Weekly Patent Update – Nov 2021 (2 of 3)

“A change to practice in proceedings before the Registrar’s Tribunal

Tribunal Practice Notices (TPN’s) contain changes to our tribunal functions for trade marks, registered designs, patents and design right.

These normally arise from issues raised in a legal decision or following an appeal.

We will update the patent hearings manual or manual of trade marks practice, as appropriate, with this information.

The manual of trade mark practice provides the most up to date guidance in respect of the Tribunal’s practices and procedures. The manual is regularly updated to include the TPN’s. The practice manual is to be regarded as the main reference point for the Tribunal’s users.”

“New Zealand (NZ) celebrates 40 years of membership with International Union for the Protection of New Varieties of Plants (UPOV) on 8 November 2021.

Role of UPOV

New Zealand (NZ) celebrates 40 years of membership with International Union for the Protection of New Varieties of Plants (UPOV) on 8 November this year. New Zealand has been a member of UPOV since 1981, one of 74 member states using a common and effective system of plant variety protection. Membership of UPOV entitles NZ breeders to apply for plant variety rights (PVRs) in other member states under the same provisions as national plant breeders of those states. This gives NZ breeders access to larger markets, and in turn encourages investment and development in national plant breeding. A grant gives you the exclusive right to produce for sale and to sell propagating material of the variety.

UPOV Application Process Developments

UPOV in association with the World Intellectual Property Organisation (WIPO), is actively engaged in trying to simplify the application process for plant variety protection matters worldwide, taking advantage of the ease with which electronic media now enables data transfer and this will in time impact on PVR users as well. The introduction of the Intellectual Property Office of New Zealand (IPONZ) case management system is compatible with UPOV/WIPO aims making PVR information readily accessible to breeders and owners.

How PVR operates in New Zealand

In New Zealand, PVRs are presently available for varieties of any kind of plant excluding algae or bacteria. PVR gives a breeder the exclusive right to either produce for sale, or sell propagating material of, that plant, or licence others to do the same. Rights holders commonly collect royalties from the commercialisation of their protected varieties, with the PVR applying for a term of 20 years in the case of non-woody plants, or 23 years in the case of woody plants.

In New Zealand, all plants must undergo a period of testing and evaluation before they are granted PVR. This can be in a centralised trial – the general practice for potatoes, grasses, roses, apples and some ornamentals – or on the applicant’s own property. The trials seek to establish that the plant is indeed morphologically or physiologically distinct, uniform and stable.

Imported potato varieties

Kiwis love all forms of potatoes and to satisfy this demand, growers produce many imported varieties. All potatoes are tested in an annual central trial at Lincoln. There is an advertised closing date for applications of 1 August each year, the trial is planted in October then harvested the following autumn with a decision made and notified during the winter.

Chris Barnaby is Assistant Commissioner for Plant Variety Rights, based in Christchurch says, “Of course if it is imported material, you can make an application before you have plant material, including potato tubers, in NZ. We set out a suitable timeframe with respect to quarantine requirements and so on. We have to be realistic about that because quarantine is entirely out of our control and subject to other requirements.” This procedure is similar for all plant varieties.

New Zealand breeders in the international market

New Zealand breeders targeting the international market are still seeking PVR for new native selections, Cordyline or Cabbage Trees among them, but applications for Hebe varieties have fallen off in this country. Their breeding seems to be more active in Europe now than here.

As per Chris, “My impression is that most of the traditional connections our local industry have are with northern Europe and that climate is not entirely suitable for many New Zealand natives. I think they’re being used very much as pot or tub crops, and because of that there are limits as to appeal. The potential is perhaps not quite what was thought.”

Our natives are perhaps better suited to garden planting and not the pot culture many Northern European gardeners seem to favour. Many overseas ornamental plant breeders focus on shorter term colourful flowering plants for seasonal containers and indoors.

However, there have been great successes through varieties of New Zealand natives protected overseas and requests for testing assistance from overseas authorities.

PVR Applications from other countries

In the recent years, the proportion of PVR applications for varieties from other countries has increased with fruit and agricultural crops steady and ornamentals more subject to the ups and downs of fashion trends. Chris says that there was “a euphoria of ornamental breeding” 10-15 years ago, when overseas breeders in particular released multiple varieties of some species on the market. As time progressed some perhaps came to realise that the gardening public didn’t have quite the appetite for these plants that they thought they might.

“And of course, with the development of increasingly advanced tissue culture propagation technology which enables production of big quantities of an increasing range of plants. All the possibilities perhaps crated an initial euphoria and has now settled back somewhat to a more pragmatic approach, or a different perspective.”

As for the origin of applications, Chris estimates there is overall around a 60:40 split between foreign and national breeders, depending very much on the plant species.

“For example, petunias would be about 100 per cent foreign breeders, whereas something like ryegrass or pasture plants would be 80 per cent New Zealand breeders. Fruit crops are roughly 50:50. We certainly in this country have strength in pasture breeding, fruit crops and some ornamental species.”

Berry fruit has been an area of growth in recent years, with one New Zealand breeder certainly active and a lot of material coming in from North America, “which of course is where blueberries come from, so I guess it’s not surprising that they have the germplasm and the breeding base there,” Chris says.

Looking at trends from the NZ PVR Office point of view, applications overall are up with increases in ornamentals and steady across fruit, vegetables and agriculture. The number of grant decisions has sat around 85 per year for the last several years, indicating the Office of five people is functioning consistently well.””

“Quick and barrier free access to all available information on patent applications is a key factor in a patent system that works. Applicants, patent attorneys, researchers and business partners all want to take the uncertainty out of the process, and what better way to do so than to give them the ability to “look over the shoulder” of patent examiners and read the very latest communications between patent applicants and the patent office.

And that is exactly what Global Dossier offers. Available in Espacenet, the European Patent Register and GPI, it provides IP stakeholders with quick, free, one-stop access to all public files in the dossiers of applications filed at participating IP offices. This requires IP offices to align their data service platforms so that information can be integrated into the patent information systems.

As part of our ongoing efforts to provide access to dossiers from other patent offices, we are proud to announce that you can now use our Global Dossier service to view utility models filed at the Korean and Japanese patent offices. Our tip for retrieving these quickly in Espacenet is to run a publication number search for “JPU*” or “KRU*“, select the relevant patent from the list and then click Global Dossier in the Bibliographic data pane.

Global Dossier currently provides access to the public documents of patent applications from the following patent offices:

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“The United States Patent and Trademark Office (USPTO) has posted a notice announcing the establishment of an email address (PCTHelp@uspto.gov) for submitting inquiries regarding the Patent Cooperation Treaty (PCT) and the procedures applicable to international applications filed under the PCT and U.S. national stage applications submitted under 35 U.S.C. § 371. The email address will be effective January 1, 2022, for one year on a pilot basis. The option to submit inquiries via email is intended to improve the overall customer service experience for those needing information regarding the PCT and international and national stage applications in the USPTO.

The full text of the notice is available on the USPTO’s Patent Related Notices webpage.”

“1. Under Rule 134(1) EPC, time limits expiring on a day on which at least one EPO filing office is not open for receipt of documents (closing days) are extended until the first day thereafter on which all the filing offices are open for receipt of documents and on which ordinary mail is delivered.

2. In 2022, as hitherto, the EPO’s filing offices in Munich, The Hague and Berlin will be closed for the receipt of documents on every Saturday and Sunday. The other closing days in 2022 are listed below.

3. For PCT proceedings, the list below applies mutatis mutandis for the purposes of Rule 80.5 PCT.

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“Tuesday, 2 November sees the launch of the pilot phase for our new user area for parties to proceedings before the EPO.

This exciting new service, which has been developed in collaboration with our user focus groups, will be open to participants from patent attorney firms and industry for an initial period of six months. Participants will be able to access their EPO Mailbox, view their application portfolio and documents, perform tasks and file procedural requests in response to communications from the EPO.

Following successful completion of the pilot phase, the user area will be made generally available.

The user area is being delivered as part of the new online user engagement programme under Goal 2 of the Strategic Plan 2023. Between now and 2023 we will continue to add valuable new features inspired by the feedback from our user focus groups, SACEPO and the epi online communications committee.

Users will benefit from:

more flexible, user-friendly access

simplified procedures

improved procedural guidance with real-time quality checks

The user area will enable us to improve the digital exchange of information, to provide a more modern approach to procedural submissions and to allow more direct interaction with EPO examiners.

Further information

User area services“

“FI scheme is revised twice a year in correspondence to the progression of technology. When FI scheme is revised, documents which were already classified with old FI entries are reclassified accordingly. There are cases where reclassification work requires a few years. It is necessary to use both of old and new FI entries for searching while reclassification work is not completed.

To find FI new entries, deleted entries or changed entries, see below.

• FI revision in November 2021 (ZIP:44KB)
• FI revision in April 2021 (ZIP:58KB)
• FI revision in November 2020 (ZIP:22KB)
• FI revision in April 2020 (ZIP:51KB)
• FI revision in November 2019 (ZIP:38KB)
• FI revision in April 2019 (ZIP:56KB)
• FI revision in November 2018 (ZIP:55KB)
• FI revision in April 2018 (ZIP:149KB)
• FI revision in November_2017 (ZIP:61KB)
• FI revision in April_2017 (ZIP:109KB)
• FI revision in November_2016 (ZIP:1MB)
• FI revision in April_2016 (ZIP:196KB)
• FI revision in November 2015 (ZIP:113KB)
• FI revision in April 2015 (ZIP:153KB)
• FI revision in November 2014 (ZIP:165KB)
• FI revision in April 2014 (ZIP:115KB)
• FI revision in November 2013 (ZIP:128KB)

To find technical fields where FI reclassification is ongoing or planned (PDF:42KB)“

“After the historic signing of a first PPH (Patent Prosecution Highway) agreement with the Japanese Patent Office (JPO) in November 2020, Pascal Faure, Director General of the INPI, signs this Monday, November 8, 2021 with the office United States Patents and Trademarks (USPTO) a second PPH agreement. The objective of this collaboration agreement between the two offices is to speed up the processing of the granting of extended patent applications with priority given to a first national application. It shows the recognition by the USPTO of the quality of our industrial property titles and of the efficiency of the procedures put in place in recent years by the INPI.

This signature, facilitated by the PACTE law , allows the INPI to build on the momentum initiated last year and to strengthen its role within the international intellectual property ecosystem. Indeed, these measures put the INPI on an equal footing with the largest world offices such as the IP5, of which the offices of the United States and Japan are part, by harmonizing the quality of the French patent compared to that issued by the latter.

French companies will be able to request the acceleration of the procedure for issuing a second patent filing with the USPTO

Thus, from December 1, 2021, the PPH agreement signed with our counterpart in the United States will allow French companies to request the acceleration of the procedure for issuing a second patent filing with the USPTO.whether it is a national filing or a US national phase filing under the PCT, provided that the latter contains claims sufficiently similar to those mentioned in the application examined and found to be patentable by the INPI. Conversely, this PPH agreement will apply to American companies wishing to speed up the processing of patent applications in France, whether they are claiming the priority of an American national application or of a PCT application (for which the USPTO would be the administration). international search and preliminary examination).”

“Kindly note that CIPC is currently experiencing challenges with e-mails sent to customers. Some service providers are blocking e-mails received from CIPC as they view it as junk mail. CIPC is attending to this challenge as a matter of urgency and is liaising with the relevant service providers. CIPC will inform customers once the issue has been resolved.”