Recent IPONZ Patent Examination Manual Updates

The IPONZ Patent Examination Manual has recently been updated in relation to the section 67 provisions that set a response deadline for examination reports and in relation to 'reach through' claims under section 39.

The updates to further specify its practice in relation to section 67, which requires applicants to respond to an examination report by a deadline set by the Commissioner, notably make the following changes:

• Clarifying that a response counts as a substantive response for section 67(6) purposes if it is clear that the applicant is attempting to overcome objections and is responding in good faith.
• If a substantive response has been filed the date for responding to a subsequent examination report will be the longer of the deadline for responding to the previous examination report or 3-months from the subsequent examination report (extendable by 1-month).
• If a response is found to be non-substantive, then the date for responding to a subsequent examination report will be the longer of the deadline for responding to the previous examination report or 1-month from the subsequent examination report (extendable by 1-month).

As before, any new deadline under section 67 cannot extend the deadline under section 71 for putting the application in order for acceptance.

The update in relation to reach through claims under section 39 removes the following paragraph 77:

77. Other types of reach through claims are where there is a claim to an object and then claiming further objects when the first object is in connection with it. For example if the invention was a new paint, then claiming a road which the paint had been applied to could be classed as a reach through claim.

Author: Quinn Miller

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