Notes from the meeting of 18 March 2008

Notes from the patent & designs technical focus group meeting

10.30 am, 18 March 2008

IPONZ,

205 Victoria St,

Wellington

Present

Liz Francis (IPONZ), Mark Pritchard (IPONZ), Greg Lynch (Baldwins), Matt Adams (AJ Park), Tom Robertson (Pipers) and Warren Hassett (CTI) Angela Caruso and Dr Grace Chan (Philips Ormonde Fitzpatrick, Australia) via teleconference link

Apologies

Frank Callus (Henry Hughes) and Virginia Beniac-Brookes (Philips Ormonde Fitzpatrick, Australia) 

1. Matters Arising from Previous Meeting

1. IPONZ related back to the Group that the Legal Advice received in relation to the recent decision to cease publication of details of applications for designs was privileged and would not be made available.
   The point was noted but not agreed.
2. IPONZ advised that a practice note would issue within the next month describing the practice relating to the patentee offering to surrender a patent. The practice note will note that the patentee will receive correspondence from IPONZ on receipt of the offer of surrender and an indication if an opposition is filed to the surrender. Otherwise, in general, no further correspondence will issue to the patentee from IPONZ upon expiry of the opposition period for the offer of surrender.
3. Restoration – discussed later in meeting.
4. Positive feedback was received on the prompt handling of PF72 requests.
5. No further issues noted on misdirected correspondence.
6. On the issue of generating a new IPOL code to differentiate between files “ready for examination” from those “under examination”, both of which are currently designated as status 50. IPONZ reported that there was no solution in the foreseeable future as the solution requires significant IT input, which is unfortunately consumed with higher priority work.
   The item will be maintained for future action.
7. The previous request for publication of the IPONZ staff telephone directory was declined on policy grounds. Should clients wish to contact an examiner on a file, then the examiner’s DDI is located at the bottom of each examination report. IPONZ managers’ telephone numbers are available on the IPONZ website. Other enquiries should be directed to the Call Centre.
   It was noted that frequently Call Centre staff ask a number of questions before passing the caller through to IPONZ which was inconvenient if the caller was a patent attorney wanting to contact a particular examiner.

2. Technical Issues

1. Technical Focus Group - Terms of Reference

Draft Terms of Reference for the TFG had been circulated to the Group members for comment. The role of client members was discussed and clarified in that client members were present as an individual rather than as a representative of a particular firm. Some discussion followed on whether or not an individual member who was a member of a patent attorney firm could effectively represent a view other than that of a patent attorney firm.

Also discussed was the desirability for the membership of the TFG to include IP literate member(s) who could represent an industry-wide or “consumer” view-point rather than solely that of the patent attorney profession.

It was agreed that notes on the meeting would be circulated for comment within two weeks of the meeting.

2. Contrary to Morality – Section 17

IPONZ is seeking legal opinion on raising objections under section 17(1) and a practice note will issue within the next four to six weeks. The opinion will not be available for review as it is attorney-client privileged information.

3. Process of Acceptance – New Practice *

IPONZ will be introducing a new practice on issuing notices of acceptance on 1 June 2008. The current process of the examiner issuing an examination report and then ten or more days later, the formal notice of acceptance is issued, will be replaced by the examiner issuing the notice of acceptance when the application is in order for acceptance.

*TFG member are to provide comments to IPONZ on the new practice by 10 April 2008.

4. Objections Raised After Hearing

It was noted that objections had been raised by IPONZ on applications after the application had been subject of a Hearing.

The issue has been addressed within the Patent Examination Team and in at least one case arose through misdirection of cases within the Team.

5. PCT Rules in Relation to Restoration of Right to Priority

A query was received on IPONZ’s policy on grounds for restoration of priority of PCT applications up to 14 months from the date of earliest priority.

IPONZ will allow applications for restoration of the right of priority on the basis of the “due care” standard. However, generally, IPONZ will not allow restoration on the basis of “unintentional” failure to file a PCT application outside the 12 month convention deadline.

IPONZ will issue a practice note within four weeks on restoration of priority of PCT applications.

6. Convention Priority

A brief discussion on the issue of New Zealand not being mentioned in the Order in Council 2000/236 giving rising to uncertainty amongst applicants as to the validity of patent applications claiming a New Zealand convention priority.

The issue is recognised within IPONZ and CTI. No legislative resolution is anticipated in the near future as the patent Bill does not address the issue. There is a possibility that when the Bill goes before Select Committee that the issue may be raised and an opportunity provided to address the issue.

3. Administration

1. Action on PCT applications to WIPO

Priority documentation relating to PCT applications file at IPONZ in October/November 2007 sent to WIPO in early January 2008 was misdirected in the mail and consequently took several weeks to arrive at the proper destination. No documentation was lost or misplaced. Other than the misdirection by the mail service, no other issues have occurred in the knowledge of IPONZ

2. Filing/ Errors/Restoration Action

A query was received on perceived delays on IPONZ issuing filing receipts. IPONZ date stamps and mails filing receipts provided by applicants on the day of receipt. Additionally, tax invoices are also stamped and returned in the same period.

IPONZ is not aware of any systemic issue on dating and returning filing receipts when they are provided by clients.

Consideration of applications for restoration is experiencing delays in reaching the examination team through a staffing issue in Business Support. The issue has been resolved and it is expected that restoration applications will proceed to the examination team for consideration in the immediate future.

On the point of IPONZ processing requests for correction of error (Patent Form 69), these are all processed within 5 working days of receipt.

3. Patent Status Codes

See point 8 under Matters Arising.

4. Examination and Correspondence delays

PCT national phase applications having an examinable date of late 2006 are currently being examined in most technology areas.

The correspondence on examined files is presently being re-examined within 15 days for most applications.

5. Address for Service – Patents

A concern was raised on the occurrence of non-New Zealand addresses for service on the Register, for example Australian addresses for service.

6. Incorrect Void Notices

It was noted that despite recent changes in IPOL queries to reduce the number of incorrect void notices issuing from IPONZ, that some incorrect notices were being issued.

IPONZ has now amended its procedures so that all void notices generated by IPOL will issue only after review by the manager and relevant principal examiner.

7. IPONZ On-line Correspondence Receipting

It was noted that when users file documents via the on-line correspondence facility, that a filing receipt was not available. Additionally, it was also noted that users could not review a list of earlier filed documents using the filing history option.

IPONZ is aware of the filing receipting issue and unfortunately the IT resource is otherwise unavailable for the immediate future.