Principal Patent Examiner

Tēnei tūranga – About the role

The Intellectual Property Office of New Zealand (IPONZ) works with users of the intellectual property regulatory system in the examination and granting or registration of intellectual property rights: patents; designs; trade marks; geographical indications; and plant variety rights (PVRs). We are also responsible for intellectual property education and awareness programmes, largely delivered in partnership with MBIE’s Information & Education (I&E) teams. IPONZ is a key part of the IP regulatory system which, when running effectively, supports intellectual property owners, innovators and creators by incentivising innovation and investment and facilitating trade in new products and services, as well as encouraging creative expression to bring tangible societal and economic returns to New Zealand.

The Principal Patent Examiner position is a key technical leadership role within IPONZ, with a broad range of responsibilities across office examination practice and procedures, and representing IPONZ at industry and international forums.  

Functions of the Principal Examiner include:

• Providing technical leadership in the development of examination practice for Patents and/or Designs.
• Mentoring and guiding IPONZ examination staff.
• Contributes to the development of examination practice in consultation with IPONZ Managers, Senior Patents Leadership Team, MBIE Policy (where necessary) and members of the Patents Technical Focus Group.
• Provides advice and support to IPONZ Managers, MBIE policy and legal teams on the development of Patent and Design legislative and regulatory frameworks.
• Managing key client and stakeholder relationships in relation to IPONZ’ examination of Patents and Designs
• Maintaining expert knowledge of the international registration systems that operate under international treaties of which we are a member state.
• Representing IPONZ as an official delegate in WIPO working groups and forums, and as a technical expert at industry meetings and seminars.
• Supporting the Manager Patents (Engineering) & Designs, Manager Patents (Science) & PVR and Team Leaders Patents with the strategic direction of the team.

The Principal Patent Examiner is also expected to establish and manage effective professional client relationships, represent IPONZ both nationally and abroad, and contribute to IPONZ’s support of the Minister.

Ngā Herenga – Requirements of the role

Personal specifications

• Extensive patent examination experience.
• Expert patent law and practice knowledge, and strong understanding of the wider Intellectual Property regime and settings.
• Expert knowledge in your technical field (Chemistry, Biotechnology, ICT, Electrical or Mechanical Engineering).
• The ability to interpret and apply relevant legislation and case law, and to use it to inform office decisions and practice changes.
• Proven ability to coach and mentor team members.
• Proven track record of a collaborative work style with colleagues and stakeholders, to achieve sensible outcomes while maintaining positive working relationships.
• Excellent written and verbal communication skills with the ability to express complex ideas and concepts in a clear and concise manner.
• Ability to handle pressure from strong advocates (senior IP attorneys / lawyers) who are acting on behalf of clients in respect of high value property rights. Must be able to do so within the boundaries of existing legislation, procedures and precedents.
• Ability to use time effectively and efficiently to complete tasks within agreed timeframes, and to concentrate effort on important priorities.
• The ability to find common ground and solve problems for the good of the team; is fair to the team; is seen as a team player and is cooperative; easily gains trust and support of peers.
• Commitment to personal development and understands that different situations may call for different skills and approaches; works to deploy strengths and works on areas for improvement.
• Ability to support the Manager Patents (Engineering) & Designs and the Manager Patents (Science) & PVR to develop and refine IPONZ Patents and Designs practice, processes and procedures.
• Strong understanding of quality assurance processes, and ISO certification requirements.
• The maturity and experience to understand the broader implications of possible courses of action, and to make sensible ‘risk based’ decisions.

Qualifications 

• A relevant tertiary qualification in law and/or science, or extensive comparative experience
• Must have the legal right to live and work in New Zealand.

Takohanga Tuhinga o mua – Key accountabilities and deliverables

Critical areas of success

• Have an expert knowledge of Patent and/or Design law and examination procedure and practice, in addition to a broad knowledge across the entire spectrum of intellectual property practice (Trade Marks, Copyright, GIs, PVR, trade secrets) and other related legislation such as the Oaths and Declarations Act, Evidence Act, Official Information Act.
• Provide technical leadership in patent examination and procedure.
• Support the Manager Patents (Engineering) & Designs, Manager Patents (Science) & PVR and Team Leaders Patents, to review and improve practices, procedures and systems processes.
• Mentor, coach and train team members.
• Exercise powers under Assistant Commissioner Delegation, including issuing formal decisions.
• Take responsibility for managing the team’s most complex and contentious cases, and to minimise business risk.
• Maintain an in depth knowledge of relevant IP case law and uses it to resolve complex patent examination issues, and to inform examination practice and process changes.
• Conduct legal research, including use of NZLII and Westlaw to resolve complex patent examination and practice issues.
• Manages the development and maintenance of IPONZ Patent and Designs examination guidelines.
• Maintains examination quality standards, and audits examination work against those standards, to meet IPONZ Business objectives and maintain IPONZ ISO certification.
• Contributes to IPONZ wider regulatory settings by working with MBIE Policy and Legal teams on Patent and Design legislative reform, providing support to both teams in Government Committee meetings.
• Cultivates IPONZ international strategy by contributing to the development of global IP systems, predominately through the World Intellectual Property Organization, and through progressing initiatives with overseas offices and organisations where benefits exist.

Relationship Management

• Develops effective working relationships with other MBIE managers and staff in order to transfer knowledge and learning to the team and wider organisation.
• Demonstrates an understanding of, and focus on, meeting customer needs, and actively looks for opportunities and synergies with internal and external stakeholders.
• Proactively build and maintain professional working relationships with IPONZ / MBIE colleagues and key IP stakeholders, including the NZIPA and Patents/Designs Technical Focus Group, to help achieve business goals.
• Cultivates international relationships to develop global IP systems and enhance IPONZ practices and operations for the benefit of New Zealand businesses.
• Leads any engagement programme(s) with identified influencers and key clients.

Personal Leadership

• Understands the work of colleagues and demonstrates sound influencing skills in an advisory/coaching role to achieve good outcomes.
• Demonstrates leadership through effective management of issue resolution and reactive communications planning when necessary.
• Creates a sense of vision, engages and motivates people to participate and make things happen.
• Participates as an active team member and contributes knowledge and expertise needed to achieve MBIE’s outcomes.
• Demonstrates maturity, good judgement, and high personal and ethical standards.

Organisational Commitment and Public Service 

• Role models the standard of the Integrity and Conduct for the State Services.
• Contributes to the development of, and helps promote and builds commitment to, MBIE’s vision, mission, values and services.
• Willingly undertakes any duty required within the context of the position.
• Understand Equal Employment Opportunities (EEO) principles and the application of these to MBIE.
• Comply with all legislative requirements conflict of interest and good employer obligations.

Wellbeing, Health & Safety

• Displays commitment through actively supporting all safety and wellbeing initiatives
• Ensures own and others safety at all times
• Complies with relevant safety and wellbeing policies, procedures, safe systems of work and event reporting
• Reports all incidents/accidents, including near misses in a timely fashion
• Is involved in health and safety through participation and consultation

Tō tūranga i roto i te Manatū - Your place in the Ministry

The Principal Patent Examiner position reports into the Team Leader Patents (Electrical & ICT) in IPONZ, within the Business & Consumer branch. The branch sits within the Te Whakatairanga Service Delivery group.

More information about MBIE's structure

To mātou aronga – What we do for Aotearoa New Zealand

Hīkina Whakatutuki is the te reo Māori name for the Ministry of Business, Innovation and Employment. Hīkina means to uplift. Whakatutuki means to move forward, to make successful. Our name speaks to our purpose, Grow Aotearoa New Zealand for All.

To Grow Aotearoa New Zealand for All, we put people at the heart of our mahi. Based on the principles of Te Tiriti o Waitangi / The Treaty of Waitangi, we are committed to upholding authentic partnerships with Māori.

As agile public service leaders, we use our breadth and experience to navigate the ever-changing world. We are service providers, policy makers, investors and regulators. We engage with diverse communities, businesses and regions. Our work touches on the daily lives of New Zealanders. We grow opportunities (Puāwai), guard and protect (Kaihāpai) and innovate and navigate towards a better future (Auaha).

Te Tiriti o Waitangi

As an agency of the public service, MBIE has a responsibility to contribute to the Crown meeting its obligations under Te Tiriti o Waitangi (Te Tiriti). Meeting our commitment to Te Tiriti will contribute towards us realising the overall aims of Te Ara Amiorangi – Our Path, Our Direction, and achieve the outcome of Growing New Zealand for All. The principles of Te Tiriti - including partnership, good faith, and active protection – are at the core of our work. MBIE is committed to delivering on our obligations as a Treaty partner with authenticity and integrity and to enable Māori interests. We are committed to ensuring that MBIE is well placed to meet our obligations under the Public Service Act 2020 (Te Ao Tūmatanui) to support the Crown in strengthening the Māori/Crown Relationship under the Treaty and to build MBIE’s capability, capacity and cultural intelligence to deliver this.

Mahi i roto i te Ratonga Tūmatanui – Working in the public service

Ka mahitahi mātou o te ratonga tūmatanui kia hei painga mō ngā tāngata o Aotearoa i āianei, ā, hei ngā rā ki tua hoki. He kawenga tino whaitake tā mātou hei tautoko i te Karauna i runga i āna hononga ki a ngāi Māori i raro i te Tiriti o Waitangi. Ka tautoko mātou i te kāwanatanga manapori. Ka whakakotahingia mātou e te wairua whakarato ki ō mātou hapori, ā, e arahina ana mātou e ngā mātāpono me ngā tikanga matua o te ratonga tūmatanui i roto i ā mātou mahi.

In the public service we work collectively to make a meaningful difference for New Zealanders now and in the future. We have an important role in supporting the Crown in its relationships with Māori under the Treaty of Waitangi. We support democratic government. We are unified by a spirit of service to our communities and guided by the core principles and values of the public service in our work.

What does it mean to work in Aotearoa New Zealand’s Public Service?(external link) — Te Kawa Mataaho The Public Service Commission