2016/01: Updates to Patent Examination Manual

Section 8 Meaning of prior art base

The information relating to the whole of contents novelty under section 8(2) has been updated.

The types of document that would be considered to be ‘another patent application’ have been amended:

1. A patent application made under the Act (see section 5 ‘patent application’) and published under section 76; and
2. A published international PCT application which designates New Zealand whether or not it enters the national phase in New Zealand.

The criteria which must be met before raising a lack of novelty objection under section 8(2) have also been updated.

The sections on Prior Use and Prior Secret Use have been amended to expand on prior use, and remove minor inconsistencies.

Section 40 Amendment of complete specification before acceptance

This is a new guideline in the Examination Manual and reflects the practice relating to amendments to a complete specification before acceptance.

The guideline provides information on the more frequent types of amendment, documents and information which are required to accompany a proposed amendment to a complete specification, the amendment fee and the requirements of regulation 58.

Section 230 Commissioner may extend time limits for delays by Commissioner 

The information relating to extension of time periods due to delay by the Commissioner has been updated to provide more information on delays arising during examination and noting that section 230 may be applied as part of the hearing process. A number of minor clarifications and expansion on various details of the original guideline have also been made.

An extension of the section 71 period may be provided where a new objection is raised late in the examination process, and where the objection could reasonably have been raised at an earlier point in the examination process.

The practice guideline has been updated to reflect that where an examination report is issued more than 20 working days after the date of filing of a response to an earlier examination report, then the section 71 period to place the application in order for acceptance will be extended providing there were more than 20 working days remaining in the section 71 period at the time of filing the response. The extension of time will be applied and reported in the examination report which was subject to the delay.

This supersedes the previous indication that the time period to place the application in order for acceptance will only be extended within the last 20 working days of the section 71 period.

Any extension of time granted under section 230 will be notified in the Journal.