New Zealand’s New Patent Laws

The New Zealand Patents Act 2013 commenced operation on 13 September 2014. 

As I wrote last year, when the New Zealand parliament passed the legislation, the new law replaces the 1953 Act, and brings New Zealand’s patent laws into line with the majority of developed nations.  Among numerous other changes, examiners at the Intellectual Property Office of New Zealand (IPONZ), are now able to reject claims for lack of inventive step, and to base objections on prior disclosures that took place anywhere in the world, and not just in New Zealand.

Other key features of the Patents Act 2013 include:

1. introduction of a new requirement to request examination, either voluntarily or when directed to do so by the Commissioner of Patents (under the 1953 Act examination was automatic);
2. a utility requirement that the claimed inventions have a specific, credible, and substantial use that meets the promise set out in the specification;
3. claims must be supported across their full scope by matter disclosed in specification (in place of the old ‘fair basis’ test);
4. applications opened to public inspection (i.e. published) at 18 months from the earliest priority date (previously, applications were not published until acceptance);
5. introduction of annual maintenance fees payable from the fourth anniversary of filing, whether before or after grant (previously renewal fees were due only after grant, in the 4^th, 7^th, 10^th and 13^th years);
6. patentability is now determined according to the ‘balance of probabilities’ standard (previously, applicants were accorded the benefit of any doubt); and
7. a new exclusion from patent-eligibility in respect of computer programs ‘as such’.

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Tags: Law reform, New Zealand, Regulations

Cutting Red Tape in the Patent System

The Australian government is on a crusade to eliminate as much red tape as it can.  Or, at least, to be seen to be doing so.  It even has a web site dedicated to the goal of generating ‘deregulatory savings’ of A$1 billion every year, complete with a bold, red progress bar, currently hovering around the $700,000,000 mark.

Aside from taking feedback directly from the public, one way in which the government is pursuing its goal is to task various departments with finding ways to cut their own red tape (thus creating an additional administrative burden on those staff to whom this responsibility falls).  Hence the recent announcement by IP Australia that it ‘is looking for ways to reduce regulatory burden within the intellectual property (IP) system.’

IP Australia explains that it:

…is reviewing its regulations to find areas where we can cut red tape without compromising the integrity of the IP system. We will consult on our ideas as they are developed. However, we need your help to find more ways to cut red tape.

Businesses and individuals deal with IP regulation every day. IP Australia wants to hear from you on ways to help reduce red tape in the IP system.

This is everybody's big opportunity to tell IP Australia what it can do to save its clients time and/or money in dealing with the agency, and with the Australian IP system generally!  We are assured that '[s]uggestions for cutting IP red tape don't need to be long and detailed. Just identify the regulation or rule, tell us what it costs you (Time? Money?), and why you think we don't need it.'

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Tags: Australia, Patent Office, Regulations

The Hard Line on Extensions of Time in Patent Oppositions

Since the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 came into effect on 15 April 2013, new, stricter, rules have applied to parties hoping to obtain an extension of a time period for filing evidence in an Australian patent opposition.

As of the time of writing this article there have been seven published Patent Office rulings on extension requests decided under the new regulations.

Unsurprisingly, considering that an express intention of the new rules was to raise the bar on extensions of time, five of the seven requests considered under the new regulations have been refused. 

However, while the situation looks grim for parties requiring additional time to prepare opposition evidence, things are not as bad as the published decisions might suggest.  By definition, it is typically the most contentious cases that proceed to a hearing and a written decision.  I am aware of a number of recent cases in which extensions of time have been granted, under both the new and old rules, without any need to request a hearing.  Naturally, the majority of clearly worthy applications for extensions will be granted without fuss or fanfare. 

And, as I explain below, there is much to be learned from the failures of those parties that have had to take their requests to a hearing!

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Tags: Australia, Evidence, Extensions of time, Patent Office, Raising the Bar, Regulations

Patent Office Enforces Tough New Evidence Extension Rules

Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd [2013] APO 57 (11 November 2013)

In the first published decision of the Australian Patent Office relating to the new Raising the Bar regulations on extensions of time during opposition proceedings, an opponent has been denied an extension to file evidence in support of its opposition.  The decision confirms that the Office will be taking a hard line on applications for extensions.

In its June 2009 consultation paper, Resolving Patent Opposition Proceedings Faster [PDF, 198kB], IP Australia identified delays in opposition proceedings – with oppositions often running for between three and eight years – as one of the issues to be tackled under the Raising the Bar reforms.  Long delays were most commonly due to evidential time-frames, as a result of the Patent Office having only limited powers to refuse requests for extensions of time.

This changed when the Raising the Bar reforms, and in particular the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013, came into effect on 15 April 2013.  New Regulation 5.9 established a more rigorous test under which, unless exceptional circumstances apply, parties preparing evidence in the course of opposition proceedings must act promptly and diligently at all times, and make all reasonable efforts to comply with relevant time periods. 

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Tags: Australia, Evidence, Extensions of time, Patent Office, Raising the Bar, Regulations

Take THAT, New Zealand Patent Attorneys!

Last week, IP Australia announced that ‘in March 2013 Australia and New Zealand signed a bilateral arrangement for the trans-Tasman regime of patent attorneys.’

Perhaps I have just not been paying enough attention, but this announcement took me completely by surprise.  Of course, I was aware that there has been an ongoing project for some time to create a closer ‘Single Economic Market’ (SEM) across Australia and New Zealand, and I have written in the past about some of the proposals pertaining to the two countries’ IP systems, such as the implementation of a single integrated application and examination process, and a unified regulatory regime for patent and trade marks attorneys.

However, I was not aware of any specific progress on the patent attorney regulatory regime.  Until this announcement, the most recent update on progress in the SEM initiatives was back in January, when IP Australia indicated that further development of the single application/examination process was dependent upon passage of the NZ Patents Bill 2008, in order to ‘more closely align the patents laws of New Zealand and Australia.’

What I found surprising was not merely that an agreement [PDF, 92 kB] has been drafted and signed by the Australian and New Zealand governments, but that New Zealand has completely capitulated to the Australian regulatory regime, in the form it will take following commencement of the Raising the Bar reforms on 15 April 2013.  This is despite the fact that New Zealand practitioners responded to a discussion paper on the proposal back in 2011 with almost universal (and quite understandable) opposition to the idea of a common regulatory regime based on the Australian system.

New Zealand patent attorney Matt Adams has written on his PatentBuff blog, with some justification, that this move could result in further contraction of the (already small) cohort of registered patent attorneys in New Zealand.

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Tags: Australia, New Zealand, Patent attorney profession, Regulations

Good News for SMEs as IP Australia Takes Feedback On-Board

IP Australia has published an update on its ongoing IP law reform process, providing its response to feedback received from stakeholders in relation to proposed amendments to regulations implementing the Intellectual Property laws Amendment (Raising the Bar) Act 2012.

The good news for Australian inventors and small-to-medium enterprises (SMEs) is that, among other improvements to the proposed rules, IP Australia has backed away from plans to introduce a compulsory ‘preliminary search and opinion’ (PSO) process for certain new Australian patent applications.  As we explained in an earlier article, the original proposal would have disproportionately impacted smaller local applicants, requiring an additional up-front payment of A$2200 at filing of an Australian complete standard patent application. 

The PSO process will be available, upon payment of the fee, to any applicant wishing to take advantage of it voluntarily.

Other changes to be made to the draft regulations as a result of feedback received by IP Australia include:

1. a reduction in a new search fee – proposed to be levied in all cases in which no existing Australian, foreign or international search results are available – from A$1710 to A$1400;
2. the requirement for an applicant to provide a statement of entitlement will be shifted from filing (as previously proposed) to the time of requesting examination;
3. the regulations will be amended to ensure that it is not necessary for a simple name change of a patentee to be advertised for opposition purposes;

Additionally, IP Australia has recognised the desirability of some modifications to proposed practices, which will not require amendment of the regulations.  This will include using electronic means (e.g. email) whenever possible for the filing and giving of evidence and documents in oppositions, to avoid disadvantaging parties due to postal delays.

Various minor amendments, corrections and clarifications will also be made to the draft regulations, based on stakeholder feedback.

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Tags: Australia, Law reform, Patent Office, Raising the Bar, Regulations

SMEs – You and IP Australia Need to Talk!

A contingent of key staff from IP Australia, led by Director General Philip Noonan, is currently engaged in a tour of mainland capital cities, where they have been consulting with members of the IP professions on the draft amendments to the Australian Patents Regulations 1991, which are open for comment until 21 November 2012 (see Draft Regulations Reveal Applicants to be Slugged with Search Fee and Timeframes Slashed in Second Stage of Proposed Regulations).  We were fortunate to have the opportunity to attend the Melbourne discussion on Wednesday, 14 November 2012.

A small but highly-engaged contingent of about 20 patent attorneys, trade marks attorneys and lawyers attended either one, or both, of the two 90 minute sessions.  The format was basically a ‘round table’ discussion (though the actual table was rectangular), which ranged across a number of the issues raised by the draft regulations.  The IP Australia representatives generally seemed receptive to the various views expressed by the participants, and equally willing to explain and defend their position on the proposed regulations.  It is fair to say that there was fairly robust discussion on a small number of the more contentious issues!

The Australian IP law reforms, and the accompanying amendments to the regulatory regimes, encompass trade marks, designs and copyright matters, as well as changes to the regulations governing the patent and trade marks attorney professions.  However our interest, as always, is primarily in relation to the patent reforms.

In this article, we cover a few of the topics discussed.  However, we wish to highlight particularly the potential impact of the proposed search and examination fee regime on Australian small-to-medium enterprises (SMEs).  While there are certainly people within the patent profession who will be advocating a rethink of this regime, on behalf of our local SME clients, it is equally important that SMEs ensure that their own voices are heard directly.  Otherwise, there is a real risk that some Australian SMEs will be effectively priced-out of their own patent system!

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Tags: Australia, Law reform, Patent Office, Raising the Bar, Regulations

Timeframes Slashed in Second Stage of Proposed Regulations

The primary objective of Schedule 3 of the Raising the Bar reforms to Australia’s intellectual property laws is to improve efficiency in procedures relating to approving and challenging patent and trade mark applications, so as to reduce delays in the system (see, e.g., Major Australian Patent Reform Passes in Senate).  It therefore comes as no surprise that in the second (and final) stage of draft amendments to the Patents Regulations 1991, released by IP Australia on Thursday, 11 October 2012, a number of allowed time periods for completing various actions in relation to patents and applications have been substantially cut.  These changes were clearly foreshadowed in the original consultation process, prior to release of the proposed legislation.

The second stage of proposals also includes regulations implementing Schedule 6 of the Raising the Bar reforms, which are directed towards simplifying and streamline various processes.

In a nutshell, the major time-related proposals are:

1. significant reductions in the time available for examination of a patent application, and for the applicant to overcome all objections and achieve acceptance (or ‘allowance’, as it is more-commonly called in some other jurisdictions) of the application;
2. reductions in some of the periods allowed for completing steps in opposition proceedings – particularly ‘procedural’ oppositions, such as opposing an amendment or the grant of an extension of time; and
3. major reform to the test applied to determine whether an extension of time to file evidence in an opposition is justified – under the current Regulations it has become difficult for the Patent Office to refuse an extension request, while the proposed Regulations will place the onus of establishing the case for an extension firmly on the requestor.

We have updated our ‘redlined’ copy of the present Regulations, showing the changes that would be made by the proposed amending regulations, which can still be found at the following links:

1. Volume 1 (Chapters 1 to 23 and Schedules 1, 1A and 2) [PDF 1.6 MB]; and
2. Volume 2 (Schedules 2A to 8 and the Notes) [PDF 422 kB].

The due date for written submissions on the draft regulations is unchanged by the release of this additional tranche.  Any submissions must still be filed by the unextendable deadline of 5.00pm, on 21 November 2012. Submissions may be emailed (Word or RTF format preferred) to reform@ipaustralia.gov.au.

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Tags: Australia, Law reform, Patent Office, Raising the Bar, Regulations

Draft Regulations Reveal Applicants to be Slugged with Search Fee

Draft amendments to the Patents Regulations 1991, published by IP Australia on Friday 21 September 2012, reveal plans to introduce a new search fee which may see customers (as applicants are known these days) paying at least A$2,200 to the government authority for search and examination of an Australian patent application.

The primary purpose of the draft regulations is to implement the Intellectual Property laws Amendment (Raising the Bar) Act 2012 (see previous articles on Patentology, including Bar Raised, as IP Law Reforms Signed Into Law). 

IP Australia has indicated that it will publish the draft regulations in two stages, so as ‘to maximise the time for public comment’.  At this time, draft regulations implementing Schedule 1 (relating to enhanced standards of patentability), Schedule 4 (reforms to the regulatory regime for patent and trade marks attorneys) and Schedule 5 (trade mark and copyright enforcement have been made available for consultation.

We have prepared a ‘redlined’ copy of the present Regulations, showing the changes that would be made by the proposed amending regulations, which we will update when the further draft regulations become available:

1. Volume 1 (Chapters 1 to 23 and Schedules 1, 1A and 2) [PDF 1.3 MB]; and
2. Volume 2 (Schedules 2A to 8 and the Notes) [PDF 414 kB].

IP Australia is inviting written submissions on the draft regulations, due by an unextendable deadline of 5.00pm, on 21 November 2012.  Submissions may be emailed (Word or RTF format preferred) to reform@ipaustralia.gov.au.

Over the coming weeks we will take the opportunity to review some of the proposed regulations in more detail, just as we did with the exposure draft of the Raising the Bar Bill (see Australian Patent Reform – Wrap-Up).  Some of the amendments to the Patents Regulations are extensive, and will require careful consideration. 

However, we intend to start with one of the least extensive changes: the amendment of a single row in the table of fees in Schedule 7 of the Regulations, simultaneously eliminating the fee for ‘modified examination’ (which has been repealed by Raising the Bar) while adding a new fee of A$1,710 for a ‘search by the Commissioner in relation to a patent request and complete specification as part of an examination, if the complete application was made on or after 15 April 2013’.

In the remainder of this article we will look at this new fee, the purpose and justification for its introduction, and a comparison with similar fees in other jurisdictions.  While the search fee may be justifiable from a cost-recovery perspective, it appears to us to be problematic from an innovation policy perspective.  Indeed, we believe it is time for Australia to consider introducing US-style ‘small-entity’ fee reductions.

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Tags: Australia, Innovation policy, Law reform, Official fees, Patent Office, Raising the Bar, Regulations

Kiwis Unimpressed by Trans-Tasman Profession Proposals

Design by The Angry Kiwi

On 7 April 2011, IP Australia and the New Zealand Ministry of Economic Development released a discussion paper for a trans-Tasman patent attorney regulatory framework.

The key reform proposed in the discussion paper is the establishment of a single trans-Tasman (i.e. across Australia and New Zealand) governance body or board to regulate education, discipline and registration.  The central proposal is that the respective roles and functions of the Australian Professional Standards Board for Patent and Trade Marks Attorneys (PSB), the equivalent body proposed to be established in New Zealand, the Director General of IP Australia, and the New Zealand Commissioner of Patents would be merged into a single new body.

Under this regime there would be:

1. a single definition of the functions and services which can only be performed by a registered patent attorney or legal practitioner;
2. a single patent attorney code of conduct;
3. a single disciplinary regime;
4. a consistent attorney qualification/continuing education requirements;
5. a single registration process and register;
6. a single fees regime; and
7. a single secretariat support unit.

Essentially, in place of the current system, in which Australia and New Zealand have separate regimes for the registration and regulation of patent attorneys (i.e. a practitioner is an Australian Patent Attorney, a New Zealand Patent Attorney or, commonly, both), there would instead be a single ‘Trans-Tasman Patent Attorney’.

The deadline for public comment on the discussion paper was 16 May 2011, and all submissions can now be viewed on IP Australia’s web site.

We think it would be fair to say that the comments from Australian practitioners are generally not unfavourable, while the submissions by New Zealand practitioners are more numerous (despite the smaller size of the New Zealand profession), and almost universally opposed to the proposal.  And, frankly, we find this completely understandable!

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Tags: Australia, New Zealand, Patent attorney profession, Regulations

Australian Patents Regulations Amended, Effective 1 July 2011

 
On 12 May 2011, the Federal Executive Council made the Intellectual Property Legislation Amendment Regulations 2011 (No. 1).  The Regulations amend the Patents Regulations 1991, Trade Marks Regulations 1995, Designs Regulations 2004, Plant Breeder’s Rights Regulations 1994, and the Olympic Insignia Protection Regulations 1993.

There are three changes, in particular, to the Patents Regulations 1991 that are likely to be of some interest to patent owners and applicants, and their advisers:

1. it will be possible to use any Australian postal address as an ‘address for service’ in relation to a patent or application;
2. the period allowed for payment of an unpaid fee for requesting an amendment to a complete specification will be extended from one month to two months; and
3. certain formal requirements for the layout of patent specifications will be aligned more closely with the corresponding PCT Rules – in particular, type will be required to be 1 ½ spaced, and paragraph and/or line numbering will no longer be required.

The amendments will come into effect from 1 July 2011.  Further details of the three changes highlighted above are set out below.

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Tags: Australia, News, Regulations