IP law changes in New Zealand

The Comprehensive and Progressive Trans-Pacific Partnership Agreement (CPTPP) provides a common set of rules for intellectual property in a number of Pacific Rim countries that are party to the agreement. Canada, Australia, Mexico, Japan and Singapore have already ratified the deal.(1) New Zealand is the most recent country to take steps towards ratification of the CPTPP, although some legislative changes are required before ratification of the agreement can be completed. This article outlines the legislative changes taking effect in New Zealand from 30 December 2018.(2)

1. Grace period for patents

New Zealand will introduce a new grace period for patent applicants in the event of unintended prior disclosures of their invention that have occurred in the 12 months before a complete patent application is filed. It will apply to disclosures by or with the authority of the applicant, or by a person such as an inventor from whom the applicant derives title.

These legislative changes will be applicable to events that occur on or after commencement of the CPTPP, i.e. disclosures made on or after 30 December 2018.

2. Performance rights

As part of the CPTPP, performing artists are entitled to receive moral and intellectual property rights for any public or recorded performances, applicable especially to actors and musicians. These performance rights are similar to those rights given to authors of copyright works(3). At present time, New Zealand has yet to implement this change.

3. Copyright law

Upon effect of the CPTPP, New Zealand Customs will also acquire new powers, specifically the authority to act on their own initiative to temporarily detain suspected infringing copyright or trade mark articles from being imported into, or exported from, the country. This legislative change will assist copyright or trade mark owners in taking infringement actions against importers and exporters of such goods.

Other provisions offered as part of the CPTPP include improvements to practices in dealings with traditional knowledge and cultural expressions. Specifically, measures will be taken to preserve, promote and respect such information in intellectual property law. The CPTPP also includes provisions for using patented medicines for obtaining information required for the purposes of regulatory approval of generic medicines. New Zealand will be obliged to inform pharmaceutical patent holders of the approval of any generic versions of their product, and to permit sufficient time for these holders to initiate preliminary injunctions to resolve any patent disputes that may arise prior to launch of a generic product. Parties to the CPTPP will also be required to provide 1 year protection on data for new agricultural chemicals. Lastly, the High Court in New Zealand will have authorisation to award for “additional damages” in cases of trade mark infringement, similar to the provisions for copyright infringement in New Zealand. These provisions have already been implemented in New Zealand legislation.

1.Australian Government, Department of Foreign Affairs and Trade website.
2.S71, 72 and 77 of the CPTPP will be applied as new law in New Zealand, on or after 30 December 2018.
3.Copyright Act 1994 (NZ) s16, s169

This article was written by Dr Vanessa Yeung.

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Jones Tulloch’s articles are provided as general information only, current at the date of publication. They do not constitute professional (patent and trade mark attorney) advice and should not be relied upon as such. If you need specific professional advice, for example in relation to a matter of interest arising from this communication, please contact us.