Wednesday, December 18, 2013

IPONZ consults on new patent regulations

clipboard theThe Intellectual Property Office of New Zealand (IPONZ) has just issued a discussion paper seeking feedback on proposed regulations and fee changes. Submissions must be made to IPONZ by 24 January 2014, although I'm aware that extensions may be available.

The New Zealand Patents Act 2013 is due to come in to force on 13 September 2014. The regulations will set out the mechanics of how New Zealand applications will be treated under the new regime. Patent applications filed before September 2014 will continue to be examined under the Patents Act 1953.

Here are some of the main changes around examination processes.

Request for examination

Patent applications under the new regime will not be examined until a request for examination is filed. The request can be made voluntarily by the applicant, following a direction from IPONZ, or can be made by a third party.

The deadline for requesting examination is likely to be 3 years from the filing date of the complete specification. For patent applications arising out of national phase entry (called treaty applications), the deadline will be 3 years from the international filing date. Where a convention application claims priority, the deadline will be calculated from the date of application in New Zealand rather than the filing date of the priority application.

Where IPONZ issues a direction to request examination, the applicant will have a two month deadline to comply. This deadline is not extendible. If the deadline is missed the application will lapse, although there might be an opportunity to restore lapsed applications.

IPONZ expects to examine patent applications relatively quickly. IPONZ anticipates issuing directions to request examination:
  • within one year of the filing date of the complete specification; or
  • within 6 – 12 months of the national phase entry date

If this is the case, then we would expect most requests for examination will be in response to a direction from IPONZ rather than a decision by the applicant.

Time period for placing the application in order for acceptance

IPONZ will issue a first examination report at some point following a request for examination. The first examination report starts the clock ticking for putting the application in order for acceptance (allowance).

The proposed period for placing the application in order for acceptance will be 12 months from the date of the first examination report. It's important to note that this is an acceptance deadline rather than a response deadline. Any response needs to be filed early enough to be considered by an examiner before the 12 month acceptance deadline.

IPONZ will require a response to the first examination report within 6 months. If the first response does not place the application in order for acceptance the next examination report will give a 3 month deadline to respond. There will be a one month extension available for each response deadline. In theory there is no limit to the number of examination reports that IPONZ can issue within the 12 month acceptance deadline.

There will be some situations where IPONZ will not have sufficient time to consider a response before the 12 month acceptance deadline. There might be some discretionary extensions available. But applicants may prefer not to rely on discretionary extensions.

It will be important to allow applicants to file a precautionary divisional application (continuation) in such situations. There is no mention of imposing a restriction on divisional practice. This means that no restriction is contemplated. Or perhaps no consultation on such restriction is contemplated.

Electronic case management system

IPONZ introduced a new online case management system for patents in December 2012. We are advised that uptake of the online case management system has been very high. Almost 100% of all patent applications are made online. A minority of clients use other means which requires maintaining infrastructure, processes and staff in place to receive the documentation.

IPONZ proposes to mandate use of the online case management system for all communications to and from IPONZ and filing of documents with IPONZ under the Act.

This proposal seems a little strange. IPONZ acknowledges that they cannot mandate electronic filing of national phase (treaty) applications. Last year treaty applications made up 54% of patent application filings.

And there is a handful of patent applications that are subject to secrecy orders imposed by foreign countries. The information in such patent specifications would compromise New Zealand’s security, defence or international relations if mishandled. I talk about classified applications in my post the darker side of patent protection.

Does it make sense to impose a rule on all patent applicants to file patent applications online while acknowledging that the rule doesn't apply to over half the patent applications filed in any year? Does it make sense to require patent applicants to deal with IPONZ electronically when its own systems are not secure enough for classified patent applications?

Perhaps a more sensible approach would be to pat ourselves on the back about the high uptake of the online case management system and recognise that some patent applications will continue to be handled manually.

Further steps

IPONZ has compiled a list of 40 questions on aspects of the discussion paper. They would love to hear your views by the deadline of 24 January 2014.

Photo courtesy of author Cookieater2009 under Creative Commons licence.
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