IPONZ's new system client administration
As part of the rollout of its new system IPONZ has tightened its processes in order to ensure the register is kept up to date and accurate. This currently applies only to Trade Marks and Designs but will apply to Patents and Plant Variety Rights from the end of the year.
Historically all information about an IP owner was held at the IP case level. This was necessary when modern technology solutions were unavailable. This meant that each time a detail about that owner changed they needed to submit a request that covered each IP case. This process created a lot of administration work for the Intellectual Property Office, IP owners and IP agents. It also led to discrepancies where the office had been informed of changes in the legal status of IP owners but had only reflected those changes to some of their IP portfolio. This in turn led to reminders and communication going to invalid addresses, and therefore weakened IP rights.
The new IPONZ system focuses on reducing administration across the whole IP supply chain, from application, through examination and in maintaining the IP post registration or grant. One example of this is in the maintenance of client details, which is being abstracted from the IP level to the client level. Each client record will hold information about that company, individual or other legal entity. This reduces the amount of data entry an applicant has to do on application. Interested parties can still see the address details of an IP owner against the IP on the register.
Authorised parties or the client themselves can now make changes to their client record which will reflect across their whole IP portfolio. This applies to changes in legal name, and to changes in addresses. At the individual IP level users can nominate which of their addresses to use for the purpose of communication on that case. Principally, as communication with the Office is electronic, that will be a system user’s details, and their associated email and address for service.
The intellectual property register contains a large amount of legacy client information. Over the last few years IPONZ has been working to rationalise that data. This is aided in the new system by links to the New Zealand Company Office and New Zealand Postal Address File. IPONZ will continue to rationalise client records with the ultimate aim being a single client record for each legal entity with an IP interest.
How does it work?
To avoid confusion and to ensure validation is correctly applied IPONZ has split client administration into four areas:
- Changes of Ownership
- Changes of Agent
- Changes of Legal Name (client maintenance)
- Changes of Address (client maintenance)
The processes for change of Ownership for an IP case are not significantly changed in the new system. Authorised parties can request a change of ownership for one or more IP cases, which will be granted by the Office if valid proof of title such as evidence of sale and purchase is provided.
The processes for change of agent for an IP case (or related case, such as a proceeding) are not significantly changed in the new system. Owners can appoint an agent in the system, and agents can request to be appointed as an agent for an IP case, which will be granted by the Office if a valid agent authority is filed. Agents can continue to assume authority for an IP applicant on initial application. Later this year we will simplify the process further to allow agents to request a Change in Agent and Ownership at the same time.
Historically requests to change the name of an organisation were made at the IP case level. The changes were reflected at the IP case level but IPONZ had difficulty tracking from the IP case level to other client records. This meant that even though IPONZ had been duly informed that a change in legal name had occurred, there would still be inaccuracies on the register. As those entities no longer existed with that name they ran the risk of having their IPs cancelled by the office.
To address these issues IPONZ will now enforce that where the change of legal name of a Company is validated it is reflected across all IP cases in their portfolio.
The process for an authorised party to change a legal name is to modify that name in the Maintain Client function. The change of name will be updated on the register by the Office if valid evidence of a change of name for that entity is filed. The new name will be made apparent for all IPs that entity owns on the register. Obligations on authorised parties to note individual IPs in the application form are met implicitly through the request.
Historically requests to change the address of an organisation were made at the IP case level. More and more client records would be created as different variants of the addresses were entered. This has led to the capture and the requirement to maintain over 2 million different addresses. The costs of maintaining this volume of addresses for the office and IP owners is considerable. As requests to change address were made at the IP case level this led to multiple address change requests from clients, and due to clerical errors on either side the register became increasingly inaccurate. As addresses were not correct IPONZ would be unable to contact those entities and they therefore ran the risk of having their IPs go abandoned.
IPONZ is obligated to capture a variety of addresses, principally a physical address which is used to determine where the applicant resides (for legal and tax purposes), and an address for service in New Zealand which is often the address of an agent. This will still be selected by the authorised party at the IP case level to facilitate communication between parties, though for the office this latter address is largely superseded by electronic communication. A change in who is contacted electronically for an IP case can be made in various places through the system.
For overseas applicants the contact for the IP case will usually be a New Zealand agent, whose contact details on the IP case will be the address for communication. Agents should therefore not add their own address as postal address or address for service against their clients. Where this is currently the case IPONZ will stop displaying that information on the register in due course.
The process for an authorised party to change a legal address is to modify that address in the Maintain Client function. This change will be made apparent for all IPs that entity owns on the register. Obligations on authorised parties to note individual IP case numbers in the application form are met implicitly through the request. As these addresses are legal requirements rather than being used for communication purposes there should be no requirement to have multiple addresses of each type for each legal entity.
The new process for adding a New Zealand Registered Company to the IPONZ register now enforces that they are found in the New Zealand Companies Register, and then pulls their legal addresses from that register, reducing the need to manually capture that information. Online applicants should not need to modify those addresses at that point, except to add a specific address for service for their IP portfolio.
This process will vastly reduce the amount of administration to be performed by IP owners, agents and the Office. At the same time it will ensure that the register is more complete and more accurate.
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