall exercise 
the said right not later than four months after such expiration date. In 
either case, the applicant may exercise the said right at any other t~e if so 
permitted by the national law of the said State. 
(b) In any elected State in which the national law provides that 
examination starts only on special request, the national law may provide 
that the time limit within or the time at which the applicant may exercise 
the right under Article 41 shall, where the election of any Contracting State 
is effected prior to the expiration of the 19th month from the priority date, 
be the same as that provided by the national law for the filing of 
amendments in the case of the examination, on special request, of national 
applications, provided that such time limit shall not expire prior to, or such 
time shall not come before, the expiration of the time 1irnit applicable 
under paragraph (a). 
78.2 Time Limit Where Election Is Effected after Expiration of 19 Monthsfrom 
Priority Date 
Where the election of any Contracting State has been effected after the 
expiration of the 19th month from the priority date and the applicant 
wishes to make amendments under Articfe 41, the time limit for making 
amendments under Article 28 shall apply. 
78.3 Utility Models 
The provisions of Rules 6.5 and 13.5 shall apply, mutatis mutandis, before 
elected Offices. If the election was made before the expiration of the 19th 
month from the priority date, the reference to the time limit applicable 
under Article 22 is replaced by a reference to the time limit applicable 
under Article 39. IP/N/lINZL/P/l 
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PARTD 
Rules Concerning Chapter III of the Treaty 
Rule 79 
Calendar 
79. I Expressing Dates . 
Applicants, national Offices, receiving Offices, International Searching 
and Prefuninary Exanllning Authorities, and the International Bureau, 
shall, for the purposes of the Treaty and the Regulations, express any date 
in tenns of the Christian era and the Gregorian calendar, or, if they use 
other eras and calendars, they shall also express any date in tenns of the 
Christian era and the Gregorian calendar. 
Rule 80 
Cotnputation of Titne LiJIlits 
80.1 Periods Expressed in Years 
When a period is ·expressed as one year or a certain number of years, 
computation shall start on the day followin~ the day on which the relevant 
event occurred, and the period shall expire m the relevant subsequent year 
in the month having the same name and on the day having the same 
number as the month and the day on which the said event occurred, 
provided that if the relevant subsequent month has no day with the same 
number the period shall expire on the last day of that month. 
80.2 Periods Expressed in Months 
When a period is expressed as one month or a certain number of 
months, computation shall start on the day following the day on which the 
relevant event occurred, and the period shall expire in the relevant 
subsequent month on the day which has the same number as the day on 
which the said event occurred, provided that if the relevant subsequent 
month has no day with the same number the period shall expire on the last 
day of that month. 
8 0.3 Periods Expressed in Days 
When a period is expressed as a certain number of days, computation 
shall start on the day following the day on which the relevant event 
occurred, and the period shall expire on the day on which the last day of 
the count has been reached. 
80.4 Local Dates 
(a) The date which is taken into consideration as the starting date of the 
computation of any period shall be the date which prevails in the locality 
at the time when the relevant event occurred. 
(b) The date on which any period expires shall be the date which prevails 
in the locality in which the required document must be filed or the 
required fee must be paid. 1992, No. 81 Patent.s Amendment 
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80.5 Expiration on a Non-Working Day 133 
If the expiration of any period during which any document or fee must 
reach a national Office or intergovernrnental organization falls on a day on 
which such Office or organization is not open to the public for the 
purposes of the transaction of official business, or on which ordinary mail 
is not delivered in the locality in which such Office or organization is 
situated, the period shall expire on the next subsequent day on which 
neither of the said two circumstances exists. 
80.6 Date of Documents 
(a) Where a period starts on the day of the date of a document or letter 
emanating from a national Office or intergovernrnental organization, any 
interested party may prove that the said document or letter was mailed on 
a day later than the date it bears, in which case the date of actual mailing 
shall, for the purposes of computing the period, be considered to be the 
date on which the period starts. Irrespective of the date on which such a 
document or letter was mailed, if the applicant offers to the national Office 
or intergovernmental organization evidence which satisfies the national 
Office or intergovernrnental organization that the document or letter was 
,ireceived more thaIl seven days after the date it bears, the national Office 
or;.inte~governmental organization shall treat the period starting from the 
date ~Ci)f,the,a0cument or letter as expiring later by an additional number of 
days 'which is equal to the number of days which the document or letter 
w~received later than seven days after the date it bears. 
(1)) {Deletea] 
80. 7 End of Working Day 
(a) A period expiring on a given day shall expire at the moment the 
national Office or intergovernmental organization with which the 
document must be filed or to which the fee must 'be paid closes for 
business on that day. 
(b) Any Office or organization may .depa:rt'firom,tihe 'provisions of 
paragraph (a) up to midnight on the relevant day. 
Rule 81 
Modification of Titne Litnits Fixed in the Treaty 
81. 1 Proposal 
(a) Any Contracting State or the Director General may propose a 
modification under Article 47(2). 
(b) Proposals made by a Contracting State shall be presented to the 
Director General. 
81.2 Decision by the Assembly 
(a) When the proposal is made to the Assembly, its text shall be sent by 
the Director General to all Contracting States at least two months in 
advance of that session of the Assembly whose agenda includes the 
proposal. 
(b) During the discussion of the proposal in the Assembly, the proposal 
may be amended or consequential amendments proposed. IP IN / lINZL/P /1 
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(c) The proposal shall be considered adopted if none of the Contracting 
States present at the time of voting votes against the proposal. 
81.3 Voting by Correspondence 
(a) When votin.g by corresp~nd<:nce is chosen, . the proposal shall be 
included in a wntten commurucatIon from the DIrector General to the 
Contracting S~ate.s, inviting them to e.xpres~ t~eir ~o~e in w?ting. 
(b) The inVltatIon shall fix the tune limit WIthin which the reply 
containing the vote expressed in writing must reach the International 
Bureau. That time limit shall not be less than three months from the date 
of the invitation. 
(c) Replies must be either positive or negative. Proposals for 
amendments or mere observations shall not be regarded as votes. 
(d) The proposal shall be considered adopted if none of the Contracting 
States opposes the amendment and if at least one-half of the Contracting 
States express either approval or indifference or abstention. 
Rule 82 
Irregularities in the Mail Service 
82.1 Delay or Loss in Mail 
(a) Any interested party may offer evidence that he has mailed the 
document or letter five days prior to the expiration of the time funit. 
Except in cases where surface mail normally arrives at its destination 
within two days of mailing, or where no airmail service is available, such 
evidence may be offered only if the mailing was by airmail. In any case, 
evidence may be offered only if the mailing was by mail registered by the 
postal authorities. 
(b) If the mailing, in accordance with paragraph (a), of a docUfilent or 
letter is proven to the satisfaction of the national Office or 
intergovernmental organization which is the addressee, delay in arrival 
shall be excused, or, if the document or letter is lost in the mail, 
substitution for it of a new copy shall be permitted, provided that the 
interested party proves to the satisfaction of the said Office or organization 
that the document or letter offered in substitution is identical with the 
document or letter lost. 
(c) In the cases provided for in paragraph (b), evidence of mailing within 
the prescribed time limit, and, where the document or letter was fost, the 
substitute document or letter as well as the evidence concerning its identity 
with the document or letter lost shall be submitted within one month after 
the date on which the interested party noticed-or with due diligence 
should have noticed-the delay or the loss, and in no case later than six 
months after the expiration of the time limit applicable in the given case. 
(d) Any national Office or intergovernmental organization which has 
notified the International Bureau that it will do so shall, where a delivery 
service other than the postal authorities is used to mail a document or 
letter, apply the provisions of paragraphs (a) to (c) as if the delivery service 
was a postal authority. In such a case, the last sentence of paragraph (a) 
shall not apply but evidence may be offered only if details of the mailing 
were recorded by the delivery service at the time of mailing. The 
notification may contain an indication that it applies only to mailings using 1992, No. 81 Patents Amendment 
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REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 
specified delivery services or delivery services which satisfy specified 
criteria. The InteITlational Bureau shall publish the infonnation so notified 
in the Gazette. 
(e) Any national Office or intergoverrunental organization may proceed 
under paragraph (d): 
(i) even if, where applicable, the delivery service used was not one 
of those specified, or did not satisfy the criteria specified, in the relevant 
notification under paragraph (d), or 
(ii) even if that Office or organization has not sent to the 
International Bureau a notification under paragraph (d). 
82.2 Interruption in the Mail Service 
(a) Any interested party may offer evidence that on any of the 10 days 
preceding the day of expiration of the time limit the postal service was 
intenupted on account of war, revolution, civil disorder, strike, natural 
calamity, or other like reason, in the locality where the interested party 
resides or has his place of business or is staying. 
(b) If such circumstances are proven to the satisfaction of the national 
Office or intergoverrunental organization which is the addressee, delay in 
arrival shall be excused, provided that the interested party proves to the 
satisfaction of the said Office or organization that he effected the mailing 
within five days after the mail service was resumed. The provisions of Rule 
82.1 (c) shall apply mutatis mutandis. 
Rule 82bis 
Excuse by the Designated or Elected State of Delays in 
Meeting Certain TilDe Litnits 
82t)ls.1 Meaning of uTime Limitn in Article 48(2) 
The reference to "any time limit" in Article 48(2) shall be construed as 
comprising a reference: 
(i) to any time funit fixed in the Treaty or these Regulations; 
(ii) to any time limit fixed by the receiving Office, the International 
Searching Authority, the International Preliminary Examining Authority or 
the International Bureau or applicable by the receiving Office under its 
national law; 
(ill) to any time limit fixed by, or in the national law applicable by, 
the designated or elected Office, for the perfonnance of any act by the 
applicant before that Office. 
82bis.2 Reinstatement of Rights and Other Provisions to Which Article 48(2) 
Applies 
The provisions of the national law which is referred to in Article 48(2) 
concerning the excusing, by the designated or elected State, of any delay in 
meeting any time limit are those provisions which provide for 
reinstatement of rights, restoration, restitutio in integrum or further 
processing in spite of non-compliance with a time limit, and any other 
provision providing for the extension of time limits or for excusing delays 
ID meeting time limits. IP IN 11 INZL/P 11 
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136 Patents Amendment 1992, No. 81 
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Rule 82ter 
Rectification of Errors Made by the Receiving Office or by the 
International Bureau 
82ter.l Errors Concerning the International Filing Date and the Priority Claim 
If the applicant proves to the satisfaction of any designated or elected 
Office that the international filing date is incorrect due to an error rnade 
by the receiving Office or that the declaration made under Article 8( 1) has 
been erroneously cancelled or corrected by the receiving Office or the 
International Bureau, and if the error is an error such that, had it been 
made by the designated or elected Office itself, that Office would rectify it 
under the national law or national practice, the said Office shall rectify the 
error and shall treat the international application as if it had been accorded 
the rectified international filing date or as if the declaration under Article 
8(1) had not been cancelled or corrected, as the case may be. 
Rule 88 
Right to Practice before International Authorities 
83.1 Proof of Right 
The International Bureau, the competent International Searching 
Authority, and the competent International Preliminary Examining 
Authority, may require the production of proof of the right to practice 
referred to in Article 49. 
83.2 Information 
(a) The national Office or the intergovernmental organization which the 
interested rerson is alleged to have a right to practice before shall, upon 
request, inform the International Bureau, the competent International 
Searching Authority, or the competent International Preliminary 
Examining Authority, whether such person has the right to practice before 
it. 
(b) Such information shall be binding upon the International Bureau, the 
International Searching Authority, or the International Preliminary 
Examining Authority, as the case may be. 
PARTE 
Rules Concerning Chapter V of the Treaty 
Rule 84 
Expenses of Delegations 
84.1 Expenses Borne by Governments 
The expenses of each Delegation participating in any organ established 
by or under the Treaty shall be borne by the Government which has 
appointed it. 
Rule 85 
Absence of ~uorutn in the Assetnbly 
85.1 Voting by Correspondence 
In the case provided for in Article 53(5 )(b), the International Bureau shall 
communicate the decisions of the Assembly (other than those concerning 1992, No. 81 Patents Amendment 
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REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 137 
the Assembly's own procedure) to the Contracting States which were not 
represented and shall invite them to express in writing their vote or 
abstention within a period of three months from the date of the 
communication. If, at the expiration of that period, the number of 
Contracting States having thus expressed their vote or abstention attains 
the number of Contracting States which was lacking for attaining the 
quorum in the session itself, such decisions shall take effect provided that 
at the same time the required majority still obtains. 
86.1 Contents Rule 86 
The Gazette 
The Gazette referred to in Article 55(4) shall contain: 
(i) for each published international application, data specified by 
the Adnllnistrative Instructions taken from the front page of the pamphlet 
published under Rule 48, the drawing (if any) appearing on the said front 
page, and the abstract, 
(ii) the schedule of all fees payable to the receiving Offices, the 
International Bureau, and the International Searching and Preliminary 
Examining Authorities, 
(iii) notices the publication of which is required under the Treaty or 
these Regulations, 
(iv) information, if and to the extent furnished to the International 
Bureau by the designated or elected Offices, on the question whether the 
requirements provided for in Articles 22 or 39 have been complied with in 
respect of the international applications designating or electing the Office 
concerned, 
(v) any other useful information prescribed by the Administrative 
Instructions, provided access to such information is not prohibited under 
the Treaty or these Regulations. 
86.2 Languages 
(a) The Gazette shall be published in an English-language edition and a 
French-language edition. It shall also be published in editions in any other 
language, provided the cost of publication is assured through sales or 
subventions. 
(b) The Assembly may order the publication of the Gazette in languages 
other than those referred to in paragraph (a). 
86.3 Frequency 
The frequency of publication of the Gazette shall be determined by the 
Director General. 
86.4 Sale 
The subscription and other sale prices of the Gazette shall be determined 
by the Director General. IP/NII/NZL/PI 1 
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138 Patents Amendment 1992, No. 81 
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86.5 Title 
The title of the Gazette shall be determined by the Director General. 
86.6 Further Details 
Further details concerning the Gazette Illay be provided for in the 
Administrative Instructions. 
Rule 87 
Copies of Publications 
87.1 International Searching and Preliminary Examining Authorities 
Any International Searching or Preliminary Examining Authority shall 
have the right to receive, free of charge, two copies 01 every published 
international application, of the Gazette, and of any other publication of 
general interest published by the International Bureau in connection with 
the Treaty or these Regulations. 
87.2 National Offices 
(a) Any national Office shall have the right to receive, free of charge, one 
copy of every published international application, of the Gazette, and of 
any other publication of general interest published by the International 
Bureau in connection with the Treaty or these Regulations. 
(b) The rublications referred to in paragraph (a) shall be sent on special 
request. I any publication is available in Illore than one language, the 
request shall specify the language or languages in which it is desired. 
Rule 88 
Atnendtnent of the Regulations 
88.1 Requirement of Unanimity 
AIllendment of the following provisions of these Regulations shall 
require that no State having the right to vote in the Asselllbly vote against 
the proposed amendlllent: 
(i) Rule 14.1 (Transmittal Fee), 
(ii) [Deleted} 
(iii) Rule 22.3 (TiIl1e Limit under Article 12(3)), 
(iv) Rule 33 (Relevant Prior Art for International Search), 
(v) Rule 64 (Prior Art for Interrtational Preliminary Examination), 
(vi) Rule 81 (Modification of TiIl1e Limits Fixed in the Treaty), 
(vii) the present paragraph (i.e., Rule 88.1). 
88.2 [Deleted} 
88.3 Requirement of Absence of OppOSition by Certain States 
AIllendlllent of the following provisions of these Regulations shall 
require that no State referred to in Article 58(3)(a)(ii) and having the right 
to vote in the Assembly vote against the proposed arnendlllent: 
(i) Rule 34 (Minill1ulll Documentation), 
(ii) Rule 39 (Subject Matter under Article 17(2)(a)(i)), 
(iii) Rule 67 (Subject Matter under Article 34(4)( a)(i)), 
-(iv) the present paragraph (i.e., Rule 88.3). 1992, No. 81 Patents Amendment 
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REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 
88.4 Procedure 139 
Any proposal for amending a provision referred to in Rules 88.1 or 88.3 
shall, if the proposal is to be decided upon in the Assembly, be 
communicated to all Contracting States at least two months prior to the 
opening of that session of the Assembly which is called upon to make a 
decision on the proposal. 
89.1 Scope Rule 89 
Adtninistrative Instructions 
(a) The Administrative Instructions shall contain provisions: 
(i) concerning matters in respect of which these Regulations 
expressly refer to such Instructions, 
(ii) concerning any details in respect of the application of these 
Regulations. 
(b) The Administrative Instructions shall not be in conflict with the 
provisions of the Treaty, these Regulations, or any agreement concluded 
by the International Bureau with an International Searching Authority, or 
an International Preliminary Examining Authority. 
89.2 Source 
(a) The Administrative Instructions shall be drawn up and promulgated 
by the Director General after consultation with the receiving Offices and 
the International Searching and Preliminary Examining Authorities~ 
(b) They may be modified by the Director General after consultation 
with the Offices or Authorities which have a direct interest in the proposed 
modification. 
(c) The Assembly may invite the Director General to modify the 
Administrative Instructions, and the Director General shall proceed 
accordingly. 
89.3 Publication and Entry into Force 
(a) The Administrative Instructions and any modification thereof shall 
be published in the Gazette. 
(b) Each publication shall specify the date on which the published 
provisions come into effect. The dates may be different for different 
provisions, provided that no provision may be declared effective prior to 
its publication in the Gazette. 
PART F 
Rules Concerning Several Chapters of the Treaty 
Rule 90 
Agents and COJll.lDon Representatives 
90. 1 AppOintment as Agent 
( a) A person having the right to practice before the national Office with 
which the international application is filed may be appointed by the 
applicant as his agent to represent him before that Office acting as the 
receiving Office and before the International Bureau, the International IP/NI1 INZL/PI1 
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Searching Authority and the Intenlational Preliminary Examining 
Authority. 
(b) A person having the right to practice before the national Office or 
intergovenlmental organization which acts as the Intenlational Searching 
Authority may be appointed by the applicant as his agent to represent him 
specifically before that Authority. 
(c) A person having the right to practice before the national Office or 
intergovenunental organization which acts as the Intenlational Preliminary 
Examining Authority may be appointed by the applicant as his agent to 
represent him specifically before that Authority. 
(d) An agent appointed under paragraph (a) may, unless otherwise 
indicated in the document appointing him, appoint one or more sub­
agents to represent the applicant as the applicant's agent: 
(i) before the receiving Office, the InteITlational Bureau, the 
Intenlational Searching Authority and the Intenlational Preliminary 
Examining Authority, provided that any person so appointed as sub-agent 
has the right to practice before the national Office with which the 
intenlational application was filed; 
(ii) specifically before the Intenlational Searching Authority or the 
Intenlational Preliminary Examining Authority, provided that any person 
so appointed as sub-agent has the right to practice before the national 
Office or intergoverrunental organization which acts as the Intenlational 
Searching Authority or International Preliminary Examining Authority, as 
the case may be. 
90.2 Common Representative 
(a) Where there are two or more applicants and the applicants have not 
appointed an agent representing all of them (a "common agent") under 
Rule 90.1(a), one of the applicants who is entitled to file an intenlational 
application according to Article 9 may be appointed by the other 
applicants as their common representative. . 
(b) Where there are two or more applicants and all the applicants have 
not appointed a common agent under Rule 90.1(a) or a common 
representative under paragraph ( a), the applicant first named in the 
request who is entitled according to Rule 19.1 to file an intenlational 
application with the receiving Office shall be considered to be the common 
representative of all the applicants. 
90.3 Effects of Acts by or in Relation to Agents and Common Representatives 
(a) Any act by or in relation to an agent shall have the effect of an act by 
or in relation to the applicant or applicants concenled. 
(b) If there are two or more agents representing the same applicant or 
applicants, any act by or in relation to any of those agents shall have the 
eIIect of an act by or in. relation to the said applicant or applicants. 
(c) Subject to Rule 90b1S.5(a), second sentence, any act by or in relation to 
a common representative or his agent shall have the effect of an act by or 
in relation to all the applicants. 
90.4 Manner of AppOintment of Agent or Common Representative 
(a) The appointment of an agent shall be effected by the applicant 
signing the request, the demand or a separate power of attonley. Where 1992, No. 81 Patents Amendment 
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REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 
there are two or more applicants, the appointment of a common agent or 
common representative shall be effected by each applicant signing, at his 
choice, the request, the demand or a separate power of attorney. 
(b) Subject to Rule 90.5, a separate power of attorney shall be submitted 
to either the receiving Office or the International Bureau, provided that, 
where a power of attorney appoints an agent under Rule 90.1 (b), (c) or 
(d)(ii), it shall be submitted to the International Searching Authority or the 
International Preliminary Examining Authority, as the case may be. 
(c) If the separate power of attorney is not signed, or if the required 
separate power of attorney is missing, or if the indication of the name or 
address of the appointed person does not comply with Rule 4.4, the power 
of attorney shall be considered non-existent unless the defect is corrected. 
90.5 General Power of Attorney 
(a) Appointment of an agent in relation to a particular international 
application may be effected by referring in the request, the demand or a 
separate notice to an existing separate power of attoITley appointing that 
agent to represent the applicant in relation to any inteITlational application 
which may be filed by that applicant (i.e., a "general power of attoITley"), 
provided that: 
(i) the general 'power of attorney has been deposited in accordance 
with paragraph (b), and 
(ii) a copy of it is attached to the request, the demand ,or the 
separate notice, as the case may be; that copy need not be signed. 
(b) The general power of attorney shall be deposited with the receiving 
Office, provided that, where it appoints an agent under Rule 90.I(b), (c) or 
(d)(ii), it shall be deposited with the International Searching Authority or 
the InteITlational Preliminary Examining Authority, as the case may be. 
90.6 Revocation and Renunciation 
(a) Any appointment of an agent or common representative may be 
revoked by the persons who made the appointment or by their successors 
in title, in which case any appointment of a sub-agent under Rule 90.I(d) 
by that agent shall also be considered as revoked. Any appointment of a 
sub-agent under Rule 90.I(d) may also be revoked by the applicant 
conceITled. 
(b) The appointment of an agent under Rule 90. I (a) shall, unless 
otherwise indicated, have the effect of revoking any earlier appointment of 
an agent Illade under that Rule. 
(c) The appointment of a common representative shall, unless otherwise 
indicated, have the effect of revoking any earlier appointment of a 
common representative. 
(d) An agent or a common representative may renounce his 
appointment by a notification signed by him. 
(e) Rule 90.4(b) and (c) shall apply, mutatis mutandis, to a document 
containing a revocation or renunciation under this Rule. IP/N/1/NZL/P/1 
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Rule 90bis 
Withdrawals 
90bis.l Withdrawal of the International Application 
(a) The applicant may withdraw the international application at any time 
prior to the expiration of 20 months from the priority date or, where 
Article 39(1) applies, prior to the expiration of 30 months from the priority 
date. 
(b) Withdrawal shall be effective on receipt of a notice addressed by the 
applicant, at his option, to the International Bureau, to the receiving Office 
or, where Article 39( 1) applies, to the International Preliminary Examining 
Authority. 
(c) No international publication of the international application shall be 
effected if the notice of withdrawal sent by the applicant or transmitted by 
the receiving Office or the International Preliminary Examining Authority 
reaches the International Bureau before the technical preparations for 
international publication have been completed. 
90bis.2 Withdrawal of Designations 
(a) The applicant may withdraw the designation of any designated State 
at any tiIne prior to the expiration of 20 months from the priority date or, 
where Articfe 39( 1) applies in respect of that State, prior to the expiration 
of 30 months from the priority date. Withdrawal of the designation of a 
State which has been el~cted shall entail withdrawal of the corresponding 
election under Rule 90b1S.4. 
(b) Where a State has been designated for the purpose of obtainiIig both 
a national patent and a regional patent, withdrawal of the desi~ation for 
designation of that State shall be taken to mean withdrawal of only the 
designation for the purpose of obtaining a national patent, except where 
otherwise indicated. 
(c) Withdrawal of the designations of all designated States sh~ be 
treated as withdrawal of the international application under Rule 90b1s.l. 
(d) Withdrawal shall be effective on receipt of a notice addressed by the 
applicant, at his option, to the InteITlationaI Bureau, to the receiving Office 
or, where Article 39(1) applies, to the International Preliminary Examining 
Authority. 
(e) No international publication of the designation shall be effected if the 
notice of withdrawal sent by the applicant or transmitted by the receiving 
Office or the International Preliminary Examining Authority reaches the 
International Bureau before the technical preparations for international 
publication have been completed. 
90bis.3 Withdrawal of Priority Claims 
(a) The applicant may withdraw a priority claim, made in the 
international application under Article 8( 1 ), at any time prior to the 
expiration of 20 months from the priority date or, where Article 39(1) 
applies, 30 months from the priority date. 
(b) Where the international application contains more than one priority 
claim, the applicant may exercise the right provided for in paragraph (a) in 
respect of one or more or all of the priority claims. 1992, No. 81 Patents Amendment IP/N/I/NZL/P/l 
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(c) Withdrawal shall be effective on receipt of a notice addressed by the 
applicant, at his option, to the International Bureau, to the receiving Office 
or, where Article 39( 1) applies, to the International Preliminary Examining 
Authority. 
(d) Where the withdrawal of a priority claim causes a change in the 
priority date, any time limit which is computed from the original priority 
date and which has not already expired shall, subject to paragraph (e), be 
computed from the priority date resulting from that change. 
(e) In the case of the time limit referred to in Article 21(2)(a), the 
International Bureau may nevertheless proceed with the international 
publication on the basis of the said time limit as computed from the 
original priority date if the notice of withdrawal sent by the applicant or 
transmitted by the receiving Office or the International Preliminary 
Examining Authority reaches the International Bureau after the 
completion of the technical preparations for international publication. 
90bis.4 Withdrawal 0/ the Demand or 0/ Elections 
(a) The applicant may withdraw the demand or any or all elections at 
any time prior to the expiration of 30 months from the priority date. 
(b) Withdrawal shall be effective upon receipt of a notice addressed by 
the applicant to the International Bureau. 
(c) If the notice of withdrawal is submitted by the applicant to the 
International Preliminary Examining Authority, that Authority shall mark 
the date of receipt on the notice and transmit it promptly to the 
International Bureau. The notice shall be considered to have been 
submitted to the International Bureau on the date marked. 
90bis.5 Signature . . 
(a) Any notice of withdrawal referred to in Rules 90blS.l to 90b1S.4 shall, 
subject to paragraph (b), be signed by the applicant. Where one of the 
applicants IS considered to be the common representative under Rule 
90.2(b), such notice shall, subject to paragraph (b), require the signature of 
all the applicants. 
(b) Where two or more applicants file an international application which 
designates a State whose national law requires that national applications be 
filed by the inventor and where an applicant for that designated State who 
is an inventor could not be found or r~ached af~er diligent effort, a notice 
of withdrawal referred to in Rules 90blS.l to 90blS.4 need not be signed by 
that applicant ("the applicant concerned") if it is signed by at least one 
applicant and 
(i) a statement is furnished explaining, to the satisfaction of the 
receiving Office, the International Bureau or the International Preliminary 
Examining Authority, as the case may be, the lack of signature of the 
applicant concerned, or 
. (ii) in . the case of. a notice of withdrawal referred to in Rule 
90blS.l(b), 90blS.2(d), or 90b1S.3(c), the applicant concerned did not sign the 
request but the requirements of Rule 4.15(b) were complied with, or 
. (iii) in the case of a notice of withdrawal referred to in Rule 
90blS.4(b), the applicant concerned did not sign the demand but the 
requirements of Rule 53.8(b) were complied with, or did not sign the later IP/NI1/NZL/PI 1 
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144 Patents Amendment 1992, No. 81 
SECOND SCHEDULE-continued 
REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 
election concerned but the requirements of Rule 56.1(c) were complied 
with. 
90bis.6 Effect of Withdrawal . 
(a) Withdrawal under Rule 90blS of the international application, any 
designation, any priority claim, the demand or any election shall have no 
effect in any designated or elected Office where the processing or 
examination of the international application has already started under 
Article 23(2) or Article 40(2). 
(b) Where the international application is withdrawn under Rule 90bis.l, 
the international processing of the international application shall be 
discontinued. 
(c) Where the demand or all elections are withdrawn under Rule 90bis.4, 
the processing of the international application by the International 
Preliminary Examining Authority shall be discontinued. 
90bis.7 Faculty under Article 3 7( 4) (b) 
(a) Any Contracting State whose national law provides for what is 
described in the second part of Article 37 (4 )(b) shall notify the 
International Bureau in writing. 
(b) The notification referred to in paragraph ( a) shall be prolnptly 
published by the International Bureau in the Gazette, and shall have effect 
m respect of international applications filed more than one month after 
the date of such publication. 
Rule 91 
Obvious Errors in DOCUDlents 
91. 1 Rectification 
(a) Subject to paragraphs (b) to (gquater), obvious errors in the 
international application or other papers submitted by the applicant may 
be rectified. 
(b) Errors which are due to the fact that something other than what was 
obviously intended was written in the international application or other 
paper shall be regarded as obvious errors. The rectification itself shall be 
obvious in the sense that anyone would immediately realize that nothing 
else could have been intended than what is offered as rectification. 
(c) Omissions of entire elements or sheets of the international 
application, even if clearly resulting from inattention, at the stage, for 
example, of copying or assembling sheets, shall not be rectifiable. 
(d) Rectification may be made on the request of the applicant. The 
authority having discovered what appears to be an obvious error may 
invite the applicant to rresent a request for rectification as provided in 
paragraphs (e) to (gquate). Rule 26.4(a) shall apply mutatis mutandis to the 
manner in which rectifications shall be requested. 
(e) No rectification shall be made except with the express authorization: 
(i) of the receiving Office if the error is in the request, 
(ii) of the International Searching Authority if the error is in any 
part of the international application other than the request or in any paper 
submitted to that Authonty, 1992, No. 81 Patents Amendment 
SECOND SCHEDULE-continued IP IN 11 INZL/P 11 
Page 249 
REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 145 
(iii) of the International Preliminary Exanllning Authority if the 
error is in any part of the international application other than the request 
or in any paper submitted to that Authority, and 
(iv) of the International Bureau if the error is in any paper, other 
than the international application or atnendments or corrections to that 
application, submitted to the International Bureau. 
(f) Any authority which authorizes or refuses any rectification shall 
promptly notify the applicant of the authorization or refusal and, in the 
case of refusal, of the reasons therefor. The authority which authorizes a 
rectification shall promptly notify the International Bureau accordingly. 
Where the authorization of the rectification was refused, the International 
Bureau shall, upon request. made by the applicant prior to the tinle 
relevant under paragraph (gblS), (gter) or (gquater) and subject to the payment 
of a special fee whose atnount shall be fixed in the Administrative 
Instructions, publish the request for rectification together with the 
international application. A copy of the request for rectification shall be 
included in the communication under Article 20 where a copy of the 
patnphlet is not used for that communication or where the international 
application is not published by virtue of Article 64(3). 
(g) The authorization f<?r rectification referred to in paragraph (e) shall, 
subject to paragraphs (gblS), (gter) and (gquater), be effectlve: 
(i) where it is given by the receiving Office or by the International 
Searching Authority, if its notification to the International Bureau reaches 
that Bureau before the expiration of 1 7 months from the priority date; 
(ii) where it is given by the International Preliminary Exanllning 
Authority, if it is given before the establishment of the international 
preliminary examination report; 
(iii) where it is given by the International Bureau, if it is given before 
the expiration of 1 7 months from the priority date. 
(gbis) If the notification made under paragraph (g) (i) reaches the 
International Bureau, or if the rectification made under paragraph (g)(iii) is 
authorized by the International Bureau, after the expiration of 1 7 months 
from the priority date but before the technical preparations for 
international publication have been completed, the authorization shall be 
effective and the rectification shall be incorporated in the said publication. 
(gter) Where the applicant has asked the International Bureau to publish 
his international application before the expiration of 18 months from the 
priority date, any notification made under paragraph (g)(i) must reach, and 
any rectification made under paragraph (g)(iii) must be authorized by, the 
International Bureau, in order for the authorization to be effective, not 
later than at the time of the completion of the technical preparations for 
international publication. 
(~quater) Where the international application is not published by virtue of 
Artlcle 64(3), any notification made under paragraph (g)(i) must reach, and 
any rectification made under paragraph (g)(iii) must be authorized by, the 
International Bureau, in order for the authorization to be effective, not 
later than at the time of the communication of the international 
application under Article 20. IP IN 11 INZL/P 11 
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146 Patents Amendment 1992, No. 81 
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REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 
Rule 92 
Correspondence 
92.1 Need for Letter and for Signature 
(a) Any paper submitted by the applicant in the course of the 
intetnational procedure provided for in the Treaty and these Regulations, 
other than the intetnational application itself, shall, if not itself in the form 
of a letter, be accompanied by a letter identifying the intetnational 
application to which it relates. The letter shall be signed by the applicant. 
(b) If the requirements provided for in paragraph (a) are not complied 
with, the applicant shall be informed as to the non-compliance and invited 
to remedy the omission within a time funit fixed in the invitation. The time 
limit so fixed shall be reasonable in the circumstances; even where the time 
limit so fixed expires later than the time limit applying to the furnishing of 
the paper (or even if the latter time limit has already expired), it shall not 
be less than 10 days and not more than one month from the mailing of the 
invitation. If the omission is remedied within the time limit fixed in the 
invitation, the omission shall be disregarded; otherwise, the applicant shall 
be informed that the paper has been disregarded. 
(c) Where non-compliance with the requirements provided for in 
paragraph (a) has been overlooked and the paper taken into account in the 
mtetnational procedure, the non-complia..TIce shall be disregarded. 
92.2 Languages . 
(a) Subject to Rules 55.1 and 66.9 and to paragraph (b) of this Rule, any 
letter or document submitted by the applicant to the Intetnational 
Searching Authority or the International Preliminary Examining Authority 
shall be in the same language as the international application to which it 
relates. Where the international application has been translated under Rule 
12. 1 (c), the language of such translation shall be used. . 
(b) Any letter from the applicant to the International Searching 
Authority or the Intetnational Preliminary Examining Authority may be in 
a language other than that of the international application, provided the 
said Authority authorizes the use of such language. 
(c) [Deleted] 
(d) Any letter from the applicant to the International Bureau shall be in 
English or French. 
(e) Any letter of notification from the Intetnational Bureau to the 
applicant or to any national Office shall be in English or French. 
92.3 Mailings by National Offices and Intergovernmental Organiz.ations 
Any document or letter emanating from or transmitted by a national 
Office or an intergovernmental organization and constituting an event 
from the date ot which any time limit under the Treaty or these 
Regulations commences to run shall be sent by air mail, provided that 
surface mail may be used instead of air mail in cases where surface mail 
normally arrives at its destination within two days from mailing or where 
air mail service is not available. 1992, No. 81 Patents Amendment 
SECOND SCHEDULE-continued IP IN I lINZL/P /l 
Page 251 
REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 
92.4 Use of Telegraph~ Teleprinter~ Facsimile Machine~ Etc. 147-
(a) A document making up the international application, and any later 
document or correspondence relating thereto, may, notwithstanding the 
provisions of Rules 11.14 and 92.1(a), but subject to paragraph (h), be 
transmitted, to the extent feasible, by telegraph, teleprinter, facsimile 
machine or other like means of communication producing a printed or 
written document. 
(b) A signature appearing on a document transmitted by facsimile 
machine shall be recognized for the purposes of the Treaty and these 
Regulations as a proper signature. 
(c) Where the applicant has attempted to transmit a document by any of 
the means referred to in paragrapn (a) but part or all of the received 
document is illegible or part of the document is not received, the 
document shall be treated as not having been received to the extent that 
the received document is illegible or that the attempted transmission 
failed. The national Office or intergovernrnental organization shall 
promptly notify the applicant accordingly. 
(d) Any national Office or intergovernrnental organization may require 
that the original of any document transmitted by any of the means 
referred to in paragraph (a) and an accompanying letter identifying that 
earlier transmission be furnished within 14 days from the date of the 
transmission, provided that such requirement -has been notified to the 
International Bureau and the International Bureau has published 
information thereon in the Gazette. The notification shall specifY whether 
such requirement concerns all or only certain kinds of documents: 
(e) Where the applicant fails to furnish the original of a document as 
required under paragraph (d), the national Office or intergovernmental 
organization concerned may, depending on the kind of document 
transmitted and having regard to Rules 11 and 26.3, 
(i) waive the requirement under paragraph (d), or 
(ii) invite the applicant to furnish, within a time limit which shall be 
reasonable under the circumstances and shall be fixed in the 
invitation, the original of the document transmitted, 
provided that, where the document transmitted contains defects, or shows 
that the original contains defects, in respect of which the national Office or 
intergovernmental organization may issue an invitation to correct, that 
Office or organization may issue such an invitation in addition to, or 
instead of, proceeding under item (i) or (ii). 
(f) Where the furnishing of the original of a document is not required 
under paragraph (d) but the national Office or intergovernmental 
organization considers it necessary to receive the original of the said 
document, it may issue an invitation as provided for under paragraph 
( e)(ii). 
(g) If the applicant fails to comply with an invitation under paragraph 
(e)(ii) or (f): 
(i) where the document concerned is the international application, 
the latter shall be considered withdrawn and the receiving Office shall so 
declare; IP IN 11 INZL/P 11 
Page 254 
150 Patents Amendment 1992, No. 81 
SECOND SCHEDULE-continued 
REGULATIONS UNDER THE PATENT COOPERATION TREATY-Continued 
Fees-continued 
2. Designation Fee: 
(Rule 15.2(a)) 
(a) for designations made under 
Rule 4.9(a) 
(b) for designations made under 
Rule 4. 9(b) and confirmed 
under Rule 4. 9( c) 
3. Confirmation Fee: 
(Rule 15.5(a)) 
4. Handling Fee: 
(Rule 5 7 .2(a)) Atnounts-continued 
185 Swiss francs per designation, 
provided that any designation 
made under Rule 4. 9( a) in 
excess of 10 shall not require 
the payment of a designation 
fee 
185 Swiss francs per designation 
500/0 of the sum of the designation 
fees payable under item 2(b) 
233 Swiss francs. 
This Act is administered in the Ministry of Commerce. 
WEllJNGTON, NEW ZEALAND: Published Wlder the authority of the 
New Zealand Govenunent-1992 
S5667H-92jNS JP IN 11 INZL/P 11 
Page 255 
1994 Patents Amendment No. 122 
ANALYSIS 
Title 
I. Short Title and COITlmencement 
2. Interpretation 
3. Refusal of application in certain cases 
4. Date and term of patent 
5. Sections repealed 
6. Revocation of patent by Court 
7. Compulsory licence 
8. Section 47 (relating to licences under 
section 46) repealed 
9. Exercise of powers on applications 
under section 46 
10. Sections repealed 
11. SuppleITlentarylrovisions 
12. Use of patente inventions for services 
of the Crown 
13. Rights of third parties in respect of 
Crown use 14. Reference of disputes as to Crown use 
15. New sections substituted 
58. Special provisions as to Crown 
use during emergency 
58A. Nature and scope of rights 
under section 55 
588. Duty to inform owner 
58c. Patentee entitled to 
reITluneration 
16. Burden of proof for infringeITlent of 
process patent 
I 7. Transitional provisions 
18. Term of existing patents 
19. Repeal of section 24 (4) of Health 
ReforITls (Transitional Provisions) Act 
1993 
1994, No. 122 
An Act to a.tl1.end the Patents Acts 1953 
[9 December 1994 
BE IT ENACTED by the Parliament of New Zealand as follows: 
1. Short Title and cOlDlDencetnent-( 1) This Act may be 
cited as the Patents Amendment Act 1994, and shall be read 
together with and deemed part of the Patents Act 1 953 
(hereinafter referred to as the principal Act). 
(2) This Act shall come into force on a date to be appointed 
by the Governor-General by Order in Council; and one or more 
orders may be made bringing different provisions into force on 
different dates. 
2. Interpretation-Section 2 (1) of the principal Act IS 
hereby amended by inserting, after the definition of the term 
"Government Department", the following definition: 
',' 'Integrated circuit' means a circuit, in its final or an 
intermediate form, in which the elements, at least 
one of which is an active element, and some or all of 
Public-122 Price Code: 9-CX IP/NI 1 INZL/PI 1 
Page 256 
2 Patents Amendment 1994, No. 122 
the interconnections are integrally formed in or on a 
piece of material and that is intended to perform an 
electronic function:". 
3. Refusal of application in certain cases-The principal 
Act is hereby amended by repealing section 1 7 , and 
substituting the following section: 
"1 7. (1) If it appears to the Commissioner in the case of any 
application for a patent that the use of the invention in respect 
of which the application is made would be contrary to morality, 
the Commissioner may refuse the application. 
"(2) An appeal to the Court shall lie from any decision of the 
Commissioner under this section." 
4. Date and tenn. of patent-( 1) Section 30 of the principal 
Act is hereby amended by repealing subsection (3), and 
substituting the following subsection: 
"(3) The term of every patent shall be 20 years from the date 
of the patent." 
(2) Section 30 (5) of the principal Act is hereby amended by 
omitting the expression "3 months" , and substituting the 
expression "6 months". 
5. Sections repealed-The principal Act IS ,hereby 
amended by repealing sections 31 to 33. 
6. Revocation of patent by Court-Section 41 (1) of the 
principal Act is hereby amended by repealing paragraph (k). 
7. COlTlpulsory licence-The principal Act is hereby 
amended by repealing section 46, and substituting the 
following section: 
"46. (1) At any time after the expiration of 3 years from the 
date of the sealing of a patent or 4 years from the date of the 
patent, whichever is the later, any person interested may apply 
to the Court for the grant of a licence under the patent upon 
any of the grounds specified in subsection (2) of this section. 
"(2) The grounds upon which a licence may be granted 
under this section are that a market for the patented invention 
is not being supplied, or is not being supplied on reasonable 
terms, in New Zealand. 
"(3) Subject to subsections (4), (5), (6), and (7) of this section, if 
the Court is satisfied that either of the grounds referred to in 
subsection (2) of this section are established, the Court may 1994, No. 122 Patents Amendment IP/N/1/NZL/P/1 
Page 257 
3 
make an order for the grant of a licence in accordance with the 
application upon such terms as the Court thinks fit. 
"(4) A licence granted under this section-
"(a) Is not exclusive: 
"(b) Must not be assigned otherwise than in connection with 
the goodwill of the business in which the patented 
invention is used: 
"(c) Is limited to the supply of the patented invention 
predominantly in New Zealand. 
"(5) Any licence granted under this section may, on the 
application of any interested party, be terminated by the Court, 
where the Court is satisfied that the grounds on which the 
licence was granted have ceased to exist. 
"(6) Where a licence is granted under this section to any 
person, that person shall pay such remuneration to the 
patentee as may be agreed, or as may be determined by a 
method agreed, between that person and the patentee or, in 
default of agreement, as is determined by the Court on the 
application of that person or the patentee. 
"(7) No licence shall be granted under this section unless the 
person applying for the licence, having taken all reasonable 
steps to do so, has been unable to obtain a licence, or to obtain 
a licence on reasonable terlllS, from the patentee. 
"(8) No licence shall be granted under this section in respect 
of a patent relating to an integrated circuit." 
8. Section 47 (relating to licences under section 46) 
repealed-The principal Act is hereby amended by repealing 
section 47. 
9. Exercise of powers on applications under section 
46-The principal Act is hereby amended by repealing 
section 48, and substituting the following section: 
"48. The powers of the Court on an application under 
section 46 of this Act shall be exercised with a view to securing 
that the inventor or other person beneficially entitled to a 
patent shall receive reasonable remuneration having regard to 
the nature of the invention." 
10. Sections repealed-(I) The principal Act is hereby 
amended by repealing sections 49 and 50. 
(2) The principal Act is hereby further amended by repealing 
sections 52 and 53 (each as amended by section 8 (2) of the 
Patents Amendment Act 1992). IP IN 11 INZL/P 11 
Page 258 
4 Patents Amendment 1994, No. 122 
(3) Section 8 (2) of the Patents Amendment Act 1992 is 
hereby consequentially repealed. 
11. Suppletnentary provisions-( 1) Section 54 of the 
principal Act is hereby amended by repealing subsection (2). 
(2) Section 54 (3) of the principal Act is hereby amended by 
omitting the expression "sections 46 to 50", and substituting 
the expression "section 46". 
12. Use of patented inventions for services of the 
Crown-The jrincipal Act is hereby amended by repealing 
section 55, an substituting the following section: 
"55. (1) Subject to sections 58A to 58c of this Act, but 
notwithstanding any other provision of this Act, any 
Government Department, and any person authorised in writing 
by a Government Department, may make, use, exercise, and 
vend any patented invention for the services of the Crown and 
anything done by virtue of this subsection shall not amount to 
an infringement of the patent concerned. 
"(2) For the purposes of this section and section 56 of this 
Act,-
"(a) Any use of an invention for the supply to the 
Government of any country outside New Zealand, in 
pursuance of any agreement or arrangement 
between the Government of New Zealand and the 
Government of that country, of articles required for 
the defence of that country shall be deemed to be a 
use of the invention for the services of the Crown: 
"(b) The power of a Government Department or a person 
authorised by a Government Department under this 
section to make, use, exercise, and vend a patented 
invention shall include power to sell to any person 
any articles made in the exercise of the powers 
conferred by this section that are no longer required 
for the purpose for which they were made: 
"(c) The power of a Government Department or a person 
authorised by a Government Department under this 
section to vend a patented invention shall not, in the 
case of a patent relating to an integrated circuit, 
extend to sale of the invention to the public. 
"(3) Where the Governor-General, by Order in Council, 
declares that the use of any patented invention by any person 
or by any class of persons engaged in a particular industry is 
necessary or desirable to enable full benefit to be derived by 
the-members of the public in New Zealand of any enterprise or 1994, No. 122 Patents Amendment IP IN 11 INZL/P 11 
Page 259 
5 
undertaking in which the Crown or any Government 
Department has a complete or almost complete monopoly, any 
such use of the invention or inventions shall for the purposes of 
this section and sections 56 and 57 of this Act be deemed to be 
a use for the services of the Crown. 
"(4) The purchaser of any articles sold in the exercise of 
po\vers conferred by this section, and any person clainllng 
through the purchaser, shall have power to deal with them in 
the same manner as if the patent were held on behalf of the 
Crown." 
13. Rights of third parties in respect of Crown use­
(1) Section 56 (1) of the principal Act is hereby amended by 
inserting, before the words "be of no effect", the words 
", subject to sections 58A and 58c of this Act,". 
(2) Section 56 of the principal Act is hereby further amended 
by repealing subsections (2), (3), and (4). 
14. Reference of disputes as to Crown use-The 
principal Act is hereby amended by repealing section 57, and 
substituting the following section: 
"57. (1) Any dispute as to the exercise by a Government 
Department or a person authorised by a Government 
Department of the powers conferred by section 55 of this Act, 
or as to the terIllS for the use of an invention for the servic'es of 
the Crown thereunder may be referred to the Court by either 
party to the dispute in such manner as may be prescribed by 
rules of the Court. 
"(2) In any proceedings under this section to which a 
Government Department is a party, the Department may,-
"(a) If the patentee is a party to the proceedings, apply for 
revocation of the patent upon any ground upon 
which a patent may be revoked under section 41 of 
this Act; 
"(b) In any case, put in issue the validity of the patent 
without applying for its revocation. 
"(3) In deterIllining any dispute referred to the Court under 
this section, the Court shall have regard to-
"(a) Any benefit or compensation that the patentee of the 
patented invention may have received, or may be 
entitled to receive, directly or indirectly from any 
Government Department or person authorised by a 
Government Department in respect of the invention 
in question: IP/N/l INZL/PI 1 
Page 260 
6 Patents Amendment 1994, No. 122 
"(b) The need to ensure that the patentee shall receive 
reasonable remuneration having regard to the 
nature of the patented invention. 
"(4) In any proceedings under this section, the Court may at 
any time order the whole proceedings or any question or issue 
of fact arising therein to be referred to a special or official 
referee or an arbitrator on such terms as the Court may direct; 
and references to the Court in the foregoing provisions of this 
section shall be construed accordingly." 
15. New sections substituted-The principal Act is hereby 
amended by repealing section 58, and substituting the 
following sections: 
"58. Special provIsIons as to Crown use during 
elDergency-Subject to sections 58A to 58c of this Act, the 
powers exercisable in relation to an invention by a Government 
Department or a person authorised by a Government 
Department under section 55 of this Act, shall include power to 
make, use, exercise, and vend the patented invention for any 
purpose which appears to the Department necessary or 
expedient-
"(a) To avoid prejudice to the security or defence of New 
Zealand; or 
"(b) To assist in the exercise of powers and the 
implementation of civil defence measures during a 
state of national emergency under section 46 of the 
Civil Defence Act 1983 or a state of national civil 
defence emergency under section 50 of that Act. 
"58A. Nature and scope of rights under section 55-
( 1) The right to use a patented invention under section 55 of 
this Act-
"(a) Is not exclusive: 
"(b) Must not be assigned otherwise than in connection with 
the goodwill of the business in which the patented 
invention is used: 
"(c) Is, notwithstanding subsection (2) (a) of that section, 
limited to the supply of the patented invention 
predominantly in New Zealand by a Government 
Department or a person authorised by a 
Government Department under that section. 
"(2) The right to use a patented invention under section 55 of 
this Act may, on the application of any interested/arty, be 
terminated by the Court, where the Court is satisfie that the 1994, No. 122 Patents Amendment IP/NI 1 INZL/PI 1 
Page 261 
7 
circumstances that gave rise to the right to use the patented 
invention have ceased to exist and are unlikely to recur. 
"(3) Except in a case to which section 58 of this Act applies, 
the right to use a patented invention under section 55 of this 
Act is subject to the Government Department or person 
authorised by a Government Department under section 55 of 
this Act having first taken all reasonable steps to obtain the 
consent of the patentee to the use of the patented invention on 
reasonable terms and conditions, and having failed to obtain 
such consent within a reasonable period of time. 
"58B. Duty to infonn owner-(I) Where any use of a 
patented invention is made by or with the authority of a 
Government Department under section 55 of this Act, the 
Department shall, as soon as practicable after the use of the 
patented invention has begun, notify and furnish the patentee 
with such information as to the extent of the use as the 
patentee may from time to time require. 
"(2) Nothing in subsection (1) of this section requires the 
Government Department to notify or disclose information to 
the patentee if to do so would, or might reasonably be 
expected to, prejudice the security or defence of New Zealand. 
"58c. Patentee entitled to relIluneration-Where an act 
is done under section 55 of this Act, the Crown shall pay. such 
remuneration to the patentee as may be agreed, or as may be 
determined by a method agreed, between the Crown and the 
patentee or as may, in default of agreement, be determined by 
the Court under section 57 of this Act." 
16. Burden of proof for infringelIlent of process 
patent-The principal Act is hereby amended by inserting, 
after section 68, the following section: 
"68A. (1) If the invention for which a patent is granted is a 
process for obtaining a new product, the same product 
produced by a person other than the patentee or a licensee of 
the patentee shall, unless the contrary is proved, be taken in 
any proceedings for infringement of the patent to have been 
obtained by that process. 
"(2) In applying subsection (1) of this section, the Court shall 
not require any person to disclose any manufacturing or 
commercial secrets if it appears to the Court that it would be 
unreasonable to do so. 
Cf. Patents Act 1977 (U.K.), s. 100" IP/N /1 INZL/P /1 
Page 262 
8 Patents Amendment 1994, No. 122 
17. Transitional provisions-(l) Nothing ID this Act 
applies to or affects-
(a) Any proceedings for revocation of a patent cOllllllencecl 
before the commencelllent of this Act: 
(b) Any proceedings for infringement of a patent 
cOllllllenced before the commencement of this Act: 
(c) Any existing licences or applications for licences of right 
under section 46 of the principal Act in existence or 
made before the commencement of this Act: 
(cl) Any application for the extension of the tenn of a patent 
made before the commencement of this Act: 
(e) Any reference to the Court under section 57 of the 
principal Act made before the comlllencement of this 
Act: 
(f) Subject to subsection (2) of this section, any application for 
a patent in respect of which a cOlllplete specification 
has been filed before the commencement of this 
Act,-
and any such proceedings, licences, applications, or references 
to the Court shall continue as if this Act had not been enacted. 
(2) Where, in respect of an application for a patent, a 
cOlllplete specification has not been advertised under 
section 20 (2) of the principal Act before the commencement of 
this Act, the application must be deterlllined in accordance 
with the principal Act (as amended by this Act) if the applicant 
gives notice to the Commissioner in accordance with 
subsection (3) of this section, requesting that the application be 
determined in accordance with the principal Act (as so 
amended). 
(3) Any notice under subsection (2) of this section­
(a) Must be in the prescribed forlll: 
(b) Must be accompanied by the prescribed fee: 
(c) Must be given on or before the date falling 6 months after 
the commencement of this Act, or on or before the 
date of grant of the patent, whichever occurs first. 
18. Tenn. of existing patents-(l) Subject to 
subsections (2) and (3) of this section, the term of every patent 
that has not expired before the COlllmencelllent of this Act 
shall, notwithstanding anything contained in the principal Act, 
be deellled to be 20 years from the date of the patent. 
(2) Nothing in subsection (1) of this section applies to a patent 
the terlll of which has, before the comlllencement of this Act, 
been extended by the Court or the Commissioner for a period 
exceeding 20 years from the date of the patent. 1994, No. 122 Patents Amendment IP/NI 1 INZL/PI 1 
Page 263 
9 
(3) Nothing in subsection (1) of this section applies to a patent 
the term of which is extended by the Court or the 
Commissioner for a period exceeding 20 years from the date of 
the patent pursuant to an application for the extension of the 
term of the patent made before the commencement of this 
Act. 
19. Repeal of section 24 (4) of Health Refornls 
(Transitional Provisions) Act 1998-Section 24 (4) of the 
Health Reforms (Transitional Provisions) Act 1993 is hereby 
repealed. 
This Act is administered in the Ministry of Commerce. 
WELLINGTON, NEW ZEALAND: Published under the authority of the 
New Zealand Government-1994 
59512F-94/NS 