2024 Issue 2
1. Patents
China’s Revised Patents Implementing Regulations
On 21st December 2023 China announced revised implementing regulations for its Patent Law following on from the amendment of its Patent Law on 1st June 2021. The implementing regulations came into effect on 20th January 2024.
The revised implementing regulations contain numerous amendments. Many of the amendments appear to involve minor tweaks rather than substantive changes. Some notable amendments are as follows:
Principle of Good Faith
A new rule requires patent applications to be made in line with the principle of good faith. All types of patent applications (patents, utility models and designs) shall be based on genuine invention and creation activities, and shall not involve fraudulent behaviour. The principle of good faith will be considered during examination and will also be a ground for rejection or invalidation. Evidence that the applicant is involved in the relevant technological field may be required.
Novelty Grace Period for Disclosure at Academic Conferences
Previously disclosures at academic or technological conferences were only exempted from the novelty requirement if the academic or technological conference was organized by a competent department of the State Council of the People's Republic of China or by a Chinese academic or technological association. The amended regulations extend the exemption to include academic or technological conferences organized by international organizations provided those international organisations are recognized by the competent State Council relevant Chinese association.
Priority Claims
In line with many other jurisdictions China now allows for restoration of the priority right for patent and utility model applications provided that an acceptable application for restoration with legitimate reasons is made. This will generally require that the lapsing of the priority right was “unintentional” or occurred despite “due care”. For applications claiming priority under the Paris Convention the restoration application needs to be made within 14-months of the priority date. For PCT national phase applications it needs to be made within 2-months of national phase entry date.
Where a patent or utility model application was filed with a priority claim within the priority period the applicant will now be allowed to amend or add further priority claims provided the new priority claims remain within 12-months of the application date. For applications made under the Paris Convention this needs to be done within the latter of 16-months of the priority date or 4-months of the filing date, while for PCT national phase applications it needs to be made within 2-months of national phase entry date.
Incorporation by Reference
If the description, claims or drawings or parts thereof were inadvertently omitted or incorrectly submitted in the patent or utility model application the applicant can now correct the defect if the correct material is contained in the associated priority document. Such correction requests and the relevant documents need to be submitted within two-months of the filing date or within the period specified by the CNIPA. This provision does not apply to divisional applications and cannot be applied where the above priority claims provisions have been applied or vice versa.
Novelty
It has been clarified that when accessing information on the internet or other online databases, provided that the information is obtained through legal means, it is irrelevant whether passwords or fees are required, or whether the information has been read by anyone for that information to qualify as prior art.
If the web page publication date is not clearly stated or is doubtful it has been stated that the determination of the date of publication can be made from the following: the date of publication and modification recorded in the log file; the date of indexing given by the search engine; the date displayed by the Internet Archive service; the time stamped information; or the date of publication of the reproduced information displayed on the mirror website.
Deferred Examination
Applicants can now defer examination of patent, utility model and design applications. For patents the request needs to be filed with the request for examination, which needs to be filed within 3-years of the priority date (even if via the PCT) and examination can now be deferred for either 1, 2 or 3-years. For utility models and designs the request needs to be filed with the application, with the deferred period starting from when it would have otherwise been examined. For utility models the deferred period is 1-year, while for designs it is up to 36-months. The applicant can withdraw the deferral. If it considers it necessary, the Patent Office can override a deferred examination request and commence examination on its own initiative.
Partial Designs
The representation of partial designs in design patent applications can now include the whole product in dotted lines with the part for which protection is sought being delineated using solid lines. Consequently, it is no longer necessary to remove dotted or dashed lines and thereby aligns with the practice in other major jurisdictions that allow partial designs such as the EU, UK, US, Japan and South Korea.
USPTO Proposing Economically Significant Patent Fee Changes from October 2024
The USPTO has released its ‘economically significant’ proposed fee structure for patents that is intended to be implemented from 1st October 2024. The new fee structure is a mixture of across the board increases of around 5% for many fees, increases of 10% for some front-end fees, as well as larger increases to targeted post-application fees.
The USPTO’s proposed fee structure seeks to balance the four key fee setting policy factors of: (1) promoting innovation strategies; (2) aligning fees with the full costs of products and services; (3) facilitating effective administration of the U.S. patent system; and (4) offering application processing options. This generally involves encouraging innovation with below cost application fees which is balanced by above cost maintenance fees and increases to targeted prosecution fees.
The USPTO will continue to provide discounted fees for small and micro entities. Under the Unleashing American Inventors Act 2022, the official fee reduction for small entities increased from 50% to 60% and the official fee reduction for micro entities increased from 75% to 80%. Despite the name of that Act, the fee reductions are available for non-US applicants who meet the qualifying criteria for small entities or micro entities.
The across the board increase of 5% is touted as being below the rate of inflation given that the last significant review of fees was in October 2020. Front-end fees for searching, filing and examination (other than targeted fees) will increase by around 10%.
Notable targeted fees include:
- Continuing Application Fees: There would be a new fee for applications that claim the benefit of the filing date of some earlier filed applications.
- - Where the earliest benefit date is more than 5-years and less than 8-years an additional fee of $2,200 is payable.
- - Where the earliest benefit date is more than 8-years an additional fee of $3,500 is payable.
- Excess Claims Fees: The fee for each independent claim in excess of 3 would increase from $480 to $600. The fee for each claim in excess of 20 would increase from $100 to $200.
- Information Disclosure Statement Fees: There would be new fees aimed at discouraging filing large numbers of documents for IDS requirements.
- - Where the cumulative number of items provided is more than 50 but not more than 100 a fee of $200 applies.
- - Where the cumulative number of items provided is more than 100 but not more than 200 a fee of $500 applies.
- - Where the cumulative number of items provided is more than 200 a fee of $800 applies.
- Continued Examination Fees: Where a second request for continued examination is made the fee would increase from $2,000 to $2,500. Where a third or subsequent request for continued examination is made the fee would increase from $2,000 to $3,600.
- Suspension of Action Fees: For a first request to suspend action for up to 6-months the fee would increase from $220 to $300. For each subsequent request the fee would increase from $220 to $450.
- Terminal Disclaimer Fees: Terminal disclaimers are filed in response to double patenting objections. In order to encourage earlier filing of terminal disclaimers a staggered fee structure would apply.
- - If filed prior to first action the fee would increase from $170 to $200.
- - If filed prior to final action or allowance the fee would increase from $170 to $500.
- - If filed after final action or allowance the fee would increase from $170 to $800.
- - If filed on or after notice of appeal the fee would increase from $170 to $1,100.
- - If filed for a patent or application for reissue the fee would increase from $170 to $1,400.
- After Final Consideration Pilot Program 2.0 Fees: This program allows the applicant after the close of prosecution to place the application either in condition for allowance or in better form for appeal by way of amendment to at least one independent claim. The program is currently free, but it is proposed that a fee of $500 would apply.
- Design Filing Fee: This would increase from $220 to $300.
- Design Search Fee: This would increase from $160 to $300.
- Design Issue Fee: This would increase from $740 to $1,300.
2. Trade Marks
Fine Tuning of Australia’s Trade Mark Legislation Effected
As previously noted, in late 2021 the Australian Government released an exposure draft of its Regulator Performance Omnibus Bill 2022 . Amongst others, the draft Bill proposed minor clarificational and streamlining amendments to the Trade Marks Act 1995 and the Trade Marks Regulations 1995.
The proposed changes have made their way through the legislative process and have resulted in the following notable changes to the Trade Marks Act and Regulation with effect from 17th May 2024:
- Aligning all grace periods for trade mark renewals to 6 months. Previously, if a trade mark only achieved registration more than 10-years after its filing date it was eligible for a 10-month grace period if renewal was not effected within 2-months of registration. Now, such late registered marks have the same 6-month grace period that is available for standard trade mark renewals.
- Widening the circumstances in which trade marks which were removed from the register during non-use proceedings can be restored to include circumstances where an opponent is granted an extension of time to file evidence or request a hearing, and timely completes that action.
- IP Australia is no longer required to maintain an Official Journal of Trade Marks. Instead, it is sufficient for that information to be relevantly published either in the online database or on IP Australia's website.
- The classification of goods and services in Schedule 1 to the Trade Marks Regulations has been updated to reflect the latest version of the NICE Class Headings on the grouping of goods and services into numbered classes.
- Changes were made to the Olympic Insignia Protection Act (OIP Act) to make it clear that the International Olympic Committee (IOC) and the Australian Olympic Committee (AOC) can register their own insignia as trade marks, and to provide clearer authority for the rejection of trade mark applications not authorised by these bodies.
EU GIs Have Entered the Picture – Say Cheese … or else!
Prior to 1st May 2024 New Zealand’s Geographical Indications (Wine and Spirits) Registration Act 2006 (the Act) was limited to wine and spirits and met the minimum requirements under the TRIPs Agreement 1994 in relation thereto. The Act excluded common names for wine and spirits from protection as geographical indications (GIs).
Is “Free Trade” restrictive trade?
In January 2024 a Bill was introduced to Parliament in order to make the legislative changes necessary to implement the recently negotiated free trade agreement with the European Union. The Bill made extensive changes to the Act, although most of those changes relate to creating a separate protection regime for the approximately 2,000 EU GIs specified in Chapter A of Annex B of the NZ-EU FTA Intellectual Property chapter.
The now enacted and assented Bill shortened the title of the Act to the Geographical Indications Registration Act 2006 in recognition of the definition of ‘geographical indication’ being expanded to include goods other than wine or spirits. However, product classes other than wine and spirits are only being recognised for the EU GIs specified in or subsequently added to Annex B. Annex A specifies 26 product classes, mainly covering foods and beverages or constituent ingredients thereof, but also covers essential oils, flowers and ornamental plants The Chapter A Annex B GIs are not subject to registration or renewal fees, but the subsequently added GI terms will be subject to opposition proceedings.
Some of the EU GIs listed in Annex B have transitional periods during which existing users of the term (who are not the EU verified manufacturer of the goods) can continue to use the term, provided that such use does not mislead consumers about the origin of the goods. The transitional period for these terms starts from 1st May 2024 and have durations that vary as indicated below:
GI Term Goods Maximum Transitional Period
Bayerisches Bier Beer 5-years
Münchener Bier Beer 5-years
Feta Cheeses 9-years
Sherry / Jerez / Xérès Wines 5-years
Gorgonzola Cheeses 5-years
Grappa Spirits 5-years
Prosecco Wines 5-years
Madeira / Madère / Madera Wines 5-years
Porto / Port / Oporto Wines 9-years
The inclusion of the GI terms Gruyère and Parmigiano Reggiano, both for cheeses, does not prevent the continued use of Gruyère or Parmesan respectively by prior users who had used those terms in good faith for a period of at least 5-years prior to 1st May 2024. While these two terms are not subject to a specific maximum transitional period, the respective lists of qualifying prior users have been established, although it is not clear whether those prior user rights can be assigned.
It is not all one-way traffic though, with the Netherlands GI ‘Zeeland’ for wine being subject to a condition that it must be used in close conjunction with a clear indication that the wine originates in the Netherlands and gives no exclusive rights in the use of the term ‘New Zealand’!
Prior registered GIs that refer to New Zealand locations are specified in section B of Annex B. Apart from the permanent GIs of ‘New Zealand’, ‘North Island’ and ‘South Island’, the remaining ‘local’ GIs cover wines, but not spirits. The only other prior registered GIs for spirits are Cognac (France), Pisco (Peru) and Scotch Whisky (UK).
Enforcement
Prior to 1st May 2024 rights under the Act were enforced by way of proceedings under section 9 of the Fair Trading Act 1986 for misleading or deceptive conduct. The Act now supplements that with a range of enforcement mechanisms available to any GI registered in New Zealand. Civil remedies, including injunctive relief and delivery up are available through the High Court. Administrative enforcement is provided for, principally by the appointment of GI Officers who have information gathering, entry and inspection, search warrant and other similar powers, and have the power to issue directions against persons who are contravening the restrictions on use. Border protection measures are also be available, with registered GIs being able to be recorded with Customs in a similar way to how registered trade marks are.
New IPONZ Practice Note on GIs in Trade Mark Specifications
Prior to the NZ-EU FTA entering into force IPONZ refined its practice on how trade mark examiners will treat applications whose specifications contain GIs. In April 2023 IPONZ notified that its general practice is that a GI should not be used as the name of a good in a specification for a class relevant to the GI, as specifications should only include generic descriptions of the goods or services.
However, a GI term can be included alongside a generic term if the goods originate from the place that the GI designates, provided all other criteria for use of that GI are met. The suggested format for such use of GI terms is “[GI name]” (GI) [products covered by the GI], with “Champagne” (GI) wines being an example. Alternative formats that have been accepted include:
- [products covered by the GI] with the protected appellation of origin [GI];
- [products covered by the GI] with the geographical indication [GI];
- [products covered by the GI] protected by an appellation of origin;
- [products covered by the GI] protected by a geographical indication.
IPONZ recently further refined its practice note with suggestions for generic wording to use where an applicant may have otherwise wanted to use an EU GI term in their specification. Examples include:
- white, brined cheese made from goat’s (or sheep’s) milk instead of Feta
- nutty, pale yellow, firm cheese made from cow's milk instead of Gruyere
- liqueur made from whiskey and cream instead of Irish Cream
Notable Observations
It is noteworthy that IPONZ allows New Zealand based businesses to register trade marks where the class 32 or 33 specification includes phrases in the format ‘[products covered by the GI] with the protected appellation of origin [GI]’, with the GI being a foreign geographical indication. The assumption being that the New Zealand business is importing unbranded product from a foreign business that has the right to use the relevant GI. Also noteworthy is that there are starting to be examples of foreign businesses registering (class 33) trade marks in New Zealand that contain registered New Zealand geographical indications in the mark and have an appropriate recognition of that in the specification. Examples of this being:
- 1173957 for WELCOME TO NEW ZEALAND in the name of a USA corporation with the class 33 specification: Wine; alcoholic beverages (except beer); all the aforesaid goods originating within the geographical indication NEW ZEALAND, registered under the Geographical Indications (Wine and Spirits) Registration Act 2006.
- 1234652 for MUMM CENTRAL OTAGO Device in the name of a French business with the class 33 specification: Wines originating within the geographical indication Central Otago registered under the Geographical Indications (Wine and Spirits) Registration Act 2006.
- 1236950 for MUMM MARLBOROUGH Device in the name of a French business with the class 33 specification: Wines originating within the geographical indication MARLBOROUGH registered under the Geographical Indications (Wine and Spirits) Registration Act 2006.
Now that the NZ-EU FTA has entered into force and the Act has been amended it can be expected that the Act will be amended again soon thereafter in order to give effect to the NZ-UK FTA. As previously noted the NZ-UK FTA included conditional provisions allowing UK GIs to be similarly protected if the Act is amended in bespoke fashion so as to recognise some foreign GIs.
3. Copyright
Artistic Copyright and Relationship Property Redux
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.
For a more detailed discussion of the Court of Appeal’s recent determinations of the copyright ownership dispute between the parties please see our earlier article ‘Appeal of Artistic Copyright Being Relationship Property Brushed Off’. However, for present purposes it suffices to know that the Court of Appeal asked and answered the following three questions and remitted the case to the Family Court for determination of the appropriate compensatory adjustment referred to in its answer to the third question:
(1) Are the Copyrights “property” for the purposes of the Property (Relationships) Act 1976 (PRA)?
Yes.
(2) If the Copyrights are property, how should they be classified in terms of the PRA?
The Copyrights should be classified as relationship property.
(3) If the Copyrights are property, how should they be treated in terms of the PRA?
The Copyrights should remain in Ms Alalääkkölä’s exclusive legal ownership, with Mr Palmer receiving a compensatory adjustment from other relationship property to ensure an equal division of relationship property.
The Supreme Court allowed leave to appeal on the question of what orders should be made consequential upon the Court of Appeal’s answers to questions (1) and (2). The Supreme Court’s leave decision does not mention which party appealed, but, given that the Court of Appeal’s determination on the third question favoured Ms Alalääkkölä, it appears that Mr Palmer appealed.
The Court of Appeal’s discussion of the third question essentially acknowledged that its resolution involves finding the appropriate precedence and balance between competing principles. The PRAs requires relationship property be allocated equally while taking into account the ‘clean break’ principle, unless equal sharing would be repugnant to justice. There were also potential competition issues and moral rights to take into account. Given the personal nature of many of the copyright works in question the Court of Appeal considered the ‘clean break’ principle would be best applied by preventing Mr Palmer from competing with Ms Alalääkkölä in the commercialisation of the works that she produced, which would also help protect her moral rights. The Court of Appeal found it appropriate to offset Ms Alalääkkölä’s sole ownership of the copyright works with adjustments to other relationship property.
Given the competing principles involved the appeal seems to have met the threshold of raising an issue of general or public importance and so be a worthy case for the Supreme Court’s consideration.
While not discussed in the earlier decisions in this case it will be interesting to see if any Supreme Court judges think anything turns on the different phrasing given to the definition of property under the PRA and the Property Law Act 2007 (PLA).
PRA
property includes—
(a) real property:
(b) personal property:
(c) any estate or interest in any real property or personal property:
(d) any debt or any thing in action:
(e) any other right or interest
PLA
property—
(a) means everything that is capable of being owned, whether it is real or personal property, and whether it is tangible or intangible property; and
(b) includes any estate or interest in property; and
(c) in subpart 6 of Part 6, has the extended meaning given to that term in section 345(2)
We look forward to the Supreme Court’s decision(s) in this case.