What do the changes to Convention Countries in New Zealand and Australia mean for you?

Article written by: Dr Stephanie Grant    |   Tuesday 4th September 2012

New Zealand

The new Patents, Designs and Trade Marks Convention Order 2012 came into force on 23 August 2012.  This updates the list of countries from which convention priority can be claimed. 
The list now recognises our close Pacific island neighbours, Samoa and Tonga, but not Vanuatu, which became the newest signatory to the World Trade Organisation on 24 August 2012.
The newly added “convention countries” are:

  • African Intellectual Property Organisation (OAPI)
  • African Regional Intellectual Property Organisation (ARIPO)
  • Andorra
  • Benelux Office for Intellectual Property (BOIP)
  • Bhutan
  • Cape Verde
  • Comoros
  • Eurasian Patent Organisation (EAPO)
  • European Patent Office (EPO)
  • Montenegro
  • Nepal
  • Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)
  • Patent Office of the Cooperation Council for the Arab States of the Gulf (GCC Patent Office)
  • Samoa
  • Saudi Arabia
  • Serbia
  • Seychelles
  • Tonga
  • Yemen
Amended “convention countries” are:
  • Bolivia, Plurinational State of (amended from Bolivia)
  • Ecuador (amended from Equador)
  • European Union (amended from European Communities)
  • Kyrgyz Republic (amended from Kyrgyzstan)
  • Venezuela, Bolivarian Republic of (amended from Venezuela)
New Zealand (NZ) is not listed as a convention country, despite being a signatory to the Paris Convention.  This raises an issue as discussed below.

Claiming Convention Priority under the Patent Cooperation Treaty

It is not possible to claim convention priority when entering national phase in NZ from a PCT application that has a NZ priority application.  Therefore, where a priority application is filed in NZ, a NZ applicant should file a complete-after-provisional application before the end of the priority period.  One way of addressing this is to file the priority application overseas.  However, NZ resident applicants require permission from the Intellectual Property Office of New Zealand (IPONZ) if they plan to file their first application for patent protection outside of NZ.  The current Patents Bill does not address this issue.

Claiming Convention Priority under the Madrid Protocol

All going to plan IPONZ could be ready to accept Madrid Protocol filings by the end of this year.  Australia has been a member since 2001.
Under the Madrid Protocol, an international application may be based on either a registration with the office of origin (a “Basic Registration”) (generally IPONZ in the case of a NZ based applicant and IP Australia for an Australian based applicant) or on an application for registration filed with the office of origin (“Basic Application”).
An international application may claim convention priority from a Basic Application for all or some of the goods and services covered by the Basic Application or Registration if filed within 6 months of the Basic Application.

Australia

Australia has taken a somewhat more modern approach that will allow its list of convention countries to be maintained on a continual basis.
From 15 April 2013 the definition of “convention country” will be revised and the requirement that countries be individually listed in the Australian Trade Marks Regulations 1995 (the Regulations) will be removed.  Instead, the Regulations will refer to internet addresses where authoritative lists of convention countries may be sourced.

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