Amendments to patent and trademark legislation currently going through Parliament, are likely to impose new information exchange and information management requirements on New Zealand’s Intellectual Property Office (IPONZ).
The office has accordingly begun seeking information for a replacement of its eight-year-old ICT systems for managing information on intellectual property rights.
Amendments to trademark legislation bring New Zealand in line with international accords, the most far-reaching of which is the Madrid Protocol, providing for accelerated distribution of trademark applications made in a number of countries concurrently, spokesman Mike West says.
Under the Madrid protocol, a trademark application made in the country of origin will trigger electronic applications under other countries’ legislation according to the wishes of the applicant. In practical terms, the applications will be transmitted as XML documents and IPONZ’s system will have to be upgraded to receive and process these documents.
Other agreements provide for standard classification systems for the design elements of the trademarked goods and trademarks themselves.
Under the amendments it is proposed New Zealand be brought into line with these international systems and extensions, and extensions defined for New Zealand goods.
The Patents Bill, due back from Select Committee soon, proposes additional international checks on inventions that are the subject of a New Zealand patent application. Currently it is only necessary to prove “local novelty”, says West. Under the new law it will be necessary to prove the innovation makes an “inventive step” — a major advance in the field — and this check will be made internationally. Such a search will again require new ICT capabilities in IPONZ’s systems.
These capabilities should be integrated with records management, case management and search capabilities, says a preliminary Request for Registration of Interest (RoI).
IPONZ is looking for a “commercial off-the-shelf” piece of software to perform the tasks. A replacement is in any case advisable for the current system, which is “nearing the end of its useful life”, says the RoI document.
The RoI generated some excitement in online forums, where the mere mention of international agreements on intellectual property rights raises the spectre of the Anti-Counterfeiting Trade Agreement (ACTA).
IPONZ does not, however, deal with copyright, West says. Copyright is emerging as ACTA’s main business.
There may be scope at a future stage for an online connection from Customs posts to the new system, to facilitate checks in the case of suspected import of trademark-infringing goods, says West, “but that will not be provided for in the current build”.
Should this happen, it is likely to be at the request of Customs rather than IPONZ, he says.