OVERVIEW

We are a New Zealand based patent attorney firm able to handle intellectual property needs both locally and abroad. We service a very wide range of clients from the lone entrepreneur through to Government organisations and billion dollar corporations. We consider it a privilege to act for such a diverse and interesting range of clients. Our work encompasses the entire field of intellectual property and the following list gives examples of just some of the things we do on a routine basis–

• obtain patent, trade mark and design protection
• advise on whether intellectual property has been infringed
• advise on whether intellectual property is valid
• mount claims against those who infringe our client’s rights
• mount challenges to the validity of intellectual property
• provide strategic advice on intellectual property
• handle the purchase and sale of intellectual property
• run due diligence checks
• licensing

We are always only too happy to talk to new and existing clients about how we can assist, and so if you are looking for any help in the realm of intellectual property then please just give us a call.

A patent can provide exclusive rights to an invention for up to 20 years. A patent only provides protection in the country in which it has been granted, ie a New Zealand patent provides protection for New Zealand, an Australian patent provide protection for Australia etc. There is still no such thing as a worldwide patent.

Patents can be particularly useful in gaining an edge in the marketplace as they can be framed to protect, for example, the principle or concept behind a product, rather than just the particular form of the product which is offered for sale. This can make it very difficult for competitors to avoid patent infringement by making slight modifications to the patented product.

Some of the things which can be protected by a patent are:

• mechanical devices
• electrical devices
• computer hardware
• certain types of computer software
• household products
• chemicals
• pharmaceuticals
• genetic sequences
• manufacturing processes
• games

Applying for Patent Protection in New Zealand

There are two ways one can go about applying for a patent in New Zealand. The most common approach is to file a “complete” application, which gives the Registry (also known as the Intellectual Property Office, or IPONZ) all that it needs to get on and examine the application and decide whether or not to allow a patent. The alternative approach is to begin with what is called a “provisional” application and then complete the application later as a second step.

Complete Patent Application in New Zealand

After a complete application is filed it has to be examined by the Registry.  As part of the procedure the Registry runs a search to see whether it can find anything to show that the invention has been done before. This is because if an invention was not new to New Zealand at the relevant date then it can be denied patent protection. The Registry also checks to see whether the application complies with a number of other criteria set out in the Patents Act.

When an application has been approved by the examiner it is advertised in the Registry’s monthly Journal. This is to allow third parties (eg competitors) an opportunity to oppose the application if they have grounds for that. Oppositions are not particularly common, and if there are none, or when they have been overcome, a patent is granted.

Provisional Patent Application in New Zealand

Filing a provisional application serves to hold one’s rights to an invention, but only to the extent that the invention has been properly described. In New Zealand a provisional application has to be followed up with a “complete specification” within 15 months and the Registry will not run a patentability examination until that is done. When a complete specification has been filed the application is examined in the same way described for a complete application.

Confidentiality

It is important to keep an invention strictly confidential until after a suitable application has been filed. If the invention is not kept confidential prior to filing then it might not be possible to obtain valid patent protection in New Zealand.

Searching

If preferred a search can be made, prior to filing an application, to see whether one’s invention is likely to infringe or otherwise conflict with existing patent or other intellectual property rights. It is always wise to run a search, particularly before manufacturing, marketing, or using an invention. A search also gives one an indication as to whether an invention is unique enough to patent.

Overseas Patents

Filing a suitable New Zealand patent application may serve to hold rights to the invention that it covers for most countries for up to 12 months. This means that for most countries an application can be filed up to one year after the New Zealand application with a claim to rights from the same day as the New Zealand application.

Trade marks, or in other words brands, can be used to protect one’s business with great affect. In the age that we live in consumers are drawn to familiar brand names and the decision to purchase a product is often a result of the branding that it carries. In fact the value of many businesses is directly related to the value of their trade marks. According to a study published in News Week magazine the well known Coca Cola brand is worth more than US $65 billion, making it the most valuable trade mark in world. The Microsoft brand came in second at US $58 billion and the IBM brand was third at US $57 billion.

Trade marks can take the form of words, letters, artwork, sounds or colours, etc, etc, etc. Interestingly even the famous roar of a Harley Davidson motorcycle has been made the subject of a trade mark, as have the smells of some of the world’s leading perfume products.

How to get a Trade Mark

Rights to a trade mark can be generated in two ways. The first is through making use of the trade mark to the extent that consumers recognise it and associate it with a particular business, even if they do not know the name of the business. The second is by applying to register the trade mark. Where available, trade mark registration normally provides the most effective form of protection. This is because registration can provide a national right regardless of whether the mark is recognised by consumers.

Trade Mark needs to be distinctive

When it comes to registering a trade mark there are rules governing just what one can and cannot protect. The basic requirement is that a trade mark needs to be “distinctive” in order to qualify for registration. For example, it is not normally possible to register strongly descriptive words or phrases as to do so would deprive others of fair use of the English language when describing the products that they sell. The word “creamy” would be too descriptive to register for ice cream, but the same may not apply if the world was used for advertising services. This is because while it is normal to say that an ice cream is “creamy” it would be quite abnormal to say the same of an advertising agency. Sometimes there can be a fine line between just what is and is not descriptive for a particular range of goods or services.

Trade Mark should be clear of pre-existing trade marks

For a trade mark to be registrable it is normally necessary that it be sufficiently different to earlier trade marks. If two trade marks are too close to one another in sound or appearance then the one that is later in time can be denied registration. Before there is a conflict it is normally necessary that the two trade marks relate to goods or services that are at least similar, although there are some exceptions to this. For example in the case of famous trade marks, such as Nike or McDonalds, there can be a conflict situation even if the trade mark which is later in time is used for quite different goods or services. There are times when two seemingly conflicting trade marks can be registered alongside one another even though they are similar in sound and appearance and are used on similar goods or services. For example if two businesses have been trading in good faith alongside one another for a reasonable amount of time, perhaps not knowing about one another, then the business that is later in time can be said to have an “honest concurrent right” to continue what it has been doing. However this will not apply in every situation and so if you wish to stake a claim based on honest concurrent rights then it would be best to first get good legal advice.

Choosing a Trade Mark

Because a trade mark needs to be distinctive it is usually best to choose for one’s branding a word or phrase that is other than just a typical advertising or trade expression. Invented words are usually the easiest to register, so long as they are not too close to existing trade marks. However in some cases even descriptive words or phrases can be protected if they have been used to such a large degree that consumers identify them as a brand. The large scale use in a way converts the descriptive word or phrase into a brand name. To give an example, many businesses have a warehouse to store their products. Notwithstanding this the well known retailer The Warehouse should have little difficulty in asserting a brand right in its name. This is because The Warehouse has the benefit of large scale sales and advertising over many years.

Applying for registration

To obtain trade mark registration an application has to be filed at the National Trade Marks Registry. New applications are normally examined very soon after filing. As part of the examination procedure the Registry runs a limited search for possible conflicting trade mark applications or registrations and will also make an assessment as to whether the mark is sufficiently “distinctive”. If the Registry has any objections then an examination report is sent out and a set period is given within which to deal with them. Sometimes it is possible to overcome an objection with written arguments, with or without changes to the goods or services covered by the application. If the Registry does not make any objections, or when any objections have been overcome, the application is advertised. The advertisement marks the beginning of a three month opposition period during which competitors can oppose the application if they have grounds for that. If there are no challenges, or when any challenges are overcome, the application can through to registration.

Searching

If required, a search for possible conflicting trade marks can be made before filing an application for trade mark registration. A search is always a wise thing to do before entering the market as there can be serious repercussions for infringing the rights in a possible relevant pre-existing trade mark.

Overseas Applications

For most other countries it is possible to file a trade mark application up to 6 months after the original application with a claim to rights from the same date as that original application. This means that for many countries one can start the process locally and defer filing overseas applications for a number of months without loss of date rights.

What if you don’t have a Trade Mark registration?

If you do not have a trade mark registration you might still have a way of dealing with businesses that begin trading with branding too close to your own. However without a registration your ability to protect your brand may be somewhat limited, depending on the exact facts of your situation. If for example you have been using a trade mark on a national scale for a long time and a significant number of consumers recognise it as a brand then you might be able to take action under a tort law called “passing off”. One would thus say that the competitor is unfairly passing off its goods or services as yours. In New Zealand you may also be able to take action under the Fair Trading Act which prohibits deceptive trade practices. If for example, the competitor has copied logo artwork then it might also be possible to take action under the Copyright Act. However each of these has its pitfalls and so it is always best to register a trade mark from the first day of one’s business. It can make for a much easier defence of one’s rights later on.

Registered designs can serve to protect the shape of a product, or a pattern applied to a product. They are normally used to protect items that are not inventive enough to patent, but they can also be a useful backup even in cases where a product is patentable.

To give an example, a vase may have a great new shape but because the only unique thing about it is its attractive curves it is not the sort of thing that can be patented. In short, it is not an invention, it is rather a nice piece of three dimensional art. In such a case a design registration can be used to protect the shape of the vase. The registration protects against competitors seeking to follow with an identical vase as well against those who seek to follow with a substantially similar vase.

To give another example, a portable building may have some clever inventive constructional features. These can be made the subject of a patent but the building also has a unique and stylish appearance. The shape of the building can thus be made the subject of a design registration even though the building also involves something patentable.

To enforce design rights it is not necessary to prove that the protected product has been copied, merely that it looks the same or sufficiently similar. With New Zealand designs it is irrelevant that ‘infringers’ may have developed their own product without having seen, or having been aware of, the product covered by the registration. If the competitor’s product is sufficiently similar in appearance then it can be an infringement. Because of this design registration in New Zealand can provide a stronger form of protection than is available under the Copyright Act.

It is always wise to make a search before entering the market with a new design to see whether there are any existing design or other intellectual property rights which might be infringed. A search also gives one an idea as to whether the design is unique enough to register.

Once an application has been filed the Registry subjects the application to an examination process. If the Registry raises any objections at the examination stage then an opportunity is given to address these. If no objections are made, or when any possible objections have been overcome, the application proceeds to registration.

Designs Overseas

Because New Zealand is party to an International Convention, for most overseas countries it is possible to file a design application in New Zealand and then wait for up to six months before filing corresponding applications overseas. If filed within the six month period the overseas applications may be entitled to claim design rights from the same date as the New Zealand application.

This means that for most countries a product can be safely placed on overseas markets without first applying for a design in the countries concerned, provided of course that an application is filed in those countries within six months of the New Zealand application. This provides a useful period of time to test an overseas market before incurring costs in applying for design registration abroad.

In New Zealand

The law of copyright provides a mechanism for protecting the labour, skill and effort expended by someone when they create or design something. That “something” is known in the Copyright Act as a “work”.

Unlike other forms of intellectual property, copyright protection comes into existence automatically and immediately after the work is complete – there is no requirement, or provision, for registration of copyright in New Zealand.

To be eligible for protection a work may have to take a material form – ideas alone are not protected. Works which may be entitled to copyright protection include artistic works, literary works, dramatic works, musical works, films, sound recording, broadcasts and cable programmes.

To most manufacturing businesses in New Zealand the category of “artistic works” is the one which is most relevant. The reason for this is that the term “artistic works” includes not only paintings, drawings and photographs, but also things not generally thought of as “artistic”, such as engineering drawings, and at least in New Zealand, three dimensional items such as models and prototypes. Computer programmes are specifically covered. These are considered to be a type of literary work.

To be entitled to copyright protection a work should be “original”. This does not necessarily mean that the work has to be new or unique to the world but rather, that it is something which has originated from the creator of the work and has not been copied by that person from somewhere else. What this means is that even if another similar work exists this does not prevent separate copyright from existing in each work, provided that the second work was created independently from the first.

The term of protection for copyright works in New Zealand is normally the life of the author plus 50 years. However, for 3 dimensional products the effective term may be reduced to 16 years from the date the product goes into commercial production.

The protection that is obtained by copyright includes the ability to prevent anyone else making a copy of the work, or any substantial part of it. Copyright in engineering plans and manufacturing drawings and specifications can be infringed not only by taking a copy of them, but also by using those plans, drawings or specification to produce the product itself.

Copyright can be a valuable business asset. However, it does have two main disadvantages:

• To establish a case of infringement against a competitor it is usually necessary to show actual copying. While this may be less difficult when the product is an exact copy, when slight changes have been made the task becomes more difficult.
• There is often a dispute about the relevant dates on which the original work was created, which leads to the issue of whom copied who.

The second of these disadvantages can be relatively easily overcome by adopting a practice of documenting the creation of a work. Where the work is a drawing, plan or in written format, it should be dated and signed when completed. If it is a model, prototype or in some other three dimensional form then photographs should be taken and the photographs dated and signed. To confirm the accuracy of the dates steps should be taken to independently prove them. This can be done by arranging for your patent attorney to hold the original works (or signed and dated photographs), or by posting the work to yourself in a sealed and date stamped envelope, for example.

Copyright plays a valuable role in the commercial environment, however, as its protection is limited, where a completely new product or process is developed, or significant developments are made to existing products or processes, then other forms of protection, such as patent or design registration should be considered.

In Australia

The copyright law in Australia is in many respects similar to that in New Zealand, but there are some significant differences. For example, in many cases copyright in Australia cannot be relied on to protect three dimensional products of the kind that could have been made the subject of a design registration. For this reason it is important to get good advice as to whether one should register one’s product as a design while it is still at the confidential stage of its life.