The New Zealand Institute
of Patent Attorneys, Inc
What is IP?
Intellectual property if a term which refers to the ownership of an intangible thing - the innovative idea behind new technology, products, processes, designs or plant varieties, a brand, trade secret, or the goodwill associated with a business, product or service. The law recognises that these intangible assets are forms of property that can be sold, licensed, damaged or trespassed upon.
A patent provides protection for the ideas embodied in novel technologies, products and processes. Patents cover a principle or idea and not just a single physical form of an invention. The monopoly granted can be wide in scope and cover many variations of a basic product or process.
A design registration provides protection for aspects of the appearance of an article, such as its shape, configuration, pattern or ornamentation. A design registration does not protect functional aspects of an article unless those aspects also contribute to its appearance. Functional aspects may be protected by patent.
Copyright is a property right which automatically exists in certain categories of original works. Copyright does not extend to ideas. It protects the particular way in which an idea is expressed. Copyright can be used to prevent one party from copying the product of another and is a useful supplement to registered intellectual property rights such as patents, designs or trademarks.
A trade mark may comprise any marking such as a word, label, phrase, symbol, logo, either singularly or any combination of these. A trade mark can also be a colour, shape or even a sound or smell if capable of being represented graphically. The purpose of a trade mark is to indicate a connection between certain goods or services and the trade mark owner.
Plant Variety Rights
New plant varieties are protectable in New Zealand. This protection extends to virtually any kind of plant (except algae and bacteria) which is new, distinct, homogeneous and stable. The owner of a plant variety right has the exclusive right to produce propagating material of the protected variety (and in some cases the fruit, flowers or other products of the variety) for sale.
New Patents Act in New Zealand
The New Zealand Patents Act 2013 comes into force on 13 September 2014. The changes are substantial and will make it harder for patents to be granted. This is generally welcomed to better ensure monopolies are only granted for genuine inventions and to bring the scope more into line with the contribution made. However, there will be an increased burden and costs for those seeking protection. These can be circumvented in the short term by filing in New Zealand by 12 September 2014 and we strongly advise doing so.
The key changes are:
- More rigorous examination including consideration of publication or use anywhere in the world (not just in New Zealand), examination for inventive step and utility, greater requirements around disclosure of an invention and a balance of probabilities threshold rather than applicants being given the benefit of doubt
- Various statutory exclusions to patentability have been introduced (computer programs as such, human beings and biological processes for their generation, and methods of treatment and diagnosis performed on human beings)
- Renewal fees will be payable annually, not at 4,7, 10 and 13 years from the filing date
- More mechanisms will be available for challenging patents and applications
To take advantage of the present, more lax examination regime and avoid the statutory exclusions, an application must be filed by 12 September 2014. This requires entry into the national phase, filing of a convention or complete (not provisional) application in New Zealand. The new regime will apply to any applications filed after this date even if they are linked to a PCT, priority or provisional application filed before 12 September 2014.
With the switch to annual fees, total renewal fees payable will increase. It is currently possible to pay renewal fees in advance and it may be worthwhile doing so where there is a clear intent to keep a patent in force. The first renewal due after 13 September 2014 will be payable according to the old Act and subsequent renewals due annually. Any advance payments would need to be made on or before 12 September 2014.
Third Party Challenges
Pre- and post-grant re-examination are being introduced whereby material relevant to the patentability of an invention may be submitted to IPONZ and considered by an examiner. IPONZ will continue to handle pre-grant oppositions and post-grant revocations, however, post-grant revocations will be admissible at any time after grant, not just within the first year after grant. Previously, older patents could only be challenged before the High Court. This option remains. The new mechanisms for challenge will be available for all patents and applications from 13 September 2014 irrespective of their filing date but the grounds available will be broader for applications filed after 13 September 2014.
For advice on these and other changes, we recommend consulting a New Zealand patent attorney.