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At-a-glance: IPONZ 205 Victoria Street, PO Box 9241, Marion Square, Wellington 6141, New Zealand Tel: +64 3 962 2607 Email: info@iponz.govt.nz Website: www.iponz.govt.nz "I think the global financial crisis brought a lag," says one IP professional.... [more]

"I think the global financial crisis brought a lag," says one IP professional. "Corporate expenses got cut. Downstream spending on patent applications has been less than in the boom years, but business is getting back to normal now." IP practitioners observe that work has picked up in the last year and agree that New Zealand has been less exposed to and able to weather the financial crisis more smoothly than the major economies.

The latest report by the Intellectual Property Office of New Zealand shows that the number of trade mark applications increased by 5% compared to the previous year. PCT national phase filings saw a marginal reduction of almost 4%, but standard patent applications rose by more than 16%.

"There's been a decrease in international applications," comments one market observer. "But then I don't think New Zealand really is a country where major companies consider filing. Australia is a larger market."

Contentious matters have also been steady as IP owners remain keen to enforce their rights. "People are looking at where they can save money and whether they need to file," says one IP practitioner. "But if someone comes along and seems to be taking their market share then they're happy to spend money."

"In the pipeline" and "pending" are two ways IP practitioners have described legislative

developments in the country, with bills proposing patent, trade mark and copyright amendments awaiting further readings in Parliament. A proposal to crack down on software patents surprised many practitioners and may be revised.

Meanwhile, the Copyright (Infringing File Sharing) Amendment Bill proposes a controversial introduction of a three-strikes system for copyright infringement and lays out provisions for internet protocol address providers (IPAPs) on how to handle misbehaving users.

While the country intends to adopt the Madrid Protocol, passage of reforms to the Trade Mark Bill has stalled, and attorneys say it is uncertain when the accession will happen.

In light of Muir Electrical Company v The Good Guys Group, a notice of opposition to a trade mark registration must be received and granted before the deadline. The Commissioner has no power to give an extension of time after the deadline has expired.

With the Rugby World Cup later this year, lawyers say the Major Events Management Act, which prohibits ambush marketing and unauthorised usage of emblems, words, goods and services, will be effective in combating counterfeiters and infringers.

"AJ Park has high quality and fantastic depth of patent expertise built on its prosecution practice," observes one peer, while another praises: "AJ Park is really good. It belongs in tier one." While peers also note that it has lost senior partners in the last few years, the country's largest IP firm stays strong in tier one across the board for its dominating market share and well-respected talent pool, with one rival saying: "Greg Arthur is probably the best litigator in New Zealand."

"AJ Park is very friendly and thorough," says one in-house counsel. "In the trade mark area, there is none better in the country. Damian Broadley is practical and commercial. He's a good advisor and keeps notice of the practice inside out." One of the firm's trade mark clients also comments: "We're very pleased with this firm." "Jonathan Aumonier-Ward does most of our work. He is very attentive in acting on our behalf."

Aventis Pharma is enlisting the firm in a pharmaceutical patent infringement case against InterPharma. The matter involves a generic formulation of Docetaxel, a chemotherapy drug.

With 11 partners and almost 20 more professional staff members, Baldwins remains strong in all areas. "They are excellent," says a client who turns to the firm for trade mark portfolio management. "They are timely and easy to deal with – they get the job done."

"Tim Jackson and Sue Ironside are very approachable, always contactable and always willing to help," says a long-time patent and trade mark client. "They explain things in a way that is very easy to understand for people without law experience." Jackson made up part of the team that advised Ravensdown, an agricultural fertiliser supplier, against Ballance in a patent opposition and subsequent appeal to the High Court.

In a copyright ownership dispute, senior associate Gus Hazel helped Information Tools in an application to the High Court for an urgent interim injunction. The matter concerned whether or not the client had a right to claim ownership for a programme developed by Codeshed.

Shelley Rowland is described by one client as "diligent and very knowledgeable," while another compliments Penny Catley as "professional, prompt, practical and a nice person to work with".

Other highlights include the team's representation of Lacoste in the long-running battle with Crocodile International as well as its assistance to LanzaTech in managing the biotech company's growing IP portfolio. "Baldwins has been there protecting our IP for the last 15 years," says one client in the entertainment industry. "It is extremely thorough, prompt and good at coming back to us."

"In our experience, Baldwins' professional services have consistently been of the highest standard," says one client who seeks the firm for advice on patentability, freedom-to-operate and licensing issues. "They offer well-considered and commercially prudent advice. We almost feel like they are part of the company's in-house counsel."

"Its advice has shown good knowledge of the law," says one client who looks to the firm on copyright issues. "It has been timely, practical, relevant, and has enabled me to resolve the issues without escalation to more formal legal proceedings." This client singled out Kate Duckworth: "I've found her to be approachable, knowledgeable and timely with advice."