New Patent Practice Guideline - Amendments to electronic copies of patent specifications

Published: 09.02.2010

IPONZ requests that when an amendment is to be made to a patent specification for applications which have not yet been accepted, that the entire amended specification is provided electronically to IPONZ by the applicant.

At present only amended pages and marked-up amendments (where appropriate) are provided to IPONZ. The request extends to all proposed amendments which can be voluntary or required to meet an objection raised in an examination report.

Applicants should also continue to include an electronic marked-up copy of the proposed amendments indicating where additions and/or deletions have been made to the specification.

The request applies to all applications currently under examination regardless of whether or not the original application was filed on paper or electronically using the online tools. The request does not extend to correspondence in relation to hearings, oppositions or post acceptance matters.

Please note that this does not apply to amendments filed on paper, so where amendments are provided in paper form, applicants should not provide a full replacement paper copy of an amended specification.

Reasons for the request

Like most businesses, IPONZ is moving into an increasingly electronic work environment. A number of online tools are available via the IPONZ website, such as filing patent applications, filing correspondence, renewing of patents and registered users can view their own files online.

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An increasing proportion of patent-related correspondence and new applications received by IPONZ are filed in an electronic format. Similarly, IPONZ patent examiners also work almost exclusively within an electronic environment, which has all but removed handling of paper-based documents.