IP Australia – Fee increase

As of 1 August 2010 IP Australia will increase some patent fees and introduce two new fee items.

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.

IP themed movies …

With the New Zealand International Festival descending upon us and my upcoming hectic schedule of trying to see as many movies as I can in three weeks while working full time, I read with interest Patent Manager’s post about the various movies with patent or other IP themes…. Yet another list of movies for me to work my way through as I have only seen 3 of the listed movies. Who’d have thought that there were so many?

More on the Patents Bill

“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

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

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.

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

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.