Patent Office Deadlines and COVID-19

/ Madderns / Important Updates

With much of the world in some form of lockdown in a bid to control the spread of the coronavirus, normal daily functions can be severely hampered. What does this mean for deadlines relating to intellectual property (IP), such as patents, trade marks and designs?

If you use intellectual property systems around the world, you will no doubt be aware that obtaining IP protection is driven by many deadlines which need to be met to keep your rights alive.

In some countries, lockdown measures have seen Patent and Trade Mark Offices closed, unable to receive or process any actions relating to IP protection. In many cases, any deadlines that fall during the period in which the respective office is closed are deferred until the day of re-opening of the office in that country. Any of those required actions can be performed on the first day the office re-opens.

In some countries, deadlines for specific actions have been deferred, but deadlines for other actions remain in place and must be met as they arise.

The provisions are also changing rapidly in response to the spread or containment of the coronavirus, and it is important to keep up to date with the prevailing requirements in any given country.

In other countries, the Patent and Trade Mark Offices remain fully operational with staff working remotely and in compliance with the prevailing distancing restrictions, to process actions via electronic remote systems. In some of these cases, there is no deferment of deadlines, and all actions must be performed by their normal deadlines to avoid lapsing or the matter being abandoned.

The Australian Patent Office (IP Australia) and the New Zealand Patent Office (IPONZ) have both remained open and have been operating as usual. Accordingly, there has been no deferment of any deadlines and all actions must be taken when normally due. The offices however, recognise the unusual circumstances under which we are all operating and have made provisions in cases where Applicants are having difficulties meeting timeframes because of the coronavirus outbreak, to allow for an extension in some circumstances. An application to the office setting out the relevant circumstances in which the Applicant is struggling to meet timeframes is likely to be treated favorably when considering whether an extension should be granted.

Where the ability to meet a legislated deadline has been impacted by the coronavirus, IP Australia (the Australian Patent Office) is providing a streamlined process for applying on-line for extensions of up to three months. Extension fees are also being waived. However, these extension provisions do not apply for renewal fee payments. These provisions will be in place until at least 31 May 2020.

Your IP attorney will be able to keep you advised of the prevailing requirements for your matters in different countries as they adapt to the changing conditions of the pandemic.

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New Zealand passes Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill

/ Karen Heilbronn Lee / Important Updates

The New Zealand Patents (Trans-Tasman Patent Attorneys and Other Matters) (TTPA) Amendment Bill passed into law on 15 November 2016, and is expected to commence on 24 February 2017.

The amendments in the Bill:

  • Remove ‘unity of invention’ as a ground to oppose a patent being granted, which will apply retrospectively from 13 September 2014 (the date of commencement of New Zealand’s Patents Act 2013);
  • Establish a single trans-Tasman patent attorney regime including a single qualification for registration and code of conduct; and
  • Create a single trans-Tasman patent attorney register.

It appears unity of invention as a ground for opposition was unintentionally introduced in New Zealand’s Patents Act 2013, as it was not present in the Patents Act 1953, and nor was there any policy intention to introduce lack of unity as a ground of opposition. By removing unity of invention as a ground for opposition, the TTPA Amendment Bill brings the grounds for opposing patent grant in New Zealand back in line with Australia and other jurisdictions.

The TTPA Amendment Bill also provides for a joint registration regime for Australian and New Zealand patent attorneys. Australian patent attorneys were previously able to register as New Zealand patent attorneys and vice versa; however, the TTPA Amendment Bill legislates that patent attorneys resident in New Zealand are subject to a new joint registration regime, which is based on the existing Australian registration regime. Existing registered Australian and New Zealand patent attorneys will automatically be registered as Trans-Tasman patent attorneys, and transitional provisions exist for those currently studying to become a New Zealand patent attorney. However, future patent attorneys resident in New Zealand (whom do not satisfy the transitional provisions) will be required to have the same educational qualifications as Australian patent attorneys. Additionally, all New Zealand patent attorneys will be held to the same code of conduct, disciplinary regime and continuing professional education requirements as existing Australian patent attorneys. Corresponding amendments to the Australian Patents Act 1990 relating to a single trans-Tasman patent attorney regime have already been passed and are due to commence before 25 February 2017.

Of note, the TTPA Amendment Bill was initially intended to also introduce legislation for a single Trans-Tasman patent application and examination process; however, these provisions were deleted from the Bill, and are not expected to be re-visited in the foreseeable future.

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Changes to IP Australia’s Official Fees (proposed to take effect from 10 October 2016)

/ Madderns / Important Updates

IP Australia (the government body incorporating the Patent, Designs and Trade Mark Offices) has announced changes to some of their official fees which are proposed to take effect from 10 October 2016 (subject to amending regulations being made).

The most notable fee changes relating to patents and trade marks include:

• Increases to patent renewal fees, with a $50 increase in the 10th to 14th anniversary range; a $130 increase in the 15th to 19th anniversary range; and a $250 increase in the 20th to 24th anniversary range.

• Increases to trade mark application fees, with the majority of trade mark application fees increasing by $130 per class. For example, trade mark application fees will increase from $220 to $330 per class, and trade mark renewal fees will increase from $300 to $400 per class. The increase of trade mark fees will be partially offset by the removal of the $300 registration fee. This should consequently mean that the overall up-front cost to register a trade mark will be reduced.

For a full list of fee changes, please click here to visit IP Australia’s website.

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Registering Foreign Word Marks in Australia

/ Irena Fizulic / Important Updates

Registering foreign word marks in Australia (the effect of the High Court decision in Cantarella Bros Pty Limited v Modena Trading Pty Limited concerning the trade marks “ORO” and “CINQUE STELLE”)

It appears from the recent High Court decision in Cantarella Bros Pty Limited v Modena Trading Pty Limited that it should now be easier to obtain trade mark registration in Australia for marks containing foreign words.  This case considered the registrability of the Italian words “ORO” and “CINQUE STELLE”  which mean “gold” and “five stars” respectively in English.

The High Court has clarified that the registrability of foreign words should be assessed in the same way as English words, namely by examining whether the word will convey a “tangible” meaning to anyone in Australia and the “ordinary significance” of that word to anyone who will encounter the goods in Australia.  In applying the “ordinary signification” test, the Court noted that the Italian words “oro” and “cinque stelle” did not convey a meaning or idea “sufficiently tangible to anyone in Australia concerned with coffee goods”. Further, the Court noted that the words “oro” and “cinque stelle”  are not “directly descriptive” of coffee, but rather “allusive” and metaphorical. Accordingly, the Court held that the marks “oro” and “cinque stelle” are inherently adapted to distinguish Cantarella’s goods from the goods of other traders and are therefore registrable.

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Australia’s top PCT filers

/ Madderns / Important Updates

In the results of an annual global survey released on 2 October 2014, Madderns was named in the Top 10 filers of International (PCT) patent applications among Australian IP services firms. This is the first time that Madderns has been named in the list.

Commenting on this distinction, Senior Partner Craig Vinall said that “Madderns has edged out a number of significantly larger firms in being named among Australia’s largest filers of PCT applications. It’s a great result reflecting the firm’s continual drive to attract the best people and hone our services and expertise to match the best in the world. That’s being recognised by Australian patent applicants and inventors.”

PCT patent applications are a very popular way to simultaneously seek patent protection for an invention in over 140 countries. More information on the system can be found at www.wipo.int/pct/en/.

The PCT applications filed by Madderns during the survey period relate to a broad spectrum of technologies including biotechnology, computing, irrigation, medical diagnostics, electronic and electrical engineering, materials science, medical devices, mining and fossicking technologies, and pharmaceuticals.

The full results of the survey, conducted by respected International journal Managing Intellectual Property, may be viewed at www.managingip.com.

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