New Zealand's Designs Amendment Regs now promulgated

Further to our earlier post, "New Zealand, new zeal from Ministry in seeking feedback" (here), we have received some further information from Mike Hawkins (Baldwins) which readers should note. He informs us as follows:

The Designs Amendment Regulations 2011 have in fact been promulgated . In their final form the most important changes can be summarised as follows: 

(i) an abandoned design application or lapsed design registration may now be restorable provided that applications for restoration are made within 3 months of abandonment or within 12 months of lapsing respectively. Any 3rd party opposition to such restoration is required within 2 months of the application being advertised in the Official Journal; 

(ii) a 3rd party which made use of the design while the application was abandoned or the registration was lapsed , or made definite steps to do so,has continuing ( but no more extensive) rights to use the design post-restoration .Those ongoing rights, unfortunately in my view ,are more extensive in respect of 3-D design registrations than the same 3rd party will have in respect of any related copyright works, such as drawings or prototypes ,under the Copyright Act 1994, where the right to use the copyright works is extinguished on restoration of the registration. This means that the 3rd party may be protected under the Designs Act for continuing use of of a restored design but not under the Copyright Act; 

(iii) an applicant may now request that issuance of the Certificate of Registration is delayed by up to 15 months from the application date; 

(iv) the Commissioner of Designs is now empowered to publish the basic details of pending design applications , including their date, number and those details appearing on the application form; 

(v) electronic communication between the applicant and the Commissioner of Designs is now permitted."

New Zealand, new zeal from Ministry in seeking feedback

Next Tuesday, 19 April, is a big day for designs in New Zealand -- it's the day the country's Designs Amendment Act 2010 comes into force (as noted this time last year by the ever-observant Class 99 team). What's it all about? In brief:

* Responses are invited.  The Ministry for Economic Development has to draft new regulations to go along with the new Act. Accordingly it is asking for comments on its proposals. 

* Restoration of lapsed registrations.  Applications for restoration must show that the lapse was unintentional. The commissioner may extend the (proposed six-month) period within which restoration may be sought, so long as the applicant demonstrates that he has applied for it without undue delay -- and pays an extra fee.  

* Protection of third parties. It is proposed that innocent third parties using a design after registration has lapsed will be able to carry on doing so even after registration is restored, as in Australia and the UK, but with the difference that the third party would not be entitled to increase its manufacturing output post-restoration. 

* Postponing registration. It is intended to run a formal system for postponing registration of a design after filing of an application, so the applicant can keep the content of his application confidential so that competitors won't know what he's up to. 

Source: "Draft amendments to designs regime" by Michael Brown (A. J. Park), International Law Office, 11 April 2011 (which has more detail, particularly concerning postponement).

Asian applications- an analysis

APAA, the Asian Patent Attorneys Association, held their Design Committee meeting in Jeju, Korea on 17th October under the joint chairmanship of Minako Mizuno and Peter Heathcote.  The meeting concentrated on practical issues of what can be filed as a design, and included whether:

• designs are available for separate component parts of products,
• designs are available for integral parts of products,
• designs are available for icons,
• multiple designs are available,
• sets are available,
• dashed lines can be used,
• statements of novelty are required.

 You can find the extremely detailed sets of responses from the official groups of Australia, Hong Kong, India, Indonesia, Japan, Korea, Malaysia, New Zealand, Pakistan, Philippines, Singapore, Sri Lanka, Taiwan, Thailand and Vietnam on APAA's 2010 website here.