Recent Updates to IPONZ Patent Examination Manual

The IPONZ Patent Examination Manual has recently been updated with respect to the provisions of Section 67 which set a time limit for response to examination reports and with respect to requests for “passage”. under section 39.

The updates to further clarify its practice with respect to section 67, which requires the applicant to respond to a review report within a time limit set by the Commissioner, include the following changes:

  • Clarify that a response counts as a substantive response for the purposes of Article 67(6) if it is clear that the applicant is attempting to overcome the objections and is responding in good faith.
  • If a substantial response has been filed, the response date to a subsequent review report will be the later of the response time to the previous review report or 3 months from the subsequent review report (extendable by one month).
  • If a response is found to be non-substantial, the response date to a subsequent review report will be the later of the response time to the previous review report or one month from the next review report (extendable by a month ).

As before, any new period provided for in section 67 cannot extend the period provided for in section 71 for putting the request in order.

Section 39 Claims Scope Update delete the following paragraph 77:

77. Other types of scope through claims are where there is a claim to one object and then the claim to other objects when the first object is in relation to it. For example, if the invention was a new paint, the claim to a road on which the paint had been applied could be considered a scope claim.

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