New Zealand IP Law changes a step closer

As mentioned in our articles here and here, several small yet significant change are on the horizon for New Zealand Intellectual Property Laws. A number of these proposals have now been agreed to by Cabinet.

Proposed changes

The proposed changes to New Zealand IP laws agreed to by Cabinet are as follows:

Patents

  • Amend the deadline around filing of divisional applications (discussed further here);
  • Amend the transitional provisions so that divisional applications under the Patents Act 1953 are examined in accordance with the Patents Act 2013 from a certain date;
  • Provide for international exhaustion of New Zealand patent rights;
  • Provide that a divisional application cannot be refused on the basis of the disclosure of the parent application and vice versa, thus addressing the issue of poisonous divisional applications, but perhaps not addressing other poisonous priority issues;
  • Provide for an extension of time for placing an application in order for acceptance when a hearing is requested, and to provide for lapse where a hearing request is withdrawn.
  • Provide for an application to lapse if examination is not requested within five years and to retrospectively deal with applications whereby the five year deadline has already passed;
  • Clarify that examination reports and related matter issued or provided under the Patents Act 1953 will continue to remain confidential;
  • Clarify that an abstract accompanying a patent application is not to be taken into account in interpreting the description or claims of the application;
  • Provide that only one application for the same subject matter having the same priority date can proceed to grant as well as dealing with other intervening publications.

Trade Marks

  • Amend the provisions relating to series marks to remove reference to "other matters of a non-distinctive character" and provide a cap on the number of marks that can be included in a series mark application;
  • Allow registration of a trade mark where the Commissioner is satisfied there is prior continuous use over a cited mark.
  • Limit memorandums on the register to only those that affect the nature and scope of rights.
  • Clarify that the restriction on registering a mark, the use of which would be contrary to New Zealand law, does not include that the use would be contrary to the Trade Marks Act 2002;
  • Provide for partial refusal where the applicant does not respond to a compliance report;
  • Require that trade marks specifications be clear;
  • Remove the requirement that only an aggrieved person is able to challenge a trade mark registration.
  • Require that applicants for search and/or preliminary advice must use a list of goods and services established by the Commissioner.

Designs Act 1953

  • Provide for procedures for substituting an applicant;
  • Allow the Commissioner to require communication by, for example, electronic means and to serve or give information by electronic means;
  • Provide provisions relating to costs in Design proceedings;
  • Remove the requirement for an authorisation of agent on filing of an application for registration.
  • Amend procedural and evidential requirements in line with the Patents Act 2013.

Next steps

The IP Laws Amendment Bill has now been sent to be drafted in accordance with the above intentions. It is expected an exposure draft will be released in March or April 2021. After a period for public comment it will then proceed through Parliament. It may be a year or more before such an amendment comes into force. We will keep you informed of the progress of the legislation.

Please contact us if you have any questions.

David Nowak - November 2020

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