Wednesday, July 27, 2011

Myall Australia v RPL Central – the case of the zealous Commissioner

It’s not every day that an opponent succeeds in invalidating an innovation patent on a ground it did not even raise.  In Myall Australia Pty Ltd v RPL Central Pty Ltd [2011] APO 48, we see the Deputy Commissioner assume an inquisitorial role rather than an adversarial one.

The RPL patent

RPL Central Pty Ltd (“patentee”) filed innovation patent application 2009100601 on 22 June 2009.  The title of the patent is “Method and System for Automated Collection of Evidence of Skills and Knowledge”.  IP Australia certified it on 22 October 2009 following a request for examination by the patentee.

In Australia there is, according to the patentee, some difficulty for an individual in identifying a particular qualification to which they may be entitled under an RPL (Recognition of Prior Learning) programme.  The patentee’s invention uses technology to make the job easier.

Was it new?

Myall Australia Pty Ltd (“opponent”) filed a notice of opposition on 22 March 2011.  The opponent advanced its own RPL Evidence Collection Tool (“RPL Tool”) as rendering the present invention not novel.

A hearing was set down for 18 May 2011 and a decision issued on 12 July 2011.  The Deputy Commissioner reviewed the evidence presented by the opponent in respect of the RPL Tool.  The independent claims of the innovation patent were found to contain two features not present in the RPL Tool.

So yes, all claims were novel.

Was it an invention?

On 29 April 2011, a few weeks before the hearing, the parties were told to prepare additional submissions on a further possible ground of lack of manner of manufacture.  This was not a ground raised by the opponent.

The Deputy Commissioner accepted that there is some physical effect or transformation in the computer in the way the method of claim 1 is operated.  But did it involve a physical effect in the sense of a concrete phenomenon or manifestation or transformation in line with the observations made in Grant v Commissioner of Patents [2006] FCAFC 120?

He looked to comments made by the Deputy Commissioner in Invention Pathways [2010] APO 10 and concluded that the invention fell short of having the requisite physical effect.

The invention defined a method for gathering information where the data retrieval, processing and storage of information appear to have no physical effect other than what would arise in the computer with standard software in conventional use.  There was no substantial effect or transformation in generating the questions by concatenating text matters.

While the internet and the computer facilitate the operation of the claimed method by retrieving, generating and conveying information, they are not central to the purpose of the claimed invention.

The Deputy Commissioner found that the claims did not define a manner of manufacture.

There’s an invention in there somewhere

The Deputy Commissioner then observed that the patent description contemplates generating the questions automatically based upon the identification of particular keywords within the assessable criteria, and upon additional contextual information.

If the claims were amended to include those features, said the Deputy Commissioner, then the claimed method would result in a substantive transformation of data not amounting to a mere cut and paste.  The amended claims would satisfy the requirements of a manner of manufacture.

Tuesday, July 26, 2011

Waitangi Tribunal says introduce a disclosure requirement

One of the recommendations of the Waitangi Tribunal in the WAI 262 report is to introduce a legal requirement for patent applicants to disclose the source and the country of origin of any genetic or biological material contributing to the invention.

The Tribunal believes that early notification during the patent process is justified.  It suggests that every patent applicant should therefore disclose whether Maori traditional knowledge (matauranga Maori) or the genetic and biological resources of taonga species have contributed to the inventive activity that led to the patent application.

“Taonga species” are flora and fauna that are significant to the culture or identity of Maori tribes.

What needs to be disclosed

The disclosure requirement seems to go beyond the New Zealand context.

An applicant for a patent related to biological materials or Maori traditional knowledge will be required to disclose:

  • the source and country of origin of any genetic or biological resource that contributed in any material way to the invention;
  • Maori traditional knowledge that was used in the course of research.  This includes traditional knowledge that is not integral to the invention but that prompted the inventor to take the course of research that led to the relevant patent application.

In my experience there are many cases where the source and country of origin of genetic or biological resources are not clear.  This is particularly evident where the invention relates to an isolated derivative.  In some cases the applicant will have no idea whether or not the invention is based (however remotely) on genetic or biological resources.

This situation is perhaps reflected in the consequences for non-compliance.

Failure to comply with disclosure requirement

Although the requirement to disclose is mandatory, the suggested consequences for not doing so are unclear.  The Tribunal makes a distinction between formal (or formalities) requirements and substantive requirements.

Treating the disclosure requirement as a formalities matter is not, in the view of the Tribunal, a viable option.  There would not be the necessary incentive for patent applicants to disclose the use of traditional knowledge and taonga species.

On the other hand, the strict consequences of a substantive disclosure requirement are too draconian.  Refusal or revocation of a patent, in the view of the Tribunal, is too harsh a penalty.

The Tribunal settled on the view that the consequences of non-disclosure should be a matter of discretion for the commissioner.  In some cases there will be no sanction at all.  In other cases, a patent will be revoked or refused – but only when the merits of the case justify it.

Monday, July 25, 2011

Patents on the tellie

It’s not often that patents make an appearance on national television.  As a patent practitioner with 17 years experience I am delighted that my chosen profession is becoming so sexy.

I appreciate that readers outside New Zealand may not be able to access the link.  So I thought I would summarise the main points raised in the most recent episode of The Court Report.

Matt Sumpter of law firm Chapman Tripp made some good points during his appearance in Chapter 3 on the show.  He explained the difference between patents and copyright(s).  He acknowledged that our New Zealand Patents Act is out of date and that it has been under review for over 10 years.

He referred to the proposal to exclude computer programs from patentability as “mad”.  The proposal will put us out of step with our major trading partners such as Australia, the United States and Europe.  A significant part of the software industry is very supportive of patents remaining available in this industry.

Software is everywhere says Sumpter.  Software makes your car run in the rain.  Software makes the telephone network run.  Software drives navigation systems.  It makes hearing aids work.  It makes dishwashers work.  It does all sorts of things.  People who write such software deserve a return on investment.

Software is no different from other fields of inventions.  There is no principled basis for distinguishing between software and any other inventive endeavour.

Open source enthusiast Don Christie agreed that mechanical objects that include software should be patentable.

Where they differ is Christie’s view that software is simply mathematical algorithms.  Software development, says Christie, is just like writing a book or creating music.  All it involves is typing lines of mathematical algorithms.

I’m not sure I agree with Christie on this last point.  Airways Corporation of New Zealand Limited for example is on record as saying “Many of the systems we develop require five or more years of considerable research and development and an investment which runs into the millions of dollars to see the systems through from initial concept to a commercial product … Patent protection is important to enable us to realise the benefits of our investment, both in New Zealand and overseas.”

Thursday, July 21, 2011

Implementation of a trans-Tasman patent examination model

Further details have emerged of a plan to put in place a streamlined process for securing patent rights in New Zealand and Australia.

In an earlier post I discussed an announcement by the New Zealand and Australian Governments for a trans-Tasman process for patent applications.

Under the proposed regime a patent applicant will make a single application to a trans-Tasman portal.  The applicant will nominate New Zealand and/or Australia in the application.  The trans-Tasman patent application will create a New Zealand application, an Australian application, or a pair of applications that is examined by the same examiner.

IPONZ is not sure how they will decide who will examine each application or pair of applications.  I think it would make sense to have some inventions involving, for example, complex mining or nuclear technology examined by an Australian-resident examiner.  Some technologies derived from New Zealand indigenous flora and fauna may be best dealt with by a New Zealand-resident examiner.

Where a pair of applications arise out of a trans-Tasman application, they will be allocated a common filing date.  There is a 4 hour time difference between Perth and Wellington.  There will be some situations where a trans-Tasman application filed electronically is eligible for different filing dates depending on where the application is deemed to be made.

I have said in an earlier post that the New Zealand Patents Bill 2008 will not be proceeding this year.  The Bill will need to be passed before any further progress can be made.

Assuming the Bill comes into force in 2012, the project is expected to proceed in three stages.

Stage 1 – work sharing

From now until February or March 2012 IPONZ and IP Australia are going to share examination reports.

Stage 2 – single application process

From around April 2012 to September 2012 the two offices are expected to run a pilot programme.  Selected applicants will be able to opt-in to a single application process.   By the end of 2012 IPONZ expects to have a trans-Tasman portal in place for all applicants.

Stage 3 – single patent examination model

By June 2014 IPONZ and IP Australia expect that each new patent application will be examined under the new regime.

Wednesday, July 20, 2011

The Sheriff of Ngawi

Not far from where I live there is a little fishing village called Ngawi (pronounced “naa-wee”).  It’s a place described by its locals as a little piece of utopia.  Somewhere you leave “for three days … and leave things unlocked and leave the keys in the vehicles”.  No one goes to Ngawi to rob anything.  Mostly.

Back in September 2006 local resident Garth Gadsby (later dubbed the Sheriff of Ngawi) was woken at 2.40am by "a car going at excessive speed".  He later gave evidence that he called two mates and set up a roadblock across the only road in and out of the village.  They set up the roadblock near Gadsby's tractor, a pink one called Babe that he uses to launch his fishing boat.

According to Gadsby he "stepped forward of [their parked] truck and held the shotgun up to stop the vehicle and they made no attempt to stop and slow down".  Well funny that.  The car turned around and sped back into Ngawi.

Gadsby got into his mate’s truck (a yellow ute) and they gave chase.  Allegedly he was literally "riding shotgun" in the front of the truck driven by his mate, leaning out the window and firing at the tyres of the car they were chasing.

By the way, Gadsby is a keen skeet and claybird shooter who has shot more than 100 claybirds consecutively and has represented New Zealand.  He said he had fired from a moving vehicle "hundreds of times".

The car was later found to contain stolen clothing and other items, and had shotgun pellet damage to the bumper, mudflap, left tyres and left side of the vehicle. One of the tyres was flat.

The occupants of the car managed to evade the truck.  Hid the car out of sight in a garage and took shelter in an empty house.  Suddenly they spotted the yellow ute outside.  They fled out a back window and hid under another house until morning.

By the time South Wairarapa Constable Bruce Farley arrived to take the burglars into custody there were about 20 angry residents gathered and there was a lot of shouting between them and the burglars.

I imagine the burglars themselves looked relieved to see the police.  One is reported as saying "I wasn't too happy I got caught but I'm glad it was them (the police) that caught us".

At least one of them had tried to escape on foot into the hills.  Ngawi locals allegedly scaled the hills above them and rolled boulders down on to them.

The young burglars were later jailed after they admitted a raft of offences, including the burgling and vandalising of houses in the South Wairarapa township in a crime spree leading up to the events described above.

I don’t need to go out on too much of a limb here to observe that the burglars Brendan Taylor, Joshua Diamond, and Owen Guthrie are destined to be of no use to anyone.  While waiting for trial they skipped bail and broke into more houses in the far North.

I’m a big one for the rule of law and all that.  But part of me is tempted to suggest they should be sent back to Ngawi.

Tuesday, July 19, 2011

The end of our hero

I said in an earlier post that we needed a hero.  We named our Moa rooster “Horace” because he crowed himself hoarse.  At odd times.  Who knew that a rooster could start crowing at 3:00am?  Perhaps it was the full moon?  I went out one moonlit night and closed the windows and doors of the chicken house to block out the light.  He stopped.  Lucky for him.

The next day my wife rang the neighbours to see if the noise was bothering them.  They hadn’t noticed.

Gradually we stopped noticing the noise too.  It blended into the general sounds of the countryside.  Sheep, cows, rooster, the soft calls of night birds.  Water gurgling in the stream.  Gunshots.  The occasional squeal of car tyres driven by teenagers going nowhere.  The odd freight train rumbling in the distance.

But all was not destined to remain well.  Horace got worms. We didn’t know that at the time.  We just saw him lurching drunkenly around the paddock, twitching.  A bit like some of the guests at our infamous annual party.  The difference was that when my wife went out to feed the chickens he tottered over and fell on his side.  Thrashing and blinking up at her for help.

What to do?  A vet would be unlikely to do much at this stage.  And would cost more than a new rooster.  

A friend who is a real farmer came to the rescue. He popped poor Horace into a cage – for re-homing, no doubt – and just for good measure, brought us a beautiful white rooster.  He was surplus to their requirements but too gorgeous for them to cull.

The new fellow is called Marlon Brando as he is uselessly beautiful, and Horace? Well, rest in peace.

Monday, July 18, 2011

Waitangi Tribunal says establish a register of traditional knowledge

One of the recommendations of the Waitangi Tribunal in the WAI 262 report is to establish a register of traditional knowledge.

The Tribunal observed that Maori are obliged to act as kaitiaki (cultural guardians) towards “taonga species” of flora and fauna within their tribal areas.  “Taonga species” in turn are flora and fauna that are significant to the culture or identity of Maori tribes.

The Tribunal sees considerable value in a register in which kaitiaki are able to register their interest in taonga species and/or publish matauranga Maori (traditional knowledge).

Register of interest

The act of a kaitiaki registering their interest in taonga species will provide a clear statement to third parties of Maori interest.  It is intended to give patent applicants fair warning of the kaitiaki interest and of the need to engage with them.

Applicants are thereby provided with a level of certainty required to protect their economic interests.  They know in advance which taonga species will require engagement.

One question I have is how will entries be moderated and verified?  How can we be sure that every entry in the register is justified as a taonga species?  As noted by the Tribunal, certainty and transparency are fundamental to successful engagement between the parties.

Publication of matauranga Maori

Another aspect of the register is the ability for kaitiaki to record in summary form aspects of matauranga Maori that they apprehend might be used by patent applicants.  It looks to me like a kind of defensive publication mechanism.

The register will not work as notice to potential applicants unless it is public and available for perusal.  The two official languages in New Zealand are Maori and English.  To reach a wider audience I think the register should have English translations for individual entries.

It is anticipated that this aspect of the register will be used by those kaitiaki whose traditional knowledge is already locatable and accessible in the public domain.  Those who prefer not to publish their traditional knowledge are entitled to keep such knowledge secret.

I expect the register will provide a convenient database for patent examiners and patent applicants to search.  The publication date of individual entries will presumably be the date of recordal of those entries in the database.  The register will need to be maintained to an evidential standard required by a Court.

Friday, July 15, 2011

Waitangi Tribunal says establish an indigenous advisory committee

One of the recommendations of the Waitangi Tribunal in the WAI 262 report is to establish a Maori advisory committee to advise the Commissioner of Patents about whether inventions are derived from Maori traditional knowledge or use taonga species.

The Tribunal observed that Maori are obliged to act as kaitiaki (cultural guardians) towards “taonga species” of flora and fauna within their tribal areas.  “Taonga species” in turn are flora and fauna that are significant to the culture or identity of Maori tribes.

The Commissioner should have the power to refuse patents that unduly interfere with the relationships between kaitiaki and taonga, on the ground that exploitation of the patented invention would be contrary to ordre public or morality.

The Tribunal recommends that the committee have a mandate in two broad areas of patent law.  The first is to advise the commissioner on novelty.  The second is to advise the commissioner on the existence of kaitiaki interests.

Advice on novelty

The Tribunal says the committee should advise the commissioner on the requirements of patentability: invention, novelty, inventive step (non-obviousness); and utility.

I agree that the committee should bring prior art to the attention of the commissioner for assessing novelty.  Any third party can do this now and will be able to do so once the new Bill becomes law.  However I think it should be the Commissioner not the committee who evaluates the prior art.

The committee needs to be aware that patent applicants are under a duty of disclosure in other jurisdictions.  Any documents relevant to patentability brought to the attention of a New Zealand patent applicant must be disclosed to some of the Patent Offices handling corresponding applications.

Advice on kaitiaki interests

The Tribunal says the committee must be able to advise the commissioner on the existence of kaitiaki interests, even if the patentability criteria are satisfied.  The commissioner can still decline a patent if it is contrary to ordre public or morality.

The Tribunal believes that the committee should be able to advise the Commissioner as it sees fit.  It should have a mandate to investigate any application or patent filed or granted in New Zealand.  The Tribunal says the Commissioner should be required to take formal advice from the committee.

Another recommendation is to provide a mechanism to augment the commissioner’s expertise when dealing with applications raising Maori issues.  The Tribunal recommends that in such cases the commissioner should sit jointly with the chairperson of the committee, or his or her delegate.

Guest Post: the RADLER decision – no use crying in your beer!

Thanks to John Hackett for this article.

There has been a lot of discussion following the decision of the Assistant Commissioner of Trade marks at the Intellectual Property Office of New Zealand in the recent case where the Society Of Beer Advocates, Inc (SOBA) applied to revoke Dominion Breweries’ (DB) trademark registration for RADLER.

So why has this come about?

Back in September 2003, DB applied to register RADLER for beer. In June 2004, they were granted registration of the name as a trademark. The application to register the mark had gone through the examination and publication stages to registration without objection from any third party.

With all trademark applications, once they are accepted, there follows publication by way of advertisement in the Patent Office Journal, during which there is a three month opposition period. This enables any interested party to oppose the registration of the trademark in question.

The importance of objecting at the opposition phase of the process will become abundantly clear as we go on to discuss this situation.

SOBA was only incorporated in 2006, and was therefore never in a position to object to the RADLER trademark application when it was advertised for opposition purposes. It only came into the picture subsequently, when one of its members sought to market the European Radler-style beer. This was objected to by DB as being an infringement of their registered trademark for RADLER. SOBA then became involved and brought the revocation proceedings on behalf of its membership.

Following the expiry of the three month opposition period, and given there was no formal opposition lodged inside the deadline, the mark was registered.

A trademark registration confers on the owner the exclusive right to use that name, and to enforce the registration against any unauthorised third party from using the same or similar mark on the same or similar goods or services for which that mark is registered.

This statutory exclusivity can then only be attacked on specific grounds, and the onus is on the party applying to attack the registration to show it should not have been registered in the first place. So, SOBA had to show that the mark was descriptive or generic at the time of registration, and should not have been registered. They also had to show that the New Zealand public did not associate the term RADLER exclusively with DB.

Going back to my earlier point, had any interested party attacked the trademark application during the available opposition period, the onus would have been on DB to show that the mark was distinctive at the time of filing, and not descriptive of a lemonade shandy beverage commonly consumed in Europe. It’s a moot point as to whether they could have discharged this onus.

So SOBA had to make all the running in this case to show the trademark RADLER at the time it was filed back in 2003, was a generic term in New Zealand, and further that it had not acquired any distinctiveness through use by DB from 2003 to the time the action was brought to revoke the trademark registration.

This proved a bridge too far for SOBA who failed to show in evidence that RADLER was a generic term in New Zealand back in September 2003 when the application was filed, and that it had not acquired a distinctive character through use by DB in New Zealand since that date.

SOBA would have to have established that a significant percentage of the New Zealand public associated the name RADLER with the lemonade shandy beverage commonly consumed in Europe.

The implication is that SOBA was unable to satisfy the burden of proof on it to show that RADLER had a generic meaning to New Zealanders back in 2003, and since that date, most New Zealanders did not exclusively associate the name RADLER with the particular style of beer marketed under the Monteiths RADLER brand.

This is not the same scenario as stated by an obviously disappointed Greig McGill, secretary of SOBA, when he referred to this decision meaning that anybody could register “muesli” for cereal, or “jalapeno” for hot sauce.

These terms are well-known in New Zealand, whereas, back in 2003, RADLER was not a term widely known to describe a particular style of beer consumed in Europe, by a significant number of New Zealanders.

Of course, had SOBA been able to show conclusively that RADLER had the meaning attributed to it in Europe back in 2003 when DB applied to register the name as a trademark, then they would have prevailed, and the trademark registration would have been struck off.

So, it’s fine being disappointed and bitter about the decision, but this case could hardly have gone SOBA’s way where, by no fault of their own, the trademark application for RADLER was not objected to at the opposition stage of the process, and that they subsequently failed to discharge the onus to prove the mark was generic in New Zealand back in 2003, and that in the intervening period it had not become distinctive of DB’s product.

  1. It is important for industry sectors, and individual companies, to carry out regular watching searches of the register of trademarks to ensure that certain trademarks which could give a competitor an unfair advantage in the marketplace are objected to at the opposition stage of the registration process. These types of searches are regularly tailored for interested parties by intellectual property specialists.
  2. It is always best to object to a trademark during the opposition period, rather than have to make all the running later in attacking a registration on the basis it should never have been registered in the first place.
  3. For all parties who wish to run with a name that could be descriptive or generic in another jurisdiction, it’s important to be aware that they could find themselves in the position where they need to defend opposition proceedings to achieve registration, and in the worst-case scenario, they could lose the exclusivity to use that name as a trademark.

Thursday, July 14, 2011

Waitangi Tribunal says no to indigenous ownership

One of the findings of the Waitangi Tribunal in the WAI 262 report is that Maori tribes do not have ownership rights in “taonga species” or in traditional knowledge relating to those species.

The Tribunal observed that Maori are obliged to act as kaitiaki (cultural guardians) towards “taonga species” of flora and fauna within their tribal areas.  “Taonga species” in turn are flora and fauna that are significant to the culture or identity of Maori tribes.

The Treaty of Waitangi entitles Maori to a reasonable degree of control over traditional knowledge relating to taonga species and how that knowledge is used.  But it does not entitle kaitiaki to ownership of taonga species.  The Treaty’s English text refers to exclusive ownership.  The Maori text refers to tino rangatiratanga (authority and control).  The Tribunal preferred the Maori text.

The Tribunal observed that Maori created taonga works and matauranga Maori (traditional knowledge).  But Maori did not create taonga species.  In fact the taonga species created Maori culture.  Cultural association with taonga species does not automatically mean exclusive proprietorial rights.

Kaitiaki interests must be fairly and transparently balanced alongside other interests.  These interests include:

  • the interests of those who conduct research and/or hold IP rights;
  • the public interest in research and development
  • the interests of the species themselves

This lack of ownership means that kaitiaki are not entitled to a veto over uses of intellectual property in taonga species in all cases.

Tuesday, July 12, 2011

Traditional knowledge not protected

One of the findings of the Waitangi Tribunal in the WAI 262 report is that our current intellectual property laws and policies were not designed to deal with indigenous relationships with flora and fauna.  Furthermore, current laws and policies allow third parties to use traditional knowledge without acknowledgement and consent.

This isn’t the only finding of the Tribunal.  I’m pleased about that.  During my time at University I did a research paper and came to the same conclusion in a much shorter time.

The Tribunal found that Maori are obliged to act as kaitiaki (cultural guardians) towards “taonga species” of flora and fauna within their tribal areas.  “Taonga species” in turn are flora and fauna that are significant to the culture or identity of Maori tribes.

A species can be a “taonga species” because:

  • there is a body of inherited knowledge (matauranga Maori) relating to them 
  • they are related to the Maori tribe by whakapapa (genealogy)
  • the tribe is obliged to act as their kaitiaki (cultural guardians)

All parties accepted that the patent system does not support kaitiaki relationships nor matauranga Maori.  There are two main reasons.

1. Kaitiaki can’t acquire patent rights

An invention involving traditional knowledge fails the novelty test under patent law.  It is not possible for kaitiaki to protect traditional knowledge under the patent system.

Patent law requires one or more defined inventors.  Inventors are not easy to identify where traditional knowledge is involved.  This point is not mentioned in the WAI 262 report but is an observation I made in my earlier paper.

There are also different expectations here.  Maori would like perpetual protection for kaitiaki relationships and traditional knowledge.  This is not possible under a patent system that provides time-limited protection.

2. Exploitation possible by third parties

Kaitiaki cannot prevent others from acquiring patent rights over inventions derived from taonga species.  Much of this traditional knowledge is freely available in the public domain.  Others are free to use it in their search for exploitable species.

Monday, July 11, 2011

I did it my way

I’m always a little hesitant to give names to our sheep.  What happens if it doesn’t work out?  It’s a little awkward to serve up a meal that used to have a name.  Even if it’s a name like Christmas Dinner or LambChops.  But sometimes you just can’t help it.

I commented earlier in the ram that wasn’t that we needed a real ram.  Where on earth was I going to find one?  Suddenly I had the answer.  I would “work from home” one Friday and buy one at the weekly Clareville stock sales right here in the Wairarapa.  It’s quite an experience.  You can buy all kinds of animals there.  Lambs, calves, piglets, sheep dogs.  The works.  There are some good bargains there if you know what you’re looking for.  I didn’t manage to get what I wanted, just like last time when I ended up with the ram that wasn’t.  But this time I did meet a farmer who could sell me a real ram.

I turned up to pick up my new farmyard stud.  Now a bit of background about New Zealanders: we are good at understating things.  So I knew when the farmer told me “he was a bit feisty” I knew to expect something bad.  I had a sneaky suspicion that this guy saw me coming.

My new ram threw a tantrum while being brought into the yards.  He head-butted a metal gate, gashing his head in the process. But you should have seen the gate – it was buckled, seriously.  The farmer sprayed the cut with some bright blue iodine solution to sterilise the wound.

So we had a punk ram with anger issues.  I broke the “don’t name your animals” rule yet again.  And Sid Vicious had a new home in Greytown.

Friday, July 8, 2011

New IP legislation for Samoa

A few weeks ago we met the Deputy-Registrar responsible for administering the Samoan Intellectual Property Registry.  The Registry, based in Apia, is administered by the Ministry responsible for Commerce, Industry and Labour.

Samoa is putting in place an Intellectual Property Bill 2011.  The Samoan Government is looking for input from major stakeholders.  Out of all trade marks filed annually in Samoa, our firm files a third of them.  So I guess we are major stakeholders.  Today we made submissions on most aspects of the Bill.

The new legislation is an omnibus Bill covering patents, utility models, industrial designs, trade marks, plant breeder’s rights, geographical indications and circuit layouts.  It has been drafted by a consultant in Samoa and modelled on WIPO legislation.  It still needs to be translated into Samoan, tabled in Parliament, pass through Parliamentary debate, and undergo community consultation before being signed off by the Head of State.

The key features of the patents part of the Bill are:

  • Novelty assessed against use within Samoa and publication anywhere
  • Protection mechanisms for traditional resources
  • An intention to be Paris convention compliant
  • Registrar may impose duty to disclose foreign applications
  • Publication on grant
  • Ability to claim convention priority of up to two years

That’s what it looks like from the exposure draft.  There’s still a few amendments ahead I suspect.

Thursday, July 7, 2011

Train v cows

Yesterday morning I received yet another reminder that I don’t have normal problems.  My choice of where I live and where I work means that I have all sorts of creative reasons why I’m late for work.  Yesterday I had to call in to say I was going to be late because there was some “stuff” on the tracks.  My workmates are used to me by now although they make fun of my “inability to live anywhere normal”.

Early in the morning a north-bound freight train slammed into cattle that had wandered onto the tracks.  Two were killed instantly and one had to be euthanized (fancy name for shot) on site by police.

Tranz Metro spokeswoman Cathie Bell is quoted as saying that the southbound trains to Wellington were cancelled and replaced by buses.  This isn’t quite right.  They did manage to get a couple of trains through late.  It did mean that 1,000 commuters lost at least one productive hour of their respective days.

She goes on to say "It's very disruptive for our passengers and probably not very pleasant for the animals either”.  No argument from me on both counts!

The local Carterton District Council will now speak to the farmer to see whether they will take further action.  One media report says the cows pushed through a rotten gate.  If there is negligence on the farmer’s part they will probably take it further.  Maybe.  If there’s no negligence then the issue will be left to be settled between rail company KiwiRail and the farmer.

Newcomers to town (called townies) are often criticised for complaining about or interfering with farming practices.  This is possibly one example of the reverse.

As they say out here in the country: Where there’s livestock, there’s dead stock.

Wednesday, July 6, 2011

When is a closed day a closed day?

Last week I represented my firm at a Business Continuity meeting called by the Intellectual Property of New Zealand (IPONZ).  The impetus for this meeting was a hardware failure back in May that disabled online services for a day and a half.

Under our existing legislation the Commissioner is empowered to declare the Patent Office closed for the transaction of public business on any day.  If a deadline for doing any act falls on a closed day then the act is deemed to be in time if done on the next day on which the Patent Office is open.

Weekend days, statutory public holidays, and the days within a short interval between Christmas and New Year’s Eve are all declared in advance to be closed days.

The Commissioner can also close the Patent Office at short notice because of an emergency or other temporary circumstance.

The dilemna IPONZ management faced back in May was whether or not to declare IPONZ closed once their online services were unavailable.  The problem here was that the failure occurred around midday.  There was a risk that stakeholders may have already used online services in the morning and would be relying on a filing date for that day.  To declare IPONZ closed would disadvantage those people as they would no longer get the filing date they needed.

I suggested that IPONZ keep the Patent Office open wherever possible, but to make it easier for stakeholders to use alternative methods.  The Patent Office physically closes at 5pm.  In an emergency situation the Office could stay open later than 5pm to allow local firms to hand deliver documents.  Our Wellington Office is only 15 minutes walk from IPONZ so that would suit us just fine.

Some of our critical filing dates involve filing an application in New Zealand ahead of an imminent disclosure.  It is absolutely essential that we get the correct filing date in these situations.  In our firm we are both Australian and New Zealand patent attorneys.  We could just as easily file new applications in Australia to establish a filing date.

What is stopping us is the requirement in the New Zealand legislation to obtain a foreign filing permit in advance of a foreign patent filing.  I suggested that, in an emergency situation, IPONZ could grant blanket permission for New Zealand resident applicants to file applications in Australia.

From here we need to work with the legislation we have.  We also need to make sure that our New Zealand Patents Bill 2008 addresses the issues raised in our meeting.  If it doesn’t then now is the time to make those amendments before it is passed into law.

Tuesday, July 5, 2011

Streamlined trans-Tasman process for patent applications

Today the New Zealand and Australian Governments announced a streamlined process for securing patent rights in New Zealand and Australia.  The implementation plan promises a single application process for both countries by early 2013 and a single patent examination by June 2014.

I talked to a Business Journalist from Radio New Zealand about the issue.

Readers of this blog will know that there is no world-wide patent.  A New Zealand inventor must file individual applications in each country of interest.  This initiative is aimed at cutting red tape.  What it will mean for New Zealand patent applicants is that they will have one less form to fill in if they want to cover Australia.

One examiner will examine both applications.  This makes sense for novelty and obviousness assessments.  It is potentially more efficient for the same examiner to deal with both applications than have an examiner on each side of the Tasman perform the same novelty and obviousness assessment on the same subject matter.

There is the potential to deliver what is known as a net trans-Tasman benefit.  Sharing services for greater efficiency.

This presupposes that the laws are going to be the same.  They are not.  New Zealand examiners do not examine for obviousness.  They assess inventions under a local novelty regime rather than world-wide novelty.  The prior art base in New Zealand is published documents and does not include prior use.

I have said in an earlier post that the New Zealand Patents Bill 2008 will not be proceeding this year.  To meet the stated implementation deadline of 2013 the Bill will need to be pushed through in 2012.

Once enacted it will bring New Zealand’s IP regime closer to Australia’s in some areas but further away in others.  Novelty and obviousness assessment will be similar.  But the proposed subject matter exclusions in the New Zealand Bill will take us further away from Australia.

The result of this, if the New Zealand Bill goes through unamended, is that examiners on both sides of the Tasman will need to learn two sets of laws.  The obvious answer is to amend the Bill to align our New Zealand legislation with Australia.  That is the only way I can see for us to “remove duplication, drive efficiencies and reduce costs”.

The devil is going to be in the detail.

Guest Post: A J Park attends handover of Wai 262 report in Ahipara

Thanks to Lynell Tuffery Huria for this article.

Last Saturday was a clear, beautiful day. It was an appropriate day for the official handover of the Flora and Fauna and Cultural and Intellectual Property Report, more commonly known as WAI 262. I attended the handover at Roma Marae in Ahipara, New Zealand, the home of Haana Murray, the sole surviving claimant.

The report, “Ko Aotearoa Tenei – This is Aotearoa (or This is New Zealand),” has been 20 years in the making. It is a landmark report despite the fact the New Zealand Government is not bound by any of the report’s recommendations. The report is long overdue, not only for the claimants and their legal representatives, but for all Māori. The report is also significant to people overseas who see the claim as synonymous with the plight of indigenous peoples around the world—people who also strive for recognition of their own cultural intellectual property rights.

Over 250 people gathered at Roma Marae, in the small village of Ahipara, population 1100, to witness the official handover of this report. The ceremony included acknowledgements of those who that had been involved with the claim, and in particular, those who had passed on. Their photos were positioned amongst tangata whenua (local Māori) so that their part in this process was not forgotten.

At over 1000 pages, the report itself is rather lengthy. The government has already indicated the report will take some time to digest.

Chapter 5 of the report was released last October, in anticipation of an urgent review of Te Reo Māori (the Māori language), which is considered to be in crisis. But none of the recommendations in that chapter have been adopted.

We eagerly await the government’s review of the full report.

Background - what is WAI 262?

WAI 262 is the 262nd claim before the Waitangi Tribunal. The origins of the claim date back to 1988, when two women found the Department of Scientific and Industrial Research (DSIR) had deposited several cultivars of native kumara at a research institution in Japan. These kumara had been brought to New Zealand by the Māori people, but were no longer available here. These women travelled to Japan to bring the kumara back to New Zealand.

The women became concerned at the ease with which this native flora and fauna could be lost to overseas interests, and the lack of Māori involvement in the decision making process. The women felt the government and DSIR had ignored Māori rights of tino rangatiratanga (authority) and kaitiakitanga (guardianship) over this particular indigenous flora and fauna.

As work towards filing a claim with the Waitangi Tribunal began, the concerns extended to include the ever increasing loss of native plants and animals, the destruction of ecosystems, the continuing erosion of mātauranga maori (traditional Māori knowledge), and the continuing creation and amendment by the government of intellectual property legislation that failed to recognise Māori intellectual property rights.

The claim was lodged in 1991 by six individuals on behalf of six tribes.

What did the claimant’s seek?

The claim asserted the Crown breached the Treaty of Waitangi, because the Crown:
  • failed to actively protect the exercise of tino rangitiratanga and kaitiakitanga by the claimants over indigenous flora and fauna, and other taonga (“treasure”), and also over mātauranga Māori (Māori traditional knowledge)
  • failed to protect the taonga itself
  • usurped tino rangatiratanga and kaitiakitanga of Māori in respect of flora and fauna and other taonga through the development of policy and enactment of legislation
  • agreed to various international agreements and obligations that affect indigenous flora and fauna and intellectual property rights and rights to other taonga.
The claimants also asked that one of the remedies include a framework based on tikanga Māori (or Māori customary values) that recognises Māori rights to exercise tino rangatiratanga and kaitiakitanga over indigenous flora and fauna, other taonga, and mātauranga Māori.

What’s in the report?

The report is unique in that it looks to build a partnership between Māori and the Crown beyond the grievance process. The report looks to establish a culture in New Zealand where both cultures are promoted, rather than one being promoted above the other.

The report is far reaching, and recommends changes to laws, policies, and practises that affect Maori culture, health, education, language, and identity.

An example of one of the recommendations is to establish a Māori advisory committee to advise the Commissioners of Patents and Plant Variety rights on whether inventions are derived from Māori traditional knowledge or use taonga species.

You can read the full report online here.

Monday, July 4, 2011

Mirror mirror on the wall

Last week we received confirmation of something I have been voicing for a while.  The Patents Bill 2008 is going nowhere under this Government.  It is sitting on the Parliamentary Order Paper awaiting a second reading.  It is likely to stay that way for a while.

Parliamentary Commerce Select Committee member Clare Curran put a Parliamentary question to Commerce Minister Simon Power.  She had concerns that the Patents Bill would not come back before the election in November.  She was concerned the legislation would come back under a different watch.  She asked for Power’s views on that.

Power agreed it was a complex issue.  The Committee had asked him to look into guidelines around these issues.  Officials were currently working on those guidelines but some of the issues were not straightforward.  He said it was ultimately a matter of legislative priority.

I have commented in an earlier blog post about the guidelines for computer programs and the rejection of them by New Zealand innovators.

Later at a NetHui Attorney-General Chris Finlayson is reported to have “agreed that the Bill was almost certain not to pass into law in the remaining few weeks of the current term”.

Why do some members of the Parliamentary Commerce Select Committee need constant reassurance that they acted fairly when they inserted the controversial amendment to exclude computer programs from patentability?

Why are they seeking those reassurances from a Minister who will be retiring after the election in November?

The status quo remains in New Zealand for the foreseeable future.  The situation now is not too different from that set out in my 1997 article.  Computer-implemented inventions are eligible for patent protection.

Friday, July 1, 2011

The close of a long chapter

It has finally arrived!  Tomorrow the Waitangi Tribunal releases its decision on the 262nd claim it has received since its inception in 1975.  The claim was lodged in 1991 by six individuals on behalf of six Maori iwi (tribes).  It’s been 20 years and 5 of the originial 6 claimants have passed away.  The sole survivor is Saana Murray from Ngati Kuri.  It promises to be an emotional day.

The ceremony tomorrow is being held at Roma Marae (meeting house), Ahipara in Northland.  It starts with a Powhiri (welcome) at 11:00am for the Waitangi Tribunal, the Crown and other invited guests.

The report handover ceremony starts at noon.  A local Kaumatua (elder) will deliver a Karakia Timatanga (opening prayer).  Saana Murray herself will speak on behalf of Ngati Kuri.  The Waitangi Tribunal Director will present a statement of findings.  Representatives from each of the remaining Iwi will speak.  Each claimant Iwi will then be presented with a copy of the 1,000 page report.  A local Kaumatua will perform a Karakia Whakamutunga (closing prayer).

A Hakari (feast) is scheduled for 2:00pm then a Poroporoaki (eulogy) at 3:30pm.

The report is not yet public.  Copies were given to local media earlier this week on the understanding that the report was embargoed until the following week.  However, one story has already been published today by the media outlining the Waitangi Tribunal recommendations.

I will wait and read the report myself rather than rely on the article.  The article does note that one of the recommendations is to set up a Maori advisory committee to work with the Intellectual Property of New Zealand (IPONZ).  The suggestion is that IPONZ will have the power to refuse patents that unduly interfere with relationships between kaitiaki (Maori) and taonga (precious things).

The New Zealand Patents Bill 2008 isn’t too far off the mark.  It will establish a Maori advisory committee that will advise IPONZ on request whether an invention appears to be derived from Maori traditional knowledge or from indigenous plants or animals.  If an invention appears so derived, the committee will advise whether the commercial exploitation of that invention is likely to be contrary to Māori values.

In any event, tomorrow marks the end of a long chapter in the lives of these claimants and their families.

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