Category: Patents

Which Law is Relevant? – Lessons from Led Zeppelin’s “Stairway to Heaven” Copyright Case

Ex post facto law, the retrospective application of legislation, is not applied in a number of jurisdictions, including New Zealand.  Because laws do change however, it is important to understand which laws were in force and are relevant to the question you are asking.  The recent outcome of the long running copyright dispute over Led Zeppelin’s “Stairway to Heaven” highlights this.

 

“Stairway to Heaven” Case

The rock band Led Zeppelin has been in a long running copyright dispute over the acoustic guitar intro to their song “Stairway to Heaven”.

The case, originally brought in 2014 by the estate of the band Spirit, asserted that the “Stairway to Heaven” intro had been copied from Spirit’s earlier instrumental work “Taurus”.  In 2016, a jury found in favour of Led Zeppelin, stating that they did not steal the intro, and that their work was original.

However, in 2018, a panel of judges ordered a new trial on the basis that the judge in the 2016 trial had given the jury incorrect instructions, in particular by not allowing them to hear sound recordings of the “Stairway to Heaven” and “Taurus” works for comparison.

The reasoning behind not allowing the sound recordings was that, at the time that the respective works were created (1971 for “Stairway to Heaven”, 1968 for “Taurus”), the US Copyright Act 1909 was in force and the case should be heard according to that law.  Under the requirements of the 1909 Act, copyright only covered sheet music, not sound recordings.  In was not until later in the 1970s that copyright law in the US was extended to include sound recordings.

The 2018 decision to order a retrial was subsequently appealed with a request for a larger panel of judges to rehear the case.  This was heard by a panel of 11 judges earlier this year (March 2020).  They overturned the 2018 ruling, reaffirming that the jury had been instructed appropriately in the 2016 case & that the jury’s decision (in favour of Led Zeppelin) stood.

The case was then taken to the Supreme Court (the highest court in the United States), but a few days ago, the Supreme Court declined to take it up, effectively handing final victory to Led Zeppelin.

 

Applying this Lesson to Effective IP Management in New Zealand

The “Stairway to Heaven” case highlights the importance for businesses to understand which laws were in force at the time of any relevant activities relating to their business strategy, including IP management.

For example, up until a few years ago, patents in New Zealand were prosecuted under the Patents Act 1953.  The New Zealand Patents Act 2013 (which came into force in September 2014), however, introduced many reforms to New Zealand IP legislation.  Amongst other changes, the criteria for patent examination was extended from local novelty only, to absolute novelty, inventive step and utility.

Many patents prosecuted under the old 1953 Act will still be in force and may be relevant for businesses.  For example, if you are pursuing validity analyses of patents of interest, whether for due diligence on the value of patents you wish to license or acquire, or attempting to invalidate a competitor’s patent, it is vital to understand which Act would be applied to test the strength of a patent of interest.  The introduction of the new Patents Act 2013 changed the criteria for patentability significantly.

It is important in business management generally to appreciate the dynamic nature of the legal landscape.

Alistair Curson

 

References

AJ Park. (2014, September). “New Zealand’s new Patents Act 2013: The key differences between the Patents Act 1953 and the new Act”. Retrieved October 09, 2020, from: https://www.ajpark.com/assets/Uploads/New-Zealands-new-Patents-Act-2013-The-key-differences-between-the-Patents-Act-1953-and-the-new-Act.pdf

Bienstock R. (2020, October). “Led Zeppelin emerge victorious in long-running Stairway to Heaven copyright battle”. Retrieved October 08, 2020, from: https://www.guitarworld.com/news/led-zeppelin-emerge-victorious-in-long-running-stairway-to-heaven-copyright-battle

Curson AD. (2018, November 20). “Tech Software and Intellectual Property Protection”. Retrieved October 09, 2020, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=79

Dixon G. (2014, August 12). “Patent law change in New Zealand – Five reasons to act now!”. Retrieved October 09, 2020, from: http://www.shelstonip.com/news/patent-law-change-in-nz-five-reasons-why-now-is-the-time-to-act/

Kim A. (2020, March 11). “Led Zeppelin wins major copyright battle for ‘Stairway to Heaven'”. Retrieved October 08, 2020, from: https://edition.cnn.com/2020/03/10/entertainment/led-zeppellin-stairway-heaven-lawsuit-trnd/index.html

New Zealand Bill of Rights Act 1990, s26. Retrieved October 08, 2020, from: http://www.legislation.govt.nz/act/public/1990/0109/latest/DLM225528.html

New Zealand Interpretation Act 1999, s7. Retrieved October 08, 2020, from: http://www.legislation.govt.nz/act/public/1999/0085/latest/DLM31471.html

New Zealand Sentencing Act 2002, s6. Retrieved October 08, 2020, from: http://www.legislation.govt.nz/act/public/2002/0009/latest/DLM135540.html

Reed R. (2019, June 11). “Led Zeppelin’s ‘Stairway to Heaven’: Appeals Court to Review Lawsuit Decision”. Retrieved October 08, 2020, from: https://www.rollingstone.com/music/music-news/led-zeppelin-stairway-to-heaven-lawsuit-review-846617/

Ryu J. (2020, October 05). ” Led Zeppelin wins copyright battle after U.S. Supreme Court declines to hear case”. Retrieved October 08, 2020, from: https://www.usatoday.com/story/entertainment/music/2020/10/05/led-zeppelin-stairway-heaven-copyright-lawsuit-supreme-court-ruling/3624384001/

Sisario B. (2020, March 09). “Led Zeppelin Prevails in ‘Stairway to Heaven’ Appeal”. Retrieved October 08, 2020, from: https://www.nytimes.com/2020/03/09/arts/music/led-zeppelin-lawsuit-stairway-to-heaven.html

United Nations. “Universal Declaration of Human Rights”. Retrieved October 08, 2020, from: https://www.un.org/en/universal-declaration-human-rights/

Wikipedia. (2020, September 28). “Ex post facto law”. Retrieved October 08, 2020, from: https://en.wikipedia.org/wiki/Ex_post_facto_law

Wikipedia. (2020, October 07). “Supreme Court of the United States”. Retrieved October 09, 2020, from: https://en.wikipedia.org/wiki/Supreme_Court_of_the_United_States

Interactive Patent Analytics from IP Australia of COVID-19 Related Technology

IP Australia has recently launched a set of interactive patent analytics displays related to technologies instrumental in the fight against COVID-19.  These provide researchers and decision-makers with valuable tools to locate key intelligence within the body of patent information around these subjects.

 

IP Australia Patent Analytics Hub

IP Australia’s Patent Analytics Hub is an initiative that has grown out of the Office of the Chief Economist (OCE).  Originally focussed on economics research, the OCE has evolved to include open data products and patent information as part of its research services.

The Patent Analytics Hub delivers patent analytics to customers including research organisations and government agencies.  The reports support customers in identifying opportunities, monitoring competitor and market activity, determining the value of their intellectual assets, and guiding business decisions.

 

COVID-19 Technology Visualisations

As part of the global effort against the COVID-19 pandemic, the Patent Analytics Hub has developed a set of six freely-available interactive visualisations.

The visualisations cover:

  • Ventilators
  • Masks
  • Surgical gowns and goggles
  • Vaccines
  • Repurposed drugs
  • Medical diagnostics

Beginning with a top-level summary and overview of each analysis, users can then view the data as a series of interactive charts and graphs.  These can be drilled into and filtered to view the results for specific regions, applicants, and filing periods.  Once a document or documents are identified, the user can hyperlink directly to view full details of any patent of interest.

This resource will enable researchers and decision-makers to identify potentially useful technology, as well as the relevant patents and their owners.  This can assist in identifying know-how, partners, suppliers and manufacturers to gain a stronger position in the fight against COVID-19.

 

Global Collaborative Efforts

This initiative from IP Australia is just one of many such approaches around the world to support the sharing of innovative knowledge and technology.

WIPO (the World Intellectual Property Organisation) has launched a new search function for its PATENTSCOPE database to assist in the identification of relevant patent documents that may be of value in the fight against COVID-19.  CAS (the Chemical Abstracts Service) has released an open-access dataset of compounds having known or potential antiviral activity, to assist research and analytics efforts.

The Open COVID Pledge is an initiative to encourage more open access to intellectual property in the fight against COVID-19.  Examples of companies supporting the pledge and making their portfolios of thousands of patents available to the world include Intel and Microsoft, amongst others.

Further, Pfizer and BioNTech are working together to jointly develop a COVID-19 vaccine.  BioNTech has provided multiple vaccine candidate compounds, whilst Pfizer has provided access to its research and development, regulatory, manufacturing, and distribution infrastructure.  Initial human trials are already underway.

By working together, we have a much better chance of defeating this common enemy.  Maybe the lessons learned can provide the impetus for more collaborative approaches in the future.

Alistair Curson

 

References

CAS. (2020, March 31). “CAS Releases Open Access Dataset of Antiviral Chemical Compounds to Aid COVID-19 Discovery and Analysis”. Retrieved May 16, 2020, from: https://www.cas.org/resources/press-releases/open-access-covid-19-dataset

CSR Admin. (2020, April 07). “Intel Grants Free Access to Its Intellectual Property to COVID-19 Researchers and Scientists”. Retrieved May 16, 2020, from: https://blogs.intel.com/csr/2020/04/open-covid-pledge/#gs.6mv966

IP Australia. (2020). “Australian Intellectual Property Report 2020 – Chapter 8: Research Program”. Retrieved May 13, 2020, from: https://www.ipaustralia.gov.au/ip-report-2020/research-program

IP Australia. (2020, May 06). “New patent visualisations on the latest COVID-19 technology”. Retrieved May 12, 2020, from: https://www.ipaustralia.gov.au/about-us/news-and-community/news/new-patent-visualisations-latest-covid-19-technology

IP Australia. (2020, May 06). “Patent Analytics Hub”. Retrieved May 12, 2020, from: https://www.ipaustralia.gov.au/tools-resources/patent-analytics-hub

Open COVID Pledge. (2020, April 07). “Open COVID Pledge”. Retrieved May 16, 2020, from: https://opencovidpledge.org/

Pfizer. (2020, April 09). “Pfizer and BioNTech Announce Further Details on Collaboration to Accelerate Global COVID-19 Vaccine Development”. Retrieved May 16, 2020, from: https://www.pfizer.com/news/press-release/press-release-detail/pfizer_and_biontech_announce_further_details_on_collaboration_to_accelerate_global_covid_19_vaccine_development

Pfizer. (2020, May 05). “Pfizer and BioNTech Dose First Participants in the U.S. as Part of Global COVID-19 mRNA Vaccine Development Program”. Retrieved May 16, 2020, from: https://www.pfizer.com/news/press-release/press-release-detail/pfizer_and_biontech_dose_first_participants_in_the_u_s_as_part_of_global_covid_19_mrna_vaccine_development_program

Szweras M, De Luca C. (2020, April 22). “Patents and Their Role in a COVID-19 Cure”. Retrieved May 13, 2020, from: https://www.lexology.com/library/detail.aspx?g=b757a56e-834f-433f-b548-80fa98b7574d

World Intellectual Property Organisation. (2020, April 21). “WIPO Launches New Search Facility For PATENTSCOPE Database to Support COVID-19 Innovation Efforts”. Retrieved May 16, 2020, from: https://www.wipo.int/pressroom/en/articles/2020/article_0008.html

Yokoyama J. (2020, April 20). “Microsoft commits patents to help fight COVID-19”. Retrieved May 13, 2020, from: https://blogs.microsoft.com/on-the-issues/2020/04/20/open-covid-19-pledge-patents/

New Patent and Trade Mark Fees in New Zealand

In a couple of days, on 13th February 2020, changes to the fees charged by the Intellectual Property Office of New Zealand (IPONZ) for patents and trade marks will come in effect.

 

The Changes

There are a number of fee changes, but to summarise:

 

Patents will see the following fees increase:

  • Filing and examination request fees
  • Renewal and application maintenance fees
  • Some amendment and restoration fees

 

Trade marks, however, will see the following fees decrease:

  • Application fees
  • Renewal fees

The trade mark search and preliminary advice fees will also change, with the fees for the individual services increasing, but the fee for the combined S&PA service decreasing.

 

Fees relating to design rights remain unaffected.

 

Possible Implications and Effects

Thus, at first sight, patent owners are likely to be financially impacted the most, with trade mark owners seeing financial benefits.  The actual impacts of these changes, however, are only likely to be realised over time.

 

From a patent perspective, costs appear to be increasing.  However, since a patent is providing the owner with a temporary monopoly in the market, these increases in costs are likely to be reasonable if the patent is truly of value and the invention appropriately monetised.

Further, some commentators have speculated that the increase in fees may actually benefit New Zealand businesses.  As in many other global jurisdictions, there is no usage requirement for a patent in New Zealand.  Patents are often filed and used strategically to frustrate competitors, with no intention to work the claimed invention.

The longer-term impact of the patent fee increases may be to dissuade foreign competitors who have been filing in New Zealand with the sole aim of disrupting their competitors here, such that they allow their patents to lapse early, or do not file here in the first place.

 

From a trade mark perspective, costs appear to be decreasing, which will be welcomed by New Zealand businesses looking to establish and protect their brands.

However, it has been speculated that this may actually lead to an increase in trade mark filings, particularly for applications with an unduly broad scope or from applicants with no real intention to use the mark, resulting in the trade mark register becoming relatively bloated with poor quality registrations.

Ironically, this may lead to an increase in branding costs as oppositions and actions brought for non-use and invalidity may be needed to enforce genuine marks and those registered in good faith.

Alistair Curson

 

References:

Allens. (2019, October 24). “IPONZ fee changes – how you can save on patent and trade mark fees”. Retrieved January 28, 2020, from: https://www.allens.com.au/insights-news/insights/2019/10/IPONZ-fee-changes-how-you-can-save-on-patent-and-trade-mark-fees/

Bainbridge D. (2012). “Intellectual Property.” 9th edn, Pearson Education Limited, Harlow, England.

Blijlevens A. (2019, August 22). “Protecting innovation using patents and designs”. Webinar attended August 22, 2019; available from: https://www.ajpark.com/insights/videos-and-webinars/resource/protecting-innovation-using-patents-and-designs-recording

Ellis Terry. (2019, October 07). “Fee Changes For NZ Patents and Trade Marks”. Retrieved February 04, 2020, from: https://ellisterry.com/official-fee-changes-for-patents-and-trade-marks-in-new-zealand/

McIvor R. (2019, June 25). “IPONZ fee changes coming for Patents and Trade marks”. Retrieved February 04, 2020, from: https://www.baldwins.com/news-resources/news/iponz-fee-changes-coming-for-patents-and-trade-marks

New Zealand Intellectual Property Office. (2019, September). “Patent and Trade Mark Fee Changes on 13 February 2020”. Retrieved January 28, 2020, from: https://www.iponz.govt.nz/assets/pdf/about-iponz/patent-and-trade-mark-fee-changes-september-2019.pdf

New Zealand Intellectual Property Office. (2020, January 28). “New patent and trade mark fees will commence from 13 February 2020”. Retrieved January 28, 2020, from: https://www.iponz.govt.nz/news/new-patent-and-trade-mark-fees-will-commence-from-13-february-2020/

Tidbury K, Coughlan O. (2019, September 27). “Changes to IPONZ patent and trade mark fees”. Retrieved February 04, 2020, from: https://www.simpsongrierson.com/articles/2019/changes-to-iponz-patent-and-trade-mark-fees

Ting S, Henning K, Griffiths T. (2019, October 02). “Changes to the Intellectual Property Office of New Zealand’s fees to come into force on 13 February 2020”. Retrieved February 04, 2020, from: https://www.ajpark.com/insights/ip-updates/intellectual-property-office-of-new-zealands-fee-changes/

IPONZ Online Case Management Improvements

The New Zealand Intellectual Property Office (IPONZ) recently published a number of improvements to both its website and online case management facility.  These are summarised below:

 

Patent Cases: Search by Patents Act

New Zealand’s patent law landscape changed significantly a few years ago with the enactment of the Patents Act 2013, aligning the law more closely with other international jurisdictions.

Under the previous 1953 Act, patentability within New Zealand required relative novelty (i.e. was the invention new within the prior art base of New Zealand only).  The 2013 Act introduced, among other things, examination practices that require absolute novelty, examination for inventive step, and additional subject matter qualification.

The IPONZ patent register search now includes a field (under the Status Search option) to specify the Act under which the cases being searched were examined.

 

Patents: Declaration for Amendments After Grant

As part of the maintenance process for patents in New Zealand, there is a facility to request amendments to both pending applications and granted patents under certain circumstances.

Previous, such requests were required to be accompanied by a formal letter declaring that the information provided was correct and that there were no known lawful grounds for objection.  This declaration is now included as a field in the online request form.

 

Trade Marks: Partial Renewal of a Subset of Classes

A part of the scope of protection provided by a registered a trade mark is the specification of the goods and services that the mark is intended to be used in association with.

The IPONZ trade mark renewal facility now enables owners and agents to select only those classes of goods and services they wish to renew for a specific trade mark registration.

 

Divisional Applications: Ability to Display the Full Chain

A divisional patent application is a provision within the Paris Convention 1883, where an applicant is able to “divide” out one or more claims from an earlier parent application.  Although the divided application cannot extend the subject matter beyond that which was covered in the parent application, it will typically retain the filing and priority dates of the parent.

Usually, the filing of a divisional application is pursued when a patent examiner has objected to the parent application on the grounds of a lack of unity of invention.  In other words, the parent application is considered to claim more than one invention or inventive concept.  To address this, the appropriate claims are divided into child divisional applications, each one having a single unity of invention.

Trade mark applications can also be divided to remove goods and services that conflict with other marks whilst retaining a part of the original application.

The bibliographic display of the IPONZ case register now interactively shows the hierarchical relationship of IP cases related by divisional practices.

 

Renewal Fee Reminders: Inclusion of the Renewal Due Date

IP rights have to be renewed and maintained in accordance with the Acts and other regulations that govern them, if they are to remain in force.

IPONZ has improved the email notifications it sends as reminders of upcoming renewals.  The renewal date is now included in the subject line and the body of these email messages.

Alistair Curson

 

References

AJ Park. (2014, September). “New Zealand’s new Patents Act 2013: The key differences between the Patents Act 1953 and the new Act”. Retrieved October 22, 2019, from: https://www.ajpark.com/assets/Uploads/New-Zealands-new-Patents-Act-2013-The-key-differences-between-the-Patents-Act-1953-and-the-new-Act.pdf

Bainbridge D. (2012). “Intellectual Property.” 9th edn, Pearson Education Limited, Harlow, England.

Curson A. (2019, April 16). “New Division and Merger of International Trade Mark Registrations in New Zealand”. Retrieved October 22, 2019, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=139

Macaskill, D. (2013, September 12) “New dawn for the New Zealand Patent Landscape – the New Patents Act”. Retrieved October 22, 2019, from: http://www.mondaq.com/NewZealand/x/260548/Patent/New+Dawn+for+the+New+Zealand+Patent+Landscape+the+New+Patents+Act

New Zealand Intellectual Property Office. (2019, October 10). “Improvements to the IPONZ online case management facility”. Retrieved October 22, 2019, from: https://www.iponz.govt.nz/news/improvements-to-the-iponz-online-case-management-facility-6/

New Zealand Intellectual Property Office. “Apply for a patent”. Retrieved October 22, 2019, from: https://www.iponz.govt.nz/about-ip/patents/apply/

New Zealand Intellectual Property Office. “Apply for a trade mark”. Retrieved October 22, 2019, from: https://www.iponz.govt.nz/about-ip/trade-marks/apply/

New Zealand Intellectual Property Office. “Maintain a patent”. Retrieved October 22, 2019, from: https://www.iponz.govt.nz/about-ip/patents/maintain/

New Zealand Intellectual Property Office. “Renew a trade mark”. Retrieved October 22, 2019, from: https://www.iponz.govt.nz/about-ip/trade-marks/renew/

Paris Convention for the Protection of Industrial Property 1883, Art. 4G. Retrieved October 22, 2019, from: https://www.wipo.int/treaties/en/text.jsp?file_id=288514#P83_6610

Wikipedia. (2019, September 18). “Divisional patent application”. Retrieved October 22, 2019, from: https://en.wikipedia.org/wiki/Divisional_patent_application

World Intellectual Property Organisation. “Nice Classification”. Retrieved October 22, 2019, from: https://www.wipo.int/classifications/nice/en/

New Japanese Imperial Era: Retrieval of Japanese Patent Information

On 30th April 2019 Emperor Akihito of Japan abdicated and his son Emperor Naruhito acceded to the Chrysanthemum Throne on 1st May.  This marked the end of the Imperial Heisei era and the beginning of the Reiwa era.

In this post I look at how the Japanese Imperial eras define the calendar dates and passage of time in many Japanese documents, including (in previous years) patents and patent applications.

Although the Japanese Patent Office started using Gregorian calendar years in 2000 and no longer uses the Imperial calendar, searching, retrieving and analysing older Japanese patents and applications still requires knowledge of the Imperial calendar system.

 

A History of the Japanese Patent Numbering System

Many aspects of Japanese society mark time by the Imperial calendar – the eras defined by the reigns of individual emperors.  Japan first adopted the Gregorian calendar in 1873, however, the extent of usage of the two systems varies.  The Japanese Patent Office, as an example, used the Imperial system up until 2000.

Within the Imperial calendar, one era ends and a new era starts with the accession of a new emperor.  The remainder of the corresponding Gregorian year then represents the first year of the new Imperial era.  Full subsequent Imperial years are then counted in synchrony with the Gregorian calendar, until the accession of a new emperor and the beginning of a new era.

To illustrate this, let’s look at the last three emperors of Japan in the figure below.

 

Sources:

Wikipedia. (2019, May 25). “Akihito”. Retrieved May 26, 2019, from: https://en.wikipedia.org/wiki/Akihito

Wikipedia. (2019, May 26). “Hirohito”. Retrieved May 26, 2019, from: https://en.wikipedia.org/wiki/Hirohito

Wikipedia. (2019, May 26). “Naruhito”. Retrieved May 26, 2019, from: https://en.wikipedia.org/wiki/Naruhito

 

Emperor Hirohito came to the Chrysanthemum Throne on 25th December 1926, and his era was known as Showa.  When he died on 7th January 1989, Emperor Akihito acceded to the Chrysanthemum Throne, and the Heisei era began.  Emperor Akihito abdicated on 30th April 2019, and Emperor Naruhito acceded, thus beginning the Reiwa era.

1926 is the first year of the Showa era (S1), 1927 is the second Showa year (S2) etc.  1976 (Showa 51) is when the Patent Abstracts of Japan database began (containing bibliographic information of published unexamined patent applications).  The Showa era ended in 1989.  This year is Showa 64 up until the accession of the new emperor, when it becomes the first year of the Heisei era (H1).  Documents published in that year will have either a Showa 64 or Heisei 1 designation depending upon the exact date of publication.

Similarly, Heisei 2 is 1990 and so on through out the reign of Emperor Akihito.  The Japanese Patent Office (JPO) used the Imperial calendar up until 2000, when it then switched to using the Gregorian calendar for dates assigned to new patent publications.  Thus, the last documents published by the JPO using the Imperial calendar system were published in 1999 (Heisei 11).

The Heisei era ended on 30th April 2019 (Heisei 31) and the first year of the Reiwa era began the following day.

 

Types of Japanese Patent Documents

There are three main types of national Japanese patent documents.

The first are Kokai, or the publication of an unexamined patent application.  These are usually identified with a kind code “A”.

The second (relevant to patents prosecuted prior to 1996) are Kokoku, or the publication of an examined patent application.  These are typically identified with a kind code “B”.  After 1996, Japanese patent law changed and Kokoku documents were no longer published.

The third are Toroku, or the publication of a granted patent.  These are identified with a kind code “B”.

 

Retrieval of Japanese Patent Documents

When identifying, searching and retrieving Japanese patent documents, it is necessary to have an understanding of the numbering formats of the different document types discussed above.  The formats of each of three document types are illustrated in the following figure.

 

Toroku documents (on the right of the figure) are the simplest, having a two-letter country code “JP”, a seven-digit document number, and the kind code “B” suffix.

Kokai and Kokoku are a little more complex.

Kokoku documents (centre) have a two-letter country “JP”, a two-digit Imperial year code (corresponding to the Imperial era discussed above), followed by a six-digit document number, and the kind code “B” suffix.

Prior to 2000, Kokai documents (left of the figure) followed the same format as Kokoku documents, except that they have an “A” kind code.  From 2000 onwards, the two-digit Imperial year code was replaced with a four-digit Gregorian year – the other parts of the number format remained the same.

When working with Japanese patent documents, it is important to accurately identify the document concerned by careful consideration of the procedural stage and the year of publication, which may not be immediately obvious if one is not familiar with the various date formats described in this post.

Additionally, care should be taken to understand how specific databases require publication numbers to be entered.  If not, there is a risk of falsely assuming a document is not available in the database, when in fact it is, or worst, end up retrieving the wrong document.

 

Avoiding Pitfalls

Common pitfalls to avoid include determining whether or not the database you are using requires additional information such as an “S” or “H” within the publication number to distinguish the Showa and Heisei eras.  Some databases are indexed this way.

In such databases, JP54123456A would be searched as JPS54123456A, and JP10123456B would be searched as JPH10123456B.  Omitting this additional information can result in a document not being retrieved when it is actually available.

Further, documents from the early Heisei era can sometimes be presented with the leading zeros of the Imperial year omitted.  Thus, JP01123456 may come to you initially as JP1123456, which can easily be misinterpreted as a Toroku (granted) document rather than a Kokai (published application).

It is important to treat such documents carefully by first identifying the procedural stage you expect, and as necessary applying the right imperial year code to ensure the correct document is retrieved and worked with.

It is always advisable to double-check the documents you are working with by crossing-checking against other information such as application and priority data, document title, or other published family members.

Alistair Curson

 

References

European Patent Office. (2019, May 14). “Numbering system – Japan”. Retrieved May 26, 2019, from: https://www.epo.org/searching-for-patents/helpful-resources/asian/japan/numbering.html

Japan Patent Office. “Searching for Patents, Utility Models, Designs, Trademarks”. Retrieved May 26, 2019, from: https://www.jpo.go.jp/e/faq/yokuaru/searching.html

Korteman J. (2019, April 01). “How to Read a Japanese Calendar”. Notes of Nomads. Retrieved May 03, 2019, from: https://notesofnomads.com/japanese-date-system/

Reynolds I, Mori K. (2019, May 01). “Japan’s New Emperor Naruhito Ascends World’s Oldest Monarchy”. Bloomberg. Retrieved May 03, 2019, from: https://www.bloomberg.com/news/articles/2019-04-30/japan-s-new-emperor-naruhito-to-ascend-chrysanthemum-throne

Wikipedia. (2019, May 25). “Akihito”. Retrieved May 26, 2019, from: https://en.wikipedia.org/wiki/Akihito

Wikipedia. (2019, May 26). “Hirohito”. Retrieved May 26, 2019, from: https://en.wikipedia.org/wiki/Hirohito

Wikipedia. (2019, May 26). “Naruhito”. Retrieved May 26, 2019, from: https://en.wikipedia.org/wiki/Naruhito

World Intellectual Property Organisation: Handbook on Industrial Property Information and Documentation. (2005, December). “Presentation of Application Numbers”. Retrieved May 03, 2019, from: https://www.wipo.int/export/sites/www/standards/en/pdf/07-02-01.pdf

World IP Day 2019

World Intellectual Property Day is celebrated on 26th April every year.  In 2019 the theme is “Reach for Gold: IP and Sports”.

I’ve decided to publish this post a little earlier than usual to coincide with this celebration.  Also, given my base in New Zealand and the importance of sport in Aotearoa, I felt today was a great opportunity to look at how IP is embedded in our sport, and our businesses in general.

 

IP in Sport

Sources:

New Zealand Herald. (2018, June 14). “Rugby: All Blacks name unchanged match-day squad for second test against France”. Retrieved April 20, 2019, from: https://www.nzherald.co.nz/sport/news/article.cfm?c_id=4&objectid=12070171. Image retrieved April 20, 2019, from: https://arc-anglerfish-syd-prod-nzme.s3.amazonaws.com/public/LEEUYOVLUNFVXHSYO22J57Q7YA.jpg

New Zealand Intellectual Property Office. “Patent 227564”. Retrieved April 20, 2019, from: https://app.iponz.govt.nz/app/Extra/IP/Mutual/Browse.aspx?sid=636913719125319979

New Zealand Intellectual Property Office. “Design 422288”. Retrieved April 20, 2019, from: https://app.iponz.govt.nz/app/Extra/IP/Mutual/Browse.aspx?sid=636913726445454609

New Zealand Intellectual Property Office. “Trade Mark 670759”. Retrieved April 20, 2019, from: https://app.iponz.govt.nz/app/Extra/IP/Mutual/Browse.aspx?sid=636913727806433505

New Zealand Intellectual Property Office. “Trade Mark 670762”. Retrieved April 20, 2019, from: https://app.iponz.govt.nz/app/Extra/IP/Mutual/Browse.aspx?sid=636913729034028981

 

The figure above shows a few examples of where IP might potentially be found in a rugby match.  Whereas the examples chosen aren’t necessarily present in this particular picture, the purpose of this illustration is to show that IP is embedded in all aspects of the game; from the branding of a team and the sponsors (trade marks); to the clothes being worn (designs); to the equipment being used (patents); to aspects of the match event and its broadcast beyond the stadium (copyright).

Looking closely at our own businesses, we can find IP through an organisation and its activities in much the same way.

IP is an important strategic asset protecting the products, processes and software your business relies on, the design and appearance of your products and their packaging, your documentation and business development collateral, as well as your brand and the commercial reputation and goodwill embedded within it.

Understanding your business’s IP and the broader IP landscape in which it and your business sits is an important part of any business management and decision making process.

Alistair Curson

 

References

New Zealand Herald. (2018, June 14). “Rugby: All Blacks name unchanged match-day squad for second test against France”. Retrieved April 20, 2019, from: https://www.nzherald.co.nz/sport/news/article.cfm?c_id=4&objectid=12070171.  Image retrieved April 20, 2019, from: https://arc-anglerfish-syd-prod-nzme.s3.amazonaws.com/public/LEEUYOVLUNFVXHSYO22J57Q7YA.jpg

New Zealand Immigration. (2018, November 07). “New Zealand Now: Live in New Zealand: Recreation: Sports”. Retrieved April 20, 2019, from: https://www.newzealandnow.govt.nz/living-in-nz/recreation/sports

New Zealand Intellectual Property Office. “Patent 227564”. Retrieved April 20, 2019, from: https://app.iponz.govt.nz/app/Extra/IP/Mutual/Browse.aspx?sid=636913719125319979

New Zealand Intellectual Property Office. “Design 422288”. Retrieved April 20, 2019, from: https://app.iponz.govt.nz/app/Extra/IP/Mutual/Browse.aspx?sid=636913726445454609

New Zealand Intellectual Property Office. “Trade Mark 670759”. Retrieved April 20, 2019, from: https://app.iponz.govt.nz/app/Extra/IP/Mutual/Browse.aspx?sid=636913727806433505

New Zealand Intellectual Property Office. “Trade Mark 670762”. Retrieved April 20, 2019, from: https://app.iponz.govt.nz/app/Extra/IP/Mutual/Browse.aspx?sid=636913729034028981

UK IP Rights After Brexit

With the Brexit story continuing and no-one still yet knowing what the final outcome will be, I’m looking at what is likely to happen to UK intellectual property rights if, when and how the UK leaves the European Union (EU), particularly in the scenario of a no-deal Brexit.

Recently, the UK Intellectual Property Office (UKIPO) published new guidelines as to how IP rights will be handled in the event of a no-deal Brexit.

If your business has IP rights in the UK, how might you be affected?

 

Patents

There are currently two types of patent right available in the UK: a UK (GB) national patent filed with the UKIPO, and a UK-validated European patent filed with the European Patent Office (EPO).

If the UK leaves the EU without a Brexit deal then the impact upon these existing patent rights will be minimal.

UK patents granted by the UKIPO will largely be unaffected as the UKIPO is not an EU institution.  A few areas of UK patent law originate from EU law and regulation, and their implementation, and thus have the potential to be affected.  These include supplementary protection certificates (for pharmaceutical products and agrochemicals); biotechnology inventions; compulsory licensing; and clearance to conduct certain studies, trials and tests in relation to patented pharmaceuticals.  However, the relevant EU legislation (or its domestic implementation) will be retained in UK law under the EU Withdrawal Act 2018, and thus, after exit day, things will continue as they do now.

European patents prosecuted and granted by the EPO under the European Patent Convention (EPC) that designate the UK will also be unaffected.  Again, the EPO is not an EU institution.  Being a contracting state to the EPC is separate from being a member of the EU.

There is a third patent right currently being developed in Europe, the unitary patent, that is close to coming into effect.  This is a new pan-European patent and associated court system, intended to cover all EU member states.  Its jurisdiction will be the EU, and, at the time of writing, the unitary patent has not yet come into effect.

 

Trademarks

If the UK leaves the EU without a deal then the following IP rights will no longer be valid in the UK:

  • Protected trade mark registrations, granted by the EU Intellectual Property Office (EUIPO)
  • Protected international trade mark registrations, filed under the Madrid Protocol at the World Intellectual Property Organisation (WIPO), designating the EU

UK law is being revised such that, from exit day, comparable UK trade marks will be created for all EU registered trade marks, and for all international trade mark registrations (under the Madrid Protocol) that designate the EU, provided they are registered before exit day.

These new rights will be treated as if they had been applied for and registered under UK law.

For any pending applications, applicants will be able to apply to register a UK trade mark (subject to certain conditions) within nine months after exit day.

These changes will occur at no cost to the holder of the respective IP rights.  However, for pending applications, the standard UKIPO fee structure will apply as these will be considered a new application.

 

Designs

Similarly, if the UK leaves the EU without a deal then the following IP rights will cease to be valid in the UK:

  • Registered community designs (RCDs), granted by the EUIPO
  • Protected international design registrations, filed under the Hague Agreement at WIPO, designating the EU
  • Unregistered community designs (UCDs)

UK law is being revised such that, from exit day, comparable UK registered designs will be created for all EU registered community designs, and for all international design registrations (under the Hague Agreement) protected in the EU, provided they are registered before exit day.

These new rights will be treated as if they had been applied for and registered under UK law.

For any pending applications, applicants will be able to apply to register a UK registered design (subject to certain conditions) within nine months after exit day.

Unregistered community designs that protect a design in the UK will continue to provide protection in the form of a UK continuing unregistered design.  This will arise automatically and will continue for the remaining term of the relevant UCD.

These changes will occur at no cost to the holder of the respective IP rights.  However, for pending applications, the standard UKIPO fee structure will apply as these will be considered a new application.

 

Next Steps

There are further specifics, constraints and details for each type of right.  For further information and advice as to how this might affect your business, contact the UKIPO and / or a registered IP attorney.

Alistair Curson

 

References

Burnett-Hall, G. (2018). “Brexit & Patents”. Retrieved March 30, 2019, from: https://www.marks-clerk.com/MarksClerk/media/MCMediaLib/Reports/Brexit-series-Patents.pdf

European Patent Office. “Unitary Patent & Unified Patent Court”. Retrieved March 30, 2019, from: https://www.epo.org/mobile/law-practice/unitary.html

Marks & Clerk. “What countries will the Unitary Patent and Unified Patent Court cover?”. Retrieved March 30, 2019, from: https://www.marks-clerk.com/Direct-Access-Pages/What-countries-will-the-Unitary-Patent-and-Unif.aspx#.XJ62eJgzaHs

UKIPO. (2019, March 21). “Changes to trade mark law in the event of no deal from the European Union”. Retrieved March 30, 2019. from: https://www.gov.uk/government/publications/changes-to-trade-mark-law-if-the-uk-leaves-the-eu-without-a-deal/changes-to-trade-mark-law-in-the-event-of-no-deal-from-the-european-union

UKIPO. (2019, March 22). “Changes to registered design, design right and international design and trade mark law if the UK leaves the EU without a deal”. Retrieved March 30, 2019, from: https://www.gov.uk/government/publications/changes-to-design-and-trade-mark-law-if-the-uk-leaves-the-eu-without-a-deal/changes-to-registered-design-design-right-and-international-design-and-trade-mark-law-if-the-uk-leaves-the-eu-without-a-deal

UKIPO. (2019, March 22). “IP and Brexit”. Retrieved March 30, 2019, from: https://www.gov.uk/government/publications/ip-and-brexit-the-facts/ip-and-brexit