Notes from the meeting of 7 November 2007

Notes from the patent & designs technical focus group meeting

11 am, 7 November 2007

IPONZ,

205 Victoria St,

Wellington

Present

Liz Francis (IPONZ), Mark Pritchard (IPONZ), Greg Lynch (Baldwins), Matt Adams (AJ Park), Tom Robertson (Pipers), Frank Callus (Henry Hughes), Virginia Beniac-Brookes via video-link (Philips Ormonde Fitzpatrick)

Apologies

Apologies: Warren Hassett (CTI, MED), George Wardle (CTI, MED)

1. Welcome

Liz Francis opened the meeting and introduced herself with some background as the new manager of patents, designs and PVR.

With the new management there has been a slight re-arrangement of the responsibilities within the patent and design examination team in that the manager will primarily focus on strategic priorities, management issues and operational issues. The main focus of all technical/legal issues with respect to patent and design matters should be directed to the principal patent and design examiners.

There was a brief discussion on the Terms of Reference of the TFG as there appeared to be a number of agenda items which were not appropriate for discussion at a Technical Focus Group meeting as they related to process issues. IPONZ will review the Terms of Reference for further discussion at the next meeting.

2. Notes from previous meeting

The question of the format of the record of TFG meetings was discussed. It was generally agreed that a note form of record keeping would be preferable as, for example, it allowed the record of TFG meetings to be disseminated within firms without attribution of comments to individuals other than in a more general sense.

A response from IPONZ was awaited on the list of design issues submitted at the last TFG. IPONZ will action.

3. IPONZ policy not to publish design application details

There was some discussion about IPONZ’s decision to cease publication of details of design applications. The reason for ceasing to publish details of design applications was one of compliance with Section 30(4) of the Designs Act 1953. IPONZ reviewed the publication practice after receipt of a complaint from an applicant and sought legal advice on the practice of publication. After receipt of the advice, IPONZ ceased publication in accordance with Section 30(4).

The question of consultation with clients via, for example, the TFG, before changing such practices was raised. It was generally agreed that it would be appropriate to raise such issues with the TFG.

IPONZ will look to the possibility of releasing the legal advice received on ceasing publication of details of design applications.

4. IPONZ policy not to advise patentees by letter of surrendering action.

A question was raised as to IPONZ’s policy regarding not informing patentee of the surrender of patents upon the expiry of the opposition period. Where a patentee indicates to IPONZ of the desire to surrender a patent, then IPONZ as a matter of practice will acknowledge the patentees request in writing. The surrender of patents is published in the Journal each month. If no opposition to the surrender is received, then the patent is marked off on the Patent Register as abandoned. The applicant is not informed of the surrender, but is only contacted again if there is an opposition to the surrender is received by IPONZ.

IPONZ will look at the correspondence process related to the surrender of patents are report back at the next TFG meeting.

5. Effects on patentees on registry delays in processing restorations.

It was commented that delays in the restoration process are of concern to applicants for restoration in that third parties may obtain intervening rights in the period that the patent/application was not in force/active.

The delay in dealing with restoration applications arose in business support that had a staffing issue which has since been resolved.

6. Importance of handling PF72 requests promptly.

Delays in actioning requests filed on Patent Form 72 are of concern as frequently the information requested is time sensitive (e.g. notification of acceptance of a particular application). Where there is a delay in the notification by IPONZ, it is occasionally too late to do anything substantial with the information.

The actioning of PF 72 requests is for Business Support. IPONZ will look to the internal process and report back at the next TFG.

It was noted however that there was a marked improvement on IPONZ’s dealing with information requests in general and compliments were to passed to those concerned in IPONZ.

7. Receipt of IPONZ mail intended for others

The issue continues to be an area of concern for patent attorney firms. A bundle of copies of misdirected mail was passed to IPONZ by Baldwins. Other firms noted that they too had similar bundles.

IPONZ will pass on the received bundle to Business Support with whom the issue resides and report back on progress on addressing the issue at the next TFG meeting.

8. New status code "ready for/under examination"

The recent change in the title for applications at Status 50 from “under examination” to “ready for examination/under examination” is problematic for some users. It is now not possible using IPOL Status codes to differentiate between those applications which have an examination report issued or simply awaiting examination. There is a significant number of files awaiting issuance of a first examination report and the problem resides in that clients wanting to know if they have missed a first examination report will need to contact IPONZ directly on specific applications to ascertain whether or not a first examination report has issued.

The reason for the change in title was to more accurately reflect the status of applications within IPONZ. Prior to the change, all PCT national phase applications which had all of the relevant documentation and had passed the relevant examinable date and were therefore ready for examination were under Status 20, “Filed”. The proper status of these applications was ready for examination i.e. Status 50, and not “Filed”, Status 20.

Consequently the title of Status 50 was changed to “ready for examination/under examination”.

It is appreciated that the change in title is not convenient for external users of IPOL, however, the change reflects a business need of IPONZ to accurately account for the status of all files.

IPONZ will look to the possibility of introducing a further Status code into IPOL to distinguish those applications which are “ready for examination” but not yet “under examination”.

9. Correspondence

It was noted that it is sometime difficult to directly access a particular examiner without the need of calling the Contact Centre first, then being passed through to an examiner. Additionally, it was also noted that there may be an issue with the telephone messaging service in that many messages do not appear to be received by examiners, or that the answering service message was that of another examiner (who may have left IPONZ).

It was requested that the IPONZ internal telephone directory be released to allow more direct access to examiners.

IPONZ will look to releasing the internal telephone directory and review the telephone answering service issue.

It was noted that the direct dial telephone numbers of examiners were available from under the signature area of relevant examination reports.

10. Treating a CAP as a Provisional

A number of extracts from recent examination reports were provided immediately prior to the meeting which did not allow time to consider the points raised therein to be considered in detail.

The extracts related to issues raised under Section 9 of the Patents Act. Of particular note was the interpretation of the phrase “accompanied by” as used in Section 9 and a brief discussion centred on IPONZ’s interpretation meaning “filed along with”. There was some general agreement on IPONZ’s interpretation. However, IPONZ would welcome submissions on the point of interpretation if it would be considered helpful whereupon IPONZ would report back at the next TFG.

11. Cognates

A brief discussion centred around extracts from an examination report on IPONZs view on cognating of certain types of specification under Section 9(3).

IPONZ will review it’s practice on cognating of specifications and report back at the next TFG meeting.

12. AOB

It was noted that the PCT receipting process was smoother and more efficient than previously. Compliments to be conveyed to those concerned within IPONZ.

There was brief discussion on the new Patents Bill and its progress towards introduction to Parliament.

A query on whether or not the Newsletter continued to be published and if so, where could it be found. The Newsletter is available on the IPONZ website in the Information Library > Publications folder.

A point for consideration by MED Legal/IPONZ was raised with respect to the applicant’s derived right to apply (first and true inventor – Section 7) for an application in view of recent developments in Australia where it would appear the Courts have required that the right to apply be specified in a particular manner. Philips Ormond Fitzpatrick to supply further information to IPONZ for consideration. IPONZ will action upon receipt of the Australian case law.

The next meeting will be in March 2008, date and time to be confirmed.