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Archive for March, 2010|Monthly archive page

New Zealand Patents Bill continues its progression towards enactment with release of Select Committee Report

In IP, legislation, New Zealand, patent on March 30, 2010 at 2:51 pm

New Zealand’s patent legislation dates back to 1953 and is based on the UK 1949 Act. A full review of the Patents Act 1953 has been contemplated and discussed off and on for 20 plus years.

The Patents Bill 2008 was introduced into Parliament on 9 July 2008, and following a change of government was reinstated on 9 December 2008. For a summary of the main changes brought about by the Bill as introduced into Parliament see here.

The Bill was referred to the Commerce Select Committee (“the Committee”) on 5 May 2009. The Committee received and considered 67 submissions and heard 36 submissions.

The Select Committee has examined the Bill and issued its report recommending that it be passed subject to the amendments noted in the report.

The report includes the Committee’s 15 page summary of amendments and the 178 page Bill incorporating the suggested amendments.

In brief, the proposed legislation would align the criteria for granting a patent with international practice. In particular, the Bill introduces an “absolute novelty” standard and examination of applications for usefulness and inventive step.

In a departure from International practice, the Bill also seeks to ensure that the interests of Maori in their traditional knowledge and indigenous plants and animals are protected. Thus, the Bill would establish a Maori Advisory Committee (“MAC”) to advise the Commissioner (on request) whether an invention described in a patent application was derived from Maori traditional knowledge or from indigenous plants and animals. The MAC would advise on whether commercial exploitation of such inventions could be contrary to Maori values. The Commissioner will not be bound by such advice.

A MAC has been operating under the Trade Marks Act 2002 since its enactment. The approach of the MAC appears to be fairly pragmatic and there are very few matters which have been found to be offensive to Maori.

In terms of exclusions from patentability, the Committee recommends the insertion of a non-exhaustive list of inventions, based on Article 6 of the European Biotechnology Directive, by way of example.

Perhaps one of the most controversial points in submissions to the Committee was whether computer software should be patentable. Strong advocacy against patentability of computer software came from the open source proponents.

Under the 1953 Act, computer programs can be patented provided they produce a commercially useful effect. The Bill, as amended by the Committee, lists computer software as not a patentable invention. However, there is an intention that such an exclusion would not prevent the granting of patents for inventions involving embedded software (for example software which plays and integral role in the electronics it is supplied with, such as software incorporated in cars, telephones and washing machines).

The Committee’s report flags impeding increases in official fees and the creation of a maintenance fee. The increased fees are necessary as IPONZ will have to hire more staff to adequately examine patents and the new maintenance fees “would act as a disincentive to maintain applications for inventions people are no longer actively interested in”.

The nature and level of official fees for registering and maintaining IP rights in New Zealand were last reviewed in 1999. Since then, Treasury has been reluctant to allow further increase of fees as the Office operates on a cost-recovery basis. Thus, the enactment of new legislation with higher examination standards, and therefore increased costs to the Office, justifies the increase of fees.

A further amendment to simplify the administrative aspects of the patent regime and to facilitate the efficient management of patent examiner’s workloads, the Committed recommends that the Bill provides for both requests for examination and the Commissioner directing applicants to request examination.

The Bill as introduced to Parliament did not provide for pre-grant oppositions, instead providing for a re-examination process that could be invoked at any time after an application had been accepted. Following submissions, the Committee recommends that amendments be mad that would enable third parties to oppose a patent before it was granted.

The Committee also recommends amendments to allow New Zealand to accept the Protocol Amending the TRIPS Agreement, to Implement the Doha Declaration on the TRIPS Agreement and Public Health. Such an amendment will allow a person to export patented pharmaceuticals under a compulsory license in line with the protocol.

The Bill will now be referred back to Parliament for its second and third readings and enactment. The Regulations still yet need to be drafted and it is expected that the Bill will be fully operational by the beginning of 2013.

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Spongebob v the Santa parade?

In Uncategorized on March 30, 2010 at 10:27 am

As an IP practitioner I am always saddened when it comes to this – picture the headline: “Santa Parade organisers told ‘no go’ with Spongebob” ….

In New Zealand the public are always going to take the side of the little guy in any perceived David v Goliath situation. This clip shows that trying to assert and protect one’s IP rights in NZ can lead to negative PR.

Hopefully the parties can come to a workable solution before this year’s Santa parade!

Tips to minimise the infringement of your trade mark by the importation of fake products

In Uncategorized on March 22, 2010 at 10:28 am

The importation of fake consumer goods is rife the world over. The importation and sale of counterfeit goods is a growing problem in New Zealand, with the majority of counterfeit goods being sourced from overseas. Since July 2000, the number of counterfeit goods that have been detained by the New Zealand Customs Service (“Customs”) has increased by over 400%. While some may consider trade in fake products to be harmless, when the fake product is a pharmaceutical there is a serious risk of harm to consumers and the importation of other counterfeit products can damage an otherwise well respected brand.

In an interesting piece of journalistic investigation, the blatant sale of fake CHANEL handbags has been uncovered in an Auckland gift shop. Amazingly the apparently poorly made fakes sell for around NZ$ 200 and the shop owner is happy to import to order! The shop owner and person working in the shop were very free and frank with the information they provided about their activities (see the associated video).
Given the resources it has, the Customs does a sterling job in detecting and detaining counterfeit products at the border. As Customs operates on an “alert based system” it is imperative that trade mark and copyright owners lodge the request notices with Customs to enable them to detain counterfeit goods. In my experience, a high number of importers forfeit their goods to Customs thereby preventing the counterfeit goods from entering the marketplace and diluting or otherwise damaging the valuable brand.

When a trade mark or copyright border protection notice is lodged, the existence of that notice is published on Customs’ website. This acts as a notice to would-be infringers that Customs is empowered to detain any goods that they intercept and consider to be in breach of a lodged notice. Anecdotally, the mere existence of such notices, in a searchable database, deters would-be infringers.

To combat the growing rate of counterfeit products entering New Zealand, the Trade Marks (International Treaties and Enforcement) Amendment Bill (“the Bill”) proposes to include new sections in the Trade Marks Act (“the Act”) which provide Customs and the National Enforcement Unit (“NEU”) of the Ministry of Economic Development with extra resources and investigative and prosecution powers.

It is a criminal offence under the Act to import and/or sell counterfeit goods. The additional resources and powers that have been suggested under the Bill would enhance the ability of Customs and the NEU to enforce the criminal offence provisions in the Act.
I suggest that trade mark owners review their trade mark portfolio and lodge border protection notices with Customs to restrict and hopefully prevent trade in counterfeit products.

Copyright (Infringing File Sharing) Amendment Bill introduced to Parliament

In Uncategorized on March 11, 2010 at 3:52 pm

The Government has been attempting to put into place an effective and credible regime for enforcement of copyright in the digital environment i.e. to prevent illegal file sharing.
In New Zealand, and elsewhere, such laws have been found to be controversial and in New Zealand’s case the proposed law has been delayed twice and has been the subject of a review by a team of experts to set out the process for the Internet Service Providers (“ISPs”).

The process for dealing with repeat infringers has now been specified in the Copyright (Infringing File Sharing) Amendment Bill and will be enacted as section 92A of the Copyright Act 1994.

Under the re-written section 92A, an internet account holder who is allegedly infringing copyright via file sharing will receive up to three notices from their ISP before a copyright owner may seek a compensation award at the Copyright Tribunal, or suspension of an internet account for up to six months in the District Court. The amount of an award may be up to $15,000.

The Bill will proceed to the Select Committee in the coming months and it is expected that it could be law by October 2010.

Specifically, the Bill repeals Section 92A of the Copyright Act, re-defines “ISP” to exclude universities, libraries, and businesses that provide Internet access to their members or employees but are not in the nature of a traditional ISP, and sets up a three-notice system to deter illegal file sharing:

Under the proposed regime, the following process is suggested to deal with illegal file sharing.
 Copyright owners will contact the allegedly infringing account holder through the ISP to report misuse of their copyright works.
 Internet users caught illegally downloading copyright material will be given up to three infringement notices – a detection, a warning and an enforcement notice:
o A detection notice will inform the user that they have downloaded copyright material and that their actions are illegal.
o A warning notice will be sent to a user if they infringe copyright again (and they have already received a detection notice).
o An enforcement notice will be sent to a user if they infringe copyright again (and they have already received a warning notice).
 After issuing an enforcement notice, the copyright owner can seek reparation costs of up to $15,000 through the Copyright Tribunal.
 Internet users who continue to download copyright material may have their internet account suspended by order of the District Court for up to six months.
 Account holders will have the right to challenge any notice, make submissions to the Copyright Tribunal refuting the claims, and request a hearing if they disagree with the claim that they have infringed copyright.

The Bill prescribes timeframes to give account holders an opportunity to address illegal file sharing activity occurring on their internet connection before enforcement action is taken.

ACTA update:

In other digital environment issues, the Minister of Commerce, Hon Simon Power, has announced a further round of public consultations on the content of the proposed Anti-Counterfeiting Trade Agreement (ACTA). The press release advises that the focus of this round of public consultations is the inclusion in ACTA of possible measures to enforce intellectual property rights in the digital environment (“digital enforcement”).

In the question and answer part of the press release relating to the new section 92A the Ministry of Commerce makes the following comment regarding the interplay between section 92A and ACTA: “How does ACTA relate to the review of section 92A? It doesn’t. The review of section 92A is on a separate track from the ACTA discussions”.

The ACTA digital enforcement provisions appear to cover the matters already covered by the proposed section 92A in terms of providing safe harbours for ISPs and co-operation between copyright owners and ISPs, However, it does go further and covers technological protection measures (TPMs) and Copyright management information (or rights management information).

To facilitate the preparation of submissions on the ACTA digital enforcement provisions the Ministry has published a discussion paper.

Submissions should be sent to trademarks@med.govt.nz by Wednesday, 31 March 2010.