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Posts Tagged ‘legislation’

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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Beehive – Minister announces way forward for software patents

In legislation, patent on July 16, 2010 at 2:10 pm

Press Release from Commerce Minister: Beehive – Minister announces way forward for software patents.

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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 …

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.

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.

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.

IP Australia – “Towards a stronger and more efficient IP rights system – resolving trade mark opposition proceedings faster” – proposals for changes to opposition procedure without any consideration of harmonization with New Zealand

In Uncategorized on January 28, 2010 at 2:24 pm

In an earlier post, I commented that notwithstanding the drive towards harmonization between the Intellectual Property Offices in New Zealand and Australia, in some regards IPAustralia is forging ahead with changes to practice without consideration how this sits with the practice in New Zealand.

In this regard, IPAustralia issued a consultation paper in June 2009 setting out its “proposals directed at improving the fit and function of the Australian IP system”. Interested parties had until 17 August 2009 to make submissions.

A second consultation paper issued in November 2009 to “seek views on the detail of the revised proposals” and “summarise the key issues raised during consultation”. Drafting instructions for the Intellectual Property Laws Amendment Bill also issued. The deadline for submissions on the detailed revised proposals is 12 February 2010.

There are a number of papers, most of which deal with patent prosecution and opposition practice and divisional applications and one dealing with trade mark opposition procedures.

The following summary relates to the proposed changes relating to trade marks opposition procedure.

Changes proposed by IPAustralia to increase the flexibility of trade marks legislation for opposition proceedings
– reduce the period to file Notice of Opposition from three months to two months;
– the Registrar, rather than the opponent, is to serve copy of the Notice of Opposition on the applicant as soon as practical;
– remove “negotiations” or “research” as valid grounds for an extension to file the Notice of Opposition;
– provide for granting of extension to file Notice of Opposition if required “despite the person concerned having taken due care as required in the circumstances”;
– opponent required to serve on applicant, and file, a statement of grounds of the opposition and particulars (SGP) relating to each ground within 1 month of filing Notice of Opposition. The Notice of Opposition and SGP can be combined within same document;
– opponent can request amendment of the Notice of Opposition – to correct clerical error or obvious mistake or change name of opponent; and to amend SGP to correct error or omission in grounds, amend the particulars, and to add any ground of opposition (if the Registrar is satisfied that amendment is necessary as result of new information which opponent could not reasonably have been aware of when filed SGP);
– the Registrar may dismiss the opposition, and register the application, if the opponent does not serve and file SGP or particularise grounds of opposition in the statement.
– The applicant is to file a notice indicating its intention to defend the application within 1 month after the opponent served the SGP. IPAustralia may require a fee for this document.
– the period of time for opponent to file evidence in reply, or notice that not filing evidence in reply, reduced from 3 months to 2 months;
– further evidence provisions are to be repealed. However, parties would be able to provide information to Registrar under existing Reg 21.19;
– the Registrar may give directions to extend a period to file evidence only if s/he is satisfied that the party has acted promptly and diligently at all times since the opposition proceedings began but despite that cannot serve the evidence in that period or because of some other compelling circumstance. It is to be noted that the Registrar must not give an extension solely because of delays caused by agent or legal representative to act promptly or diligently. However, it is not stated how many extensions may be allowed;
– the Registrar may suspend opposition for period of 6 months, and a second period of 6 months, if the Notice of Opposition filed and all parties to the opposition file request of suspension. However, the Registrar must not suspend the opposition for more than 12 months. The Registrar must terminate the suspension if requested by any party to the opposition and the proceedings will recommence;
– the opponent is to file and serve summary of hearing submissions no later than 10 business days before the hearing and the applicant is to file and serve summary of submissions no later than 5 business days before the hearing. The Registrar may take failure to file or serve summary of submissions into account in considering any award of costs;
– provide a broad power for the regulations so that the regulations may provide for and in relation to opposition proceedings – IPAustralia seek a power similar to section 228(2)(b) of the Patents Act. The specifics of the regulations set out in Annex III to Drafting Instructions (see pages 45-50). This matter was not covered in the initial consultation paper.

Key differences with New Zealand practice:

The initial opposition period is three months which is extendible by one month as a matter of course, and two months only if the applicant consents. Thus, the period to commence opposition proceedings in Australia will be significantly shorter than in New Zealand.

In New Zealand there are no limitations of the grounds on which a party may rely for an extension for filing any document or evidence. In particular, the conduct of negotiations and the undertaking of research would be considered to be valid grounds. After an initial short extension, the Commissioner requires the other party’s consent to the extension and as long as that consent is forthcoming the extension will be allowed (except for filing the Notice of Opposition as the Trade Marks Regulations 2003 sets a maximum of two months of extensions). Thus, in New Zealand there are broader grounds for an extension.

The Notice of Opposition should fully set out the grounds and basis for the opposition. It would appear that the intended Notice of Opposition and SGP suggested by IPAustralia will be similar in content to the Notice of Opposition that an opponent would file in New Zealand.

An opponent in New Zealand is able to correct an obvious clerical error in the Notice of Opposition but cannot add grounds of opposition at any time subsequent to the filing to the Notice of Opposition.

A New Zealand applicant indicates its intention to defend the opposition by filing a Counter-statement within two months of the filing of the Notice of Opposition. The Counter-statement sets out grounds in support of the registration of the application and the applicant’s responses to the grounds of opposition. No fee is payable. That the applicant in Australia must now file a notice of its intention to defend the application brings the proceedings more in line with those in New Zealand.

The opponent has an initial period of one month in which to file evidence in reply with IPONZ allowing short extensions of time of this deadline.

Either party may file further evidence, provided there are “genuine and exceptional circumstances that justify filing the evidence” or “the evidence could not have been filed earlier”. The parties are entitled to be heard on this issue before the evidence is admitted. If the late evidence is admitted, the other party would have a right of reply.

At any time after opposition proceedings are commenced, which merely requires the filing of an extension of time request by the opponent, the parties can apply for a halt of proceedings. The Commissioner will allow successive periods of halt of six months each, provided other party consents. There is no specified maximum period that the Commissioner can allow.

Whilst the Commissioner has stated a desire that an advance copy of the submissions is served on the other party before the hearing, there is no penalty if this is not done. Indeed, while the parties routinely provide an advance copy of their submissions to the Commissioner it is very uncommon for the opposing counsel to be served with a copy of the submissions in advance of the hearing.

Conclusion

Whilst there are different time frames allowed for each step in the process in each jurisdiction, it appears that the average opposition would take 12 months, not allowing for extensions, in both countries.

In this review process, IPAustralia does not appear to have considered the practice in New Zealand with the object of harmonization in mind.

ONLINE COPYRIGHT INFRINGEMENT – A PROPOSED REVAMP OF SECTION 92A

In Uncategorized on August 11, 2009 at 11:52 pm

A proposed amendment to the NZ Copyright Act 1994 to deal with the issue of copyright infringement by downloading from the Internet was first proposed last year.  There was significant public out cry and complaint about the draconian aspects of the proposed provision that the Government did a U-turn and did not enact that part of the Bill.  In particular, questions were raised over the effectiveness and enforceability of the new provisions. Of particular concern were the obligations of Internet Service Providers (“ISPs”) in disconnecting “repeat infringers” of copyright and in enforcing the law.

Following a review by a team of “experts” and a re-drafting of the contentious section 92A, the Government released a discussion paper outlining a new scheme for addressing online copyright infringement.

The discussion paper sets out a new three step process for dealing with online copyright infringement:

  • Phase One – Where a rights holder believes there to be online copyright infringement, a complaint may be lodged with the ISP. The ISP will then forward the complaint to the subscriber. If there is further infringement by that subscriber, the rights holder may send a cease and desist letter. The subscriber will have an opportunity to respond.
  • Phase Two – This applies where the rights holder believes there to be repeat instances of online copyright infringement after a cease and desist letter has been sent, and the subscriber has been given an opportunity to respond. Here, the rights holder may apply to the Copyright Tribunal to obtain from the ISP the name and contact details of the subscriber in question.
  • Phase Three – The rights holder may then file a complaint with the Copyright Tribunal. The subscriber will have an opportunity to respond and may elect mediation. Unless there is an agreement to the contrary, the Copyright Tribunal will be convened to determine the matter. Relief granted may include damages, injunctions, account of profits, fines and termination of the subscriber’s account by the ISP.

The current proposal appears to present a more acceptable solution.  It lessens the role and burden of ISPs in dealing with online copyright infringement, while at the same time increasing the role of the seldom used Copyright Tribunal.  The deadline for public submissions has just past so it will be interesting to see what the response has been.  However, I note that the media has not been busy stirring up public opinion this time around!

The most significant changes to New Zealand’s patent law in more than 50 years

In Uncategorized on July 29, 2009 at 2:51 am

The long-awaited legislation to replace the Patents Act 1953 (the 1953 Act) had its first reading in Parliament on 5 May 2009. The announced intention of the Patents Bill (Bill) is to raise the standard of patents granted in New Zealand. Many of the changes proposed in the Bill will bring New Zealand’s patent law into line with other countries.

The 1953 Act is based closely on the repealed UK Patents Act 1949. It requires only that inventions be novel in New Zealand, and does not allow the Commissioner of Patents (Commissioner) to examine patent applications for obviousness or usefulness.

The Bill requires an invention to be novel in light of material made available anywhere in the world, whether by publication or by any other means. The Bill allows the Commissioner to refuse a patent application if the claimed invention is considered to be obvious.  The Bill also allows the Commissioner to refuse a patent application on the ground that the claimed invention is not useful.

The Bill proposes to exclude the following subject matter from being a patentable invention:

  • Human beings and biological processes for their generation;
  • A method of treatment of human beings by surgery or therapy;
  • A method of diagnosis practised on human beings; and
  • A plant variety (protectable under the Plant Variety Rights Act 1987).

The Bill will also exclude an invention from being patented if the commercial exploitation of the invention is contrary to public order or morality.

Importantly, the Bill attempts to deal with the concerns of Maori (New Zealand’s indigenous people), and provides for a Maori Advisory Committee to advise the Commissioner on whether a claimed invention is derived from Maori traditional knowledge or from indigenous plants or animals and, if so, whether the commercial exploitation of that invention is likely to be contrary to Maori values.

One area of controversy is the proposed removal of the ability of an interested party to oppose the grant of a patent at a hearing before the Commissioner. Replacing oppositions, the Bill proposes a limited re-examination process. Re-examination has been unpopular in other countries, largely due to the exclusion of the objector from the process after a re-examination has been initiated.

The Bill sets the maximum term of a patent at 20 years from the filing date. For many inventions, this is an adequate period of time for the patentee to recover the costs incurred in developing the invention. However, in the case of inventions that require regulatory approval before they can be sold to the public, such as pharmaceuticals, a significant portion of the 20-year term can be spent performing the testing necessary to obtain regulatory approval. This effectively reduces the term of the patent for these types of inventions.

The Bill has been referred to Parliament’s Commerce Committee to consider public submissions on the Bill with these submissions being presented this week.  The Committee must report back to Parliament by 5 November 2009.

Thanks to my patent  colleagues for this summary – for more detailed information see: www.henryhughes.co.nz.