Monthly Archive: October 2019

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/

The Australian Government Seeks to Phase Out Innovation Patents (Utility Models)

Last month the Australian Government announced that it was seeking to phase out the Australian innovation patent.  The grounds for this decision were that the innovation patent had failed to achieve its intended purpose.

 

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 for the owner an exclusive right to stop others from using an invention.  However, they have a 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:

  1. Patentability: whilst novelty of the invention is still required, inventive step / non-obviousness typically has a lower threshold or is not required at all
  2. Term of Protection: shorter than a patent, usually 7 to 10 years, depending on the jurisdiction
  3. Registration: often simpler & faster, because many patent offices do not perform substantive examination prior to registration
  4. Costs: utility models are cheaper to both obtain and maintain than patents
  5. 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 products.

 

The Australian Experience

The Australian innovation patent has been available since 2001.  It was introduced to replace the previous “petty patent” system.  While having some similarities with a utility model, the “petty patent” required the same level of inventive step as a standard patent.

The introduction of the innovation patent introduced an IP right with a lower requirement for inventiveness, thereby offering protection for innovations that would not otherwise qualify for full patent protection.

Recent studies have shown, however, that the innovation patent has not had the desired effect, especially with respect to SMEs and individual inventors.  These players have not fully embraced the system, often being one-time users, and not maintaining these rights for their full life.  The intended incentivisation of research and development within these groups was not observed either.

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

 

Wider Criticism and Global Experiences

Criticisms of the innovation patent have been raised over the years, and are often reflected in experiences of utility models within other jurisdictions.  Whereas the intention behind the utility model as an IP right is well founded, it is not often utilised as intended.  For example:

The threshold for what qualifies as an improvement to a technology can be too low.  The lower standards for obtaining IP right protection can actually inhibit innovation and competition.

Substantive examination is often optional.  This can create uncertainty for third parties within the patent landscape, as to the validity of the claims and in determining whether there is freedom-to-operate.  On the flip side, this provides a strategic advantage to the owner of the utility model, as their competitors may have to invest significant analytical resource to answering these questions themselves.

The overall strategic use of utility models is a further criticism of the system, in particular by those organisations with the resources to target the competition with the intention of stifling the competitors’ activities.  The larger player can file “patent thickets”, a dense set of utility models with claims that are difficult to invalidate, that surround a competitor’s own product.  The intention is to inhibit the competitor’s further development of their product and their overall freedom-to-operate.  This can be particularly effective against small competitors or those who otherwise lack the resources to defend a case.

Such tactics make it increasingly difficult for smaller players to compete effectively with the larger players, with the knock-on effect of eroding confidence and investment in SME innovation, stifling the business activities of the very entities these types of IP right are intended to support.

 

Trends in Aotearoa and Our Other Trading Partners

Last year (5th April 2018) New Zealand began formally exploring the introduction of a similar type of intellectual property right, referred to as an advancement patent.  The bill was negative (failed / withdrawn) at its first reading on 8th August, and is currently not being pursued.

It is interesting to note recent developments in China over the past two years, with respect to updates to their utility model system.  In particular there has been an increase in the level of evaluation of novelty, enablement, support, and subject matter qualification during formal examination.

Utility models are a useful and important part of the suite of IP rights.  However, experience shows that they are not often used as intended.  In a number of jurisdictions, they are currently being explored, tested and revised.

Alistair Curson

 

References

Dixon, G. (2018, April 6). Private Member’s Bill proposes second-tier New Zealand “advancement patent”. Retrieved October 01, 2019, from https://www.shelstonip.com/news/private-members-bill-proposes-second-tier-new-zealand-advancement-patent/

Gajewski D. (2019, July 28). “Utility Model Examination in China is Quietly Changing”. Retrieved October 03, 2019, from: https://www.ipwatchdog.com/2019/07/28/utility-model-examination-china-quietly-changing/id=111451/

Gray, E., Watts, R., Scott, R. (2018, April 26). An advancement in name alone? Retrieved October 01, 2019, from https://www.simpsongrierson.com/articles/2018/an-advancement-in-name-alone

IP Australia. (2016, May 30). Types of patents. Retrieved October 01, 2019, from https://www.ipaustralia.gov.au/patents/understanding-patents/types-patents

IP Australia. (2019). “Innovation patents harm small business innovation”. Retrieved October 01, 2019, from: https://www.ipaustralia.gov.au/sites/default/files/innovation_patent_fact_sheet_2019.pdf

IP Australia. “Innovation patents harm small business innovation”. Retrieved October 01, 2019, from: https://www.ipaustralia.gov.au/about-us/news-and-community/news/innovation-patents-harm-small-business-innovation

Lucas, J. Rothwell, C. (2018, April 11). Second-tier patent system proposed for New Zealand. Retrieved October 01, 2019, 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 October 01, 2019, from https://www.beehive.govt.nz/release/new-strategic-direction-small-business

Parmar, P. (2018, April 5). Patents (Advancement Patents) Amendment Bill. Retrieved October 01, 2019, 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 October 01, 2019, 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 October 01, 2019, 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 October 01, 2019, from https://blog.patentology.com.au/2018/07/a-brief-history-of-australian.html

Weickmann & Weickmann. “Patents and Utility Models”. Retrieved October 07, 2019, from: https://www.weickmann.de/en/activity-areas/patents-and-utility-models/

World Intellectual Property Organisation. Protecting Innovations by Utility Models. Retrieved October 01, 2019, from http://www.wipo.int/sme/en/ip_business/utility_models/utility_models.htm

Intellectual Property and Cultural Appropriation

Last month saw a debate take place in New Zealand around intellectual property rights and the use of items of indigenous cultural significance.

 

IP Mātauranga Māori

The indigenous people of New Zealand are the Māori.  Mātauranga Māori (Māori Knowledge) is the knowledge originating from Māori ancestors.  It covers Māori world view, perspectives, creativity and cultural practices, as well as the Māori language, Te Reo.

There are provisions within New Zealand’s intellectual property laws that recognise and respect Māori culture and traditional knowledge, prevent its exploitation or inappropriate use, and prevent the registration of IP rights that would be considered offensive by Māori or contrary to Māori values.

The New Zealand Intellectual Property Office has Māori Advisory Committees to which IP right applications are referred for advice should an application be considered to incorporate a Māori element.

 

Kia Ora

“Kia Ora” is a versatile phrase from the Māori language Te Reo.  Often used to say “hello” or “thank you”, it has a deeper meaning and usage as a term of acknowledgement of a person.

 

Air New Zealand Inflight Magazine “Kia Ora”

New Zealand’s national carrier, Air New Zealand, provides an inflight magazine that is also entitled “Kia Ora”, that has been in publication for several years.

Back in May of 2019, the company made a trademark application for a logo mark that incorporated the phrase “Kia Ora”, a move that was controversial and prompted criticism from Māori.

The application itself was a response to a New Zealand multimedia company using the phrase on a digital magazine.

A few months later in September, following discussion with Māori leaders, Air New Zealand withdrew their trademark application.

Although Air New Zealand had only sought to trademark the logo of its magazine (to protect it against potential confusion with another publication) and had not sought to trademark the phrase “Kia Ora” itself, the application still initiated a fresh debate between Māori, IP law experts and the Government around the use, recognition and protection of Te Reo in the context of intellectual property.

With all sides positive on the eventual handling of the matter, there is acknowledgement of the importance of further debate and action around balancing the needs, recognition and protection of indigenous communities and their cultural heritage, with the needs of business and the framework of intellectual property rights.

Alistair Curson

 

References

100% Pure New Zealand. “Māori Culture”. Retrieved September 20, 2019, from: https://www.newzealand.com/int/maori-culture/

100% Pure New Zealand. “The Meaning of Kia Ora”. Retrieved September 20, 2019, from: https://www.newzealand.com/int/feature/the-meaning-of-kia-ora/

Air New Zealand Media Release. (2017, September 1). “Air New Zealand says ‘Kia Ora’ to new-look inflight magazine”. Retrieved September 19, 2019, from: https://www.airnewzealand.co.nz/press-release-2017-air-new-zealand-says-kia-ora-to-new-look-inflight-magazine

Air New Zealand Media Release. (2019, September 18). “Air New Zealand calls for more kōrero on te reo trademark issues”. Retrieved September 19, 2019, from: https://www.airnewzealand.co.nz/press-release-2019-airnz-calls-for-more-korero-on-te-reo-trademark-issues

Māori Dictionary. (2019). “Kia ora!”. Retrieved September 20, 2019, from: https://maoridictionary.co.nz/search?idiom=&phrase=&proverb=&loan=&histLoanWords=&keywords=kia+ora

McConnell G. (2017, September 15). “Kia ora is everywhere, but what exactly does it mean?”. Retrieved September 20, 2019, from: https://www.stuff.co.nz/national/96883326/kia-ora-is-everywhere-but-what-exactly-does-it-mean

New Zealand Intellectual Property Office. “Māori IP”. Retrieved September 20, 2019, from: https://www.iponz.govt.nz/about-ip/maori-ip/

New Zealand Intellectual Property Office. “Māori IP: Concepts to understand”. Retrieved September 20, 2019, from: https://www.iponz.govt.nz/about-ip/maori-ip/concepts-to-understand/

New Zealand Intellectual Property Office. “Māori IP: Māori Advisory Committees”. Retrieved September 20, 2019, from: https://www.iponz.govt.nz/about-ip/maori-ip/maori-advisory-committees/

Radio New Zealand. (2019, September 11). “Māori Council accuses Air NZ of appropriating Māori culture”. Retrieved September 19, 2019, from: https://www.rnz.co.nz/news/te-manu-korihi/398589/maori-council-accuses-air-nz-of-appropriating-maori-culture

Radio New Zealand. (2019, September 18). “Air New Zealand drops Kia Ora trademark bid”. Retrieved September 19, 2019, from: https://www.rnz.co.nz/news/national/399044/air-new-zealand-drops-kia-ora-trademark-bid

Te Puia. “Kia ora!”. Retrieved September 20, 2019, from: https://tepuia.com/news/kia-ora/