If a business knows or suspects that its confidential information has been or is about to be leaked the best way to minimise the damage is often to obtain urgent relief from the Court.

Two recent decisions from the Federal Court of Australia concerning alleged misuse of confidential information highlight some of the difficulties that applicants are likely to encounter when seeking urgent relief.

If you suspect there has been a breach of confidential information you should:

• act promptly and seek relief from the Court as soon as possible;
• ensure that all relevant information and material facts are disclosed to the Court;
• if search orders are required, be precise with the form of orders sought and, if granted, execute them with diligence and care.

Transportable Shade Sheds Australia Pty Ltd v Aussie Shade Sheds Pty Ltd [2024] FCA 584

In Transportable Shade Sheds the Prospective Applicant (TSS) sought an urgent ex parte interlocutory injunction against Aussie Shade Sheds, three former employees of a group of companies that were in the business of designing, making, selling and delivering pre-engineered but unconstructed shade sheds (referred to as the “vendor companies”) and ESheds Pty Ltd (ESheds).

Mr James Mogford was the director of TSS and ESheds. The vendor companies went into liquidation and Mr Mogford, on behalf of ESheds, acquired the assets, intellectual property rights and associated rights from the liquidator (Assets & Rights). ESheds then granted an exclusive licence to TSS to use the Assets & Rights.

During December 2023 and January 2024, Mr Mogford became aware that Aussie Shade Sheds was competing with TSS using one or more of the Assets & Rights. On 13 March 2024, Mr Mogford sent a letter of demand to Aussie Shade Sheds alleging that it had fraudulently extracted a substantial amount of the confidential information that TSS had purchased and that its conduct amounted to infringement of TSS’ intellectual property rights. By agreement the deadline for compliance with TSS’ letter was extended to 2 April 2024. On 9 April 2024, TSS instructed its lawyers to prepare the application for urgent relief and on 1 June 2024 the application was filed.

In considering whether to grant the relief sought, the Court observed that Mr Mogford and TSS had been aware of the circumstances for several months and found it “difficult to accept”[1] that the application was urgent. However, the Court also noted that “[a]n applicant for an ex parte order is under a heavy burden to disclose all relevant facts”;[2] that the level of detail in the affidavit evidence supported a finding that all relevant facts to the knowledge of TSS had been disclosed; and that it had taken “some time”[3] for TSS to accumulate supporting evidence. The Court also accepted that the Prospective Respondents were likely to destroy important evidence if they were notified of the application and referred to the observations of Isaacs J that an applicant “may come to the Court, and ask for its interposition even in the absence of his opponent, on the ground that delay would involve greater injustice than instant action.”[4]

In the circumstances the Court was satisfied that there was a serious question to be tried as to TSS’ entitlement to relief; TSS was likely to suffer injury for which damages would not be an adequate remedy; and the balance of convenience favoured the granting of an interlocutory injunction.

Fortescue Ltd v Element Zero Pty Ltd [2024] FCA 590

This matter concerns former employees of Andrew Forrest’s company, Fortescue Ltd (Fortescue), who are alleged to have taken copies of confidential documents relating to Fortescue’s research and development work into “green (carbon dioxide free) iron” technology and attempted to commercialise it through their start-up, Element Zero, in what the Fortescue described as an “industrial-scale misuse”.

The Court was persuaded by Fortescue to make search orders, also known as “Anton Pillar” orders. The purpose of search orders is to “preserve evidence, so as to assist in the proof of an applicant’s claim, which may be in jeopardy of destruction, concealment or perhaps removal from the jurisdiction … By their very nature, such orders invariably are made upon an ex parte application on behalf of applicants.”[5] So as to prevent subversion of the search order by publicity of the application and the making of the order the Court suppressed the identities of the parties as well as the proceedings.

The search order was subsequently executed. Without making any findings on the merits, the Court described the aftermath as an “industrial-scale forensic debacle”.[6] According to the Respondents the manner in which the search orders were drafted caused the recovery of an “unduly extensive volume and scope of material”.[7] Of the “extraordinarily large volume”[8] of material that was captured much of it was “entirely unrelated to Fortescue’s pleaded claim”[9] and resulted in the “extraordinary invasion of the privacy of the respondents”.[10] The Respondents complained that confidential information belonging to third parties (who were in competition with Fortescue) had been taken; hard copies had been removed and not returned; and the independent solicitor had not been present at all necessary times.[11] The Respondents further claimed that the Fortescue parties had omitted materially significant information from their application for the search orders, including details of how one of the respondents, whilst still employed by Fortescue, was allegedly authorised to make copies of documents and distribute them using their personal email account; and another respondent had signed a non-disclosure agreement on behalf of Element Zero to facilitate the two-way sharing of information with Fortescue.[12]

On 1 May 2024, a Fortescue employee concluded that the Respondents had misused Fortescue’s confidential information.[13] On 9 May 2024, the Fortescue parties approached the duty judge for urgent relief and on 14 May 2024 the Court granted the search orders. Unlike the parties in Transportable Shade Sheds, the Fortescue parties approached the court without delay.

Although Fortescue was successful in its application for search orders the Court considered that the circumstances of this case highlighted the “potentiality for the application for and execution of the search orders to have been what I termed an ‘industrial-scale forensic debacle’”.[14] Moreover, in declining the Respondents’ application to continue a general suppression of the proceedings and the identity of the parties on the basis that the Respondents’ reputation would be irreparably damaged the Court considered that drawing attention to the “debacle” might actually work in their favour.

Conclusion

Whether the claims of TSS and Fortescue will be substantiated remains to be seen as each of the proceedings are still before the Court. Nonetheless, the cases of Transportable Shade Sheds and Fortescue show that in spite of the inevitable need to respond quickly to suspected breaches of confidential information, there are benefits to be gained from taking the time to prepare the necessary evidence, disclosing all the relevant facts to the Court, and drafting and executing search orders with care. However, this must be balanced against the need to act promptly and to mitigate further damage to the applicant.

The post Delays and debacles: Securing urgent interlocutory orders for misuse of confidential information in recent court decisions appeared first on Griffith Hack.

Each of them were recognised as follows:

• Derek Baigent – IP Patents
• Simon Gapes – Trademark agents and attorneys
• Nicola Scheepers – Trademarks
• Amanda Stark – Patent agents and attorneys

The post Griffith Hack team recognised in Who’s Who Legal’s IP 2024 report appeared first on Griffith Hack.

This is the second year that Edith has been recognised in the IAM Strategy 300.

The IAM Strategy 300 identifies the individuals who are leading the way in the development and implementation of strategies to maximise the value of IP portfolios. To be considered for inclusion, candidates must be nominated by at least three people outside of their own organisation. This is followed up by a comprehensive research process involving interviews with senior members of the global IP and business community.

About Edith

Edith is a patent and trade marks attorney based in Melbourne, with over 15 years’ experience as an IP practitioner.

Edith’s technical expertise embraces mechanical engineering, materials science and chemistry, and her experience extends into in the areas of fast moving consumer goods, including food packaging; food technology; advanced materials production and processing; fibre and textile technology; process engineering; oil and gas; clean technology; and mining technology, including explosives and blasting technology.

The post Edith Hamilton named leading IP strategist in 2024 edition of IAM Strategy 300 appeared first on Griffith Hack.

The Practice Note is on the Australian patent and regulatory framework for life sciences inventions. It addresses key patent issues for life sciences inventions, including patent subject matter eligibility, patent disclosure requirements, patent term extension, and patent litigation, and relevant regulatory provisions concerning certain life sciences inventions in Australia.

The pdf version of the Note can be accessed via the button below

Reproduced from Practical Law with the permission of the publishers. For further information, visit practicallaw.com

The online version of the Practice Note can be accessed via the button below. Please note that a Practical Law subscription is required to view.

About Practical Law

Practical Law provides legal know-how that gives lawyers a better starting point. Their expert team of attorney editors creates and maintains thousands of up-to-date, practical resources across all major practice areas. They go beyond primary law and traditional legal research to give you the resources needed to practice more efficiently, improve client service and add more value.

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This outstanding result further demonstrates Griffith Hack’s depth of expertise and excellence across the full spectrum of IP. Congratulations to:

• Gavin Adkins – Law and Trade Marks
• James-Robert Cram – Patents, Chemical and Life Sciences
• Kerry Dick – Patents, Engineering & ICT
• Edith Hamilton – Patents, Engineering & ICT
• Robyn Heard – Patents, Engineering & ICT
• Georgina Higinbotham – Patents, Engineering & ICT and Practice Group Leader
• David Hughes – Patents, Engineering & ICT
• Malcolm Lyons – Patents, Chemical and Life Sciences
• Emma Mitchell – Law and Trade Marks
• Leanne Oitmaa – Law and Trade Marks
• Malcolm Peh – Patents, Engineering & ICT
• Nicola Scheepers – Law and Trade Marks
• Christian Schieber – Patents, Engineering & ICT
• Karen Sinclair – Patents, Chemical and Life Sciences
• Amanda Stark – Patents, Chemical and Life Sciences and Practice Group Leader
• Kellie Stonier – Law and Trade Marks and Practice Group Leader
• Dr Jing Fung Tan – Patents, Engineering & ICT
• Ray Tettman – Patents, Engineering & ICT
• Toby Thompson – Patents, Chemical and Life Sciences
• Robert Wulff – Patents, Engineering & ICT
• Jennifer Wyndham-Wheeler – Patents, Engineering & ICT

What is the WIPR Leaders Guide?

WIPR Leaders is a one-stop guide to the leading IP practitioners in the world. The handbook lists over 2,500 lawyers across patent, trademark, and copyright practices. Following an extensive nomination period, their research team vetted the nominated lawyers for suitability by exploring their work. This meant looking at practice history, industry expertise and notable cases, as well as any additional activities, such as writing and teaching responsibilities, which have allowed the lawyers to shape and influence other and future IP practitioners.

The post Twenty one Griffith Hack principals recognised as WIPR Leaders for 2024 appeared first on Griffith Hack.

Amplifying IP is a thought leadership series on best practice approaches to protecting and leveraging IP.

In his previous two articles, Principal and Patent Attorney, Rob Wulff discussed searching and the client meeting. In this article, Rob discusses patent claims drafting.

It’s probably fair to say that there are as many techniques for drafting a patent specification as there are patent attorneys. There are also several excellent books on drafting patent specifications that can be found with a quick search on the internet. So, the following suggestions are not intended to be gospel, nor exhaustive, nor are they alternatives to conventional wisdom; they are suggestions based on many years of experience drawn from some great patent attorneys who have worked long and hard at drafting patents for a diverse array of clients.

It’s all about the invention

In my early days as a trainee patent attorney, my experienced wizened mentors used to drum into us the importance of being clear in your mind about what the invention is, before you sit down to draft. The view was, that if you couldn’t articulate clearly to a colleague what the client had invented, then you had no hope of drafting a decent claim. I would add to this – that the invention should be an articulatable ‘concept’. In my experience, it’s important to clearly formulate and view that concept with the mind’s eye, and not be distracted, throughout the entire drafting process, by the expressions of that concept. Rather, the attorney needs to hold the broad concept in mind and keep referring to it as a touchstone.

Another of my mentors used to counsel us that the claim you draft should be ‘barely novel’. The claim should contain just enough expression to set it apart from the closest prior art. In my experience, this counsel works together with the articulatable ‘concept’ referred to above.

In short – it’s good to ask – has my claim captured the inventive concept?

Get it down then hold it up to scrutiny

As you begin to set your words down ‘on paper’, you should keep asking – “is there a better word to use”, and “what does this selected word mean?”. It’s good to run a smart look-up feature on each key word as you draft. AI patent drafting tools can be helpful in providing terms and expressions that are frequently used in the particular art of the invention, but of course be wary that undue and unintended limitations don’t creep in.

Many years ago, in 1946, a seminal paper was published by Eric Walter Eustace Micklethwait entitled “Brushing up our Drafting”¹. Micklethwait was an inventor in his own right as well as a patent partner at the well-known firm of Kilburn & Strode in the UK. My favourite test of his was “The Cussed Draftsman’s Test”. To apply this test, the drafter, as well as his colleagues, would sketch on paper what had been drafted – almost antagonistically. If the sketching proved difficult, or if the resultant picture contained unintended or unforeseen limitations, this was a sure sign that the claim needed revision, or scrapping.

There’s also no substitute to sitting down with an experienced colleague and having them cast a critical eye over your claims. For one, they will not be attached to your language, and their constructive criticism can offer a valuable perspective towards producing better claims.

Does it read well?

Einstein’s eldest son, Hans, once said of his father, that for him “The highest praise for a good theory was not that it was correct, nor that it was exact, but that it was beautiful.” The same might be said of a well-drafted claim.

In other words, its language should be clear, concise, and unambiguous. It should be a delight to read. At times I’ve had cause to read and interpret main claims that stretch for a page or more. Aside from finding it hard to keep track, a niggling thought is that this claim will be easily avoided. I’ve also had the opportunity to redraft some of those claims, and it’s been surprising to see how the very same inventive concept can be reduced to a single, short paragraph.

A well-drafted claim also contains connecting phrases that minimally and elegantly tie features together. Such phrasing should seek to define the working inter-relationships clearly and precisely.

Claim the novel features

The main claim should only include the features necessary to make the claim ‘barely’ novel. Sometimes a claim need only to define one novel feature. If that’s the case, don’t be scared to publish it.

In experience, subsidiary claims are often an after-thought. The best dependent claims should expand on the most important features of claim one or introduce new novel features. With the increasing global ‘tightness’ on overall claim number, it’s a waste to include subsidiary claims to features that are not novel or important.

Is there a product? Can it be a method? Is there a system?

Often with process-oriented inventions, the product claim can be forgotten. Is there an independent product claim that can also be drafted, that doesn’t depend on the process claim?

Similarly, with apparatus-oriented inventions, there may be a way of also expressing the invention as an independent method/process. Such a claim can often have a broader scope than the apparatus claim.

Sometimes, the best way to protect an invention is via a system-type claim. For example, novelty may reside in a combination of apparatus, devices or a combination of apparatus and process. System claims can also work well alongside product and process claims, as they can target the end-user.

Also, think about all the parties that might infringe, or contribute to infringement, in the commercial rollout of an invention. Consider whether any independent claims can be drafted that target such parties. For example a claim to a novel component to be supplied into an apparatus.

Teaching-type claims

Claims will be read by an Examiner and later may be read by a non-technical judge. Consider leading off with a claim that ‘teaches’ the inventive concept in greater detail, and then include broader and shorter independent claims later in the claim set.

Such teaching claims can help set the Examiner’s and judge’s mind as to inventiveness so that a favourable interpretation of later broader claims will follow.

Run it past the client

Ensure that the client provides input on the claims before you proceed with drafting the remainder of the patent. From my experience, this is best done in a face-to-face or video conference meeting. It’s important the client understands what you’ve drafted. You want the client to understand the scope you are seeking and to communicate that understanding to you. For example, do you both understand the commercial implications of such scope? If the client doesn’t understand what you’ve drafted, this should prompt further consideration.

Set the claims aside and read them later

Ideally, set your drafted claims aside and read them at least a day later. Also, revisit the claims again after you have drafted the Detailed Description. Sometimes, drafting the Detailed Description can give a new perspective on the inventive concept.

Play devil’s advocate for your claims, such as, assuming the role of an infringer seeking to design around them. This often leads to refining your claims.

Concluding comments

These claim drafting tips are not intended to be exhaustive. But, over the years, I’ve found them to be very helpful in producing patents that stand up to international scrutiny.

1. Micklethwaite, E.W.E. (1946) “Brushing up our drafting” Proceedings of the Three Hundred and Ninety-Second Ordinary Meeting of the Chartered Institute of Patent Agents. London ↩︎

The post Amplifying IP series – The art of drafting patents appeared first on Griffith Hack.

“We have significant breadth and depth of talent across the firm,” said Griffith Hack’s managing director Aaron LePoidevin. “It is wonderful to recognise hard work and strong performances in this way, and to support our colleagues with career growth.”

Find out more about our promoted team members:

Dr Megan Cole
Megan is a patent attorney based in Melbourne. She is technically qualified in chemical and biological engineering and has extensive experience in polymer chemistry. Before entering the IP profession, Megan trained as a postdoctoral scientist where she gained further experience adapting polymers for specific biological purpose and was awarded multiple prestigious fellowships and regularly published her research findings. Find out more about Megan.

Simon Gapes
Simon is a lawyer and trade marks attorney based in Melbourne. He specialises in trade marks with a practice that spans both contentious and non-contentious trade mark work. Find out more about Simon.

Dr Radhika Moore
Radhika is a patent attorney based in Perth. She completed her postgraduate studies in the field of mineral processing, looking at lithium extraction from hard-rock silicates and then went on to work as a process engineer, where she specialised in mineral processing. Find out more about Radhika.

Dr Arun Nagasubramanian
Arun is a registered patent and trade marks attorney in our Engineering and ICT team based in Sydney. He is an engineer turned researcher with a background in metallurgical and materials engineering. He has worked in quality control and contributed to research divisions of different metallic component fabrication companies in India. And in Singapore, Arun managed a chemical laboratory for performing materials, with his work published in several peer reviewed journals. Find out more about Arun.

The post Griffith Hack celebrates excellence with four promotions appeared first on Griffith Hack.

Below are Arun’s insights from the presentation.

In May I attended a fascinating presentation on bioenergy in Australia. Organised by the Australian Institute of Energy in Sydney. Here are some of the key themes that stood out for me.

1. Liquid biofuels

Jonty Richardson from Argus Media provided insights into liquid biofuels such as Sustainable Aviation Fuel (SAF) and biodiesel, the challenges in implementation and the possible policy pathways to improve uptake.

SAF and biodiesel can be produced from raw materials, such as used cooking oils, and other sustainable sources, such as forestry residues, oils obtained from seeds. Collection could be one of the challenges for certain types of waste, for example, used cooking oils generated in restaurants. There are a variety of processes that can be employed to produce SAF and biodiesel.

Currently, SAF and biodiesel remain expensive and would require some form of incentives to promote uptake. Interestingly, Europe, is planning to put in place mandates for the use of SAF[1] as a potential way to kickstart the uptake of SAF. This European example could be worth considering in terms of policy changes.

2. Biomethane and its use

Shahana McKenzie from Bioenergy Australia provided an overview of how biomethane could be integrated into existing integrated pipelines without the need for creating a separate infrastructure. With a similar chemical signature to natural gas, it can be fed into existing natural gas pipelines. However, it is necessary to scrub, clean and adjust the composition of biomethane before mixing it with the existing gas pipelines to satisfy regulatory guidelines in place for production, transportation and usage of natural gas.

One such project implemented in a collaborative effort between Jemena and Sydney Water is at the Malabar wastewater treatment plant in Sydney, as outlined by Brent Davis from Jemena. The anaerobic digesters located at this plant generate biomethane which is scrubbed, cleaned and then fed back into Jemena’s natural gas pipelines.

An interesting perspective that was raised was the idea of hydrogen being a facilitator, rather than a competitor (biomethane and hydrogen are both gases and would therefore compete for financial resources allocated for development) to facilitate the transition to renewables.

3. Policy pathways and facilitating agencies

From a policy perspective, there are plans to offer certificates that would allow purchasers of biomethane to claim benefits offered for reducing emissions. Purchasers would simply need to be connected to natural gas pipelines that carry biomethane.

A Bioenergy Roadmap has been set up by ARENA (Australian Renewable Energy Agency) that outlines the potential available in Australia, where bioenergy could fit into the overall energy scene and actions that would be required to realise the vision laid out. ARENA is also funding plenty of projects in this space.

The perspective I gained from this presentation was that Australia has tremendous potential for bioenergy and is well-poised to realise the benefits on offer as part of the transition to renewables. There are some low-hanging fruits, such as biomethane injection, community recycling centres that already collect used cooking oils, however, costs are still high and would require some form of incentives to facilitate uptake.

There are active discussions that are taking place between various stakeholders. Organisations such as Bioenergy Australia create a platform to facilitate such discussions and spread knowledge.

[1] https://www.trade.gov/market-intelligence/european-union-aerospace-and-defense-sustainable-aviation-fuel-regulation#:~:text=Beginning%20in%202025%2C%20fuel%20uplift,the%20EU%2C%20regardless%20of%20destination.

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Reducing examination wait times in New Zealand

In our second article of this four part series, Practice Group Leader – ChemLife, Amanda Stark and Patent Attorney, Dr Megan Cole, provide tips and tricks for bypassing examination wait times in New Zealand so the end goal – a granted patent – is reached expediently.

As discussed in Part 1 of this four-part series, the wait times for receiving a first examination report in Australia or New Zealand can be extensive, particularly for applications in the biotech, bio-therapeutics or chemical space.  Previously, we provided tips and tricks for reducing examination wait times in Australia.  Here, we shift our focus to New Zealand.

In New Zealand, not only is it necessary to voluntarily file a request for examination to initiate the substantive review process,[1] but the wait times for receiving a first examination report upon lodging the request currently range from 16 months to over 3 years.[2]

Average wait times for a first examination report in New Zealand

The significant delay in examination may pose damage beyond the mere inconvenience of waiting.  New Zealand has a notorious “5-year rule” for filing divisional applications, mandating a divisional application not only be filed within five years of effective filing date of the parent but also that a request for examination of the divisional application be made within that same five-year period.  Therefore, a means to expedite prosecution may be advantageous for applicants generally.

Here, we present tips and tricks which may be used to reduce examination wait times in New Zealand and, ultimately, expedite patent prosecution.

Tips and tricks for reducing examination wait times in New Zealand

Tip 1: Request examination upon filing

It is necessary to voluntarily file a request for examination within five years of the effective filing date of an application, which for PCT applications entering national phase in New Zealand, is five years from the international filing date.[3]  Typically, no direction to request examination will issue, placing the onus for lodging a request substantially on the applicant.[4]  Hence, an applicant’s inactivity can add years to their wait time for a first examination report, which when coupled with the current substantial delays at the Intellectual Property Office of New Zealand (IPONZ), can unnecessarily add years to the applicant’s wait for a granted patent.

Trick: The sooner a request for examination is made, the shorter the wait time will be. Requesting examination at filing can reduce wait times by as long as five years.

Tip 2: Request expedited examination

Expedited examination can be requested, including when making a request for examination,[5] but the request must be supported by ‘good and substantial reasons’[6] in the form of a statutory declaration or affidavit. ‘Good and substantial reasons’ include situations where the applicant faces a genuine risk of commercial and/or financial damages which may be circumvented by expediting examination, for example, an alleged infringement.[7]

Statements directed purely to the desire to commercialise and/or license a claimed invention in New Zealand are not considered ‘good and substantial reasons’ since ‘every application for a patent is for the potential purposed of commercialising the invention’.[8]

For example, IPONZ considers requests falling into the following scenarios provide ‘good and substantial reasons’ for expediting examination:

• where the applicant’s enforceable rights are likely to be breached or infringed as a result of delayed allowance of the claims;
• where the applicant is likely to suffer financial losses if allowance of the claims is delayed;
• where the applicant will be commercially disadvantaged if allowance of the claims is delayed;
• where there is a likely threat of the invention being stolen and/or remodelled by a competitor;
• where early allowance of the claims in New Zealand could provide a valuable therapeutic treatment of a disease or condition; or
• where there is an immediate commercial need, for example, signed licencing agreement that requires a granted New Zealand patent.

However, general commercialisation statements, such as the following, are not considered satisfactory:

• a statement that the applicant wants to commercialise the disclosed product;
• a statement that expedited examination would assist in the commercialisation of the invention;
• a statement that the applicant is concerned about a possible infringement threat that might exist;
• a statement that a number of the claims in the patent application were found to be allowable by an overseas IP office.  In this case, examination may be expedited using the Global Patent Prosecution Highway (‘GPPH’; see below);
• a potential or possible commercial reason, for example, conjectured plans for licensing to a New Zealand company; or
• a statement that the applicant wants to obtain feedback form the examiner on the merits of the application before a deadline to enter national phase or otherwise file in other jurisdictions.

Where a request for expedited examination is accepted, IPONZ aims to provide a first examination report within six weeks.[9]

Trick: Expedited examination can reduce the wait time for a first examination report from 16+ months to six weeks.

Tip 3: Enter national phase early

It is possible to enter national phase in New Zealand prior to the 31-month deadline,[10] including prior to publication of the PCT international specification.[11] A request for examination may be made at the same time; however, the application will not be queued for examination until after the 31-month deadline has passed.[12] This applies even where a request for expedited examination is made. That is, expedited examination will not automatically commence ahead of the 31-month deadline.

Thus, in general, entering national phase early in New Zealand affords little, if any, time saving advantage. A notable exception is where the applicant has a pressing commercial need. In such cases, it is possible to expedite examination ahead of the eligibility date by expressly indicating this preference in the request for expedited examination and by providing evidence supporting the reasons for making the request.[13]

Trick:  Entering national phase early can advance the examination timeline ahead of the 31-month deadline where pressing commercial interests are at risk.

Tip 4: Utilise the global patent prosecution highway (GPPH)

New Zealand is a participant in the GPPH. However, unlike Australia, there is no bilateral Patent Prosecution Highway (‘PPH’) between New Zealand and the European Patent Office.

Examination under the GPPH is available if:

• an associated foreign application has been examined by an ‘Office of Earlier Examination’[14] (that is, a GPPH participating Office[15]) and found to have at least 1 allowable claim,
• the NZ claims ‘sufficiently correspond’[16] (that is, are identical or narrower) to those in the associated application, and
• no examination report has issued on the NZ application.

IPONZ aims to provide a first examination report within 6 weeks (42 days) of a PPH request being allowed.

Trick:  Requesting examination under the PPH can reduce the wait time for a first examination report from 16+ months to about 6 weeks.

Key takeaways

The New Zealand Intellectual Property Office is facing significant delays in examining patent applications.  Consequently, for applicants seeking fast tracked routes to a granted patent, filing a request for examination early and/or seeking an expedited examination for allowable reasons is highly encouraged.

If you are interested in learning more about fast tracking a patent application in New Zealand, please do not hesitate to contact one of the knowledgeable attorneys at Griffith Hack today.

We also encourage you to look out for the next article in this four-part series, where we will present, Tips and tricks for delaying prosecution timelines in Australia.

[1]       Patents Act 2013 (NZ) s 64(1); Patents Regulations 2014 (NZ) reg 71(b).

[2]       New Zealand Intellectual Property Office, ‘Timeframes’, Support (Web Page) How long will I have to wait for my first examination report?

[3]        Patents Act 2013 (n 1) s 64(1); Patents Regulations 2014 (n 1) reg 71(b).

[4]        Patents Act 2013 (n 1) s 64(2); Patents Regulations 2014 (n 1) reg 72.

[5]        Patents Regulations 2014 (n 1) reg 77.

[6]        Ibid reg 77(1)(b).

[7]        New Zealand Intellectual Property Office, ‘Expedited Examination for Patent Applications’, Apply for a Patent (Web Page) Expedited examination under Regulation 77(1)(b).

[8]        Ibid Expedited examination under Regulation 77(1)(b).

[9]        New Zealand Intellectual Property Office, ‘Patents’, Timeframes (Web Page) Expedited Examination under the GPPH.

[10]       Patents Act 2013 (n 1) ss 46–52; Patents Regulations 2014 (n 1) reg 63.

[11]       New Zealand Intellectual Property Office, ‘Entry into New Zealand from a Treaty Application’, Apply for a Patent (Web Page) Early Entry into National Phase.

[12]       Patents Act 2013 (n 1) s 51(1)(b); Patents Regulations 2014 (n 1) reg 62.

[13]       Patents Regulations 2014 (n 1) reg 64.  New Zealand Intellectual Property Office, ‘Expedited Examination for Patent Applications’, Apply for a Patent (Web Page) Examination of Treaty Applications Prior to Examination Eligibility.

[14]       New Zealand Intellectual Property Office, ‘Mandatory Requirements’, Global Patent Prosecution Highway (Web Page).

[15]       World Intellectual Property Organization, ‘Global Patent Prosecution Highway’, PCT-Patent Prosecution Highway Program (PCT-PPH and Global PPH).

[16]       Ibid Claims to ‘sufficiently correspond’.

The post Tips and tricks for prosecuting patents in Australia and New Zealand – Part 2 appeared first on Griffith Hack.

At a firm level, Griffith Hack maintained our Gold ranking for Patent Prosecution, while also receiving a Bronze ranking for Patent Litigation. Read the feedback on us here.

Congratulations to our team members recognised:

Patent litigation

• Derek Baigent – Bronze
• Leanne Oitmaa – Bronze

Patent prosecution

• David Hughes – Gold
• Amanda Stark – Silver
• Karen Sinclair – Silver

Patent transactions

• David Hughes – Silver
• Emma Mitchell – Bronze
• Kellie Stonier – Bronze

Published annually, the IAM Patent 1000 shines a spotlight on the firms and individuals deemed outstanding in the pivotal area of patent law.

Learn more about our recognised principals below.

Derek Baigent

Derek Baigent is a lawyer specialising in intellectual property and technology. He has over 25 years’ experience representing companies across a broad range of industry sectors from electronics and telecommunications through to heavy industry and resources.

David Hughes

David has more than 30 years’ experience in intellectual property as a patent attorney. With combined skills in intellectual property and management, he advises clients on complex IP legal matters, developing and building patent portfolios and broader intangible asset strategy.

Emma Mitchell

Emma Mitchell is a lawyer based in Melbourne, whose expertise includes commercial contracts (including in relation to licence), supply, export, manufacturing, collaboration, research and development, branding and sponsorship, across sectors including consumer goods, fashion, design and manufacturing.

Leanne Oitmaa

Leanne Oitmaa is a patent attorney, trade marks attorney and lawyer based in Perth, who advises clients across the broad spectrum of intellectual property, from protecting strategies and prosecution through to commercialisation advice and enforcement.

Karen Sinclair

Karen provides advice across patent and trade mark portfolios for a diverse range of start-up and SME businesses in addition to well-known global multinationals in the chemical and pharmaceutical fields.

Amanda Stark

Amanda is one of the leading patent practitioners in the Australian biotechnology space.  She is also a key member of Griffith Hack’s leadership team, heading up the ChemLife practice group and leading the International Business Development and Foreign Associate Relationship program.

Kellie Stonier

Kellie is a lawyer and trade marks attorney based in Brisbane, with a strong reputation for maintaining, protecting and enforcing her client’s IP rights extends beyond Australia.

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