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Archive for the ‘New Zealand’ Category

Some musings on the Patents Bill

In Intellectual Property, IP, legislation, New Zealand, patent on July 23, 2010 at 1:13 pm

Background

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.

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NZ’s accession to the Madrid Protocol

In IP, legislation, Madrid Protocol, New Zealand, trade mark on July 7, 2010 at 7:41 pm

At the INTA meeting in Boston in May, I gave a brief presentation at the LinkedIN Madrid Protocol Group regarding the progression of New Zealand’s accession to the Madrid Protocol – NZ’s accession to the Madrid Protocol

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.

IPONZ – New processing timeframes for applications and correspondence

In IP, IPONZ practice, New Zealand, trade mark on July 6, 2010 at 6:38 pm

The Intellectual Property Office of New Zealand (IPONZ) has introduced new processing timeframes for some applications and correspondence effective 1 July 2010 – “While the turnaround times have increased in some areas, IPONZ will seek to maintain the efficient timeframes that clients have learnt to expect and have enjoyed from IPONZ”.
If you wish to check current processing timeframes see here

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.

NZ’s most trusted brands

In IP, New Zealand, trade mark on July 1, 2010 at 3:23 pm

One of the key features of a brand is the element of trust it conveys to consumers.

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.

More on the Patents Bill

In IP, legislation, New Zealand, patent on June 25, 2010 at 2:34 pm

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 ”.

The controversy around this provision continues…. As of 22 June 2010 the Patents Bill is number 37 on the Order Paper for Parliamentary business awaiting its second reading.

It appears that parties in favour of patentability are having some sway and there is a suggestion that a Supplementary Order Paper “to clarify the intent” is to be issued.

Following amendments by the Select Committee, the Patents Bill currently states that computer software is not a patentable invention. However, there is an intention the Intellectual Property Office will issue guidelines on the matter and 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).

I would have to agree that the current wording is not suitable and that a number of interested parties have expressed their view on this to Simon Power, the Minister of Commerce. There appears to be an intention that certain types of software will be patentable and for the European practice to be adopted. Thus, it seems inevitable that the Bill will be revised to more clearly state this intention.

Watch this space …

IPONZ change of practice for extensions of time to prosecute trade marks

In IP, New Zealand, trade mark on May 11, 2010 at 2:38 pm

The New Zealand Trade Marks Act 2002 provides a period of 12 months from the filing of the application to have it in order for acceptance. If the application is not in order for acceptance, or an extension of time has not been allowed, then the application is deemed abandoned. Once an application is marked off as abandoned it cannot be restored.

Therefore, it is critically important that any deadline set by the Commissioner is met.

The Trade Marks Regulations 2003 provides for extensions of time. The Commissioner has allowed extensions of time under Regulation 32 which requires there to be “genuine and exceptional circumstances” for the extension.

The Commissioner accepts that every extension is “genuine” however, a recent High Court decision has put doubt on what is meant by “exceptional circumstances”. Following the issue of the High Court decision, the Commissioner has required fairly detailed and different reasons for each subsequent extension. In the High Court, Lang J., considered that “exceptional” meant “quite out of the ordinary” and seemed to apply an objective rather than subjective test. In particular, His Honour found that “oversight is a common cause of deadlines being missed”. In this case, counsel had drafted the necessary correspondence to meet the deadline but for some reason that letter was not sent to IPONZ. I would have thought that subjectively the failure to mail a letter that had been finalised is out of the ordinary.

However, this looks set to all change following the Maestro decision of the Commissioner of Trade Marks. In that case, the Commissioner determined that extensions of the time to prosecute an application should be granted under Regulation 62 and not Regulation 32.

Regulation 62 provides that “The Commissioner may allow an extension, in the Commissioner’s discretion, and may allow subsequent extensions”. Thus, the Commissioner will have a wide and unfettered discretion to consider and grant extensions without being hampered by the requirement in Regulation 32 that there be “exceptional circumstances” for the extension.

The Hearings Office has indicated that there is a further decision on this issue that should be published in the near future that will provide more guidance on the issue.

This change is welcome, particularly for those occasional cases they take a long time to resolve notwithstanding diligence by the applicant.

Legislative updates

In copyright, IP, legislation, New Zealand, patent on May 3, 2010 at 2:13 pm

The Copyright (Infringing File Sharing) Amendment Bill (see my previous discussion here) has been referred to the Commerce Select committee who has called for submissions by 17 June 2010.

The second reading of the Patents Bill is item number 23 on the Order paper (agenda) for the next Parliamentary sitting day on 4 May 2010 whereas the Trade Marks (International Treaties and Enforcement) Amendment Bill, which will enable New Zealand’s accession to the Madrid Protocol has dropped to number 31.

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!

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.