New Zealand: Did you know......we have been ranked highly by WTR 1000 - the World’s Leading Trademark Professionals
Last Updated: 15 April 2012

James & Wells is ranked highly internationally by WTR 1000

WTR 1000 2012 - The World's Leading Trade Mark Professional magazine - has ranked James & Wells IP services highly based on their research interviews for the IP work we have undertaken for clients in New Zealand and internationally in the last year. Here's what they say about our firm:

This dedicated boutique is renowned for its staunch representation of major local clients, as well as for its personalised and tailored service. The influential team provides a full range of prosecution1 services, including searches, registration, monitoring and protection strategies. A separate group deals exclusively with disputes and litigation, advising on infringement2, revocation3 and opposition4 proceedings, on top of domain name disputes and alternative dispute resolution. The litigation outfit boasts substantial experience in creating anti-counterfeiting strategies and advising on surveillance, drafting, filing customs notices and resultant civil court action. Ian Finch is a key player in litigation and frequently appears before the High Court, the Supreme Court and the New Zealand Intellectual Property Office. He is particularly skilful at representing companies in the engineering, manufacturing and construction industries; Golden Homes and Illinois Tool Works are among his clients.


1 The carrying out of a legal proceeding. The prosecution of a patent application refers to the process of filing the documents constituting the application and the process of examination of the application.
2Refers to the commission of a prohibited act with respect to a patented invention without permission from the patentee. In New Zealand, the Deed of Letters Patent confers on the patentee a monopoly to make, use, vend or exercise the invention in New Zealand. Performing any of these acts without the permission of the patentee will amount to an infringement if the patent is current and in force. Permission will typically be granted in the form of a license. Remedies for infringement can include an injunction to restrain further infringement, payment of damages suffered by the patentee as a consequence of the infringement or payment by the infringer of any profit he/she/it made by virtue of the infringement, and legal costs.
3A procedure in which the validity of a granted patent is contested. Any party that has an interest in the subject matter of the patent can apply to revoke (annul) the patent. Revocation can be applied for at IPONZ or the High Court, depending on the circumstances. A revocation proceeding involves the submission of arguments and supporting evidence from both the patentee and the party seeking revocation and will usually be resolved in a hearing. The grounds that can be used to revoke a granted patent include lack of novelty, lack of inventive step and insufficient disclosure of the invention. The procedure for challenging a patent application is known as an opposition.
4In New Zealand, once a patent application has been accepted, it will be published in the Intellectual Property Office Journal. There is then a three month period where the application may be objected to (or opposed), by a third party. If no opposition is made the patent application will proceed to grant.

Any party that has an interest in the subject matter of the patent can oppose acceptance. The grounds that can be used to oppose a patent application include lack of novelty, lack of inventive step and insufficient disclosure of the invention.

Not all countries have an opposition period on patent applications. For country specific information, contact your IP advisor.

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