2024 Issue 1
1. General
Proposed IP Australia Fee Changes
IP Australia is proposing fee changes from 1st October 2024 as outlined in its Cost Recovery Implementation Statement (CRIS).
Most of the standard prosecution fees increase by around 10% - 20%, although design application fees reduce. Patent hearing fees are doubled and trade mark hearing fees are restructured. It is also proposed that the costs that may be awarded in proceedings will be accordingly raised. The following is a summary of notable changes with full details in Attachment A of the CRIS.
Patents Fee Type | Currently | Proposed from 01/10/2024
Application Fee: (direct or national phase) | $370 | $400
Requesting Examination – Standard | $490 | $550
Requesting Examination – with IPER | $300 | $350
Direction to Request Examination | $100 | $150
The 6th year renewal fee will increase by $10 with every subsequent renewal fee increasing by a further $10, i.e., the 7th year fee by $20 and the 8th year fee by $30 and so on, until the 15th year where the annual increases are $15 each year until the 19th year.
The fees for excess claims will remain unchanged however, IP Australia will now charge for excess claims at the point of requesting examination instead of at acceptance. The number of excess claims will then be reassessed at the point of acceptance to capture any increase in the number of claims filed through the examination process.
All patent hearing fees are doubled.
Trade Marks
IP Australia will introduce a new fee structure for filing a Statement of Grounds and Particulars (SGP) in opposition to the registration of a trade mark/extension of protection for an international registration designating Australia. The first three grounds that are nominated will not attract a fee. However, a fee of $250 per ground above the threshold will be levied against each of the subsequent grounds nominated. Where section 44 is nominated it will count as one ground when the opponent nominates up to 10 of their trade marks. However, a fee of $250 will be charged for each extra trade mark nominated.
Requesting removal for non-use increases from $250 to $400.
Designs Fee Type | Currently | Proposed from 01/10/2024
Application Fee: (1st Design) | $250 | $200
Application Fee: (Subsequent Co-Filed Designs) | $200 | $150
Excess Designs Fee | $250 | $2050
Requesting Examination | $420 | $500
Direction to Request Examination (Third Party) | $210 | $250
Other - All fees to renew the registration as a patent and/or trade mark attorney will increase by $50.
Fiji Becomes a Paris Convention Member
On the 19th October 2023, Fiji deposited its instrument of accession to the Paris Convention, meaning the Paris Convention entered into force for Fiji on the 19th January 2024.
Since the 19th January 2024, Fiji nationals can make use of the priority rights provided for in the Paris Convention by making an application in another member country of the Paris Convention while claiming the priority date of the corresponding application in Fiji. Previously, nationals of Fiji could only make use of the Paris Convention if they were domiciled in or have a real and effective industrial or commercial establishment in another member country of the Paris Convention.
Apart from those exceptions, nationals of Fiji could not make use of the Paris Convention. However, at a bilateral level a number of countries, including New Zealand and Australia, have long recognised priority rights from Fiji on equivalent terms to those under the Paris Convention. Namely, 6-months for trade marks and designs, and 12-months for patents.
For trade marks and patents, Fiji currently has two paths to registration. Protection can be obtained either from a national filing or by re-registering a UK right in Fiji.
Re-registration in Fiji needs to be applied for within 3-years of the date of grant of the UK patent and within 3-years of the date of the publication of the mention of grant for an EP(UK) patent. The re-registered patent will expire when the corresponding UK or EP(UK) patent expires.
Re-registration of a UK trade mark in Fiji can be made at any time that the UK trade mark is in force and expires when the UK trade mark is cancelled or is due for renewal. Renewal of the trade mark in Fiji requires proof that the UK trade mark has been renewed.
Currently, UK designs automatically extend to Fiji with no separate national filing available.
In 2021, new core intellectual property legislation was passed in Fiji – namely the Trade Marks Act 2021, Patents Act 2021 and the Designs Act 2021. Along with a raft of modernising changes, Fiji’s adoption and implementation of the Paris Convention is assumed in all these Acts. These Acts have yet to commence with no sign yet of the implementing regulations.
2. Patents
EPO Expands Official Fee Discount Eligibility for Micro-Entities
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.
Background - Currently the EPO only provides some official fee reductions to qualifying entities that are resident or have their principle place of business in an EPC contracting state. Those qualifying entities are: natural persons; non-profit organisations, universities and public research organisations; microenterprises; and small and medium-sized enterprises (SMEs).
Enhanced Scheme - The broadening of the scheme to include applicants of any nationality or domicile will only apply where all applicants separately qualify as micro-entities – being either: natural persons; non-profit organisations, universities and public research organisations; or microenterprises. Microenterprises are defined as enterprises having fewer than 10 employees; and an annual turnover of less than EUR 2,000,000, with this criteria not taking into account any linked or partner enterprises.
The EPO will not give the 30% official fee reduction to an application filed by a micro-entity that has filed 5 or more patent applications with the EPO in the last 5-years. The relevant date is the date of filing of the European patent application concerned or the date of entry into the European phase of the Euro-PCT application concerned. For divisional applications the relevant date is the date of receipt of the divisional application. Where an application has multiple applicants each applicant must separately satisfy the prior applications limit. If multiple applications are filed on the same day only the applications that are within the limit will qualify for the official fee reduction.
The official fee reductions for qualifying micro-entities apply to the following fees irrespective of whether the EP application (or European phase of a PCT application) was filed before or after 1st April 2024, but only applies to fees paid on or after 1st April 2024:
- the filing fee, including any additional fees part of the filing fee;
- the fee for a European search or the fee for a supplementary European search in the case of a Euro-PCT application searched by an International Searching Authority (ISA) other than the EPO;
- the examination fee, and in addition, if applicable, the previously paid international search fee where the EPO acted as ISA;
- the designation fee;
- the fee for grant;
- the renewal fees for the European patent application.
In order for a to qualify for the 30% official fee reduction the micro-entity needs to make a declaration as to its status as a micro-entity, and the EPO should be notified if the entity no longer qualifies as a micro-entity when a subsequent qualifying fee is due. If the application is subsequently transferred to another entity, official fees due subsequent to the recordal of the transfer in the EP registry will depend upon whether the new owner qualifies as a micro-entity, with a declaration being required if such status is claimed.
Bigger Picture for Small Sized Applicants Down Under - Many patent offices allow some applicants to qualify for discounted official fees. The qualifying criteria for eligible applicants varies across these patent offices, taking into account factors such as whether the applicant is a natural person or a legal entity, the size and/or profit status of the legal entity and the nationality or place of residence of the natural person or principle place of business of the legal entity.
Small sized patent applicants who are based in Australia or New Zealand will welcome this expansion to the jurisdictions that provide discounts to eligible applicants irrespective of their nationality or domicile. Other such jurisdictions that are likely to be of interest to small sized patent applicants who are based in Australia or New Zealand are: Argentina, Brazil, Canada, many European States, India, Japan, Mexico, South Korea and the United Sates of America.
Divisional Deadlines Still Between a Rock and a Hard Place
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.
Background: New Zealand Patent Application No. 726018 entered national phase on 6 November 2016 with an effective filing date of 7 April 2015. Consequently, under regulation 71(a), the five year deadline to request examination of that application, and any related divisional applications, was 7 April 2020.
The introduction of this deadline in New Zealand has been concerning for practitioners for some time, due to the serious implications it can have on applicant’s rights and abilities to obtain patent protection in New Zealand.
In this case, it was always the applicant’s intention to file multiple divisional applications, because the application described at least six separate inventions. The applicant’s strategy was to file five divisional applications at the appropriate time before acceptance of the parent application. It is standard practice for many New Zealand patent attorneys to request postponement of acceptance for a period of 12 months either at the time a patent application is filed, or upon entry into national phase, or at the time of requesting examination. This practice ensures that applicants have an opportunity to file one or more divisional applications if necessary, before an application is officially accepted. Section 75 and Regulation 83 require that postponement of acceptance must be requested before acceptance, and that acceptance cannot be postponed for more than 12 months after the date of the first examination report. In this case, the first examination report issued on 28 May 2021 so the maximum period of postponement available was until 28 May 2022.
However, unfortunately, for various reasons explained in evidence in the proceedings, a request for postponement of acceptance was not made at any stage during the filing and prosecution of the application. The application was accepted on 15 March 2022. It was only then that the error or omission was realised.
Five divisional applications out of application 726018 were subsequently filed and an extension of time was sought under regulation 147 to request examination of the divisional applications. A request to correct an error or omission under Section 202 was also filed on the basis that the failure to request postponed acceptance prior to the application being accepted was an error or omission that should be corrected.
Correctable Error? Before deciding whether to grant the extension of time under Regulation 147, the AC first had to consider whether the failure to request postponed acceptance could be corrected under section 202. The AC discussed two earlier decisions in which section 202 was successfully used to correct an error relating to postponement of acceptance. In Primapak LLC [2019] NZIPOPAT 1 postponement of acceptance was reinstated after it was found that the removal of the postponement of acceptance by the personal assistant of the applicant’s patent attorney went against the client’s clear instructions. In Magic Leap, Inc [2019] NZIPOPAT 8 postponement of acceptance was reinstated after it was found that the removal of the postponement of acceptance by the applicant’s patent attorney was done with a lack of awareness of a recent change in the client’s instructions. In this case however, the AC refused to allow the correction of error under Section 202, distinguishing the earlier cases on the basis that a postponement of acceptance was filed and its inadvertent removal was an identifiable error. The AC held that granting the correction of error request in this case would be contrary to the clear requirement under Regulation 83 that postponement of acceptance must be requested before acceptance.
As a consequence of this decision, the five divisional applications filed by the applicant could not proceed as divisional applications since they were not filed before acceptance of the parent application.
Exceptional Circumstances? Although not required to do so, the AC went on to consider if the extension of time under Regulation 147 would have been granted had the application for correction of error been allowed. The AC noted that “exceptional” in the context of Regulation 147 simply means “unusual” or “the exception to the rule”. The evidence submitted on behalf of the applicant in this case was evidence from the applicant’s Australian patent attorney which included evidence relating to the history of representation and the patent filing history, and in particular, outlined the deficiencies in the patent management software used by the attorney (namely that it did not include pre-set date reminders specific to New Zealand and therefore the five year deadline for filing and requesting examination of divisional applications was not monitored) and that, in combination with the attorney being a sole practitioner with no staff, working from home with young children, and the added complications of Covid-19 during March 2020, was what led to the errors in managing this case. The AC found that this particular combination of circumstances was unusual and thus exceptional, and that the extension of time would have been granted in these circumstances. The AC noted that the exercise of discretion under Regulation 147 does not require an assessment of whether any of the parties concerned had in any way failed to act with due diligence and prudence. If that was a requirement, the extension would have been refused based on the evidence submitted.
Another point that was briefly discussed in this case was the timing issues relating to examination. In this case, the deadline to request examination of divisional applications had expired over a year before the parent application was examined, and long before the divisional applications were filed. The AC noted that it is not unusual for the deadline to expire before the parent application is examined, or during examination, and therefore possibly before a need to file a divisional application becomes evident (for example, as a consequence of a unity of invention objection being raised). The AC made the point that such circumstances are not unusual and therefore cannot be relied on as an exceptional circumstance for obtaining an extension of time under Regulation 147. This aspect of the decision is therefore of little comfort for those prosecuting patent applications in New Zealand, and means that practitioners and applicants must continue to be very vigilant and proactive when considering the need to file divisional applications in New Zealand. Currently, there are significant delays in patent examination in New Zealand, with first examination reports taking about 18-months to issue for mechanical and ICT inventions, 29 months for chemical inventions, and 38 months for biotech inventions. If examination is not requested early in New Zealand, it is possible that applicants will not become aware of the need for filing a divisional application (for example, to address a unity of invention objection) until well after the five year deadline for requesting examination of divisional applications has expired, and will therefore be prevented from obtaining additional patent protection in divisional applications, unless other exceptional circumstances can be established that are sufficient to obtain an extension of time. This case is at least helpful in providing practitioners and applicants with some guidance as to what types of circumstances would be considered unusual enough to warrant an extension being granted under Regulation 147.
It is also worth noting that New Zealand legislation relating to the filing and prosecution of divisional applications is out of step with other jurisdictions, in particular Australia, where the five year deadline to request examination for divisional applications starts from the date of filing of the divisional application, not from the date of filing of the parent application, as the case is in New Zealand. Furthermore, in Australia, a divisional application can be filed any time up to three months after publication of acceptance of the application. Therefore, the applicant in this case would not have suffered the same disadvantages in Australia since the five divisional applications could still have been filed after acceptance, and there would have been plenty of time to request examination of those application.
3. Copyright
Appeal of Artistic Copyright Being Relationship Property Brushed Off
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).
Copyright in a painting is personal property (distinct from the ownership of the physical paintings) and depending upon the time of creation both can be subject to the PRA. But it was also recognised that copyright in paintings can be more “personal” than “property”.
The ownership issue arose after their separation when Mr Palmer entered the former family home and removed a substantial number of the paintings with the intention of selling them and/or commecialising the copyright in them.
The Family Court Judge readily held that the physical paintings are relationship property. However, while finding that in theory copyright falls within the ambit of property subject to the PRA, the Judge justified finding that the copyright solely belongs to Ms Alalaakkola on the basis that the skill required for producing the artworks preceded the relationship.
As earlier noted, the High Court Judge overturned the Family Court Judge’s finding on copyright ownership on the basis that the skill required to produce the works and whether that skill preceded the relationship are irrelevant to whether copyright in the works is subject to the PRA. Rather, it is when the work was created that determines whether the copyright in the work was relationship property. The possession of a skill prior to a relationship, whether or not that skill can create a copyright work (or other intangible asset), does not make the use of that skill during the relationship exempt from the PRA. Taking a wider perspective, the High Court Judge noted at [34] “there is nothing to suggest the property rights created by the Copyright Act should be treated any differently from any other sort of property produced or acquired by a partner or spouse during the course of a relationship”.
The High Court Judge held that the artworks should be shared equally by value, and referred the matter back to the Family Court for that purpose noting that the Family Court has discretion to vest some, none or all of the works in one party, with an adjustment to the division of other relationship property in order to obtain overall equality of division.
The Court of Appeal agreed with the findings of the High Court Judge, noting that it is not necessary to broaden the traditional concepts of property in order to bring copyright within the scope of the PRA definition of property. They were also not persuaded that copyright works created during the relationship with personal skills that preceded the relationship would allow the copyright in those works to evade the reach of the definition of property in the PRA. Such skills were found to be distinct from the copyrights, forming no part of the bundle of rights that attach to the individual artworks created with those skills. Consequently, the Court of Appeal rejected the contention that the use of prior acquired skills justifies putting the property so produced or acquired beyond the reach of the PRA, which recognises that although the contributions of the partners to a relationship may be different, they are both valuable.
It was also noted that if there is any conflict between the Copyright Act and the PRA, it is the PRA that prevails as section 4A of the PRA provides that: “[e]very enactment must be read subject to this Act, unless this Act or the other enactment expressly provides to the contrary”, with the Copyright Act having no such express provision. Ms Alalaakkola’s best argument to the effect that the Copyright Act provides to the contrary was that under section 21 she alone is the first owner of copyright. Given the lack of prior New Zealand case law, the Court of Appeal sought to elucidate New Zealand’s property relationship law through comparative analysis with other jurisdictions. It was noted that there are five broad approaches to relationship property — unitary systems, separate property systems, judicial discretion, community property systems, and deferred community systems. On this analysis New Zealand’s system is most appropriately classed as a deferred community system as the general rule in New Zealand is that ownership by the community (relationship partners) does not apply until the relationship has broken down, and even then only when specified in a Court order or an Agreement under Part 6 of the PRA. As such the Court of Appeal found no conflict between the Copyright Act and the PRA as Ms Alalaakkola’s sole ownership of copyright applied until the relationship had broken down and thereafter became subject to a presumption of being relationship property until finalised in a Court order or an Agreement under Part 6 of the PRA.
After establishing that Mr Palmer is entitled to an equal share in the copyrights, the Court of Appeal then considered how the copyrights should be allocated within the context of the PRAs requirement that relationship property be allocated equally while taking into account the ‘clean break’ principle. The Court of Appeal agreed with the High Court Judge’s finding that there was nothing exceptional about the case that would make equal sharing repugnant to justice. Nonetheless, given the personal nature of artistic copyrights, it was considered appropriate and in-keeping with the ‘clean break’ principle to grant Ms Alalaakkola’s request that the copyrights be solely vested in her with an appropriate adjustment to the division of other relationship assets. Had the copyrights instead been in respect of less personal subject matter such as engineering drawings, the Court of Appeal would not have been as disposed to grant the request, although it also noted that competition issues can inform how assets are divided. The assessment of an appropriate compensatory adjustment was remitted to the Family Court for determination, and Mr Palmer was entitled to full costs on the appeal.