In this practice guideline
Regulations 38-44: Agent changes
This document provides guidelines on agents under the Patents Act 2013. It discusses the types of change agent requests, and what documentation may be required for each.
Instructions on how to file such requests can be found on our Maintain a Patent page.
1. What is an agent?
1. Regulation 3 of the Patent Regulations 2014 defines an agent. Regulations 38 and 39 relate to the ability of an applicant or patentee to be represented by an agent.
Regulation 3 of the Patent Regulations 2014
2. The trans-Tasman patent attorney register records the names of all patent attorneys registered in New Zealand and Australia. For more information about patent attorneys and the trans-Tasman patent attorney register, please visit our patent attorney information page.
3. Regulations 41 and 42 relate to whom may be recognised as an agent; this excludes anyone who does not reside nor carry on business in New Zealand or Australia.
Regulation 41 of the Patent Regulations 2014
Regulation 42 of the Patent Regulations 2014
Is the agent a registered NZ/AU Patent Attorney?
4. The Office will check the Trans-Tasman IP Attorneys Board (TTIPAB) web page only if the agent is unknown to the Office. The registered patent attorney must be a “patent” attorney in the TTIPAB register and not an “Australian trade marks” attorney.
Trans-Tasman IP Attorneys Board website
5. If the agent is not a registered patent attorney, then the change of agent request will be declined unless the patent has been granted and there are only administrative tasks left to complete, such as paying renewal fees.
6. If an agent who is not a registered patent attorney is found to be operating as one, the office will require an explanation of their actions. Section 274 of the Patents Act 2013 outlines the Offences for an unregistered person or company practising as a patent attorney.
Section 274 of the Patents Act 2013
7. Under regulation 34 the Address for service requirement must be supplied for the agent. A valid address for service can be a business or residential address, post office box or document exchange box located in New Zealand or Australia.
Regulation 34 of the Patents Regulations 2014
2. Appointing or changing an agent
8. The different types of change agent requests are:
- Appointment of agent/change of agent
- Revocation of authority by owner
- Revocation of authority by agent
3. Appointment of agent/change of agent
9. When a patent application or granted patent has a change of agent, the new agent should make a change of agent request as soon as practicable. Once the change of agent is accepted by the Office, the previous agent will be notified.
10. If the previous agent raises concerns about the change, then the Office may consider this to be a dispute between the parties.
11. A patent application or granted patent case can only have one agent/case contact. If a change of agent request is for a second agent for a patent or patent application, then the request will be declined.
12. The requirements of regulation 40 may be met by the information recorded in the request made via our case management system, or by the documents provided with the request.
13. An authorisation of agent is generally not required for an agent to record change of name or address or to pay a renewal fee on behalf of the owner. However, the Office may require one if the Commissioner is not satisfied with what has been provided.
14. The appropriate authorisation for a change of agent request is one of:
a) An authorisation of agent form signed by the owner(s) (in line with regulation 40).
b) An authorisation of agent form signed by the agent, provided it is accompanied by an explicit statement to effect that the agent has been authorised by the owner to act as agent on file for the case in question (in line with the Technical Focus Group meeting of 12 November 2020).
c) An explicit statement from the agent or the owner to effect that the agent has been authorised by the owner to act as agent on file for the case in question (in line with Technical Focus Group meeting of 20 October 2017). This explicit statement can be in the cover letter from the new agent, or it can be a separate email or similar correspondence from either the owner or the new agent.
Regulation 40 of the Patent Regulations 2014
Patents Technical Focus Group meeting, 12 November 2020
Patents Technical Focus Group meeting, 20 October 2017
15. For the options b) and c): The Office may still require an authorisation of agent document, if the Commissioner is not satisfied with what has been provided.
16. For agents involved in change of ownership requests – please visit our guidelines on Changes of ownership.
Sections 129 and 165: Changing the Ownership of Patents or Patent applications
General authorisation of agent
17. General powers of attorney/general authorisations are no longer accepted under the Patents Act 2013, as the authorisation should be in accordance with regulation 40(3). However, a general authorisation may be accepted if the patent numbers are provided with the general authorisation, for example in a separate document filed with the general authorisation.
4. Revocation of an agent by a patent applicant or patentee
18. A change of agent request by an applicant or patentee revoking an agent authority should meet the requirements of regulation 43.
Regulation 43 of the Patent Regulations 2014
19. The requirements of regulation 43 may be met by the information recorded in the request made via our case management system, or by the documents provided with the request.
20. This type of change agent request must be from an applicant or patentee, otherwise the request will be declined. Further, the patent applicant or patentee should be listed only as the case contact in the change of agent request. If the patent applicant or patentee is listed as the agent in the change of agent request, it will be declined.
21. The request should be accompanied by a statement that the agent’s authority is revoked.
22. An address for service of the patent applicant or patentee is required under regulation 34. If no valid address for service is provided for the case contact, the request will be declined.
Regulation 34 of the Patent Regulations 2014
23. Once the change of agent is accepted, the agent is notified that they are no longer the agent on file.
5. Revocation of authority by Agent
24. A change of agent request by the agent revoking their agency of a patent application or a patent should meet the requirements of regulation 44.
Regulation 44 of the Patent Regulations 2014
25. The requirements of regulation 44 may be met by the information recorded in the request made via our case management system, or by the documents provided with the request.
26. The change of agent request must be from the agent and be accompanied by a statement that the agent’s authority is revoked, otherwise the request will be declined. Further, the patent applicant or patentee should be listed as the case contact only in the change of agent request. If the patent applicant or patentee is listed as the agent in the change of agent request it will be declined.
27. An address for service of the patent applicant or patentee is required under regulation 34. If no valid address for service is provided for the case contact the request will be declined.
Regulation 34 of the Patent Regulations 2014
28. Once the change of agent is accepted, the patent applicant/patentee is notified that they are now the case contact.
Case statuses:
29. A change of agent request can only be completed for a live patent or patent application (filed, under examination, accepted or granted).
30. For patents or patent applications under a proceeding the Hearing Office will be consulted before the change of agent request is processed.
31. For withdrawn patent applications or expired, or revoked patents: A change of agent request is not allowed.
32. For closed provisional patent applications: A request for a change in agent will only be allowed if an identical change in agent request is concurrently made or has previously been made to an associated complete after provisional patent application.
33. For abandoned patent applications and lapsed patents: A request for a change in agent can be submitted in our case management system to allow the new agent to apply for restoration.
6. Other requests:
34. When requesting a change of agent, further additional changes to the name or address may also be included and processed at the same time. However, the Office will decline any change of agent request that solely involves the correction of an error or a change of name or address.
Correction of errors
35. If the change agent request relates to a correction of error in the agent on file for a patent application or granted patent, then a correction of error request should be filed. For more information on requesting a correction of error, please visit our Maintain a Patent page.
Change an agent’s name or address
36. A change of an agent’s legal name should be made as a change of name in our case management system. For more information on how to change a name of a party, please visit our Maintain a Patent page.
37. A change of an agent’s address should be made as a change of address in our case management system. For more information on how to change an address of a party, please visit our Maintain a Patent page.