Category: Intellectual Property

Trust Badge – A Trial of IP Australia’s Smart Trade Mark

Just over a year ago, I posted about the award winning Smart Trade Mark initiative being developed by IP Australia, and its application in protecting supply chains as well as combating counterfeiting activities, both nationally and globally.  The system is now at the trial stage with IP Australia working with the National Rugby League (NRL) to test Trust Badge – IP Australia’s implementation of their smart trade mark.

 

What is Smart IP?

The Smart Trade Mark concept is the first in a series of Smart Intellectual Property (IP) Rights being developed by IP Australia, to support and protect inventors, entrepreneurs and businesses operating on the global stage.

Smart IP Rights are a digital representation or “fingerprint” of an owner’s IP.  They create a connection and a thread of online information between the IP right on the official IP register and relevant digital services, thereby supporting owners in enforcing their IP rights.

 

How Does Smart IP Work?

The concept behind the system is that goods are scanned and tracked as they move through a supply chain using:

  • A series of APIs (application programming interfaces) for connecting digital and online services;
  • Mobile apps, and;
  • Blockchain technology – an open and distributed internet-based record of transactions that cannot be altered without the entire network being made aware and providing their consent

Essentially it is a “track and trace” solution that includes IP and government authenticity stamps, as well as clear information as to the origin of goods.

The system also provides further protection through its use of notifications.  All events and locations are recorded within the blockchain as the goods pass through the supply chain.  Any suspicious activity is notified to the legitimate parties concerned.

Using this information, the Smart IP system also serves to provide greater insight and intelligence around counterfeiting activity within global supply chains.

 

Trust Badge

The Trust Badge is the digital connection between the registered trade mark and the consumer.  During online shopping, it provides a visual link to the registered trade mark, thereby increasing trust in the brand, as well as helping consumers identify authentic products and instil confidence that they are purchasing genuine goods and services.

 

Current Trials and Future Applications

The Trust Badge is currently being trialled with the National Rugby League (NRL) on the NRL Shop and Savvy Supporter websites, with the aim of tackling the problem of counterfeit merchandise.  Initial findings and feedback indicate that consumers have an understanding of the purpose of the Trust Badge, as well as a feeling that it serves its purpose of increasing their confidence when shopping online.

With the success of these preliminary findings, IP Australia is increasing public availability of the system through further trials, which will also ensure the system develops appropriately to meet the needs of businesses.

Alistair Curson

 

References

Clark B. (2018, February). “Blockchain and IP Law: A Match made in Crypto Heaven?”. Retrieved August 20, 2020, from: https://www.wipo.int/wipo_magazine/en/2018/01/article_0005.html

Curson A. (2018, October 05). “Blockchain and the New Zealand Agtech Industry”. Retrieved August 20, 2020, from: http://www.adcpatentsearch.co.nz/Blockchain%20and%20the%20New%20Zealand%20Agtech%20Industry%2005Oct18.pdf

Curson AD. (2019, June 11). “Smart IP Rights – The Future of IP Enforcement?”. Retrieved August 20, 2020, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=168

IP Australia. (2019, May 23). “IP Australia’s Smart Trade Mark sweeps the Canberra iAwards”. Retrieved August 20, 2020, from: https://www.ipaustralia.gov.au/about-us/news-and-community/news/ip-australias-smart-trade-mark-sweeps-canberra-iawards-0

IP Australia. (2020). “As your business moves online, so should your trade marks”. Retrieved August 20, 2020, from: https://smarttrademark.search.ipaustralia.gov.au/

IP Australia. (2020, August 10). “Tackling counterfeit footy fan gear”. Retrieved August 14, 2020, from: https://www.ipaustralia.gov.au/about-us/news-and-community/news/tackling-counterfeit-footy-fan-gear

Research and Markets. (2018). “Global Brand Counterfeiting Report, 2018”. Retrieved August 20, 2020, from: https://www.researchandmarkets.com/reports/4438394/global-brand-counterfeiting-report-2018

Rossow A. (2018, July 24). “How Can We Make Intellectual Property Rights ‘Smarter’ With the Blockchain?”. Retrieved August 20, 2020, from: https://www.forbes.com/sites/andrewrossow/2018/07/24/how-can-we-make-intellectual-property-rights-smarter-with-the-blockchain/#6ea8f43185ec

Wang B. (2018, March 31). “Moving towards blockchain registration control of Patents and Intellectual Property”. Retrieved August 20, 2020, from: https://www.nextbigfuture.com/2018/03/moving-towards-blockchain-registration-control-of-patents-and-intellectual-property.html

Wikipedia. (2020, August 19) “Blockchain.” Retrieved August 20, 2020, from: https://en.wikipedia.org/wiki/Blockchain

Key Global Shifts – Opportunities for New Zealand Innovation

New Zealand’s annual festival of innovation, Techweek, concluded its 2020 programme just over a week ago.  As part of the programme, Callaghan Innovation, New Zealand’s innovation agency, presented research discussing four global shifts they had identified, as well as the potential opportunities for innovation and entrepreneurialism by Kiwis and Kiwi businesses, that these presented.

 

Callaghan Innovation

Callaghan Innovation is New Zealand’s innovation agency.  It supports innovation and growth for businesses of all sizes through a variety of programmes.  These include R&D services for technology and product development; funding; programmes for business development and to build innovation skills; and enabling people and businesses to connect with experts, opportunities and networks.

The research presented during Techweek 2020 looked at a three to five-year time horizon and identified four key global shifts (as outlined below).  These represent potential opportunities for businesses to adopt a leading role, and to position themselves competitively, to innovate in response to these emerging trends and needs, both within New Zealand and around the world.

 

Key Global Shift: Unpredictable Waters

Uncertainties with respect to water are predicted to increase in the future.  Climate change is causing increases in sea level, as well as extreme weather events.  Combined with the continuing trend within human society towards urbanisation and urban development (two-thirds of the projected world population are expected to live in urban centres by 2050), issues such as river flooding and water security are also likely to be a challenge.

 

Key Global Shift: Beyond Urban and Rural

Despite many societies around the world becoming more urbanised, an increased desire for people to return to nature within these societies was identified by the research.  To accommodate these needs, we may need to redefine how we think about “urban” and “rural”.  Innovative technology could give access to the best of both environments.  This might include virtual rural experiences for an increasingly urbanised population, or an emphasis and prioritisation of rural aspects of products and services including how these are presented to the consumer.

 

Key Global Shift: More Fluid Life-Shapes

A generation or two ago (particularly within Western societies) many people’s lives had a predictable structure beginning with education, followed by work, followed by retirement.  For many, this is no longer the case.  The structures of a lot of people’s lives now follow different patterns with much more fluid changes being experienced.  People may change careers, or re-enter education, later in life, whether by necessity or choice.  Longer life-spans also mean retirement may not look like it once did.  This is likely to be even more apparent in the future, and therefore creates opportunities for technology innovation to support society.

 

Key Global Shift: Distance Redefined

Globalisation has seen the world get “smaller”, whether through readily accessible international travel, or via instant communication around the globe.  The Covid-19 pandemic has changed how we travel and interact, and it may take many years to return to what we once knew, if that happens at all.  There will be opportunities to innovate in how we interact at a distance, whether locally, nationally or internationally, for business, entertainment and social reasons.  This might include the use of robots and avatars to attend events remotely, the use of haptics to facilitate sensory interactions, as well as addressing the challenges of building rapport and trust when people can’t meet face-to-face.

 

The New Future

It’s time to start thinking and innovating, to position New Zealand businesses for the new future.

Alistair Curson

 

References

Callaghan Innovation. (2020, March 27). “About Us”. Retrieved August 05, 2020, from: https://www.callaghaninnovation.govt.nz/about-us

Miller J, Edgar K. (2020, July 28). “Key Global Shifts: What They Could Offer to NZ Innovators”. Retrieved August 05, 2020, from: https://techweek.co.nz/whats-on/2020/key-global-shifts-what-they-could-offer-to-nz-innovators-by-callaghan-801/ and: https://play.stuff.co.nz/details/_6176061334001

Murali M, Cummings C, Feyertag J, Gelb S, Hart T, Khan A, Langdown I, Lucci P. (2018, October 2018). “10 things to know about the impacts of urbanisation”. Retrieved August 05, 2020, from: https://www.odi.org/publications/11218-10-things-know-about-impacts-urbanisation

Techweek. “About Techweek”. Retrieved August 05, 2020, from: https://techweek.co.nz/about/

Wikipedia. (2020, July 27). “Haptic technology”. Retrieved August 06, 2020, from: https://en.wikipedia.org/wiki/Haptic_technology

New Zealand Registered Designs Now Available on DesignView

From 30th June 2020, the New Zealand Intellectual Property Office (IPONZ) has made its registered design data available on DesignView – a searchable international database of registered designs from the European Union Intellectual Property Office (EUIPO).

 

What are Design Rights?

In New Zealand, a registered design protects the visual appearance of a product, or a part of a product.  The protection can cover 3-dimensional shapes and product configurations, as well as patterns and ornamentation in 2-dimensions (such as wallpaper, textiles and labels).

Registered designs protect the way a product looks, not the way it works, and so purely functional designs are not protected (a patent may be more appropriate for protecting the functional aspects of a product).  Examples of products that may be protected by registered design rights include tools, machinery, furniture, jewellery and clothing, as well as their packaging.

The protection afforded allows the owner an exclusive right to use the design in trade or business, including making, importing, selling or hiring any product for which the design is registered.

In New Zealand, so long as the renewal fees are paid, registered designs last for 15 years.

 

Why Search Designs?

In order to qualify for registration, a design must be:

  • New and original
  • More than just functional
  • Appealing to the eye

 

A design search will help answer questions around novelty and originality.  It can also address the likelihood of a product infringing any existing third-party patents and designs in those jurisdictions where you want to operate.

 

DesignView

DesignView is a free global online tool from the European Union Intellectual Property Office (EUIPO) that facilitates searching of over 16 million registered designs from the 72 participating offices around the world.

A range of IP right, bibliographic and legal status information can be searched and investigated, including the product indication, Locarno classification, ownership, legal status and registration date.  Access to details at the office of origin is also provide.

The news of New Zealand joining DesignView follows closely the announcement that the EUIPO had launched improved versions of both its DesignView (designs) and TMview (trade marks) databases.  The improvements include a wider set of search criteria and abilities to fine tune queries, a function to compare designs and trade marks side-by-side, and the capability to export to PDF, Excel and Word formats.

Alistair Curson

 

References

AJ Park. “Designs: Protecting your design in New Zealand”. Retrieved July 14, 2020, from: https://www.ajpark.com/assets/Uploads/Resource/Protecting-your-design-in-New-Zealand.pdf

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

Curson A. (2020, April 21). “Expanding the Scope of Free Global Intellectual Property Databases”. Retrieved July 14, 2020, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=294

European Union Intellectual Property Network. (2020, June 29). “News: New Zealand joins DesignView”. Retrieved July 16, 2020, from: https://www.tmdn.org/tmdsview-web/welcome#/dsview/news

European Union Intellectual Property Network. (2020, April 02). “News: The EUIPO has launched improved versions of TMview and DesignView”. Retrieved July 16, 2020, from: https://www.tmdn.org/tmview/#/tmview/news

European Union Intellectual Property Network. “DesignView”. Retrieved July 16, 2020, from: https://www.tmdn.org/tmdsview-web/welcome#/dsview

James & Wells. “Design registration FAQs”. Retrieved July 14, 2020, from: http://www.jamesandwells.com/resource/design-registration-faqs/

New Zealand Designs Act 2002, s5. Retrieved July 16, 2020, from: http://www.legislation.govt.nz/act/public/1953/0065/latest/DLM281716.html

New Zealand Designs Act 2002, s11. Retrieved July 16, 2020, from: http://www.legislation.govt.nz/act/public/1953/0065/latest/DLM281725.html

New Zealand Intellectual Property Office. “Designs”. Retrieved July 14, 2020, from: https://www.iponz.govt.nz/about-ip/designs/

New Zealand Intellectual Property Office. “New Zealand’s designs are now on EUIPO’s DesignView”. Retrieved July 14, 2020, from: https://www.iponz.govt.nz/news/new-zealands-designs-are-now-on-euipos-designview/

Fluid Trademarks

Can making minor and temporary changes to your trademark strengthen your brand, or undermine it through increased consumer confusion?

 

Principles of Trademarks

Trademarks act as a “badge of origin”, enabling consumers to identify the commercial source from which goods and services come from.  They distinguish the goods and services of one business from those of other businesses within the same industry.  This has the effect of minimising confusion and protecting the consumer from counterfeit or deceptive offerings from third parties.

 

What is a Fluid Trademark?

Fluid trademarks are marks that display temporary modifications to, or variants of, the underlying trademark, often to reflect significant events or support commercial promotions.  This may be accomplished by ornamentation or decoration of the trademark whilst retaining its essential characteristics, or by employing more substantial design changes.

One of the most well-known examples of a fluid trademark is the Google Doodle.  These are variants of Google’s underlying logo, either static or animated, that reflect notable events relating to the day or period for which they are displayed.  For example, key anniversaries, sporting events, or the birthdays of historical figures.

In recent months as a consequence of the Covid-19 pandemic, a number of companies have introduced fluidity to their marks with elements of “separation”, in order to support the message of social distancing that we’re all encouraged to adopt in our fight against the virus.  These include the golden arches of MacDonald’s and the rings of Audi, both of which show the respective elements separated rather than attached or interlocked as they normally would be.

 

Pros and Cons of Fluid Trademarks

Fluid trademarks can strengthen the relationship between the consumer and the brand by demonstrating that the brand is energised, evolving and up-to-date with current trends.

However, there are also risks.  People might become confused if the mark is constantly changing and doesn’t appear to consistently identify the source of the goods or services being provided.  Third parties might create their own unauthorised variations of the mark, which could be relatively difficult to police particularly if the brand is employing a large number of fluid variants.  Further, the underlying mark may become vulnerable to claims of non-use and thus be at risk of removal from the trademark register, on the basis that it is not being used in its registered form.

The use of fluid trademarks should be carefully considered and managed, otherwise they risk weakening or even destroying the original mark and the brand it represents.

However, provided they do not undermine the original mark and its purpose, and are applied as part of a structured strategy, fluid trademarks can be a modern and contemporary tool to promote a brand and strengthen the relationship with the market, in ways conventional trademarks may not.

Alistair Curson

 

References

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

Gaurav K. (2020, March 28). “COVID-19: Audi, McDonald’s And Other Brands Redesign Logo To Promote ‘social Distancing’”. Retrieved June 27, 2020, from: https://www.republicworld.com/world-news/rest-of-the-world-news/covid-19-audi-mcdonalds-and-other-brands-redesign-logo-for-social.html

The Fashion Law. (2020, June 09). “Fluid Trademarks Can be Marketing Gold But Should Brands Really Up-and-Alter Their Famous Logos?”. Retrieved June 27, 2020, from: https://www.thefashionlaw.com/fluid-trademarks-can-be-marketing-gold-but-should-brands-really-up-and-alter-their-famed-logos/

Pearson L, Welsh JA. (2013, August 27). “Fluid Trademarks: Dynamic Brand Identities for Dynamic Times”. Retrieved June 27, 2020, from: https://www.acc.com/resource-library/fluid-trademarks-dynamic-brand-identities-dynamic-times

Petillion F, Vanleenhove C. (2009, September). “Protect your fluid trade marks in Europe”. Retrieved June 27, 2020, from: https://www.crowell.com/documents/Protect-your-fluid-trade-marks-in-Europe.pdf

Spruson & Ferguson. (2014, October 20). “What Are ‘Fluid Trademarks’?”. Retrieved June 27, 2020, from: https://www.spruson.com/trade-marks/fluid-trademarks/

WIPO PROOF: Protect Your Intellectual Assets with A Digital Time-Stamp

WIPO PROOF is a new online business service from the World Intellectual Property Organisation (WIPO) that provides tamper-proof evidence of the existence of any digital file, in any format, at a specific point in time.

 

Types of IP Assets

Intellectual property (IP) rights and assets deal with the output of creative effort.  These include: inventions; designs; works of art, music and literature; trade secrets; know-how; research; data; and other business records.

Whilst some of these can be protected with formally registered IP rights (such as patents and registered designs), others are only covered by unregistered rights, or the processes within an organisation to prevent unauthorised access and disclosure.  All these assets can be highly valuable to a business, and, as such, appropriate steps should be taken to safeguard them.

Additional support mechanisms that enable management around, or otherwise discourage, unauthorised use, infringement and theft, can be of great benefit.

 

WIPO PROOF

WIPO PROOF is a new digital service to complement existing IP registration systems.  It provides a date and time-stamped fingerprint, in the form of a digital certificate, that serves as tamper-proof evidence of the existence of an asset at a specific point in time.

Using Public Key Infrastructure (PKI) technology, WIPO PROOF generates certificates in the form of tokens.

PKI is an established cryptographic technology, widely accepted internationally, for the creation, storage, and distribution of digital certificates.  In addition, WIPO PROOF meets eIDAS (Electronic Identification, Authentication and Trust Services) standards.  This is a European Union regulation relating to electronic identification and trust services for electronic transactions.

 

Protecting Your Assets with WIPO PROOF

WIPO PROOF is specifically designed for innovation and creativity in the digital world.

Anyone can use WIPO PROOF and request a token for a specific digital file.  Any digital file of any size can be protected, including numeric, image, executable, text or audio-visual files.

WIPO PROOF is not a registration system.  Rather, it offers tamper-proof evidence of the prior existence of a digital file.  This can discourage misuse and misappropriation.  It can also safeguard intellectual assets at every stage of development from concept through to commercialization.

Trade secret strategies can benefit from the certification of a file or data that demonstrates both its value and the steps taken to protect it.  Owners of creative works can show that they were in possession of an original work before anyone else.  Scientific research and other valuable data sets can be managed more effectively through accepted verification of their existence and ownership.

The service offered by WIPO PROOF should be viewed as an additional part of your IP strategy.  It can be used to protect certain assets, lay the foundation for the eventual registration of a formal IP right, and help resolve legal disputes, arbitration and mediation.

Alistair Curson

 

References

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

Wikipedia. (2020, June 02). “eIDAS”. Retrieved June 13, 2020, from: https://en.wikipedia.org/wiki/EIDAS

Wikipedia. (2020, June 11). “Public key infrastructure”. Retrieved June 13, 2020, from: https://en.wikipedia.org/wiki/Public_key_infrastructure

World Intellectual Property Organisation. “WIPO PROOF – Trusted Digital Evidence”. Retrieved June 04, 2020, from: https://www.wipo.int/wipoproof/en/

World Intellectual Property Organisation. (2020, May 27). “WIPO PROOF: WIPO Introduces New Business Service That Provides Evidence of an Intellectual Asset’s Existence”. Retrieved June 04, 2020, from: https://www.wipo.int/pressroom/en/articles/2020/article_0012.html

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/

World IP Day 2020: Environmental Opportunities from the Covid-19 Pandemic

World Intellectual Property Day is celebrated on the 26th April each year.  It aims to encourage awareness, learning and understanding of how intellectual property rights impact daily life, as well as the role they play in creativity, innovation and the development of societies around the world.

The theme for 2020 is “Innovate for a Green Future”.

 

Covid-19

At the time of writing, the entire world is living through a time, the impact of which has not been seen for many decades.  The current Covid-19 pandemic has changed the lives of everyone on Earth, in ways that affect us all socially, economically, culturally, educationally and environmentally.

 

Potential Positive Environmental Impacts of Lockdown

Lockdowns of varying restrictions and periods have been and are in force around the world, with the movements and activities of people and businesses severely impacted.  The measurable effect on the environment has been noticeable and rapid.

Data from the European and US Space Agencies have shown significant declines in nitrogen dioxide (NO2) levels in cities and other industrialised areas around the world.  NO2 is a major environmental pollutant and respiratory irritant, in addition to the role it plays in greenhouse gas (ozone) formation.

In a more localised example, Venice (Italy) has seen a reduction in visitor numbers and dramatic decrease in traffic on the city’s canals.  This has led to less pollution and the opportunity for the sediment in the water to settle, resulting in much clearer waterways.

We should not, however, be drawn into a false sense of security that the damage to the environment caused by human activity over the years has been rectified in just a few weeks or months.  Rather, what we are seeing is an indication of what might be achieved if the world chooses to recover from the current pandemic by following a new path in terms of how we interact with our planet.

 

An Opportunity for a New Direction

We have the opportunity to recover and rebuild by taking a new direction with a stronger focus on a suite of green initiatives, including:

  • Preparing and Adapting for the Impacts of Climate Change: climate change is happening and it is likely that anything we do will only mitigate its effects. It is therefore important that we invest in technology, infrastructure and behaviours that prepare us for the challenges that are likely come, such as: rising sea levels; extreme weather; food and water security; migration of humans, animals and plants; and an increased risk of future disease epidemics
  • Reducing Greenhouse Gas Emissions: investing further in energy generation from renewable and other low-carbon sources; pursuing electrification of transport systems, which preferentially use the electricity from renewable sources; and modifying our agricultural practices
  • Reducing Wastage: changing our production and consumption habits, as well as investing in smart infrastructure to optimise our use of available and finite resources
  • Restoring the Health, Diversity and Vitality of Our Ecosystems and Natural Processes: proactively supporting the planet, it’s climate, and our food supply, through more sympathetic management of protected areas, reducing deforestation and the use of deforestation-dependent products, as well as restoring the natural environment

 

The Role of Intellectual Property in Supporting Green Innovation

Patents and other IP rights play a key role in encouraging investment and innovation.  By ensuring endeavours are sustainable and the knowledge generated is shared for future use and development, intellectual property provides stakeholders (individuals, companies, external collaborators and others) with a level of security to develop, grow and scale their inventions and innovations.

As technologies continue to advance and costs fall, financing of renewable energy technologies has increased around the world in recent years.  As of 2019, financing for solar, wind, hydro and geothermal power greatly exceeded new financing for coal and gas-derived power, and this trend is expected to continue.

Analysis of patent filings, however, has suggested a slow-down, and in some cases a decline, in the last few years in patenting activity around alternative energy production and conservation technologies, as well as green transportation.

It will be important to continue to support green innovation as the world recovers from the effects of the Covid-19 pandemic.

The World Intellectual Property Organisation already manages WIPO GREEN.  Launched in 2013, it is an online platform for green technology and IP exchange.  The platform connects and enables green innovation by bringing together technology owners and developers with those looking to commercialise, license and distribute green technologies.

Other economic stimuli might include programmes that favour or prioritise investments in clean energy.  Business assistance packages or bailouts could be conditional upon emissions cuts or other measures focussed on greener technologies, the mitigation of climate change and the future-proofing of our place in the world.

Alistair Curson

 

References

BBC. (2020, March 18). ” Coronavirus: Venice canals clearer after lockdown”. Retrieved April 21, 2020, from: https://www.bbc.com/news/av/world-europe-51943104/coronavirus-venice-canals-clearer-after-lockdown

Blumberg S (ed). (2020, April 10). “NASA Satellite Data Show 30 Percent Drop In Air Pollution Over Northeast U.S.”. Retrieved April 24, 2020, from: https://www.nasa.gov/feature/goddard/2020/drop-in-air-pollution-over-northeast

European Space Agency. (2020, March 19). “COVID-19: nitrogen dioxide over China”. Retrieved April 24, 2020, from: https://www.esa.int/Applications/Observing_the_Earth/Copernicus/Sentinel-5P/COVID-19_nitrogen_dioxide_over_China

Fushimi K, Bergquist K, Rivera León L, Xu N, Wunsch-Vincent S. (2018). “Measuring innovation in energy technologies: green patents as captured by WIPO’s IPC green inventory”. Retrieved April 23, 2020, from: https://www.wipo.int/edocs/pubdocs/en/wipo_pub_econstat_wp_44.pdf

Kaplan J, Frias L, Mcfall-Johnsen M. (2020, March 14). “A third of the global population is on coronavirus lockdown — here’s our constantly updated list of countries and restrictions”. Retrieved April 21, 2020, from: https://www.businessinsider.com.au/countries-on-lockdown-coronavirus-italy-2020-3?r=US&IR=T

Monks P. (2020, April 20). “Here’s how lockdowns have improved air quality around the world”. Retrieved April 21, 2020, from: https://www.weforum.org/agenda/2020/04/coronavirus-lockdowns-air-pollution

Orendain J. (2019, November 22). “The Role of IP Rights in Green Technologies Innovation”. Retrieved April 23, 2020, from: http://metispartners.com/2019/11/22/the-role-of-ip-rights-in-green-technologies-innovation/

Roston E, Rojanasakul M, Murray P, Harris B, Pogkas D, Tartar A. (2019). “Bloomberg Green: Renewable Investment”. Retrieved April 23, 2020, from: https://www.bloomberg.com/graphics/climate-change-data-green/investment.html

Stephenson J. (2020, April 20). ” Covid-19 has nothing on what’s coming”. Retrieved April 21, 2020, from: https://www.newsroom.co.nz/ideasroom/2020/04/20/1133127/covid-19-has-nothing-on-whats-coming

UN News. (2020, April 05). ” First Person: COVID-19 is not a silver lining for the climate, says UN Environment chief”. Retrieved April 21, 2020, from: https://news.un.org/en/story/2020/04/1061082

United States Environmental Protection Agency. “Nitrogen Dioxide (NO2) Pollution: Effects of NO2“. Retrieved April 22, 2020, from: https://www.epa.gov/no2-pollution/basic-information-about-no2#Effects

University of Hawaii. “Climate and Water Resource Case Study: Chapter 2 – C3. Greenhouse Gases: Nitrous Oxide (N2O)”. Retrieved April 22, 2020, from: http://www.soest.hawaii.edu/mguidry/Unnamed_Site_2/Chapter%202/Chapter2C3.html

Wikipedia. (2020, April 21). “2019–20 coronavirus pandemic”. Retrieved April 21, 2020, from: https://en.wikipedia.org/wiki/2019%E2%80%9320_coronavirus_pandemic

Wikipedia. (2020, April 10). “Greenhouse gas”. Retrieved April 22, 2020, from: https://en.wikipedia.org/wiki/Greenhouse_gas

Wikipedia. (2020, April 20). “Spanish flu”. Retrieved April 21, 2020, from: https://en.wikipedia.org/wiki/Spanish_flu

Wikipedia. (2020, April 19). “World Intellectual Property Day”. Retrieved April 21, 2020, from: https://en.wikipedia.org/wiki/World_Intellectual_Property_Day

Wilkinson D, Téllez Chávez L. (2020, April 16). ” How Covid-19 Could Impact the Climate Crisis”. Retrieved April 21, 2020, from: https://www.hrw.org/news/2020/04/16/how-covid-19-could-impact-climate-crisis

World Intellectual Property Organisation. “WIPO GREEN – The Marketplace for Sustainable Technology”. Retrieved April 23, 2020, from: https://www3.wipo.int/wipogreen/en/

World Intellectual Property Organisation. “World Intellectual Property Day – April 26, 2020: Innovate for a Green Future”. Retrieved April 21, 2020, from: https://www.wipo.int/ip-outreach/en/ipday/

World Intellectual Property Organisation. “World Intellectual Property Day 2020 – Innovation for a Green Future”. Retrieved April 21, 2020, from: https://www.wipo.int/ip-outreach/en/ipday/2020/green_future.html

Yvonne. (2020, April 03). ” The Unexpected Environmental Consequences of COVID-19″. Retrieved April 21, 2020, from: https://www.voicesofyouth.org/blog/unexpected-environmental-consequences-covid-19

Australia Phasing Out Innovation Patents (Utility Models)

A few months ago, I posted about the Australian Government’s announcement of its intention to phase out the innovation patent.  On the 26th February this year, the relevant Act received Royal Assent, and from 26th August 2021 applicants will no longer be able to file Australian innovation patents.

 

Utility Models as an Intellectual Property Right

The Australian innovation patent is a form of intellectual property (IP) right, often referred to in other jurisdictions as a utility model.

Utility models are similar to standard patents in that they provide the owner with an exclusive right to stop others from using an invention.  However, they have a relatively lower threshold for patentability and offer a corresponding lesser level of protection.

Typically, a utility model will differ from a patent in the following ways:

  • Patentability: whilst novelty of the invention is still required, inventive step / non-obviousness typically has a lower threshold or is not required at all
  • Term of Protection: shorter than a patent, usually 7 to 10 years, depending on the jurisdiction
  • Registration: often simpler & faster, because many patent offices do not perform substantive examination prior to registration
  • Costs: utility models are cheaper to both obtain and maintain than patents
  • Subject Matter Qualification: in certain jurisdictions, utility models can only be obtained for certain technologies, and for products but not for processes

Being easier, quicker and cheaper to obtain, utility models are often sought to protect incremental innovations.  They are well suited for small and medium sized enterprises (SMEs) that make minor improvements or adaptations to existing technologies.

 

Why is Australia Phasing Out the Innovation Patent?

Recent studies have shown that the innovation patent has failed to achieve its intended purpose.

SMEs and individual inventors have not fully embraced the system, often being one-time users only and not maintaining these IP rights for their full term.  The desired incentivisation of research and development within these groups has not been observed either.

Rather, the system has provided a mechanism that enables big business to stifle the innovation of the smaller players.  The costs of the system have been disproportionally borne by the smaller entities, to a net cost to Australian businesses of AUD 11m annually, whilst the larger entities have realised the benefits.

 

How is IP Australia Continuing to Support SMEs?

The decision to phase out the innovation patent has been driven, in part, by the commitment to ensure the Australian IP system continues to meet the needs of SMEs.

There a number of other resources and initiatives currently available and also being introduced to ensure that SMEs remain supported.  These include:

  • SME Case Management: the availability of a dedicated case manager to support SMEs through the application process for both national and international filings
  • SME Fast Track: a mechanism to maintain the speedier prosecution process associated with the innovation patent, by requesting accelerated examination of a standard patent (usually 12 months) within eight weeks (typical of the former IP right)
  • SME Dedicated Outreach Program: a program of events, webinars and networks to provide educational services to support IP strategy for the entire business lifecycle
  • SME Online Portal: offering 24/7 support and advice, including an IP portfolio management tool

 

Innovation and Utility Models in New Zealand

A few years ago, New Zealand began formally exploring the introduction of a similar type of intellectual property right, referred to as an advancement patent.  However, the bill did not proceed past its first reading and is currently not being pursued.

New Zealand’s patent law landscape has changed significantly over recent years with the enactment of the Patents Act 2013.  Under the previous 1953 Act, the requirement for patentability in New Zealand had a relatively lower threshold than that found in many other global jurisdictions.

The 2013 Act brought this requirement into line with other territories, requiring absolute novelty, as well as examination for inventive step.  This allows New Zealand entities to compete and operate on a level playing field internationally, as well as attracting partnerships and investment globally, by providing a legislative framework that is comparable to other global jurisdictions.

Removing the lower threshold for patentability, however, may have negatively impacted upon SMEs, in that they might no longer be encouraged to invest in the incremental development of technology, as the return on investment would likely be realised over a much longer time period when now following the slower, standard patent route.

The New Zealand Advancement patent was designed to address these concerns by learning from the experiences of utility models elsewhere, including the Australian innovation patent.  The experiences overseas, however, have shown that utility models often do not function as intended, and this may be one reason why the New Zealand Advancement patent was not pursued.

 

Support for SMEs in New Zealand

Aotearoa has its own established innovation agency, Callaghan Innovation, that provides a single point of contact for businesses, supporting them at all stages of their innovation journey, with initiatives including:

  • A comprehensive network to access experts for advice, mentoring, partnering or access to technology
  • Research & Development services to take technologies and products from concept to commercial reality
  • Innovation skills delivered through a series of programmes and workshops designed to increase the pace of innovation and scale businesses
  • R&D Funding – including various grant programmes as well as guidance on R&D tax incentives
  • Scale-Up NZ – an online portal and ecosystem to connect New Zealand companies, investors, commercial hubs and multinationals

The utility model may not have taken hold in Australasia, but by learning from the experiences of others and delivering proactive support to businesses, the prospects for continued and leading innovation here are looking positive.

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 March 05, 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

Curson A. (2019, October 15). “The Australian Government Seeks to Phase Out Innovation Patents (Utility Models)”. Retrieved March 05, 2020, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=249

Dixon, G. (2018, April 6). Private Member’s Bill proposes second-tier New Zealand “advancement patent”. Retrieved March 05, 2020, from https://www.shelstonip.com/news/private-members-bill-proposes-second-tier-new-zealand-advancement-patent/

Gray, E., Watts, R., Scott, R. (2018, April 26). An advancement in name alone? Retrieved March 05, 2020, from https://www.simpsongrierson.com/articles/2018/an-advancement-in-name-alone

IP Australia. (2016, May 30). “Examination of a standard patent”. Retrieved March 05, 2020, from: https://www.ipaustralia.gov.au/patents/applying-patent/standard-patent-application-process/examination-standard-patent

IP Australia. (2019, September 16). “Innovation patents harm small business innovation”. Retrieved March 05, 2020, from: https://www.ipaustralia.gov.au/about-us/news-and-community/news/innovation-patents-harm-small-business-innovation

IP Australia. (2019). “Innovation patents harm small business innovation”. Retrieved March 05, 2020, from: https://www.ipaustralia.gov.au/sites/default/files/innovation_patent_fact_sheet_2019.pdf

IP Australia. (2020, February 27). “Innovation patent to be phased out, and other changes to IP legislation”. Retrieved March 05, 2020, from: https://www.ipaustralia.gov.au/about-us/news-and-community/news/innovation-patent-be-phased-out-and-other-changes-ip-legislation

IP Australia. (2020, March 03). Types of patents. Retrieved March 05, 2020, from https://www.ipaustralia.gov.au/patents/understanding-patents/types-patents

Lucas, J. Rothwell, C. (2018, April 11). Second-tier patent system proposed for New Zealand. Retrieved March 05, 2020, from http://www.jaws.co.nz/about-us/media/article/second-tier-patent-system-proposed-for-new-zealand

Nash, S. (2018, August 10). New strategic direction for small business. Retrieved March 05, 2020, from https://www.beehive.govt.nz/release/new-strategic-direction-small-business

New Zealand Government. “Callaghan Innovation: New Zealand’s Innovation Agency”. Retrieved March 06, from: https://www.callaghaninnovation.govt.nz/

Parmar, P. (2018, April 5). Patents (Advancement Patents) Amendment Bill. Retrieved March 05, 2020, from https://www.parliament.nz/en/pb/bills-and-laws/bills-proposed-laws/document/BILL_77945/patents-advancement-patents-amendment-bill

Parmar, P. (2018, April 6). Bill to introduce second-tier patent system drawn. Retrieved March 05, 2020, from https://www.national.org.nz/bill_to_introduce_second_tier_patent_system_drawn

Summerfield, M. (2018, April 10). With Second-Tier Patent Rights in Retreat in Australia, Are They Making an ‘Advancement’ in New Zealand? Retrieved March 05, 2020, from https://blog.patentology.com.au/2018/04/with-second-tier-patent-rights-in.html

Summerfield, M. (2018, July 10). A Brief History of the Australian Innovation Patent. Retrieved March 05, 2020, from https://blog.patentology.com.au/2018/07/a-brief-history-of-australian.html

Weickmann & Weickmann. “Patents and Utility Models”. Retrieved March 05, 2020, from: https://www.weickmann.de/en/activity-areas/patents-and-utility-models/

World Intellectual Property Organisation. Protecting Innovations by Utility Models. Retrieved March 05, 2020, from http://www.wipo.int/sme/en/ip_business/utility_models/utility_models.htm

Copyright: Access to Literary Works for the Visually Impaired in New Zealand

On the 4th January 2020 the Copyright (Marrakesh Treaty Implementation) Amendment Act entered into force in New Zealand, implementing Aotearoa’s obligations under the Marrakesh Treaty, to which New Zealand acceded last October.

 

What is the Marrakesh Treaty?

The “Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled” came into force in September 2016 following negotiations conducted by the World Intellectual Property Organisation (WIPO).

The primary goal of the Treaty is to increase the accessibility of books and other literary works to the blind, visually impaired, and otherwise print disabled.  It enables this by providing a harmonised international framework (between countries that have ratified the Treaty) for copyright limitations and exemptions that permit the reproduction, distribution, import and export of copyright-protected works in formats such as Braille, audio and large-print.

Under traditional copyright law, the generation and international transfer of works reproduced and adapted in these ways might otherwise be prohibited or significantly restricted.

 

Copyright in Aotearoa

Copyright protection in New Zealand is provided for by the Copyright Act 1994 and the Copyright Regulations 1995.

Copyright owners have the exclusive right to copy their works; issue copies to the public; perform, play, show or communicate their works to the public; make an adaptation of their works; or authorise a third party to do any of these acts.

Aside from certain fair use provisions and other exclusions, for a third party to do any of the above, including potentially reproducing or adapting a work in another format, without the appropriate permissions or authorisation, might constitute copyright infringement, and would thus be prohibited.

Previously, New Zealand’s copyright laws did allow for a relatively limited group of people and organisations to adapt a copyright-protected work into Braille or other formats to assist others with print disabilities.  However, international copyright restrictions created challenges for importing such copies from overseas.

 

What Does the Marrakesh Treaty Enable?

Broadly speaking for New Zealand, the Marrakesh Treaty expands the definition of those entities that can make and obtain these accessible works.  It also facilitates easier importing and exporting of accessible format copies between New Zealand and other Marrakesh Treaty countries.

An “accessible format copy” is defined in the Copyright Amendment Act as: “a copy of a published literary, dramatic, musical, or artistic work, or a part of the work, in an alternative manner or form that gives persons who have a print disability access to the work”.

The following organisations can now apply to be “authorised entities” in order to make and obtain accessible format copies of works:

  • Educational Establishments
  • Educational Resource Suppliers
  • Prescribed Libraries (as defined in the Copyright Act)
  • Charitable Entities (who have a purpose consistent with making accessible format copies available to people with a print disability)

Once authorised, these entities can:

  • Make and distribute, within New Zealand, accessible format copies of literary and artistic works
  • Export these copies to other Marrakesh member countries
  • Import accessible format copies made by authorised entities in other Marrakesh member countries
  • Reproduce copies of accessible format copies of works legally made or imported into New Zealand
  • Provide accessible format copies legally made or imported into New Zealand

Anyone wishing to become an “authorised entity”, and before beginning any of the permitted activities, must notify the New Zealand Ministry of Business, Innovation & Employment first.

Once authorised, there are a number of limitations associated with the permitted activities which include ensuring the accessible format copy respects the integrity of the original work (as far as is reasonably possible), ensuring the copy is only provided to the intended and authorised people or organisations, and keeping good records of all activities in this regard.  Further details are available from MBIE or a copyright attorney.

 

The Accessible Books Consortium (ABC) Global Book Service

WIPO together with a number of organisations that represent the visually impaired, as well as those that represent authors and publishers, launched the Accessible Books Consortium (ABC) in 2014.  Its purpose is to globally increase the numbers and availability of books in accessible formats, thereby helping to facilitate the Marrakesh Treaty.

The ABC accomplishes this is three ways.  Firstly, in sharing the technical skills required to reproduce literary works in accessible formats.  Secondly, it encourages the publication of works in formats accessible to both the sighted and visually impaired from the outset – the concept of “born accessible” publishing.  Thirdly, it has built and maintains the ABC Global Book Service – an international catalogue and database to facilitate the international exchange of accessible content.

Once a New Zealand organisation has been recognised as an “authorised entity”, it will be able to use the ABC Global Book Service to access and internationally share books in accessible format.

 

Visual Impairment in New Zealand and Benefits of the Marrakesh Treaty

As of 2013, an estimated 4% of the New Zealand population (168,000 people) were considered to have some form of visual impairment that could not be corrected by standard assistance devices such as glasses.  Visual impairment was also strongly related to age, with 11% of adults over 65 displaying some form compared with 2% of adults aged 15 to 44.

It is estimated that less than 10% of all written works published globally are published in formats that are accessible to those with a visual impairment or print disability.  This means over 90% of the world’s publications may potentially be inaccessible to this demographic.

As our population both ages and changes in other ways, membership of the Marrakesh Treaty supports access to books, literature and other creative works for everyone, thereby helping to address one potential barrier to all members of society being able to engage in public life.

This can deliver clear benefits through improved access to education, employment and other opportunities to contribute to society, which in turn can raise overall well-being.

Alistair Curson

 

References

Hayes M, Toner E. (2020, January 17). “Law to improve visually-impaired people’s access to copyright works comes into force in New Zealand”. Retrieved February 16, 2020, from: https://www.ajpark.com/insights/ip-updates/marrakesh-treaty-in-force-in-new-zealand/

Ministry of Business, Innovation & Employment. (2020, January 16). “The Marrakesh Treaty”. Retrieved February 16, 2020, from: https://www.mbie.govt.nz/business-and-employment/business/intellectual-property/copyright/the-marrakesh-treaty/

New Zealand Copyright Act 1994. Retrieved February 16, 2020, from: http://www.legislation.govt.nz/act/public/1994/0143/latest/DLM345634.html

New Zealand Copyright Act 1994, s16. Retrieved February 16, 2020, from: http://www.legislation.govt.nz/act/public/1994/0143/latest/DLM345923.html

New Zealand Copyright (General Matters) Regulations 1995. Retrieved February 16, 2020, from: http://www.legislation.govt.nz/regulation/public/1995/0146/latest/whole.html

New Zealand Copyright (Marrakesh Treaty Implementation) Amendment Act 2019. Retrieved February 19, 2020, from: http://www.legislation.govt.nz/act/public/2019/0043/latest/LMS110851.html#LMS110886

New Zealand Copyright (Marrakesh Treaty Implementation) Amendment Act 2019, s4. Retrieved February 19, 2020, from: http://www.legislation.govt.nz/act/public/2019/0043/latest/LMS110867.html

New Zealand Intellectual Property Office. “About IP: Copyright: Legislation”. Retrieved February 16, 2020, from: https://www.iponz.govt.nz/about-ip/copyright/legislation/

New Zealand Intellectual Property Office. (2020, January 06). “Marrakesh Treaty enters into force”. Retrieved February 16, 2020, from: https://www.iponz.govt.nz/news/marrakesh-treaty-enters-into-force/

New Zealand Parliament. “Copyright (Marrakesh Treaty Implementation) Amendment Bill”. Retrieved February 16, 2020, from: https://www.parliament.nz/en/pb/bills-and-laws/bills-proposed-laws/document/BILL_80988/copyright-marrakesh-treaty-implementation-amendment-bill

Stats NZ. “Disability Survey: 2013”. Retrieved February 16, 2020, from: http://archive.stats.govt.nz/browse_for_stats/health/disabilities/DisabilitySurvey_HOTP2013/Commentary.aspx

Wikipedia. (2020, February 12). “Marrakesh VIP Treaty”. Retrieved February 17, 2020, from: https://en.wikipedia.org/wiki/Marrakesh_VIP_Treaty

World Intellectual Property Organisation. (2014). “Accessible Books Consortium”. Retrieved February 19, 2020, from: https://www.accessiblebooksconsortium.org/export/abc/abc_brochure.pdf

World Intellectual Property Organisation. “Marrakesh Treaty”. Retrieved February 16, 2020, from: https://www.wipo.int/publications/en/series/index.jsp?id=154

World Intellectual Property Organisation. “Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled”. Retrieved February 17, 2020, from: https://www.wipo.int/treaties/en/ip/marrakesh/

World Intellectual Property Organisation. “The Marrakesh Treaty”. Retrieved February 16, 2020, from: https://www.wipo.int/marrakesh_treaty/en/

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/