Discussion Paper on Draft IP Omnibus Bill

The Ministry of Business, Innovation and Employment (MBIE) has released a Discussion Paper - Intellectual Property Laws Amendment Bill 2019...

The discussion paper proposes various options for amendments to the Patents Act 2013, the Trade Marks Act 2002 and the Designs Act 1953 as well as the possibility of using artificial intelligence in the examination process. The discussion paper characterises the proposals as being technical in nature, with the nature of the various proposed amendments being put into the following categories: Streamlining processes; Making criteria clearer; Getting up to speed with international developments; and Ensuring consistency with other IP Laws. However, some of the proposals would more accurately be characterised as making substantive changes. Submissions on the proposals are required by Friday 2nd August 2019. The proposals that MBIE favours are:

Patents:

• Making future divisional applications under the Patents Act 1953 have to meet the novelty, inventive step and support requirements of the Patents Act 2013 in order to be accepted for grant, with the determination of those tests being on a balance of probabilities basis.
• Eliminating the ‘daisy-chaining’ of divisional applications by only allowing divisionals to be filed from a parent application. All such divisionals would need to be in order for acceptance by the parent application ‘in order for acceptance’ deadline. Divisional applications would need to be accompanied by a request for examination and there would need to be a close off period ahead of the ‘in order for acceptance’ date after which no further divisionals can be filed.
• Even if the ‘daisy-chaining’ of divisional applications is not eliminated still requiring that divisional applications need to be accompanied by a request for examination.
• Clarifying that an application becomes abandoned if examination is not requested within 5-years of the application date.
• Providing an ‘anti-self-collision’ provision so that the ‘whole of contents’ approach to novelty does not result in the possibility of a poisonous divisional.
• Allowing an extension of time for putting an application in order for acceptance to be requested along with the request for a hearing.
• Not allowing the introduction of EPC 2000 second medical use claims, which have the format “Substance X for the treatment of medical condition Y in humans”.
• Specifying that patent rights in a particular product are exhausted when that product is sold anywhere in the world, meaning that patented articles could be parallel imported.
• Repeal sections 163 and 164 and clarify that the Attorney General has the right to challenge the validity of a patent under sections 92, 94 and 112.

Trade Marks:

• Removing the ability to file series marks.
• Allowing the Commissioner or the court to register a trade mark if the prior continuous use of the trade mark makes it proper for the trade mark to be registered.
• Allowing clarity objections to be raised in respect of Madrid Protocol applications that designate New Zealand.
• Clarifying that a trade mark can be declared invalid if it was registered in the name of a party who is not the true owner of the mark.
• Clarifying that the “contrary to New Zealand law” provision in section 17(1)(b) does not include the Trade Marks Act 2002.
• Allowing any person to apply to revoke or invalidate a registration
• Allowing for partial refusal of the specification for national applications so as to be in line with that which applies to partial refusals of Madrid Protocol applications that designate New Zealand.
• Automatically revoking trade marks that are not defended in non-use proceedings.

Designs:

• Allowing design applications to be assigned.
• Requiring information or documents required to be filed with the Commissioner under the Designs Act to be filed through the IPONZ Case Management Facility.

Artificial Intelligence (AI):
It is noted that other Intellectual Property Offices are using or developing AI for use in their operations, including such things as classification, prior art searching, figurative mark searching and machine translation of patent specifications. It is queried whether there is also a role for AI in discretionary decisions, and if so who should decide what discretionary decisions IPONZ should be allowed to delegate to an AI system.

Author: Quinn Miller

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