2025 Issue 1
Pipers IP Bulletin 2025-1
Recent developments in intellectual property law and practice with an Australasian focus.
Contents
Patent and Design Marking in New Zealand
It’s just a jump to the left, and a step to the right – divisional time warp pending
Betting on Allowability of Late Patent Claim Amendments Proves Too Risky
Supreme Court Upholds Copyright in Artworks Qualifying as Relationship Property
Patent and Design Marking in New Zealand
1. Introduction
Patent and design marking are practical tools used by rights holders to notify the public that a product is protected by patent or design rights and to signal legal protection against copying. While not mandatory under New Zealand law, marking offers enforcement benefits and can strengthen a party's legal position in the event of infringement. Markings can also serve other purposes, for instance, they may help to demonstrate to customers or investors that your products are innovative. These markings are typically applied as physical markings on the products or its packaging. Nowadays, virtual marking is also gaining importance as a flexible and efficient way to communicate IP protection; however, it is not yet recognised as a legally sufficient form of notice under New Zealand law.
2. Patent Marking
New Zealand’s Patent Act 2013 does not impose a requirement for patent markings. However, the New Zealand Patents Act 2013 includes provisions designed to promote the marking of patented products to support enforcement.
Under Section 153 of the Patents Act 2013, the court must not award damages or an account of profits for patent infringement. In other words, a Court will not award damages for patent infringement if the alleged infringer proves that, at the date of infringement, they did not know and could not reasonably have known that the patent existed. Proper marking (with the NZ patent number) may be a helpful factor in showing that the defendant had reasonable grounds to be aware of the patent. To help ensure third parties are considered aware of your patent rights, when marking the product (or its packaging), it is advisable to include clear and specific details such as the patent or application number and country (e.g., "NZ"), as general statements like "Patented Product" may not be sufficient.
Typical examples of patent marking in NZ include:
New Zealand Patent no. XXXXXX, NZ Patent no. XXXXXX, New Zealand Patent Application no. XXXXXX, NZ Patent Application No. XXXXXX.
3. Design Marking
As with the Patents Act 2013, New Zealand’s Designs Act 1953 also does not impose a requirement for design marking. However, the Intellectual Property Office of New Zealand (IPONZ) provides guidance on marking registered designs, and New Zealand’s Designs Act 1953 includes provisions designed to promote the marking of registered designs to support enforcement.
According to IPONZ:
“You can mark the article or its packaging with the unique IP number (for example, 'NZ Des. Ap. No. …' or 'NZ Des. No.'). In New Zealand, the application and registration number remain the same, and information like owner details and status can be checked by searching the Design Register. It is an offence for anyone to falsely claim that they have a registered design.”
Section 13 of the Designs Act 1953 implies that in infringement cases a defendant will not be required to pay damages or account for profits if they can prove they genuinely did not know, and had no reasonable reason to believe, that the design was registered in New Zealand at the time of infringement.
And a product will not be considered properly marked for the purposes of defeating an innocent infringement defence unless the marking of the product includes the word “registered” (or an abbreviation), accompanied by the words “New Zealand” or “NZ” and the design registration number.
So, for example, “Registered Design” on its own is not enough—it must say something like:
NZ Registered Design No. XXXXXX, New Zealand Registered Design No. XXXXXX
However, it is an offence to mark a product inaccurately or misleadingly that a design is registered in New Zealand or to suggest that a design is still protected after its copyright in a registered design has expired. This includes marking products with phrases like “registered in New Zealand” when no valid registration exists.
Typical examples of design marking in NZ include:
New Zealand Design No. XXXXXX, NZ Design No. XXXXXX, New Zealand Design Application No. XXXXXX, NZ Design Application No. XXXXXX
4. When Is It Appropriate To Mark Your Product?
You may mark a product once a design application or patent application has been filed in New Zealand. However, if marking is done after filing but before grant, it must not be misleading. In such cases, you must clearly indicate that an application is pending. For example, you may use:
“NZ Patent Application No. XXXXXXX”
“NZ Design Application No. XXXXXXX”
This type of marking is acceptable as long as it accurately reflects the status of the application.
All markings, whether for pending or granted rights, must be accurate and include the words “New Zealand” or “NZ”, along with the correct application or registration number, to avoid false representation.
5. No Marking? Still Enforceable
Unlike some jurisdictions which limit damages in the absence of marking, New Zealand allows full enforcement of patents and designs even if the product is not marked. However, failure to mark may weaken a claim that an infringer had actual or constructive knowledge of the IP right, which is a relevant consideration under both Section 153 of the Patents Act 2013 and Section 13 of the Designs Act 1953.
6. Virtual Marking
An alternative way is to use virtual patent or design marking where the relevant IP rights are listed on a publicly accessible website rather than directly on the product.
In such cases, the product or packaging may simply include the words such as “patented” or design registration along with the website address or a QR code that leads to a page listing the related IP rights. This page can also include details like the status of those rights, priority dates, and any other relevant information. One main advantage of virtual marking is its flexibility, it allows for easy updates, as the status of patents or designs changes, or as new applications are filed, without need to re-label physical products. For example, if a company launches a new product line covered by multiple pending and granted patents across several jurisdictions, they can simply update the online list referenced by the virtual marking (e.g., website URL or QR code on the product) to reflect the current status. This avoids the cost and logistical challenges of modifying packaging every time there is a change in IP protection.
To implement virtual marking successfully:
- Create a public webpage listing all relevant IP rights associated with each product. This page may include clear details such as patent or design numbers, application numbers, filling and grant dates, jurisdictions, the current legal status of each right and the corresponding product or model numbers.
- Label products or packaging with words such as “patented” or “design registered” along with a URL or QR directing users to the IP webpage.
- Keep the information accurate and updated as patents/designs status changes.
- Design the page to be clear, searchable and user-friendly.
- Ensure that the information is freely accessible to the public.
Virtual marking can significantly simplify export and import of goods by consolidating all relevant IP information in a single, centralised location. A dedicated webpage containing all IP rights across various jurisdictions for a particular product serves as a clear and accessible source of information for international stakeholders.
To avoid confusion for international users or third parties, the virtual marking page should explicitly identify the jurisdiction associated with each IP right, for example, “NZ Patent No. XXXX” or “US Design No. XXXX”. This clarity helps ensure that users understand the scope of protection in each region, facilitating smoother cross-border trade and enforcement.
As more jurisdictions adopt virtual marking laws, it is anticipated that this practice will further streamline global trade, reduce compliance complexity, and support efficient IP enforcement on an international scale.
While the United States and the United Kingdom have formally recognised the use of virtual marking, this is not the case yet in New Zealand. However, it may still play a useful role in providing constructive notice to others, especially when combined with traditional marking methods. Given the trend towards digitalisation and harmonisation of international IP practices, it is conceivable that New Zealand may in future consider legislative reform to formally recognise virtual marking. Until such legislative reform is enacted, the safest approach would be to use physical marking. However, if you wish to use virtual marking, it should be employed only as an adjunct, particularly useful for international trading contexts where virtual marking is recognised.
Given the differences in legal recognition across jurisdictions, we recommend consulting with an intellectual property professional to determine whether virtual marking is a suitable and legally sound option for your products.
7. Key Points
- Marking is not mandatory, but it is a valuable tool to signal legal protection, deter infringement and strengthen enforcement rights.
- The Patents Act 2013 and Designs Act 1953 do not require marking, but both acts contain provisions that encourage accurate marking to help establish notice in infringement cases.
- For patents, Section 153 of the Patents Act 2013 outlines that properly marked products (with the NZ patent number) may help demonstrate that an infringer had constructive knowledge of the patent.
- For designs, Section 13 of the Designs Act 1953 provides that to overcome an innocent infringer defence, the marking must include the word “registered,” along with “New Zealand” or “NZ” and the design number.
- Marking is appropriate after a patent or design application has been filed. However, markings during the pending stage must be clearly labelled as such to avoid misleading the public (e.g., “NZ Patent Application No. XXXX”).
- Failure to mark does not prevent enforcement in New Zealand but may make it harder to prove the infringer had knowledge of the rights.
- Virtual marking (e.g., referring users to a webpage listing IP rights) may be a useful strategy, especially for companies with large or international IP portfolios.
It’s just a jump to the left, and a step to the right – divisional time warp pending
As previously noted, in March 2025 the Ministry of Business, Innovation and Employment (MBIE) proposed to amend the transitional provisions of the Patents Act 2013 which concern currently pending divisional applications that qualify as being filed under the Patents Act 1953.
The proposal was soon thereafter introduced to Parliament as the Patents Amendment Bill 2025, which has had its first reading and is currently with the Economic Development, Science and Innovation Select Committee, who are due to report back by 17th January 2026.
The Bill’s proposed amendments will apply the Patents Act 2013’s higher standards for novelty, obviousness and support to pending 1953 Act divisional applications during examination and subsequently commenced opposition, revocation or re-examination actions or requests, with those higher standards being applied on a balance of probabilities basis.
Although somewhat simplified, the relevant differences between the current and preceding Patents Acts can be summarised as:
Patents Act 2013 Patents Act 1953
Novelty: Absolute (worldwide) novelty with Local (NZ) novelty including
whole of contents and a grace disclosures available in New
period for disclosures by the Zealand via the internet, with
applicant of 12-months prior to prior claiming and a grace
the filing date. period of 6-months in limited
situations.
Inventive Examined for and ground for Not examined for, but a ground
Step: opposition, revocation and for opposition or revocation.
re-examination.
Sufficiency: Claims must be supported by the Claims must be fairly based on
matters disclosed in the complete the matters disclosed in the
specification. complete specification.
Evidential Balance of probabilities. Benefit of the doubt goes to the
Standard applicant.
This proposal is not new. They have been carved out of MBIE’s 2019 Discussion Paper for the Proposed Intellectual Property Laws Amendment Bill 2019 discussed earlier here, the remainder of which has yet to be introduced to Parliament – although indications have been given that it will occur before year’s end.
The main justifications for the current proposal is that it would reduce IPONZ operational costs and would allow New Zealand based manufacturers to be more competitive on account of not being subject to wider scope patents than their foreign based competitors.
In the 2019 discussion paper it noted there were about 770 pending divisional applications under the Patents Act 1953. When the March 2025 draft proposal was released there were only 81 pending applications under the Patents Act 1953 from which any relevant future divisionals could be filed. Currently, that number has reduced further to 69. Of these, only 10 are by New Zealand based applicants. The Australian sleep and respiratory device company ResMed Pty Ltd has 26, while the next highest is the USA company Regeneron Pharmaceuticals Inc with 6.
Despite there being a significant drop in the number of pending divisionals under the Patents Act 1953, MBIE considers there is need for legislative amendments that will (effectively retrospectively) apply the novelty, inventive step and support requirements under the Patents Act 2013 to the remaining pending divisionals under the Patents Act 1953.
Any future divisionals from those pending divisionals cannot have a submission date more than 20-years from the filing date of the ultimate parent application, meaning that each year some of those are ineligible for having future divisionals filed out of. As such, even if divisionals continue to be filed from the remaining pending divisionals, between now and September 2034 under the current system the number of pending divisionals that become ineligible as the basis of a future divisional during the following years is as below:
2025 2026 2027 2028 2029 2030 2031 2032 2033 2034
1 2 3 3 6 9 7 17 10 11
In addition to the above 69 applications that are under examination there are a further 13 pending applications, all in the name of ResMed Pty Ltd – 5 with the status ‘accepted’ and 8 with the status ‘under opposition’ with Fisher & Paykel Healthcare Limited being the opponent. The proposed amendments will not apply to those 13 applications or any of the other 69 pending applications that are accepted before the amendments enter into force.
Betting on Allowability of Late Patent Claim Amendments Proves Too Risky
In Angel Playing Cards Co Ltd [2025] NZIPOPAT 6 the Assistant Commissioner (AC) refused claim amendments that were only made after the section 71 deadline had passed.
Declaration of House Advantage
Angel Playing Cards’ application concerns a casino game management system that in addition to calculating the casino’s win or loss for specified periods of time or instances of a casino game for each or a combination of tables, can also detect misconduct, a mistake or fraud in betting or settlement of a chip. Through the combination of surveillance cameras for monitoring play, artificial intelligence (AI) for image recognition and radio-frequency identification (RFID) tags buried in betting chips, bets can be tracked and an alert raised when an unusual situation relating to betting or profit is identified.
The combined use of surveillance cameras, AI and RFID tags in chips for various purposes by casinos was already known to those skilled in the art prior to the priority date. The initial examination reports raised and maintained a lack of inventive step objection in relation to all claims, as the claimed subject matter was considered to only differ from the cited prior art in ways that were obvious adaptations of the prior art.
Last Call for Bets
The section 71 deadline by which the application needed to be placed in order for acceptance was 9th February 2025. In its response just prior to that deadline the applicant submitted 18 claims for consideration, with claims 1, 3, 17 and 18 being independent claims, claim 2 being dependent on claim 1 and the remainder ultimately being dependent on claim 3. The only amendments made amongst those 18 claims were amendments to claim 1 and making two of the claims that were dependent upon claim 3 dependent upon claim 1 instead.
The relevant amendment to claim 1 involved adding an alarm function to the claimed casino game management system, which would generate an alarm when its AI capabilities determined that a unique or noteworthy situation concerning the casino’s profit or loss had arisen. The specification as filed contained sufficient support for the amendment. The examiner’s final report issued shortly after the section 71 deadline, with the examiner agreeing that the added alarm function is neither explicitly disclosed nor obvious to the skilled person based on the cited prior art. While the cited prior art included alarm function capabilities, the alarm was not generated when the profit rate calculated from the total betting amount is determined to be a unique situation by the AI. The AC agreed with that finding. Consequently, claims 1, 2, 15 and 16 were accepted.
Late Bets Disqualified
However, the inventive step objection was maintained for independent claims 3, 17 and 18 and the claims dependent on claim 3. At the hearing the applicant sought to amend claims 3, 17 and 18 by essentially adding in the same alarm function that was added to claim 1. While acknowledging that adding that subject matter to the claims would overcome the inventive step objection, the AC refused to allow those amendments. The primary reason being that the section 71 deadline had passed. While the AC has some discretion to allow late amendments it was held that the applicant could have made the amendments prior to the section 71 deadline passing and there were no extenuating circumstances that favoured allowing late amendment. Consequently, the application was only held to be allowable for claims 1, 2, 15 and 16, which would need to be renumbered as claims 1, 2, 3 and 4.
Hedging Bets?
Given that the legislation and previous decisions have been quite clear about late amendment only being allowed in exceptional circumstances, it looks like the applicant hedged their bets by amending some claims while seeking the hearing officer’s opinion on the examiner’s lack of inventive step finding for others. This can be a reasonable strategy when the section 71 deadline prevents further argument with the examiner and broader protection is important to the applicant.
Cashing Out
As the hearing involved challenging the examiner’s inventive step findings the determination of whether the differences from the prior art constitute steps which would have been obvious to the person skilled in the art or whether they require any degree of invention were made without the assistance of expert evidence. Such expert evidence invariably features in third-party opposition and revocation proceedings where the existence of an inventive step is contested. It will be interesting to see whether any third parties seek to challenge the existence of an inventive step in the allowed claims.
Supreme Court Upholds Copyright in Artworks Qualifying as Relationship Property
The Supreme Court has confirmed both that copyright in artworks fall within the Property (Relationships) Act 1976 (PRA) definition of ‘property’ and that those copyrights should be classified as relationship property if that property was ‘acquired’ during the relationship.
Background
As discussed in our earlier articles here, here and here, both the High Court and the Court of Appeal rejected the Family Court Judge’s finding that the copyright solely belongs to Ms Alalääkkölä on the basis that the skill required for producing the artworks preceded the relationship. Both higher Courts held that the use of prior acquired skills during a relationship does not justify putting the property (including intangibles such as copyright) so produced or acquired beyond the reach of the PRA. Those Courts consequently found the copyrights to be part of the bundle of relationship property that was to be shared equally. The High Court left the specifics of the sharing to the discretion of the Family Court. However, the Court of Appeal considered it appropriate and in-keeping with the PRA’s ‘clean break’ principle to grant Ms Alalääkkölä’s request that the copyrights be solely vested in her with an appropriate adjustment to the division of other relationship assets. Despite being granted that request Ms Alalääkkölä appealed on the questions of whether copyright is ‘property’ under the PRA and if so can copyright be relationship property under the PRA.
Is copyright “property” under the PRA?
The Supreme Court began answering this question by elucidating the rights available under the Copyright Act 1994. That Act expressly provides at sections 113 and 120 that copyright is a property right, being transmissible as personal or movable property and with forms of relief for infringement being the same as any other property right. It also distinguishes copyright from moral rights, with the former being a bundle of economic rights which may be sold or assigned and the latter being a bundle of personal rights which a living author cannot assign to others. While the Supreme Court acknowledges at [22] that the waiver of moral rights can involve monetization, the inability to assign moral rights means those rights do not qualify as property, whereas copyright does. On account of qualifying as personal property copyright qualifies as property under the PRA and there was no reason to exclude intangible personal property from the PRA’s definition of property, which, amongst other things, recognise the value of the bundle of economic rights that copyright embodies. While the recognition of copyright as a property right under the PRA can result in reasonable concerns regarding its court ordered allocation under the PRA, that does not negate copyright from being a property under the PRA.
Can copyright be relationship property under the PRA?
Section 8 of the PRA defines relationship property and the most likely provision of that section under which copyright in the paintings could qualify as relationship property is section 8(1)(e), which, subject to some exclusions, concerns all property ‘acquired’ by either partner after their relationship began. The Supreme Court considered this provision was satisfied for the following reasons:
(i) in ordinary usage, “acquire” can mean “to get or obtain by any means”, which is a meaning wide enough to include things made or created by the owner;
(ii) the PRA uses “acquired” in a way that is consistent with it including property created during the relationship;
(iii) Section 18(1)(d) of the PRA includes the creation of relationship property as one of the contributions a partner can make to a relationship; and
(iv) copyright is a bundle of rights, each of which can naturally be said to have been acquired when a work is created.
While the creation of the works involved the author’s personal attributes and skills, the works produced can also be a product of the division of effort within the relationship. The author’s attributes and skills, whenever acquired, are not property, but the creation of an artefact to which copyright attaches through the use of those attributes and skills during the relationship makes that artefact relationship property. Consequently, the copyrights in the paintings must be brought into account in the relationship property settlement under the PRA.