The New Zealand Institute
of Patent Attorneys, Inc
News and Information
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Expressions of interest close at 5.00pm on Wednesday, 30 November 2016. For more information and details on how to apply, please visit the Ministry of Business, Innovation and Employment website.
The following email was sent to members on 14 July 2016.
Update on Patents (Trans-Tasman Patent Attorneys and Other matters) Amendment Bill
The Report of the Commerce Select Committee has now issued on the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill.
The full report is available to read on the Parliament website but can be accessed here. It makes for an interesting read.
As you all know, IP Australia and IPONZ mooted the idea of a single patent application process (SAP) and a single patent examination process (SEP) several years back. Despite a lack of consultation with both the profession and New Zealand businesses on the need for SAP and/or SEP, the proposal found its way into the above Bill.
By way of a recap, a patent applicant using SAP would have made a single application via a Trans-Tasman portal. The Trans-Tasman patent application would create a pair of applications – a New Zealand application and an Australian one.
Also under SEP a single examiner would examine a pair of applications. It had been suggested that conducting separate examination processes in each country resulted in significant duplication of effort and resources to perform essentially the same task.
When the Commerce Select Committee called for submissions on the Bill, the overwhelming majority of submitters said it was not needed and would not be used. Submitters pointed out that the introduction of SAP and SEP would be unlikely to provide significant benefits to New Zealand. Businesses and the profession said that SAP would provide only very small cost and time savings.
Differences in patent law and practice were referred to by submitters, resulting in the need for applicants to still consider separate objections to both applications, and formulate different responses to those objections. Therefore applicants using SEP would be unlikely to save any time or costs.
The Committee agreed, and has recommended that the idea be shelved.
The reasons given are set out below:
· “Lack of benefits either to businesses or to patent attorney firms making applications on their behalf: if a SAP was used, there would be only very small cost and time savings. A SEP would offer no benefits because differences in patent law and practice between New Zealand and Australia mean that applicants would still be required to consider separate objections to both applications, and to formulate different responses to those objections. As a result, applicants using a SEP would be unlikely to save any time or costs.
· Increased administrative costs to New Zealand business: there would be increased costs of IPONZ examination and filing fees.
· Significant costs: there would be significant IT infrastructure costs to establish and implement a SAP, and ongoing maintenance costs. Establishing a SEP would also entail significant costs, including for examiner training and IT.
· We understand that applicants are unlikely to use a SAP and a SEP mainly for commercial reasons.
· Work-sharing: examiners in IPONZ and IP Australia already benefit from increased online availability of the examination reports that they and other patent offices produce, which reduces duplication of examination work. We are also aware of advancements in international patent examination work-sharing arrangements which aim to increase efficiencies between patent offices. They include global initiatives such as the “Global Patent Prosecution Highway”. These work-sharing initiatives provide alternative means of achieving the benefits of a SEP, without the need to amend the Act, and involve less cost to IPONZ.
· Recent developments have been proposed to the electronic procedures for filing patent applications under the Patent Cooperation Treaty (PCT), which is administered by the World Intellectual Property Organisation (WIPO). “ePCT” is an online system that allows registered users to upload documents relating to an international application directly in WIPO’s processing system. We are aware of a proposal being developed by WIPO to modify its ePCT system to allow filing of multiple national phase applications, seeking patent protection in a number of PCT member states. We understand that the modified ePCT system would provide similar benefits to a SAP, but at a much lower cost to IPONZ. We also understand that work is underway between WIPO and IPONZ to pilot the modified ePCT system”.
It is somewhat heartening that the collective efforts of Council, and individual member firms and patent attorneys, who took the trouble to voice their concerns about the Bill have been listened to, at least in part.
The Committee also supported the proposed change to Section 92 of the Act to remove lack of unity of invention as a ground on which a person may oppose the grant of a patent, saying this change would align with the original policy intent of the Patents Act 1952 and was generally supported by submitters. The amendment is proposed to apply retrospectively from the date the Patents Act 2013 came into force – 13 September 2014.
The joint regulation of the profession is to proceed.
There are still some aspects of joint regulation we are not happy with and will be taking these up again with Minister Goldsmith when we meet with him on 2 August 2016.
If anyone has any questions or would like to discuss, please get in touch with either me or a Council Member.
The following article, and audio interview with Corinne Cole, was published in the NBR on 3 May 2016:
Patent law changes: government rush to please Aussies will hurt NZ business
Screw up the New Zealand patent attorney sector, or embarrass yourself in front of the Aussies.
That is the awkward political corner the government has backed itself into over pending changes to how patent attorneys are regulated.
To continue reading this article, or to listen to the interview, please click here. This is paid content on the NBR site. They do have a 30-day free trial available though.
The following article was published in the New Zealand Law Society newsletter:
“Flurry” of proposed amendments to intellectual property laws cause concern
Proposed changes to the intellectual property regulatory regime are not fair to New Zealand patent attorneys, IP lawyers warn.
"There's been a real flurry" of IP-related issues "come on to the table recently," says Corinne Cole, AJ Park partner and President of the New Zealand Institute of Patent Attorneys (NZIPA).
Ms Cole says the NZIPA – which will belatedly celebrate World IP Day (26 April) next week – has responded to several proposed reforms of New Zealand's intellectual property laws in the months since she took office in November 2015.
Of primary concern is the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill, which would introduce a single patent application process (SAP) and single patent examination process (SEP) with Australia, and would establish a joint registration regime for New Zealand and Australian patent attorneys.
Joint regulation would increase barriers for New Zealand lawyers wanting to specialise in intellectual property, which would in turn impact on the ability of New Zealand firms to effectively compete with their Australian counterparts Ms Cole says.
She says New Zealand IP lawyers would be subject to additional training, compliance and registration costs, while the costs for Australian patent attorneys would not change.
"We would support a law change that was of mutual benefit," Ms Cole says.
"But all the benefit would be to Australia. The Australian regime wouldn't have to change, only New Zealand's – at increased cost to practitioners.
"The proposed amendment is not in New Zealand's favour."
Ms Cole says New Zealand and Australia also have different legislation and case law governing the protection of patents, which would create difficulties for a single trans-Tasman patent application and examination processes.
The New Zealand Law Society shared some of the NZIPA's concerns in its submission on the proposed joint registration system, noting that increased costs on New Zealand trainee patent attorneys could risk them moving permanently to Australia.
Also on the NZIPA's radar is the Geographical Indications (Wine and Spirits) Registration Amendment Bill which Ms Cole says is set to "finally" come into force, after lobbying by the wine industry.
The GI law would have implications for regional wine-makers, who would be allowed to exclusively market their produce by reference to the geographical area it comes from – similar to how "Champagne" legally refers only to wine from a certain part of France, not all carbonated wine.
And compliance with the Trans Pacific Partnership Agreement will require further amendments to intellectual property laws if it proceeds, Ms Cole says.
Commerce and Consumer Affairs Minister Paul Goldsmith acknowledged World IP Day 2016 on Tuesday, an international initiative that "celebrates the role intellectual property plays in fostering human innovation and creativity".
"In our increasingly knowledge-driven economy, intellectual property is of growing importance to New Zealand businesses," says Mr Goldsmith.
"Every year around 30,000 trade mark, patent, design and plant variety rights applications are made by individuals and businesses to the Intellectual Property Office (IPONZ)."
The Creative Sector Study, led by the Ministry of Business, Innovation and Employment, is currently underway to gain a better understanding of how the creative sector interacts with the copyright and designs regimes in the context of a rapidly changing technological landscape, Minister Goldsmith says.
Photos from NZIPA World IP Day 2016, held in Wellington.