New Zealand Patent Oppositions – New And Improved (New Act Cases)

by FPA Patent Attorneys

I continue my series of articles on the topic of New Zealand Patent Oppositions. My earlier articles as listed at the bottom of this article, describe the opposition regime under the existing legislation, the Patents Act 1953 (the ‘Old Act’). 

Under the new Patents Act 2013 (the ‘New Act’), two new options become available for third parties to assert prior art to the New Zealand Patent Office. These include re-examination and third party assertions during examination. Both pre-grant and post grant opposition will be retained, albeit in a modified form much more generous to opponents. 

New Zealand Patents Act 2013

The relevant provisions of the New Zealand Patents Act 2013 come into effect on 13 September 2014. 

The Old Act continues to apply to all complete applications, national phase entries and convention applications filed before 13 September 2014, including applications divided therefrom.

The New Act will apply to all complete applications, national phase entries and convention applications filed on or after 13 September 2014, with the exception of applications divided from an Old Act case, which remain under the Old Act.

Oppositions under the New Act

The New Act retains both pre-grant opposition and post-grant revocation. The grounds for both are the same and are broadened in scope in comparison to those available under the Old Act, particularly with respect to assessment of prior art. The prior art base is expanded to include published documents and use anywhere in the world (absolute novelty). New Act opposition also allows the New Zealand Patent Office to make a full assessment as to whether the inventions is obvious, instead of only empowering the New Zealand Patent Office to refuse or revoke a case which the evidence proved to be clearly obvious. A ‘whole of contents’ novelty assessment is also available under the New Act.

Under the New Act, any person may oppose. Under the Old Act, only an ‘interested person’ could oppose which placed an additional burden on potential opponents to ensure they had the necessary interest and to provide evidence in certain cases.

Formerly, post-grant revocation was limited to 12 months from grant. Although I have not yet seen the implementing regulations, it is understood that post-grant revocation will no longer be so time constrained.

These changes mean a greater chance of success for potential opponents making the opposition process more attractive to potential opponents.


Under the New Act, any person may request re-examination of an accepted (allowed) or granted patent. For New Act cases, the grounds are the same as for opposition.

There is a substantial difference between opposition and re-examination. In re-examination, only the applicant/patentee is a party to the proceeding. The ‘opponent’ under re-examination does not become party to the proceeding and thus is only able to fire a single shot in attacking the patent.

Re-examination can be filed at any time (except if court proceedings or an opposition is underway). Thus, the opponent has an unlimited amount of time to prepare and perfect its case before firing its single shot.

Multiple Options

Because there are various different actions which can be brought before the Patent Office, the Patent Office is not required to reconsider any issues which have been previously raised. Thus, the Patent Office may refuse to re-examine or to entertain a post-grant revocation action on issues which have already been raised during earlier proceedings such as a pre-grant opposition or an earlier re-examination. Thus, the opponent cannot have multiple bites at the same cherry. (However, this bar may not apply if the earlier proceeding occurred under the Old Act.)

For this reason, an opponent who delays in launching its action (whether by pre-grant opposition, post-grant revocation or re-examination) might be precluded from arguing its best case if another opponent has unsuccessfully raised the same issue before them.

Re-examination or post-grant revocation cannot delay court proceedings in respect of the patent.

Third Party Assertions

During pendency of the application, any person may lodge assertions and prior art at the Patent Office relating to the grounds of novelty and inventive step.

A third party assertion may be useful in a case where the prior art is a clear knock-out or the asserter has limited funds. The downside of making a third party assertion is that it warns the applicant of another party’s interest in the application. The applicant can then file a divisional application, keeping their options open for claim broadening or claiming of a different invention. 

What about Old Act Cases?

For cases filed under the Old Act, the available options are a hybrid of both the good and bad features of the new and old regimes.

Written by:

FPA Patent Attorneys

FPA Patent Attorneys on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.