Sections 200-202: Correcting errors or omissions

Changes to patents register and other official documents

200 Changes to patents register

The Commissioner may make changes to the patents register in accordance with this Act or the regulations.

201 Commissioner may correct own mistakes in patents register, etc

(1) The Commissioner may correct an error or omission that the Commissioner is satisfied has been made by the Commissioner in—

(a) the patents register; or

(b) any patent; or

(c) any other document issued under this Act.

(2) The Commissioner must, before making the correction,—

(a) give notice that the Commissioner proposes to make the correction to persons that the Commissioner thinks have an interest in it; and

(b) give those persons a reasonable opportunity to be heard.

(3) The Commissioner may require production of the patent or other document to make the correction.

Compare: 1953 No 64 s 88(1), (2)

202 Commissioner may correct other persons’ mistakes in patents register, etc

(1) The Commissioner may (on application by any person or on the Commissioner’s own initiative) correct an error or omission that the Commissioner is satisfied has been made by any person in—

(a) the patents register; or

(b) any patent; or

(c) any patent application; or

(d) any documents filed in connection with a patent application or filed in proceedings before the Commissioner in connection with a patent or patent application.

(2) Any person (whether or not that person made the error or omission) may apply for a correction under this section in the prescribed manner.

(3) The Commissioner must, before making the correction, publish in the journal the nature of the proposed correction if the Commissioner thinks that—

(a) the correction would materially alter the meaning or scope of the document to be corrected; and

(b) it ought not be made without notice to persons who have an interest in it.

(4) If a person gives notice within the prescribed time to the Commissioner of opposition to the application for the proposed correction, the Commissioner must, before deciding the matter,—

(a) give notice of the opposition to the applicant (if any); and

(b) give the applicant (if any) and opponent a reasonable opportunity to be heard.

(5) This section does not apply to an error or omission by persons referred to in section 201(1) or to an error or omission in a complete specification (see section 40 and subpart 8 of Part 3 for amendments to complete specifications).

Compare: 1953 No 64 s 88(3), (4)

Summary of sections 200-202

1. Section 200 provides for the Commissioner to make changes to the patents register, including corrections and changes other than corrections. However, in this guideline and in IPONZ website information the term ‘changes’ typically means alterations which are not corrections. This is further discussed below.

2. Section 201 provides for the Commissioner to correct mistakes made by the Commissioner (IPONZ).

3. Section 202 provides for the Commissioner to correct mistakes made by anyone other than the Commissioner. 

Part 1: Section 201/202: Correcting mistakes generally

4. This Part 1 discusses correcting mistakes generally under sections 201 or 202. Part 2 and Part 3 discuss correcting mistakes more specifically for respective section 201 and 202.

Any person may request correction under section 201 or section 202

5. Any person may request correction under section 201 or section 202, or the Commissioner may discover the mistake and make the appropriate correction. 

What is a ‘mistake’

6. A ‘mistake’ means an error or omission existing in documentary items specified in s201(1) or s202(1). This is discussed further in Parts 2 and 3.

7. The Commissioner may correct only the items specified in section 201(1) or section 202(1).

8. Such mistakes may have been due to transcription errors, spelling mistakes or omissions made in on-line documents. 

Identifying the mistake and justifying the correction 

9. A request for correcting mistakes should identify what the specific mistake is, and specify what correction is being sought.

10. The request should establish:

• the relevant item or items of section 201(1) or section 202(1);
• the specific error(s) or omission(s); and
• the proposed correction to be made.

11. The request should also establish that the proposed remedy is the correct one. ¹ This may be by reference to associated documents and/or by way of evidence (see Part 3 for evidence requirements). 

How correction is requested via the case management facility (CMF)

12. The IPONZ case management facility (hereafter referred to as CMF) allows anyone who is a registered user to access the case management facility to complete an online request form.  

13. The IPONZ CMF allows the user to advise IPONZ of a mistake requiring correction by selecting the Patent > Maintain a Patent > Amendment/Correction of Error module and searching for the case number to be corrected. 

14. However, the CMF restricts access to users who are not a case contact for a particular application. Any user who is not associated with the patent will not be able to select the s.201 radio button. These users should use the default s.202 radio button.

15. Applicants/patentees or agents associated with the patent should select the s.201 radio button where the mistake has been made by the Commissioner, or the s.202 radio button where the mistake has not been made by the Commissioner. 

16. In either case IPONZ will determine whether the correction is to be made under section 201 or 202 and proceed accordingly.

Care is required in making the request for correction in the CMF

17. The same IPONZ CMF page is used for requesting corrections of error under either section 201 or section 202, or voluntary amendments to a complete specification pre- or post-acceptance, so care should be taken to select the right option. This ensures correct processing and may avoid a request being declined. 

Distinguishing ‘mistakes’ from ‘changes’ in the CMF

18. Documentary items of section 201 or section 202 which contain errors or omissions are deemed ‘mistakes’. Errors or omissions contained in such items at time of entering in register, issuing by the Commissioner, or filing by the applicant may qualify as mistakes. Examples include spelling errors in applicant or inventor name, or address data. Corrections should be sought under section 201 or section 202 as appropriate. A request for correction via ‘change’ options of the IPONZ CMF will be declined. 

19. Conversely, documentary items merely requiring updating due to assignment, moving to a new address, etc are considered ‘changes’ in the CMF, not ‘mistakes’. The IPONZ CMF provides appropriate options to request such ‘changes’. (See the Maintain a patent information on the IPONZ website.) A request under section 201 or 202 will be declined.

Part 2: Section 201 - Correcting mistakes made by the Commissioner

20. This section applies only to mistakes made by the Commissioner. See Part 3 for mistakes made by any person other than the Commissioner.

Request requirements under section 201

21. See Part 1 for request requirements generally. 

22. There are no regulations specific to section 201. 

What may be corrected under section 201

23. What may be corrected is specified under section 201(1)(a) to (c), That is, an error or omission that the Commissioner is satisfied has been made by the Commissioner in:

• the patents register; or
• any patent; or
• any other document issued under this Act

How correction is made and notified under section 201

24. The Commissioner will provisionally correct a mistake that has been made. Any person that may have an interest will be notified. They will have the opportunity to object to the correction and be heard on the matter. 

25. If the person that reported the error is the applicant or patentee, the response from IPONZ may be the only notification. Otherwise, the notification is usually by publication in the journal. 

Examples of mistakes that may be corrected under section 201

I. Incorrect examination report issued

An examination report is issued with an incorrect reference to prior art. The report is re-issued with the reference corrected.

II. Incorrect patent certificate issued

A patent certificate is issued omitting necessary information due to a mistake by the Commissioner rather than a ‘flow on’ error caused by incorrect data entry by the applicant. A patent certificate is re-issued with appropriate correction. 

III. Manual alteration of register entry includes incorrect information

A register entry is altered manually by IPONZ staff to include incorrect information. This is corrected by the Commissioner.

IV. CMF update results in an error in the register

A CMF update results in an error in the register. This is corrected by the Commissioner.

Part 3: Section 202 - Correcting mistakes not made by the Commissioner

26. This section applies only to mistakes not made by the Commissioner. See Part 2 for mistakes made by the Commissioner.

Request requirements under section 202

27. See Part 1 for request requirements generally. 

28. Regulation 136(1) requires that an application for correction of an error or omission must include:

• a statement that identifies where the error or omission is thought to have been made;
• either a description of the error or omission or a copy of the relevant document with the error clearly identified; and
• any evidence needed to support of the request. 

29. The request should establish:

• the relevant item or items of section 202(1);
• the specific error or omission;
• the proposed correction to be made;
• that an error or omission did in fact happen, and;
• that the proposed correction is the proper remedy.  

30. Regulation 136(2) allows the Commissioner to require the applicant to file further evidence, and regulation 136(3) requires that the applicant must file that evidence within 3 months from the date of the original request for correction of error.

31. The evidence should be provided in accordance with regulation 144.  See the Hearings Evidence guidelines for more information about statutory declarations and affidavits, and who may take (witness) them. 

What may be corrected under section 202

32. Section 202(1) has a set list of documentary items which may be corrected under this section. They include:

(a) the patents register; or

(b) any patent; or

(c) any patent application; or

(d) any documents (other than a complete specification) filed in connection with a patent application or filed in proceedings before the Commissioner in connection with a patent or patent application. 

33. The requestor must substantiate that the mistake occurred in at least one of these items. ²

34. It should be stressed that the Commissioner may correct mistakes in only these items. ³

35. One document that is specifically excluded is a complete specification, as discussed below. 

36. A provisional specification is not excluded and may be corrected by way of amendment. Where new matter is added, post-dating of the application and specification under section 33(5), will be required. ⁴

37. However, a post-dated provisional specification intended to serve as priority basis for an overseas convention application or PCT application may not be recognised in some convention countries as the first application for protection. 

What may not be corrected under section 202

38. Requests are considered on a case-by-case basis. However, the request may be declined where an applicant or agent misses a deadline without good reason, or an agent advises a course of action and realises belatedly that this was detrimental. ⁵

Mistakes must be of a documentary character

39. Section 202(1)(a) to (d) relates to mistakes of a documentary character. ⁶ For example, a misspelt applicant or inventor name in an online patent application form relates to a mistake in a document under section 202(1)(c). 

A correction in a complete specification is not permitted 

40. Section 202(5) excludes correction of an error or omission in a complete specification. Errors or omissions in a complete specification must be corrected by requesting amendment of the complete specification. Section 40 applies to such amendments before the application is accepted, and sections 83-89 apply once the complete specification is accepted.

41. If a page or passage is inadvertently omitted from a complete specification, then even though this is clearly an error and contrary to the intention of the applicant, the applicant must request amendment of the complete specification as above. A request to re-insert the page or passage as a correction of an omission under section 202 will be declined as per section 202(5). The applicant or agent should re-check that the specification uploaded is correct and complete before submitting. 

When the wrong complete specification is filed

42. A patent application submitted with a wrong version of a complete specification may not be corrected under section 202. Such correction is deemed to be an amendment which must be sought under section 40, and not section 202. 

43. What may be allowable depends on the type of application, as follows: 

• A Treaty application enters national phase with the wrong complete specification. ⁷ The applicant may seek amendment as above by filing the intended replacement specification. Post-dating under section 33(5) will be required only where the intended specification has new matter over what was disclosed in the specification filed with the Treaty application during the international phase. ⁸
• A non-Treaty application is filed with the wrong complete specification. The applicant may seek amendment as above by filing the intended replacement specification. Post-dating is required for new matter. 
• A divisional application is filed with the wrong specification. The applicant may seek amendment as above by filing the intended replacement specification. Post-dating is required for new matter. However, if requirements of section 34 are met, antedating will be allowable. 

Mistakes made contrary to instructions from the applicant

44. Mistakes in a document made by a person contrary to clear instructions from the following persons may be corrected: ⁹

• the applicant/patentee; or
• a person acting as ‘directing mind’ authorised to act on behalf of the applicant/patentee

45. The mistake must be appropriately substantiated. Appropriate evidence is typically required.

46. In such cases, so far as it is necessary to do so, the Commissioner will correct the register and provide waivers so that the applicant may achieve what they have instructed their agent to do. 

How correction is made and notified under section 202

47. Before the correction is made the Commissioner must publish the nature of a correction in the journal if the Commissioner thinks that:

• the correction would materially alter the meaning or scope of the document to be corrected; and
• the correction should not be made without notice to persons who have an interest in it. 

48. The Commissioner will generally not publish corrections of the type that do not materially alter the meaning or scope of the document or are already known to anyone who may have an interest in the correction.

49. In practice, the correction will be made provisionally when the Commissioner approves the request. If the correction is not opposed, then the correction is already made. If the correction is opposed, the provisional correction is either rescinded or made depending on the outcome of the Commissioner’s decision.

Opposition to proposed correction

50. Regulations 137, 138 and 139 state procedure to be followed, if an application for correction by someone other than the Commissioner is opposed. 

51. Any person may oppose the application for correction. They must notify their opposition within 2 months of the publication of the proposal. 

52. Regulation 140 states procedure to be followed, if a proposal for correction under section 202 is initiated by the Commissioner.

The Commissioner may refuse to correct a mistake

53. The Commissioner may refuse to correct a mistake if:

• the mistake is not in one of the stipulated items; or
• the proposed correction will not correct the mistake; or
• the evidence or information supplied does not support the proposed correction or does not support that a mistake is present; or
• the application for correction is successfully opposed; or
• if the proposal to correct is initiated by the Commissioner, and the proposal is successfully opposed.

Examples of mistakes that may/may not be corrected under section 202

I. Filing an incomplete complete specification

A page is omitted from a complete specification document filed with IPONZ for a patent application. The missing page may have been a page of the written description or a drawing.

Section 202(5) specifically excludes correcting this error under the provisions of section 202. What may be done to correct this error was discussed previously. 

II. Filing an incomplete provisional specification

In this example, a page is missing from a provisional specification. The applicant applies under section 202 to correct the provisional specification by incorporation of the missing page in a replacement provisional specification. 

This example meets the criteria for correction under section 202. 

Since the correction adds new matter the application and provisional specification will require post-dating under section 33(5). The correction may be published but only if the application is open to public inspection. ¹⁰

III. Correcting an error in an applicant’s or inventor’s details 

A patent application has an error in the name of the applicant. Evidence or information filed establishes the name was misspelt on transcribing from another document and how the name should be spelt. The correction is made, and the applicant is informed that it has been made. The correction is not published because no opposition would be justified. 

Similar considerations apply when a request is made to correct the misspelling of an inventor’s name.

IV. Order of inventor names in the register

A request is made to correct the order of listing of the inventors in the register. The request will be declined. The default display in the register shows the inventors by alphabetical order of their last names (for last name format) or first names (for first name format). This default setting cannot be subsequently changed.

V. Adding or deleting inventors ¹¹

An inventor is omitted from a patent application. Evidence or information filed in the request to correct the application establishes that the correction is appropriate. The inventor’s name and address may be added to the patent record as a correction. The correction is typically published in the journal, except when allowed and published during the international phase for a Treaty application. 

Similar considerations would apply to an application to remove an inventor from a patent application. Here, IPONZ may require evidence to establish that the correction is appropriate. For example, evidence from the inventor may be required. 

Mistakes in recording inventor details and entries are common and correction should be requested under section 202, though it should be clear that a mistake has been made. 

A request to be mentioned as an inventor under section 190 and regulation 126 does not qualify as correction of error under section 201 or section 202.  

Footnotes

• 1 See Waitaki Farmers' Freezing Company Limited v Cyclone Industries (N.Z. Limited) [1963] NZIPOPAT 1, “test B”.
• 2 Waitaki Farmers' Freezing Company Limited v Cyclone Industries (N.Z. Limited) [1963] NZIPOPAT 1
• 3 See for example Fisher & Paykel Limited [1995] NZIPOPAT 6, Baxter Healthcare SA [2011] NZIPOPAT 2 and American Aerogel Corporation [2011] NZIPOPAT 3.
• 4 As per regulation 145 and the UK Patent Office Manual of Office Practice (Patents) 1974, 6,30 to 6,32.
• 5 Primapak LLC [2019] NZIPOPAT 1 (7 January 2019), at [44]
• 6 Re Rainsford Pty Ltd [2003] 2 NZLR 490, (2003) 10 TCLR 759, at [37]. Section 29(3) of the Designs Act 1953 is almost identical to section 88(3) of the Patents Act 1953. Section 202 of the Patents Act 2013 has similar relevant content.
• 7 This example assumes the correct (intended) international application number has been used at national phase entry. If the number is incorrect (unintended) then the applicant may withdraw the New Zealand application and make a fresh national phase entry request using the correct number and intended specification.
• 8 See sections 46 to 48 which provide for a Treaty application being treated as a patent application accompanied by a complete specification for the purposes of the Patents Act.
• 9 Primapak LLC [2019] NZIPOPAT 1 (7 January 2019), at [43] to [47], including reference to Textron Inc’s Patent [1989] RPC 441.
• 10 See section 80.
• 11 IPONZ considers inventive contribution should relate to matter disclosed in the overall relevant specification filed, not just matter included in the claimed invention(s). Thus, a divisional application with a complete specification copying over all disclosed matter of the parent complete specification should have the same inventors. This is regardless of differences between claims of parent and divisional complete specifications where separate inventions may be claimed.