How to commence a proceeding or file a proceeding document

How to commence a proceeding

1. Log into our case management facility using your user ID.
2. Select the Proceeding menu on the left hand side of the screen and select the relevant proceeding type Lodge procedure link.
3. Enter the relevant information and documents and click Submit.

You will receive confirmation on screen when you have successfully filed your proceeding. You will also receive a confirmation email message that includes the new proceeding case number.

All hearing correspondence must be filed via the IPONZ case management facility

Once a proceeding is filed, all further correspondence between the Hearings Office and the parties must be communicated via the IPONZ case management facility.

When the Hearings Office serves a document on a party (such as notifying a patent applicant of a notice of opposition), or sends any official correspondence, both parties will receive a ‘discussion’ via an email message directing them to log into the case management facility so they can securely view the new document(s) and/or correspondence. Please note that the documents and/or correspondence will not be sent via email.

While the Hearings Office communicates with both parties so they know what is happening, only the party who is required to do the next step in the proceeding will receive a ‘task’ in their inbox. A task sets the deadline by which the next step, e.g. filing a counterstatement, must be completed.

Filing proceeding documents and/or evidence by responding to a ‘task’

A ‘task’ can be viewed in a party’s inbox by logging into the case management facility. To respond to a task the party must file the requested document(s). The proceeding case can be found using the ‘Search Tasks’ area of the inbox.

To respond to the task, select the task name – e.g ‘File proceeding Document Counterstatement’.

Click the ‘Add’ button then select the document type heading from the dropdown menu that best describes your document.

Select your document by clicking the Select Files button. Once it has finished downloading select Continue in the bottom right hand corner of the screen to move back to the main form. Large documents will need to be split up into parts if they exceed the upload limit. You can upload multiple documents of each type.

Once you have uploaded the required document(s), click Submit.

You will receive a notification via email if your upload was successful.

If a task deadline is missed:

• the task is withdrawn from your inbox; and
• IPONZ will administer the proceeding in accordance with the consequences of missing that deadline as set out in the relevant legislation.

Filing a proceeding document that has not been requested

It is important that you upload your hearing documents by responding to a ‘task’ in your inbox wherever possible. This will avoid the consequences of not responding to the ‘task’ by the deadline.

However, in those rare instances where you don’t already have a ‘task’ to respond to you can select the option ‘File Proceeding Document’. To do this, open select the option ‘Proceeding’ from the left hand side navigation bar in your main Inbox page then select the option ‘File Proceeding Document’.

Once you have selected the ‘File Proceeding Document’ option the process for uploading your document(s) is the same as for responding to a task above.

For example, this option can be used to:

• file consent to an extension of time or halt in the proceeding;
• file an application to admit late evidence; or
• advise IPONZ of other information that is relevant to the proceeding.

Note:

You should only use this option if you do not have a task for the proceeding in your inbox.

How to check if your documents have uploaded

If you are unsure whether your documents have uploaded to the case management facility you can easily self-validate this. Simply go into the proceeding case and select the ‘documents’ tab under the case title at the top of the screen. All documents that have successfully uploaded will display in real time (with the exception of confidential evidence). You can open these documents to check if you have uploaded the right one.

Confidential evidence

If a party wishes to file confidential evidence, it must do so by selecting the document type “confidential evidence” when using IPONZ’s online case management facility. By selecting this document type the confidential evidence will remain visible only to IPONZ. IPONZ will not make the confidential evidence visible to the other party until:

• the party who filed it has authorised IPONZ to do so, normally once it has received an undertaking from the other party limiting how the “confidential evidence” will be used; or
• the Commissioner directs that the “confidential evidence” be made accessible to the other party, or specified representatives of the other party.

To avoid confusion, parties should file confidential evidence in a separate stand-alone declaration or affidavit that is clearly marked “confidential”.

The general principle is that evidence cannot be relied on unless it is made available to other parties to the dispute. Usually, this means that it must be made available without restriction, unless the parties have agreed otherwise or there is a direction to that effect

Search for your proceedings case

You can search for your proceeding cases as follows:

1. Log into the IPONZ case management facility. If you are not a registered user of our online service, see how to register.
2. Select the Proceeding menu and then Search Proceedings Case.
3. You can search by:
• Related IP Case (patent application or registration number)
• Case Number (this is the proceeding case number)
• proceeding applicant’s Client Reference number
• Case Status – finds all types of proceedings by their current status
• Submission Date.

Recording yourself as an agent for the owner in a proceeding case

To represent the owner of a patent application or registration in a proceeding you must first add yourself as the agent for the related IP case (patent application or registration case) to which the proceeding relates. This will provide access to the linked proceeding case, which has its own unique case number. Once you have done this you will have access to the tasks and discussions for the proceeding on behalf of the owner.

To record yourself as an agent:

1. Select the appropriate division heading in the left hand navigation bar, in this case patents.
2. Select Maintain then select Change Agent.
3. Search for and select the IP case that you wish to be recorded as the agent. The Request Change of Agent screen displays.
4. If there is no agent on record for the IP case, select the option Replace current Agent(s) to current Agent(s). Click Search in the Agent Details field to find and submit yourself as the new agent.
5. If, however, the existing agent on record has asked you to act for the owner in the proceeding case only then select Add selected Agent(s) to current Agent(s) to add yourself as a second agent on the IP case. Click search in the Agent Details field to find and submit yourself as the second agent on record.

Note:
It is important that under the Agent Details field you select the option Change Contact Details. Only by entering yourself as the new contact for the IP case will you be given access to the related proceeding case and have access to all the tasks and discussions in your inbox for that proceeding.

When the proceeding is over you will need to go through the same process to Request Change of Agent, although this time you will need to remove yourself as the second agent. The original agent then defaults to the case contact.

Recording yourself as the agent for the party who launched the proceeding

To represent the party who launched the proceeding (for example the opponent or applicant for revocation) you must contact the IPONZ Hearings Office by telephone or email hearings@iponz.govt.nz and request that they add you as the agent.