On 4 June 2019 the Ministry of Business, Innovation and Employment (“MBIE”) released a discussion paper inviting submissions on a range of issues, which may be addressed in a proposed omnibus bill amending New Zealand’s patent, trade mark, and registered design legislation. The Copyright Act 1994 is the subject of a separate ongoing review.
The discussion paper raises the following issues and likely amendments:
Patents Act 2013 (“the 2013 Act”)
- Transitional provisions relating to divisional applications under the repealed Patents Act 1953 (“the 1953 Act”). MBIE’s preference is to begin applying the absolute novelty, inventive step, and support requirements of the Patents Act 2013 during examination of any divisional applications made under the 1953 Act and filed after a specified date. At present, such applications are subject to the local novelty and fair basis requirements of the 1953 Act, and are not examined for an inventive step at all.
- “Daisy-chaining” of divisional applications. MBIE proposes setting a deadline of 12 months from issuance of the first examination report in the original parent application for putting all divisional applications in order for acceptance. All divisional applications must also be accompanied by a request for examination. This is a significant change from the current practice, which requires only that divisional applications are filed before acceptance of the parent application, and a request for examination is filed within the earlier of five years of the deemed filing date or two months from issuance of a direction to request examination.
- Consequence of failing to request examination within the prescribed time limit. MBIE proposes amending the 2013 Act to clarify that an application will be deemed to be abandoned if a request for examination is not filed within five years of the deemed filing date.
- Poisonous priority and poisonous divisional applications. MBIE proposes amending the 2013 Act by adding an “anti-self-collision” provision clarifying that a divisional application does not form part of the prior art base for the parent application, or vice versa. At present, this remains an area of potential uncertainty in New Zealand, which does not allow for the “partial priority” which settled the debate in Europe.
- Multiple priority dates for claims. At present, a claim in New Zealand is entitled to priority only if the disclosure of an earlier specification fully supports the subject matter of the claim. MBIE’s preference is not to amend the 2013 Act to allow a claim to have multiple priority dates or “partial priority”.
- Extensions of time for putting an application in order for acceptance when a hearing is requested. MBIE proposes amending the 2013 Act to explicitly allow for extensions of time, rather than continuing to rely on an existing general discretion to grant extensions for delay at the Intellectual Property Office of New Zealand (“IPONZ”).
- Domestic and international exhaustion of patent rights. MBIE proposes amending the 2013 Act to explicitly adopt the doctrine of exhaustion, both domestically and internationally. The Trade Marks Act 2002 and Copyright Act 1994 already contain similar provisions allowing for the “parallel importation” of goods into New Zealand. It is presently unknown whether the New Zealand courts would necessarily apply this doctrine in relation to patents.
- The Attorney-General’s right to intervene in patent proceedings. MBIE’s preference is to repeal these provisions, which have never been exercised by the Attorney-General.
- The requirement for an invention to be useful. It has been questioned whether the “specific, credible, and substantial utility” requirement of the 2013 Act encompasses the requirement to fulfil any object or promise stated by the patentee in their complete specification, as was the case under the 1953 Act. MBIE is not proposing to amend the 2013 Act to clarify this.
- Swiss- and EPC2000-type claims for subsequent medical use. Swiss-type claims (e.g. “The use of X in the manufacture of a medicament for the treatment of Y”) are allowable in New Zealand, but EPC2000-type claims (e.g. “Substance X for the treatment of Y”) are not. MBIE considered whether there would be any net benefit in allowing EPC2000-type claims, but concluded that there was not.
- Availability of documents relating to applications made under the 1953 Act. Under the 1953 Act, IPONZ was prohibited from making available to the public any reports of examiners. That provision was repealed by the 2013 Act, which applies to all granted patents. MBIE proposes amending the transitional provisions of the 2013 Act to clarify that examination reports issued under the 1953 Act shall remain confidential even after grant.
- Interpretation of claims in light of the abstract. MBIE considered whether there was a need to introduce an equivalent to Article 3.3 of the Patent Cooperation Treaty, which provides that the abstract may not be taken into account for the purpose of interpreting the scope of the protection sought. MBIE appears unconvinced that this is necessary.
Trade Marks Act 2002 (“the Trade Marks Act”)
- Series of trade marks. MBIE’s preference is to remove the provisions for series marks in order to provide greater certainty for applicants and the register generally. At present, approximately 50% of series marks are filed incorrectly, and MBIE considers that series marks can be used for strategic purposes, increase administrative costs, and create potential barriers for future marks.
- Prior continuous use of a trade mark as a ground for overcoming an objection to registration based on a prior registered mark. Trade mark registration is based on a strict priority system, but there are some specific exceptions to “first in, first served”, such as “honest concurrent use” (requiring both “honesty” and “concurrency” of use) and “other special circumstances” (not defined). IPONZ’s practice has been to reject evidence of “prior continuous use” in either category. MBIE proposes to include a specific exception for prior continuous use, similar to section 44(4) of the same Act in Australia.
- Require trade mark specifications to be clear. MBIE proposes to specifically require specifications to be clear, so that IPONZ can object to terms that are too vague, incomprehensible, or linguistically incorrect, including for international registrations designating New Zealand.
- Mandate use of the IPONZ pick list for Search and Preliminary Advice. MBIE proposes that applicants who request preliminary advice from IPONZ use the IPONZ list of pre-approved terms, rather than using custom specifications which frequently contain unclear or incorrectly classified goods/services.
- The scope of acceptable memorandums that can be entered on the Register of Trade Marks. The Trade Marks Act allows for trade mark owners to enter memoranda on the register, but provides no other guidance on what may be entered as a memorandum. MBIE proposes to limit memoranda to those that affect the scope and nature of the rights associated with a registration in order to give trade mark owners more guidance about what is an acceptable memorandum.
- False claims to ownership of a trade mark as a ground for invalidating a trade mark registration. Opposition proceedings can be filed on the basis of a section 32 “not the owner” objection, but on a strict reading of the Trade Marks Act, invalidity proceedings cannot. Despite this, our High Court has allowed section 32 to be used as the basis for an invalidity claim. MBIE proposes amending the Trade Marks Act to make this explicitly allowable.
- Clarify that the reference to “New Zealand law” in section 17(1)(b) of the Trade Marks Act refers to laws other than the Trade Marks Act. Two IPONZ decisions have confirmed that the term “contrary to law” under section 17(1)(b) was designed to refer to New Zealand laws other than the Trade Marks Act. MBIE proposes to clarify section 17(1)(b) in this way.
- Remove requirement for an applicant for revocation or invalidity to be an “aggrieved person.” At present, only an “aggrieved person” may apply to revoke or invalidate a trade mark registration. MBIE proposes to remove the “aggrieved person” threshold requirement, so that any person may apply for revocation or invalidity, just as any person may oppose an application to register.
- Partial refusals of national trade mark applications. Presently, a partial refusal to a national application needs to be responded to or the entire application lapses, whereas a partial refusal to an international designation will result in the offending specification being removed and the application being accepted for the remainder. For the sake of consistency, MBIE proposes to provide for the latter approach to also apply to national applications.
- Undefended proceedings for revocation of a trade mark registration for non-use. In undefended applications for revocation on the basis of non-use, IPONZ is required to issue a decision, which ultimately has meant revoking the mark at issue. MBIE proposes that undefended proceedings result in automatic revocation.
Designs Act 1953 (“the Designs Act”)
- Substitution of applicant. MBIE proposes amending the Designs Act to allow for substitution of an applicant in the event of an assignment, for example. Currently, a change of ownership can only be recorded after registration of the design.
- Requirement to use IPONZ case management system. MBIE proposes amending the Designs Act to require communications through the IPONZ’s online filing and communication system, rather than by post or email.
- Costs and security for costs. MBIE proposes amending the security for costs provision of the Designs Act, which is said to be “inconsistent” with the corresponding provisions of the 2013 Act and Trade Marks Act.
- Hearings before the Commissioner of Designs. MBIE proposes amending the Designs Act to clarify that any person that may be adversely affected by a decision involving the Commissioner’s discretion must be given an opportunity to be heard before that decision is made. At present, it is only the applicant for the design registration who is entitled to be heard.
- Authorisations of agent. MBIE proposes removing the requirement for filing of an authorisation of agent form with an application for registration of a design, or in connection with proceedings under the Designs Act.
- Proceedings before the Commissioner of Designs. MBIE proposes amending the Designs Regulations 1954 to provide guidance on how proceedings before the Commissioner of Designs should be conducted, including provisions on the procedural and evidential requirements.
Use of Artificial Intelligence (“AI”)
The discussion paper also invites submissions on IPONZ’s potential future use of AI , in particular:
- the criteria to be applied before delegating discretionary decisions to an AI system;
- who should decide what decisions may be delegated to an AI system; and
- whether there should be public consultation before discretionary decisions can be delegated to an AI system.
Further information and details on the submission process are available on the MBIE website. Submissions close at 5pm on Friday, 2 August 2019.