With a new year and a new resolve, I have started a new blog here.

I look forward to seeing and hearing from you

New Zealand’s Patents Act dates back to 1953 and is largely based on the UK Act of 1949.  Significant amendments were made in 1992 to deal with PCT applications.  But other than that the Act has not been much amended since 1953.

The need for new patent legislation to deal with technological changes over the last 60 years has been the subject of discussion from time to time and finally a Bill made it through its first reading in May 2009, and the Select Committee process by the end of March 2010.

As at 22 July, the Patents Bills sits at number 29 on the Order Paper for Parliamentary business for its second reading.

The computer program conundrum

The Select Committee recommended amending clause 15 to include computer programs among inventions that may not be patented.

There were many submissions concerning the patentability of computer programs. Under the Patents Act 1953 computer programs can be patented in New Zealand provided they produce a commercially useful effect.

Open source software proponents, in particular, were critical of the protection of software by patent. Opponents felt that computer software should be excluded from patent protection as software patents can stifle innovation and competition, and can be granted for trivial or existing techniques. In general the Select Committee accepted this position.  However, on the other side of the fence, are those New Zealand companies who have invested in a significant number of software-related inventions, involving embedded software.

The Select Committee sought advice on the approach taken in other jurisdictions such as the United Kingdom and the United States, and whether legislation that would enable “embedded software” to be patentable might be practicable. However, it turned out to be too difficult for the Select Committee to develop a clear and definitive distinction between embedded and other types of software.

Therefore, “for the sake of clarity” the Select Committee decided that “a simple approach would be best”.

Based on advice that their recommendation to include computer programs among the inventions that may not be patented would be unlikely to prevent the granting of patents for inventions involving embedded software, the Select Committee recommended the insertion of clause 15(3A) into the Bill in the following terms: “A computer program is not a patentable invention”.   

This recommendation was coupled with the further recommendation “that the Intellectual Property Office of New Zealand develop guidelines for inventions containing embedded software”.

 The Discussion continued

Even though the Bill had been through the Select Committee process when members of the public get to make submissions on the proposed legislation, the discussion did not end there with various parties making further arguments in favour or against the patentability of computer programs.  

The Commerce Minister was viewed as flip flopping and put an end to speculation in a media release earlier this month confirming that clauses 15(3A) will remain as it is with IPONZ to make guidelines.

 My two cents worth – But is it good law?

I think not!

In this day and age of clear and concise legislation that can be understood by the man (or woman of course) on the street, it is ridiculous that the plain and clear words of an Act – “A computer program is not a patentable invention” – is not intended to mean what it appears to mean.

Surely any IPONZ Guidelines – which are merely “guidelines” and not law – must be ultra vires if they conflict with the clear intent of the Act.  Why should a Judge be expected to look behind the clear meaning of the words of an Act in interpreting it?

It seems likely that the meaning of “computer program” will become the issue with parties on each side to a dispute arguing that the software in issue is or is not a computer program.  This could lead to some interesting arguments.

Why should our innovators be forced to take a matter to the Court to interpret such a provision?   

Given the likely interest in protecting computer programs in New Zealand, this may well be a hard fought battle on both sides with any such dispute potentially going through the court hierarchy up to the Supreme Court – a costly and time consuming process which will lead to much uncertainty and delay for other patents in the interim.  Will previously granted patents become invalid?  

In sum, the Select Committee recommendation will lead to unnecessary delay, uncertainty and cost.  I am disappointed that our parliamentary process has resulted in such an absurdity.

The first new fee is for the lodgement of an application for a provisional patent by electronic means. As one would expect, this fee is less than the fee for lodgement by non-electronic means.

The second new fee is for amendments to complete patent specifications after the specification has been accepted. The fee will apply where an amendment increases the total number of claims to more than 20. The fee will be charged on each additional claim and be due on the grant of the amendments, rather than on the filing of the application to amend.

Due to the timing of the payment of this fee, it will have a slight claw back effect as it will be due on “applications to amend” that are filed before 1 August but granted after this date.

For further details see the Official Notice.

It had been hoped that the Trade Marks (International Treaties and Enforcement) Amendment Bill would have its second reading in June. Not only has the Bill not had its second reading, it is slipped from number 28 to number 31 on the order paper of business before the House. Parliament is scheduled to next sit on 20 July.

The timeframe for examining trade mark applications has been extended from 5 working days to 15 working days.

On the one hand I think that this is a good move. It was apparent that the examiners were under much pressure to meet the 5 day turnaround which did mean that objections that should have been raised in that first report were missed from time to time increasing the time and cost to prosecute an application.

On the other hand, if the first compliance report issues 15 working days after the application is examined, then the applicant will have a very short period of time to add classes to the application to cover wrongly classified goods and services. Regulation 43
of the Trade Marks Regulations 2003 provides that:

Additional classes may be added after filing
(1) An applicant for registration of a trade mark may apply to the Commissioner for a class or classes to be added after the application has been filed.
(2) The Commissioner may allow the addition of a class if—
(a) the application for addition is made within 1 month after the application for registration is filed; and
(b) the application is accompanied by the fee prescribed for an application to register in 1 class; and
(c) the goods or services to which the additional class or classes relate are within the original specification.
(3) The Commissioner must not allow an application for addition if the applicant has previously deleted the goods or services to which the additional class relates from the application for registration.
(4) The Commissioner must not extend the deadline in subclause (2)(a).

Thus, under IPONZ’s new practice, applicants will now be left with as little as 10 days in which to apply to add an extra class to an application. It is intended that the one month period allowed by Regulation 43 be amended but this will of course require amendment of the Regulations by Parliament.

The story goes that ThinkGeek launched a canned unicorn meat product (think about it) under the slogan “Pâté is passé. Unicorn – the new white meat.” Apparently the National Pork Board did not see the joke and sent a 12 page cease and desist letter claiming that ThinkGeek had infringed their slogan “The Other White Meat”.

For the full story see here . You’ll see that ThinkGeek name this the “officially our best-ever cease and desist“! Try to buy and see what happens….

After many years reign as New Zealand’s most trusted brand Cadbury has been knocked off its perch – presumably due in part to its change from cocoa butter to palm oil and discontinuation of three iconic NZ sweets (snifters , tangy fruits and sparkles) by Watties. From one food icon to another… Sadly neither of these companies are New Zealand owned companies, the former now being part of the Kraft family and the later owned by Heinz.

However, when the full list of category winners is looked at it is pleasing to see that a number of New Zealand owned companies (Mitre 10, Kiwibank, Fisher & Paykel, New World, Air New Zealand, NZ Post and Resene) feature in the list.