dimanche, avril 17, 2011

New Zealand: Draft amendments to designs regime

Contributed by A J Park

The Designs Amendment Act 2010, which relates to the restoration of designs, will come into force on April 19 2011, unless the governor general appoints an earlier date. Before the act comes into force, the Designs Regulations 1953 must be updated. The Ministry of Economic Development is drafting amendments to the regulations and recently asked design practitioners and some private applicants to provide feedback on some of its proposals.

Period for requesting restoration

The act provides that if a request for restoration is made within a prescribed period, it must be shown that the lapse was unintentional. The commisioner may extend the period, but the applicant for restoration must show that restoration was applied for without undue delay. The prescribed period will be defined in the regulations.

The ministry asked for feedback on suitable prescribed periods. It proposes a period of six months after the expiry of the renewal fee grace period as the period for a lapsed registration, and three months beyond the period initially set by the examiner for correcting technical errors in a pending application.

Protective provisions for third parties

Regulations will be drafted to protect third parties that used a design during the period in which the design application or registration had lapsed. The ministry proposes that a third party which has started to use the design or has taken definite steps to use the design during this period should be entitled to continue using the design after the application or registration has been restored.

The proposal appears more generous to third parties than the equivalent provision in the Patents Regulations 1954. These regulations provide that products made during the period of lapse can be sold, but manufacture cannot continue after restoration; otherwise, the product claim in the restored patent would be infringed. However, the proposal to enable a third party to continue using the design after restoration is similar to existing provisions in Australia and the United Kingdom.

The ministry also proposed that the third party would not be entitled to increase manufacturing capacity after restoration of the application or design. This provision would differ from the position in Australia and the United Kingdom and might be unclear, as it could be difficult to determine actual capacity at a given time.

Postponing registration

The ministry is proposing to implement a formal system for postponing registration of a design after the application has been filed.

At present, a design application proceeds to registration and publication as soon as all documentary requirements are complete. Applicants can benefit from postponing registration in order to keep the content of their application confidential and avoid alerting competitors to details of their forthcoming product. If registration is postponed and there has been no non-confidential disclosure or commercialisation of the product, the applicant may be able to file overseas applications after the normal six-month convention period.

Postponement of registration can be achieved by withholding documents or filing informal versions. However, this increases the examination burden on the New Zealand Intellectual Property Office, which must re-examine the applications when the formal documents are filed. Another drawback is that if a New Zealand design application is the first application for protection, it is preferable to file all documents formally in the first instance in order to secure an ideal priority date.

The maximum period of postponement that can be achieved informally under the existing system is 15 months from the filing of the application. However, if the formal documentary requirements are completed in the final three months of that period, it is necessary to request an official extension of time when filing the formal documents. This may result in an additional cost for the applicant.

The implementation of a formal system for postponing registration will enable applicants to file formal copies of all documents without being disadvantaged by early registration and publication. It is strongly arguable that the maximum period of postponement should be 15 months from filing, as it is under the existing system.

Next steps

The responses will be collated and reviewed by the ministry's regulations team and will be taken into account when the amendments to the Designs Regulations are drafted. The regulations will be finalised and approved by the Cabinet shortly.

For further information on this topic please contact Michael Brown at A J Park by telephone (+64 4 473 8278), fax (+64 4 472 3358) or email (michael.brown@ajpark.com).