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Archive for the ‘IP’ Category

Draft ACTA text officially released for the first time

In ACTA, IP, New Zealand on April 23, 2010 at 10:47 am

At the conclusion of the eighth round of negotiations held in Wellington from 12-16 April, the ACTA participants agreed to publicly release the draft ACTA text (with participant’s names in respect of bracketed options removed). Agreement to release the text was reached on the basis that negotiations have now advanced to a point where making a draft text available to the public will help the process of reaching a final agreement. New Zealand took an active role in this decision. A copy of the draft text is available in the attached PDF .

After all my recent posts about ACTA I will now endeavor to find a different subject matter!

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ACTA – Wellington round update

In ACTA, IP, New Zealand on April 16, 2010 at 11:01 am

In furtherance of its pledge of more transparency around the ACTA negotiations, the Ministry of Foreign Affairs & Trade hosted delegates and (invite only) interested parties including for example, Patent Attorneys (like moi), consumer goods industry representatives, the Open Source Society members and local bloggers. The invitation list appeared to be fairly inclusive and it was great to have an opportunity to meet and chat with some of the local and international delegates.

I gather that everyone has been putting in long hours with the negotiations proceeding into the evening beyond the scheduled hours. Apparently this is due in part to the US wanting to complete these negotiations without too much more delay.

The Ministry has promised more public briefings in the near future.

The weekend preceding the ACTA meeting, Public-ACTA (driven by InternetNZ Inc “a non-profit organisation dedicated to protecting and promoting the Internet in New Zealand and fostering a coordinated, cooperative approach to its ongoing development”.) met and drafted the Wellington Declaration which in part calls for more inclusive and transparent processes for negotiating such an agreement. InternetNZ has proudly announced that the ‘Wellington Declaration’ has been passed to the New Zealand trade negotiators involved in ACTA negotiations. Also, a petition of 6,000 signatures from around NZ and the world from people who publically support the declaration was presented.The petition now has over 8,100 signatures interestingly it includes signatories from countries not currently involved in the ACTA negotiations (such as Brazil, Singapore and South Africa)…

Post Script: Latest media release from the NZ Trade Minister (Tim Groser) is that the negotiating text will be released publicly on 22 April NZ time.

ACTA is hitting town

In ACTA, IP, New Zealand on April 1, 2010 at 3:33 pm

With the upcoming 8th round of discussions on ACTA to be held in Wellington, the media is starting to highlight some of the more controversial parts of those discussions.

The Wellington meeting will be held 12 – 16 April 2010 with the meaty issues of border measures, enforcement procedures in the digital environment, criminal measures, civil enforcement and transparency on the agenda. There are many claims that the agenda and venue have been “leaked”. However, the Australian government has quite openly published the agenda on their Department of Foreign Affairs and Trade website!

There have been many claims of unnecessary secrecy surrounding the ACTA discussions, and the New Zealand government is one of the champions of greater transparency.

I have previously commented that there appears to be a clear link between ACTA and the proposed section 92A of the Copyright Act 1994.

Officials are repeating their mantra that ACTA will not impact on, or require changes to, section 92A.

It appears that there is more resistance to, than support for, the ACTA discussions – see here, here, here and here for a small random selection of views being put forth.

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.