Embed Size (px)
Citation preview
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...
e-Newsletternews.business.govt.nz/subscribe
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
On
lin
e P
erce
nta
ge
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: [email protected] case file mail
[email protected] hearings office
IPONZ Patents Technical Focus Group
Virginia is your TFG liaison.
Email: [email protected] 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.
