New Zealand passes Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill

/ Karen Heilbronn Lee / Important Updates

The New Zealand Patents (Trans-Tasman Patent Attorneys and Other Matters) (TTPA) Amendment Bill passed into law on 15 November 2016, and is expected to commence on 24 February 2017.

The amendments in the Bill:

  • Remove ‘unity of invention’ as a ground to oppose a patent being granted, which will apply retrospectively from 13 September 2014 (the date of commencement of New Zealand’s Patents Act 2013);
  • Establish a single trans-Tasman patent attorney regime including a single qualification for registration and code of conduct; and
  • Create a single trans-Tasman patent attorney register.

It appears unity of invention as a ground for opposition was unintentionally introduced in New Zealand’s Patents Act 2013, as it was not present in the Patents Act 1953, and nor was there any policy intention to introduce lack of unity as a ground of opposition. By removing unity of invention as a ground for opposition, the TTPA Amendment Bill brings the grounds for opposing patent grant in New Zealand back in line with Australia and other jurisdictions.

The TTPA Amendment Bill also provides for a joint registration regime for Australian and New Zealand patent attorneys. Australian patent attorneys were previously able to register as New Zealand patent attorneys and vice versa; however, the TTPA Amendment Bill legislates that patent attorneys resident in New Zealand are subject to a new joint registration regime, which is based on the existing Australian registration regime. Existing registered Australian and New Zealand patent attorneys will automatically be registered as Trans-Tasman patent attorneys, and transitional provisions exist for those currently studying to become a New Zealand patent attorney. However, future patent attorneys resident in New Zealand (whom do not satisfy the transitional provisions) will be required to have the same educational qualifications as Australian patent attorneys. Additionally, all New Zealand patent attorneys will be held to the same code of conduct, disciplinary regime and continuing professional education requirements as existing Australian patent attorneys. Corresponding amendments to the Australian Patents Act 1990 relating to a single trans-Tasman patent attorney regime have already been passed and are due to commence before 25 February 2017.

Of note, the TTPA Amendment Bill was initially intended to also introduce legislation for a single Trans-Tasman patent application and examination process; however, these provisions were deleted from the Bill, and are not expected to be re-visited in the foreseeable future.

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Changes to IP Australia’s Official Fees (proposed to take effect from 10 October 2016)

/ Madderns / Important Updates

IP Australia (the government body incorporating the Patent, Designs and Trade Mark Offices) has announced changes to some of their official fees which are proposed to take effect from 10 October 2016 (subject to amending regulations being made).

The most notable fee changes relating to patents and trade marks include:

• Increases to patent renewal fees, with a $50 increase in the 10th to 14th anniversary range; a $130 increase in the 15th to 19th anniversary range; and a $250 increase in the 20th to 24th anniversary range.

• Increases to trade mark application fees, with the majority of trade mark application fees increasing by $130 per class. For example, trade mark application fees will increase from $220 to $330 per class, and trade mark renewal fees will increase from $300 to $400 per class. The increase of trade mark fees will be partially offset by the removal of the $300 registration fee. This should consequently mean that the overall up-front cost to register a trade mark will be reduced.

For a full list of fee changes, please click here to visit IP Australia’s website.


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Registering Foreign Word Marks in Australia

/ Irena Fizulic / Important Updates

Registering foreign word marks in Australia (the effect of the High Court decision in Cantarella Bros Pty Limited v Modena Trading Pty Limited concerning the trade marks “ORO” and “CINQUE STELLE”)

It appears from the recent High Court decision in Cantarella Bros Pty Limited v Modena Trading Pty Limited that it should now be easier to obtain trade mark registration in Australia for marks containing foreign words.  This case considered the registrability of the Italian words “ORO” and “CINQUE STELLE”  which mean “gold” and “five stars” respectively in English.

The High Court has clarified that the registrability of foreign words should be assessed in the same way as English words, namely by examining whether the word will convey a “tangible” meaning to anyone in Australia and the “ordinary significance” of that word to anyone who will encounter the goods in Australia.  In applying the “ordinary signification” test, the Court noted that the Italian words “oro” and “cinque stelle” did not convey a meaning or idea “sufficiently tangible to anyone in Australia concerned with coffee goods”. Further, the Court noted that the words “oro” and “cinque stelle”  are not “directly descriptive” of coffee, but rather “allusive” and metaphorical. Accordingly, the Court held that the marks “oro” and “cinque stelle” are inherently adapted to distinguish Cantarella’s goods from the goods of other traders and are therefore registrable.

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Australia’s top PCT filers

/ Madderns / Important Updates

In the results of an annual global survey released on 2 October 2014, Madderns was named in the Top 10 filers of International (PCT) patent applications among Australian IP services firms. This is the first time that Madderns has been named in the list.

Commenting on this distinction, Senior Partner Craig Vinall said that “Madderns has edged out a number of significantly larger firms in being named among Australia’s largest filers of PCT applications. It’s a great result reflecting the firm’s continual drive to attract the best people and hone our services and expertise to match the best in the world. That’s being recognised by Australian patent applicants and inventors.”

PCT patent applications are a very popular way to simultaneously seek patent protection for an invention in over 140 countries. More information on the system can be found at www.wipo.int/pct/en/.

The PCT applications filed by Madderns during the survey period relate to a broad spectrum of technologies including biotechnology, computing, irrigation, medical diagnostics, electronic and electrical engineering, materials science, medical devices, mining and fossicking technologies, and pharmaceuticals.

The full results of the survey, conducted by respected International journal Managing Intellectual Property, may be viewed at www.managingip.com.

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What is the Defence Trade Control Act and why should I know?

/ Bill McFarlane / Important Updates

Did you know that sending an email overseas may find you in breach of the Defence Trade Control Act 2012 and that you will be personally liable? Did you know that a penalty for such an act without a licence includes imprisonment?

Australia takes seriously its international counter proliferation obligations, using Australian export control laws to ensure Australia exports responsibly. Australia’s export control policies are in place to enable the export of defence and strategic goods where it is consistent with Australia’s national interests and international obligations.

The Defence Export Control Office (DECO) is the government entity that supervises these obligations as defined in a number of Acts and the one that is the subject of this article is the Defence Trade Controls Act 2012. The DECO web site, from which passages of this article are included, is http://www.defence.gov.au/DECO/Notices.asp#N2 .

The Defence Export Control Office (DECO) is responsible to the Minister for Defence for regulating the export of defence and strategic goods and technologies and importantly for you and the patent attorney profession this includes the export of information about controlled goods and technologies by way of electronic email.

The implementation date for the application of this Act is 17 May 2015, so you have plenty of time to set procedures in place in your working environment so that you, your staff or colleagues are not going to fall foul of this Act.

Thus, the inclusion of such information in an academic paper, patent specification or even an email containing such information, sent overseas or copied to someone, such as a fellow researcher or patent attorney overseas, is prohibited unless a license to do so is obtained before the act of export. It does not matter to where overseas the export of the information is made, so it does not matter that it may only be sent to someone in what most would consider an allied nation such as the United States of America.

Interestingly, an email containing the same information sent and received within Australia is not an export.

More specifically if you want to know whether the information is of the type that MUST be licensed before exportation, the first point of enquiry is the Defence and Strategic Goods List (DSGL) http://www.defence.gov.au/DECO/DSGL.asp .

This list contains all controlled items in relation to the arms control treaties and international export control regimes to which Australia is committed, and identifies specific Australian goods and technologies. The important issue is to realise that information that discloses certain technical details of these goods and technologies is information subject to the Defence Export Controls Act 2012.

The DSGL is made up of two parts.

Part One covers defence and related goods – these are goods and technologies designed or adapted for use by armed forces or goods that are inherently lethal.  These goods include:

  • military goods – goods or technology designed or adapted for military purposes; and
  • non-military lethal goods – equipment that is inherently lethal, incapacitating or destructive such as non-military firearms, non-military ammunition and commercial explosives and initiators.

Part Two covers strategic goods and technologies developed for commercial needs but may be used as part of a military program, for the development or production of a military system or weapons of mass destruction. This is also known as the Dual-Use List.

This document is 361 pages long and unless you are continually required to deal in such matters, it has been a welcome initiative of DECO to provide a web interface to assist concerned and responsible persons to check if their goods or technology fall within its ambit. Thus it is important for academics, their administrators, inventors and patent attorneys to make the check and determine if a planned export will require a licence or at least a further discussion with DECO to determine the circumstances. The web site is http://www.defence.gov.au/deco/ .

DECO has indicated that every effort will be made to assess enquiries and applications within a reasonable time frame, but clearly, the earlier before the planned or intended export you conduct a check or contact DECO the better. It will be unrealistic to expect DECO, to properly assess your situation within hours or days if the type of information is not clearly identifiable as being a restricted export or requires authorisation of an export licence.

Once formalised, the progress of individual cases is closely monitored and reported to the applicant. Applicants are consulted early in the application process and throughout the process and are provided the opportunity to present all relevant information that can assist in making an assessment of the application for a licence or indeed the necessity for a licence. Where it is determined that an application requires inter-agency consultation, applicants are provided with written advice explaining the process and that advising time frames may extend beyond 35 days.

The export control systems in place and the types of goods and technology are continually evolving and must be constantly monitored and updated by DECO into the DSGL. Australia’s export control policies and procedures are therefore regularly reviewed to take account of changes in our strategic circumstances. Thus it is the responsibility of you and your patent attorney to check and recheck the DGSL or enquire with DECO as required.

As stated above the implementation date for the application of this Act is 17 May 2015, so now is the time to create procedures for you your working environment so that you, your staff or colleagues are not going to fall foul of this Act. DECO is relying on education as the main instrument of encouragement to Australians and punitive measures will not be taken. However, DECO has indicated that repeat and intentional export of such information will be met with the full force of this very important law.

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