New Zealand patent, trade mark and design regulations amended

Legislation was passed by the New Zealand Government on 5 March 2018 introducing amendments to the Patents Regulations 2014, the Trade Mark Regulations 2003, the Trade Marks (International Registration) Regulations 2012, and the Design Regulations 1954.

These amendments will allow for an address for service to be provided in Australia or New Zealand for patent, design and trade mark matters.

Substantive changes made to the Patent Regulations 2014, include:

  • Only form requirements will need to be satisfied for documents to be considered filed due to revocation of regulation 19(2)(b).
  • The requirements regarding the respective content of divisional and parent patent applications will be applied at the acceptance of specification stage, rather than the application stage due to revocation of regulation 52(3) and amendment of regulation 82. This will make it possible to file divisional patent applications that include claims for substantially the same matter as claimed in the parent application at the time of filing.
  • The prescribed period in regulation 59 for meeting the deposit requirements for micro-organisms will now be the same as the period for putting an application in order for acceptance.
  • The time limit in regulation 61 for amending documents forming part of the complete specification will be changed from 19 months to 22 months in line with revised international requirements.
  • Regulations 103, 104 and 161 are amended to clarify that the period for filing a counter-statement to an application for revocation of a patent may also be extended under regulation 161 in certain situations. This will make extensions possible under both regulations 103 and 161 in certain circumstances, and either 1 or 2 extensions will be possible pending on which regulation the first extension application is made under.

The amendments are to take effect as of 5 April 2018.

If you have any questions about these changes, please contact us at

Michelle Blythe, Trainee Patent Attorney

Michelle Blythe, Former POF Attorney

BBiomed MEng MIPLaw

Michelle has a background in biomedical science and a master’s degree specialising in biomedical engineering. During her undergraduate study, Michelle completed an internship at the Ludwig Institute for Cancer Research investigating colorectal cancer protein mutations in the Wnt signalling pathway. Her master’s project was completed with the Bionics Institute, focusing on automated processing of histological images to assess neuron viability. After completing her studies, Michelle held a position as a Biomedical Engineer at St Vincent’s Hospital Melbourne.