MBIE releases discussion paper on proposed IP Laws Amendment Bill

Article  \  6 Jun 2019

Earlier this week, the Ministry of Business, Innovation & Employment (MBIE) released a discussion paper on issues to be included in a proposed IP Laws Amendment Bill. 

The proposed IP Laws Amendment Bill is an omnibus bill that is intended to make ‘technical’ amendments to the Patents Act 2013, the Trade Marks Act 2002, the Designs Act 1953 (and the associated regulations) to ensure that they remain workable.

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 the Intellectual Property Office of New Zealand (IPONZ) of artificial intelligence to make complex discretionary decisions.

MBIE is inviting submissions on any or all of the issues discussed in its discussion paper, as listed 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
  • Abstracts

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 searches 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's 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

We encourage our clients and anyone with an interest in New Zealand’s IP laws to make a written submission on the issues raised in the discussion paper by 5.00pm on Friday 2 August 2019.

You can download the discussion paper and find out how to make a submission here.