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Patent Procedures, Guidelines, Tips & Trends. Overview 1.Behind the scenes file management 2.Process issues 3.Practice issues 4.Trends 5.Tips & information.

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Presentation on theme: "Patent Procedures, Guidelines, Tips & Trends. Overview 1.Behind the scenes file management 2.Process issues 3.Practice issues 4.Trends 5.Tips & information."— Presentation transcript:

1 Patent Procedures, Guidelines, Tips & Trends

2 Overview 1.Behind the scenes file management 2.Process issues 3.Practice issues 4.Trends 5.Tips & information from the Hearings Office 6. Useful websites

3 Behind-the-scenes file management Business Support Team – formalities, assignments, licences and payment transactions Patents Team – substantive examination Hearings Office Team – case management Records Team – scanning, archiving and record retrieval.

4 Patents Team – 1 manager, 5 principals, 6 seniors and 14 examiners Liz Francis Manager, Patents, Designs & PVR Steve Smith Mechanical Mark Luiten Mechanical Designs Jenny Jebson Electrical/ICT/ PVR Examiner Mark Pritchard Biotechnology Sanjay Tapnikar Chemistry

5 Turnaround targets  Payment issues – 24 hours  First examination report – 20 days  Subsequent reports – 15 days

6 Tips Correspondence checklist  image resolution  IP number  confirmation copies not required


8 MED Business Update March 2009 IPONZ News Classification of Patents All patent applications are classified according to the International Patent Classification system (IPC). more... James Dyson Award In partnership with the Intellectual Property Office of New Zealand, Dyson is once again looking to put New Zealand's best emerging product designer in the limelight. more...more... e-Newsletter

9 Divisional applications Practice change effective 1 March 2009 Situation: Child divided out from a parent that was filed with one or more provisional specifications. Process: Patents Form No. 1 or covering letter must i)Request antedating ii)Identify the priority documents iii)Ask that the relevant provisional parent specifications be copied across to the child.

10 Practice change effective June 2008 Issued as soon as the application is in order  Unless time remaining on section 20(1) deferment request Acceptance Notice integrated in final Examination report. Acceptance Notices

11 Patent specifications Micro-organism deposit details NZ is not a signatory to the Budapest Treaty Human medical treatment methods are not patentable Swiss type use claims are acceptable See IPONZ guidelines Publication on acceptance - includes amendments made during examination to PCT national phase applications.

12 Practice differences  Local novelty - 50 year prior publication rule - prior claiming not whole contents  Section 93 - response time extension for office delays - priority claim restorations  Divisionsals can’t be filed after Notice of Acceptance issued  No modified examination  No patent term extension for pharmaceutical substances.

13 PCT International applications – restoration of priority claims Situation:  The International Application was filed at a Receiving Office on or after 1 April 2007  Within 12 months 1 day to 14 months of an earlier filing which Paris Convention priority could have been claimed.  PCT Rule 26bis3 procedure followed. RCT/RO/159 – Receiving Office Decision favourable Entering New Zealand National Phase.

14 New Zealand National phase entry – restoration of Convention priority claims Practice Notice published 13 May 2008 IPONZ validates restoration only on the ground that the International application was not filed within the Paris Convention 12 month filing deadline “… in spite of due care required by the circumstances having being taken.”


16 Section 17 – Contrary to morality General guide X human embryos, stem cells & cloning X processes requiring use of placental & umbilical cord tissue & those tissues themselves X in vivo human host cell transformation Factors taken into consideration Law – case law, legislative premise Public opinion – surveys, polls, research.

17 Swiss type use claims Classic format: Use of a known compound in the manufacture of a medication for a specified new therapeutic use. Section 10(4) clarity objections X … wherein the medication is administered orally. … wherein the medication is formulated for oral administration.

18 Swiss type use claims Section 10(4) fair basis objections precursors and derivatives disease or condition list Section 10(4) unity objections disease or condition list

19 Swiss type use claims Section 2 “not an invention” objections Administration regimen – dosage, delivery mode, timing & frequency X Use directed to invasive cosmetic procedure Potential remedy – method claim conversion X Where novelty resides in the treatment mechanism or technical effect upon administration.

20 Patent statistics 2008-2009 Applications - Provisional specifications - Complete specifications - Complete after provisional - National phase entry Acceptances Oppositions Decisions 809 335 1043 3042 2147 4

21 Electronic filing comparison

22 Patent application filing data

23 Helen Baxter Hearings Office Assistant DDI +64 4 978 3640 Hearings Officers Alf Hazelwood Bruce Popplewell Simon Gallagher Manager - Hearings Hearings before the Assistant Commissioners

24 Turnaround targets  Payment issues – 24 hours  Notices of Opposition, Revocation or Invalidity - 5 days  Subsequent reports – 15 days  Decisions – 6 weeks

25 Patent opposition & registrability hearings and extension appeals Correspondence – email, fax, mail Subject line: IP number Uploading: select “Hearings Correspondence” Extensions of time requests and consents Abeyances to facilitate negotiations maximum 6 months Amendments.


27 Awards for costs Opponent Notice of opposition Evidence Considering applicant’s evidence Evidence in reply Hearing preparation Counsel attendance Disbursements: Notice fee Hearing fee Applicant Counterstatement Considering opponent’s evidence Evidence Considering strict reply evidence Hearing preparation Counsel attendance Disbursements: Hearing fee NZ$ 500 300 800 400 400 800 200 100 500 180/hr or 810/day 300 750

28 IPONZ correspondence Direct dial contact number +64 4 978 XXXX Fax +64 4 978 3691 Help Line: +64 3 962 2607 Email: case file mail hearings office

29 IPONZ Patents Technical Focus Group  Virginia is your TFG liaison. Email: DDI: (3) 9622 2165

30 New Zealand law Acts and Regulations Bills including status information




34 Paper Order - Intellectual Property Bills Thursday, 12 March 2009 BUSINESS BEFORE THE HOUSE GOVERNMENT ORDERS OF THE DAY Name of bill, Minister in charge of bill, stage of consideration, bill’s reference number, and times for debate 11. Trade Marks (International Treaties and Enforcement) Amendment Bill 245-1 Hon Simon Power First reading (Introduced 8 September 2008) 12 x 10 m speeches 12. Copyright (Commissioning Rule) Amendment Bill 299-1 Hon Simon Power First reading (Introduced 19 September 2008) 12 x 10 m speeches 14. Patents Bill 235-1 Hon Simon Power First reading (Introduced 9 July 2008) 12 x 10 m speeches

35 Patents Bill Section 6 – meaning of novelty Section 7 – meaning of inventive step Section 8 – meaning of prior art base Section 10 – meaning of useful (utility) Sections 13, 14 & 15 – patentable inventions and excluded subject matter.


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