Pre-hearing directions

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Intellectual Property Office of New Zealand

Patent hearings

In this guideline

Pre-hearing directions

What are pre-hearing directions?

Once the evidential rounds of proceedings are concluded, the Commissioner has the power to issue directions to make arrangements for the hearing pursuant to the Patents Act 1953, Patents Regulations 1954, and regulations 170(b), (e), and (f) of the Patents Regulations 2014.

Purpose of standard pre-hearing directions

The purpose of the Commissioner’s standard pre-hearing directions outlined below is to ensure hearings run efficiently and smoothly, and that any evidential or pleading issues are identified well in advance of the hearing.

When the standard pre-hearing directions apply

In inter partes proceedings, where the parties have professional representation, the standard directions will apply unless the Commissioner advises otherwise. The Commissioner does, however, retain discretion to amend the directions in consultation with the parties to take into account the particular circumstances of a case. Please note that the Commissioner may choose to modify or dispense with the standard directions to accommodate self-represented parties who may not be comfortable with this level of formality.

The directions do not apply to undefended proceedings, or proceedings where both parties have elected to be heard on the basis of the papers as filed.

The Commissioner’s standard pre-hearing directions

The Commissioner’s standard pre-hearing directions are as follows:

Direction 1: Request for information from parties

Once the evidential stages of the proceeding are complete the Hearings Office will write to the parties setting a deadline of 4 weeks to: 

  • Indicate how they wish to be heard (whether the case involved is under the Patents Act 2013 or the Patents Act 1953);
  • Confirm who will be representing the party at the hearing, and of any likely additional attendees including additional representatives of the parties, other members of the firms representing the parties, or members of the public at large including reporters;
  • Raise any evidentiary issues;
  • Advise if any grounds or matters pleaded will not be pursued at the hearing;
  • Indicate if the parties are pursuing settlement negotiations;
  • Request consolidation of proceedings, or that multiple proceedings be heard together/consecutively;
  • Invite the parties to confirm whether they wish to be placed on the shortlist for hearings to be heard at short notice; and
  • Confirm that notification has been provided to the Solicitor-General, if the validity of a patent is being questioned.

Once this deadline has passed, the case will become ready for a hearing.

For more information, please see the following pages:

Optional step: Case management conference may be required

Should the parties raise any issues in response to the Commissioner’s pre-hearing directions above, a case management conference may be convened to deal with them. Please note that case management conferences will be reserved for dealing with matters that are out of the ordinary, or for agreeing on hearing procedure.

Any issues with evidence or pleadings will, where applicable, be dealt with under the relevant regulatory processes, e.g. requests to file evidence out of time or to amend pleadings.

Direction 2: Setting of hearing date

If either party has elected to attend a hearing in person, the Hearings Office will write to the parties to arrange a hearing date. The Hearings Office will normally offer two possible hearing dates. If both parties have requested a hearing by appearance, it is expected they will agree between themselves as to their preferred hearing date and notify the Hearings Office accordingly. If the parties cannot agree, the Hearings Office will direct the hearing date.

The Hearings Office will only offer alternative hearing dates if there are good reasons why a party is unable to attend either of the dates offered. The Hearings Office will expect reasons to justify the need for an alternative hearing date and such requests will be considered on a case by case basis.

If both parties have elected to be heard by way of written submissions, they will be notified of the hearing date and deadline for payment of the hearing fee prior to passing the case to the Assistant Commissioner for their decision. The Hearings Office will set appropriate dates to allow for sequential submissions. The initiating party will be required to file their written submissions 5 working days prior to the hearing date, and the Applicant or Owner must file their written submissions on the hearing date.

If one party has elected to be heard by way of written submissions, and the other on the papers, both parties will be notified of the hearing date. However, only the party who is filing written submissions will be required to pay the hearing fee. Once the submissions have been filed by the relevant party, the case will be passed to the Assistant Commissioner for their decision.

Direction 3: Directions for hearings by attendance of at least one party

Once a hearing date has been scheduled the parties must comply as follows: 

  1. At least 20 working days prior to the hearing:
    • The parties must consult on the documents from the official record to be included in the common bundle of documents. The aim is to limit the common bundle to those documents or parts of documents that will be referred to at the hearing.
    • By way of example, if sections of a statutory declaration are to be referred to at the hearing then usually the whole of the text of the statutory declaration should be included. But if only some of a number of exhibits are to be referred to at the hearing then only those exhibits to be referred to should be included in the common bundle. A practical approach is encouraged.
    • The fact that a document from the official record has been omitted from the common bundle does not prevent a party from referring to that document in its submissions or at the hearing.
    • If the parties do not agree on whether a document should be excluded, the document must be included but the fact of the disagreement must be noted and may be taken into account for the purpose of fixing costs.
  2. 10 working days prior to the hearing the initiating party must:
    • file and serve their written submissions;
    • advise of any special hearing / technology requirements;
    • file and serve a list of authorities that it intends to rely on, excluding frequently cited cases; and
    • file and serve the common bundle of documents. The common bundle is to be indexed. Pagination is at the initiating party’s discretion.
  3. 5 working days prior to the hearing the responding party must – if attending or filing written submissions:
    • file and serve their written submissions;
    • advise of any special hearing / technology requirements;
    • file and serve a list of authorities that it intends to rely on, excluding the initiating party’s list and the frequently cited cases.
  4. Within two days of receiving a request, a party must serve an electronic copy of any authorities in its list of authorities requested by the other party.
  5. The hearing fee must be paid:
  6. Prior to the commencement of the hearing each party will provide the Assistant Commissioner with an indexed hard copy of its bundle of legal authorities. 

Failure to comply with pre-hearing directions 

Any failure to comply with the Commissioner’s pre-hearing directions will inevitably result in unnecessary delays or costs in the proceedings, and is likely to result in costs implications. See cost guidelines.

 

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