Notes for Overseas Associates

New Zealand Patents

Applicant- Inventor or his assignee; assignee may be individual(s) or a corporation. Two or more parties may apply jointly.
Novelty- Local novelty i.e. no publication or use of invention in New Zealand before date of filing application in New Zealand or convention priority date (whichever is earlier).
Examination- Takes place automatically without formal request. Examination covers formal matters, unity of invention, novelty and prior claiming.
Acceptance- Application must be in order for acceptance within 15 months of date of first official action, 3 months extension available.
Publication- After acceptance. Abridgement of specification published in Patent Office Journal, and copies of text of specification available from Patent Office.
Opposition- May be lodged within 3 months (1 month extension) of date of publication of Patent Office Journal containing abridgement.
Term- 20 years from date of filing complete specification, subject to payment of renewal fee on the 4th, 7th, 10th and 13th anniversaries of date of filing complete specification.
Marking- Not compulsory, but failure to do so may affect infringement damages. Marking should include: 'NZ Pat' and Number of the Patent.

Use convention or non-convention application form.

Application Form- Signed by applicant (if individual) or by an officer of applicant company, whose position in the company should be stated. Legalisation not required.
Information needed for Application Form:-
- Full name, street address and nationality of:- applicant, inventor, applicant in Convention priority country.
- Convention priority date(s) claimed (if any), country in which basic application filed, date of any assignment of rights from applicant in Convention country to present applicant.
- Title of invention.
Specification- Two copies with black lettering on A4 white paper. Layout: 0.6 cm between lines. 2.5 cm margin on left hand side.
Drawings- 2 copies on paper. White A4, 1.5 cm margin all round.
Certified Copy- Of priority document (if relevant) with English translation (certified) if priority document not in English. We can prepare the translation.
Emergency Filing- 1 copy of specification and drawings; name of applicant, details of Convention priority.

Form- Request for entry into National Phase- Signed by applicant (if individual) or by an officer of applicant company, whose position in the company should be stated. Legalisation not required.
Information needed for Request Form-
1. International application number and International filing date.
2. Full name, street address and nationality of:- applicant; inventor(s); original applicant in convention priority country.
3. Details of transmission of rights from:
  - Inventor(s) to applicant in Convention priority country
  - Applicant in Convention priority country to present applicant.
  - If rights transmitted from inventor(s) by virtue of contract of employment, it is necessary simply to state this. If rights are transmitted by assignment, the date of the assignment must be given.
4. Details of application(s) from which priority is claimed.
5. Title of invention
Verified Translation- of P.C.T. Published pamphlet into English (if relevant).
Agents File- Copy of Specification and Drawings.
Optional-
1. Copy of any amendments to be filed.
2. Copy of Search Report.
3. International preliminary examination report.
4. Whether you wish us to review / revise the specification before filing.
Emergency Filing-
1. Details of applicant (as above)
2. Details of International filing.
3. Copy of specification in English if PCT filing not in English

Applicant- The proprietor of the mark - individual or corporation.
Classification- International classification of goods and services. Multi-class applications are available.
Examination- Automatic, no formal request required. New Zealand trade mark law and practice is very similar to that of U.K. It is difficult to obtain registration of:- descriptive words, laudatory words, surnames, geographical place names, four or less letters which do not form a word, or numerals.
Marking- Advisible but not compulsory:- "N.Z. Reg. T.M. No........"
Non Use- Trade marks are open to attack by interested parties if not used for a continuous period of more than 3 years.
Term- Initially 10 years from filing or Convention date, Renewable every 10 years thereafter. Renewals must be paid by the due date — there is no grace period. Restoration is possible only within 1 year of lapse.
Licensees- Should be recorded on Trade Marks Register.

Certification trade marks and Collective trade marks also can be registered in NZ - please contact us for filing requirements.

Trade Mark to be registered.
For Devices (Logo) Only- One black and white bromide print or sharp black and white photocopy. (If the mark is to be restricted to particular colours, we also require a colour print.) Alternatively, you can email us a high-resoution copy of the mark in electronic form (e.g. .gif, .jpg or .bmp).
Information- To enable us to complete the application form:-
1. Full name, street address and nationality of applicants.
2. Goods or Services for which the mark is to be registered.
3. Date and country of application from which Convention priority is claimed.

NOTE: Authorisation form signed by applicant and Convention priority document are no longer required

Applicant - Proprietor of design, individual or corporation; may be assignee or actual author.
Novelty- Local novelty, i.e. no publication or use of design in New Zealand before filing date in New Zealand or Convention priority date (whichever is earlier).
Scope- Protects only features of shape and configuration and / or pattern or ornament of the article as shown in the representations. A Registered Design is not a substitute for a Utility Model or Petty Patent (not available in New Zealand) and cannot be used to protect functional features.
Term- Initial term of 5 years from filing date or from Convention priority date, if claimed. Renewable for two further 5 year periods (total 15 years).
Marking- Not compulsory but failure to do so may affect infringement damages. Marking should include 'NZ Reg Des' and Registration Number.

Authorisation Form- Signed by applicant (if individual) or by an officer of applicant company, whose position in the company should be stated. Legalisation not required.
Representations- 5 (five) sets (drawings or photographs) of each view of item to be registered, sufficient views to show whole of item clearly. If Convention priority is claimed, the representations should match those of the Convention priority document.
Information- to enable us to complete the application form:-
1. Full name, address and nationality of applicant(s).
2. Article to which design is to be applied.
3. Date and country of application from which Convention priority is claimed, with details of applicant in Convention country, and date of assignment of rights to (a) if applicable.
Convention- Priority document with certified translation, if applicable.
Emergency Filing- 1 copy of representations and items 3(a), (b) & (c) above.