Thinking of patenting in Australasia? This article provides an overview of what constitutes eligibile subject matter and the options for initiating the patenting process.
In The Pops Group Pty Ltd as trustee for The Pool Shops Trust v Pro Pool Services Pty Ltd (No 2) [2026] FCA 912 the Judge found three POOL PRO registrations were infringed by the use of several PRO POOL marks.
In AbbVie Inc v The Commissioner of Patents [2026] NZHC 1140 the lack of time in which to hold a hearing after the applicant requested one 2-days before the section 71 deadline was found to constitute a delay due to the Commissioner, thereby making the applicant eligible for an extension of time.
The New Zealand Government has announced applicant friendly changes to the Plant Variety Rights (PVR) Act will be set in motion when an amendment Bill is introduced to parliament later this year – presumably before the general election in early November.
From 12th April 2026, the amounts payable in Swiss Francs (CHF) will lower for International Registrations that designate or subsequently designate several key countries, and for renewals involving designations in those countries.
The long running legal battle over software patents in Australia has reached a final conclusion.
The recent Court of Appeal for the Federal Circuit (CAFC) case Rothschild Connected Devices Innovations LLC v Coca-Cola Company 24-1253 considered whether the claim scope of an apparatus claim that contains steps is restricted to apparatus’s that are configured to perform its steps in the order in which they are written in the apparatus claim.
IP Australia has advised that from 1st March 2026 applicants of PCT International Phase applications having IP Australia as the Receiving Office can select the European Patent Office (EPO) as the International Searching Authority (ISA) and the International Preliminary Examination Authority (IPEA).
The USPTO has made a couple of announcements of interest to applicants seeking to expedite examination of their patent applications.
From 23rd November 2025, the amounts payable in Swiss Francs (CHF) for International Registrations that designate or subsequently designate New Zealand, and for renewals involving New Zealand designations, will lower by more than 15%.
From 1st October 2025 the EPO will allow for the filing of patent drawings in colour or grey-scale provided they are in an electronic format.
In Cabo Concepts Ltd v MGA Entertainment (UK) Ltd 2025 EWHC 1451, despite findings of abuse of a dominant position and unjustified threats of patent infringement against MGA, Cabo’s claim for damages failed as the Judge held on a counterfactual basis that Cabo would not have traded profitably in any event.
In Angel Playing Cards Co Ltd [2025] NZIPOPAT 6 the Assistant Commissioner (AC) refused claim amendments that were only made after the section 71 deadline had passed.
1. Introduction
Patent and design marking are practical tools used by rights holders to notify the public that a product is protected by patent or design rights and to signal legal protection against copying. While not mandatory under New Zealand law, marking offers enforcement benefits and can strengthen a party's legal position in the event of infringement. Markings can also serve other purposes, for instance, they may help to demonstrate to customers or investors that your products are innovative. These markings are typically applied as physical markings on the products or its packaging. Nowadays, virtual marking is also gaining importance as a flexible and efficient way to communicate IP protection; however, it is not yet recognised as a legally sufficient form of notice under New Zealand law.
The Supreme Court has confirmed both that copyright in artworks fall within the Property (Relationships) Act 1976 (PRA) definition of ‘property’ and that those copyrights should be classified as relationship property if that property was ‘acquired’ during the relationship.
We are honoured to receive the IP-Coster Excellence Award 2024, recognising our service, dedication, and contributions over the past year.
The Ministry of Business, Innovation and Employment (MBIE) is seeking feedback on draft amendments to the transitional provisions of the Patents Act 2013 that have applied the validity conditions of the Patents Act 1953 to divisional applications of pending 1953 Act applications filed after the draft amendments enter into force.
In early 2025 the USPTO will apply 28 fee changes to its fee schedule, including 7 new fees and removing 4 current fees.
Eureka! – you’ve just had an idea with promising business / income potential – perhaps it is for a new product, an innovative method of manufacture, a paint formulation, an eye-catching product shape, catchy song lyrics, or a distinctive and memorable brand name.
Over the last couple of decades increasing amounts of consumer spending has occurred through online marketplace platforms. While online marketplace platforms have provided many benefits for brand owners, the platforms have also been embraced by counterfeiters.
The Intellectual Property Office of New Zealand (IPONZ) and the European Patent Office (EPO) have entered into a 3-year trial Patent Prosecution Highway (PPH) agreement with effect from 1st December 2024.
IPONZ has announced that it has entered a bilateral Patent Prosecution Highway (PPH) agreement with the China National Intellectual Property Administration (CNIPA) with effect from 1st November 2024.
From 7th January 2025 Uruguay (UY) will be bound by the PCT. Hence, international applications filed on or after 7th January 2025 will automatically designate Uruguay.
A recent High Court decision provides some hope to applicant’s who seek to correct an error when their patent application missed a deadline due to no fault of their own.
IP Australia has now confirmed wide ranging official fee changes that will take effect from 1st October 2024, following its earlier consultation on its draft Cost Recovery Implementation Statement (CRIS).
Tom Robertson is a senior member of Pipers' IP team with a deep understanding of, and decades of experience in, patents, trade marks, and design law. His extensive practice spans the agricultural, viticultural, mechanical, and electrical sectors, as well as a strong background in trade mark law and IP searching.
Some of Tom’s career highlights include his role as an Examiner at IPONZ, where he played a part in advising on the drafting of New Zealand’s Trade Marks Act 2002, and his significant experience with Australian IP law garnered from his time in our firm’s former Brisbane Office.
A Registered Patent and Trade Mark Attorney, Tom also serves as the current President of the New Zealand Intellectual Property Attorneys Inc. (NZIPA). At Pipers IP, Tom helps to drive innovation and delivers outstanding results for our clients.
In Resmed Pty Ltd v Commissioner of Patents [2024] NZHC 1881 Resmed’s appeal concerning the claims of its nasal mask system was unsuccessful. The High Court of New Zealand upheld the Assistant Commissioner’s finding that the claims were not fairly based on the patent specification.
In Lacoste v Crocodile International Pte Limited 2024 NZHC 1333 the Judge confirmed that pleading non-use puts both genuine use and use as a trade mark in issue and that pleading non-use in respect of all goods and/or services does not preclude a finding of partial revocation.
In Alalääkkölä v Palmer 2024 NZSC 56 the Supreme Court allowed leave to appeal the Court of Appeal’s order regarding how the copyrights in question should be treated in terms of the Property (Relationships) Act 1976.
Currently New Zealand’s Geographical Indications (Wine and Spirits) Registration Act 2006 is limited to wine and spirits and meets the minimum requirements under the TRIPs Agreement 1994 in relation thereto. The Act excludes common names for wine and spirits from protection as geographical indications (GIs).
From 1st April 2024 the EPO will allow applicants of any nationality or domicile that are deemed to be a micro-entity to get a 30% reduction in many key EPO official fees provided they have not filed five or more applications with the EPO in the last 5-years.
In Alalääkkölä v Palmer [2024] NZCA 24 the Court of Appeal upheld the High Court Judge’s finding that copyright in paintings created by Ms Alalääkkölä during a 20-year relationship are relationship property under the Property (Relationships) Act 1976 (PRA).
In NXT Building System Pty Ltd 2023 NZIPOPAT 15 the Assistant Commissioner (AC) clarified that it is in principle possible to obtain an extension of time in which to request examination of a divisional patent application in New Zealand, in exceptional circumstances. The threshold for establishing exceptional circumstances is comparatively low because there is no requirement to prove that all parties involved acted with due diligence and prudence.
On the 19th October 2023, Fiji deposited its instrument of accession to the Paris Convention, meaning the Paris Convention will enter into force for Fiji on the 19th January 2024.
Recent changes to New Zealand’s Commerce Act 1986 enhanced the restrictions on the misuse of market power and also changed the extent to which intellectual property rights are an exception to the market competition that the Commerce Act promotes. Will attempts at enforcing IP Rights be seen as a misuse of market power?
Pipers is pleased to announce that Tom Robertson was elected as the President of the New Zealand Intellectual Property Attorneys organisation (NZIPA) at the recent annual general meeting on 8th September 2023.
In Gewei Zhang v QB Trademarks SARL 2023 NZIPOTM 40 the opposition was rejected even though the accepted mark begins with the opponent’s mark and despite the Assistant Commissioner (AC) finding the respective parties goods to be similar.
In Recorded Music New Zealand Limited [2023] NZIPOTM 39 the applicant was allowed to rely on its reputation in a conceptually equivalent registered mark to establish acquired distinctiveness for its otherwise non-distinctive mark.
New Zealand’s law regarding the use of another party’s trade marks in comparative advertising in the last 100 years has been through several forms, and is currently close to where it started.
In this article I argue that priority is irrelevant to the deemed date of registration for international registrations under the Madrid Protocol that designate New Zealand. The Intellectual Property Office of New Zealand (IPONZ) disagrees, taking the view that international registrations that designate New Zealand and which have a right to a priority date will have that priority date as the deemed date of registration.
In Milk New Zealand Dairy Limited v The a2 Milk Company Limited 2023 NZIPOTM 27 the Assistant Commissioner rejected the opposition by the a2 Milk Company (a2MC) against an accepted application by Milk New Zealand Dairy Limited (Milk NZ) that contains ‘A2’ as part of a device mark in relation to various milk and related dairy products in classes 5 and 29.
In Mechanical System Dynamics Pty Ltd 2023 NZIPOPAT 10 the Assistant Commissioner withdrew the examiner’s obviousness objections after finding that the alleged invention is not obvious in relation to the cited prior art and that the examiner had provided no basis for arriving at the invention by mosaicking the prior art.
The London Agreement, which initially took effect in May 2008, has reduced some of the translation burden for patentees who use the EPC system, but in some instances it can also create an ‘out of sight out of mind’ risk.
On the 18th May 2023 IPONZ advised that with effect from 15th May 2023 it no longer charges a late fee when the required collective Transmittal, International Filing and International Search fees for PCT International applications have not been paid or have inadequately been paid.
As previously noted China (CN) became bound by the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement) a year ago on 5th May 2022.
After decades of negotiations amongst European Patent Convention (EPC) members the ability to be granted a single patent covering many (but not all) EPC contracting states which can be enforced in those states through one set of judicial proceedings will commence on 1st June 2023.
The concept of an inventor needs redefining to specifically include artificial intelligence.
The underlying purposes of patent law are best served when the invention has precedence over the inventor.
In Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 the High Court has unanimously allowed Self-Care’s appeal, holding that Allergan’s BOTOX mark has not been infringed either by Self-Care’s use of the phrase "instant Botox® alternative" or by its mark PROTOX.
Following Committee of the Whole House readings the Plant Variety Rights Bill was read a third time on 15th November 2022 and received royal assent as the Plant Variety Rights Act 2022 on 18th November 2022.
In Par Pharmaceutical Inc v Eagle Pharmaceuticals Inc 21-2342 the Court of Appeals for the Federal Circuit (CAFC) affirmed a District Court’s finding that fluctuations in pH levels in a generic composition would not inevitably result in infringement.
In Fonterra Co-operative Group Ltd v Perfect Day Inc [2022] APO 59 an application relating to dairy substitutes was successfully opposed in a case where more careful drafting could have avoided that outcome.
In Monster Energy Company v Red Bull GmbH 2022 EWHC 2155 a UK High Court Judge upheld a Hearings Office decision that allowed an opposition based on taking unfair advantage of a well-known mark without requiring a subjective intention to do so.
From the 1st October 2022 Montenegro (ME) will be an EPC member state, thereby bringing the total number of EPC member states to 39.
On 15th July 2022 the Japanese Cabinet approved some notable applicant friendly changes to Japanese patent and trade mark practice, which will take effect from 1st April 2023.
In Consorzio per la Tutela del Formaggio Gorgonzola v Dairy Companies Association of New Zealand Incorporated 2022 NZIPOTM 13 an Assistant Commissioner (AC) was not persuaded that GORGONZOLA has become a descriptive or generic term for cheese in New Zealand.
Following the completion of the earlier announced consultation on UK design protection, and in light of the responses received, the UK Government has issued its response, indicating the aspects of the law that are likely to be reviewed or be the subject of further investigation.
In Lidl Great Britain Ltd v Tesco Stores Ltd 2022 EWHC 1434 the Judge declined to infer bad faith from overlapping registrations for a mark that remained unused over a prolonged period.
Following on from the earlier notified Agreement in Principle for a NZ-UK Free Trade Agreement, the United Kingdom Free Trade Agreement Legislation Bill has now been introduced to New Zealand’s parliament as part of the process towards final ratification of the agreement.
In A.I.G. Agency Inc v American International Group 21-1948 the Court of Appeals for the Eight Circuit’s (CA8C’s) application of the doctrine of progressive encroachment led it to reject the district court’s finding of a doctrine of laches defence.
The UKIPO recently opened a short consultation period on substantive patent law harmonisation initiatives in relation to the interrelated issues of grace periods, prior user rights and conflicting applications.
In Boehringer Ingelheim Animal Health USA Inc v Intervet International BV 2022 FCAFC 88 the Full Court dismissed Boehringer’s appeal of the primary Judge’s rejection of Boehringer’s opposition to Intervet’s patent application on the basis of lack of inventive step.
In Toyota New Zealand Limited v Vanguard Trademark Holdings USA LLC 2022 NZIPOTM 9 Vanguard had mixed results, but its class 39 registration proved sufficient against core aspects of Toyota’s goods and services specifications in classes 12 and 35.
Further to the earlier notified EU consultation on extending geographical indication (GI) protection to non-agricultural products, the EU has now proposed a framework to protect craft and industrial products that rely on the originality and authenticity of traditional practices from their regions.
In Commissioner of Patents v Thaler 2022 FCAFC 62 a full bench of the Full Court allowed the Commissioner’s appeal and held that an artificial intelligence system or machine cannot be named as an inventor for a patent.
The Ministry of Business, Innovation and Employment (MBIE) has now released an exposure draft for the Plant Variety Rights Regulations 2022 along with associated material, including a fees discussion document.
On 31st March 2022 IPONZ introduced a number of changes to its case management system.
In Dyfan LLC v Target Corporation 21-1725 the Court of Appeal for the Federal Circuit (CAFC) reversed a District Court decision on the basis that it had wrongly found that the relevant claims were in means-plus-function format.
In Rodin Cars Limited v Pirelli Tyre S.P.A. [2022] NZIPOTM 4 Pirelli’s sponsorships of various highly viewed events partially made up for its lack of New Zealand trade or consumer related evidence on confusion.
The IPONZ Patent Examination Manual has recently been updated in relation to the section 67 provisions that set a response deadline for examination reports and in relation to 'reach through' claims under section 39.
The Reserve Bank of New Zealand (RBNZ) has released a report[1] on cash (that is to say, banknotes and coins, as opposed to digital / electronic banking protocols), its importance in the economy, and the issues it faces in a modern-day context.
In Orion Marine Ltd v Sealegs International Ltd 2021 NZHC 3207 the Judge found no unjustifiable prejudice or abuse of process in Sealegs patent infringement defence to the damages action brought against them after they lost their copyright infringement case.
In Taiho Pharmaceutical Co Ltd [2022] NZIPOPAT 1 multiple grounds for rejection maintained by the examiner were found to either have no basis or were upheld with the applicant being given the opportunity to make suitable amendments.
In Korea Ginseng Corp v Calvin Klein Trademark Trust [2022] NZIPOTM 1 the opponent successfully opposed an application that mainly covered services that are dissimilar to the goods that the opponent licences third parties to use its trade marks on.
New Zealand, with around 150 other countries, applies the NICE classification system as part of its trademark regime.
The UKIPO has launched a consultation on the protection framework for designs with the aim of creating a framework that is fit for the future and incentivises innovation led growth taking into account that the UK’s designs law no longer needs to be harmonised with EU law.
“Useful choice” clauses are, these days, something of a peculiarity of our local patent drafting. They are a particular type of object clause, usually phrased as an alternative after all of the other, substantive, object clauses in the general form “or at the very least provide the public with a useful choice”.
The EPO recently announced that it is conducting a survey regarding the EPO’s narrow and strict patent novelty grace period provisions amongst randomly selected European Patent applicants as well as consulting with user and stakeholder organisations.
In Fantech (NZ) Limited v Systemair Aktiebolag 2021 NZIPOTM 40 the Assistant Commissioner held that when specialist goods are involved opinion evidence from people accustomed to dealing in specialist goods is not required in order for a determination to be made regarding the likelihood for confusion.
Most of the 116 PCT Contracting States and Regions that act as Receiving Offices (ROs) for PCT International Phase applications deem more than one International Searching Authority (ISA) to be competent to undertake the international search.
After nearly 5-years of trans-Tasman regulation of patent attorneys IP Australia has launched a consultation as part of its review of the system, with responses due by 2nd February 2022.
The Australian Government is consulting on the exposure draft of the Regulator Performance Omnibus Bill 2022 which includes proposed clarificational and streamlining amendments to the Trade Marks Act 1995, Patents Act 1990 and Olympic Insignia Protection Act 1987.
In Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 (Aristocrat), the Full Court of the Federal Court of Australia has deemed claims relating to an electronic gaming machine (EGM) configured to trigger a “feature game” unpatentable.
Australia’s .au Domain Administration (auDA) organisation has announced the introduction of .au as a new top-level domain, which will be available from 24th March 2022.
Following the earlier noted introduction of the Plant Variety Rights Bill to Parliament in May 2021 the Select Committee considering the Plant Variety Rights Bill has now released a unanimous report.
In Commissioner of Patents v Aristocrat Technologies Australia [2021] FCAFC 202 the Full Court of the Federal Court of Australia (FCAFC) effectively set aside the trial Judge’s finding of patentability although remitted the case back to the Federal Court to determine any residual issues in light of its guidance.
On the 5th November 2021 Kiribati deposited its instrument of accession to the Paris Convention, meaning the Paris Convention will enter into force for Kiribati on 5th February 2022.
The UK Intellectual Property Office (UKIPO) has issued a second consultation on artificial intelligence and intellectual property, this time focussing on what changes are required for copyright and patents laws in order to facilitate the UK being a leader in AI research, development and implementation.
The ambiguities around patentability of computer-implemented inventions (CIIs) are never more pronounced than when an invention crosses an attorney’s desk that’s clearly a clever and viable solution to a real-world problem but is largely a matter of programming.
We are very pleased to announce that on 1 October 2021, Sally Paterson and Thomas Robinson-Piper were appointed as partners of Pipers, alongside our founder, Jim Piper. Sally, who has been with the firm for over 17 years, will take on the role of Managing Partner.
IPONZ has updated its Patents Examination Manual practices by introducing sections on restoration and extensions of time in exceptional circumstances and amended its practice on claim overlap between parent and divisionals following recent Assistant Commissioner decisions.
Germany’s recent ratification of the Protocol on Provisional Application of the Unified Patent Court Agreement (Protocol) brings the establishment of the Unified Patent Court (UPC) another important step closer.
New Zealand and the United Kingdom have reached an agreement in principle in their Free Trade Agreement negotiations.
In Miele Computer Cie KG v Green Label Manufacturing Europe Limited R 299/2021-3 an EUIPO Board of Appeal overturned a decision which had found that a vacuum cleaner bag is not eligible for design protection if it is not visible during normal use of the vacuum cleaner.
In Haydn Brush Company Ltd v The Warehouse Limited [2021] NZIPOTM 30 the Assistant Commissioner held that preparatory use had not been sufficiently evidenced from the use of a mark on letterhead.
In Palmer v Alalaakkola [2021] NZHC 2330 the Judge overturned a Family Court decision by holding that the copyright in paintings produced during a 20-year marriage by one of the parties thereto is relationship property under the Property (Relationships) Act 1976.
In Goldstone Homes Ltd v Goldstone Aluminium Ltd 2021 NZIPOTM 23 a registration was found to be invalid on account of bad faith, but the pleading of ‘not the owner’ was rejected even though the registration was merely a simple arrangement of the invalidity applicant’s unregistered marks.
The Australian Designs Amendment (Advisory Council on Intellectual Property Response) Act 2021 was assented to on 10th September 2021 and was registered on 16th September 2021.
The conventional wisdom is that, in claim drafting, negative limitations should be avoided. Where possible, it is better to express a limitation in positive terms than negative. This is generally considered best practice.
In Haoyu Gao v Zespri Group Ltd 2021 NZCA 442 the Court of Appeal overall upheld the infringement findings in the trial Judge’s decision, but found that Gao’s assumed authority to licence a Chinese grower did not infringe Zespri’s New Zealand plant variety rights (PVRs).
