Thank you all for your tremendous support this year. As you will read below you’ve kept us very busy, and we’ve had lots of eventful and exciting developments at CreateIP. We’ll be closing for the holidays from 19 December 2014 and re-opening 5 January 2015. As usual, instead of sending out cards we’re donating money to a charity, in this year’s case to KidsCan – a charity that supports disadvantaged Kiwi kids. Have a very Merry Christmas and we look forward to seeing you again in 2015!
Day Out at the Races
During the annual Cup and Show Week in Christchurch last month, Rachel Colley and Amanda Parr went along for the ‘networking’ and enjoyed a special day out socialising and watching the races. The weather was sunny, but on the cool side, which apparently helped to limit the sparkling wine indulgence!
China IP Bites
China continues to grow as a country where we frequently assist clients in making applications. Despite the challenges of doing business in China and IP risks, China remains a big and growing market. Robert recently attended a webinar with updates on Chinese IP law and here are some interesting sound bites.
• Due to a computer upgrade failure, the China trade marks office is now working with three different systems in parallel, all of which contain discrepancies. This means that trade mark applicants should carefully query rejections received to ensure they are real and not a result of a system discrepancy;
• The computer failure meant that for almost 3 months no examination occurred, hence a large backlog has arisen – some 2 million trade mark applications are in the queue for examination now. To catch up, the Chinese government has required examiners to work longer hours and meet strict time requirements for examination – just 15 minutes to process a trade mark application. Some examination reports are apparently poor quality, meaning extra costs to applicants to argue wrong objections.
• On a positive note for IP holders, there are now tougher penalties for IP infringement in China meaning IP rights have a greater value there than previously;
• As per previous advice, we still recommend filing trade mark applications early in China, as trade mark hijacking is still very prevalent. Also make sure you file Chinese translations and transliterations of your marks when funds allow in order to maximise your rights;
• Lastly, if you take the big step of enforcing your rights in China, think carefully about where to file, as not all courts in China are equal. The win rate for a foreign entity via the Beijing courts in 2013 was 55.2%, while in Shanghai the foreign entity win rate was 84.6%, and in Zhejiang the win rate was 95%. We can help guide you through this process if you are looking to file in China.
The Commercial Advantage of Jumping the US Patent Queue
Sometimes getting in first can really make a difference, especially when a granted patent in a major country can dramatically increase the value of an idea for investment or sale. The US Patent and Trademark Office is now offering a ‘track 1’ service that enables applicants to jump the queue for a fee. In our experience, we have had the first examination report or notice of allowance issue within as little as 2 months whereas, via the normal process, the first examination report or notice of allowance can take 2 years or more to issue. We see definite business value in taking the track 1 route, and this article explains why. A typical patent filing strategy involves the following steps:
1. File a provisional application (immediate)
2. File an international or PCT application (12 months)
3. File national applications e.g. USA, Europe, Australia, etc. (30 months)
4. National applications get examined over the next 1-5 years (42+ months)
5. National patents get granted post examination (48+ months)
The above process is fine if the objective is to defer costs, but the process is slow and the value of the IP remains lower for a long time. An examined and granted patent carries far more weight, as it is enforceable and investors like the certainty that a granted patent brings – anyone can apply for a patent but not all claims may be granted.
Getting your national patents granted early not only lifts IP value, it can also increase both your company value and interest from investors. By fast tracking your applications you can beat your competitors to a granted patent, or place yourself in a stronger negotiating position should there be crossover with a competitor’s pending patent. If your patent is granted, you have the upper hand.
The astute approach is to focus on one important market, and the ‘track 1’ USA accelerated examination step can really be beneficial. We’ve had great success in filing a national USA patent application at the same time as filing the international application, and lodging the USA patent with a track 1 request. Based on current exchange rates a track 1 request will add another USD 2,000 for a USA small entity (a company with less than 500 employees). We believe this additional investment is well worth the potentially valuable commercial gain.
Also consider that time moves far faster for some technologies than others. While a patent lifetime is 20 years, the value in your IP for a fast moving technology may be in the first few years. A rapidly granted patent will maximise the value of both your IP and your business in these early years. To learn more about this approach call Robert or Shayne on 03 374 6098.
Penang and the APAA Conference
Shayne and Robert recently spent a few days in Penang, Malaysia to attend the annual Asian Patent Attorneys Association (AAPA) conference. We networked with our global contacts, received some IP updates on recent IP law changes, and put some faces to names that we’ve been working with over the years. As you can see below, we also managed to spare a few hours to explore the area and sample the cuisine.
Helping clients to protect their products and gain competitive edge is extremely gratifying – especially when they achieve significant milestones. Our client SolarBright has been gaining fantastic ground in its target markets with its Pateye™ product and strong interest from investors, after we helped them to secure their first and, about-to-be-granted second US patent. We’re thrilled that they also won the ‘Emerging NZ Innovator’ top prize at the NZ Innovation Council’s annual awards ceremony.
Paul Barron of Barron Surfboards, another of our clients, is also enjoying good success. He devised a novel surfboard design for which we obtained patent protection and provided IP commercialisation and strategic advice. His design has received some solid overseas interest and you may see his boards in the waves globally before too long.
Comvita hit a major milestone, turning 40 years old last month. Big congratulations! To celebrate, they had a 70’s themed party with various 70’s outfits on show including Brett Hewlett, Comvita’s CEO (pictured) who lead the way.
Last but by no means least, our client Dion Kerr of Mr Box has won the NZ Sustainable 60 Awards category for best small business. We’ve been working with Dion since the outset to secure patent protection for his innovation – a reusable aluminium foundation boxing system to contain a freshly laid concrete foundation. The Mr BoxTM IP underpins the company’s strong market position, which has grown from a one-man- band in 2011 to a staff of 13 fulltime personnel today.
Christmas Themed IP News
According to a Forbes report anyone caught using the name “Rudolph” together with an image of a red-nosed reindeer-like animal without permission could be sued for breaching a trademark owned by Classic Media – a New York City-based entertainment rights company that also owns the IP rights for Lassie, Frosty the Snowman and the Little Drummer Boy.
No “Ho Ho Ho”?
And if you think that’s a tad Scrooge-esque, best you don’t read this next paragraph aloud to your kids. British company ‘Father Christmas’ and owner of Santa-Claus.com applied to the US Patent and Trade Office to file trademark rights to the name “Santa Claus” in 2000. But applying for the trademark rights to the name of a living person requires written consent from the person to have his or her name trademarked. By granting the application the US patent office put on record the first official government admission that there is no Santa Claus!
Camping this Summer – Try a Jero Tent for Some Style:
Not a company or product we currently work with but one we like is the Trakke Jero Tent www.trakke.co.uk – if you are a glamper and not a camper this represents a very civilised way of sleeping under the stars. Happy holidays!