RECENT NEWS

NZ joins Global Patent Prosecution Highway

New Zealand joined the Global Patent Prosecution Highway (GPPH) pilot programme on 6 July 2017. The GPPH is an agreement between patent offices around the world that provides a means to expedite examination on the basis of one or more allowed claims of a corresponding application allowed by another participating patent office.  The patent offices participating in the GPPH pilot programme include some of New Zealand’s largest export partners including Australia, Canada, Japan, South Korea and the United States.  At present the European Patent Office (EPO) and China (SIPO) are not part of the GPPH pilot programme.  Both are members of the IP5 Patent Prosecution Highway (EPO, JPO, KIPO, SIPO and USPTO) so they may join the GPPH at a letter stage.

Expedited examination may lead to the earlier grant of a patent, this is particularly advantageous in some of the participating counties that have traditionally been slow (5 – 10 years) to examine patent applications.  While GPPH does not guarantee grant of a patent in a participating office, GPPH speeds up examination for the patent application and an allowance or grant in one of the offices gives an earlier indication of the scope of protection that will likely be allowed in other participating countries.  Such information is valuable when making decisions with respect to overall commercialisation strategy.  If filing a GPPH request in New Zealand, IPONZ is usually respectful of other offices and is likely to apply findings of other offices unless there is good basis to find otherwise.

Examination in the New Zealand Patent Office is usually reasonably fast compared to other countries.  Overseas and New Zealand based applicants, can use the accepted claims of their New Zealand patent application and the GPPH to expedite examination of corresponding applications in other participating countries.  Alternatively, overseas applicants can use accepted/allowed/granted claims of a corresponding application from a GPPH member country to expedite examination of their New Zealand patent application.

Should I use GPPH?

The decision to use or not to use the GPPH program depends on your IP and commercial strategy and your current patent portfolio. The use of the GPPH provides another tool that can be integrated into your overall IP strategy.

The requirements of New Zealand and Australia are similar and so the GPPH can be used cost effectively for both countries through one agent, as both countries require similar concordance tables and an application prepared for New Zealand could be applied in Australia with minimal adjustment allowing the same work product to be used in both countries.

China’s Official Trade Mark Fees Reduced by 50%

As of 1 April 2017, the Chinese Trademark Office has reduced a number of official trade mark fees by 50%. It has done this as part of the Chinese government’s effort to encourage entrepreneurship and innovation.

The 50% reduction in fees covers:

  • Filing trade mark applications
  • Renewing trade mark registrations
  • Opposing trade mark applications
  • Cancelling trade mark registrations
  • Recording updates to existing owner details on the Register
  • Recording assignments of trade mark rights on the Register

New Zealand brand owners may perceive the fee reductions to be relatively modest, and not particularly advantageous. However, they should be aware that the reduction in fees may incentivise trade mark squatters to file trade mark applications in bad faith, which is an ongoing problem in China. This problem is exacerbated by the fact that China’s trade mark system is based on a ‘first to file’ rather than a ‘first to use’ principle.

We recommend you review your existing trade mark portfolio in China, with a view to filing new applications and/or updating Register details for your existing Chinese trade mark registrations.

We also refer you to a previous Ellis Terry article which contains helpful information about protecting your trade marks in China.

If you are interested, please contact us to discuss how you can protect your trade marks in China in more detail.

Disclaimer: This article is intended to provide general information only, and is not legal advice. You should seek advice from your IP professional if you require advice particular to your situation.

Ellis Terry named New Zealand IP Prosecution Firm of the Year at Managing Intellectual Property Awards ceremony

We are delighted to announce that Ellis Terry was awarded the New Zealand Prosecution award for 2017 at the Managing IP Global Awards on 9 March 2017. The Managing IP Global Awards recognise the best Intellectual Property firms in the world.

The annual awards ceremony, which took place at The Savoy in central London, saw over 250 IP professionals celebrate successes and achievements within the international IP world.

Among the accolades this year was Managing IP’s first ever prosecution award for New Zealand, presented to Ellis Terry for its outstanding work in prosecuting patents, trade marks and designs. The increased number of awards for the New Zealand category acknowledges the growing importance of the New Zealand IP landscape.

Ellis Terry partner Blayne Peacock said “we are thrilled to accept this award and the acknowledgement of our clients and colleagues around the world. The team at Ellis Terry has worked tirelessly to help protect and enforce innovation for New Zealand based organisations for many years. This recognition is a testament to the success of our clients in their chosen markets and to the high quality of research and development, and products, coming out of kiwi technopreneurs”.

For more information, please visit: http://www.managingip.com/Article/3668349/Awards/Managing-IP-Global-Awards-Winners-2017.html.

About Ellis Terry

Ellis Terry has offices in Auckland and Wellington and practices in all aspects of intellectual property law. Established to serve a local and international client base, but with a strong New Zealand client focus, we advise on patents, trade marks, registered designs, copyright, litigation and commercial law. We do more than just protect ideas, creativity and brands. We put the legal issues into their proper commercial context so that intellectual property can be managed just like any other business asset. We think outside the box to help develop successful commercial strategies and to implement them through our network of funders, advisors and businesses.

Ellis Terry offers legal assistance to innovative entrepreneurs and corporations in a range of industries. Creators of artistic works, inventors and designers from diverse specialist fields, including mechanical, electrical and computer engineering, have sought our guidance. Our trade marks team works with clients from a variety of industries, including the food and beverage, pharmaceutical, technology, film and entertainment, insurance, farming and agricultural, building, clothing and textiles, automotive and wine industries.

About Managing IP

Founded in 1990, Managing IP is the leading source of news and analysis on intellectual property developments worldwide.

The annual Managing IP Global Awards are the premier international awards for the intellectual property profession. The awards are based on extensive research and interviews with practitioners worldwide. A team of researchers based in London, Hong Kong and New York contact firms and clients in 75 jurisdictions to ask them for information and feedback.

Managing IP is part of the Euromoney Legal Media Group. Euromoney Institutional Investor PLC is listed on the London Stock Exchange.