Patent Procedures, Guidelines, Tips & Trends. Overview 1.Behind the scenes file management...

Patent Procedures, Guidelines, Tips & Trends

Overview

1. Behind the scenes file management2. Process issues3. Practice issues4. Trends5. Tips & information from the Hearings Office6. Useful websites

Behind-the-scenes file management

• Business Support Team – formalities, assignments, licences and payment transactions

• Patents Team – substantive examination

• Hearings Office Team – case management

• Records Team – scanning, archiving and record retrieval.

Patents Team – 1 manager, 5 principals, 6 seniors and 14 examiners

Liz FrancisManager,

Patents, Designs & PVR

Steve SmithMechanical

Mark LuitenMechanical

Designs

Jenny JebsonElectrical/ICT/

PVR Examiner

Mark PritchardBiotechnology

Sanjay TapnikarChemistry

Turnaround targets

Payment issues – 24 hours

First examination report – 20 days Subsequent reports – 15 days

Tips

Correspondence checklist

image resolution

IP number

confirmation copies not required

MED Business Update March 2009

IPONZ News

Classification of PatentsAll patent applications are classified according to the International Patent Classification system (IPC). more...

James Dyson AwardIn partnership with the Intellectual Property Office of New Zealand, Dyson is once again looking to put New Zealand's best emerging product designer in the limelight. more...

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Divisional applications

Practice change effective 1 March 2009

Situation: Child divided out from a parent that was filed with one or more provisional specifications.

Process:Patents Form No. 1 or covering letter musti) Request antedatingii) Identify the priority documents iii) Ask that the relevant provisional parent specifications be copied across to the child.

Practice change effective June 2008

• Issued as soon as the application is in order

Unless time remaining on section 20(1) deferment request

• Acceptance Notice integrated in final Examination report.

Acceptance Notices

Patent specifications

• Micro-organism deposit details NZ is not a signatory to the Budapest Treaty

• Human medical treatment methods are not patentable

• Swiss type use claims are acceptable See IPONZ guidelines

• Publication on acceptance - includes amendments made during examination to PCT national phase applications.

Practice differences

Local novelty - 50 year prior publication rule - prior claiming not whole contents

Section 93 - response time extension for office delays - priority claim restorations

Divisionsals can’t be filed after Notice of Acceptance issued

No modified examination

No patent term extension for pharmaceutical substances.

PCT International applications – restoration of priority claims

Situation: The International Application was filed at a Receiving Office on or after 1 April 2007

Within 12 months 1 day to 14 months of an earlier filing which Paris Convention priority could have been claimed.

PCT Rule 26bis3 procedure followed. RCT/RO/159 – Receiving Office Decision favourable Entering New Zealand National Phase.

New Zealand National phase entry – restoration of Convention priority claims

Practice Notice published 13 May 2008

IPONZ validates restoration only on the ground that the International application was not filed within the Paris Convention 12 month filing deadline “… in spite of due care required by the circumstances having being taken.”

Section 17 – Contrary to morality

General guideX human embryos, stem cells & cloningX processes requiring use of placental & umbilical cord tissue & those tissues themselvesX in vivo human host cell transformationFactors taken into consideration• Law – case law, legislative premise• Public opinion – surveys, polls, research.

Swiss type use claims

Classic format: Use of a known compound in the manufacture of a medication for a specified new therapeutic use.

Section 10(4) clarity objectionsX … wherein the medication is administered orally. … wherein the medication is formulated for oral administration.

Swiss type use claims

Section 10(4) fair basis objections• precursors and derivatives• disease or condition list

Section 10(4) unity objections• disease or condition list

Swiss type use claims

Section 2 “not an invention” objections Administration regimen – dosage, delivery mode, timing & frequency X Use directed to invasive cosmetic procedure Potential remedy – method claim conversionX Where novelty resides in the treatment mechanism or technical effect upon administration.

Patent statistics

2008-2009Applications- Provisional specifications - Complete specifications - Complete after provisional - National phase entry

Acceptances

Oppositions

Decisions

80933510433042

2147

4

4

Electronic filing comparison

Patent e-filing

0%5%

10%15%20%25%30%35%40%

Nov-08 Dec-08 Jan-09 Feb-09

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Australian Agents NZ Agents

Patent application filing data

Simon GallagherManager - Hearings

Helen BaxterHearings Office Assistant

DDI +64 4 978 3640

Hearings Officers Alf Hazelwood

Bruce Popplewell

Hearings before the Assistant Commissioners

Turnaround targets

Payment issues – 24 hours

Notices of Opposition, Revocation or Invalidity - 5 days

Subsequent reports – 15 days

Decisions – 6 weeks

Patent opposition & registrability hearings and extension appeals

• Correspondence – email, fax, mail Subject line: IP number Uploading: select “Hearings Correspondence” • Extensions of time requests and consents

• Abeyances to facilitate negotiations maximum 6 months

• Amendments.

Awards for costs Opponent

Notice of opposition

Evidence

Considering applicant’sevidence

Evidence in reply

Hearing preparation

Counsel attendance

Disbursements:Notice feeHearing fee

Applicant

Counterstatement

Considering opponent’sevidence

Evidence

Considering strict reply evidence

Hearing preparation

Counsel attendance

Disbursements:Hearing fee

NZ$ NZ$500 300

800 400

400 800

200 100

500 500

180/hr or 180/hr or810/day 810/day

300 750 750

IPONZ correspondenceDirect dial contact number +64 4 978 XXXXFax +64 4 978 3691

Help Line: +64 3 962 2607

Email: mail@iponz.govt.nz case file mail

hearings@iponz.govt.nz hearings office

IPONZ Patents Technical Focus Group

Virginia is your TFG liaison.

Email: virgina.beniac-brooks@pof.com.au DDI: (3) 9622 2165

New Zealand law

Acts and Regulations www.legislation.govt.nz

Bills including status informationwww.parliament.nz/en-NZ/PB/Legislation/Bills

Paper Order - Intellectual Property BillsThursday, 12 March 2009 BUSINESS BEFORE THE HOUSE GOVERNMENT ORDERS OF THE DAYName of bill, Minister in charge of bill, stage of consideration, bill’s reference number, and times for debate11. Trade Marks (International Treaties and Enforcement) Amendment Bill245-1Hon Simon Power First reading(Introduced 8 September 2008)12 x 10 m speeches12. Copyright (Commissioning Rule) Amendment Bill 299-1Hon Simon Power First reading(Introduced 19 September 2008)12 x 10 m speeches14. Patents Bill 235-1Hon Simon Power First reading(Introduced 9 July 2008)12 x 10 m speeches

Patents Bill

Section 6 – meaning of novelty

Section 7 – meaning of inventive step

Section 8 – meaning of prior art base

Section 10 – meaning of useful (utility)

Sections 13, 14 & 15 – patentable inventions and excluded subject matter.