Proposed Intellectual Property Laws Amendment Bill
The proposed Intellectual Property Laws Amendment Bill is an omnibus bill intended to make ‘technical” amendments to the Patents Act 2013, the Trade Marks Act 2002, the Designs Act 1953 (the IP Laws), and the associated regulations.
The Bill is not intended to be a full policy review of these Acts, or to review the criteria for granting patents, or registering trade marks and designs.
As part of the development of the Intellectual Property Laws Amendment Bill, MBIE released a discussion paper.
The discussion paper looked at a number of issues in relation to the IP Laws or associated regulations. Each of the issues was discussed, and results of MBIE’s analysis of the issues presented. Submissions closed on 2 August 2019. 18 submissions were recieved.
What issues were discussed in the discussion paper?
The discussion paper is split up into four sections. There is one each for patents issues, trade marks issues, and designs issues. The fourth section looks at the possible use by IPONZ of Artificial Intelligence to make complex discretionary decisions. The issues we sought submissions on are set out below:
Patents Act 2013
- divisional patent applications
- transitional provisions for divisional patent applications divided from applications made under the Patents Act 1953
- the filing of divisional patent applications divided out of patent applications which are themselves divisional patent applications (often referred to as “daisy-chaining” of divisional patent applications)
- requests for examination under section 64 of the Patents Act 2013
- “poisonous” priority and “poisonous” divisionals
- multiple priority dates for the claims in a complete specification
- extensions of time for putting an application in order for acceptance when hearings are requested in relation to a patent examiner’s objection
- exhaustion of patent rights
- the Attorney-General’s right to intervene in patent proceedings
- the requirement for an invention to be useful
- Swiss-type claims
- availability of documents relating to patent applications made under the Patents Act 1953
Trade Marks Act 2002
- series of trade marks
- prior continuous use of a trade mark as a ground for overcoming an objection to registration based on a prior registered mark
- require trade mark specifications to be clear
- mandate use of the IPONZ pick list for Search and Preliminary Advice
- the scope of acceptable memorandums that can be entered on the Register of Trade Marks
- false claims to ownership of a trade mark as a ground for invalidating a trade mark registration
- 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
- remove requirement for an applicant for revocation or invalidity to be an “aggrieved person”
- partial refusals of national trade mark applications
- undefended proceedings for revocation of a trade mark registration for non-use
Designs Act 1953
- substitution of applicant
- requirement to use IPONZ case management system
- costs and security for costs
- hearings before the Commissioner of Designs
- authorisations of agent
Designs Regulations 1954
- proceedings before the Commissioner of Designs
What happens next
After analysing the submissions, MBIE provided recommendations for amendments to the Patents Act 2013, the Trade Marks Act 2002, the Designs Act 1953, and associated regulations to Cabinet. Cabinet agreed to these recommendations in June 2020.
The Cabinet paper containing the recommendations together with supporting documents has been proactively released on the MBIE website. Links to the Cabinet paper and supporting documents are set out below:
The next step is to draft a Bill to implement the recommendations agreed to by Cabinet. This is now in progress. MBIE anticipates that an exposure draft of the Bill will be available for public comment by the end of 2021.