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.
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/